Intellectual Property and UX Design - The Preceding Year and the Next Decade

INTELLECTUAL PROPERTY AND UX DESIGNTHE PRECEDING 150 YEARS AND THE FUTURE

@ROBTANNEN

UXPA 2016

- Intro, UX and Industrial design & research, EY, Expert Design Witness Certification from IDSA, consulted on several technology patent applications and cases-Presenting on importance of IP in user experience design for several years; last year well received at UXPA-A little different than the program-Change to title (150 instead of one), UX from the 19th century?-Solo, not with Charles Mauro, had to be in court

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-How many were at last year’s presentation? - Completely different presentation-Recap: applying various intellectual property (IP) tools to the different products of a made-up company- The focus and approach of my discussion today is very different, and I’m going to cover a lot of ground but it ultimately comes down to a single question

http://uxpa2016.org/sessionsurvey?sessionid=252

BASICS OF PATENTS?WHAT IS THE VALUE OF DESIGN?

-We talk a lot about the value of design in a general sense - how it improves user’s lives or contributes to society-But I mean it in a literal sense - how do we put a business value on design, as well as a financial value-And I don’t mean that in a cynical way; I mean in a legal and economic system how do we want to value design - comes down to a holistic versus atomic interpretation of design-In order to address that question

1. Basics of UX Patents

2. A Personal Timeline of UX Patents

3. The Future of Design

4. Q&A

WHAT WE WILL COVER

-First I’ll start with a high level overview of UX patents-I’ll then take you through a whirlwind tour of the last 150 years of patents related to UX designs, and how it has overlapped with my personal experience in the field- We’ll discuss and forecast how an upcoming Supreme Court decision could affect the field of UX in a very significant way -This is literally changing day by day - I was working on this last night…-Finally we’ll have time fore questions, there were lots of those last year

BASICS OF PATENTS! I AM NOT A LAWYERTHIS IS NOT LEGAL ADVICETHIS IS COMPLICATED STUFF

Have simplify without dumbing downBut even legal experts struggle to keep this stuff straight

BASICS OF PATENTS1BASICS OF UX PATENTS1

-For the audience how many of you have a patent that is UX related? Use patents in your UX work?-Let me begin by saying that there’s no such things as “UX Patents” it’s a term of convenience, or at least a significant oversimplification


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WHAT PROTECTION IS AVAILABLE FOR UX?

Copyright Protection

Trademark Protection

Utility Patents

Design Patents

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-While I’m focusing on patents it’s important to keep in mind that there are other forms of intellectual property protection, I’ll cover those very briefly before we dive into patents


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COPYRIGHT

Protects original works of authorship fixed in a tangible medium of expression

Longer term (life + 70 years)

Registration not required, but beneficial

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-Everyone here has some form of copywriter work whether you know it or not-Protects an expression (not an idea) as it is fixed in its medium - book, recording, computer program-It can last 70 years + the life of the author. (Mickey Mouse 2023)-Copyright does not have to be registered, but registering it does confer additional rights, including access to the federal courts and money for infringement. -LAST WEEK - Google vs Oracle - Java code in Android; permission but not license


TRADEMARK / TRADE DRESS

Protects the total image of the product including color, size, texture, graphics, etc.

Could last forever

Must be both distinctive and non-functional

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-Trademark is about source identification for particular goods or services - think logo or packaging design-Meant to protect consumers from buying a product that is different from what they thought they were getting. -Trademarks can last forever

A patent is the right to exclude any one else from making, using, offering to sell, selling or importing the invention in the U.S. during the patent term.

WHAT IS A PATENT?

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-Two key points -Patent doesn’t give you permission to do anything, is essentially an impediment to others, rather than a “license” to you (nuclear bomb example)-It’s specific to a particular country or group of countries, the United States; you would need to get IP protection in other countries and markets (some reciprocity)

PATENTS

UTILITY

-Two main types of patents, start with utility which represents the vast majority of patents (90%+)

Utility patents protect functionality

-how something works in a very literal sense-for 20 years from date of filing

UTILITY PATENT

Requirements

UtilityNovelNon-obviousEnabling disclosure

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Article of ManufactureUtility - must be usefulNovelty – NewNonobvious - it can’t be an obvious variation of what was done beforeEnabling Disclosure -- application must:fully disclose invention (including “best mode” contemplated at time of filing); andallow a person having ordinary skill in the art to make and use the invention

Defined by seven digit number

UTILITY PATENT



-Pull to refresh patent-Meets requirements Utility, Novelty, Non-obviousness, Enabling disclosure


-Inventor vs Assignee; Twitter not enforcing this patent-Includes illustration, but only for explanatory purposes they are not trying to patent this particular design, and in fact there are multiple designs you could create to support pull to scroll


-all about the written claim-claims are usually written in a technical and not user-friendly way-questions about utility patents?

TYPES OF PATENTS

DESIGN

-Second type, and where we’ll put more focus, are design patents-Relatively small percentage, but fastest growing type

Design patents protect appearance

- for 15 years from date of filing


DESIGN PATENT

Requirements

Non-functional (ornamental)Novel Non-obviousIllustration is the claim

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Article of Manufacture (unlike a copyright) - can’t patent an icon on it’s ownNovelty - Ordinary observer standardNon-Obviousness - Designer of ordinary skill who designs similar articlesNo Utility!Prior art can consist of published design patents, published utility applications or patents, or previously published images, videos, documents, etc.

http://www.uxpa2016.org/survey/252

Visual ornamental characteristic of an article of manufacture

“D” precedes patent number

DESIGN PATENT



-Unlike the utility patent which is all about the written claims and has illustrations for explanatory purposes-A design patent is all about the illustration; the illustration is what is being patented


-This is a design patent for a particular screen-More specifically, for parts of a particular screen (dotted for solid)


-There is a claim, a single claim, that merely references the context of the provided illustrations - and article of manufacture-Also note in design patent claims that only solid lines are being claimed; dotted lines are for reference but are not included - example text-Static image, no animation


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DESIGN PATENT

Can protect design elements ranging from an icon to fonts to entire displays

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-but must be in the context of an article of manufacture



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DESIGN PATENT

Consider different design patents for GUIs that look different on different devices

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-Any questions about patents?


BASICS OF PATENTS2 A PERSONAL TIMELINE OF UX PATENTS

-Now I’m going to give a brief review of key events over the last 150 years, both generally and personally-The goal is to show where we’ve come from and to provide context for where we are going

1842

-Before I was born and before there was user interfaces but it’s important-Mattered for things like spoons and carpets-First design patent law to differentiate between utility and design patents

1871

-Last time a design patent case made it to the Supreme Court


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GORHAM V. WHITE

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-Involved patent infringement where the Gotham design, patented in 1861, was found to be copied by the White design in 1867-Compare potentially infringing product with that of patent drawing - not patented product-Big problem was how do you decide if they are similar enough - experts could always spot differences



ORDINARY OBSERVER TEST

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…if, in the eye of an ordinary observer, giving suchattention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an ordinary observer,inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.


1887

Significant change to design patent law


35 UNITED STATES CODE § 289

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Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

-Dobson Carpet case…-Made design patents unique in that the infringer’s penalty was all of their profits-For other forms of IP like utility patents and trademark, it’s about legal damages relative to what is being copied-Summarize three key points - design patents are different, ordinary observer, total profits -Keep this “total profits” idea in mind; it’s going to come back and be very important later on -Not much interesting happened then for about 100 years


1992-1996

-let’s jump ahead about 100 years-Another important change to design patent law


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DESIGN PATENTS FOR UX

The case of Ex parte Strijland (1992) established the protection of GUIs using design patents;

“Computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof.”

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-Year I graduated college-first case to allow patenting of GUI icons (although patent application was rejected for other seasons)-GUI design patent guidelines were formalized in 1996



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EX PARTE STRIJLAND (1992)

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-Article of manufacture - must describe/claim of icon on an article - such as a screen, even though you are not patenting the screen itself


2003-2006


MY FIRST PATENT APPLICATION

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-My first exposure to patents - consulting on a complex touchscreen order and communications systems for the floor of the NYSE called “Tradeworks”-These were for screens used on the trading floor, wound up getting very complex




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-As a result of the work a utility patent was submitted in 2006 relating the display of messages - not a design patent-To be honest I can’t fully explain it but it relates to how messages are displayed-This patent application took almost a decade - 2015 to become a patent




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-While it was a utility patent, it did include images of exceptionally for quality for reference -Not a design patent so image quality was not as essential



PROTECTING ANIMATED DESIGNS (2005)

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-Also around this time, in 2005, the USPTO added guidelines for a design patent for an animated interface-Essentially you provide a sequence of images as your claim. Nothing about the speed or animation stye, just the sequence and states (e.g. jumping vs gradually filling)-But you can see that patent law is at least trying to keep up with UX


2008


BEVERAGE MAKER INTERFACE REDESIGN

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-Working on redesigning the interface for this ubiquitous machine - and I don't even drink coffee-Was knowledgeable enough that I thought it would be valuable to do a patent search to see what competitive intellectual property was out there-When i started following patents as a way to keep up with trends and emerging designs



PATENT SEARCH

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-We found some relatively sophisticated utility patent applications around interacting with a beverage maker, which gave us pause in our design



PATENT SEARCH

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-For example broad claims around the use of icons and touchscreen for interacting with the beverage maker-Since they were only applications we didn't know if the patents would be granted, or narrowed, making it a tough judgement call on what we should or shouldn't do to avoid potential infringement-Fortunately the interface we were designing was pretty low-tech; no touchscreen, so ultimately we weren’t at risk for these particular patents, but it demonstrates the challenge of trying to design with awareness of competitive IP-Some companies discourage that designers look at patents and applications because of the risk of “knowingly infringing”; i feel the more you know the better


2011-2013


FIVE DESIGN PATENTS GRANTED

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-By the time 2011 came around there were five UX design patents granted where I was a co-inventor-Includes this medical device screen where I was actually the model for the graphics - you could say I am patented



UX DESIGN PATENTS ISSUED

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-And I wasn’t the only one getting a lot of design patents for user interfaces-You can see the exponential growth from 2005 of about 100/year to almost 1000 in 2013



PATENT WARS


-And with the rapid growth in UX patents came the rapid growth of lawsuits-Known as the patent wars (citation/link) - year?-Most notably Apple and Samsung



APPLE VS. SAMSUNG

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http://www.t3dhq.com/wp-content/uploads/2012/08/Samsung-pre-and-post-iPhone.gif

-in 2011 Apple sued Samsung for infringement on multiple grounds-We could spend hours talking about these case(s) there are multiple-But it largely comes down to infringement both hardware and software design



APPLE VS. SAMSUNG

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-In 2012 Apple won the case; and because of that 1889 law change, Apple was entitled to all of Samsung’s profits on the infringing products; not just the hypothetical amount attributable to the “design”


April 2011: Apple sues Samsung. Claims infringement of patents

July 2012: Apple v. Samsung jury first trial begins in California

Aug. 2012: Jury returns verdict. Apple is awarded $1.05 billion

Nov. 2013: Retrial due to jury error

APPLE/SAMSUNG TIMELINE - PART 1

-But that wasn’t the end, that was really only the beginning

2014-2016

-Fast forward to the last couple of years


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ONE DESIGN AND TWO UTILITY PATENTS

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- I had a couple of other UX patents granted, one a utility patent for an oven time, and another a design patent for an oven interface screen, which is depicted here- And of course the NYSE patent from 2006 was finally granted last year


April 2014: Second trial, Apple awarded $120 million

Dec. 2015: Samsung agrees to pay Apple $548 million for original

trial.

Feb 2016: $120 million appealed, “Slide to Unlock” patent invalidated.

March 2016: Supreme Court agrees to hear Samsung appeal related

to interpretation of patent law.

APPLE/SAMSUNG TIMELINE - PART 2

-At the same time additional Apple/Samsung cases and appeals continued-Notable this past Dec Samsung agreed to pay Apple $548 million-But then in February the “Slide to Unlock” utility patent - not the design patent, was invalidated due to prior art - meaning examples were found of similar enough interfaces in the public domain before the patent was filed, that took away the Novelty and Non-Obviousness of the patent-Most importantly perhaps Samsung requested the Supreme Court review the “total profits” aspect of design patent law, which takes us to…

THE FUTURE OF DESIGN3


35 UNITED STATES CODE § 289

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Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

Recall this key pointThis is what Samsung has asked the Supreme Court to reviewHolistic or part- Value of profit form the entire “article of manufacture”Profit from entire product or just due to parts that were infringed?What did they mean in 1887 - dictionary



SAMSUNG PETITIONS SUPREME COURT

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A patented design might be the essential feature of a spoon or rug. But the same is not true of smartphones, which contain countless other features that give them remarkable functionality wholly unrelated to their design. By combining a cellphone and a computer, a smartphone is a miniature internet browser, digital camera, video recorder, GPS navigator, music player, game station, word processor, movie player and much more.

-Samsung is challenging this 100+ year old law, supported by HP, Dell, Google, Facebook-Design is just a small part-Doesn’t apply to modern complex products like smartphones-Really multiple products and features (multiple “articles of manufacture”; design element not a primary part of product or decision-Law is being misapplied and there should be a new trial



DECISIONS

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This is a pretty big decision and it will have an impact on our industry and as UX practitionersWhat the decision will be, and how significant the impact remains to be seenBut less discuss two potential scenarios


Nothing changes

Validation of the value of design; greater emphasis on visual differentiation

Overvalues design patents over utility patents; inhibits technical innovation

Potential increase in design patent litigation

STATUTE IS AFFIRMED

-Law works; we have a major case every 100 years or so-Yes, in fact, Samsung has differentiated and focused on design-Cup holder law suits-Some companies are mistakenly asking for full profits for utility patent infringement, bad lawyers

Design patents become intrinsically less valuable

Increased cost and complexity to determining infringement and proportional value of design

Potential de-valuing of design; low cost of infringement

Influence on design towards an integrated “article of manufacture”

CHANGE TO LAW

How do you calculate portion - cost of production/materials or value to consumer in purchase process? Interesting situations for design researchersSamsungs experts posited that at most only 5% of profits were attributable to design

BASICS OF PATENTS?WHAT IS THE VALUE OF DESIGN?

-We will see when the Supreme Court reviews this fall

QUESTIONS & ANSWERS4

THANK YOU

@ROBTANNENUXPA2016.ORG/SESSIONSURVEY?SESSIONID=252

-will post information and design petition to @robtannen


Intellectual Property and UX Design - The Preceding Year and the Next Decade

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