Examples of Design Patent Non-Infringement
John Wilson • Apr 21, 2020
Examples of Design Patent Non-Infringement
Given the prior art it can often be difficult to tell if a viable claim for design patent infringement can be maintained against manufacturers of similar products.
Test For Design Patent Infringement
The primary test for determining infringement of a design patent was established in the seminal design patent infringement case, Gorham Co. v. White, 81 U.S. 511 (1871). In Gorham, the United States Supreme Court declared that infringement of a design patent occurs if: “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same.” In 2008, a Federal Circuit court held that the “ordinary observer test,” as established in Gorham, is the sole test for determining design patent infringement; however, the determination must be “conducted in light of the prior art.” If a design patent is substantially similar to prior art, then the differences between the design patent and the potentially-infringing products will be accentuated. Therefore, the appropriate test for design patent infringement is whether an ordinary observer would consider two designs substantially the same, considering the prior art.
Design patent infringement is highly contingent on prior art. Therefore, the relevant prior art must be considered when analyzing the viability of claims against potential infringers. 35 U.S.C. §102(b) identifies that prior art may consist of an invention that “was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.”
Examples of Design Patent Non-Infringement
Although design patent infringement is determined on a case-by-case basis, examples of prior decisions may be used as a guideline to predict potential outcomes of future design patent infringement cases. The following examples used the “ordinary observer” test to determine that a design patent had been found not too infringe.
The Federal Circuit Court in Richardson found no infringement in a case that involved a tool which combined three tools into one – a hammer, jaw, and crowbar – because the overall appearances of the designs were not substantially the same. Figure 4 displays a side-by-side comparison of the products at issue with the relevant prior art.
Richardson v. Stanley Works 597 F.3d 1288 (Fed. Cir. 2010)
Although the district court in Victor Stanley held that a bench end featuring accentuated curvature to the legs infringed the ‘623 patent, the same court held that another bench end featuring accentuated curvature to the legs did not infringe the ‘623 patent. The latter design featured an oval below the seat, from which the court determined that the bench end created “a different and distinctive look that would not confuse the ordinary observer.” Specifically, the court stated: “[e]ach of the individual ornamental elements may be almost identical in isolation, but the overall impression is aesthetically different.” Figure 5 displays a side-by-side comparison of the products at issue.
Victor Stanley v. Creative Pipe, 2011 LEXIS 112846 (D.Md. 2011)
Although the prior art in Victor Stanley featured a looped arm rest and curved bench legs, both the ‘623 patent and the infringing design featured accentuated curvature of the legs, which was the distinguishing feature of the ‘623 patent and the prior art.
Given the prior art it can often be difficult to tell if a viable claim for design patent infringement can be maintained against manufacturers of similar products.
Interview of a Child in Chambers by a Texas Court Divorces can be messy; even more so when children are involved. One pivotal question that is often asked is who will receive primary custody. The prospect of children speaking to a judge during a divorce case to help determine custody can be a controversial topic. On one hand, it aims to understand and prioritize the child's preferences and best interests. On the other hand, exposing children to legal proceedings can be emotionally taxing and stressful . When Can the Judge Talk to Children? During a nonjury trial or hearing, the court is required to privately interview any child 12 years or older, while interviewing a child under 12 is at the judge's discretion. This private interview helps convey the child's wishes regarding who should have primary custody. The judge can also conduct the interview independently or on the request of a party, amicus attorney, or attorney ad litem. While speaking to the child can help determine issues of possession, access, and parent-child relationships, it does not restrict the court’s authority to decide what’s best for them. However, in cases where a jury trial is underway, the judge is prohibited from privately interviewing the child on matters subject to a jury verdict such as which parent is granted conservatorship/primary custody. During the conversations, attorneys representing the parents, the amicus attorney, the guardian ad litem, or the child's attorney ad litem may be present. For children aged 12 and older, the court is required to record these interviews to ensure a thorough and accurate record is available as part of the overall case documentation. Inside the Judge's Playbook: What Gets Asked? The judge may ask open-ended questions about living arrangements, the child's relationship with each parent, and other aspects relevant to their well-being. Additionally, an interviewer’s nonverbal communication may not contribute to the making of a particular statement. James v. Texas DHS, 836 S.W.2d 236, 239-241, (Tex.App.—Texarkana 1992, no writ.). However, the child's testimony is just one piece of the puzzle, weighed alongside other factors such as parental behavior, home stability, and each parent's willingness to cultivate the child's relationship with the other parent. Importantly, if the judge during the interview has reasonable cause to believe that a child’s physical or mental health or welfare has been adversely affected by abuse or neglect by any person , the the judge is obligated to shall immediately make a report. Tex. Fam. Code §261.101(a).
What is a Franchise Agreement? Businesses form franchise agreements when they want to share their business ideas and ventures with other entrepreneurs looking to be independent business operators themselves. The franchise agreement is a legal contract that establishes a franchisor-franchisee relationship to expand the franchisor's entrepreneurial ideas and values. The franchisor grants the franchisee the legal right to set up and operate a franchised business consistent with the terms of the franchise agreement. Under this agreement, the franchisee gains the license to use the franchisor’s trademarks, trade dress, business systems, operational manuals, and supply sources for offering and selling the franchisor's specified products and/or services. The franchise agreement is required to be legally included as an exhibit in the franchisor’s Franchise Disclosure Document, which must be presented to potential franchisees before any franchise offerings or sales are made. The federal trade commission publishes A Consumer's Guide to Buying a Franchise which is helpful for perspective purchasers' of franchises.
New FTC Rule Bans Noncompete Agreements in Employment Contracts
Beneficial Ownership Information (BOI) Form - New Filing Requirements for Legal Entities
Parental Alienation | Texas Child Custody Attorneys
Transferring a Foreign Limited Liability Company (LLC) to the State of Texas
Understanding the Process for Sealing a Civil Case Under Texas Law: Insights from Wilson Whitaker Rynell, Dallas Attorneys
Understanding Consumer Perception in Trademarks
Assessing Mental Capacity to Enter Contracts in Texas
The Wilson Legal Group are Dallas attorneys that specializes in Patents, Trademarks, Copyrights, Trade Secrets, Complex Litigation, Business/Corporate Law, Family Law and Real Estate Law. At the Wilson Legal Group, our clients are our focus. Our philosophy is simple and straight-forward: Understand our clients' needs, hopes, and interests in order to help them flourish. Our staff strives to build strong relationships with our clients in order to appreciate their best interests and help them achieve their goals.
Have an idea for a blog? Click and request a blog and we will let you know when we post it!
Let’s talk about your legal issue
Wilson Legal Group P.C.
d/b/a Wilson Whitaker Rynell
(972) 248-8080 (Dallas) MAIN OFFICE
(713) 830-2207 (Houston) Appointment Only
(512) 691-4100 (Austin) Appointment Only
For more information on how we can assist in your intellectual property, commercial litigation, divorce, or other personal needs, let us know how we can help you:
How Can We Help You?
Disclaimer:
This form does not establish an attorney-client relationship, and should only be used to contact the firm about scheduling a call or meeting. No confidential or sensitive information should be sent using this form.
The law office of Wilson Legal Group P.C. (d/b/a Wilson Whitaker Rynell) represents clients nationwide, including Dallas, Austin, Houston, and other Texas areas such as Fort Worth, Arlington, Carrollton, Plano, Allen, Lewisville, Flower Mound, Irving, Denton, McKinney, North Richland Hills, and all cities within Dallas County, Tarrant County, Collin County, and Denton County.
OFFICES
ABOUT
CONTACT
BLOG
JOIN OUR NEWSLETTER
Wilson Whitaker Rynell
16610 Dallas Parkway, Suite 1000
Dallas, Texas 75248
972-248-8080 (MAIN)
972-248-8088 (FAX)
info@wrrlegal.com (E-MAIL)