A recent final determination in Investigation No. 337-TA-1400 issued by the US International Trade Commission (ITC) may have some clients saying, “I don’t always seek ITC enforcement. But when I do, I prefer to include a design patent.” GoPro, Inc. had alleged that Arashi Vision, Inc. d/b/a Insta360 (Insta 360) infringed claims of five different utility patents and one design patent.
The ITC found no violation for any of the utility patents, yet issued a limited exclusion order finding that Insta360 violated section 337 with respect to its infringement of the design patent. These images from the Initial Determination illustrate the visual comparison between the design patent (left) and accused products (right):
Source: US ITC Initial Determination by Administrative Law Judge Doris Johnson Hines
The ITC appeared to inexplicably omit claimed features (e.g., the side buttons) from their comparison of the cameras. It further found that Insta360’s redesigned cameras did not infringe GoPro’s design patent.
Without analyzing the outcome in this investigation, we identify a greater trend across the ITC over recent years. Based on data over the last fifteen years, the ITC appears to be more inclined to issue a remedial order in investigations where a design patent is included.
Although it can be challenging to interpret the conditional remedial orders associated with Final Determinations at the ITC with a general search, the data shows that investigations including a design patent are much more likely to result in a remedial order.
Source: K&L Gates
The apparent success of design patent investigations may simply be a function of the relative ease of comparing the images of the design patent to images of a potential infringing article compared to parsing the claim language of utility patents. While this should not be seen as a reflection on the importance of utility patents in your portfolio, it does underscore the importance of considering whether design patents can play a role in your portfolio and ITC practice. The data is clear, the inclusion of a design patent can make the investigation a little more…interesting.
