Delivered March 18, 2020. Contributor: Michelle A.
To find case study examples of firms that did not receive the expected protection from a design patent due to an underlying flaw in the application.
This resource from Tysver Beck Evans lists several case law examples that have impacted design patent law through the years. However, in the majority of the cases, the ruling was favorable for the plaintiff.
Apple v. Samsung
In Apple Inc v Samsung Electronics (2015) the Federal Circuit overturned a lower circuits finding that if a design element is also functional, it is not protected under a design patent. The Federal Circuit found that even if a design element is also functional, the design can still be protected based on the patent.
The Federal Circuit also ruled that Samsung must pay damages equal to all profits made from the infringing cell phones, The damages were overturned by the Supreme Court who ruled that damages can be determined based on a component rather than on the end product.
International Seaway Trading Corp v. Walgreens
In 2009, International Seaway Trading Corp lost their case against Walgreens for design infringement when "the District Court granted Walgreens’
motion [for summary judgment], finding that the patents-in-suit were invalid as anticipated under 35 U.S.C. § 102(a) and (e)
based on a design patent assigned to Crocs, Inc., maker of the colorful and ubiquitous foam clogs."
Under appeal, the Federal Circuit upheld the ruling that the "ordinary observer" test " is the sole test for assessing both infringement and
Curver Luxembourg, SARL v. Home Expressions
In Curver Luxembourg, SARL v. Home Expressions, Curver lost their claim against Home Expressions due to wording used in the application, rather than due to the figures included in the patent application.
While the figures only included the pattern that Curver wanted to protect, the description claimed that the design was for a "pattern for a chair." Since Home Expressions used the similar pattern on baskets, rather than on a chair, the courts ruled that the company had not infringed on the design patent. This case indicates that both the figures and the descriptions are crucial to protecting a design with a patent.