Federal Circuit Patent Watch: For design patent infringement analysis, comparison prior art must be tied to same article of manufacture as claimed


Precedential and Key Federal Circuit Opinions

1.  NETFLIX, INC. v. DIVX, LLC [OPINION] (2022-1138, 9/11/2023) (Hughes, Stoll, and Stark)

Stoll, J. The Court vacated the Board’s finding that an asserted prior art reference fails to qualify as analogous art. The Board’s directive that petitioner more precisely articulate the relevant field of endeavor was unduly strict. Even where a petitioner does not explicitly define a field of endeavor, its briefing may nonetheless present an argument on that issue when taken as a whole.

2.  APPLE INC. v. COREPHOTONICS, LTD. [OPINION] (2022-1350, 9/11/2023) (Stoll, Linn, and Stark)

Stoll, J. The Court vacated a pair of Board decisions upholding the challenged patent claims. In the first proceeding, the Board construed the claim term a “fused image with a point of view (POV) of the Wide camera” required that the fused image must maintain both Wide perspective and Wide position POV. Examining the claim construction de novo, the Court found that the intrinsic evidence supports that the claim term requiring a fused image maintaining “a point of view of the Wide camera” requires only that the fused image maintain Wide perspective point of view or Wide position point of view, but does not require both. The use of the article “a” in the claims means “one or more.” Without indication in the claims, specification, or otherwise that the patentee meant to claim its invention more narrowly, the Court found that the patentee intentionally chose to claim only “a point of view of the Wide camera.”

In the second proceeding, the Board found that there was a failure to show a reasonable expectation of success in the proposed prior art combination because of typographical errors in an expert declaration that neither party asserted were material to the claimed invention. The Board failed to provide a reasoned explanation for why it found the errors meaningful. The Board’s determination that the typographical error in the expert declaration was essentially dispositive of the issues in the case does not comport with the notice requirements of the Administrative Procedure Act (APA). Petitioner had no reason to anticipate that the typographical error would be the basis for the Board’s decision, given that the parties did not brief, argue, or even suggest this error was dispositive or would impact the claimed parameters. Because the Board’s analysis was focused on this issue, it failed to thoroughly assess the critical issue outlined by the parties.


Prost, J. The Court vacated the district court’s non-infringement judgment. As an initial matter, the Court rejected that prior proceedings before this Court had preclusive effect. Though a party failed to challenge the district court’s scope-of-comparison-prior-art ruling in the prior proceeding on appeal, whether to excuse a forfeiture is generally within the Court’s discretion, and here, the circumstances counseled against letting forfeiture dictate what qualifies as comparison prior art. The current appeal would in any event require the Court to articulate the proper scope of comparison prior art for this first time, and thus the better course of action is to allow the parties and the district court to engage with potential comparison prior art afresh. Additionally, there was no forfeiture where a party failed to challenge the district court’s decision not to construe the claim, because the party had prevailed on infringement and thus had no reason to appeal the district court’s decision not to construe the claim. The Court further refused to apply judicial estoppel because there is no equity in letting a position that a party took while securing a (currently inapplicable) damages award impede its efforts to secure infringement liability—and thus damages—at all.

The Court then found that the district court erred by failing to instruct the jury as to the scope of the patent claim (design for a heat reflective material) and the proper scope of comparison prior art. The proper scope of comparison prior art that may be used in an infringement analysis was an issue of first impression for the Court. The Court held that: to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim. Doing so best accords with comparison prior art’s purpose. In an infringement analysis, that purpose is to help inform an ordinary observer’s comparison between the claimed and accused designs—designs that, necessarily, must be applied to the same article of manufacture. Prior-art designs will help in that comparison only to the extent that they too are applied to that article of manufacture. And requiring that such designs be applied to the article of manufacture identified in the claim conforms with many cases in which courts considered such designs—including the cases most instructive on the role of comparison prior art. Furthermore, using the same scope for anticipatory prior art and comparison prior art makes good practical sense because this standard is already in the system and is easy to articulate and provides clear boundaries. Given that the Court only now articulated the standard, the jury lacked the correct standard for determining whether an admitted reference qualified as comparison prior art.

The Court found that the district court did not need to specify in its jury instructions that consumer confusion as to source is irrelevant to design patent infringement, or that a jury need not find a likelihood of consumer confusion to find such infringement. In design patent infringement cases involving logos, though there is the potential for a jury to be led astray and mistakenly conflate the significance of a logo’s source-identifying function with whatever impact it might have on a comparison of the designs, district courts are in the best position to decide whether and when to provide clarification in the course of conducting a trial.

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