News & Analysis as of

Design Patent Patent Trial and Appeal Board Prior Art

Fitch, Even, Tabin & Flannery LLP

Priority Denied, Patent Derailed: When One Filing Cancels Out the Other

On April 22, 2025, the Federal Circuit issued a decision In re: Bonnie Iris McDonald Floyd that underscores a critical and often overlooked risk in design patent prosecution: relying on a utility patent application for...more

ArentFox Schiff

Designers Beware: Prior Utility Patent Lacking Written Support Can Anticipate Later-Filed Design Patents

ArentFox Schiff on

In its recent In re Floyd opinion, the US Court of Appeals for the Federal Circuit upheld a decision by Patent Trial and Appeal Board (PTAB) to reject a design applicant’s priority claim to an earlier utility filing for...more

Morgan Lewis

Priority Catch-22: Federal Circuit Chills Design Patent with Rejection of Priority Claim

Morgan Lewis on

The US Court of Appeals for the Federal Circuit recently issued a decision that highlights a risk in design patent prosecution—specifically, attempting to claim priority to a utility application. In re Floyd, the Federal...more

Womble Bond Dickinson

Design Patent Obviousness

Womble Bond Dickinson on

The landscape of design patent law has recently evolved with the introduction of a new standard for determining obviousness. For decades, the Rosen-Durling test was used to assess obviousness of design patents....more

Jones Day

PTAB Decides Concurrent IPR and PGR Petitions After Resolving Priority Date Dispute

Jones Day on

In anticipating a dispute over whether the America Invents Act would apply, Petitioner MPL Brands NV, Inc. (“MPL”) filed concurrent petitions for both inter partes review and post-grant review of U.S. Patent No. 11,932,441...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Reviewing 2024's Crucial Patent Law Developments

As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more

Akin Gump Strauss Hauer & Feld LLP

IPR “Booted” Where Images on Webpage Coupled with Evidence of Sales Deemed Insufficient to Establish Prior Art Status

The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the...more

Erise IP

Eye on IPRs, June 2024: What’s Next for the Design Patent Obviousness Test; Federal Circuit Ruling on Printed Matter

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Design Patent Obviousness Test Thrown Out - The U.S. Court of Appeals...more

Jones Day

LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

Jones Day on

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

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

Fenwick & West LLP on

On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more

King & Spalding

Federal Circuit Overrules Rosen-Durling Test For Design Patent Obviousness

King & Spalding on

The Federal Circuit has overruled the long-standing Rosen-Durling test used to evaluate obviousness of design patents. LKQ Corp. v. GM Global Tech. Op. LLC, No. 2021-2348 (Fed. Cir. May 21, 2024). The court, which...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

What’s in a Name? Why Reexamination Is Not a Re-Examination

Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 Design Patents Year in Review: Analysis & Trends: U.S. Court of Appeals for the Federal Circuit: New Chapters in Two Ongoing...

In 2023, the Court of Appeals for the Federal Circuit issued three opinions regarding U.S. design patents. The three 2023 opinions are Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., LKQ...more

Jones Day

En Banc Federal Circuit Questions Standard for Design Patent Obviousness

Jones Day on

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

Bradley Arant Boult Cummings LLP

Some Touch Up Needed: The Federal Circuit Partially Confirms the PTAB’s View of Analogous Art

In Corephotonics, Ltd. v. Apple Inc., the Federal Circuit partially signed off on Apple’s win before the Patent Trial and Appeal Board (PTAB) invalidating a number of patents owned by Corephotonics relating to dual-aperture...more

McDermott Will & Emery

Chilly Adventures: Design Patent Prior Art Comparison Applies to Article of Manufacture

McDermott Will & Emery on

Addressing a matter of first impression concerning the scope of prior art relevant to a design patent infringement analysis, the US Court of Appeals for the Federal Circuit concluded that “to qualify as comparison prior art,...more

Quarles & Brady LLP

Design Patents are Heating Up at the Federal Circuit, Again

Quarles & Brady LLP on

Last week, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the law on comparison prior art in design patent cases. In the decision, captioned Columbia Sportswear...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2023 #2

Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., Appeal Nos. 2021-2299, -2338 (Fed. Cir. Sept. 15, 2023) - In a decade-old case that has raised a number of issues relating to design patents...more

WilmerHale

Federal Circuit Patent Watch: Federal Circuit Grants En Banc Review of Design Patent Obviousness

WilmerHale on

Precedential Federal Circuit Opinions - MEDYTOX, INC. v. GALDERMA S.A. [OPINION] (2022-1165, 6/27/2023) (Dyk, Reyna, and Stark) - Reyna, J. The Court affirmed a decision by the PTAB in a post-grant review denying an...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2023 #2

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., Appeal No. 2021-1981 (Fed. Cir. May 9, 2023) In our Case of the Week, the Court of Appeals for the Federal Circuit considered the “analogous art” inquiry in...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2022 Design Patents Year in Review: Analysis and Trends: PTAB: Odds of Escaping Challenges Remain Steady for Design Patents,...

In 2022, the Patent Trial and Appeal Board (PTAB) did not issue any final written decisions involving design patents. However, it did issue three decisions granting review of challenged design patents and three decisions...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 Design Patents Year in Review: Analysis and Trends: US Court of Appeals for the Federal Circuit: Seismic Shifts in §102 and...

In 2021, the US Court of Appeals for the Federal Circuit issued four opinions regarding US design patents— two precedential opinions and two unprecedential opinions. Both precedential opinions, In re SurgiSil and Campbell...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 Design Patents Year in Review: Analysis and Trends: Patent Trial and Appeal Board: Design Patents Continue to Escape...

Continuing the trend that we analyzed in May 2020, petitions to the US Patent and Trademark Office Patent Trial and Appeals Board (PTAB) requesting inter partes review or post-grant review for design patents maintained an...more

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