There are currently several key issues being litigated regarding design patents, attesting to the importance of design IP in protecting a company’s designs. This webinar – an advanced course - will cover topics such as:
Key topics to be discussed:
Design patent obviousness as reflected in the recent LKQ v. GM decision from the US Court of Appeals for the Federal Circuit. The issue is whether the Supreme Court’s test for utility patent obviousness should apply to design patents, a question of first impression. A decision in favor of the infringer, LKQ, will turn years of case law based on the In re Rosen case on its head
Design patent infringement as reflected in the Columbia v. Serius case now pending before the Federal Circuit. The main issue – another question of first impression - is the scope of the prior art that is relevant to the infringement determination. A decision in favor of the patentee Columbia will greatly limit the scope of the relevant prior art. Another issue is whether an accused infringer’s logo on its product can be taken into account in determining substantial similarity with the patented design. A previous decision from the Federal Circuit indicated that it could, and Columbia is appealing this issue again
Obtaining total profit damages under 35 U.S.C. 289 can be very important to successful design patentees. The calculation of damages in the Columbia v. Serius case will be a backdrop to discussing tips for maximizing total profit damages
Date: May 23, 2023
Perry J. Saidman | Saidman Design Law Group, LLC
Perry Saidman is a recognized pioneer in design law. He has more than 40 years of experience providing strategic advice and design protection and enforcement strategies. His expertise in design patent prosecution issues facilitates resolution of difficult or unusual cases. In 1988 he litigated the seminal design patent infringement case Avia Group Int’l. v. L.A. Gear Cal. Inc., 853 F.2d 1557 (Fed. Cir.). Over the years he has authored notable appellate briefs, including as amicus curiae on behalf of Apple Inc. in the Federal Circuit’s 2008 en banc decision of Egyptian Goddess v. Swisa, and in the Federal Circuit’s 2014 case Apple v. Samsung. When the U.S. Supreme Court granted certiorari in that case, he penned an amicus curiae brief on behalf of 14 companies regarding the total profit rule of 35 U.S.C. § 289.
As a prolific author and speaker, and in his private practice, Perry takes on many seemingly intractable design law issues of the day, including functionality, anticipation, obviousness, infringement and damages. He is very active in bar associations, including the Design Rights Committee of the IPO, INTA’s Design Rights Committee, and AIPLA’s Industrial Designs Committee which he founded in 1989. He has taught Design Law as an adjunct professor at G.W. Law School, and testified before the House Judiciary Committee regarding the auto replacement parts bill. His most recent papers involve the hot button issues of design patent anticipation, the written description requirement under sec. 112, functionality, and determining the article of manufacture under 35 U.S.C. 289. He also authors a blog at designlawperspectives.com covering recent design law cases and happenings.
I. The law of design patent obviousness stands to be turned on its head if the longstanding In re Rosen case is overturned | 2:00pm – 2:15pm
II. Comparison prior art could be limited to the same article of manufacture as the patented and accused designs | 2:15pm – 2:30pm
III. Infringers’ use of logos on their accused products could become an easy escape hatch for avoiding infringement | 2:30pm – 2:45pm
IV. Tips will be provided for maximizing total profit damages for design patentees | 2:45pm – 3:00pm