By: Alex Tranquill

What is a famous design that really catches your eye? The Ugg boot, the Coke bottle, the iPhone shape? Well, as it turns out, the companies behind these products also recognized the economic value of these aesthetic features, leading each company to file for design patent protection to prevent copying by their competitors. Historically, design patents, such as the examples above, have been relatively easy to obtain and enforce against providers of similar products. But now, after a recent Federal Circuit decision altered the obviousness standard for design patents, your favorite design may face a greater risk of being copied by infringers.

Obtaining a Design Patent

While the more-popular utility patent protects a product’s functional features, design patents protect what a product looks like. Similar to the examples of a boot, bottle, or phone, this can include a product’s shape, configuration, ornamentation, or specific coloration. Ultimately, to receive design patent protections, an inventor must apply at the United States Patent and Trademark Office (USPTO). There, the inventor must show the design satisfies each of the statutory requirements for a patent outlined in 35 U.S.C. §101-103; these provisions mandate the design to appear on a product and be new, non-obvious, and non-functional.

However, with only about 2% of applications being rejected for obviousness at the USPTO, the novelty standard for design patents has always been perceived as a relatively low bar to patentability. Still, this low bar for novelty has tangible benefits for businesses, with the average design patent costing around $2,000 compared to $20,000 for utility patents. As a result, companies have come to view design patents as a relatively inexpensive option for protecting their designs from wholesale copying.

The Changing Landscape of Design Patent Protections

While the USPTO may provide little resistance in granting design patents, this low bar for novelty inverts itself during litigation, where it has proven notoriously difficult to invalidate an opposing party’s design patent. Under the traditional Rosen-Durling test, a design patent can only be invalidated during litigation if the challenging party presents a first design that is “basically the same” as the patented design, and, further, provides a secondary design that, if necessary, fills in the differences between the first design and the patented design. 

But now, after nearly fifty years of case law built around this framework, the Federal Circuit has thrown out this test as “improperly rigid.” Earlier this year, the Court in LKQ Corporation v. General Motors concluded that the obviousness standard outlined in 35 U.S.C. §103 does not differentiate between utility and design patents. Therefore, design patents must be examined under the Graham factors––the standard test used to evaluate obviousness for utility patents. Under Graham, courts must now consider the following factors when evaluating obviousness: (1) the scope and content of prior designs, (2) the differences between the prior designs and the claimed design, (3) the level of skill required in creating the patented design, and (4) the motivation to combine the previous designs to create the same overall visual appearance. 

With this analytical change, many companies are now worried about the future value of design patents. Under Graham, courts may now apply broader criteria without first requiring a design to be “basically the same” as the patented one; this more-flexible standard could have two significant effects: (1) the USPTO may issue more obviousness rejections during the application process, and (2) previously-granted patents could be invalidated if re-examined during litigation. For businesses, this impact arguably undermines the perceived benefits of design patents since an increase in obviousness rejections is likely to balloon the costs of patent examination, while the increased risk of invalidation during litigation curtails patent strength. In fact, this risk of invalidation may give companies more leeway to create knock-off products, as enforcing these patents will become more laborious and costly if they are constantly challenged on obviousness grounds. 

Estimating the Full Impact

Ultimately, the full effect of the Federal Circuit’s LKQ decision will only become evident with time. While the Graham factors must now be applied when analyzing the novelty of design patents, courts can apply these factors in ways that either comport or greatly contrast with the previous standard under the Rosen-Durling test. One case to watch in determining the impact of LKQ is Columbia Sportswear v. Seirus. 

In this eight-year legal saga, Columbia sued their performance-clothing competitor Seirus for patent infringement over a wave-like pattern appearing on Seirus’s “Heatwave” products. While Seirus initially argued that Columbia’s ‘093 patent on a similar wave-like pattern should be invalidated, they were unable to prove that Columbia’s patent was obvious under the Rosen-Durling standard––but then, LKQ was decided. In the aftermath, Seirus immediately moved for relief, arguing that they should be able to dispute the validity of Columbia’s ‘093 patent under the less-rigid Graham factors. The District Court agreed with Seirus, acknowledging the “extraordinary circumstance[s].” Seirus is now expected to make invalidity arguments in the coming months.  

But, even after applying Graham to the prior art references shown below, it appears unlikely that the court will overturn its decision and invalidate Columbia’s patent for obviousness. Under Graham, we must first analyze the scope and content of the prior art. Here, each prior art reference includes alternating wave-like stripes of light and dark colors, thus rendering the uniformly-striped waves in Columbia’s design obvious. Next, under the second Graham factor, the relevant differences must be considered. While the “unwoven fabric for tires” reference includes shading between its wave-like patterns, this design fails to teach the wave-like gradient shown in Columbia’s patent, which moves sinusoidally across a multitude of wave-like stripes and provides a second, larger wave-like pattern. 

Under the third Graham factor, the design is evaluated from the perspective of a person of ordinary skill in the art, presumed to know all relevant prior art references. Although “unwoven fabric for tires” includes shading, there is no larger sinusoidal pattern formed across multiple wave-like stripes; therefore, knowledge of the prior art would not necessarily render Columbia’s design obvious. Finally, the fourth Graham factor is irrelevant as none of the cited references teach the larger sinusoidal pattern, thus no combination of the references would predict Columbia’s design. Ultimately, when the Graham factors are applied as they would be to a utility patent, Columbia’s patent is likely to be found valid, and, even in this close case, Graham will likely yield the same results as Rosen-Durling.

Predicting LKQ’s Effect on the Obviousness Inquiry This prediction for Columbia Sportswear is further bolstered by the USPTO’s recent decision in      Deckers Outdoor. Here, the court applied the Graham factors for the very first time, considering competing boot designs holistically. They concluded that ordinary observers would take notice of simple disparities in the height, proportions, and angles of various features on the boots, thus rendering Deckers’s design non-obvious. In this way, the court ultimately relied on the consumers’ gut reaction when evaluating differences between designs. Essentially, the court considered whether the difference was minor or whether it created a new overall impression for consumers. As demonstrated in Deckers, future applications of the Graham framework could evolve to focus on whether reasonable consumers can distinguish between designs when viewed holistically. As a result, the critical inquiry may return to whether a prior art reference is “basically the same” as the claimed design. If so, LKQ may have little practical impact on the outcome of obviousness challenges in design patent cases.

#patentlaw, #designpatent, #intellectualproperty

By: Jack Dorsey

The world is firmly in the age of drone technology, and the effects are increasingly being felt. From transforming warfare on the frontlines in Ukraine, revolutionizing medical aid logistics in African countries, postponing NFL games, impacting fire suppression operations in Los Angeles, or playing a role in the recent events in New Jersey and New York, the prevalence and usage of drone technology will only continue to increase. As of 2022, the commercial drone market is valued at $4.79 billion USD and is expected to grow 9.1% between 2023 and 2030, a trend largely driven by lower costs. E-commerce giants like Amazon and Temu both sell a variety of drones, the cheapest of which retail for well under $100. As technology advances and costs decrease, high-performance drones will be available to more people. 

Increased access to drone technology will likely result in cascading legal consequences that implicate concepts such as privacy, property rights, airspace regulations, criminal law, law enforcement, and broader national security. Currently, drones are subject to both Federal and State law. In 2016, the Federal Aviation Administration (FAA) promulgated regulations that created some federal framework around the use of commercial drones, i.e., drones used in commerce or for surveying. For drones used in this manner, drone pilots needed to pass a knowledge test, obtain an FAA Tracking Number, and register the drone with the FAA. Recreational drone pilots, on the other hand, were encouraged to take the Recreational Unmanned Aerial System test but were not required to do so. All drone operators are required to adhere to a maximum altitude limit of 400 feet. Moreover, states have also implemented various laws to regulate the usage of drones. In Washington for example, commercial drone operators are required to also register with the Washington State Department of Transportation. 

In 2024, the FAA began enforcing a regulation that mandates all drones operated or manufactured in the U.S. and weighing more than 0.55 pounds be outfitted with Remote ID. Remote ID acts as a digital emitter, which means that it transmits information such as the drone’s ID number, location, altitude, and speed, as well as information about the drone pilot. Further, remote ID applies to all drones regardless of whether they are flown for recreational or commercial purposes. Pilots who fail to comply with this rule may be subject to confiscation of their drone pilot license and may face up to $27,500 in penalties. 

 While Remote ID will help hold irresponsible drone operators accountable, there are several open questions. First, will the broader drone pilot community implement remote ID? Second, whether foreign manufactured drones above the 0.55 threshold will be grounded without the Remote ID feature? Finally, even with this remote ID technology, what enforcement body is keeping a record of the drones flight plan and activities while airborne? In addition to these questions, the fact remains that drones below the 0.55 pound threshold are not required to register with remote ID. Despite not having to register, Some of these smaller drones are capable of distances exceeding 13,000 feet and can still perform in ways that implicate the various legal issues previously discussed. 

Besides detecting drones or countering them with physical projectiles or objects, technology is still in its infancy when it comes to frequency jamming or hijacking countermeasures. Current hijacking and jamming technology relies on wide-band radio frequencies that emergency services and other communications devices also rely on. The effectiveness of deploying this technology in highly populated areas is currently not known, but would likely create problems for other technological devices that utilize these frequencies. 

Imagine a scenario where a malicious actor uses a drone to target and attack critical infrastructure. Tracking down such an individual becomes exceedingly difficult if the drone lacks a Remote ID. Moreover, it’s unlikely that the FAA would directly pursue the drone pilot; they would probably rely on the FBI or local law enforcement for assistance. The FAA has programs, such as the Law Enforcement Assistance Program (LEAP), to support state and local agencies, but several factors complicate the situation. These include compliance with Remote ID, the existence of smaller drones that are exempt from this requirement, and the limited effective countermeasures available. As a result, the response from local, state, and federal officials to a drone attack remains unclear.

To effectively hold drone operators accountable, it is essential to expand Remote ID regulations to include all drones, regardless of size. Ensuring that every drone, whether manufactured in the U.S. or abroad, is equipped with an active Remote ID emitter would create a clear pathway for identifying bad actors when necessary. Without such regulations, the future of drone security remains up in the air, leaving critical gaps in accountability, privacy, and public safety.

#Drones #FAA #WelcomeToTheDroneAge

By: Evan Stewart

Inheritance and Professional Sports

No one likes to think about how a family member’s assets will be handled after their death. Inheritance is a complicated, and often messy topic for families. But for the owners of multi-billion-dollar sports franchises, succession can be even more contentious, and likely to lead to fighting and litigation in the public eye.

In recent years, sports franchises like the Baltimore Orioles, Los Angeles Chargers, and Denver Broncos have all had public and heated litigation to make trust and estate determinations following their owner’s death. Sports franchises are ripe for trust and estate litigation because of their scarcity, and their value. There are 152 professional sports organizations in the five major American sports leagues(MLB, NFL, NBA, NHL, and MLS). Of those 152, nearly 100 have valuations in the billions, with the top 50 franchises in value having an average valuation of 5.7 billion. When an owner dies, it is expected that their heir will fight to gain control of their family’s most valuable asset.  

Background for San Diego Padres Inheritance Dispute

On January 6, 2025, the San Diego Padres became the latest sports franchise caught in the middle of a family’s inheritance dispute. Sheel Seidler, widow of former Padres chair and majority owner, Peter Seidler, sued Peter’s brothers Robert and Matthew Seidler, claiming that they were trying to “falsely claim themselves as Peter’s true heirs” to gain control of the team following Peter Seidler’s sudden passing in November 2023.

Peter Seidler was part of the ownership group that purchased the Padres in 2012. He became the majority owner and chair in 2020. Under Peter Seidler, the Padres ended a 14-year playoff drought, saw significant growth in attendance, and signed numerous big-name free agents. Peter Seidler was also a well-renowned philanthropist, raising millions of dollars for local cancer research and addressing homelessness in San Diego, making him a beloved figure among Padres fans. Following his passing, Robert and Matthew Seidler have managed Peter Seidler’s trust and estate. Noticeably absent from any management power is Peter’s widow, Sheel Seidler, who currently holds the largest share in the Padres (25%) and had been closely involved in daily operations and team management for the Padres during Peter’s lifetime.

Sheel Seidler’s Complaint

In her January 6th complaint, filed in Probate Court in Travis County, Texas, Sheel Seidler claimed that the two Seidler brothers breached their fiduciary duties of trust, and committed fraud, conversion, and egregious acts of self-dealing. Among the breaches that Sheel alleges, she alleges that Matthew and Robert have attempted to sell the trusts’ interests at below market value. A sale that she claims the brothers called off once other parties became aware of. She also alleged that the two brothers were preparing to potentially sell or relocate the franchise. Sheel also accused Robert’s wife Alecia of making “multiple racist, profane, and hateful communications” because of her Indian descent, which contributed to the Seidler family’s motivation to remove Sheel from involvement with the Padres. 

In addition, Sheel claims that during Peter’s time as the control person, she was very involved in the team’s operations. However, since his passing, she claims to have been ostracized from the team by Peter’s brothers, including not being allowed into the owner’s box at games.

Sheel Seidler is seeking to enjoin Matthew from acting on behalf of the Seidler trust, remove him as trustee, and void any appointments of a control person made by Matthew. Specifically, she is seeking to enjoin Matthew by naming John the team’s control person. A “control person” has the final say in all team operations, is tasked with ensuring compliance with all MLB rules and regulations, and has ultimate authority and responsibility for making team decisions. In support of her claim that she should be appointed control person for the Padres, Sheel attached a piece of paper in Peter’s handwriting listing Sheel as the first choice for the control person, followed by their children to her initial complaint. However, at this point, it is the only potential evidence that shows Sheel would have been the choice for the team’s control person.

Response from the Seidler Brothers

Matthew and Robert Seidler have not filed a response to Sheel Seidler’s complaint yet, but they are expected to do so in the upcoming weeks. However, on January 7, Matthew Seidler addressed Sheel’s allegations in a letter addressed to “Padres partners and Faithful fans,” where he explained that Peter Seidler’s plan was to name his siblings as the successor trustees of his trust. In the letter, Matthew Seidler called the suit “entirely without merit,” adding that “in 2020, in connection with Peter’s appointment as control person, Sheel agreed in a sworn document that she had no right to be or to designate the Control Person and that should not interfere with the designated Control Person.” Matthew Seidler also called the relocation claim “laughable,” and insisted that it was his goal to continue Peter Seidler’s legacy.

Uncertainty in the Future of the Seidler Litigation

Unfortunately for Padres fans, it is unlikely that this matter will be resolved quickly without a settlement. In 2022, a similar lawsuit was filed between two brothers who claimed to be the heir of former Orioles owner Peter Angelos, who became incapacitated in 2017 due to a heart condition. In this suit, John Angelos was sued by his brother Louis for allegedly conspiring with their mother to push him out of the family’s inheritance, which included ownership of the Baltimore Orioles. This suit, which was filed in June 2022, was settled outside of court in February 2023, and culminated with the sale of the team in March 2024, but impacted the Orioles franchise for nearly a decade.

Based on Sheel and Matthew Seidler’s comments, it does not seem likely that either side is willing to settle with an eventual goal of selling the team. With the Seidler brothers yet to file a response to Sheel’s complaint, and the conflicting evidence of who Peter Seidler intended to succeed him as the Padres’ control person, it is difficult to make a prognosis of how this litigation will end. 

This litigation will revolve nearly exclusively on witness testimony and hearsay regarding meetings and Peter Seidler’s true succession intentions, which is unlikely to lead to a quick resolution. The unfortunate reality is that this litigation may be a dark cloud over the Padres franchise for years to come, overshadowing the legacy that Peter Seidler left with the Padres and San Diego, alike. 

#WJLTA #trustandestates #majorleaguebaseball #sportslaw #padres