- March 29, 2020 by Tom Tatonetti
- DESIGN PATENTS ARTICLES
The Design Patent Decision that Patent Practitioners
should Ignore… at least for now
On November 14, 2019, the Northern District of California found non-infringement of a design patent owned by OZ-Post because Simpson Strong-Tie Company’s accused product included a shaft that was not present in the claimed design.[1] The addition of the shaft to the accused screw head was sufficient to differentiate the accused product from the patented design. Screenshots of the patented screw head and the accused product retrieved from the court’s decision are shown below:
The factual issue of whether or not the accused product (i.e., the screw head) actually infringes the claimed design is not of concern in this article, but rather the court’s explanation and basis for non-infringement. The court included the accused product’s screw shaft in the infringement analysis despite the lack of a screw shaft in the claimed design and the patentee’s argument that the shaft should be ignored:
OZCO essentially concedes that the shear tube and screw shaft are distinct from the design but argues that I should disregard them for purposes of the infringement analysis.[2]
The court goes at length in explaining how relevant the screw shaft is despite not being part of the isolated screw head in the claimed design:
Contrary to OZCO’s arguments, it is not appropriate to disregard the screw as a purely functional feature. See OZCO Oppo. 19-21. As Simpson points out, courts ignore functional features not of accused products but instead of the patented design. See Kao v. Snow Monster Inc., No. 17-cv-08934, 2019 WL 2164192, at *3 (C.D. Cal. May 16, 2019) (noting that the patented design’s slightly smaller mouth size was functional and finding it insufficient to insufficient to support a finding that there was no triable issue); Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1323 (Fed. Cir. 2016) (noting that the functional features of the design should not be a focus of the infringement analysis, but should be considered insofar as they “contribute to the design’s overall ornamentation”) Poly-Am., LP. v. API Indus., Inc., 74 F. Supp. 3d 684, 693 (D. Del. 2014), aff’d sub nom. Poly-Am., L.P. v. Api Indus., Inc., 617 F. App’x 997 (Fed. Cir. 2015) (inquiring “which features, if any, should be excluded from the court’s infringement analysis by virtue of being purely functional”).
The protruding shear on the bottom of the washer is an additional difference between the Accused Products and the patented design, and the washer also has a slightly more rounded look. OZCO essentially concedes the shear is a dissimilarity by arguing that it is less noticeable when the screw is inserted. See OZCO Oppo. 22 (noting that “if the screw is inserted, the [existence] of the shear tube is further minimized in appearance”). OZCO is correct that both patents aim to simulate bolted hardware, and when installed, they appear similar to such hardware and to one another. But “[s]uch high-level similarities . . . are not sufficient to demonstrate infringement.” See High Point Design, 621 F. App’x at 642. OZCO’s remaining arguments run counter to the Federal Circuit caselaw detailed above. Compare OZCO Oppo. 21 (“[N]ormal use begins when the screw is assembled with the hex head washer . . . when the accused product is assembled to misappropriate the claimed design, the screw and the shear tube are only visible for a limited time before they are hidden by the structure being built.”) with KeyStone, 997 F.2d at 1450 (affirming summary judgment of no infringement even where the product looked “virtually identical” to the patented design only when it was installed).[3]
Aside from the accused product’s screw shaft, the only apparent other difference between the screw heads noted by the court is that “the Accused Products have a slightly softer, curved look.”[4] This position was mentioned once in the opinion and it’s not entirely clear what it means, nor did the court elaborate on this point any further.
While design patent infringement can be difficult for a patentee to attain since minor differences in visual appearance can be sufficient to avoid a finding of infringement, the visual appearances of the screw heads in the images above seem strikingly similar. There are two differences that I can see between the claimed design and the accused product: 1) the corners at the hex-sections on the head are each slightly rounded off on the claimed design, which is not present in the accused product (maybe this is what the judge was referring to about the “curved look” but he mistakenly said the accused product is rounded off instead of the claimed design); and 2) the accused product has some raised lettering or symbols on its head that is not present in the claimed design. At the very least, I do not think this case should have been dispensed the way in which it was, and a comparison to prior art screw heads to determine obviousness and infringement should have been performed.
If courts follow in the footsteps of the Northern District Court of California and include additions (or “environmental” matter, as often used in design applications) as a basis to differentiate a defendant’s product from a patented design, then the implications could be far reaching for issued design patents and the strategical considerations for pending and future design patent applications. I think this case will be held as an outlier or reversed, if appealed, and I’m not so sure patentees should overhaul their patenting strategies just yet without some additional support from other courts.
Possible Implications if Decision is Held Valid:
Implication 1:
Applicants would have no reason to claim particulars (i.e., parts of the whole) of a product to broaden and/or vary claim scope, and prior strategies used in issued patents may be weakened.
Patentee’s often claim a part of a whole product in design patent applications to broaden coverage over the product, either from the outset of the initial filing or via continuation applications. If the parts of the product are rarely sold separately, then the Northern District of California’s decision leads to questions as to whether those parts being given any isolated weight in terms of protection. Thus, aside from the potential future implications, this decision ostensibly removes the girth of protection from issued design patents in which Applicants have invested in protecting proprietary parts of a whole product.
If this sounds minor to you, it isn’t. See two drawings from two different design patents of the same family, issued to Apple®:
The two above drawings show Apple’s way of broadening protection over their iPhone case by disclaiming the inside creases (see varied use of solid and broken lines). The family of these applications first started in 2010 and, in the year 2020, are still pending with continuation applications. See below:
Does the decision in OZ-Post Int’l mean that the broadening techniques implemented by Apple, and other Applicants, will be diminished? If the decision was taken seriously, then maybe. But I think Applicants will be fine for the long term so long as they aren’t put in front of the same judge, Judge William Orrick, in the Northern District of California.
Implication 2:
Applicants would need to focus on filing design patent applications in the known or expected full-form and with few broken lines. This would make filing continuation applications with broadening techniques (see Apple’s family history above) potentially wasteful.
Implication 3:
Car manufacturers often file design applications over parts of new model vehicles, such as fenders and bumpers. The court’s rationale in OZ-Post Int’l makes it seem as if such design patents in the auto industry are in trouble of enforcement against companies that sell these parts as part of an entire vehicle. For example, Ford enforcing a design patent over a bumper against Toyota would be difficult since the rest of Toyota’s vehicle is likely visually different. On the other hand, this decision would likely have no effect on enforceability against aftermarket suppliers that sell infringing copycat parts because the aftermarket parts are not being sold as part of an entire vehicle. See, for example, a recent success by Ford in Automotive Body Parts Association v. Ford Global Technologies, LLC, 930 F. 3d 1314 (Fed. Cir. 2019).
Conclusion
Time will tell if OZ-Post Int’l will have any legitimate impact on the legal landscape of design patent law, but I don’t think this decision will hold much weight in the long run. It’s illogical to think that subject matter which is tangentially related to a product and intentionally omitted from a patentee’s design patent should enable an infringer to circumvent infringement. Such a rationale would make sense if the additional subject matter was fundamental to the patented design and not tangentially related to it and a logically separate component, like the screw shaft in OZ-Post Int’l.
[1] Simpson Strong-Tie Company, Inc. v. OZ-Post International, LLC, Case No. 3:18-cv-01188-WHO, Dkt. Nos. 102, 104, 106, 123, 124 (N.D. Cal. Nov. 19, 2019)
[2] OZ-Post Int’l, at 12.
[3] OZ-Post Int’l, at 12-14. (Emphasis added).
[4] Id. at 12.
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