Why Get A Design Patent? Historically, design patents have enjoyed a mixed reputation. Many are relatively easy to obtain and to design around, which has given them a reputation for being a limited form of protection. But case law following Egyptian Goddess v. Swisa has shown that design patent law
Prosecution history estoppel (PHE) may prevent a finding of infringement when the patentee originally claims the matter alleged to infringe but then narrows the claim in response to a rejection during prosecution. PHE applies when: (1) there is a “surrender of claim scope” during the prosecution of the asserted design
In Hydrojug, Inc. v. Five Below, Inc., plaintiff moved for a preliminary injunction over design patent D887,202 (Container Top). The Court granted the preliminary injunction, finding the accused product was identical to the patented product. The Court also found irreparable harm was established based on multiple examples of customers either
A plaintiff must plead and prove compliance with the patent marking statute to receive pre-suit damages. In Blackbird Tech LLC v. Argento SC by Sicura, Inc., 21cv11018, (S.D.N.Y. Aug. 26, 2022), the pleading statement “[a]ll marking requirements under 35 U.S.C. § 287 have been complied with” was considered too conclusory
1. Effect of Notice of Intent to Issue a Reexamination Certificate on Non-Infringement Decision. Be careful of the effect a reexamination may have on a later infringement action. Here, the District Court incorporates the rationale and conclusions in the Notice of Intent to Issue Ex Parte Reexamination Certificate (Reexamination) into its reasoning