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
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
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
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
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
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
While design patents follow many of the same rules as utility patents, the application of those rules in determining design patent infringement can be less than straightforward. But a recent Initial Determination by ALJ...more
The PTAB’s recent decision instituting post-grant review of a design patent in Man Wah Holdings Ltd. v. Raffel provides interesting perspectives on how design patent invalidity theories work. This decision highlights the...more
On July 23, 2019, the U.S. Court of Appeals for the Federal Circuit released its decision affirming summary judgment that the asserted design patents were not invalid for non-ornamentality under 35 U.S.C. § 171, and rejecting...more
7/30/2019
/ Appeals ,
Auto Parts ,
Automotive Industry ,
Design Patent ,
Ford Motor ,
Functionality ,
Ornamental Design ,
Patent Exhaustion ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Prosecution History Estoppel ,
Summary Judgment
On October 23, 2018, the PTAB found unpatentable B/E Aerospace’s U.S. Design Patent No. D764,031 (“’031 patent”). C&D Zodiac, Inc. v. B/E Aerospace, Inc., PGR2017-00019, Paper 37 (PTAB Oct. 23, 2018). The ’031 patent...more
11/13/2018
/ America Invents Act ,
Design Patent ,
Final Written Decisions ,
On-Sale Bar ,
Patent Applications ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Priority Patent Claims ,
Section 102 ,
Section 112 ,
Utility Patents
This win is one of the most significant in U.S. history for a design patent case.
Vacuum and appliance manufacturer Dyson voluntarily dismissed its appeal to the U.S. Court of Appeals for the Federal Circuit on July 30,...more
Like utility patents, design patent validity can be challenged in inter partes review (“IPR”) proceedings. Nonetheless, the Patent Trial and Appeal Board (“PTAB” or the “Board”) tends to reach different results in design...more
U.S. patent laws allow for the disgorgement of the "total profits" earned by a design patent infringer deemed to have applied the "patented design" to "any article of manufacture." The disgorged profits historically were...more
6/28/2018
/ 35 U.S.C. § 284 ,
35 U.S.C. § 289 ,
Apple v Samsung ,
Article of Manufacture ,
Calculation of Damages ,
Component Parts Doctrine ,
Department of Justice (DOJ) ,
Design Patent ,
Patent Infringement ,
Patents ,
Remand ,
SCOTUS
On May 24, 2018, a jury in the U.S. District Court for the Northern District of California awarded Apple over $533 million in damages for Samsung's infringement of three Apple design patents covering portions of Apple's...more
5/30/2018
/ Apple ,
Apple v Samsung ,
Article of Manufacture ,
Damages ,
Design Patent ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Samsung ,
SCOTUS ,
Smartphones ,
Special Damages
On February 1, the PTAB held its first “Boardside Chat” of 2018, which featured three judges discussing appeals and AIA trial proceedings for design patents. Not only are such proceedings less common for design patents than...more
2/7/2018
/ America Invents Act ,
Appeals ,
Design Patent ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 101 ,
USPTO ,
Utility Patents
In the wake of the high-profile dispute in Apple v. Samsung, design patent procurement and enforcement activity has increased significantly. But practitioners may not appreciate that design patent validity can be attacked...more