Last month the ITC issued a limited exclusion order in GoPro v. Insta360 — blocking importation of Insta360 camera products based on infringement of a single design patent, U.S. Patent No. D789,435.
11 claims from five utility patents were also asserted. None of them survived. 9 claims were found not infringed and the remaining 2 were invalidated. The design patent ultimately carried the entire case.
That result is worth paying attention to if you own — or are building — a design patent portfolio.
The design patent infringement finding is also notable for what it tells you about how the ordinary observer test is applied. The Commission affirmed the ALJ’s finding of infringement even though the accused Insta360 products differed visually from the claimed design in meaningful ways — including the absence of a button that appears in solid lines in the patent, and the presence of buttons where the patent claims a smooth surface. The comparisons below are drawn directly from the ALJ’s Initial Determination. Take a look and decide for yourself how you weigh the differences.
Figure 1: The D’435 patent drawing (left) compared to the Insta360 Ace, Ace Pro, and Ace Pro 2 — perspective view. Source: ALJ Initial Determination, Inv. No. 337-TA-1400.
Figure 8: Side view comparison. The patent drawing shows a square button at the lower side — absent in all three accused products. Source: ALJ Initial Determination, Inv. No. 337-TA-1400.
Whether or not you find the infringement analysis persuasive, the practical takeaway is straightforward: design patents are serious enforcement tools, the ITC is a serious venue for enforcing them, and even a single well-drafted design patent can produce results that a utility patent portfolio may not.
If you’re a brand owner investing in IP, that’s worth keeping in mind when you decide where to spend your prosecution budget. Questions about design patent enforcement? Contact Nowak IP Group.