News & Analysis as of

Prior Art Design Patent

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

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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

ArentFox Schiff

Federal Circuit Sinks Appeal Over Design Patent Claiming Well-Known Pool Features

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The US Court of Appeals for the Federal Circuit recently affirmed a summary judgment of no design patent infringement in North Star Tech. Int’l Ltd. v. Latham Pool Products, Inc., ruling that the patented and accused pool...more

Patterson Belknap Webb & Tyler LLP

Judge Engelmayer Gets a Handle on “BlenderBottle” Patent Claims and Rejects Assertion of Indefiniteness

Judge Paul A. Engelmayer (S.D.N.Y.) recently construed claim terms at issue in a patent litigation between Plaintiffs Trove Brands, LLC, d/b/a The BlenderBottle Company, and Runway Blue, LLC (collectively, “Trove”) and...more

BakerHostetler

[Podcast] A New Test: Landmark Decision Overrules Framework for Design Patent Obviousness

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The legal landscape quaked, and clients and counsel continue to navigate the tremors. More than 40 years of precedent was upended in May 2024 when a federal circuit court struck down the Rosen-Durling test for assessing...more

Morgan Lewis

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

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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

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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

Bond Schoeneck & King PLLC

Trade Dress Registration – Practical Considerations for Product Manufacturers

Summary Trade dress is a powerful intellectual property (IP) tool that can be used to protect the distinctive non-functional “look and feel" of a product’s design, shape and/or 3D configuration.[1] Product manufacturers and...more

Quarles & Brady LLP

Sometimes Less is More: Patentability of “Simple” Designs

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When there are fewer design elements in a design claim or when the individual elements of the design seem commonplace in isolation, it can be easy to overlook the inventive effort that went into developing a design. Rather...more

Jones Day

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

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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

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

2024 Design Patents Year in Review: Analysis & Trends: District Court Design Patent Cases: A Busy Year of Case Filings

2024 was another busy year for district court decisions! There were multiple jury trials, case-dispositive design patent decisions, and claim construction decisions across a range of venues and at a range of case postures. We...more

Sheppard Mullin Richter & Hampton LLP

The Federal Circuit Affirms Deterrence Sanctions

The Federal Circuit affirmed a district court’s award of sanctions for bad faith against a plaintiff’s conduct based on the meritless nature of several lawsuits filed in incorrect venues....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

Venable LLP

Bad Faith Litigation Exposed: Federal Circuit Affirms Deterrence Sanctions in PS Products v. Panther Trading

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Wrongheaded patent litigation conduct has consequences. Following a recent decision from the Federal Circuit, PS Products Inc. (PSP) and its counsel will be paying over $50,000 in attorney fees and sanctions to Panther...more

Katten Muchin Rosenman LLP

Stating the Obvious - Katten Kattwalk | Issue 28

The Federal Circuit overturned its 42-year-old obviousness test for designs. Fashion companies, take note. The shape of a handbag, the red sole of a shoe: for fashion companies, design patents have long played a role in...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

McAfee & Taft

Old test becomes new standard for design patents

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In today’s competitive market, the visual appeal and unique ornamental design of a product can be as crucial to its success as its name or functionality. Protecting the distinctive look and feel of your company’s products can...more

Ladas & Parry LLP

Proposed Increases of United States Patent Fees

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On April 3, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of rulemaking setting out the fees that it proposes for the fiscal year starting on September 29, 2024. Although the proposed fees are...more

ArentFox Schiff

New Obviousness Standard for Design Patents Has No Impact on $18 Million Jury Verdict

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One month after the Federal Circuit altered the obviousness standard for design patents in a much-anticipated en banc decision in LKQ Corporation v. GM Global Technology Operations LLC, an Arizona federal judge in Cozy...more

Erise IP

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

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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

Sunstein LLP

Federal Circuit Upends Obviousness Test for Design Patents, Leaving Uncertainty and Potential Opportunity

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On May 21, 2024, the Federal Circuit upended decades of precedent regarding design patents in its decision LKQ Corporation v. GM Global Technology Operations LLC. Sitting en banc, a panel of Federal Circuit judges overturned...more

Haug Partners LLP

A New Era for Design Patent Claims: Federal Circuit Overrules Rosen-Durling Test in LKQ Corp. v. GM Glob. Tech Operations LLC

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In LKQ Corp. v. GM Global Tech Operations LLC, the United States Court of Appeals for the Federal Circuit, sitting en banc, overruled the Rosen-Durling test for assessing obviousness of design patents.The now-outdated...more

Jones Day

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

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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

Womble Bond Dickinson

Overhaul of the Rosen-Durling Test: A New Era for Design Patent Obviousness

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In the recent case of LKQ Corporation v. GM Global Technology Operations LLC, the en banc (for the first time in five years) Federal Circuit overruled the long-established Rosen-Durling test used for evaluating the...more

Knobbe Martens

Federal Circuit Review | May 2024

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Infringement Judgement is Only Final when there’s Nothing Left to Do but Execute - In Packet Intelligence LLC v. Netscout Systems, Inc., Appeal No. 22-2064, the Federal Circuit held that an infringement judgment is only...more

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