What has been your most memorable case to date, and why?
At the appellate level, I would say Columbia Sportswear v Seirus before the Federal Circuit in January 2023, which was a matter of first impression. The court agreed with our arguments and overturned a non-infringement jury verdict. In the process, we made new law concerning the prior art that can be used in the design patent infringement test. To be part of that process was pretty special.
At the trial level, a March 2020 case involving flameless electronic candles was memorable. A long-time client was sued at the International Trade Commission (ITC) and filed its own complaint in response. The dispute ballooned into two ITC and four district court cases and six inter partes reviews. We pretty much worked our way through the pandemic. Claim construction was a pivotal issue, which we ultimately won. After that, the case was effectively resolved, leading to favourable settlement.
You have extensive experience when it comes to litigating design patent cases. What are the key elements of a successful litigation strategy, and how has this approach evolved over the course of your career?
One critical ingredient is really knowing design patent law – it has its own separate body of jurisprudence and scheme of statutory rules. Yes, there are similarities to other branches like utility patent or trademark law, but there are definitely distinct differences. Failure to appreciate these can be a trap for the unwary.
Beyond that, less is more. Every bit of information that you communicate, even if completely accurate, runs the risk of distracting the fact finder. I do my best to filter out any non-essential information, which can be tough as attorneys are trained to be thorough. But cognitive science instructs that fact finders can only absorb so much. Know your audience and be judicious with the information you dispense.
If you could change anything about the prosecution process for design patents in the United States, what would it be, and do you think it is likely to happen?
Currently, applicants are only allowed to pursue a single design per design patent. I would like to see the USPTO change that rule, so that applicants can include more than one design in a design patent. In a utility patent, the base set of claims is 20 and applicants can include more with additional fees.
I think there is a good chance that this change can come to fruition. It would not require amending the Patent Act, as the current limitation is merely a USPTO rule. I also think that the timing for this change is ripe, as US design patent law recently limited the scope of design patents to the particular article of manufacture claimed in it. Applicants should have the ability to claim multiple articles of manufacture without having to file multiple applications.
You are chair of AIPPI’s design rights committee, former chair of the American Bar Association’s design rights committee and AIPLA’s industrial designs committee and past president of AIPPI United States. How have these associations contributed to your professional development?
These organisations have helped immensely in providing a megaphone for calls for change to design law, which is an area that previously lived in the sleepy backwaters of the IP world. While the clash of the tech titans in Apple v Samsung certainly aided its ascent, it was the collective thrust of these organisations that gave design law proponents a voice.
In a 2008 amicus brief that I penned, AIPLA was willing to enter the fray and take positions early at the petition for en banc review in Egyptian Goddess v Swisa. Without AIPLA’s backing, I do not think the en banc Federal Circuit would have taken the case and the historic design law changes would exist today. I am thankful to those organisations for consistently being willing to get involved in design law issues.
In such a volatile economic climate, how do you communicate patent value to the C-suite?
I like to remind clients that if you do not pursue design protection, others can effectively take your new product designs. Can your company afford to have competitors clone your product designs? The conversation usually ends there.
With more emphasis placed on product appearance, including heightened importance in e-commerce, it is imperative that proactive steps are taken to protect the appearance of product designs, including by filing for design protection both in the United States and abroad.
Christopher V Carani is a partner at McAndrews Held & Malloy. He practises in all areas of IP law with a particular emphasis on design law, which concerns the protection and enforcement of rights in the appearance of consumer products. Mr Carani has extensive experience litigating design cases, including representations before US district courts, the Federal Circuit, the US Supreme Court and the International Trade Commission.