November 2007 Archives

On November 26, 2007, the Federal Circuit granted en banc review of the decision in Egyptian Goddess, Inc. v. Swisa, Inc. The case involved a design patent for an "ornamental nail buffer," which EGI claimed to be infringed by Swisa. Swisa moved for summary judgement on the grounds that Swisa's nail buffers did not contain the point of novelty of the patented design. The District Court granted summary judgment; the CAFC upheld the holding, stating that : "the point of novelty must include features of the claimed design that distinguish it from the prior art. Additionally, for a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art."

The CAFC has now requested both parties to file briefs on the following issues:

1. Should "point of novelty" be a test for infringement of design patent?
2. If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (b) should the point of novelty test be part of the patentee's burden on infringement or should it be an available defense; (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one "point of novelty" in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty?
3. Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis?

Earlier this month, attorneys for Dr. Tafas in the ongoing battle regarding the new USPTO claims and continuations rules had filed notices of deposition for several USPTO officials. John Dudas, Undersecretary of Commerce, John Doll, Commissioner of Patents, John Love, Deputy Commissioner for Patent Examination Policy, and Robert Bahr, Senior Patent Attorney are scheduled to be deposed between the 7th and 14th of December, 2007. However, on the 27th of November, the parties will return to court to argue whether these depositions should, in fact, take place.

 Additionally, the plaintiffs seek to compel document production by the USPTO. The Patent Office has withheld certain documents on the basis of privilege; however, the USPTO did not submit a privilege log, as every litigant is required to do. Both plaintiffs have prepared memoranda seeking to compel production of this privilege log, as required by FRCP 26(b)(5)(A).

Adidas-Salamon AG recently won a suit for unfair competition in China against two Chinese footwear manufacturing companies. The two companies sold shoes under license from "American Adidas International Group Co. Ltd." American Adidas, however, was not the famous German sports goods manufacturer, but rather a company, registered in the United States, by an individual not party to the suit.

Under the license from American Adidas, Shanghai Andao Sports Goods Company and Andao Shoes Company sold shoes with the words "Authorized by American Adidas International Group Co. Ltd" printed on the product packaging. Retailers reselling the companies' shoes were requested to use the terms "American Adidas" in advertising the footwear.

While one of the resellers reached a settlement with Adidas-Salamon AG, the two manufacturers proceeded to trial. The Hunan Higher People's Court found for Adidas, enjoining the manufacturers from further using the Adidas mark, and requiring them to pay damages of US$35,000 for losses resulting from unfair competition.

Automotive manufacturers have patented many aspects of their vehicles' designs. Ford Motor Company, for example, owns patents covering grilles (D488,111), bumpers (D497577), headlights (D493,552), as well as entire vehicles (D488,405). Two years ago, Ford filed an action before the ITC requesting an exclusion order to  block the importation of third-party replacement parts that infringe the company's design patents. Though some patents were held to be invalid, the ITC issued an order preventing the importation of parts that infringed Ford's valid design patents.

 As a consequence, vehicular body repair costs may rise significantly, as third-party replacement parts are almost always less expensive than those sold by the Original Equipment Manufacturer. The importers have begun campaigning for a "repair parts" exception to the design patent laws and have appealed the Administrative Law Judge's decision to the Court of Appeals for the Federal Circuit. A decision on the case is expected sometime midway through 2008.