(Serial No. 29/253,172) UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

2012-1261 (Serial No. 29/253,172) UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT IN RE TIMOTHY S. OWENS SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, and PHILIP E. HAGUE Appeal from the United States Patent and Trademark Office Board of Patent Appeals and Interferences BRIEF OF AMICUS CURIAE METHOD PRODUCTS, INC. May 23, 2012 Tracy-Gene G. Durkin David K. S. Cornwell Jon E. Wright Jonathan M. Strang STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New York Ave., N.W. Washington, DC 20005 (202) 371-2600 Counsel for Amicus Curiae

CERTIFICATE OF INTEREST Counsel for amicus Method Products, Inc. certifies the following: 1. The full name of every party or amicus represented by me is: Method Products Inc. 2. The name of the real party in interest represented by me is: The same as 1. 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are listed below for each amici: None 4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are: STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.: Tracy-Gene G. Durkin, David K. S. Cornwell, Jon E. Wright, and Jonathan M. Strang. Date: May 23, 2012 Respectfully submitted, /s/ Tracy-Gene G. Durkin Counsel for Amicus Curiae Method Products Inc.

CERTIFICATE OF INTEREST TABLE OF CONTENTS TABLE OF AUTHORITIES... ii INTEREST OF AMICUS CURIAE... 1 INTRODUCTORY STATEMENT... 2 SUMMARY OF THE ARGUMENT... 2 ARGUMENT... 4 I. The Office has historically allowed applicants to claim less than the complete article disclosed in the original application.... 4 II. The Office has no clear policy on the written description requirement.... 8 A. The Office s own guidance further confuses the issue... 8 B. The Office s surreptitious policy shift finds no basis in the statute, rules, MPEP or case law.... 12 III. There may be unintended consequences of affirming the Board decision without addressing written description law as applied to design patents.... 13 CONCLUSION... 14 - i -

TABLE OF AUTHORITIES Statutes 35 U.S.C. 112... 14 35 U.S.C. 132... 12 Other Authorities Manual of Patent Examining Procedure 1503.02... 11, 13 ii

This brief is filed on behalf of Method Products, Inc. ( Method ). Method submits this brief as amicus curiae pursuant to Fed. R. App. P. 29 and Fed. Cir. Rule 29. All parties to the appeal have consented to this amicus brief; accordingly, no motion for leave is provided. INTEREST OF AMICUS CURIAE Method is a small privately held company whose business in innovation and product design will be substantively and adversely affected if the panel decision stands. Method Products is one of the fastest growing private companies in America and a leading innovator of premium healthy home and personal care products. Method s products can be found in more than 25,000 retail locations throughout the U.S., Canada, the U.K., France and Australia. Under the direction of world renowned designer Josh Handy, Method s products have become small works of art for millions of homes. Method has significant experience with and supports a strong and effective United States design patent system. In filing this brief, Method seeks to present the Court with a practical view of the challenges design patent applicants routinely face. Method has no commercial interest in the parties to this action. Pursuant to Federal Rule of Appellate Procedure Rule 29(c)(5), Method further states that no counsel for a party authored this brief in whole or in part, and no counsel or party made a monetary contribution intended to fund the preparation - 1 -

or submission of this brief. No person other than Method or its counsel made a monetary contribution to its preparation or submission. INTRODUCTORY STATEMENT Method urges the Court to address the Board s written description analysis and provide guidance consistent with the positions expressed herein. Specifically, Method urges the Court to resist the Board s attempt to avoid applying the statutory written description requirement in design patent applications. Rather than determining whether one of ordinary skill in the relevant art would conclude that the applicants possessed the claimed design at the time of filing, the Board has fashioned an inappropriate and unworkable per se rule that does not fit in the statutory scheme. Specifically, the test for written description support is whether the claimed portion of a product is described in the original drawings. The test is not whether an unclaimed border happens to falls on a natural boundary of the original drawing. To simply affirm the Board s decision will implicitly confirm the Board s unworkable and improper test, and could put into doubt the validity of countless existing design patents. SUMMARY OF THE ARGUMENT Until recent years, design patent applicants confidently and efficiently protected their designs by filing an original application completely disclosing an - 2 -

article embodying an overall design. Applicants subsequently claimed separately patentable portions of the originally-disclosed design. Examination of the initial application illuminated the full scope of the protectable designs, while market forces then helped identify the commercially-valuable designs embodied in the article. After the overall design was allowed, design patent applicants then focused on the disclosed designs which merit separate design protection in, for example, a continuation application. To separately claim a portion of the overall design, applicants amended the original figures by inserting unclaimed boundary lines (typically represented by dashed or dot-dashed broken lines) to indicate the boundaries of the claimed subject matter. The Board decision and recent informal Office guidance, however, no longer consistently allow this efficient practice. To achieve comprehensive protection, design patent applicants are now forced to include in the original filing separate drawings showing the entire design as well as every possible protectable design. As a result, some applicants are now filing over a hundred drawings in a single design patent application. Contrary to the Office s position, this practice is not required by the written description requirement, and it unnecessarily burdens the applicant while providing no discernible benefit to the Office. In addition, the resulting patent portfolio is not as robust as it could be. To draw an analogy to utility patents, filing every possible permutation of a design contemporaneously - 3 -

with an original design patent application is the equivalent of drafting a full and comprehensive claim set for an invention with an original utility patent application, without an opportunity to subsequently amend during prosecution. If a feature no matter how simple or small is adequately described in the original drawings, there is no lack of written description. Should an over-zealous applicant attempt to claim a portion of a design that was described in the original filing but is known in the prior art, the application should be rejected as anticipated or obvious. On the other hand, if an applicant attempts to claim a portion of a design that is completely described but not prominently featured in the originallyfiled drawings, the Examiner has the power to request a supplemental oath to ensure applicant is indeed the inventor. ARGUMENT Method seeks to inform the Court of the challenges it and other design patent owners will face if the Court merely affirms the Board decision as supported by substantial evidence without an analysis of the Board s underlying legal rationale. I. The Office has historically allowed applicants to claim less than the complete article disclosed in the original application. In the undersigneds extensive experience practicing design patent law, applicants have saved time and money by initially claiming the entire design of an article of manufacture, and then later concentrating on the separately patentable - 4 -

designs described in the original application. To claim these separatee designs, applicants inserted unclaimed boundary lines to indicate the termination of the claimed design. This brief uses one patented example to illustrate the technique, and several more are included in Exhibit A. 1 These examples are not outliers, but are representative of what was once a prevalent and efficient practice. Application Ser. No. 29/251,426 6, entitled Humidifier Unit and Tub, was filed on January 9, 2006 claiming the entire article as shown below: The application issued as U..S. Patent No. D545, 954 on July 3, 2007 with the same Figures as filed. On March 26, 2007, Applicants filed a continuation application entitled A Portion of a Humidifier Unit and Tub, U.S. Patent Appl. Ser. No. 29/274, 056, claiming only a portion of what wass disclosedd in the original parent application, by inserting at least three new unclaimed boundary lines: 1 The examples cited herein are not ownedd by Method. They were found using publicly available patent databases. - 5 -

(arrows added to indicate new unclaimed boundary lines). This continuation application issued as U.S. Patent No. D555, 236,, with no further changes to the originally filed Figures. On September 26, 2007, Applicants filed U.S. Patent Appl. Ser. No. 29/287, 841, a continuation of the child 056 application, claiming a portion of that which was claimed in the child, also using new unclaimed boundary lines: - 6 -

(arrows added to indicate new boundary lines). This application issued as U.S. Patent No. D569, 958, Portion of a Humidifier Tub on May 27, 2008 with the same drawing Figures as originally filed in the application.. As illustrated in the above example, applicants did not submit drawings showing every possible design described in the original disclosure when filing the original application. Doing so might have invitedd a restriction requirement, slowing prosecution. Instead, applicants filed a full and complete disclosure, and then efficiently filed separate continuation applications, each having a different claim scope demarked using unclaimed boundaryy lines. - 7 -

II. The Office has no clear policy on the written description requirement. The humidifier example above was examined at around the same time as the case at bar. This illustrates that the Office does not have a coherent policy on written description. A. The Office s own guidance further confusess the issue During USPTO Design Day 2012 held at the Office on April 10, 2012, the Office explained that, in general, changing solid lines to broken lines does not create a written description issue. To illustrate itss written description policy, the Office showed the following example: (USPTO presentation, Describing the Design Applied at 7; attached as Exhibit C). When presenting this slide, the Office explained that the amendedd design was - 8 -

adequately described in the original design because all boundaries, ncluding those represented by broken lines, are present in the original design. The Office next attempted to explain whenn an unclaimed boundary can be added to an original disclosure without running afoul of the written description requirement: (Id. at 8.) The Office explained that the amendedd design was adequately described by the original design because the unclaimed boundary was added where the bottle changes curvature. According to this reasoning, however, the Office should not have allowed the humidifier continuation applications described above to claim priority to the - 9 -

parent application. Yet the Office did. The Container example in Exhibit A, which issued as recently as May 31, 2011, suggests that the Office is still not consistently applying its own tests, but instead seems intent on confusing the design patent bar. The bottle example from the Design Day presentation above raises more questions than it answers. For example, what happens if the boundary line is moved 1 millimeter up or down the bottle? Does the amended design suddenly lack written description support? If 1 millimeter is acceptable, is 1 centimeter or halfway up to the bottle neck acceptable? The Office has not provided the public with a reasonable explanation of why one of skill in the art would conclude that the inventor possessed the claimed design in one of these situations but not another. A third example (an enlarged portion of a tire tread) presented at Design Day further highlights the Office s confusion regarding its own test. In the following example, the Office stated that the newly-added unclaimed boundary lines are not permissible: - 10 -

(Id. at 9-10.) Yet the highlighted design on the far right of the slide is no different than what is shown in the humidifier and container examples. Furthermore, the highlighted design on the left of the right side of the slide is precisely what the MPEP has permitted since 1998: the addition of a straight broken line connecting the ends of full lines defining the claimed design. MPEP 1503.02 (7th ed., July 1998 to current 8th ed., Rev. 8, July 2010). The only conclusion that can be drawn from these examples the issued patents described herein, the case at bar, and the examples presented at Design Day is that the Office has no clearly articulated policy on when unclaimed boundary lines can be added to an initial disclosure. - 11 -

B. The Office s surreptitious policy shift finds no basis in the statute, rules, MPEP or case law. Without any notice and without any change to the Office s published written procedures, the Board s decision in the case at bar and the materials presented at Design Day this year indicate an attempt to change the Office s design patent examination practice. The undersigned are not aware of any Federal Circuit case or any change to the statutes or regulations that could have prompted the Office to adopt a new written description test for design patents. For example, the relevant portion of the MPEP does not address the issue directly, and has not changed since it was introduced in July of 1998: Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary. Where no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter. Any broken line boundary other than a straight broken line may constitute new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f). - 12 -

MPEP 1503.02 (7th ed., July 1998 to current 8th ed., Rev. 8, July 2010). The rules and statutes have remained similarly unchanged with respect to design patent written description requirements. III. There may be unintended consequences of affirming the Board decision without addressing written description law as applied to design patents. Should the Court affirm the Board s decision without addressing the proper application of the statutory written description requirement to design patents, applicants cannot reliably predict how the Office will examine design patent applications in the future. Currently, the safest path for design patent applicants is expensive. Instead of efficiently prosecuting a patent family, as the applicants did in the humidifier example above, applicants desiring comprehensive protection must instead file every conceivable permutation of the overall design that might warrant protection. But because the preparation of drawings is the most costly part of preparing a design patent application, this strategy can be prohibitively expensive. Indeed, some applicants are already incurring this significant but unnecessary expense. As shown in Exhibit B, in one case, applicants filed more than one hundred drawings in an initial design patent filing in an attempt to capture all patentable aspects of the disclosed design. In the other example in Exhibit B, applicants filed 58 drawings. Applicants less able to absorb the costs of having countless drawings made may decide to gamble that the Office will treat its family - 13 -

of applications like the Office treated the family shown in Exhibit A. Yet other applicants, naïve to the Office s shifting undocumented policy, may have already filed original design applications claiming only the complete article believing they had preserved their right to claim all of the protectable designs of the original disclosure. As is highlighted in the case at bar, such applicants may find that public sale or disclosure of their products embodying the design will prevent them from obtaining adequate protection after their initial disclosure has been timely filed. If the Court affirms the Board s decision by merely stating that there is substantial evidence in the record supporting the Office s fact-finding, the Court will in effect affirm the Office s undocumented, inconsistently applied and unsupported test. This may unfairly jeopardize many existing design patents by subjecting them to a post-issuance written description challenge. Questionable per se challenges of the type presented in this case are costly to defend and distract from the merits of the case. CONCLUSION This case illustrates the need for the Court s guidance on the proper application of the statutory requirements of 35 U.S.C. 112 written description in the context of design patent applications. Specifically, Method urges this Court to find that a drawing for a complete product provides 112 written description - 14 -

support for a patent claim to a portion of that product having an unclaimed boundary even if the unclaimed boundary does not align with a natural boundary of the entire product. Clarity is needed because the Office is calling into question a once common and efficient practice for both applicants and the Office without basis in the patent statute or case law. Accordingly, the Office's per se test in the present case should be reversed. Date: May 23, 2012 Respectfully submitted, /s/ Tracy-Gene G. Durkin David K.S. Cornwell Jon E. Wright Jonathan M. Strang STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New York Ave., N.W. Washington, DC 20005 Tel: (202) 371-2600 Fax: (202) 371-2540 Email: tdurkin@skgf.com ATTORNEYS FOR AMICUS CURIAE: Method Products, Inc. - 15 -

Exhibit A Excerpts from other Design Patents and Applications

Exhibit A Table of Contents Container to Taylor, et al.... 1 Bottle/Flask to Rica... 3 Bottle to Snyder, et al..... 6 Humidifier to Snow, et al... 8

Container to Taylor, et al. Parent: U.S. Patent Appl. Ser. No. 29/363,488, filed June 10, 2010, issued as U.S. Patent No. D628,469 on December 7, 2010. Child: U.S. Patent Appl. Ser. No. 29/378,646 filed November 8, 2010, issued as U.S. Patent No. D638,699 on May 31, 2011. Note: all information excerpted from publicly available sources (patents and file histories on Public PAIR) 1

Parent Application (as filed) Child Patent (as issued) 2

Bottle/Flask to Rica Parent: U.S. Patent Appl. Ser. No. 29/301,064, filed Feb. 6, 2008, issued as U.S. Patent No. D596,491 on July 21, 2009. Child: U.S. Patent Appl. Ser. No. 29/330,535 filed January 8, 2009, issued as U.S. Patent No. D612,242 on March 23, 2010. Note: all information excerpted from publicly available sources (patents and file histories on Public PAIR) 3

Parent Application (replacement dwgs) 1 1 Replacment drawings were submitted to correct minor issues noted in Office Action Child Patent (as issued) 4

Parent Application (replacement dwgs) Child Patent (as issued) 5

Bottle to Snyder, et al. Parent: U.S. Patent Appl. Ser. No. 29/276,737, filed Feb. 2, 2007, issued as U.S. Patent No. D566,562 on April 15, 2008. Grandchild: U.S. Patent Appl. Ser. No. 29/323,872 filed September 2, 2008, issued as U.S. Patent No. D588,464 on March 17, 2009. Note: all information excerpted from publicly available sources (patents and file histories on Public PAIR) 6

Parent Application (as filed) Child Patent (as issued) 7

Humidifier to Snow, et al. Parent: U.S. Patent Appl. Ser. No. 29/251,426, filed January 9, 2006, issued as U.S. Patent No. D545,954 on July 3, 2007. Child: U.S. Patent Appl. Ser. No. 29/274,056 filed March 26, 2007, issued as U.S. Patent No. D555,236 on November 13, 2007. Grandchild: U.S. Patent Appl. Ser. No. 29/287,841 filed September 26, 2007, issued as U.S. Patent No. D569,958 on November May 27, 2008. Note: all information excerpted from publicly available sources (patents and file histories on Public PAIR) 8

Parent Application (as filed) Child Patent (as issued) Grandchild Patent (as issued) 9

Parent Application (as filed) Child Patent (as issued) Grandchild Patent (as issued) 10

Parent Application (as filed) Child Patent (as issued) Grandchild Patent (as issued) 11

Parent Application (as filed) Child Patent (as issued) Grandchild Patent (as issued) 12

Exhibit B U.S. Patent Nos. D509,084 and D579,339, and Applications as filed

Exhibit B Table of Contents U.S. Patent No. D509,084.. 1 Application Ser. No. 29/181,503 as filed... 9 U.S. Patent No. D579,339.. 58 Application Ser. No. 29/252,626 as filed... 94

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Exhibit C United States Patent Office Design Day presentation

Describing the Design Applied United States Patent and Trademark Office

Describing the Design Applied It is the drawings of the design patent that provide the description of the invention. In re Daniels 46 USPQ2d 1788 (Fed. Cir. 1998)

Describing the Design Applied The invention is not the article and is not the design per se, but is the design applied. *** It should be "clear without further explanation or illustration just how the article will look with the design applied to it." In re Schnell, 8 USPQ 19 (CCPA 1931) quoting Ex parte Cady, 1916 C. D. 62, 232 O. G. 621

Describing the Design Applied In this single-view disclosure, we must speculate as to what the article looks like with the design applied. The figure is a side elevation view of a container showing our new design.

Describing the Design Applied Figure 3 is a side elevation view of a container from Design Patent D577,747 and Figure 1 is a perspective view. Fig. 3 Fig. 1

Describing the Design Applied In this single-view disclosure, we do not see what the article looks like with the design applied. The figure is a front elevational view of a package with surface decoration showing our new design. The broken lines illustrate a portion of the package surface and form no part of the claimed design.

Describing the Design Applied Is the design on the right described in the design on the left? Storage Bin The broken lines illustrate portions of the storage bin that form no part of the claimed design. Original design Amended design

Describing the Design Applied Is the design on the right described in the design on the left? Bottle The dash-dash lines illustrate portions of the bottle that form no part of the claimed design. The dash-dot line marks the boundary of the claimed design but is not included in the claim. Original design Amended design

Describing the Design Applied Is the design on the right described in the design on the left? Detail of a tire tread design Original design Amended design The dash-dash lines illustrate portions of the tread that form no part of the claimed design. The dash-dot lines mark the boundary of the claimed design but are not included in the claim.

Describing the Design Applied The highlighted shapes on the right are not described in the design on the left. Detail of a tire tread design Original design Amended design The dash-dash lines illustrate portions of the tread that form no part of the claimed design. The dash-dot lines mark the boundary of the claimed design but are not included in the claim.

Thank you Joel Sincavage Design Practice Specialist 571 272 2610 Joel.sincavage@uspto.gov United States Patent and Trademark Office

CERTIFICATE OF SERVICE I hereby certify that on this 23 rd day of May, 2012, a copy of the foregoing CORRECTED BRIEF OF AMICUS CURIAE METHOD PRODUCTS, INC. was filed using the CM/ECF system with the Clerk of Court, U.S. Court of Appeals for the Federal Circuit. The CM/ECF system will send a notification of said filing (Notice of Docket Activity) to all registered counsel of record, which constitutes service of said filing. In addition, a copy of the foregoing CORRECTED BRIEF OF AMICUS CURIAE METHOD PRODUCTS, INC. will be served on the following principal counsel of record via email: Raymond T. Chen United States Patent & Trademark Office P.O. Box 1450 Mail Stop 8 Alexandria, VA 22313 (571) 272-9035 Fax: (571) 273-0373 Email: Ray.Chen@uspto.gov Counsel for Appellee David J. Kappos, Director, U.S. Patent and Trademark Office Perry J. Saidman Saidman DesignLaw Group, LLC 8601 Georgia Ave., Suite 603 Silver Spring, MD 20910 (301) 585-8601 Fax: (301) 585-0168 Email: perry.saidman@designlawgroup.com Counsel for Appellants Jason C. Campbell, Philip E. Hague, Robert M. Lynch, IV, Sheila M. Kelly, and Timothy S. Owens - 1 -

Date: May 23, 2012 Respectfully submitted, /s/ Tracy-Gene G. Durkin Counsel for Amicus Curiae Method Products Inc. - 2 -

CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION, TYPEFACE REQUIREMENTS, AND TYPE STYLE REQUIREMENTS 1. This brief complies with the type-volume limitation of Federal Rule of Appellate Procedure 32(a)(7)(B) or Federal Rule of Appellate Procedure 28.1(e). The brief contains 2,505 words, excluding the parts of the brief exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii). 2. This brief complies with the typeface requirements of Federal Rule of Appellate Procedure 32(a)(5) or Federal Rule of Appellate Procedure 28.1(e) and the type style requirements of Federal Rule of Appellate Procedure 32(a)(6). The brief has been prepared in a proportionally spaced typeface using Microsoft Word 2010 in 14-point Times New Roman. Date: May 23, 2012 Respectfully submitted, /s/ Tracy-Gene G. Durkin Counsel for Amicus Curiae Method Products Inc. - 1 -