Perry Saidman
Of counsel
Design Law Pioneer
Perry coined the phrase “design law” when starting his design patent practice before anyone else was calling themselves a design lawyer.
Having obtained a master’s degree in electrical engineering, Perry drew upon his many previous years of experience in utility patent matters when devising analogous strategies to deal with design patent issues.
In addition to having prepared and prosecuted thousands of design patents, he has successfully represented clients in ground-breaking cases that have established the enforceability of design patents in court. The first and most famous of such cases was Avia v. LA Gear where the U.S. Court of Appeals for the Federal Circuit in 1988 affirmed a summary judgment holding that two design patents were valid and willfully infringed, entitling the design patent owner to increased damages and attorney fees. Thus began the slow and steady climb in the popularity of obtaining design patents as a core component of a company’s IP strategy, culminating perhaps in the landmark Apple v. Samsung litigation involving a 2012 jury award of over $1 billion based on Samsung’s infringement of three of Apple’s design patents covering its iconic iPhone. Perry penned an amicus curiae brief on behalf of several corporate design patent rights holders when the case reached the Supreme Court four years later on the issue of total profit damages under 35 U.S.C. 289.
Articles
DesignLaw Knowledge
Infringement
The “ordinary observer” test for design patent infringement essentially asks whether the patented and accused designs are “substantially the same” in overall appearance. Although courts are very skilled in listing differences between the two designs, the final infringement determination is very subjective, being based on the personal observations and feelings of the fact-finder.
In the 2008 en banc decision of Egyptian Goddess v. Swisa, the Federal Circuit abolished the “point of novelty” test that, despite its flaws, had brought some objectivity to the infringement determination. In its place, the Court in Egyptian repeatedly emphasized the need to view the patented and accused designs in the context of the prior art in order to provide a frame of reference for determining substantial similarity.
However, in one sentence of Egyptian, the Court said that the prior art did not need to be reviewed if the patented and accused designs were “sufficiently distinct”. But there were no guidelines, in Egyptian or later cases, about how to determine whether two designs are “sufficiently distinct”. Since then, an outsized number of cases have relied on this clearly subjective determination.
