Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More
Drafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack
Recording of a 90-minute CLE webinar with Q&A
This CLE webinar will provide guidance to counsel for defining design patent claims. The panel will examine recent court treatment of claim construction issues and offer approaches for design patent claim construction and drafting.
- Key considerations
- Portion claiming
- Divisional filings
- Ornamentality and functionality
- Written description
- Court treatment
- Sport Dimension Inc. v. The Coleman Co. Inc. (Fed. Cir. 2016)
- Ethicon Endo-Surgery Inc. v. Covidien Inc. (Fed. Cir. 2015)
- Samsung Electronics Co. Ltd. v. Apple Inc. (Fed. Cir. 2015)
The panel will review these and other key issues:
- What key considerations should counsel keep in mind in design patent drafting?
- What steps should counsel to patent owners take to factor out functional aspects during claim construction?
- What guidance can be drawn from recent court decisions for design patent claim construction?
Christopher V. Carani
McAndrews Held & Malloy
Mr. Carani is nationally recognized in the field of design law, regarding the protection and enforcement of product... | Read More
Mr. Carani is nationally recognized in the field of design law, regarding the protection and enforcement of product design through the use of design patents, trade dress and copyrights. A registered attorney before the USPTO, Mr. Carani’s secures the full panoply of Design IP rights for some of the world’s most design-centric companies and designers, securing over 2000 design rights, both in the U.S and in over 70 countries around the world. Mr. Carani has successfully litigated numerous disputes regarding design rights and has also served as a consultant and expert witness in numerous design law cases. He represented the AIPLA in the landmark design patent case Egyptian Goddess v. Swisa, where the positions set forth in his amicus briefs were ultimately adopted by the Federal Circuit thereby reshaping the law on design patents.Close
Robert S. Katz, Esq.
Banner & Witcoff
In his practice, Mr. Katz has helped procure over 6,000 design patents in the U.S. and over 18,000 design... | Read More
In his practice, Mr. Katz has helped procure over 6,000 design patents in the U.S. and over 18,000 design patents/registrations outside the U.S., and has helped to successfully enforce over 100 design patents. Mr. Katz has also provided advice and prepared opinions regarding the patentability of inventions, patent infringement, patent validity, and trade secret protection to help clients properly assess the advantages and disadvantages of certain intellectual property and business decisions. He is a frequent speaker on industrial design-related topics and is a professor at George Washington University Law School teaching Design Law and at Georgetown University Law School teaching IP Pretrial Litigation Skills. Mr. Katz currently serves as Treasurer of FICPI's U.S. Section and as Vice Chair of INTA's Design Rights Committee.Close
Nathan B. Sabri
Morrison & Foerster
Mr. Sabri practices in the firm’s Intellectual Property Group. He focuses his practice on litigation, and has... | Read More
Mr. Sabri practices in the firm’s Intellectual Property Group. He focuses his practice on litigation, and has experience litigating in federal court and state court as well as managing global strategy in cases spanning multiple jurisdictions. His matters have included advice and patent litigation involving subject matters such as antibody development, noninvasive prenatal diagnostics, surgical robotics, smartphones, email software, and graphical user interfaces. Mr. Sabri was a member of the in-court trial team in high-profile smartphone cases leading to three jury verdicts totaling over $1 billion, among other matters.Close