Prefacing Note on Intellectual Property Tests and Standards (Part 4 of 4)

                The anticipation and obviousness inquiries are different for design patents, as compared to utility patents.  Given that three of the patents at issue are designs, a clear understanding of both anticipation and obviousness is necessary to understand Samsung’s invalidity arguments.  As discussed earlier, we are focusing on anticipation and obviousness as grounds for invalidating a patent.

                As mentioned in the last post, patent law theory essentially posits the same tests for anticipation and obviousness.  The anticipation inquiry requires only one single reference.  If an ordinary observer would think that one single prior art reference is “substantially the same” as the design patent, then that reference is anticipatory and invalidates the design patent.  A prior art reference is substantially the same as the design patent if “‘the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.’” As the district court emphatically stated, “the focus should likewise be on ‘the overall design’ of the patent as compared” to the anticipatory reference. Court Order Denying the Motion for Preliminary Injunction at 10-11, 18.

The inquiry for obviousness is more complicated.  If a designer “of ordinary skill [in the design of the articles involved] would have combined teachings of the prior art to create the same overall visual appearance as the claimed design,” then the design patent is obvious and invalid. Richardson at 3.  Determining if the combined prior art creates the same overall visual appearance as the design patent falls under the ordinary observer test: would an ordinary observer think the appearance of the design created by combined prior art is substantially similar to the appearance of the design patent?  If yes, then the combined prior art renders the patent obvious. Wharton, Blog Entry.  In sum, the obviousness analysis centers on the overall appearance of the claimed design, not on the design concept. Richardson at 3, Manual of Patent Examining Procedure (“MPEP”) at 1504.03.

The combination must contain one “primary [prior art] reference” and at least one other “secondary [prior art] reference.” Tambolas, Blog Entry.  This primary reference must be one prior art reference with “design characteristics [that] are basically the same as the claimed design.” Richardson at 3. The “design characteristics” term is defined to mean “overall visual appearance.” MPEP at 1504.03. So, the primary reference must have the “basically the same overall visual appearance” as the design patent. This standard is an incredibly stringent test.

If the defendant doesn’t find a primary reference that has basically the same appearance as the design patent, then he cannot argue that the design patent is invalid due to obviousness. Id.  This prior art reference must be “something in existence, and not something brought into existence by selecting and combining features from prior art references.” Id.  Differences between the primary reference and design patent are permissible where such differences are minor or don’t concern the overall appearance of the design.  Where there such permissible differences, then secondary references can be utilized to bridge the gap between the two.  However, the defendant must prove that these differences would have been obvious to a person of ordinary skill in the art. Id.

After finding a primary reference, secondary sources can be used to modify the primary reference.  However, in order to qualify as a secondary reference, the reference must be “‘so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.’” Richardson at 3.  Essentially, a designer of ordinary skill in the art must see some sort of suggestion in one of the references to combine it with the other. 3-4.  Secondary references can be used to modify the primary reference by: adding new features from the secondary references to the primary reference; interchanging features of both references with the other; or, deleting features from the primary reference due to something in the secondary reference. However, the secondary references can only be combined if such a combination would have been obvious to a designer of ordinary skill in the art.


Court Order Denying Motion for Preliminary Injunction, Docket No. 450, 2011-12-02.

Manual of Patent Examining Procedure, 8th Ed. 2011-08, Section 1504.03 Nonobviousness [R-5] – 1500 Design Patents,

Julie Richardson, “Design Patents: Alternative Protection for Articles of Manufacture”, available at:

Teresa Tambolas, “Chicago Design Patent Attorney Explains How An Obviousness Challenge Can Trump a Motion for Preliminary Injunction in a Design Patent Case, Pattishall IP Blog,

Jake Wharton, “Federal Circuit Updates Design Patent Invalidity Standard,” Furniture Law Blog, 2010-01-23,

Prefacing Note on Intellectual Property Tests and Standards (Part 3 of 4)

Since the standards and tests for anticipation and obviousness are different for design patents and utility patents, we have devoted this post to discussion of anticipation and obviousness of utility patents.  The next blog will focus on the standards for anticipation and obviousness of design patents.

To prove anticipation of a utility patent (like the ‘381), a defendant must demonstrate that one single prior art reference discloses every element of at least one claim; if one single prior art reference discloses every element of a claim, then that claim is invalid because it has been anticipated by the prior art and is not novel.   If this test seems familiar to you, then you are right.  Under patent law, the tests for anticipation and infringement are the same.  The only difference is that an anticipatory reference has an earlier date of invention than the patent, whereas infringement involves an accused device that has a later date of invention than the patent.  In the anticipation analysis, courts compare the anticipatory reference to the patent claim.  For infringement, courts compare the patent claim with the accused device. See, Court Order Denying Motion for Preliminary Injunction at 18.

A challenge on the grounds of obviousness is arguing that a person of ordinary skill in the art would find the patent claim to be obvious in light of the entire prior art.  In determining if a claim is obvious, courts look to four factors: a) scope and content of the prior art; b) the level of ordinary skill in the art; c) differences between the claimed invention and the prior art; and d) any secondary considerations (i.e. commercial success of invention; industry skepticism about success or viability of invention, failure of others, etc).  The statutory standard states that a claim is obvious if a person of ordinary skill in the art would think that “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole” were obvious.  35 U.S.C. 103, “Conditions for Patentability, Non-Obvious Subject Matter (2004).

Combining prior art references is permissible to demonstrate obviousness.  One way to prove obviousness is when the combination of prior references discloses every element of a claim.  If a combination of prior art references discloses every element of a patented claim, then that claim is invalid for being obvious.  However, another way to prove obviousness does not require disclosure of every element of the patented claim in a reference.  For example, if the difference between the prior art and the patented claim is a matter of general knowledge to people of ordinary skill in the art, then that general knowledge functions to fill the gap between the prior art and the claim, making the claim obvious even if one element of the claim had not been explicitly disclosed in a prior art reference.

Obviousness can be a tricky determination, because prior art references may only be combined under certain circumstances.  Some circumstances where certain prior art references can be combined are: where something in one reference suggests, teaches, or motivates (TSM test) a person of ordinary skill in the art to combine that reference with another one; where a person of ordinary skill in the art would think the combination was obvious to try; where common sense would motivate a person of ordinary skill in the art to combine references.

 [NOTE: with utility patents, invalidating one or more claims does not necessarily invalidate the whole patent. Just because one patent claim (even if it is an independent claim) is invalidated, this does not mean that the other claims have been invalidated as well.  It just means that the patentee cannot claim infringement of his patent based upon that particular claim.]

Prefacing Note on Intellectual Property Tests and Standards (Part 1 of 4)

                Before we further analyze Apple’s motion and the Court’s denial of it, we must first examine some of the tests and standards used in intellectual property law.  These tests and standards are key to understanding the reasonable likelihood of success prong.  For the reasonable likelihood of success on merits prong, Apple must demonstrate that it would be likely to prove infringement at trial and that Samsung would not be likely to prove invalidity at trial.

                With respect to three design patents (D’677, D’087, D’899), the test for infringement asks: “would an ordinary observer perceive the design of the accuse device to be ‘substantially the same’ as the design of the patent?”  This ‘substantially the same’ (or substantial similarities) standard is met when “‘the resemblance [between the accused device’s design and design patent] is such to deceive such an observer, inducing him to purchase one supposing it to be the other.’”  Court Order Denying Motion for Preliminary Injunction at 24. With respect to software patent ‘381, Apple must prove likely infringement of at least one the claims of the ‘381 patent.  A patent claim is infringed if the accused device reads on every element of the claim.

The Hangover II Injunction Denied

By Jay Lewis

S. Victor Whitmill v. Warner Bros. Entertainment, Inc., 4:11-cv-752 (E.D. Mo. 2011)

Plaintiff S. Victor Whitmill (“Whitmill”) is the tattoo artist who inked Mike Tyson’s face.  Whitmill sought a preliminary injunction against Warner Brothers Entertainment (“Defendant”) to enjoin the release of “The Hangover II.”  Actor Ed Helms sports an identical tattoo in the film which Whitmill believes infringes on his copyright. Missouri Eastern District Court Judge Catherine D. Perry orally denied Whitmill’s preliminary injunction at the hearing and issued a short one page order.

To obtain a preliminary injunction, the movant must show likelihood of success on the merits, irreparable harm, the balance of equities weighs in favor of the movant, and an injunction is in the public interest.  Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008). 

To be successful on the merits, Whitmill needed to demonstrate he had a valid copyright and the Defendant copied the protected work. See Plaintiff’s Memorandum in Support of his Motion for Preliminary Injunction, p 5, citing, Rottlund Co. v Pinnacle Corp., 452 F. 3d 726 (8th Cir. 2006).  Based on the facts set forth in the Plaintiff’s Memorandum, Whitmill demonstrated both a copyright and an unauthorized copy.  Plaintiff’s Memo, p 5-7. However, according to the Memorandum in Opposition to Plaintiff’s Motion for Preliminary Injunction, seen here, “[t]here are no reported cases addressing the copyrightability of tattoos.” (Memo in Opposition, p. 12).  Regardless, the Judge found a copyright, stating:

Of course tattoos can be copyrighted. I don’t think there is any reasonable dispute about that. They are not copyrighting Mr. Tyson’s face, or restricting Mr. Tyson’s use of his own face, as the defendant argues, or saying that someone who has a tattoo can’t remove the tattoo or change it, but the tattoo itself and the design itself can be copyrighted, and I think it’s entirely consistent with the copyright law.

NY Times, quoting Judge Perry.

The Defendant, in its Memorandum, offered several defenses to Whitmill’s copyright infringement claim. (Memo in Opposition, pp. 18-19).  The Defendant argued that displaying Tyson’s tattoo on a character in the film constituted Fair Use: 

[T]he fair use of a copyrighted work…for purposes such as criticism, comment…is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include — 

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. § 107.

Judge Perry rejected the Fair Use argument, stating, “This use of the tattoo did not comment on the artist’s work or have any critical bearing on the original composition. There was no change to this tattoo or any parody of the tattoo itself. Any other facial tattoo would have worked as well to serve the plot device.” NY Times.

The next factor, irreparable harm, is presumed if movant has established the likelihood of success on the merits in a copyright infringement case according to Plaintiff’s Memorandum which cites West Pub. Co. v. Mead Data Central, Inc., 799 F.2d 1219, 1229 (8th Cir. 1986); DF Inst. Inc. v. Marketshare EDS, 84 USPQ 2d 1206, 1212 (D. Minn. 2007).  (Plaintiff’s Memo, page 8).  Based upon the Judge’s statements that a copyright exists and the Defendant infringed upon it, supra, irreparable harm was presumed in this case.

Although Whitmill showed a likelihood of success on the merits and irreparable harm, the balance of harms and public interest tipped too sharply in favor of the Defendant. The Defendant and its partners had invested hundreds of millions of dollars into producing, marketing and distributing the film.  An injunction preventing the opening would have cost the Defendant millions in box office revenues over the Memorial Day weekend.  Additionally, the Defendant argued that a substantial likelihood existed that a delay in the release of the film would create a black market of pirated DVDs based upon the prints that already had been shipped to theaters around the country. (Memo in Opposition, pp. 36-40).

Judge Perry agreed with the Defendant:

The public interest does favor protecting the thousands of other business people in the country as well as Warner Brothers, and not causing those nonparties to lose money, and I think it would be significant, and I think it would be disruptive. I think that tilts the public interest in favor of Warner Brothers on this because all over the country people would be losing money if I were to enjoin this movie.

NY Times.

The Hangover II was released in theaters as scheduled.  It reportedly grossed $86 million over the weekend and $137 million since its release breaking previous box-office records for an R-rated comedy. LA Times.