Remedies & Design Patents

TechGadgetCo has recently developed a new smartphone case design and has filed for a design patent. The new design features a standard rectangular shape compatible with most smartphones, similar to many existing designs in the market. However, TechGadgetCo’s design includes a unique geometric pattern on the case's surface, a feature not commonly seen on smartphone cases but frequently used in other consumer products like textiles and wallpapers. As the patent examiner for TechGadgetCo’s design patent application, which of the following rationales is most appropriate for rejecting the claimed design?

• Reject the claimed design based on the ordinary observer test, as the overall design may not significantly differ from existing smartphone case designs familiar to an average consumer.

• Reject the claimed design using the ordinary designer test, considering that the incorporation of a geometric pattern, though unique to smartphone cases, might not significantly exceed the typical creativity expected in the consumer product design field.

• Reject the claimed design on the basis that a person having ordinary skill in the art would regard the addition of a geometric pattern as an obvious enhancement.

• Reject the claimed design on the grounds that the geometric pattern does not conform to current trends in smartphone case design, indicating a lack of distinctiveness appealing to the typical consumer.

Answer explanation

B) Correct: This choice is the most appropriate. The ordinary designer test evaluates whether the design's novelty extends beyond what an ordinary designer might create. The uniqueness of the geometric pattern in the context of smartphone cases must be considered against the backdrop of typical creativity in consumer product design.

SoftTech Inc., a software company, sues its competitor, Innovate LLC, alleging patent infringement. During the trial, it becomes evident that SoftTech's patent claims are vague and not specific to any proprietary technology. Furthermore, SoftTech's legal team repeatedly misses filing deadlines and fails to provide substantial evidence against Innovate LLC. The district court rules in favor of Innovate LLC, finding SoftTech's patent claims overly broad and unsubstantiated. Following the trial, Innovate LLC seeks attorney fees under Section 285, arguing the litigation was conducted in an exceptionally meritless and unreasonable manner. The district court grants the motion. SoftTech appeals, claiming that their litigation approach was justified. How should the appellate court likely respond?

• Overturn the decision, as SoftTech's subjective intent was not proven to be in bad faith.

• Overturn the decision, as SoftTech's claims were not objectively baseless.

• Uphold the decision, as the district court has discretion to award fees based on the totality of the circumstances, including the conduct of the litigation.

• Uphold the decision, but only if it is proven that SoftTech's actions had a detrimental impact on the market.

Answer explanation

The correct answer is B. This is in line with the Supreme Court's interpretation in Octane Fitness LLC v. Icon Health & Fitness Inc. The Supreme Court in Octane Fitness rejected the strict requirement of proving subjective bad faith and objective baselessness for awarding attorney fees under Section 285. Instead, it afforded district judges the discretion to award attorney fees in exceptional cases based on a totality of the circumstances test.

After a legal battle, SmallTech, a startup company, is found to have infringed a patent held by BigInnovations, a large technology firm. During the trial, evidence showed that SmallTech's CEO was aware of BigInnovations' patent but decided to proceed with the infringing product, believing it wouldn't be a significant issue. BigInnovations is now seeking enhanced damages. Will BigInnovations be successful?

• Yes, because SmallTech's CEO was aware of the patent and still proceeded, indicating willful infringement.

• No, because SmallTech is a startup and the Patent Act typically protects smaller companies from enhanced damages.

• Yes, but only if SmallTech had previously been sued for patent infringement.

• No, unless BigInnovations can prove that they suffered significant financial losses due to the infringement.

Answer explanation

The correct answer is A. In this scenario, the fact that SmallTech's CEO was aware of BigInnovations' patent and chose to proceed with the infringing product anyway demonstrates a willful disregard for the patent rights of BigInnovations. This kind of behavior aligns with the described criteria for egregious infringement behavior that warrants enhanced damages. Therefore, SmallTech is likely to face enhanced damages.

InventorCo has filed a design patent application for a new type of ergonomic chair. The patent drawings submitted include solid lines outlining the unique shape and structure of the chair. Additionally, there are dotted lines showing a standard cushioning system, similar to what is commonly used in other chairs. How do these lines in the drawing affect the scope of the patent claim for InventorCo's ergonomic chair?

• The solid lines are for illustrative purposes only and do not define the scope of the claimed invention.

• Both solid and dotted lines equally define the scope of the claimed invention, including the shape, structure, and cushioning system.

• The dotted lines limit the scope of the claim to include the standard cushioning system.

• The solid lines define the scope of the claimed invention, focusing on the unique shape and structure of the chair.

Answer explanation

The correct answer is A. In design patent applications, the solid lines in the drawings are crucial as they define the scope of the claimed invention. The dotted lines, on the other hand, are used to provide context and do not limit the scope of the claim. Thus, the dotted lines showing the standard cushioning system are merely for illustrative purposes and do not form part of the claimed design.

SmartDesign Inc. has developed a new laptop with a unique hinge mechanism that allows the screen to rotate 360 degrees. This mechanism not only defines the appearance of the laptop but is also crucial to its functionality, enabling the laptop to be used in various modes like a tablet, tent, and traditional laptop. SmartDesign Inc. seeks a design patent for the overall appearance of this laptop, focusing specifically on the unique hinge design. Is SmartDesign Inc. likely to obtain a design patent for the hinge design?

• Yes, because the hinge design contributes to the overall appearance of the laptop.

• No, because the design of the hinge is dictated by its functional purpose.

• Yes, but only if the hinge design is different from any existing laptop hinges.

• No, unless SmartDesign Inc. can prove that the hinge design has no impact on the laptop's functionality.

Answer explanation

The correct answer is B. A design patent is directed to the appearance of an article of manufacture and must be primarily ornamental. If a design is deemed functional—meaning the appearance of the claimed design is dictated by the use or purpose of the article—it cannot be the subject of a design patent. In the scenario described, the hinge mechanism of the laptop is integral to its functionality, allowing it to operate in various modes.