A welcome treat for most patent litigators is the chance to handle a “design patent” case. These cases don’t appear too often, but when they do, they’re invariably interesting. Today’s Federal Circuit decision in Bernhardt, L.L.C. v. Collezione Europa USA deals with this fascinating subject.

On the surface, design patents seem quite simple. Unlike their far more common “utility patent” brethren, design patents do not protect the functional features of an invention. Quite the contrary, they protect only the “ornamental features” of a product. Basically, this means that the appearance of a product can be protected with a design patent – provided the appearance is new, unobvious and not otherwise subject to any of the various pitfalls that delight defense attorneys while dashing the dreams of patentees and their counsel.

Design patents themselves look simple. They consist principally of a series of drawings showing the product. The claim of a design patent (you only get one) is also simple. Typically, it reads something like “The ornamental design of a [product], as shown and described.” To determine what’s covered, you simply look at the drawings.

Proving infringement of a design patent should, therefore, be a relatively easy matter. You look at the accused product. You look at the design patent drawings. If they’re the same (or pretty close), you’ve got ’em. Unfortunately, that’s not how it actually works in practice.

A quick review of the Bernhardt decision gives a sense of how complicated proving design patent infringement really is. Infringement requires that (a) based on product appearance, an “ordinary observer” might buy the infringing product thinking it is the patented product (i.e., a confusion test) and (b) this occurs because the “points of novelty” in the patented design have been incorporated into the infringing design. Furthermore, the “points of novelty” have to concern the “ornamental” rather than “functional” features of the product. This makes sense. Various products – screwdrivers for example – share an overall gross similarity dictated by their function. That similarity doesn’t, and shouldn’t, count for infringement purposes. It’s inherent simply in the nature of the products. To infringe, the similarity has to be with respect to the non-functional ornamental features. Too, several of these questions are considered ones of “law,” not “fact,” meaning that the judges, not juries, get the final say.

Naturally, the problems lie in finding your way through the maze and proving each required element in court. How do you establish confusion? (You can point to recent Federal Circuit cases, but I don’t think that’s what they had in mind.) Which features are ornamental? Which are functional? How close is close enough? What evidence is needed? What evidence is “substantial”?

Truth be told, I don’t think there are clear answers to these questions and I’ve been looking for quite a while. Often, the “explanations” and “clarifications” provided by recent Federal Circuit decisions simply raise more questions than they answer. Nevertheless, that is what we face and we need to meet the challenge.

The Bernhardt decision is notable in that it does clear up some of the procedural and evidentiary questions concerning the trial of design patent cases. In particular, the Court addressed how much evidence is needed to establish the “points of novelty” and rejected the defendant’s argument that expert testimony is always needed on this point. The design patent owner introduced the design patent, the prosecution history and the prior art and said this is sufficient for the trial court to determine the points of novelty. In an interesting and surprisingly candid argument, the patentee said an expert called on its behalf would only point to these same materials and simply parrot counsel’s arguments and conclusions regarding the points of novelty. The Federal Circuit agreed. In the words of the Court, “We hold only that, when the points of novelty can be discerned from the patent, its prosecution history, the cited prior art, and the patentee’s contentions, any additional evidence, such as expert testimony, is not necessary to establish the points of novelty.” This is good news for design patent plaintiffs as well as those pursuing such cases on a contingent-fee basis, wherein the cost of expert witnesses can be a real burden.

Having said this, few patent owners get in trouble by providing too much evidence of infringement. Despite the apparent break given to design patent owners in Bernhardt, it remains to be seen how this plays out in practice. Litigators would be wise to take try these cases strictly by the numbers and be prepared to offer substantial evidence as to each and every element required under the “ordinary observer” and “points of novelty” tests. Although juries are often happy with far less, it’s a shame to win a case only to have the court take it away due to a supposed lack of “substantial” evidence.

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Photo of Philip P. Mann Philip P. Mann

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to…

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to the court (a judge) as well as before juries. In addition to trial court work, Mann has performed appellate work before the United States Court of Appeals for the Federal Circuit.
Mann began his legal career in Chicago and Milwaukee before heading to Seattle where some of America’s most innovative companies were developing new technologies at breakneck speed. Before founding his own firm, he was a member of the Seattle Intellectual Property Law Firm, Christensen O’Connor Johnson Kindness.
Mann is an “AV” rated lawyer by Martindale Hubbell, indicative that he has reached the height of professional excellence and is recognized for the highest levels of skill and integrity.
He holds a degree in Electrical Engineering from the University of Illinois (Urbana) and received his law degree from the Washington University School of Law in St. Louis, Missouri. He is admitted to practice in the States of Illinois and Washington, as well as before the United States Patent and Trademark Office, and in various courts around the country.