In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was...more
Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more
6/20/2024
/ Design Patent ,
Examiners ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
Now a more flexible Graham v. John Deere analysis applies.
On May 21, 2024, the en banc Federal Circuit overruled the Rosen-Durling test for design patent obviousness, holding that Supreme Court law dictates "a more...more
The en banc Federal Circuit has overruled the Rosen-Durling test for design patent obviousness, holding that the Supreme Court’s KSR decision dictated “a more flexible approach . . . for determining non-obviousness.” LKQ v....more
Changes to design patent validity law may be coming thanks to LKQ v. GM, a case that we’ve been tracking since April 2021. On February 5, 2024, in a rare en banc hearing, the Court of Appeals for the Federal Circuit asked...more
2/13/2024
/ Corporate Counsel ,
Design Patent ,
En Banc Review ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
In February, the Federal Circuit declined to modify or overrule its long-standing test for obviousness in design patents, the Rosen-Durling test, despite arguments that the Supreme Court overruled it in KSR v. Teleflex. A...more
A recent post flagged LKQ v. GM as a potential watershed moment in design patent validity law, calling into question whether In re Rosen, long-standing obviousness precedent, comports with the Supreme Court’s decision in KSR....more
Big changes to design patent invalidity law may be coming. A pending IPR appeal challenges the Federal Circuit’s 40-year-old obviousness formula as inconsistent with the Supreme Court’s rejection of “a rigid rule that limits...more
After a final written decision issues, an IPR petitioner is statutorily estopped from going back to the district court and arguing that the same claims are “invalid on any ground that the petitioner raised or reasonably could...more
As with utility patents, a patentee can counter obviousness of a patented design by producing objective evidence that the design was non-obvious, like commercial success, copying, etc. But to be persuasive, a nexus must...more
For nearly 30 years, the inclusion of a trademark in the design of a defendant's product did not mean much in the design patent infringement analysis. That changed on August 6, 2021, in Columbia Sportswear North America, Inc....more
This is a follow up to our earlier post about the fallout from the Supreme Court’s June 21, 2021 decision in U.S. v. Arthrex, holding that PTAB APJs were unconstitutionally appointed because they exercised “principal...more
8/11/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
On June 21, 2021, the Supreme Court issued a decision in U.S. v. Arthrex, holding that PTAB APJs were unconstitutionally appointed because they exercised “principal officer” authority in their final written decisions,...more
7/20/2021
The United States Supreme Court has delivered its decision in U.S. v. Arthrex, which determined whether appointments of administrative patent judges to the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board...more
7/20/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
These days, we generally think about inter partes review as a first option to challenge patentability. Rightly so. But don’t forget about ex parte reexamination (“XPR”). Even in the IPR era, patent challengers are still...more
6/29/2021
/ Amazon Marketplace ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Takedown Notices
On April 15, 2021, the PTAB issued a Final Written Decision in the LKQ Corp. case finding a design patent claiming a vehicle fender panel unpatentable as obvious. IPR2020-00064, Paper No. 39 (Apr. 15, 2021). The obviousness...more
Deciding who invented patents can be “one of muddiest concepts in the muddy metaphysics of the patent law.” Mueller Brass Co. v. Reading Industries, Inc., 352 F. Supp. 1357, 1372 (E.D. Pa. 1972). But identifying who...more
The Patent Trial and Appeal Board recently designated as informative its decision instituting post-grant review and addressing the issues of design patent functionality in Sattler Tech Corp. v. Humancentric Ventures, LLC. ...more
On May 5, 2020 the Federal Circuit formally barred petitioners from seeking Arthrex remands. The Court issued a precedential order clarifying that only qualifying patent owners may seek the Arthrex remedy. Petitioners, unlike...more
Last October, the Federal Circuit reversed the PTAB’s decision that a challenged design patent was not obvious. Campbell Soup Co. v. Gamon Plus, Inc., 939 F.3d 1335 (Fed. Cir. 2019). We wrote about how the court applied a...more
On Monday, the Federal Circuit issued a per curiam order denying en banc rehearing that had been requested by all three of the parties to the Arthrex decision...more
Design patent obviousness requires a heavy threshold burden of proof. Challengers have to find a “primary reference,” i.e., prior art that has “basically the same” design characteristics as the claimed design. Below is an...more
The Federal Circuit affirmed dismissal of design patent infringement claims under an estoppel theory triggered by amendments made to meet patentability requirements in Curver Luxembourg, SARL v. Home Expressions Inc., No....more
9/18/2019
/ Article of Manufacture ,
Claim Limitations ,
Design Patent ,
Patent Examinations ,
Patent Litigation ,
Patent Prosecution ,
Patents ,
Popular ,
Prior Art ,
Prosecution History Estoppel ,
USPTO
Inter partes review (“IPR”) proceedings often arise in the context of high-stakes patent infringement litigation, and district courts frequently stay litigation pending parallel IPRs, which may fully resolve a...more
The most persuasive IPR petitions offer fresh unpatentability theories never considered before. But petitions that simply repackage old issues often don’t gain traction. So, when you’re citing prior art that was before the...more