Since 2010, with the exception of 2016 (with 310 new filings!), the number of cases filed each year in US district courts asserting US design patents has remained fairly stable: between 236 (in 2019) and 293 (in 2017). A range of just 57 cases separates the busiest and slowest filing years. 2021 was no different with 254 new design patent filings.
In terms of decisions, 2021 saw more than 70 U.S. district court decisions, in a wide range of venues, involving U.S. design patents. We summarize two of the most notable decisions below – Junker v Medical Components, Inc. and Golden Eye Media USA, Inc. v Trolley Bags UK Ltd.
The decision in junker followed by a test bench, and the decision in golden eye followed the summary briefing of judgment. Each of these decisions is currently on appeal to the United States Court of Appeals for the Federal Circuit. We expect both appellate decisions to be in contention for our firm’s Federal Circuit Review report next year. It can be difficult to predict what will happen on appeal, but we wouldn’t be surprised if at least some aspects of the decisions were overturned or dismissed. As noted below, the functionality portion of the Golden Eye decision seems particularly vulnerable to dismissal. These are certainly cases to watch to see if the federal circuit confirms, denies or dismisses.
In addition to junker and golden eye decisions, other 2021 district court decisions of note include:
- Volkswagen Group of America, Inc. vs. Andy VaronaNo. 19-24838-CIV-GOODMAN (SD Fl. Jan. 25, 2021 and May 18, 2021): Grant Volkswagen’s Motion for Summary Judgment That Andy Varona Wheelsets Infringed Volkswagen Design Patent D721 028 and, following a bench trial on damages, awarding Volkswagen damages under 35 USC § 285 and § 289 for all of Andy Varona’s profits, plus the fees and expenses of Volkswagen’s reasonable counsel for willful infringement.
- Delta T, LLC v Dan’s Fan City, Inc., et. Al., No. 8:19-cv-1731-VMC-SPF (MD Fl. May 10, 2021): The trial judge recommended (1) granting Dan’s Fan City, Inc. the motion for summary judgment not to infringement of any of Delta T’s design patents (D614,757); (2) granting Dan’s Fan City’s motion for summary judgment for willful infringement of the same patent; (3) dismissing both parties’ remaining motions for summary judgment regarding Delta T’s other two design patents (D770,027 and D808,004).
- Raffel Systems, LLC v Man Wah Holdings Ltd, Inc., No. 18-CV-1765 (ED Wis. Nov. 5, 2021): Grant Man Wah’s motion for summary judgment that its cup holder products do not infringe Raffel Systems’ D643,252 design patent.
Junker v Medical Components, Inc., No. 13-4606 (ED Pa. January 14, 2021)
Junker alleged that four of the products of Medical Components, Inc. and Martech Medical Products, Inc. (“Medical Components”) infringe design patent D450,839, which relates to the handle design of a medical device used to insert a catheter into a patient’s vein (called an introducer sheath). Medical Components, in turn, alleged that the patent was both invalid due to an incorrect or incomplete inventor, anticipation, obviousness and primarily functional design and unenforceable due to a unfair conduct. The patent had previously been litigated against various defendants and was found to be infringed and not invalid, a decision that was upheld by the Federal Circuit on appeal. The patent was also the subject of a reexamination procedure before the PTO, which also confirmed its validity.
Following a bench trial, the district court judge found infringement, invalidity, and unfair conduct, and awarded damages. The court credited Junker’s expert over Medical Components’ expert, who the court said had never issued an opinion on a design patent before. The court found that the ordinary viewer would not focus on the identified differences between the patented design and the accused products – including the shape and curvature of the ears and the number of ribs on the proximal and distal surfaces of the ears – when making a buying decision.
Quoting Junker’s expert, the court said that to “the ordinary observer, who is usually a nurse or support staff in a hospital, minor differences between the accused products and the claimed design would simply not be” not [be] quite significant.'” Instead, according to the court, “[a] the buying agent gets a group of people together to give quotes on things at an outlet, and it goes through the system without anyone really looking to see what it is. The decision reinforces the importance of identifying the ordinary observer and the time and attention that the ordinary observer is likely to give to purchasing decisions.
Golden Eye Media USA, Inc. v Trolley Bags UK Ltd, No. 3:18-cv-02109- BEN-LL (SD Cal. Mar. 12, 2021)
Golden Eye Media USA, Inc. sued for declaratory judgment that it did not infringe Trolley Bags UK Ltd’s D779,828 design patent. and Berghoff International, Inc. (“Trolley Bags”) and that the patent is invalid, as well as other non-patent claims. Golden Eye then sought summary judgment arguing, with respect to the patent claims, that there was no infringement because its product design is manifestly different from the patented design and the patent is invalid because functional, obvious and undefined.
The Court granted Golden Eye’s motion for summary judgment finding (1) that the patent is invalid as (a) functional and (b) obvious (while denying the motion as to indefiniteness) and (2) even though the patent is valid, Golden Eye has not infringe. Figures 1 and 4 of the patent, showing the claimed design, are reproduced below by way of reference.
With respect to functionality, the court found that (1) the patented design represents the best design; (2) other designs would impair the usefulness of the product; (3) there are concurrent utility patents; (4) the patentee’s advertisements present particular features of the design as having a specific utility; and (5) the product’s color and logo appear to be the only elements of the overall design or appearance that are obviously not dictated by function. The court said these factors militate in favor of a conclusion that the patentee’s product is driven by function, concluding that the size, handles, poles and mesh in particular “all appear to serve primarily functional rather than ornamental purposes”.
With respect to obviousness, the court concluded that the reference to Doyle’s prior art “creates basically the same visual impression” as the patent, so the reference to Doyle’s prior art is considered a main reference.
The court noted that the reference to Doyle’s prior art is a patent that, like the patent in suit, is owned by Trolley Bags, but said neither party addressed this issue in the judgment summary. Figure 1 of Doyle’s prior art reference is reproduced below right alongside Figure 1 of the patent. The Court found that a designer of ordinary skill in the art would have thought to combine the numerous prior art which strongly resemble the patent to create the product claimed in the patent and therefore the patent is invalid as evidence.
Finally, regarding infringement, the court stated that if, in the absence of anticipation, the patented design and Golden Eye’s product appear substantially similar, upon consideration of the anticipation, summary judgment of non-infringement is warranted. . The court found that features that distinguish Golden Eye’s product from the patent – including a translucent mesh feature, an additional carry handle, and detailed handle stitching running the full vertical length of the bag – are present in the prior art (in particular the Doyle prior art reference and a second reference called RCD 0001). Side-by-side images of Figure 1 of the patent (left), Golden Eye’s product (center), and prior art (right) are reproduced below for reference.
Additionally, the court found that all features that Golden Eye copied from the patentee’s design were functional and not copyrightable.
As noted above, it can be difficult to predict what will happen on appeal, but we wouldn’t be surprised if at least the functionality part of the decision is remanded on appeal, as the Court’s analysis seems to confuse the item itself having a function (which is permitted, and is in fact a prerequisite for the patentability of the design) with its overall design being dictated by item function. This appears to be out of step with Federal Circuit jurisprudence, as High Point Design LLC v Buyers Direct, Inc., 730 F. 3d 1301 (Fed. Cir. 2013).