Managing IP has published an article highlighting the addition of key former government officials to three top tier firms, including Finnegan, Maier & Maier, and O’Melveny.
To read the article, click here.
Among the bases for patent term adjustment in section 154(b) is “appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability” (clause (iii) of section 154(b)(1)(C)). Section 154(b)(1)(C) or the “C” provision also provides for delays due to derivation/interference proceedings or imposition of a secrecy order. The Federal Circuit recently issued two decisions on the application of the “successful” appellate review provision in section 154(b)(1)(C)(iii). The first is Chudik v. Hirshfeld, 987 F.3d 1033 (Fed. Cir. 2021), and the second is SawStop v. Vidal, 48 F.4th 1355 (Fed. Cir. 2022).
In Chudik, the applicant responded to a final rejection with a request for continued examination, and then several rounds of rejection, appeal, and reopening ensued, with the final reopening leading to an allowance of the application. The applicant felt that the examiner’s ultimate decision to allow the application after the appeal should have led to patent term adjustment as successful appellate review, despite the absence of a decision in the review by the Patent Trial and Appeal Board (Board) or a court. The Federal Circuit in Chudik, however, held that the words of section 154(b)(1)(C)(iii), “in their most natural meaning when applied to an examiner’s unpatentability ruling, require that the patent issue under a Board decision that reversed the examiner’s unpatentability ruling or under a court decision that reversed a Board unpatentability ruling in the matter.” 987 F.3d at 1039-40. Thus, since the Chudik appeal did not result in a decision by the Board or a court, the Chudik patent was not issued under a decision in the review reversing an adverse determination of patentability under the “C” provision.
Significant in Chudik is that the appeals and reopenings took place after the filing of a request for continued examination. Another basis for patent term adjustment is the failure to issue a patent within three years (section 154(b)(1)(B) or the “B” provision). This “B” provision, however, excludes time consumed by continued prosecution under section 132(b) (requests for continued examination) in determining the delay in issuing the patent under the three-year “B” provision (section 154(b)(1)(B)(i)). Absent the filing of a request for continued examination, the time consumed by the reopenings would have been considered in determining PTA under the three-year “B” provision. The filing of the request for continued examination, however, resulted in the time between the filing of the request for continued examination and the mailing of the notice of allowance not being considered under either the three-year “B” provision or the appellate review “C” provision.
The takeaway from Chudik is to be mindful of the effects that filing any request for continued examination will have on patent term adjustment under the three-year “B” provision. The Federal Circuit even felt the need to emphasize this point, stating—
The unavailability of B-delay for nearly two years (655 days) of delay in the PTO illustrates what applicants should understand when deciding whether to request a continued examination rather than take an immediate appeal. The potential benefit of immediate re-engagement with the examiner through such continued examination comes with a potential cost.
987 F.3d at 1041.
SawStop involved two patents. In the first SawStop patent, the appellate review resulted in a Board decision that the examiner’s rejection was inadequate, but that the claim was still unpatentable for reasons provided by the Board in a decision designated as containing a new ground of rejection. Further prosecution of the application included several amendments to the claim, including via a request for continued examination, before the application was ultimately issued. In the first patent, SawStop sought patent term adjustment based upon the Board not upholding the rejection as set forth by the examiner. The second SawStop patent involved prior art and provisional obviousness-type double patenting rejections of two claims. The Board upheld the rejections of the first claim but reversed the rejections of the second claim. SawStop commenced a civil action under section 145 (considered “appellate review” for purposes of section 154(b)(1)) and obtained a reversal of the prior art rejection of the first claim, but did not seek review of the provisional obviousness-type double patenting rejections. SawStop addressed the provisional obviousness-type double patenting remaining after the civil action by canceling the first claim (rather than filing a terminal disclaimer). In this second patent, SawStop sought patent term adjustment based upon reversal of the prior art rejection of the first claim in the civil action (the PTO accorded “C” provision patent term adjustment for the Board’s reversal of the rejections of the second claim). The Federal Circuit held that the plain language of “issued under a decision in the review” in section 154(b)(1)(C)(iii) “means that at least one claim must ‘issue[] under’ the mandate of the appellate decision [, which at] a minimum, . . . means that at least one claim that ‘issued’ must have been analyzed by the Board or . . . Court that issued the ‘decision in the review” and that this “statutory requirement is not met if the claim that ultimately issues differs substantively from the claim under review.” 48 F.4th at 1362. The claim in the first SawStop patent differed substantively from the claim under review by the Board (due to the subsequent amendment) and the claim in the second SawStop patent was not under review in the civil action (the claim under review was ultimately canceled). Thus, neither SawStop patent was issued under a decision in the review reversing an adverse determination of patentability under the “C” provision.
SawStop also could not take advantage of the three-year “B” provision for the delays due to this appellate review. In addition to the exclusion for time consumed by requests for continued examination, the “B” provision has an exclusion with respect to the events covered in the “C” provision, in that time consumed by appellate review (regardless of outcome), as well as time consumed by derivation/interference proceedings or imposition of a secrecy order, is not included in determining the delay in issuing the patent under the three-year “B” provision (section 154(b)(1)(B)(ii)).
One takeaway from SawStop is that it may not be enough for the Board or court decision to reverse all of the rejections of at least one claim for the appellate review to be considered “successful” for purposes of “C” patent term adjustment. Rather, under SawStop, the “C” appellate review provision requires that the claims, or at least one of the claims on appeal, be patentable such that there is no need for any substantive amendment subsequent to the Board or court decision. Thus, applicants should ensure that at least one of the claims on appeal is patentable without substantive amendment before any appeal to the Board. Another takeaway from SawStop is that applicants need to consider the possible patent term adjustment consequences before deciding to defer addressing double patenting rejections (whether provisional or not) until after the resolution of other patentability issues.
Taking Chudik and SawStop together, where patent term is important and the need for an appeal is contemplated, applicants need to prosecute the application with an eye to ensuring that claims are patentable – without the need for further substantive prosecution – before any final rejection is issued in the application. This should limit the need for any request for continued examination (RCE) before (or after) appeal, as well as the need to substantively amend the claims following a “successful” appeal to the Board or courts.
Maier & Maier PLLC is proud to announce its newest addition to the firm, Robert Bahr. Mr. Bahr joins Stephen Kunin as the second Maier & Maier Partner to have previously held the prestigious position of Deputy Commissioner for Patent Examination Policy at the United States Patent and Trademark Office(USPTO).
Mr. Bahr enjoyed a long and distinguished career at the USPTO having been intimately involved in nearly all patent-related rule-making at the USPTO since 1995. Mr. Bahr brings with him an expertise on USPTO patent policy, practice, and procedure that makes him a highly sought consultant and expert witness on such matters.
Maier & Maier is excited for a bright future with the addition of Mr. Bahr to our team. To inquire about Mr. Bahr’s services, please reach out to us at info@maierandmaier.com or 703-740-8322 for a consultation.
Maier & Maier partner, Stephen Kunin, was featured in IPWatchdog.com’s post highlighting New Year wishes from top IP practitioners. Mr. Kunin’s New Year’s wish stated:
“I would be pleasantly surprised and thrilled if Congress can resolve the patent subject matter eligibility problems that have been created by the Supreme Court and Federal Circuit. At this point I don’t see a solution coming from the federal courts or the USPTO. I hope that Senators Tillis and Coons will be able to overcome the roadblocks that are hampering a legislative solution that provides clarity in the law and promotes innovation.”
A majority of the New Year wishes focused on restoring strength to the US patent system and bringing clarity to the patent subject matter eligibility quagmire created by the courts.
We at Maier & Maier wish you a Happy New Year and we will keep you updated on key developments in US patent law throughout 2024!
In 2021, VLSI brought a patent infringement case against Intel seeking $3 billion in damages in the Western District of Texas. A jury decision found that Intel had infringed 2 of VLSI’s patents and awarded VLSI a $2.18 billion dollar settlement for said infringement.
The 2 patents at issue were US Patent No. 7,523,373 “Minimum Memory Operating Voltage Technique” and US Patent No. 7,725,759 “System and Method of Managing Clock Speed in an Electronic Device”. Intel’s accused products included various Haswell and Broadwell Microprocessors. The jury found that Intel infringed the ‘373 patent on the basis of literal infringement and infringed the ‘759 patent but only under the doctrine of equivalents.
Generally speaking, the doctrine of equivalents provides a limited exception to the principle that claim meaning defines the scope of rights granted by a patent, the inquiry required by the doctrine is “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?” (see MPEP 2186). However, courts have often emphasized “that the doctrine of equivalents is the exception, however, not the rule,” Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320.
Intel appealed the decision to the U.S. Court of Appeals for the Federal Circuit, arguing that Intel did not infringe either of the patents, and specifically with regards to the ‘759 patent, that VLSI improperly invoked the doctrine of equivalents as (a) they were barred by prosecution history estoppel from invoking the doctrine of equivalents, and (b) VLSI’s evidence of equivalents was legally insufficient for a showing of infringement. Additionally, Intel argued that even if they had infringed the patents, the damages awarded with respect to the ‘373 patent were improper.
In a precedential decision released December 4, 2023, the Federal Circuit partially agreed with Intel’s position and reversed the earlier jury decision in part and affirmed in part. First on the ‘373 patent, while the court upheld the finding of infringement on the ‘373 patent, the court found Intel’s arguments with respect to damages to be persuasive. Therefore, while the infringement finding will be upheld, the case will be remanded for another hearing exclusively on damages.
On the ‘759 patent the court disagreed with Intel’s argument that VLSI was barred from bringing up doctrine of equivalents due to prosecution history estoppel but agreed that the evidence of equivalence VLSI provided was legally insufficient to form a verdict of infringement. Specifically, the ‘759 patent claim required “a first master device coupled to the bus, the first master device configured to provide a request to change a clock frequency of a high-speed clock in response to a predefined change in performance of the first master device”. Intel however showed that for their devices the equivalent cores did not request to change frequency based on changes the cores identified in their own performance, because only the software running on the (receiving) power control unit, based on observations of system conditions, called for a frequency change.
VLSI’s argument under the doctrine of equivalents attempted to accommodate this discrepancy by stating that Intel’s combination of (a) the core and (b) the software module on the power control unit that actually called for the frequency change, were equivalent to the first master device required by the claims. In order for this argument to meet the burden required by the doctrine, the court stated VLSI’s testimony needed to show “that the core and certain code, which resides on the power control unit, together perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed ‘first master device”.
VLSI’s testimony “contain[ed] no meaningful explanation of why the way in which the request is made is substantially the same as what the claim prescribes. The question [was] not whether, in a schematic drawing used to illustrate functions, an engineer could ‘draw[] . . . [a] line’ in different places. The question is about actual functionality-location differences. It is not enough, moreover, to say that the different functionality location placements were a ‘design choice.” Therefore, VLSI’s testimony was legally insufficient to support a showing of infringement under the doctrine of equivalents.
The court’s holding here may have significant impact on the use of doctrine of equivalents in patent infringement litigation going forward, as the court increasingly emphasizes that the doctrine is a narrow doctrine, only to be applied in “exceptional” circumstances.
On November 16, 2023, the USPTO published a new final rule establishing the creation of a separate design patent bar. The final rule follows up on a notice of proposed rulemaking first published in May 2023 where the separate design patent bar was first contemplated. Currently there is only one patent bar which oversees everyone who practices in patent matters before the USPTO, regardless of whether they practice in design patents, utility patents, plant patents, or a combination thereof.
Traditionally, individuals seeking registration to practice in patent matters before the USPTO, including in utility, plant, and design patents, must be admitted to the patent bar. Eligibility for admission required an accredited college or university degree in limited technical subject areas (or an equivalent). These subjects are strictly limited to certain science and engineering degrees, such as biology, biochemistry, biomedical engineering, chemical engineering, computer engineering, computer science, electrical engineering, molecular biology, and other such degrees.2 This requirement applied regardless of the type of patent application the prospective practitioner was seeking to prosecute.
The USPTO points to an increasing number of design patent applications as the reason why they are implementing this new license. According to Kathi Vidal, Director of the USPTO, “Year over year we continue to receive more design patent applications, illustrating the importance of design protection to industry and our economy”. Vidal further stated, “Expanding the admission criteria of the patent bar encourages broader participation and keeps up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO.”
The new design patent bar would allow for applicants with a bachelor’s, master’s, or doctorate degree in industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, art teacher education, or an equivalent to take a modified patent bar exam to practice exclusively with regards to design patent cases. Design practitioners registered under the separate design bar will be required to place the word “design” (in any format) adjacent to their handwritten signature as well as adjacent to the last forward slash of their S-signature in order to indicate their design patent practitioner status.
The new rule will have no direct impact on patent practitioners already licensed to practice before the USPTO. Additionally, the existing patent bar exam remains unchanged, and applicants passing that exam will still be able to practice on all patent matters, including design patents. Professional and knowledgeable patent counsel that can navigate the different types of patent applications and practices are more important than ever. Maier & Maier has practitioners knowledgeable in all forms of patent practice, including attorneys with years of design patent experience.
In order to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022 the USPTO announced on December 1, 2023, a new Semiconductor Technology Pilot Program for expediting the examination of patent applications for innovations that “increase semiconductor device production, reduce semiconductor manufacturing costs, and strengthen the semiconductor supply chain.” The CHIPS Act provided $280 billion in federal funding to encourage domestic production of semiconductor patents in the US, as well as to fund research and development projects.
Under the Semiconductor Technology Pilot Program qualifying patent applications will be advanced out of turn for examination until a first Office action is issued, which can greatly reduce the time spent waiting until examination of the patent begins. In order to enter the program a petition to make special must be filed, though no petition fee is required for qualifying applications, and the applicant is not required to satisfy the normal requirements of the accelerated examination program or the prioritized examination program. This program is similar to other recently implemented technology pilot programs, for example the Climate Change Mitigation Pilot Program, which went into effect in mid-2022.
To be eligible an application must be (a) a non-continuing original utility nonprovisional applications or (b) Original utility nonprovisional applications that claim the benefit of the filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) of only one prior application that is either a nonprovisional application or an international application designating the United States. The pilot program is accepting petitions until December 2, 2024, or until a total of 1,000 applications have been granted special status under the program, whichever happens first.
This pilot program is exemplary of the USPTO’s push toward using programs to encourage specific kinds of innovation and patent applications. Professional and knowledgeable patent counsel who can help navigate these programs and advise you as to what options there are to take advantage of in your particular situation are more important than ever to help clients navigate the ever changing programs of the USPTO.
Ironburg Inventions LTD. v. Valve Corp., 21-2295 (Fed. Cir. 2023)
This case presented the Court of Appeals for the Federal Circuit with an opportunity to clarify the standards for determining estoppel of invalidity grounds in inter partes review (IPR) pursuant to 35 U.S.C. § 315(e)(2).
Ironburg initially sued Valve in 2015 for infringement of their U.S. Patent 8,641,525 (the ‘525 patent) which describes a handheld video game controller with the particular innovation of back control buttons. Valve’s “Steam Controller” included similar back buttons. The trial took place in 2021 over Zoom with the jury returning a verdict of willful infringement by Valve and awarding over $4 million in damages to Ironburg. Both parties appealed.
Valve raised on appeal the arguments that: first, the claims of the ‘525 patent are invalid as indefinite; second, that Valve is entitled to judgment as a matter of law because trial record contained insufficient evidence to find infringement, or alternately that Valve is entitled to a new trial because the trial court erroneously allowed a co-inventor to provide testimony wile Valve’s genera counsel’s testimony was excluded; third, the district court erred in denying Valve’s motion for judgment as a matter of law on the issue of willfulness, or alternatively for a new trial on willfulness; and fourth, Valve should not have been estopped from asserting prior art grounds against the ‘525 patent. Ironburg’s cross-appeal for enhanced damages was dismissed as the district court was within its discretion to decline a grant of enhanced damages.
The appeals court dismissed Valve’s first arguments for indefinite claims. The terms describing the controller back buttons as “elongate member[s]” “substantially the full distance between the top and bottom edge” were found clearly, to a person of ordinary skill in the art, to be descriptive of long buttons spanning the length of the back of the controller which are accessible to the users third, fourth, and fifth fingers.
Judge Clevenger’s dissenting opinion on this issue contends that the “extends substantially the full distance between the top edge and bottom edge” language is indefinite because it gives a person of ordinary skill in the art no certain boundaries for starting and ending such a measurement. He finds that the district court merely “held ipse dixit that Valve did not carry its burden” for proving that this language is indefinite without properly addressing Valve’s measurement argument.
Valve’s appeal for judgment as a matter of law was dismissed by the appeals court based on finding that the jury was provided with substantial enough evidence to reach their conclusion. A significant factor in this finding was the fact that each juror had an actual Steam Controller sent to their homes for hands-on examination. The alternate appeal for new trial was also dismissed because the district court was found to have acted within its discretion in excluding Valve’s proffered testimony.
The appeals court did find that the district court erred as to Valve’s third issue on appeal regarding willfulness, however the error was harmless and thus the denial of Valves motions was upheld.
Valve’s fourth issue on appeal resulted in a significant clarification to the standards for Non-Petitioned Grounds estoppel in IPR review. Valve presented four grounds for invalidity, two Non-Instituted and two Non-Petitioned. The appeals court found that the district court was correct in estopping the two Non-Instituted Grounds because they were included in Valve’s initial IPR petition but not instituted by the Patent and Trademark Office. Valve chose not to seek remand for this decision and therefore forfeited their claim against estoppel.
In contrast, estoppel of the Non-Petitioned Grounds was vacated and remanded. The “standards by which a determination is to be made as to what invalidity grounds not presented in a petition are estopped” had not yet been addressed by the appeals court. Thus, the district court was left to look to other district court rulings, and erroneously placed the burden of proof on Valve for determining whether “a skilled searcher conducting a diligent search reasonably could have been expected to discover” the grounds in question. The appeals court held instead that “the burden of proving, by preponderance of the evidence, that a skilled searcher exercising reasonable diligence would have identified an invalidity ground rests on the patent holder, as the party asserting and seeking to benefit from affirmative defense of IPR estoppel.”
The court’s holding on Valve’s fourth issue on appeal will have significant impact on litigation concerning IPR estoppel moving forward, as patent owners have now been strapped with a new burden of proof in defenses against invalidity.
Earlier this year, in an opinion by Judge Lourie the Court of Appeals for the Federal Circuit overturned a district court decision finding that David Howard, a representative of HIP, should be added as a joint inventor on Hormel’s U.S. Patent 9,980,498 (the ‘498 patent). The relevant independent claims, 1 and 5, describe methods of making precooked bacon and meat pieces (respectively) using hybrid cooking systems.
Hormel’s relationship with HIP began in 2007 when they entered into a joint agreement to develop an oven to be used for a two-step cooking process. During the first three months of this process Howard disclosed an infrared preheating concept which became the core issue on appeal. Hormel later moved testing to its own research facility and finalized their process, filing the ‘498 patent thereafter.
HIP suit against Hormel alleged that Howard was either the sole or joint inventor. The district court found him to be a joint inventor based on his contribution of the infrared oven preheating concept which appears in independent claim 5. Hormel raised two issues on appeal, only one of which was necessary for reaching the judgment.
“To qualify as a joint inventor, a person must make a significant contribution to the invention as claimed” based on the Pannu three part test: (1) contribution in some significant manner to the conception of the invention; (2) contribution to the claimed invention that is not insignificant in quality when measured against the dimension of the full invention; and (3) did more than merely explain to the actual inventors some well-known concepts and/or the current state of the art. All three Pannu factors must be met for one to be a joint inventor.
The Court reached its decision based solely on the insignificance of Howard’s contribution in light of the invention in its entirety, negating the second Pannu factor. First, Howard’s infrared preheating contribution is mentioned only once in one of the claims, claim 5, as one of three possible alternative methods. In contrast, the use of microwave ovens as developed by Hormel is featured repeatedly thought the patent. Further, the examples and figures not once describe or depict the use of an infrared oven, again focusing on microwave ovens.
In summary, HIP’s favorable district court ruling that Howard was to be added as joint inventor of the ‘498 patent was overturned based on the overwhelming insignificance of his infrared oven preheating contribution in comparison to the overall invention as described in the patent. Inventors should be on notice that to secure their inclusion as joint inventors their contributions must appear frequently or prominently in both the figures and text of a patent.
On May 4th, 2023, the United States Patent and Trademark Office (USPTO) hosted its annual Design Day event. As part of the event, speakers outlined design patent practice as well as discussed key developments in design patent law from 2022.
Karen Young, Director of Technology Center 2900 at the USPTO provided an update on the state of the Design Patent Technology Center. In recent years, design patents have continued to grow in popularity. In FY2021, the number of design patents filed increased by 17.6% to a total of 54,201 applications, a new record for the USPTO. FY2022 did not bring with it a regression to the mean, as the number of filings decreased by less than 1%, still north of 54,000 applications. Of these filings, the top three classes for design patents were D6, D12, and D14 (Furnishings, Transportation and Equipment respectively).
The average time before first action after filing was 17 months, with an average total pendency of 21.3 months. The number of design patents issued in FY2022 decreased slightly from an all time high of over 35,000 in 2020, but remained strong. As anticipated, Hague applications have increased however with China joining, up from 2,248 to 2,677 applications.
Later in the day, several significant decisions from the Federal Circuit, the District Courts, and the Patent Trial and Appeal Board were discussed. We highlight those cases here:
LKQ Corporation v. GM Global Technology Operations
In January of this year, a panel court of the U.S. Court of Appeals for the Federal Circuit ruled on two cases brought against GM by alternative car parts manufacturer LKQ Corp who presented a novel argument that the longstanding tests for obviousness of design patents were implicitly overruled by the Supreme Court over fifteen years ago. LKQ Corporation v. GM Global Technology Operations, Case No. 21-2348 (per curiam) (Lourie, J., concurring) (Stark, J., concurring) (hereinafter the “fender” case); LKQ Corporation v. GM Global Technology Operations, Case No. 22-1253 (per curiam) (Lourie, J., concurring) (Stark, J., concurring) (hereinafter the “skid bar” case).
After failure to renegotiate a licensing agreement for several GM auto part design patents to LKQ, GM notified LKQ of pending infringement. In order to continue manufacturing and selling these parts without potential liability, LKQ filed for post-grant review to challenge the validity of GM’s U.S. Patent D797,625 in the “fender” case and GM’s U.S. Patent D855,508 in the “skid bar” case.
The USPTO Patent Trial and Appeal Board found in both cases that LKQ failed to show anticipation or obviousness where the ordinary observer includes retail and commercial purchasers of replacement parts. LKQ’s appeal to the Federal Circuit presented two arguments. First, that the Board erred in their selection of the ordinary observer by excluding purchasers of whole cars for which the patented parts are used in manufacturing. This alleged error would then invalidate the Board’s analysis of anticipation. Second, LKQ argues that the longstanding In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) and Durling v. Spectrum Furniture Co., Inc., 101 F.3s 100 (Fed. Cir. 1996) combined test for obviousness was implicitly overruled by the Supreme Court in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
In both cases, the Appeals Court panel dismissed LKQ’s ordinary observer and anticipation argument. Federal Circuit precedent has repeatedly recognized that the ordinary observer may include the buyer of single component parts of a later-assembled product and is not restricted to solely the buyer of that later-assembled product.
The Court in its majority opinion, and Judge Lourie’s concurrence, refused to overrule Rosen and Durling based on KSR, but note a key caveat to their authority. In KSR the Supreme Court rejected “rigid mandatory formula[s]” as limits on obviousness for utility patents, instead adopting a flexible approach. The Court provided several reasons for rejecting LKQ’s argument that KSR implicitly applies to design patent obviousness and therefore invalidates the allegedly too rigid Rosen and Durling test. First, the Rosen and Durling test and design patents in general are not mentioned whatsoever in KSR. Further, KSR was decided over fifteen years ago and has never been applied to design patents. Additionally, Judge Lourie’s concurrence points to the different considerations applied in analysis of design and utility patent obviousness: generally objective properties are considered for utility patents while generally subjective properties are considered for design patents. KSR does not address any subjective obviousness considerations and therefore should not be applied to design patents.
Although the majority and concurring opinions present a strong position against application of KSR to design patents, the Court acknowledged that as a panel they lack authority to overrule existing precedent without a clear directive from the Supreme Court. LKQ’s novel argument may have failed on appeal but there remains a possibility that KSR’s rejection of rigidity will apply to design patents in the future by overruling Rosen and Durling.
Wepay Global Payments LLC Cases
Wepay Global Payments LLC v. PNC Bank N.A. No. 2:22-CV-00592-MJH(W.D. Pa. June 1, 2022)
Synopsis:
Wepay brought suit against PNC bank, claiming they were infringing on their patent on a graphical user interface consisting of three squares and a depicted price of $0.00.
Holding:
“[A] side-by-side comparison of WPG’sAsserted Design and PNC’s Accused Design demonstrates that they are ‘sufficiently distinct’ and ‘plainly dissimilar’ such that no reasonable factfinder could find infringement. Any similarity between the two designs is limited to basic geometric shapes, but with notable differences in shape size and spacing such that no ordinary observer would mistake the Accused Design with the Asserted Design or vice versa.”
Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. Wepay Global Payments LLC (PTAB February 9, 2023)
Synopsis:
Both Early Warning Systems (EWS) and Samsung Electronics (Samsung) requested review of the Wepay ‘702 patent mentioned above. In response, Wepay filed statutory disclaimers to narrow the scope of their ‘702 patent.
Holding:
Wepay, by disclaiming all figures and embodiments described in the ’702 patent, disclaimed the entire scope of the sole design claim at issue. While statutory disclaimers may help narrow a claim that may be invalid, they may also lead to adverse judgments before the PTAB, who may even issue a Final Written Decision finding the challenged claim unpatentable.
ABC Corp. v Partnership and Unincorporated Associations, 52 F.4th934 (Fed. Cir. 2022)
Synopsis:
ABC Corp. brought suit claiming infringement of their hoverboard design patents. Their expert report claimed that the prior art was vastly different and thus the patent enjoys a very broad scope. The district court agreed and issued a temporary restraining order (TRO) followed by a preliminary injunction. The decision was appealed to the Federal Circuit.
Holding:
At appeal, the CAFC found the district court erred in multiple aspects. 1) The district court applied the wrong legal standard 2) The district court did not conduct ordinary observer analysis through the lens of the prior art. 3) the court failed to apply the ordinary observer test on a product-by-product basis, considering significant differences in the accused products themselves. 4) The language of the injunction itself was overbroad. It needed to be limited to products that were actually found to infringe.
Think Green Ltd. V Medela AG, No. 21 C 5445 (N.D. Ill. Oct. 7, 2022)
Synopsis:
Think Green Ltd. filed suit claiming infringement by Medela AG for its silicone breast milk collector. The figures contained in Think Green’s patent were computer-generated images instead of the usual line drawings or photographs. With drawings, an inventor intending not to claim any particular material type would leave the drawings free of anything but contour lines, thereby claiming both an opaque and transparent surface. Photographs however strictly limit the design claim to the specific incarnation depicted in the photograph. Medela’s collector, while structurally similar to Think Green’s, is transparent and the computer-generated patent drawings were opaque.
Holding:
The court found that the computer-generated image constituted a choice of surface material. “Even if Medela’s product were exactly the same as Think Green’s design in all other aspects, . . . an ordinary observer would not find the translucent object to be substantially the same as the opaque object. Opaque and translucent objects are categorically different such that they are ‘plainly dissimilar’ and could not be confused by an ordinary observer.”
Ex parte Grede et al. (PTAB September 29, 2022)
Synopsis:
In ex parte Grede, a design patent application by Kim Kardashian’s company was denied by an examiner as anticipated from prior art. The examiner relied on a figure depicting only “a fragmentary, front view of the right stocking unit.”
Holding:
On appeal, the PTAB emphasized that the ordinary observer test is used by considering the design as a whole, not in fragments. While relying on less than the entire claim may be appropriate when the applicant has chosen to claim only a portion of the article of manufacture, here the entire article is being claimed. Thus, the denial based on anticipation was inappropriate. An examiner may not cite only a portion of a reference product against the product as a whole. The examiner must compare either two designs for articles of manufacture or two portions of a design.
Ex parte Timothy Smith (PTABJanuary 31, 2022)
Synopsis:
In ex parte Timothy Smith, an examiner denied a claimed GUI design based on a composite illustration of 3 independent designs. The resulting image differed from the claimed design only in proportions. The examiner argued that “mere variations in orientation, dimension, proportion, and spacing do not make the claimed design sufficiently different in ornamental appearance.”
Holding:
“To the extent the Examiner is attempting to extract from King a hard and fast rule that all changes in dimension are per se unpatentable advances, the Examiner’s reliance upon this authority is misplaced. To the extent the Examiner is attempting to extract from Stevens a hard and fast rule that all changes in proportion are per se unpatentable advances, the Examiner’s reliance upon this authority is misplaced.”
Ideavillage Products Corp. v Konkinklijke Philips N.V
Synopsis:
Ideavillage filed a Petition requesting post-grant review of Konkinklijke Philips N. V’s ‘346 design patent. They presented 42 separate obviousness challenges using unique combinations of references presented, but failed to provide sufficient separate analyses for each combination.
Holding:
“None of the 42 obviousness challenges advanced in the Petition is supported by an adequate analysis. . . In particular, none sufficiently discusses both the differences between the claimed and prior art designs and how any primary reference would have been modified (alone or in view of any other reference) to have the same visual appearance as the claimed design.” The proper steps to an obviousness challenge are as follows:
For more information and analysis regarding any of these cases and the impact they may have on your IP rights, please feel free to reach out to Maier & Maier.