[00:00:00] Speaker 02:
please the court Angela Oliver on behalf of the appellants the court should reverse the board's decision because the board improperly rejected is that a design for a lip implant as anticipated by a great like bring any of them with you did you know I'm sorry you're how big is the lip implant is it like this big that's about right yes

[00:00:19] Speaker 03:
Okay, now this is just me being curious, nosy.

[00:00:22] Speaker 03:
What is it for?

[00:00:22] Speaker 03:
Is it for those actresses that want them really big puffed up lips?

[00:00:26] Speaker 03:
Or is this some sort of replacement for people who've had injuries?

[00:00:30] Speaker 03:
What is this thing for?

[00:00:31] Speaker 02:
I think it can be used in both of those types of ways.

[00:00:34] Speaker 03:
So if I wanted a pouty look, this is what I would use?

[00:00:37] Speaker 02:
I think that could be an option.

[00:00:39] Speaker 03:
Okay, but it's got to be really small.

[00:00:41] Speaker 03:
How big is it?

[00:00:43] Speaker 02:
It is about that big.

[00:00:44] Speaker 02:
No bigger than the size of your lip, of course.

[00:00:46] Speaker 02:
maybe an inch-ish.

[00:00:50] Speaker 02:
Whereas the gray paper stump is, as seen in the record, about five inches long.

[00:00:54] Speaker 02:
And that's an art pencil?

[00:00:56] Speaker 02:
It's not a pencil, Your Honor, it's for rubbing charcoal.

[00:01:00] Speaker 02:
So kind of making different shading options with charcoal or pastels or kind of chalky materials like that.

[00:01:06] Speaker 02:
So the gray paper stump is made of paper which allows it to do that and kind of spread that material around.

[00:01:12] Speaker 02:
And so, Your Honor, we believe that the board erred by rejecting the design for this medical grade lip implant as anticipated by this gray paper stump art tool.

[00:01:22] Speaker 02:
Respectfully, we believe the court erred as a matter of law by expanding the scope of the design patent claim to cover any article of manufacture instead of limiting it to the article of manufacture identified in the claim language.

[00:01:35] Speaker 02:
And so we would ask this court to correct the board's misunderstanding and resolve this fundamental question of design patent law.

[00:01:43] Speaker 02:
The Supreme Court's decision in Gorham confirms that design patents are tied to articles of manufacture.

[00:01:48] Speaker 02:
Gorham set forth the standard that is now the sole test for infringement and anticipation of a design patent claim, the Ordinary Observer Test.

[00:01:56] Speaker 02:
And that test explains that infringement or anticipation occurs if, in the eye of an ordinary observer, two designs are substantially the same, so that the resemblance is such as to deceive an observer, inducing him to purchase one, supposing it to be the other.

[00:02:11] Speaker 03:
So when you say ordinary observer, it's not an ordinary observer, as in any human plucked off of the street.

[00:02:20] Speaker 03:
It's sort of an ordinary purchaser, because inherent in the test as articulated

[00:02:26] Speaker 03:
It seems to be it would motivate that ordinary Observer to purchase one rather than the other by mistake, right?

[00:02:36] Speaker 03:
So it's it's sort of it's not just the reasonable person standard It's the reasonable purchaser is that sort of more?

[00:02:43] Speaker 02:
in line with what you think?

[00:02:45] Speaker 02:
That's correct, Your Honor.

[00:02:46] Speaker 02:
That's what this court explained in Ethicon Endosurgery.

[00:02:49] Speaker 02:
The court explained that the ordinary observer is not an expert in the claim design, but one of ordinary acuteness who is the principal purchaser of the underlying articles with the claim design.

[00:02:59] Speaker 02:
Okay, so now I'm curious.

[00:03:00] Speaker 03:
Who is the purchaser of the lip implant?

[00:03:02] Speaker 03:
Is it the actress that wants the big puffy lips, or is it the surgeon who's going to be inserting it in her lips?

[00:03:08] Speaker 02:
Well, Your Honor, in other cases, with respect to implants, the court has suggested that the purchaser is not necessarily the individual who receives the item, but the person who's choosing it as the proper medical tool to use for that patient.

[00:03:22] Speaker 02:
So more along the lines of the surgeon or someone like that.

[00:03:26] Speaker 03:
And so are these devices sold in similar places?

[00:03:30] Speaker 03:
I mean, when the surgeon is looking to purchase a lip implant, is he going to Walmart and seeing it on the shelf next to the art stump?

[00:03:38] Speaker 02:
No, Your Honor, that would not be a typical situation.

[00:03:41] Speaker 02:
These are sold through, you know, typical medical device type of sales.

[00:03:45] Speaker 02:
They're not available where?

[00:03:47] Speaker 02:
At Dick Blick Art Store, for example, which is where this gray paper stump was sold.

[00:03:51] Speaker 02:
So very different context.

[00:03:52] Speaker 02:
And I think that shows that this case is a prime example of when the ordinary observer test is simply not met.

[00:03:58] Speaker 02:
No ordinary observer would be deceived into purchasing a lip implant thinking that it were actually a gray paper stump.

[00:04:05] Speaker 01:
So Gorham sets out.

[00:04:07] Speaker 01:
two different inquiries that you're supposed to undertake.

[00:04:10] Speaker 01:
Do you see those as different, or is really the second inquiry just an expansion on the first?

[00:04:16] Speaker 01:
I'm not quite clear.

[00:04:19] Speaker 02:
Yes, Your Honor, so I believe the two kind of two-part inquiries the court sets out in Gorham, the substantially similar, such that one would be deceived.

[00:04:27] Speaker 02:
I believe those are talking about the same thing.

[00:04:29] Speaker 02:
We are not arguing that there's any need to show actual deception or something like that.

[00:04:34] Speaker 02:
The idea is that someone who is a purchaser of these would view these as so similar that they would actually be deceived into purchasing one versus the other.

[00:04:42] Speaker 02:
Could something satisfy the first test and not satisfy the second test?

[00:04:47] Speaker 02:
I don't believe so because there's no indication that the Supreme Court viewed them as different tests.

[00:04:52] Speaker 02:
I do believe it's all part of one inquiry and every time the

[00:04:57] Speaker 02:
The test has been restated.

[00:04:59] Speaker 02:
It is typically stated with both parts there.

[00:05:01] Speaker 02:
And I'm not aware of any cases where the court has conducted a separate analysis for those two aspects.

[00:05:07] Speaker 02:
So I believe the inquiry is really one and the same.

[00:05:09] Speaker 02:
And it goes to the proper scope of a design patent claim, which is what this case is really about.

[00:05:15] Speaker 02:
Now Kerber took the reasoning in Gorham, that test, as well as other aspects from Gorham, to provide clarity with respect to how we define the scope of a design patent claim.

[00:05:26] Speaker 02:
So for example, the court in Kerber looked to the language in Gorham, which explained that design patent law focuses on the appearance of an article of manufacture, not an abstract impression or picture.

[00:05:37] Speaker 02:
So again, the court was very focused on tying the design to a particular article of manufacture.

[00:05:43] Speaker 01:
Would it be your position?

[00:05:44] Speaker 01:
I mean, do you go so far as to say only another lip implant could possibly be confused?

[00:05:53] Speaker 01:
In other words, does the article of manufacture always have to be identical?

[00:05:57] Speaker 02:
I think there is a bit of wiggle room there with respect to claim construction.

[00:06:01] Speaker 02:
So for example, if the identified article manufacturer is a utensil with a certain shape or design, I believe there may be room to say, well, that would include a fork or a spoon or a spatula.

[00:06:15] Speaker 02:
So some room there.

[00:06:16] Speaker 02:
But what we would know is it certainly would not include a couch or something else.

[00:06:21] Speaker 02:
And there may be some line drawing there.

[00:06:23] Speaker 02:
to be done, but I think there is a bit of scope that could be included other than the precise article manufacturer.

[00:06:30] Speaker 02:
In other words, an article or very similar articles I think would fall within the scope, but certainly not the degree of difference that we have here, where we have categorically different types of articles.

[00:06:41] Speaker 02:
And if to the extent line drawing is an issue,

[00:06:44] Speaker 02:
For example, Professor Bursine explained in her article that if line drawing is an issue in that sense, there are different classification systems that could potentially be used.

[00:06:53] Speaker 02:
Of course, this court is familiar with the harmonized tariff system, but she suggested also the Locarno classification system for industrial designs.

[00:07:01] Speaker 02:
So there are resources out there, evidentiary questions that may arise in the context of precise plane construction issues.

[00:07:07] Speaker 01:
What's your response to the government's reliance in the red brief on Samsung versus Apple and the fact that they said that the court didn't refer to deception or confusion in that case?

[00:07:18] Speaker 02:
Your honor, I don't think that provides any guidance to this case.

[00:07:21] Speaker 02:
Samsung versus Apple was simply addressing a completely different issue with respect to damages.

[00:07:26] Speaker 02:
I don't think there's anything to be gleaned with respect to the scope of what a design patent claim covers based on how the court phrased the test in that case.

[00:07:35] Speaker 02:
Of course, the court did not apply the ordinary observer test there.

[00:07:38] Speaker 02:
It was simply discussing what, with respect to different components within an article, how we look at damages in that sense.

[00:07:46] Speaker 01:
So you think the Supreme Court was just being a little bit sloppy on a point that didn't really matter?

[00:07:51] Speaker 02:
Well, there's no indication that the Supreme Court was intending to overturn its prior precedent, which, of course, has included both aspects of the test.

[00:07:57] Speaker 02:
So it seems to be a non-issue in that case.

[00:08:02] Speaker 02:
I don't think there's any guidance

[00:08:03] Speaker 02:
to suggest that they were trying to overturn or limit the scope of that test.

[00:08:10] Speaker 02:
Your Honor, returning to the court's decision in Kerber, that holding is sufficient to resolve the case.

[00:08:15] Speaker 02:
In that case, the court explained that design patent statutes are centered on articles of manufacture and that's directly consistent with the statutory language in section 171.

[00:08:25] Speaker 02:
That whoever invents any new original and ornamental design for an article of manufacture

[00:08:31] Speaker 02:
may obtain a patent, therefore.

[00:08:33] Speaker 02:
So in Kerber, the claim language was whether an ornamental design for a pattern for a chair.

[00:08:39] Speaker 02:
And the court held that the scope of the design claim to the chair would not include the design as applied to a decorative basket.

[00:08:47] Speaker 02:
And that is as far as the court needs to go to resolve this case.

[00:08:50] Speaker 01:
The scope of a claim to a lip implant simply does not include... Does it matter that in Kerber there really wasn't an article of manufacture that could be identified?

[00:08:59] Speaker 02:
I do not believe that makes a difference because we have the same situation here.

[00:09:04] Speaker 02:
Without looking at the language of the claim that identifies a lip implant, if you were to just look at the figure itself, there would really be no way to tell what that article is.

[00:09:14] Speaker 02:
And that's the case with a lot of shape claims as well.

[00:09:17] Speaker 02:
For example, the

[00:09:18] Speaker 02:
the novelty wingnut hat.

[00:09:21] Speaker 02:
For example, if you were just looking at a picture of a wingnut, you would not know whether it is an actual wingnut used in a mechanical sense or if it were this novelty hat.

[00:09:29] Speaker 02:
So I think that's not a basis to distinguish Kerber from this case or from shape designs generally.

[00:09:35] Speaker 02:
Your Honor, just to practically address a few of the problems with the government's design per se approach that would essentially have design patent claims cover any article of manufacture.

[00:09:48] Speaker 02:
That approach fails to give the public notice about the scope of design patent claims and would result in broad infringement complaints and impossible prior art searches.

[00:09:58] Speaker 02:
As to the public notice function, focusing claim scope on the article of manufacture puts the public on full notice of what the patent covers and what it does not.

[00:10:07] Speaker 02:
And that's exactly some of the reasoning that the court and Kerber pointed to.

[00:10:11] Speaker 02:
The public should be able to understand, based on the article of manufacture, what the patent covers.

[00:10:17] Speaker 02:
In fact, as the court noted in Kerber, if the court were to adopt the design per se approach, the title and claim language of a patent would essentially provide no useful information.

[00:10:26] Speaker 02:
And I would take it a step further and say the title and claim language would actually be misleading to the public.

[00:10:32] Speaker 02:
Because here, in this instance, the lip implant scope of the claim would be much broader than what is identified there.

[00:10:39] Speaker 02:
We've also seen examples, as we've pointed to in our brief, of broad infringement claims based on different types of articles of manufacture.

[00:10:46] Speaker 02:
And so this is something we're already seeing based on broadening the scope of these design patent claims beyond the articles identified in the claim.

[00:10:55] Speaker 02:
As to prior art searches, this breadth of claim that the government has proposed simply makes prior art searching unrealistic.

[00:11:03] Speaker 02:
If a claim scope covers any article of manufacture, then all categories of designs would have to be considered

[00:11:10] Speaker 02:
be searched for anticipation purposes and certainly that's a problem practically for the PTO but it's not just a problem for them.

[00:11:17] Speaker 03:
So I want to return to Judge O'Malley's earlier question which for me is the most significant decision point in this case which is should we hold that

[00:11:33] Speaker 03:
an ornamental design is limited to the claimed intended use.

[00:11:39] Speaker 03:
In your case, it says the ornamental design for a lip implant as shown and described below.

[00:11:46] Speaker 03:
Or is there really room to go beyond that?

[00:11:50] Speaker 03:
Like for example, and I agree with you, it's not close in this case if that is a limitation, lip implant versus art pencil or art stump or whatever it is.

[00:12:02] Speaker 03:
But what if it was not a lip implant but an eyebrow implant?

[00:12:06] Speaker 03:
Maybe somebody wanted more substance to their eyebrows and it had a similar shape.

[00:12:12] Speaker 03:
I think it's important because whatever we say about this doesn't just affect your ability to secure the design patent, but it significantly will impact your ability to assert infringement of the design patent.

[00:12:24] Speaker 03:
So I think this is an important legal question, which is what is this claim limited to?

[00:12:30] Speaker 03:
Is it limited to

[00:12:32] Speaker 03:
the design for the particular article specified in the claim or not?

[00:12:38] Speaker 02:
I believe that is the central aspect of what it is limited to.

[00:12:42] Speaker 02:
And to the extent there is concern with that being too narrow, then I do think there is a bit of room with respect to claim construction.

[00:12:49] Speaker 03:
When you say to the extent that that is viewed as too narrow, I don't know by too narrow by whom.

[00:12:53] Speaker 03:
The law is the law, right?

[00:12:55] Speaker 03:
So what should the law be?

[00:12:56] Speaker 03:
Should the law be

[00:12:58] Speaker 03:
that when it comes to a design claim, it is the design as applied to the particular article of manufacture specified, such that your client would never be able to assert this patent against anything but a lip implant.

[00:13:11] Speaker 03:
Or is it the case that there ought to be in the law some expansion of that concept?

[00:13:20] Speaker 03:
And if so, on what ground?

[00:13:22] Speaker 03:
On what theory?

[00:13:24] Speaker 03:
Doesn't that just introduce a lot of confusion into both

[00:13:28] Speaker 03:
prosecution and enforcement then down the road.

[00:13:32] Speaker 03:
What is the rule of law you want about how this portion of the claim limits the claim?

[00:13:40] Speaker 02:
I believe the best statement of what the law should be would be that the design patent claim is limited to the article of manufacture identified or very similar articles.

[00:13:52] Speaker 02:
And that's very similar to the language that this court has used in the 103 context for design patent claims.

[00:13:59] Speaker 02:
with respect to the scope of a similar type of art that can be considered for 103.

[00:14:04] Speaker 02:
So we already have some case law with respect to what that analysis might look like.

[00:14:09] Speaker 02:
This will not be a completely unguided analysis under the case law.

[00:14:12] Speaker 01:
So you're saying we adopt an analogous art concept?

[00:14:18] Speaker 02:
Not necessarily, Your Honor, because I think this is just an example of where some

[00:14:25] Speaker 02:
some reasoning may come from with analyzing the scope of this.

[00:14:28] Speaker 02:
But essentially, I do think that the identified article should be the center of the analysis and not much beyond that.

[00:14:34] Speaker 02:
So very similar.

[00:14:36] Speaker 01:
So does it turn on exactly what is said in the claim or exactly what the title of the patent is?

[00:14:41] Speaker 01:
In other words, perhaps you could have made this design claim for a surgical implant as opposed to a lip implant.

[00:14:52] Speaker 01:
Does that change the analysis?

[00:14:55] Speaker 02:
I think that would change the analysis.

[00:14:57] Speaker 02:
And certainly there is a degree of breadth that a patentee would be entitled to to change the way they've claimed it like that or even a facial implant or something like that.

[00:15:08] Speaker 02:
So now at some level, there would be too broad of a claim.

[00:15:11] Speaker 02:
So for example, in Kerber, the original patent claim there was a claim for a part of furniture.

[00:15:18] Speaker 02:
And the patent office actually said, in that case, that's too broad.

[00:15:22] Speaker 02:
You need to narrow it.

[00:15:23] Speaker 02:
And the examiner suggested,

[00:15:24] Speaker 02:
okay, a pattern for a chair, why don't you try that?

[00:15:27] Speaker 02:
So the patentee went with it there.

[00:15:29] Speaker 03:
So here's what concerns me.

[00:15:31] Speaker 03:
I mean, I love this black letter idea of saying it's limited to lip implants and only a design for that.

[00:15:38] Speaker 03:
But part of it in my mind is I'm thinking about the ordinary purchaser.

[00:15:42] Speaker 03:
I'm kind of in trademark land a little bit in my head almost because it seems similar to the likelihood of confusion test in a way.

[00:15:49] Speaker 03:
But I'm thinking of the ordinary purchaser, you know, the discussion in Gorham and elsewhere

[00:15:54] Speaker 03:
about the need to ensure that there isn't confusion in the purchasing.

[00:16:01] Speaker 03:
And this is very sophisticated.

[00:16:04] Speaker 03:
It's a surgical implant, a lip implant.

[00:16:06] Speaker 03:
A doctor is not going to accidentally buy an arc pencil.

[00:16:08] Speaker 03:
I mean, it's not going to happen, right?

[00:16:10] Speaker 03:
It's absurd.

[00:16:12] Speaker 03:
But if we limit it to a lip implant and you're talking about a less sophisticated design, like suppose this is a design for a plate on China, right?

[00:16:22] Speaker 03:
And now suddenly that design is going, that same exact very unique design is going to be applied to all kinds of things that aren't plates but are maybe kitchen items of similar nature.

[00:16:33] Speaker 03:
You know, this is where I'm starting to get worried

[00:16:36] Speaker 03:
The ordinary purchaser could think it's the same design.

[00:16:42] Speaker 03:
I'm just still trying to wrap my head around this is a very easy case.

[00:16:46] Speaker 03:
There's a lot of

[00:16:47] Speaker 03:
distance between lip implant and art pencil.

[00:16:49] Speaker 03:
But I'm worried about the less sophisticated articles of manufacture and the greater potential for confusion or overlap.

[00:17:00] Speaker 02:
Sure.

[00:17:00] Speaker 02:
So I believe the example you presented, Your Honor, is helpful in the sense that it goes to other areas of IP law as well.

[00:17:08] Speaker 02:
So in the instance of a design that's applied to a plate and then other kitchenware, et cetera, and beyond,

[00:17:15] Speaker 02:
I do think the design patent should still be fairly narrowly limited to the identified article and really not much beyond that.

[00:17:23] Speaker 02:
But that does not mean that a patentee or that a designer is unprotected with respect to other items.

[00:17:29] Speaker 02:
So we have trade dress, we have trademark, we have copyright, we have other options that can cover some of that and that do address the concern of confusion regarding likelihood of confusion as to the source of the product.

[00:17:43] Speaker 02:
So there are many areas of IP law that can address some of that broader scope.

[00:17:48] Speaker 02:
It's just the design patent law doesn't have to do it through a single patent.

[00:17:51] Speaker 02:
Okay, that's very helpful.

[00:17:52] Speaker 02:
Thank you, Ms.

[00:17:52] Speaker 02:
Oliver.

[00:17:53] Speaker 03:
I'll restore some of your rebuttal time.

[00:17:55] Speaker 03:
Let's hear from Ms.

[00:17:56] Speaker 03:
Keller.

[00:18:11] Speaker 00:
Good morning, Your Honors.

[00:18:12] Speaker 00:
May it please the court?

[00:18:14] Speaker 00:
The agency is not asking for patents on per se designs, not at all.

[00:18:22] Speaker 00:
Rather, in keeping with this court's precedent, when the agency examines a design patent application, the agency looks to the overall appearance of the design shown in the application and compares that with prior art designs.

[00:18:39] Speaker 00:
It just so happens to be the case

[00:18:41] Speaker 00:
that when the design shown in the application is for the shape or configuration of an article of manufacture, there's nothing more to the overall visual impression to look at.

[00:18:57] Speaker 01:
So are you saying though that the claims really don't matter?

[00:19:03] Speaker 00:
I just want to make sure that I'm understanding your question.

[00:19:06] Speaker 00:
Is your question, does the language in the claims?

[00:19:11] Speaker 00:
Yes.

[00:19:12] Speaker 00:
I believe that it does matter.

[00:19:17] Speaker 00:
It certainly does matter under this court's precedent, because you have to look into the overall visual appearance.

[00:19:24] Speaker 00:
And in the case of surface,

[00:19:26] Speaker 00:
surface ornamentation, the overall visual appearance or impression as the court found in Kerber involves looking at the design in the context of the article to which it is applied.

[00:19:39] Speaker 00:
But that isn't the case when you're talking about the shape or configuration of a product.

[00:19:47] Speaker 00:
The overall

[00:19:49] Speaker 00:
visual impression of the design is essentially one and the same with contiguous with the article of manufacture.

[00:19:56] Speaker 01:
So you're saying that the written language that limits it to a lip implant can be ignored when we're talking about a design for a shape?

[00:20:06] Speaker 00:
I wouldn't characterize it as ignored.

[00:20:10] Speaker 00:
I would just say that it's a meaningless distinction.

[00:20:14] Speaker 00:
It's not an addition or consideration that carries any sort of weight in that circumstances as a practical or factual matter.

[00:20:25] Speaker 00:
Even in Kerber, you're looking at the overall visual impression.

[00:20:30] Speaker 00:
And what the court said in Kerber is,

[00:20:33] Speaker 00:
When you apply this pattern to a chair, the overall visual impression it gives is not substantially the same as this pattern as applied to a basket.

[00:20:44] Speaker 00:
And that's because in that situation, the overall visual impression includes the article in manufacture here.

[00:20:56] Speaker 00:
When you were talking about a shape, we're talking about something that's one in the same with the article manufacturer.

[00:21:04] Speaker 04:
Well, now, counsel, let's be clear about this.

[00:21:07] Speaker 04:
Either you do or you don't ignore the designated article.

[00:21:12] Speaker 04:
It's in the claim.

[00:21:13] Speaker 04:
You ignore that, the design for a lip implant, or you do?

[00:21:25] Speaker 00:
I would like to break that down into whether we're talking about infringement or whether we're talking about examination.

[00:21:30] Speaker 04:
We're talking about patenting.

[00:21:32] Speaker 00:
Okay.

[00:21:33] Speaker 00:
In examination.

[00:21:35] Speaker 04:
You or you don't ignore the limitation in the claim to the article of manufacture.

[00:21:42] Speaker 04:
You do or you don't.

[00:21:46] Speaker 00:
It's difficult to answer with a simple yes or no.

[00:21:48] Speaker 00:
I think it would be helpful for me, in answering your question, to describe what happened here.

[00:21:54] Speaker 00:
Because I think that will help inform it.

[00:21:55] Speaker 00:
If it doesn't, I'm sure you'll let me know.

[00:21:59] Speaker 00:
What happens here, and in cases like this, we work very closely with patents to say, what do you do in these sorts of situations?

[00:22:06] Speaker 00:
And we talk to people in the core.

[00:22:09] Speaker 00:
And what they said is, you look to the article in manufacture during the examination process,

[00:22:16] Speaker 00:
as sort of your beginning point for the kinds of designs that you're looking at.

[00:22:20] Speaker 00:
But when the design shown in the application is for a very simple shape or configuration of an article manufacturer, then you start looking at other articles of manufacture that have that similar simple shape.

[00:22:37] Speaker 01:
What if the article was the other article you're looking at?

[00:22:42] Speaker 01:
Okay, so you're going from here to a pencil.

[00:22:45] Speaker 01:
What if the other article was six feet long, but had a similar shape?

[00:22:48] Speaker 01:
You would say that would also be disqualifying?

[00:22:53] Speaker 00:
It probably would, because size is a factual inquiry.

[00:22:58] Speaker 00:
And that sort of disparity in size is so great, you wouldn't imagine that they would have substantially the same overall appearance.

[00:23:12] Speaker 00:
But if you're talking about and I think this is what you're obviously you obviously aren't saying that that The size doesn't matter here because the art pencil is a lot longer than the lip implant Whether it's a lot longer is a factual inquiry in the board found that it isn't I

[00:23:36] Speaker 00:
I was curious, like Judge Moore, about the sizes of these things when I first looked at the case.

[00:23:43] Speaker 00:
So I looked at the blank catalog, and I looked online.

[00:23:47] Speaker 00:
And yes, paper stumps can typically range between 3 and 1 half inches to 7 inches.

[00:23:56] Speaker 00:
And that's because of their intended uses and function to be held by the human hand and worked on a piece of paper.

[00:24:03] Speaker 00:
Again, those non-oriental functions are not

[00:24:05] Speaker 00:
part of the design.

[00:24:07] Speaker 01:
So some doctor's going to accidentally buy something seven inches long for your lips?

[00:24:12] Speaker 00:
No.

[00:24:13] Speaker 00:
No.

[00:24:14] Speaker 00:
That's a different question.

[00:24:16] Speaker 00:
And the answer to that question is the agency does not look at the ordinary observer as, in this case, as a plastic surgeon or in general, this ordinary purchaser.

[00:24:32] Speaker 00:
We look at an ordinary observer.

[00:24:35] Speaker 00:
Because the test set forth in Gorham, and then again by the Anban court, an Egyptian goddess, is the ordinary observer familiar with the prior art.

[00:24:46] Speaker 00:
That is not a designer of goods.

[00:24:49] Speaker 00:
Gorham didn't say, well, we want it to be the standard, a more precise standard.

[00:24:58] Speaker 00:
And it'll be the designer of, in that case, silverware.

[00:25:05] Speaker 00:
We believe that they used Ordinary Observer instead of a designer of flatware because they wanted it to be somebody looking at this.

[00:25:16] Speaker 00:
And that is the standard that we follow.

[00:25:22] Speaker 00:
And so, while yes, a plastic surgeon, we don't deny that a plastic surgeon looking at an actual lipid plant and looking at a paper stump

[00:25:36] Speaker 00:
would mistake one for the other and be deceived into putting a paper stump into a human being.

[00:25:41] Speaker 00:
But what we're saying is that's not the test.

[00:25:44] Speaker 00:
First, there are several problems with it.

[00:25:46] Speaker 00:
First, you don't compare the actual product with the prior art or in the case of infringement with the accused design.

[00:25:58] Speaker 00:
You look at the drawing and the specification.

[00:26:01] Speaker 00:
That's the claimed design, not the actual product of a lip implant.

[00:26:06] Speaker 00:
The actual product implies a lot of things.

[00:26:09] Speaker 00:
It implies that it looks like plastic.

[00:26:13] Speaker 00:
It doesn't look like a paper product.

[00:26:15] Speaker 00:
There are lots of things involved in looking at the product that are not shown or claimed in the application, in the drawing.

[00:26:24] Speaker 00:
So that's one problem.

[00:26:26] Speaker 01:
So you don't think the ordinary observer test is limited at all by the ordinary observer who would be considering purchasing the product or using the product?

[00:26:41] Speaker 00:
I think that as set forth in Gorham and Egyptian goddess,

[00:26:50] Speaker 00:
It could be that sort of person, but it just has to be that sort of person familiar with the prior art.

[00:26:58] Speaker 00:
And in this case, the examination process... It either is or it isn't.

[00:27:04] Speaker 03:
Is the ordinary observer test from the vantage point of a purchaser or not?

[00:27:10] Speaker 03:
It's a yes or no question.

[00:27:12] Speaker 00:
No.

[00:27:13] Speaker 03:
So then how do you deal with Gorham, which says,

[00:27:16] Speaker 03:
We hold therefore that if in the eye of an ordinary observer giving such attention as a purchaser usually gives, two designs are substantially the same if the resemblance is such as to deceive such an observer inducing him to purchase one supposing it to be the other.

[00:27:36] Speaker 00:
I'd like to break that down into two parts.

[00:27:38] Speaker 00:
The first part is giving the

[00:27:41] Speaker 00:
Giving such attention as an ordinary purchaser is not the same as an ordinary purchaser.

[00:27:47] Speaker 00:
They're just saying an ordinary observer looking more than just going to pass the glass.

[00:27:51] Speaker 03:
The resemblance has to be such as to deceive that ordinary observer into purchasing one, supposing it to be the other.

[00:28:00] Speaker 03:
How could a surgeon accidentally buy an art pencil to put in somebody's lip?

[00:28:07] Speaker 03:
As you said, they're three and a half to seven inches long.

[00:28:10] Speaker 03:
And the board found that the lip implants were only a couple of millimeters long.

[00:28:16] Speaker 00:
No, that is not what the board found.

[00:28:18] Speaker 03:
Page 8-5?

[00:28:18] Speaker 00:
The board found that there were only a couple of millimeters.

[00:28:21] Speaker 03:
Page 5 on the 8th decision, having a size on the order of millimeters.

[00:28:26] Speaker 03:
Page 5 of the board's decision.

[00:28:28] Speaker 00:
I... You know...

[00:28:40] Speaker 03:
Page five, the board seems to have found that the lip implants are on the order of millimeters.

[00:28:51] Speaker 00:
I don't I think that was an artful wording and that's discussing the differences between these two things but I would like to go back to this notion of set that aside for a minute and get back to the heart of what that second part of your question was which was going to be the second part of my answer which is when you look at that language about to deceive an ordinary purchaser you have to read

[00:29:20] Speaker 00:
Gorham in the context of its time.

[00:29:23] Speaker 00:
And it's known that language is repeated again in Egyptian goddess and other cases moving forward.

[00:29:30] Speaker 00:
Gorham was written five years before

[00:29:36] Speaker 00:
We even had a trademark act in the United States.

[00:29:39] Speaker 00:
It was written 50 years more than we had the first trade dress case.

[00:29:44] Speaker 03:
Yes, we endorsed, we actually quoted that exact language in International Seaway Trading versus Walgreens, which is from 2009.

[00:29:52] Speaker 03:
The court quoted that exact language affirmatively in our case law.

[00:29:56] Speaker 03:
So whether Gorham is from the 1800s or not is sort of irrelevant.

[00:30:02] Speaker 03:
Obviously nothing, I mean, are you suggesting the law has changed

[00:30:05] Speaker 03:
between 2009 when we affirmatively cited that as the principle from Gorham that applies?

[00:30:11] Speaker 03:
I don't understand.

[00:30:13] Speaker 03:
What is your point?

[00:30:14] Speaker 00:
I'm saying that that language meant something different at the time.

[00:30:19] Speaker 00:
And although this court has repeated it, it is a practical matter.

[00:30:23] Speaker 00:
This court has repeated it many times.

[00:30:25] Speaker 00:
But as a practical matter, deception does not play a role in the examination process.

[00:30:32] Speaker 00:
for design patents.

[00:30:33] Speaker 00:
It does not play a role in validity for design patents.

[00:30:38] Speaker 00:
It just simply as a practical matter has never carried any sort of weight

[00:30:45] Speaker 00:
And if this court were to find that deception were a requirement, that would be a very large shift in the landscape.

[00:30:54] Speaker 03:
I don't actually agree with you at all, because it's not about deception.

[00:30:58] Speaker 03:
What this test does is really articulate exactly, I think, the point your opponent made, which is claim language means something.

[00:31:07] Speaker 03:
And when the claim expressly has

[00:31:09] Speaker 03:
only about five words in it, one of which is the design below for a lip implant, the only way the office can win is if I disregard the only five words in the claim and look only at the picture, if I divorce those two.

[00:31:23] Speaker 03:
I think what Gorham and all of our law was doing when they speak about deception was giving meaning to those words.

[00:31:32] Speaker 03:
We may not have explained it that way, but we were giving meaning to claim language.

[00:31:38] Speaker 03:
I think the only way the office can win this case is if you somehow convince this panel of judges to conclude that the words of the claim have absolutely no relevance to its interpretation.

[00:31:51] Speaker 00:
Your Honor, as I said at the outset, that is absolutely not what the agency is trying to do.

[00:31:57] Speaker 00:
What the agency is saying is that in cases like this, in this particular case, and in situations where we're talking about examination,

[00:32:07] Speaker 00:
and which the claim scope is couched in terms of less precision or in greater breadth than it is in an indolent context or in an infringement context.

[00:32:22] Speaker 00:
We're not arguing that

[00:32:25] Speaker 00:
These two things, one would not infringe the other.

[00:32:28] Speaker 00:
We're not arguing that.

[00:32:29] Speaker 00:
We're saying that when we're talking about patent examination of shapes and configurations of products, the role of the article manufacturer is lower.

[00:32:41] Speaker 03:
So is it your view then that a different standard applies to the words of the claim in an infringement suit if you're analyzing infringement versus an analysis and prosecution as to whether to allow the design?

[00:32:55] Speaker 00:
What I'm saying is that during examination claims are given their broadest reasonable interpretation.

[00:33:02] Speaker 03:
And we do that to... Does the agency have some interpretation of lip implant that is broader and therefore a basis for including art pencils?

[00:33:12] Speaker 00:
The agency uses the article of manufacture to define the world of prior art.

[00:33:19] Speaker 00:
That is how we use it.

[00:33:21] Speaker 01:
But we're not just talking about

[00:33:23] Speaker 01:
the shape of a product.

[00:33:25] Speaker 01:
We're talking about the shape for a product.

[00:33:29] Speaker 01:
So it has to be for some particular product, right?

[00:33:34] Speaker 00:
Yes, as a threshold matter to define a design patentable subject matter.

[00:33:40] Speaker 00:
Just as in the utility patent world, Section 101 as a threshold matter sets forth four types of subject matter that may be the subject of utility design.

[00:33:53] Speaker 00:
And once you're over that threshold, whether it be a composition matter, a process, et cetera, once you're over that threshold, then you examine for anticipation and obviousness and the other statutory requirements, and you use

[00:34:15] Speaker 00:
the description of the subject matter as your guide through that examination process about claim scope.

[00:34:22] Speaker 00:
And it's the same in a design patent application.

[00:34:27] Speaker 00:
We don't issue patents on designs per se.

[00:34:29] Speaker 00:
They must be, as a threshold matter under Section 171, tied to an article of manufacture.

[00:34:37] Speaker 01:
Right.

[00:34:38] Speaker 01:
So I don't understand how you can have it both ways.

[00:34:40] Speaker 01:
You tie it to an article of manufacture, but then the article of manufacture doesn't matter.

[00:34:45] Speaker 00:
The article to manufacture can help guide what the scope of the prior art is.

[00:34:52] Speaker 00:
So yes, everything, all articles of the same type are in that world of prior art.

[00:35:02] Speaker 01:
So my prior question is could the prior art be six or seven or ten feet long as long as they have that conical shape?

[00:35:10] Speaker 01:
And that would mean the answer would have to be yes.

[00:35:13] Speaker 00:
No, the answer would be no, because we look to this world of prior art with things that are analogous articles of manufacture and then non-analogous articles of manufacture that look the same.

[00:35:29] Speaker 01:
So where do we stop?

[00:35:31] Speaker 01:
We go from millimeters, which the board actually did describe it as in a matter of millimeters.

[00:35:37] Speaker 01:
We go from millimeters to inches.

[00:35:41] Speaker 01:
But where do you stop then?

[00:35:44] Speaker 00:
The, I believe the board misspoke, even as Miss Oliver said, lip implants range between one inch to one and a half inches.

[00:35:56] Speaker 00:
So they're not millimeters in size.

[00:36:01] Speaker 00:
I believe the board was really referring to the size of the tips of the claimed and the priority device, setting that aside.

[00:36:09] Speaker 00:
The way that it works in examination is we look at analogous designs and we look at not analogous designs with the same shape then Looking another step further in deciding whether to make rejection you look at the overall impression the overall visual appearance of the claim design and with surface ornamentation you're going to have to consider

[00:36:39] Speaker 00:
the design in context of the article of manufacture.

[00:36:44] Speaker 00:
And so some of those designs that you initially included in your Venn diagram of prior art designs are not, in fact, going to be the basis for rejection.

[00:36:56] Speaker 04:
So again, to be clear, I heard you say all articles of the same type.

[00:37:02] Speaker 04:
You're saying these articles are of the same type, the lip implant,

[00:37:07] Speaker 04:
And the artist's tool?

[00:37:10] Speaker 00:
No, Your Honor.

[00:37:11] Speaker 00:
Those would fall into this larger sort of circle in a Venn diagram of non-analogous articles with the same shape.

[00:37:23] Speaker 00:
How large?

[00:37:25] Speaker 00:
That's just for initial examination purposes.

[00:37:29] Speaker 00:
And then you look at those things.

[00:37:31] Speaker 00:
So you find all this prior art if you're the examiner.

[00:37:34] Speaker 00:
And then you look at those things and you say,

[00:37:37] Speaker 00:
When does size, the sort of factual inquiry, when does size make this have the same overall visual appearance and when does size not make this have the same overall visual appearance?

[00:37:49] Speaker 00:
So the board found as a fact, the examiner found that these were not substantially different in size.

[00:38:01] Speaker 00:
the examiner could have easily said, well, they are substantially different in size, and so I'm not going to make this rejection.

[00:38:09] Speaker 00:
And then when that goes before the board, the board can say, I don't see whether these are substantially different in size, substantially similar in size or not, and then affirm or not affirm the rejection.

[00:38:22] Speaker 00:
And that's how it works.

[00:38:24] Speaker 00:
Defining the scope of the prior art is done with

[00:38:31] Speaker 00:
less sort of precision during an examination than it would be in an infringement action in an invalidity context.

[00:38:40] Speaker 00:
And that's for several reasons, which we outlined in our brief, because during examination claims are given the broadest reasonable interpretation.

[00:38:48] Speaker 00:
Because we want to ensure, as an agency, that we are issuing a design patent on one design, not a design patent

[00:39:01] Speaker 00:
that would cover several designs.

[00:39:03] Speaker 00:
And I know that there's also some tension between what I'm saying now.

[00:39:08] Speaker 04:
You're issuing it on the claimed design.

[00:39:13] Speaker 04:
And the claim is specific to the lip implant.

[00:39:18] Speaker 04:
Now, that's really the problem with this entire analysis is that you're eliminating from the scope of prior art everything unrelated

[00:39:31] Speaker 04:
in the world of design as prior art, that would be quite an activity for your examining corps, would it not?

[00:39:43] Speaker 00:
We asked the corps that question because there is footnote three in Kerber, which raises that sort of question.

[00:39:50] Speaker 00:
They said, well, if we just limit everything to an Olympus art, then we are making life easier as a PTO.

[00:40:00] Speaker 00:
But when we pose that question to patents that particularly the people in the design patent core what they said is no if it's a simple shape We can easily find other articles of manufacture During our normal search process.

[00:40:18] Speaker 00:
They do this day in and day out That have the same shape for example in this case it would have been easy for an examiner to look at the lip implant design

[00:40:30] Speaker 00:
And again, we're not considering other things about lip implants, like what it's made of or other functional things.

[00:40:40] Speaker 00:
We're only looking at the drawing.

[00:40:41] Speaker 00:
We can find other shapes, like many drawing things, pencils, markers, pens.

[00:40:50] Speaker 00:
There are all sorts of things that have the same shape.

[00:40:54] Speaker 00:
And so at the PTO, we are trying

[00:40:59] Speaker 00:
to use the broadest reasonable interpretation to prevent people from obtaining a design patent on more than one design.

[00:41:11] Speaker 00:
And we are not saying, and we do not believe, that Cirque du Soleil could successfully go out there and sue Blick Art.

[00:41:22] Speaker 00:
But we are saying that infringement is a different inquiry than examination.

[00:41:29] Speaker 00:
And they have different purposes.

[00:41:33] Speaker 03:
I think we're all set.

[00:41:34] Speaker 03:
We've well adjusted the time.

[00:41:36] Speaker 03:
I'll restore Ms.

[00:41:37] Speaker 03:
Oliver's three minutes of the bubble time.

[00:41:57] Speaker 02:
Thank you, Your Honors.

[00:41:59] Speaker 02:
The government seems to agree to some extent that the article of manufacture identified in the claim language is relevant.

[00:42:06] Speaker 02:
But at the same time, the government states that during examination, they look at completely unrelated art to see if there a general shape exists in the world.

[00:42:15] Speaker 02:
And although the PTO argues that that is not a burden on the patent office, that it is something that they are capable of doing, it is not a burden that should be placed on industrial designers who are trying to determine whether their new designs

[00:42:27] Speaker 02:
should be patentable or would infringe someone else's product.

[00:42:34] Speaker 02:
And the BRI standard does not change this analysis.

[00:42:37] Speaker 02:
It was not used in this case.

[00:42:38] Speaker 02:
There's no indication that the term lip implant was construed and certainly not to include an item such as the gray paper stump here.

[00:42:48] Speaker 02:
At the end of the day, at no level should a lip implant be rejected as anticipated by a gray paper stump art tool.

[00:42:55] Speaker 02:
There is simply no discernible standard that would allow that claim scope, even in examination, to allow that to serve as a basis for an anticipation rejection here.

[00:43:08] Speaker 02:
So unless the court has additional questions, I will cede the remainder of my rebuttal time.

[00:43:13] Speaker 03:
Thank you, Ms.

[00:43:14] Speaker 03:
Oliver.

[00:43:14] Speaker 03:
I thank both counsel.

[00:43:15] Speaker 03:
The case is taken under submission.