District Court Properly Considered Functional Aspects of Patented Design in Similarity Analysis

**DISTRICT COURT PROPERLY CONSIDERED FUNCTIONAL ASPECTS OF PATENTED DESIGN IN SIMILARITY ANALYSIS

Range of Motion Prods. LLC v. Armaid Co. LLC, 23-2427 — Yesterday in an opinion by Judge CUNNINGHAM, the Federal Circuit affirmed a district court summary judgment that Armaid did not infringe Range of Motion’s design patent for a body massager. Range of Motion argued the district court erred in holding Armaid’s product was not substantially similar to Range of Motion’s because the overall visual design of both products was similar enough to conclude there was substantial evidence of infringement.

The Federal Circuit disagreed. To “briefly compar[e] two pictures” of the products failed to consider claim construction or separate out the functional aspects of the design so that they did not play a role in the infringement analysis. This approach was contrary to precedent and “would dramatically increase the scope of design patents by precluding summary judgment whenever functional considerations result in two designs sharing similarities.” The district court had correctly recognized that most of the designs’ similarities designs were attributed to the products’ functional features and had “thoroughly explained” differences that would “stand out to an ordinary observer familiar with the prior art.” Chief Judge MOORE wrote in dissent that the district court erred in concluding no reasonable jury could find the designs substantially similar when looking at the products side-by-side and the court’s “plainly dissimilar/sufficiently distinct” test improperly reframed the inquiry away from similarities and towards differences.
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IPO BOARD ADOPTS RESOLUTION ON CROSS-BORDER PATENT PRACTITIONER PRIVILEGE

Yesterday the IPO Board of Directors adopted a resolution supporting the application of privilege protections to certain confidential cross-border communications between clients and patent practitioners and lawyers, aligning foreign and domestic communications for purposes of discovery in U.S. litigation.

RESOLVED, IPO supports the application of a privilege, analogous to the attorney-client privilege, protecting from discovery in U.S. litigation confidential communications between clients and their U.S. and foreign patent practitioners concerning subject matter within the scope of the patent practitioner’s authorization to practice before a competent administrative or judicial authority. For purposes of this Resolution, “patent practitioner” means a practitioner, whether or not qualified as an attorney at law, and regardless of whether they are inhouse or outside, who is authorized to act before a competent administrative or judicial authority in the U.S. or a foreign country and is officially certified to provide professional advice concerning patents (e.g., U.S. patent agents and European patent attorneys).

IPO further supports the application of a privilege, analogous to the attorney-client privilege, protecting from discovery in U.S. litigation confidential communications between clients and their foreign lawyers (regardless of whether they are in-house or outside and including, but not limited to, lawyers who provide legal advice concerning patents), provided such communications are for the purpose of seeking or providing legal advice and would be considered privileged if made or received by a U.S. attorney.

The resolution incorporates domestic patent agent privilege, consistent with the Federal Circuit’s decision in In re Queen’s University that recognized privilege for communications between clients and U.S. patent agents when those communications fall within the scope of authorized USPTO practice. It also clarifies that communications with in‑house patent practitioners and lawyers—both U.S. and foreign—should be eligible for privilege protection, addressing uncertainty created by the treatment of in‑house counsel in some foreign jurisdictions. Finally, the resolution is intended to complement ongoing discussions within WIPO aimed at establishing minimum standards for the protection of legal advice concerning patents in a cross‑border context.

IPOWNERS SPRING SUMMIT SESSION ON DAMAGES AND INJUNCTIONS – MARCH 19

Register to attend IPOwners Spring Summit™ on March 19 in Washington, DC and attend a session on “How Jurisdictions’ Primary Remedies Incentivize Innovation and Investment,” organized by IPO’s U.S. Patent Litigation Committee. As corporations compete globally and patent litigation battles are fought across major country or regional jurisdictions, a key consideration in selection of forum is the availability of the patentee’s preferred remedy. This session will explore how patent adjudication systems incentivize innovation and R&D investment by prioritizing damages or injunctive relief in patent litigation. Speakers include RASMUS JØRGENSEN (NERA Economic Consulting), KIRBY LEE (Ecolab), HEIDI NADEL (HP Inc.), and JEREMY YOUNKIN (Foley Hoag). They will focus on (a) the effect that remedies have on patent litigation strategies, particularly the choice of forum, and (b) the consequences for multinational businesses in R&D and major capital investment. Visit the website to view the full program or to register.