Navigating the Landscape of Schedule A Design Patent Cases: A Closer Look

Design patent enforcement through Schedule A cases has been on the rise, with IP owners targeting online sellers for alleged infringement. These cases, filed under seal and listing defendants on a separate document, have found favor in prominent district courts like NDIL, SDNY, and SDFL. The use of Schedule A cases initially focused on trademark infringement but has expanded to include design patent infringement allegations since 2019.

A recent Harvard Law Review paper by Sarah Burstein sheds light on the trend, highlighting concerns about the misuse of anti-counterfeiting rhetoric in design patent cases. Burstein argues that such language can influence judicial decisions, even when no actual counterfeiting is involved. She also points out that many design patent infringement claims in Schedule A cases are weak or frivolous.

Burstein suggests measures like appointing special masters for infringement determinations and limiting the number of defendants in Schedule A cases to address these issues. She emphasizes the need for greater judicial scrutiny in design patent enforcement to ensure fair adjudication.

Gaston Kroub, an intellectual property litigation expert, echoes Burstein’s concerns and calls for a more balanced approach in design patent enforcement. He warns against the sensationalized use of counterfeiting accusations, urging IP owners to focus on legitimate claims rather than seeking quick wins through inflammatory language.

As the debate over design patent enforcement continues, stakeholders are urged to consider the long-term implications of their strategies. By avoiding hyperbolic language and promoting fair adjudication, the design patent landscape can benefit both IP owners and alleged infringers in the long run.