Court Interprets Claimed Contour Lines in Design Patent Drawings as Claimed Features | Morgan lewis

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The advantages of a clear surface shading in a design patent were highlighted in a recent district circuit decision, which found that the supposed contour or tangent edge lines added to the drawings to illustrate a transition edge between the rounded and flat surfaces were not appropriate lines to indicate the contour of the surface, but instead claimed functionality.

In order to show the outline or surface of 3D objects in 2D drawings, design applicants often use drawing techniques such as tangent edge lines, also known as wireframe, to indicate the contours of the surface instead of or in addition to the shadow lines or dotted lines. The United States District Court for the Northern District of California recently issued a claim construction order in simplehuman, LLC v iTouchless Housewares and Products Inc.,[1] interpreting the contour lines claimed in two design patents as being in place of the ornamental features claimed.

simplehuman, LLC (simplehuman) has filed a patent infringement complaint against iTouchless Housewares and Products, Inc. (iTouchless) claiming that iTouchless products infringe patents owned by simplehuman, including two design patents. Specifically, simplehuman alleges that iTouchless’s Double Deodorant Oval Open Top Trash Can violates U.S. Design Patent No.D644,807 (the D’807 patent) and that the iTouchless Double Deodorant Open Top Trash Can and Trash Can violates U.S. Design Patent No. ‘iTouchless infringe US Design Patent No. D729,485 (the D485 patent) (collectively, the Design Patents asserted)[2]. A comparison of the iTouchless deodorant and the D’807 patent, and the iTouchless recycle can and the D’485 patent is shown below.

In response to simplehuman’s complaint, iTouchless filed a motion to dismiss arguing that the claimed design patents were different from iTouchless products due, in part, to the claimed design patents claiming lines of stitching that are not present in iTouchless products. simplehuman responded that the contested lines iTouchless was referring to were not seams at all, but rather contour lines indicating the contour of the surface, and therefore the lines themselves are not part of the claimed design.

On December 14, 2020, the district court issued a construction claims order indicating whether the contested lines of the asserted design patents, annotated below, are claimed ornamental features or unclaimed contour lines.

Simpehuman trash can

During the construction of the claim, simplehuman argued that the contested lines were shadow or contour lines intended to show the shape of the trash cans. The district court reviewed the illustrations of the claimed design patents and said the contested lines of the claimed design patents “probably cannot represent a shading.”[3] For example, regarding the D’807 patent, the district court stated that the contested lines on the right side and at the top of the bin do not indicate any contour changes since the right side view and the top view are in largely flat, and therefore devoid of any superficial contours. The district court made a similar analysis for the D’485 patent.

iTouchless argued that simplehuman did not include the contested lines consistently across all surfaces. The district court agreed with iTouchless and further stated that, at most, the contested lines “represent a delineation between rounded and flat surfaces” and “the shading advocated by simplehuman … is not sufficient to show outline because it doesn’t indicate which surface recedes … and includes lines in views where there would be no difference in outline.[4]”

Moreover, the district court was also persuaded by iTouchless’s argument that the use of the contested lines, shown as straight lines, is undifferentiated from the boundary lines due to the same line weight used. for both. The district court stated that this creates ambiguity as it is not possible to distinguish contour changes from ornamental surface features, and is therefore inadequate under 37 CFR § 1.152[5].

The assertive design patents also originally included corresponding photographs which show shadows where the designs represent lines. During the prosecution, the examiner quashed the photographs via an amendment for incorrectly including photographs and line drawings in the same application. simplehuman argued that the photographs confirm that the contested lines represent shading. However, the district court disagreed and concluded that the examiner excluded the photographs precisely because they contradicted the line drawings.

iTouchless also pointed out that simplehuman’s own unclaimed patents, as well as the utility patent claimed in this same case, use conventional shading practices. These conventional shading practices are published in a design patent application guide provided by the United States Patent and Trademark Office (USPTO) to show common types of shading and do not include tangent edge lines.

In addition, simplehuman presented a statement from a former patent examiner who provided examples of other design patents that use the same drafting technique as the design patents claimed, i.e. using lines unbroken straight lines to indicate the contour. However, the district court said the technique is not useful or sufficient to overcome the otherwise clear intrinsic evidence.

As a result, the district court adopted the construction proposed by iTouchless that the contested lines are claimed seams and not proper contour lines.[6]

PRACTICE TIPS

Many design patent applicants choose to use metal framing or tangent edge contour lines to illustrate the contour of the surface, as such a technique is a well-accepted technical drawing convention and can be easily added to drawings by. computer aided design (CAD) software. However, as noted here, judges (who are generally unfamiliar with drawing techniques) may interpret the drawing differently than the candidate intended.

Accordingly, design patent applicants may consider avoiding the use of metal frames or tangent edge contour lines. While the hypothetical ordinary observer may be able to determine the shape of objects where tangent edge contour lines are used or if no stippling or shading is provided, this may be more difficult to do. Additionally, although there is no requirement to include surface shading or contour lines, judges and investigators may find it easier to appreciate the features of the claimed design with more surface features displayed. . In addition to more accurately illustrating the outline of the surface, shading the surface can also help designs appear generally more realistic.

If contour lines are used, design applicants should ensure that they are used consistently. Applicants should also consider differentiating the contour lines from the claimed lines. Use of a line thickness lighter than the claimed lines, including at least one break in each contour line, and / or consider including clarifying statements or warnings in the original specification as to this what the lines represent can help this cause and make it clear which lines and features are claimed.

[1] Civil Action # 4: 19-cv-02701-HSG (ND Cal., December 14, 2020)

[2] simplehuman also alleged that iTouchless products infringed their utility patent, U.S. Patent No. 6,626,316.

[3] See simplehuman, slip op to 4.

[4] See username, slip op to 7.

[5] 37 CFR § 1.152 states that “[a]Appropriate and adequate surface shading should be used to show the character or outline of the surfaces shown.

[6] The claim construction order also included the construction of the claim interpreting various terms of a claimed utility patent, U.S. Patent No. 6,626,316, which is not discussed here.

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