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

INTELLECTUAL PROPERTY
AND UX DESIGN
THE 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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02
-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

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 LAWYER
THIS IS NOT LEGAL ADVICE
THIS IS COMPLICATED STUFF
Have simplify without dumbing down

But 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
05
-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
06
-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
07
-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
Utility
Novel
Non-obvious
Enabling disclosure
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Article of Manufacture

Utility - must be useful

Novelty – New

Nonobvious - it can’t be an obvious variation of what was done before

Enabling Disclosure -- application must:

fully disclose invention (including “best mode” contemplated at time of ﬁling); and

allow 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-obvious
Illustration is the claim
20
Article of Manufacture (unlike a copyright) - can’t patent an icon on it’s own

Novelty - Ordinary observer standard

Non-Obviousness - Designer of ordinary skill who designs similar articles

No Utility!

Prior art can consist of published design patents, published utility applications or patents, or previously published images, videos, documents, etc.

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
24
-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
25
-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
29
-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
31
…if, in the eye of an ordinary observer, giving such
attention 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
31
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.”
33
-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)
34
-Article of manufacture - must describe/claim of icon on an article - such as a screen, even though you are not patenting the screen itself

MY FIRST PATENT APPLICATION
36
-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

37
-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

38
-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)
39
-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

BEVERAGE MAKER INTERFACE REDESIGN
41
-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
42
-We found some relatively sophisticated utility patent applications around interacting with a beverage maker, which gave us pause in our design

PATENT SEARCH
43
-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

FIVE DESIGN PATENTS GRANTED
45
-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
46
-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
48
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
49
-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
52
- 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…

35 UNITED STATES CODE § 289
55
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 point

This is what Samsung has asked the Supreme Court to review

Holistic 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
56
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
/252
This is a pretty big decision and it will have an impact on our industry and as UX practitioners

What the decision will be, and how signiﬁcant the impact remains to be seen

But 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 researchers

Samsungs 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

THANK YOU
@ROBTANNEN
UXPA2016.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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Intellectual Property and UX Design - The Preceding Year and the Next Decade