In brief: design enforcement in USA

Enforcement

What are the key causes of action?

A design patent can be enforced before a district court and before the international trade commission (ITC) where a design patent holder would assert that its design patent is infringed.

What enforcement procedures are available?

A court may grant injunctive and monetary relief.

What remedies are available?

Two mutually exclusive avenues of monetary recovery exist for infringement of a design patent. Under Section 284, a design patent owner may recover typical patent infringement damages, including reasonable royalties and lost profits. Alternatively, under Section 289, a design patent owner may elect to recover a disgorgement of the total profit of the accused infringer’s sales of an infringing product. Section 289 damages are a remedy available to design patent owners that are not available to utility patent owners. Damages under Section 284 can be increased up to three times if wilfulness is proven.

What are the time frames for the resolution of enforcement actions for registered and unregistered rights?

A typical patent infringement case takes several years to reach final judgment in district court. IP rights typically take 18 months from filing to completion (excluding appeals to the Federal Circuit). ITC investigations typically reach final determination in under 15 months from institution.

What key cases from the past 18 months should rights holders be aware of?

In Curver Luxembourg SARL v Home Expressions Inc, the United States Court of Appeals for the Federal Circuit held that the amendment of the claim language (eg, the title) can limit the scope of a design patent under the theory of prosecution history estoppel.

In Campbell Soup Co v Gamon Plus Inc, the Federal Circuit reversed a finding that a prior art reference was not a proper primary reference for assessing obviousness, even though the prior art reference lacked a material part of the design claim. On remand, the Patent Trial and Appeal Board again found that the claimed design was patentable over the prior art, relying on secondary considerations of non-obviousness.

In Columbia Sportswear North America Inc v Seirus Innovative Accessories Inc, the Federal Circuit held that the lower court erred in granted summary judgment of infringement because it failed to consider a repeated interposed shape on the accused product (which was the accused infringer’s logo) in its infringement analysis.