June 15, 2015 1 | 4

BlackBerry prevails over Typo Products

in US design patent infringement case

Dr. Henning Hartwig, Attorney-at-Law, Munich

These days, some interesting news reached us from the new world which actually go

back to February 4, 2015 when the District Court for the Northern District of California,

in BlackBerry Limited v Typo Products LLC, ordered that Typo Products must pay USD

860,600 to BlackBerry for violating a court order.

By way of background, in January 2014, Typo Products introduced a physical keyboard

designed to be attached to an iPhone 5 or 5s. BlackBerry started court proceedings

against Typo Products arguing that the keyboard infringed their IP rights.

In particular, BlackBerry sued Typo Products for infringement of U.S. Design Patent

no. D685,775. The underlying BlackBerry Q10 device, the 775 design patent and the

accused keyboard are shown below.

Source: http://ladas.com/wp-content/uploads/2014/05/blackberry1.png

In March 2014, a preliminary injunction was granted by the Court, which took effect on

April 15, 2014. However, instead of complying with the Court order, Typo Products

continued to sell and promote products that were subject to the order resulting in the

further verdict reported above.

From a European perspective, it is interesting to learn from this textbook-style ruling

that a U.S. design patent infringement case basically comes down to four steps of as-

sessment, which are in this order (i) invalidity, (ii) prosecution history, (iii) claim

construction and (iv) sameness.

June 15, 2015 2 | 4

I.

Firstly, and as a formal remark, while European courts most likely would start with

testing validity of a design (where challenged), U.S. courts seem to address infringe-

ment issues first. As regards validity, the Court found the defendants conclusory as-

sertion that the D775 patent is invalid as anticipated by the BlackBerry Bold insuffi-

cient. Likewise, Typos assertion that a combination of any number of prior art de-

signs and a multitude of phones with straight keyboards renders the D775 patent

obvious is not sufficient to show a likelihood of establishing that the D775 would be

found invalid for obviousness.

II.

A second difference appears to be the influence of the prosecution history. In the U.S.,

prosecution history is significant because declarations made by the applicant in the

course of examination will be held against him in later litigation (file-wrapper estop-

pel or prosecution history estoppel). In the present case the estoppel argument did

not apply because BlackBerry did not modify or limit its claims as a condition for se-

curing the patent, according to the Court. Different to that, prosecution history, in

general, is not relevant in European design law. Nevertheless, elements found in the

application can become relevant: For example, according to the German Federal Su-

preme Court in Wine Decanter, in case of inconsistencies in representing a design, the

exact nature of the subject matter must established. This must be done, as held by the

German Court, by way of construction, including the (mandatory) indication of the

product (title) or the (optional) description of the design or the (optional) classifica-

tion of the product.

III.

Thirdly, when it comes to interpreting the asserted design, the Court in BlackBerry v

Typo Products reminded the parties that claim construction does not necessarily re-

quire a detailed verbal description of the design patent to conduct the infringement

analysis:

Generally, a design is better represented by an illustration than it could be

by any description and a description would probably not be intelligible

without the illustration. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d

665, 679-80 (Fed. Cir. 2008) (citing Dobson v. Dornan, 118 U.S. 10, 14

(1886)). Accordingly, the preferable course ordinarily will be for a district

court not to attempt to construe a design patent claim by providing a de-

tailed verbal description of the claimed design. Egyptian Goddess, 543

F.3d at 679. Issuing a verbal description of the claimed design creates a

risk of placing undue emphasis on particular features of the design and the

risk that a finder of fact will focus on each individual described feature in

June 15, 2015 3 | 4

the verbal description rather than on the design as a whole. Id. at 679-80.

Nonetheless, a district courts decision regarding the level of detail to be

used in describing the claimed design is a matter within the courts discre-

tion, and absent a showing of prejudice, the courts decision to issue a rela-

tively detailed claim construction will not be reversible error.

While in the present case the Court found a written claim construction neither neces-

sary nor helpful and decided to conduct the infringement analysis by comparing the

Typo keyboard directly to the illustrations in the D775 patent, something akin to claim

construction seems to be rather common under European design law, even though EU

design law does not require or allow any claims. The German Federal Supreme Court,

for instance, held in ICE that any design infringement test needs to start with analyzing

and describing the overall impression of the asserted design. Once this analysis is com-

pleted, the overall impression of the accused device must be construed likewise. Fi-

nally, the overall impression of the conflicting designs must be compared in order to

find whether one differs from the other. Thus, the language describing the respective

designs is of great importance.

IV.

Last but not least, fourthly, the infringement test under US design patent law, as stated

by the Court in the present case, is whether an ordinary observer, taking into account

the prior art, would believe the accused design to be the same as the patented de-

sign. The Court found that it was likely that BlackBerry would prevail on this issue (the

Court issued a preliminary injunction, i.e., prior to any trial on the merits; thus, the

likelihood of prevailing was the standard applied):

BlackBerry has shown a likelihood of establishing that an ordinary ob-

server, taking into account the prior art, would believe that the design of

Typos keyboard is the same as the design patented in the D775 patent. Just

as issuing a verbal description of a claimed design creates a risk of placing

undue emphasis on particular features of the design rather than on the

design as a whole, Egyptian Goddess, 543 F.3d at 679-80, so too does a

verbal description of similarities between an accused and patented design.

That is certainly the case here. A description of what makes the designs at

issue appear the same to an ordinary observer is no substitute for a visual

comparison of the accused and patented designs. Nonetheless, I agree that

the ordinary observer would think that the features identified by Mr. Lu-

cente as used in both designs create the impression that the Typo keyboard

is the same design as the D775 patent. The differences that Typo refers to

do not alter the overall impression that the two designs are the

same. () Finally, Typos assertion that the designs are different because

the Typo keyboard is not a phone and as such an ordinary observer familiar

with the prior art would be able to differentiate a cell phone case with a

June 15, 2015 4 | 4

keyboard (Typo) from a cell phone (BlackBerry) fails because the only por-

tion of the handheld device that is claimed in the D775 patent is the key-

board. See D775 patent at 1 (The broken lines in the drawings of the

handheld electronic device are for showing portions of the article and form

no part of the claimed design.)

These findings are remarkable as they seem to match with European standards to some

extent. Actually, when arguing that the claimed design is limited to the portion of the

keyboard and, consequently, no comparison with a cell phone case with a keyboard is

allowed. This approach is similar to what the German Federal Supreme Court held in

Writing Utensils: In order to compare like with like, the subject of the disputed design

must be adjusted to the asserted design. In that case, the asserted design covered only

the intermediate portion of a writing utensil whereas the disputed object was a com-

plete writing utensil. The German Supreme Court decided that, when assessing

whether the overall impression was the same or different, only the corresponding in-

termediate portion of the disputed design had to be taken into consideration. For the

same reason, Typo Products would not be allowed to argue that the accused device

showed numbers and letters on the individual keys while the asserted design patent did

not the same level of generality much be simply reached when comparing two con-

flicting designs.

Last but not least, on June 2, 2015, it was reported that BlackBerry and Typo Products

meanwhile settled their various disputes, allowing Typo to continue selling keyboards

for smart phones and other devices with screens not smaller than 7.9 inches.