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Functionality Rearing its Head in Law Of Design Patents, AIPLA Panelist Proclaims

Friday, May 10, 2013
By Paul Shukovsky

SEATTLE--Inconsistent handling of the issue of functionality has penetrated a series of design patent cases, and courts must take action to dispel the resulting state of confusion, according to a participant in a May 2 session at the spring meeting of the American Intellectual Property Law Association.

“Functionality is rearing its head,” according to Richard S. Stockton of Banner & Witcoff, Chicago.

The problems that have evolved stem in part from the fact that there are multiple tests for determining functionality, Stockton said. He argued that these disparate tests have created a dysfunctional jurisprudence in the design patent world that leaves lawyers without a clear direction on how to advise their clients.

“I think the whole foray of functionality going into claim construction is wrong,” Stockton said. “The bottom line is that if a claim design is primarily dictated by function, don't you think there's a bunch of prior art that looks like it? Let the trier of fact evaluate that … rather than go down these rabbit holes of evaluating what is functional and what's not.”

Tracing the rise of design patent claim construction, Stockton asserted that Richardson v. Stanley Works Inc., 597 F.3d 1288, 37 U.S.P.Q.2d 1816 (Fed. Cir. 2010) (50 PTD, 3/17/10)“is really the case that has taken the … confusion to the next level.”

The case involved a patented multi-function tool. While the parts of the alleged infringing tool were similarly arranged, the court held that, after discounting the functional aspects of the design, the “overall effect” of the infringing design was very different “and hence cannot cause market confusion.”

'Chaos has Resulted.’

Stockton said he believed that “this case should never have gone to the Federal Circuit; bad facts make bad law. I just don't think these two [tools] look alike no matter how you treat the functional elements. Unfortunately it went to the Federal Circuit and I think some chaos has resulted from it.”

In the wake of Richardson, “courts seem confused,” he said. “My thesis here is that there is a lot of gamesmanship now because there are so many roads that functionality can take. And this is a huge problem for practitioners. You can't advise your clients with a lot of certainty about what's going to happen because you can't be sure of which test is going to be taken or how the court is going to act.”

Richardson “decided some things are functional and some things are not. It's very difficult for practitioners to look in their crystal ball and predict what the judge is going to say about certain elements,” Stockton said.

The varying tests for functionality that have emerged exemplify dysfunctions, Stockton argued.

“When I look at these cases, I think a lot of them contain very bad language. One problem is that there's a dearth of case law and so what happens is as cases carry on, a lot of dicta all of a sudden turns into the rule of law and is followed. And I think there are a lot of unintended consequences that come out. In the Richardson case, one thing that has driven me crazy since the first moment I read the case is that the court is just not precise in its language,” he said.

'What the Heck … ?’

Citing phrases from decisions such as “discounting functional elements,” “ignoring functional elements,” and “factoring out functional elements,” a palpably frustrated Stockton said: “What the heck does this mean?”

Because “the language is as not precise, you have the appeal board sort of struggling with exactly what it's supposed to do,” he said.

And it's not just the appeal board that is at a loss, Stockton said.

“I think there is too much discretion given to district courts here. It's impeding our ability to advise our clients,” he said. “And I think it's creating a lot of unnecessary litigation. You just simply don't know where you are going to wind up. You don't know if you have a winner case or a loser case. Hopefully … we'll see some more clarity on functionality at some point.”

Given the state of confusion in current law, he had this advice: “Look at the tests. Look at the timing of these things. Look at the vehicles and figure out what favors your client. I mean be good lawyers. Always keep in mind alternative designs,” which he said always seems to come up despite what the test is. “And remember, if you are going to assault functionality as an accused infringer, the requirement for proof is higher. It's clear and convincing evidence versus if it is brought up in construction.”

'Not Protectable without Content.’

Also on the design panel was Tracy-Gene G. Durkin of Sterne, Kessler, Goldstein, & Fox, Washington, D.C.--who was the attorney who prosecuted the Apple patents determined to be infringing in theApple v. Samsung case.--was clearly well prepared for her presentation on protecting the look of smartphone applications.

She said that she was lukewarm to the use of copyright law to protect apps.

“The trick with graphic user interface and copyrights is that the copyright office … may not even register designs that don't show a certain level of creativity,” Durkin said.

Another pitfall, she said, is that since there “is no real examination of copyrights, you may get a copyright registration if you apply for it to protect your software and you may not realize until you get to court that you're going to have trouble actually enforcing it.”

And copyright will also not protect things that are purely functional, she said. “There has to be some artistic embellishment.”

Recalling a conversation with former Register of Copyrights Ralph Oman, Durkin said that Oman had told her that the ubiquitous trashcan icon “is probably not original enough, but the Explorer icon is an example of something that probably has enough creativity.”

“When it comes to the actual graphical user interface layout, it's not protectable without content,” Durkin said. “Ralph was saying the Google search page might be protectable with content, but not just the layout itself.”

'An Interesting Question.’

“Most importantly, you have to prove copying, which can be difficult,” Durkin said. “There is a proxy for copying which is substantial similarity and access to the design. But again this is a big hurdle when you have to go into court having to prove that someone actually copied the design.”

“So copyright is available. I don't see it as a particularly useful tool … for things like icons and the important look of graphical user interface.”

When considering the use of trademarks, “the most important thing is that the image--the icon or graphical user interface--actually function as a trademark,” Durkin said. “That might be easy to show with an icon for example. But when it comes to something that is really more a graphical user interface like a slide to unlock on an iPhone for example, you're going to have a hard time showing that consumers actually associate that with a particular product.”

Durkin said that one of the challenges of using trademark to protect graphical user interface is that “you have to prove that your design and the accused infringing device is confusingly similar.” That can involve surveys, she said, adding that “certainly evidence of actual confusion would be very helpful. Anyone who has been in a trademark case knows that proving likelihood of confusion is a challenge.”

There are issues that still need to be answered. For example, is an icon a product or is it product packaging?

“The Patent Office must be thinking of it as packaging because with packaging you don't have to show secondary meaning,” she said. “To me it's kind of an interesting question because is the icon the package that you open in order to get to software that you want to use or is it actually the product itself? I don't think that's a question that TTAB or the courts have considered.”

'Entitled to Infringer's Profit.’

Durkin called design patents “a key tool in protecting graphical user interface. The challenge in the patent space is that things have to be novel. But if you can show that, in the end I think you end up with a stronger form of protection which for several reasons will be helpful to you in the marketplace.”

She said attorneys face a real challenge with design patents because “there is very little ability to amend your application once you file it.”

Durkin warned that examiners conduct very broad searches.

“The graphical user interface area at the U.S. Patent Office is the fastest growing in the design group. At one time there was one examiner and there are now 11,” Durkin said.

An advantage of going the design patent route is that it is available for icons and screen design, “especially for those that don't function as a trademark. There is a presumption of validity which you don't get in copyrights or trademarks.”

Design patents are easier to enforce too, she said. “Not having to prove consumer confusion is a real advantage. The measure of damages is very significant. You're entitled to the infringer's profit.”

The panel discussion was moderated by Jura Christine Zibas of Wilson Elser Moskowitz Edelman & Dicker, New York. Christopher Carani of McAndrews Held & Malloy, Chicago, presented on remedies for design IP infringement. Lance Reich of Lee & Hayes, Seattle, addressed international design patent protection. Francois Guay of Smart & Biggar, Montreal, discussed industrial design protection in Canada.

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