The Goodyear Tire & Rubber Company v. The Hercules Tire & Rubber Company, Inc.
United States Court of Appeals for the Federal Circuit (Fed. Cir.)

Decided November 10, 1998

BACKGROUND
In developing your intellectual property portfolio for articles of manufacture, you have filed for utility patents for the article of manufacture and methods of making and using that article of manufacture. You have heard of design patents, but are unsure of the scope of protection that they provide and if they are worth the investment of your resources.

EXECUTIVE SUMMARY
This case involves the alleged infringement of a design patent for a tire tread design to Goodyear by Hercules. Hercules argued that Goodyear's design patent is limited to truck tires and infringement should be determined from the ordinary observer as to truck tires. Goodyear argues that its design patent covers any type of tire and that infringement of the design patent should be purchasers of tires in general.

As with utility patents, the court interprets the scope of design patent claims. In this case, the Fed. Cir. found that the Goodyear patent was not limited to truck tires because there was no limitation to truck tires on the face of the patent or arising from the prosecution history of the design patent before the United States Patent and Trademark Office (USPTO). In this case, the Fed. Cir. found that infringement of a design patent rests on deception from the viewpoint of the person who is the ordinary purchaser of the article charged to be an infringement, which in this case was a truck tire. Thus, while the Goodyear patent was not limited to truck tires, infringement of the Goodyear patent was measured from the viewpoint of a prospective purchaser of truck tires, such as a trucker or fleet operator. The Practice Pointer to be gained from this case is that infringement of a design patent can be viewed from the perspective of a perhaps unanticipated article of manufacture and that the claim should be drafted and prosecuted with this in mind.

THE LAW
Design patents protect new, original ornamental designs for an article of manufacture. See, 35 U.S.C. section 171. Utility patents, in contrast, protect new and useful processes, machines, manufactures, compositions of matter, or improvements thereof. See, 35 U.S.C. section 101.

Thus, design patents can provide protection for ornamental aspects of an invention that a utility patent cannot provide. As made evident by the present case, an ornamental design does not have to relate to articles of high artistic merit. Design patents, like utility patents, are subject to the requirements of novelty and nonobviousness. Design patents include a single claim, which relates to the drawings in the patent. As with utility patents, it is the domain of the court to determine the scope of the claim in light of the claims themselves and other evidence, such as intrinsic evidence from the patent record. The steps taken by a court to determine the scope of a design patent claim parallel those taken for a utility patent claim.

Once the scope of a design patent claim is determined, then infringement of that claim can be determined. With regard to the infringement of design patents, the Fed. Cir. heldMthat 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, the first one patented is infringed by the other.

IMPORTANCE OF THE CASE
This case highlights the differences in design patent acquisition and enforcement.
Although design patents tend to be relatively narrow in scope, this case underscores the importance of obtaining design patents that are of appreciable scope.