How Much is a Patent Worth? – REDUX (Design Patents)

by YourPatentGuy on July 4, 2011

I am prompted to write this after reading a Motion for a Preliminary injunction filed in APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD., et al. What struck me is that the motion includes no less than 3 US design patents (US D618,677, US D593,087, and US D504,889) and 1 utility patent. I remember discussing Apple’s vision to obtain US design patent protection on desktop icons when I was a young patent attorney at Townsend and Townsend. While inspirational, I wondered at the validity and ultimate merit of a design patent on an icon. A quick patent search shows that Apple eventually succeeded in the US with about 24 design patents (here’s one to see if you’re curious: D382,553). And it appears that that some icon patents have been awarded in Europe – See: EU Grants Apple 24 iOS Icon Design Patents.

A Lexis/Nexis search I ran did not show any litigation activity on the US icon design patents which were granted starting around 1997 (filed in 1992). Which brings me back to the reason for this post – how much is a patent (design) worth? Unless you are associated with one of the idea promotion entities that prey on inventors, most people believe that a design patent does not have much value in the US. We often say it is better than no patent, but only marginally better. (There are times that design patents are quite appropriate and valuable – consult with your patent professional.)

Why? Because the US patent laws bifurcate applicable inventions into utility or design patents. In general terms, a “utility patent” protects the way an article is used and
works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics. Other countries protect inventions in industrial design which is what many inventors and businesses would like to protect in the US.

As in all issues of patent enforcement, one cannot infringe an invalid patent. A design patent can be invalid or limited if what it purports to claim is, in fact, functional or non-ornamental. A design patent typically has a claim, and that claim includes one or more views of the article of manufacture. If you examine the design patents in the motion for preliminary injunction, you’ll see extensive use of a standard in drawings for a design patent – use of broken lines (i.e., dashes). The convention is a broken line disclosure is to be for illustrative purposes only and forms no part of the claimed design. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is used, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied or applied to that is not considered part of the claimed design. When the claim is directed to just surface ornamentation for an article, the article in which it is embodied must be shown in broken lines.

Looking at FIG. 1 and FIG. 5 of US D618,677:

Fig. 1 from US D618,677Fig. 5 from US D618,677


You see that this design patent claims, once you remove the broken lines, an electronic device with a rounded-corner rectilinear flat face having a pair of intermedial bisecting lines and a slot at one end. And the face must be black. Another interesting thing about this claimed invention, the patent identifies no less than 14 inventors. In patent-speak, an inventor is an individual who has conceived of the invention. The inventor must form a definite and complete and operable invention to establish conception. One likes to err on the side of over-inclusion, but…

If this patent survives a validity challenge (and it is determined that the correct set of inventors were identified without including non-inventors), one can begin to address infringement. What is the test of infringement for a design patent? In an en banc rehearing of Egyptian Goddess v. SWISA, Inc. (EGYPTIAN GODDESS v. SWISA, 543 F.3d 665 (Fed. Cir. 2008)), an “ordinary observer” test was established.

Infringement of a design patent requires proof that an “ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” This hypothetical ordinary observer is assumed to have knowledge of the relevant prior art. Thus, “if the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer.” “The ordinary observer test applies to the patented design in its entirety, as it is claimed. There is claim construction as the parties seek to identify functional elements in the claim (which are removed from consideration of potential infringement.)

So, how does this play out? Looking at Apple’s Motion:

This is how Apple’s counsel characterizes the issue of infringement:

“Samsung copied every major element of Apple’s patented design:

  • a flat, clear, black-colored, rectangular front surface with four evenly rounded corners;
  • an inset rectangular display screen centered on the front surface that leaves very narrow borders on either side of the display screen and substantial borders above and below the display screen; and
  • a rounded, horizontal speaker slot centered on the front surface above the display screen,
  • where the rectangular front surface is otherwise substantially free of ornamentation outside of an optional button area centrally located below the display.”

Did you see all of that? There are some interesting issues here for sure. I have read that one of Apple’s arguments in the past has been that design patents are typically related to functional objects which can confound the examination of the issues. That is certainly true, just as it has been that Apple tries to extend the reach of the patent tools afforded under U.S. patent laws.

Part of what I see may be a problem with the argument is the possible reliance on the broken lines – they are expressly disclaimed. The arguments try to assert that a design patent claim protects the claimed product in its environmental context – but does that mean that use of the claimed elements in another context would not be infringement? I had not understood that design claims were so limited. That use of the claimed element in another environment would also, presumably, be infringing. This is one of the problems of the patent disclaiming the housing – the invention is really only understandable in a context but they may have removed the context from proper consideration.

Which brings us back to the value of a design patent. In most products made today, functional considerations are intimately tied into product industrial design. Apple has been famous (rightfully so I may add) for adding positive aesthetics to the electronics we have come to love and enjoy. However, properly identifying the ornamental features from the functional features is nearly impossible. There are undoubtably many functional utility elements that go into a product (e.g., touchscreen) to enable the face of a piece of useable electronics to actually function without hardware buttons.

The description of infringement appears to be me to include several “functional” elements and would therefore be unprotectable by a design patent. That a display screen is centered in its housing/display area would appear to be the most efficient packing method for a display. For any off-centered display, there is “extra housing” – particularly for a device substantially free of optional buttons. Either the display could be made larger or the housing made smaller. Additionally, displays have been centered in bezels well-before these applications were filed. That the display is black – can one obtain a non-black touchscreen? Would a non-black touchscreen cost more? And if one needed more room beyond the dimensions of the display, expanding longitudinally is better than laterally in order to grip/hold a phone.

One of the things that the rules for design patent seek to prohibit is exclusion of functional elements by a competitor under guise of a design patent. The proper route for this protection is a utility patent, the technology that enables the new design. As soon as the technology pieces were in place to permit a cellphone to be realized without buttons on the front, it becomes almost a requirement that the display be centered in the housing to maximize screen size/housing. Almost all corners in the housings of all products are rounded (less material, less cost = function). And making a consumer electronic product black? Product features that reduce cost can be functional for that simple reason alone – design protection is generally easier to support for features that increase product cost.

While I do not personally give the argument for granting preliminary injunction based upon the ‘677 patent much hope, the patent has value simply because there is the statutory presumption of validity. Any infringement of a valid patent is actionable. One of the forms of relief is an injunction – and that is most certainly valuable. This is part of a strategy in litigation among giants in the electronics field. It will take more before we can say that these patents, as opposed to other patents that Apple could have asserted, have any value separate and apart from its value as an instrument of litigation. Until then, seek design patent protection where appropriate and understand the limitations.



{ 3 comments… read them below or add one }

Dan July 4, 2011 at 5:39 pm

Super post.

Products often launch long before the utility patents issue that claim the inventions embodied in the product. Because design patents issue far quicker, one practical benefit of design patents is that they discourage [and sometimes even prevent] folks from rushing to market with a look-a-like product that may even make use of the not-yet-patented tech in the first to market product.

Whether the design patent is valid or not, or is as broad in scope as the patent owner believes, is, as you note, a whole ‘nother story.


YourPatentGuy July 5, 2011 at 6:55 am

Thank you Dan. Very good point about one of the benefits of the design patent application being shortened pendencies. Design application pendency has been falling and it is not uncommon to obtain a design patent between 12 and 18 months from filing while an average pendency of a utility application is more than 24 months and can be many years with the current backlog.


DavidIsaac August 11, 2014 at 2:15 am

The Apple vs Samsung case has showed everyone how much patent matters to a company. Patent has to be taken seriously.


Leave a Comment

This blog is kept spam free by WP-SpamFree.

Previous post:

Next post: