Design patent infringement

Design patent infringement
Three way visual comparison test

Design patent infringement isn’t just exact copying. Instead, the test is if an “ordinary observer” will see “substantial similarity.” 

Determining if a particular design of interest does or does not infringe upon another design patent is a tricky area of intellectual property law.

What is design patent infringement?

According to the 2008 Federal Circuit ruling in “Egyptian Goddess, Inc. v. Swisa, Inc. 543 F.3d 665: to infringe, a given design does not have to be an exact copy of another design patent. Instead, the question is one of “substantial similarity” under the “ordinary observer” test.

Great — what the heck is this, and how does this test determine design patent infringement?

The underlying idea is that customers looking to purchase a design patented product “Y” should not be confused by a similar-looking product “X.”

So as a practical matter, you should run this test using ordinary observers. Realize that if you are involved, it may be difficult for you to be entirely objective.  In this case, you are probably not a suitable “ordinary observer.”  Instead, determine if disinterested outsiders see “substantial similarity.”

Sometimes the differences between a given design and a particular design patent may be so high that no further comparisons are necessary. But sometimes the two devices are close.

The three-way visual comparison test

When two designs are close, a “three-way visual comparison test” can be useful. You can do this test by making a composite illustration showing the patented design on one side. Place the “accused design” (i.e., the device you are investigating) in the middle. Put the other devices representing the closest prior art on the other side.

Essentially it is a pattern recognition problem.  The idea is to use the prior art examples to instruct the ordinary observers as to how much variation is typical in this field.  Then the average observer can determine if the design of interest is overly close to the design patent of interest or not.

Consider the handheld blender designs in Braun Inc. V Dynamics Corp. 975 F.2d 815, in 1992.  As you can see in the above image, the “accused design” was visually much closer to the patented design than it was to the nearest prior art. The court determined that the “accused design” was infringing.

The best times to consider these design patent infringement issues are before you start producing and selling a new design. So if you have a new device that you are worried about, get the opinion of some neutral outsiders ASAP.  Indeed, consider running some focus groups as appropriate. If things look too close, consider making some further design changes, and trying again.

Also, consider filing your own set of design patent applications. To speed this up and make sure that the examiner looks at your competition, use the rocket docket. The rocket docket lets you directly cite the design(s) that most concern you. This way, you can generate proof that USPTO examiners have considered your competition, and still think your device is different. Your patents can reduce the chance of litigation because you will own IP in this area.

Amazon and IP disputes

Amazon IP - Amazon acting like its own court
The court of Amazon is enough of an 800-pound-gorilla that its IP policies can impact trademark, copyright, and patent strategy. Amazon is not kind to descriptive (supplemental register) trademarks. markets products from millions of manufacturers and vendors, resulting in a large number of IP (trademark, copyright, and patent) disputes.

Unfortunately, the US court system is designed to administer slow, careful (and thus expensive) justice to a small number of IP litigants. It can’t scale to Amazon volumes. So Amazon decided to make its own IP dispute process.


The Amazon Band Registry offers a number of methods to help trademark owners protect their rights and promote their products. However, at least for the US, just any trademark won’t work. The Amazon Brand Registry is presently only available for USPTO trademarks on the principal register. USPTO supplemental registry trademarks are out of luck.

The USPTO supplemental register is where otherwise OK, but “descriptive” trademarks are put to “age” for 5 years until the mark is considered to have “acquired distinctiveness”. So, the moral is that if you are planning to sell on Amazon, it is good to avoid the supplemental register. This can be done by registering a less descriptive product name.  There are trade-offs here, however, since descriptive names help customers understand the purpose of new products.


Be careful about the text and images that you upload. It should either be your own material, or material that you have clear rights to (e.g. license, resale of previously purchased physical items). Amazon operates a Digital Millennium Copyright (DMCA) infringement reporting system that you (and others) can use to report issues. If you hold copyrights that you feel are important, consider registering them with the US copyright office, as this can make enforcement easier. Note, however, that under their terms of service, Amazon acquires a license to use your uploaded material.


Amazon has recently announced a pilot patent dispute program.  The process is fast and (for patent law) inexpensive. The plaintiff provides the US patent number and the Amazon listing of the allegedly infringing product. Both parties can argue this (e.g. one submits written arguments for infringement, and the other submits written arguments in defense).  Both can pay $4,000 to submit their arguments to an Amazon selected neutral patent evaluator. The neutral evaluator evaluates the patent and product in question.

The winner gets their $4,000 fee back. The loser loses its fee. If the allegedly infringing product loses, Amazon will take down the listing. The neutral evaluator’s decisions are apparently final, but you can still go to the court system if you want.

Disclaimer: I have no affiliation with Amazon. Amazon IP policy can change at any time. However, Amazon is enough of an 800-pound-gorilla that their IP policies are having an impact on the IP ecosystem.

Ex Parte Reexamination

ex parte reexamination
Patent Ex Parte Reexamination

Are you having problems with a patent that you believe is invalid? Know about uncited prior art? Consider filing a Patent Ex Parte Reexamination request.

In the US, there are various legal methods to challenge the validity of issued patents. These legal methods vary significantly in expense and relative risk.

Ways to challenge a patent:

  • You can try to challenge a patent by a full Federal Court trial. Such trials are costly.  Indeed, patent litigation is called the “sport of kings.” Another problem is that you (the challenger) can’t be anonymous. So the possibility of “return fire” is high.
  • Alternatively, you can try to challenge a patent by an inter partes review (IPR) at the USPTO Patent Trial and Appeal Board (PTAB). The IPR process is essentially a streamlined mini-trial. IPR are relatively new (since 2013). Congress established them in an attempt to reduce the high costs of litigation. Indeed, IPR are about an order of magnitude cheaper than Federal Court litigation. But this is still quite pricy for small firms. Also, again, the challenger can not be anonymous.
  • You can also challenge a patent by filing a USPTO Ex Parte Reexamination request. Reexamination is the real low-budget approach. Reexaminations can cost an order of magnitude less than an IPR (and two orders of magnitude less than Federal Court litigation!) Ex Parte Reexaminations are thus in the price range for individual inventors and small startup companies. An additional advantage of this method is that you (the challenger) can be anonymous.  That is, if you file through an attorney, you need not give your identity, thus avoiding return fire.

Ex Parte Reexamination trades off cost for control:

At present, patent challengers only file about 200 Ex Parte Reexamination requests each year. Given the low costs and minimal risks, why isn’t this method used more often?  Probably because fewer arguments are allowed, and the challenger has less control over the process.

To file an Ex Parte Reexamination request, you (the challenger) need to identify some new and convincing printed prior art. Usually, this is one or more patents or other publications that the original patent examiner didn’t consider. These additional citations should be convincing enough to raise a Substantial New Question of Patentability (SNQ). Here, the USPTO only allows you to bring up two issues. These are anticipation (35 USC 102 – one new reference is enough); or obviousness (35 USC 103 – usually based on two or more new citations).

Initiating an Ex Parte Reexamination:

To initiate the challenge, you need to fill out a USPTO form (PTO/SB/57) with the relevant information, and further include a detailed request providing further explanation. The explanation shows how the various limitations in the challenged claims correspond to the new prior art references. Claim charts can be used, but are not required. This explanation is a bit like a USPTO office action.

You (as challenger) submit the form and detailed request to the USPTO along with other required papers. The USPTO will also require a reexamination fee (presently $3,000 for a small entity). You must also serve a copy of this request to the owner of the challenged patent. The USPTO requires you to provide proof of service as well (you can have a third party do this). This lets the USPTO verify that you have notified the patent owner. 

After you file the Ex Parte Reexamination request: 

The USPTO will review the request. If your request complies with the USPTO standards, they will inform the patent owner that the USPTO is reexamining their patent. You (as challenger) will then have no further input. 

Once reexamination starts, the USPTO patent examiner reopens examination by issuing new rejections, which the patent owner must rebut. 

The results depend on how well the patent owner rebuts the new rejections. Sometimes, such as when the patent owner knows that the patent is weak, they may “forfeit.” But if your new citations are not good enough, they may come back with an adequate response. In this case, the reexamined patent will issue again. It can reissue with either with the same claims or more limited claims. Now, what is left will be a bit stronger because of the added review.

Still, if you want to try to knock out a troublesome issued patent, know about some juicy but uncited prior art, and are on a budget, consider the Ex Parte Reexamination option.

Patent forum shopping


Patent forum shopping in the Texas Eastern District
Do armadillos love patent trolls? Maybe so. 

In the TC Heartland v. Kraft Food case, the Supreme Court ruled that the Eastern District Court of Texas is no longer patent litigation central. Goodbye, patent forum shopping. 

In a strange quirk of patent law, a single judge from Marshall Texas (population 24,000) was until recently deciding more than 25% of the US patent infringement cases. If you wanted to sue someone for patent infringement and wanted a friendly court, the Eastern District Court of Texas was the place for you.

Put it this way: so much patent litigation happened here that Samsung actually sponsored a local Marshall Texas ice skating rink, just to keep the locals happy.

This is very unusual.  Corporations are typically sued in their state of incorporation or in the primary state where they do business.  However, patent litigation has had its own set of rules.  For nearly a generation, lower courts have interpreted these rules as implying that corporations can be sued for patent violations nearly anywhere in the US.

It didn’t take long for patent litigation experts to figure out that if this was the rule, then why not sue where the courts are friendliest? This practice was also called “patent forum shopping”.

The local economy around Marshall Texas had been struggling.  What to do? In what may have been a bit of a “race to the bottom”, the Federal Court and local juries in Marshall Texas became increasingly patent-plaintiff-friendly.  Lots of attorneys with big corporate expense accounts started flying to Marshall.  Good for the local economy, but it starts to look a bit fishy…

In the recent TC Heartland v. Kraft Food decision, the Supreme Court decided that this had to stop.  They ruled that if Congress had intended this sort of thing, Congress would have said so plainly.  They also pointed out that there wasn’t much of a basis for the “file anywhere” interpretation. So goodbye “file anywhere” rule.  And for the most part, goodbye Eastern District Court of Texas.

Going forward, the new hot spots for patent litigation may become Delaware (many corporations are incorporated there), California (high tech industry), and other high-tech areas.

Conley, Twombly, and Iqbal

Conley, Twombly, and Iqbal
Motion to dismiss denied!

Conley, Twombly, and Iqbal are different standards of proof to successfully initiate patent litigation. This varies between the states.  Consider this when incorporating your company.

From the standpoint of patent litigation, “Conley, Twombly, and Iqbal” are attorney speak for how much “meat” a patent infringement complaint must have in order to not get quickly tossed out of court under a motion to dismiss [rule 12(b)(6)]. So if you ever receive a patent infringement complaint, or plan to institute a patent infringement complaint, these names will become important to you.

Historically, it was very difficult for the average person to initiate litigation. In earlier centuries, pleading had to follow strict “code pleading” rules, where even minor defects could cause otherwise good cases to be tossed out of court.  In rebellion to this, in the 1930’s, when the modern Federal Rules for Civil Procedure were first established, the thinking was that everyone should be able to have their day in court. To do this, the standards for the initial pleading were set at a low “short plain statement” level (1957 Conley v. Gibson case).  So it didn’t take much to start a Federal lawsuit. The legal theory here was that deficiencies in the initial filing could be easily corrected by subsequent discovery motions. Justice for the masses – this would be great!

Fast forward to 2007 and the legal situation was actually not so great. The Federal courts were clogged with cases. Discovery motions notoriously chewed up large amounts of time and money, sometimes on the basis of initial pleadings that were a bit “thin”.

In the 2007 Bell Atlantic Corp. v Twombly case, the US Supreme Court (SCOTUS) took it upon itself to raise the standards for pleading.  As rephrased by SCOTUS in the later (2009) Ascroft v. Iqbal case: “…only a complaint that states a plausible claim for relief survives a motion to dismiss… While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations. When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief.  Note the term “plausible”. It means “reasonable” or “believable”. This is where the standards get tightened, because the old standard was “possible”.

In practice, the court will initially assume that the complaint facts are correct, but then examine various alternative scenarios to see if there are plausible alternatives that are legally OK. For example, in the original Twombly case, collusion between telecommunications carriers was alleged. Facts showing that different carriers behaved in a similar manner were given, but no evidence of actual collusion was presented.  Here the “plausible” alternative scenario was that each was just independently protecting their own tuff without improper collusion. So the 12(b)(6) motion to dismiss was upheld.

Similarly, prior to Twombly, it did not take much to start a patent infringement lawsuit.  Just fill out a “Form 18” giving the patent number, an assertion of infringement, and a few other minor details and this was good enough.  In theory, after Twombly, standards should now be higher, but…

Ten years later, and due to intervening Federal Circuit rulings that encouraged continued use of “Form 18”, this higher standard is only now slowly trickling down to patent litigation. There are still significant inconsistencies between different states and different Federal District Courts. Before 2017, this didn’t matter as much because for patent infringement, a company could be sued anywhere.  But now, since the 2017 TC Heartland case, a company is usually sued in its state of incorporation.

So at present, we have a new and interesting situation where a company can apparently lower the risk of patent infringement lawsuits by incorporating in a state where the Federal Courts have higher standards.

Patent demand letters

Patent demand letter
Frustrated patent troll

Patent demand letters are stressful.  Before responding or ignoring, evaluate infringement, patent prosecution history, ownership, and litigation history.

Has your startup received a “demand” letter asserting that you are infringing on a patent?  Although real infringement of valid patents does occur, and some of these patent demand letters are legitimate, many patent demand letters are sent in less than 100% good faith. The sender of the letter may be betting that the startup will settle quickly to avoid litigation costs, regardless of the actual merits of the situation.

Don’t immediately contact the sender, and don’t ignore the letter either.  Instead, calm down and evaluate the facts, preferably with the help of a patent attorney.  Is there a plausible infringement problem or not?  How to tell the difference?  A few common methods are discussed below.

To start, get: 1) a copy of the issued patents discussed in the demand letter, 2) the USPTO prosecution history of these patents, and 3) information about the allegedly infringing product.  If the letter doesn’t provide actual issued patent numbers, or if the letter only cites patent application numbers, the probability that the letter is bogus becomes higher.

Look at the independent claims for each patent (claim 1 is not always the broadest claim), and see if your allegedly infringing product infringes the entire wording of any independent claim. If so, look at the relevant dependent claims for more detail. If the letter argues contributory infringement, combine your product with the other accused product for this analysis, and check if your marketing literature is promoting this combination. Claim chart analysis can help here.

The patent prosecution history for the patents in question, usually downloadable from the USPTO, can be very relevant. This history will often reference if the patent has been used in litigation before; if the patent has been reevaluated by either reexamination or the Patent Trial and Appeal Board (PTAB); and if the patent applicant had to make significant concessions during the patent prosecution history.

The patent’s USPTO assignment records can be used to better understand the relationship between the sender and the actual patent owner of record. This is often obfuscated. What is this relationship, and is the purported patent owner the real patent owner?

If there is a history of litigation, check it out. Patent litigation usually takes place in Federal Courts.  This is usually available through PACER (Public Access to Court Electronic Records) and a number of other sources. Has the patent owner been filing a lot of lawsuits and then settling before the court reaches a decision, or does the patent owner usually win?

There are many other issues that can be explored as well, but this type of information can help you and your attorney better evaluate what your next steps should be.