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
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 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
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
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
The decision in HVLP02 LLC v. Oxygen Frog turned on whether or not a YouTube video could qualify as a "printed publication," and therefore constitute prior art for patent purposes. As courts tend to assign the term "printed...more
7/25/2018
/ Accessibility Rules ,
America Invents Act ,
Intellectual Property Protection ,
MPEP ,
Patent-Eligible Subject Matter ,
Patents ,
Printed Publications ,
Prior Art ,
Section 102 ,
USPTO ,
Video Recordings ,
YouTube
An expert asserting that a patent claim reciting different features than the prior art is nonetheless “equivalent” to the prior art must address and account for the recited limitations head-on, or otherwise lose persuasive...more
2/19/2018
/ Appeals ,
Claim Construction ,
Evidentiary Hearings ,
Expert Testimony ,
Obviousness ,
Patent Assertion Entities ,
Patent Trial and Appeal Board ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Software Patents
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