PublishedAugust 17, 2017

On Tacos

The taco.

Delicious Tacos

Whether you like ground beef with cheese and lettuce or chorizo with cilantro and onion, I’d be willing to bet that you probably like some kind of taco.  And (fortunately, or maybe unfortunately for our waistlines) no one owns a patent on the taco.

Now, taco plates?  That’s another story.


D574,187 is a design patent issued to one Hugh Jarratt.  Here’s what the patent claims (remember, it’s a design patent, so the real claims are the drawings, not text):

Figure from D574,187 Design Patent

Those ridges?  They hold your tacos vertically, instead of letting them flop open.  Design patents aren’t supposed to protect “functional” aspects of a design.  But in design patent law, as explained by Prof. Sarah Burstein (@design_law on Twitter), “functional” means “the only configuration that is fit for a particular purpose.”  If there’s another way of doing it, then it isn’t functional.  And there are plenty of alternative configurations for plates that hold tacos upright.  Just looking at design patents cited as prior art, I count at least five.  [1][2][3][4][5]

And if we don’t limit ourselves to design patents, we have other options.  For example, Arrow Home Products makes one that looks like this:

Arrow Home Products Taco Plate

Similar idea to the Jarratt design patent, but not the same thing, especially when you think about the other taco plate design patents as background.  

I picked Arrow because Jarratt sued them over this exact taco plate, an example of the “concept fallacy” in design patents.  At its core, the concept fallacy is believing that a design patent covers a general design principle (like “a taco plate with raised ridges to hold tacos”) rather than a specific design (like “an oval taco plate with four ridges of a certain configuration and a transverse ridge with a parabolic cross section”).  But, as that implies, they don’t—similarity of concept isn’t enough.  You need to be “deceived into believing that the accused product is the same as the patented design.”  

Jarratt and Arrow settled their lawsuit.  But last year, Jarratt sued again, this time suing CT Products and Amazon.  CT Products settled out of the case, leaving only Amazon.

Am I Selling Taco Plates Or Logistics?

Jarratt’s basic complaint is that Amazon is selling products that infringe his design patent.  Setting aside the merits of whether the products being sold infringe the patent (there are some meaningful differences between the product and the patent), there’s another issue.

Amazon isn’t the one selling these.  Here’s the offending listing from Jarratt’s complaint:

Screenshot From Complaint

It’s an Amazon webpage, sure, but if you look closely it says “Sold by CT DISCOUNT STORE and Fulfilled by Amazon.”  Amazon’s “Fulfilled by Amazon” service (and similar e-commerce or logistics facilities) provides an integrated network of support services for e-commerce.  That means that CT DISCOUNT STORE sells the product, and Amazon provides warehousing, shipping, and e-commerce services to CT DISCOUNT STORE.  Amazon charges a fee for these services based on the size of the item and the shipping type used (but not the item’s price).

What Amazon doesn’t do is sell the actual product.

Earlier this year, in the context of a similar situation involving Amazon, the Federal Circuit described sale in the context of the “passing of title from the seller to the buyer for a price.”  The seller has title, the buyer has money, and they exchange.  Parties might handle the money (perhaps a credit card company or payment processor) and might handle the product (a shipping service) but that doesn’t affect the exchange.  As the Federal Circuit recognized, “Amazon’s services made it easier for third parties to consummate a sale, [but] the third parties remained the sellers.”  While describing copyright, the Federal Circuit did directly relate the definition of sale for copyright and patent purposes.

Intermediary Liability and Patents

Amazon’s case highlights an issue we see in a number of other contexts.  Online intermediaries provide services, but they wind up getting sued for the actions of the people using their services, actions that they have don’t control and have no involvement in.

At the end of the day, Amazon doesn’t “make, use, offer to sell, or sell” these products and shouldn’t wind up being held liable for patent infringement.  But they’re going to have to spend money and time to get that decision.  Hopefully we’ll see a clear statement from the court in this case explaining that e-commerce companies like Amazon, eBay, and others aren’t “selling” or “offering to sell” products when they provide services to third party sellers.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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