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How Design Patent Law Lost Its Shape Burstein.41.2.1 (Do Not Delete) 2/5/2020 3:55 PM HOW DESIGN PATENT LAW LOST ITS SHAPE Sarah Burstein† TABLE OF CONTENTS I. BACKGROUND ........................................................................................................... 559 A. Sources of Design Patent Law ..................................................................... 559 B. Design Patentable Subject Matter .............................................................. 561 1. “Ornamental” ................................................................................... 561 2. “Article of Manufacture” ................................................................ 562 3. “Design” ............................................................................................ 562 C. Design Patent Infringement ........................................................................ 563 D. Design Patent Claiming............................................................................... 565 II. ARTICLES & PORTIONS THEREOF ............................................................................ 565 III. IN RE ZAHN (1980) .................................................................................................... 571 A. The Precedents .............................................................................................. 571 1. Ex parte Northup (Pat. Off. Bd. App. 1932) ................................. 571 2. In re Blum (C.C.P.A. 1967) ............................................................. 573 B. The Proceedings at the USPTO .................................................................. 576 1. The Application ............................................................................... 576 † Professor of Law at the University of Oklahoma College of Law. The author thanks Mark McKenna, Joshua Landau, Mark Lemley, Yvette Joy Liebesman, Alexandra J. Roberts, Pam Samuelson, Paul Heald, Genevieve Tokic, and Charlotte Tschider for comments on earlier drafts of this project. Earlier drafts of this Article were presented at the Eighteenth Annual Intellectual Property Scholars Conference at UC Berkeley, the Chicagoland Junior Scholars WIP Conference, Benjamin N. Cardozo School of Law, UNC School of Law, Chicago-Kent College of Law, and the Winter 2019 Junior Intellectual Property Scholars (JISPA) Workshop; the author also thanks the participants in those conferences and workshops for their helpful comments and suggestions. Finally, thanks to Lisa Bowles, Darla Jackson, and Leslee Roybal for additional research assistance and support. 555 Burstein.41.2.1 (Do Not Delete) 2/5/2020 3:55 PM 556 CARDOZO LAW REVIEW [Vol. 41:555 2. The Board Appeal ............................................................................ 581 IV. DESIGN PATENT LAW IN A ZAHN WORLD .............................................................. 596 A. Design Patent Infringement & Validity Under Zahn .............................. 596 B. Design Patent Prosecution Under Zahn .................................................... 601 C. Design Patent “Total Profits” Under Zahn ............................................... 608 1. “Total Profits” for Fragments......................................................... 609 2. Semantic Gymnastics ...................................................................... 614 V. THE SHAKY LOGICAL AND LEGAL FOUNDATIONS OF ZAHN ................................. 615 A. Statutory Text ............................................................................................... 616 B. The Dicta from Blum ................................................................................... 621 C. Historical Practice ........................................................................................ 623 1. Northup Copending Application ................................................... 623 2. Gorham v. White .............................................................................. 628 CONCLUSION..................................................................................................................... 638 Under U.S. law, patents are available for “any new, original and ornamental design for an article of manufacture.”1 Today, the U.S. Patent and Trademark Office (USPTO) allows applicants to claim any “visual characteristic[] embodied in or applied to an article” as a separate “design.”2 The foundation of this “anything goes” regime is a 1980 decision from the U.S. Court of Customs & Patent Appeals (CCPA), In re Zahn.3 Although design patent practitioners recognize Zahn as a “major change in [the] law,”4 the decision has received little attention in the 1 35 U.S.C. § 171(a) (Supp. I 2013). 2 See MANUAL OF PATENT EXAMINING PROCEDURE § 1502 (9th ed. Jan. 2018) [hereinafter MPEP]. 3 In re Zahn, 617 F.2d 261, 268 (C.C.P.A. 1980). 4 Joel M. Freed, Patent Developments, The Eighth Annual Judicial Conference of the United States Court of Customs and Patent Appeals (Apr. 10, 1981), in 92 F.R.D. 183, 194 (1981) (describing Zahn as effecting a “major change in law”); id. (“The strong two-judge dissent aimed for adherence to the ‘overall visual appearance’ concept that has been so prevalent in prior case law in the design patent area.”); see also Robert G. Oake, Jr., Design Patent Perspective: The Design Patent Application – Part 2, INTELL. PROP. TODAY, Nov. 2012, at 2, 4 (describing Zahn as “a fundamental shift in design patent law”); Elizabeth D. Ferrill & Robert D. Litowitz, Avoiding the Remedy Dilemma in Enforcing Design Patents, LAW360 (Mar. 5, 2013), https://www.finnegan.com/en/insights/avoiding-the-remedy-dilemma-in-enforcing-design- Burstein.41.2.1 (Do Not Delete) 2/5/2020 3:55 PM 2019] HOW DESIGN PATENT LAW LOST ITS SHAPE 557 academic literature. When it does get mentioned in the literature, Zahn is often cited with approval or treated as if it were no big deal.5 A reader might be left with the impression that Zahn provides a strong, unassailable foundation for contemporary design patent law and practice. But in reality, Zahn is a flawed decision built on poor logic, mis-framed issues, and ipse dixit.6 While other recent scholarship has discussed some of the problems with the contemporary uses of dotted-line claiming in design patents,7 patents.html [https://perma.cc/BH9R-KH7J] (describing Zahn as ushering in “a sea change in design patent prosecution”). One well-known practitioner has even dubbed it “the second most significant design patent case ever decided.” Perry J. Saidman, Design Patentees: Don’t Get Unglued by Elmer or the Single Most Important Thing to Know About the Preparation of Design Patent Applications, 78 J. PAT. & TRADEMARK OFF. SOC’Y 311, 317 (1996) (emphasis omitted). Some practitioners have described Zahn as merely “ratifying the use of dotted lines to disclaim portions of the design.” Christopher V. Carani, The New “Extra-Ordinary” Observer Test for Design Patent Infringement—on a Crash Course with the Supreme Court’s Precedent in Gorham v. White, 8 J. MARSHALL REV. INTELL. PROP. L. 354, 367 n.87 (2009); see James Juo, Egyptian Goddess: Rebooting Design Patents and Resurrecting Whitman Saddle, 18 FED. CIR. B.J. 429, 447 (2009) (“The U.S. Court of Customs and Patent Appeals, the predecessor of the Federal Circuit, ratified the use of broken lines in In re Zahn.”). But it is odd to characterize a decision that reversed the USPTO’s refusal to allow such broken-line disclaimers as a “ratification” of that practice. See generally infra Part III. 5 See Jason J. Du Mont & Mark D. Janis, Virtual Designs, 17 STAN. TECH. L. REV. 107, 116 (2013) (“Zahn can be read as standing for the narrow—and perhaps unremarkable—proposition that it is acceptable to use broken lines to designate ‘the environment in which the design is associated.’”); Michael Risch, Functionality and Graphical User Interface Design Patents, 17 STAN. TECH. L. REV. 53, 68 (2013) (referring to “the apparent reasonableness of . Zahn with respect to” its own facts). 6 See infra Part V. 7 See Jeanne C. Fromer & Mark P. McKenna, Claiming Design, 167 U. PA. L. REV. 123, 132– 33 (2018) (“While the design patent statute is old, use of that system has become far more popular in recent years, and claimants have used it much more commonly for partial designs. These developments have made claiming in each area both more important and more difficult, and they have dramatically increased instances of overlapping protection. Thus, in our view, the problems with claiming in these areas, and especially their relationship to the problem of overlap, were largely accidental and, until now, mostly unconsidered.”) (footnotes omitted); Christopher Buccafusco, Mark A. Lemley & Jonathan S. Masur, Intelligent Design, 68 DUKE L.J. 75, 122 (2018) [hereinafter Buccafusco, Intelligent Design] (noting that, at least under some interpretations of 35 U.S.C. § 289, which provides a special “total profit[s]” remedy for certain acts of design patent infringement, “a plaintiff could capture the profits of an entire car based solely on the design of one small part”); id. at 133–34 (“The current practice of ‘dotted line’ drawings allows patentees to claim a particular curve or feature divorced from the product as a whole. The PTO might instead require the plaintiff to submit a photo or a computer-aided design drawing of the actual or intended product and limit design patent infringement to products that are similar to the Burstein.41.2.1 (Do Not Delete) 2/5/2020 3:55 PM 558 CARDOZO LAW REVIEW [Vol. 41:555 none has deeply analyzed or critiqued the underlying bases of
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