- Samsung Electronics Co., Ltd. v. Apple Inc. (S.Ct. 2016)
- The U.S. Supreme Court addresses the issue of damages in design patents under 35 U.S.C. 289. In this decision, the Supreme Court ruled that the relevant "article of manufacture" for arriving at a § 289 damages award need not be the end product sold to the consumer but may be only a component of that product.
- This decision overrules the Federal Circuit's 2015 Apple v. Samsung decision, at least as it applies to damage calculations under Section 289.
- Apple Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2015)
- The is the primary appeal from the nearly $1 billion dollar trial verdict in the Apple v. Samsung litigation. In this decision Federal Circuit overturned the verdict with respect to Apple's trade dress rights, finding that the evidence showed that the trade dress was functional and unprotected. However, the Federal Circuit held that the functional aspects in Apple's design patents did not prevent a finding of infringement of those elements. The Federal Circuit found that it was not necessary to ignore functional elements in a design patent when considering infringement. The Federal Circuit also found that Apple should be awarded Samsung's profits on the entirety of the infringing cell phones, a decision that was overturned by the Supreme Court.
- Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. 2008)
- In this en banc decision, the Federal Circuit does away with the point of novelty test to determine infringement of a design patent. Instead, the Court relies upon the ordinary observer test. The Court also explained that is was not necessary, or even desirable, for District Courts to provide a verbal description of the scope of a design patent claim.
- Sport Dimension, Inc. v. Coleman Co., Inc (Fed. Cir. 2016)
- The Federal Circuit once again considers the issue of functional elements in a design patent and affirmatively rejects any interpretation of its prior cases that requires that functional elements be "factored out" when analyzing design patent claims.
- Ethicon Endo-Surgery, Inc. v. Covidien, Inc. (Fed. Cir. 2015)
- The Federal Circuit considered how to consider alternative designs when analyzing whether a design patent is invalid for being directed to a functional design. The Federal Circuit clarified that there is no mandatory test for determining whether a claimed design is dictated by its function. Nonetheless, an inquiry into whether a design is functional should being with "an inquiry into the existence of alternative designs." As for infringement, the Ethicon decision clarified that the Egyptian Goddess case requires a consideration of the prior art only if the patented design and the accused device are not plainly dissimilar. Because the accused devise was not similar to the patented design, there is no reason to consider the prior art.
- Crocs, Inc. v. International Trade Com'n (Fed. Cir. 2010)
- The Federal Circuit applies its Egyptian Goddess decision to find infringement of a design patent covering a sandle manufactured by Crocs.
- Akamai Technologies v. Limelight Networks (Fed. Cir. en Banc 2015)
- The Federal Circuit analyzes the written description requirement under 35 USC 112 in the context of design patents, and determines that the same basic requirements applies to both utility and design patents. In particular, the written description requirement is met when the original disclosure allows a person "of ordinary skill in the art to recognize that [the inventor] invented what is claimed. In this case, the patent owner attempted to patent a subset of the originally disclosed design when the original disclosure gave no indication that the design could be divided at that location. In other words, this was not a situation where a dotted line from the original disclosure (not part of the design) is made solid (and therefore part of the design) or vice versa. Rather, the continuing application attempted to draw a "new" line, and this would not meet the written disclosure requirement.
- Commil USA, LLC, Petitioner v. Cisco Systems, Inc. (S.Ct. 2015)
- The court addressed the issue as to whether a good faith belief of patent invalidity is a defense to an allegation that the defendant's actions induced another to infringe under 35 U.S.C. 271(b). The majority opinion that that even a good faith belief that a patent was invalid is not a defense to a claim of induced infringement.
- Global-Tech Appliances, Inc. v. SEB S.A. (S.Ct. 2011)
- Aro Manufacturing Co., Inc., et al. v. Convertible Top Replacement Co., Inc. (ARO I) (S.Ct. 1961)
- Aro Manufacturing Co., Inc., et al. v. Convertible Top Replacement Co., Inc. (ARO II) (S.Ct. 1964)
- Limelight Networks, Inc. v. Akamai Technologies, Inc. (S.Ct. 2014)
- In this case, the Supreme Court broadly holds that there can be no liability for inducing patent infringement under 35 USC 271(b) unless there is actual direct infringement by some party under 35 USC 271(a). In this case, the Federal Circuit had applied its Muniauction decision relating to split infringement, and found that no one party had performed all the steps of the claim at issue. Furthermore, since no party controlled the other party to the extent required in Muniauction, there was no direct infringement. The Supreme Court overturned the Federal Circuit's additional finding that there could nonetheless be infringement under Section 271(b) of the act in spite of the lack of direct infringement. Although the Supreme Court hinted that the Muniauction decision should be reconsidered, it declined to directly address this issue.
- Akamai Technologies v. Limelight Networks (Fed. Cir. en Banc 2015)
- The Federal Circuit reconsiders its Muniauction decision and decides to establish a new test for direct infringement under 35 USC 271(a). The court found that infringement can be found "when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance." Alternatively, infringement can be found when "where two or more actors form a joint enterprise." In this case, Limelight customers had to tag and serve content if they wanted to use Limelight's content delivery service. As a result, those method steps are attributed to Limelight and Limelight is guilty of direct infringement since all the method steps were performed by or attributable to Limelight.
Patentable Subject Matter
Bitlaw now provides a separate Section 101 Cases page that indexes and summarizes the current case law concerning subject matter eligibility.
Provisional Patent Applications
- New Railhead Manufacturing L.L.C. v. Vemeer Manufacturing Co. (Fed. Cir. 2002)
- In this case, the plaintiff invented a new drill bit where the bit body is "angled with respect to the sonde housing." While this angle was described in the non-provisional patent application, the angle was not disclosed in the originally filed provisional application. Unfortunately, the plaintiff had offered the drill bit for sale more than one-year before the non-provisional filing date, and therefore the patent would be invalid under the statutory bar section of 35 U.S.C. 102(b) unless the patent was entitled to the filing date of the provisional application. Since the claim limitation of the angled drill bit body was not adequately disclosed in the provisional application, the inventor could not claim the benefit of the provisional application and the patent was declared invalid.