Rather than protecting the functional aspects of an invention, design patents protect the ornamental aspects of the invention. Design patents are much simpler in their construction, typically with a single claim which claims the ornamental design of the invention as shown in the drawings. Since utility patent infringement requires that the infringing invention meet each and every limitation of at least one claim of the patent, many inventors are left wondering whether an infringer of a design patent must infringe every detail as shown in the drawings.
Design patent infringement is governed statutorily by 35 U.S. Code § 271 and 35 U.S. Code § 289. However, these statutes provide no guidance on exactly how similar a design must be to be infringing. It was not until the landmark Supreme Court decision in Gorham Company v. White, 81 U.S. 511 (1871) that a test was devised to assess substantiality of the similarities between a patented design and a potentially infringing design. Gorham, and later reinforced by Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008), provides that a design infringes a patented design where the designs are so substantially similar that an ordinary observer would be deceived into thinking one was the other. These cases particularly emphasize the role of the “ordinary” observer as the determining test, rather than an expert in the field. In Gorham, for example, the defense provided an expert to attest to the substantiality of the differences between the two designs. However, the Court found that the vast majority of purchasers would be those of casual observers, rather than experts. Thus, without the knowledge of the expert, a casual (or “ordinary”) observer would be deceived into thinking the potentially infringing design was the patented design.
Apple Inc. v. Samsung Electronics Co. Ltd. is a modern example of protracted design patent litigation. In this case, Apple alleged the infringement of three key design patents. These were D618,677 (Front face of the iPhone), D593,087 (Bezel of the iPhone), and D604,305 (Graphical UI of the iPhone). A jury ultimately found that Samsung had infringed several patents and awarded Apple over $1 billion in damages. However, in a landmark decision, the Supreme Court ruled that damages could not be based solely on the total profit from the infringing products. Rather, the damages must be reduced proportional to the infringing component’s contribution to the product’s value. Thus, a new inquiry is born requiring a jury to find the proportion of the particular infringing component’s contribution to the whole product’s value.
This has been a brief overview and examination of design patent infringement. This blog post does not constitute legal advice. For a consultation on your particular matter, please call our office at (918) 587-2000.