2014 Sessions & Materials

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Design Law 2014

9:35 AM   PANEL 1: REMEDIES

Issues surrounding monetary and injunctive relief are now front and center following design patent infringement due to recent high profile litigation. The debate over the meaning of “infringers’ profits” under Section 289 is being hotly contested with Amicus briefs having been filed on both sides of the issue. Further, a recent decision seems to make injunctive relief harder to procure for design patent owners. This panel will discuss the law of design patent remedies and address the practical impact they have on designs and the design patent system.

SPEAKERS:

  • Sarah Burstein, University of Oklahoma College of Law
  • Natalie Hanlon-Leh, Faegre Baker Daniels
  • Mark D. Janis, Indiana University Maurer School of Law
  • Robert S. Katz, Banner & Witcoff, Ltd. (co-moderator)
  • John M. Whealan, Associate Dean for Intellectual Property Law George Washington University Law School (co-moderator)

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11:15 AM   PANEL 2: FUNCTIONALITY

Functionality has quickly become the defense of choice for accused infringers in design patent litigation. It is also being raised more frequently by the United States Patent & Trademark Office in examination. Further, functionality has been a strategy with mixed success used to dissect a design claim to strengthen invalidity and non-infringement arguments. This panel will discuss recent case law in all relevant arenas and will further address whether any industrial designs satisfy the non-functional requirement for patentability of a design.

SPEAKERS:

  • John J. Cheek, Caterpillar Inc.
  • Michael Risch, Villanova University School of Law
  • Perry Saidman, Saidman Design Law
  • Richard Stockton, Banner & Witcoff, Ltd.
  • Tracy-Gene G. Durkin, Sterne, Kessler, Goldstein & Fox (moderator)

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 1:45 PM   PANEL 3: PRIOR ART

The America Invents Act has widened the field of prior art available to invalidate patents. Technological advances have also made the creation and publication of prior art, including prophetic prior art like mock-ups of existing designs, more common. This panel will consider the challenges these developments have created, as well as the application of prior art in infringement litigation post Egyptian Goddess.

SPEAKERS:

  • Christopher V. Carani, McAndrews Held & Malloy
  • Mark A. Charles, The Procter & Gamble Company
  • Elizabeth D. Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Brian E. Hanlon, United States Patent and Trademark Office (invited)
  • Jason Du Mont, The Center for Intellectual Property Research at the Maurer School of Law (moderator)

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3:30 PM   A TOWN HALL DISCUSSION: ARE CHANGES NEEDED?

Most provisions governing the design patent laws were enacted many decades ago and emanated from the utility patent system. Since that time, the Courts and the USPTO has struggled with mixed results to create a body of design law consistent with itself and shared provisions with utility patent system. However, since that time, designs have evolved, the way products are made and sold has evolved, and even the infringers have evolved. This town hall session will exchange ideas relating to these issues including the issues of whether the design patent system is working, whether changes are needed, and how should any changes be made.

SPEAKERS:

  • Tracy-Gene G. Durkin, Sterne, Kessler, Goldstein & Fox (co-moderator)
  • Robert Katz, Banner & Witcoff, Ltd. (co-moderator)

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