Infringement of Design Patents

Posted by Frederic Douglas | Dec 08, 2023 | 0 Comments

     The infringement of design patents is analyzed under the ordinary observer test. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008). Under
this test, a product only infringes a design patent if an ordinary observer would find the designs to be “substantially the same” such that one could be induced to buy one supposed to be
the other. Id. at 678.

Prior art may disclose the same overall visual appearance as the design claimed in an asserted patent.

Golden Eye Media USA, Inc. v. Evo Lifestyle Prods. Ltd., No. 2021-2096, 2022 U.S. App. LEXIS 17145, at *8 (Fed. Cir., June 22, 2022) (non-precedential).

For a design to be protectable by a design patent, "the design must not be governed solely by function, i.e., that this is not the only possible form of the article that could perform its function." Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002). A design patent is invalid if the design is "dictated by the utilitarian purpose of the article." High Point Design LLC v. Buyer's Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (internal quotation marks omitted). In determining whether a design is dictated by function, courts consider whether (1) "the protected design represents the best design," (2) "alternative designs would adversely affect the utility of the specified article," (3) "there are any concomitant utility patents," (4) "the advertising touts particular features of the design as having specific utility," and (5) "there are any elements in the design or an overall appearance clearly not dictated by function." Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1322 (Fed. Cir. 2016).

About the Author

Frederic Douglas

Frederic M. Douglas is an attorney practicing IP litigation. (949) 293-0442 @PhredDouglas In 1996, Mr. Douglas graduated from the University of California, Berkeley with a Bachelor of Science degree in chemical engineering. In 1999, he received his Juris Doctorate degree from the University of...


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