Federal Circuit Rules Design Patent Scope Can Be Limited By Claim Language

On September 12, 2019, the Federal Circuit upheld the District Court of New Jersey’s finding that a design patent’s scope is limited by the language in its claims, rather than just its figures. The decision, in Curver Luxembourg, SARL v. Home Expressions Inc., heightens the importance of titles and claim language used when drafting design patents, rather than limiting the scope to solely the figures themselves. This holding should be carefully read by applicants and practitioners alike to inform their drafting and responses during examination.

In the case, Curver Luxembourg was attempting to assert a design patent, D677,946 against Home Expressions for the “Y” design pattern they used on baskets. The problem was that the design patent was entitled “Pattern for a Chair” and claimed “ornamental design for a pattern for a chair”. The District Court granted Home Expressions’ motion to dismiss under Rule 12(b)(6) for failure to state a claim.

On appeal for the dismissal, Curver Luxembourg argued that the figures showed only a pattern not the article it was on. They argued that because the pattern was all that was shown in the figures, it should not be limited in its application to solely chairs. This argument was not persuasive, especially considering the prosecution of the application.

Originally, the application was submitted with the title “FURNITURE (PART OF-)” and claimed a “design for a furniture part”. The examiner had objected to the title under the Patent Office’s Manual of Patent Examining Procedure (MPEP) § 1503(I) stating that design patents must designate a “particular article”. The examiner suggested the final title and claims, which the applicant accepted. This language was included by the District Court as part of the “Ordinary Observer” test for design patent infringement. Since the basket was not a chair, the District Court found no reasonably plausible infringement and dismissed the suit.

On appeal, the Federal Circuit explained that “Curver’s argument effectively collapses to a request for a patent on a surface ornamentation design per se.” Balking at the idea of doing so, the decision declines “to construe the scope of a design patent so broadly here merely because the referenced article of manufacture appears in the claim language, rather than the figures.”


USPTO Expands Track 1 Program to 12,000 Grants Per Year

Under the America Invents Act, one of the new programs put into effect in 2011 was the Prioritized Examination Track. This Pilot Program allowed applicants to petition for special status in examination, placing it on a separate special docket with a goal of 12 months to issue.

In order to qualify, the applicant must comply with certain requirements. Most notably, they must pay an additional fee ($4,000). Additionally, the program limits the number of claims in the application to a maximum of 4 independent claims and 30 claims total.

The USPTO is expanding this program based on its tremendous popularity and success, with more applicants petitioning each year. The current expansion comes at a time when the USPTO would likely have met the previous maximum of 10,000 grants well before the end of the calendar year.

The increase went into effect on September 3, 2019 and affords more applicants the opportunity to take advantage of this growingly popular program. For more information or to see if Track 1 status may be right for your application, reach out to us at our contact page.


Iancu Among Keynote Speakers On State of FinTech IP And Innovation

The 16th Annual Summit on Protecting Innovations in the Financial Services Industry took place July 24th-25th in New York City. Andrei Iancu, the Director of the USPTO, joined other notable members of the FinTech industry including Tariq Hafiz, Group Director of 3600 Tech Group at the USPTO, inhouse counsel for major industry members, and private practitioners. The discussion focused on developments in FinTech IP practice including updates on the Updates on IP Policy and Law at the USPTO and Prosecution Practice Tips.

IP Policy and Law

The main theme that Iancu emphasized was the importance of establishing a culture of innovation in the U.S. from early childhood straight through to the boardrooms across the country. Supporting this culture should be the primary purpose of patent law and policy, and in order to properly serve that role, there needs to be clarity and consistency in the field. This need is highlighted in the FinTech industry, where uncertainty in Subject Matter Eligibility led to a substantial dent in the consistent 6% annual growth the industry saw before the Alice decision in 2014.

Solutions to this issue may come from a variety of places. He cited the 2019 Guidance issued by the USPTO as one step forward, though it has not yet been endorsed in the Federal Circuit but emphasized that he was open to others as well. He specifically pointed to pending legislation in Congress which would adjust the statutory language to provide more consistent rulings on the issues but noted that those would not come until after the August recess at the earliest. In the meantime, practitioners must take ownership of their cases, and make sure that examiners are properly applying the USPTO guidance to applications.

Iancu also highlighted the steps being taken by the USPTO to provide greater consistency and reliability in trademarks along with patents. There have been fraudulent trademark filings at the USPTO (audits conducted have found fraud in 50% of the applications reviewed). Multiple initiatives have been taken to address this concern including both additional requirements for foreign filings and new technological applications to identify potential fraud.

Prosecution Practice Tips

After Final Consideration Pilot 2.0: For cases near allowance after final rejection, the USPTO introduced the AFCP 2.0 program for additional consideration time (3.0 hours for utility and plant applications, 1.0 hour for design applications). However, even after that additional allotment has been allowed, examiners may request additional time from their SPE in order to resolve the application. Practitioners should not be afraid to initiate this process and potentially gain an earlier allowance for their client.

Automated Interview Request: In order to expedite the examination process, the USPTO launched the Automated Interview Request (AIR) which allows for remote video interviews to be scheduled much more efficiently between examiners and practitioners.

Full First Action Interview Pilot Program: After filing applications, applicants can file for a first action interview. In the program, the examiner addresses the merits of the application before issuing an official first office action in an interview. This can be used to great effect for RCE applications, where the applicant may take advantage of discussing the merits to make any necessary amendments and achieve a condition of allowance for the application significantly faster than by waiting for standard examination.

101 Guidance: The USPTO issued guidance to examiners on how to handle 101 rejections in light of recent Federal Circuit decisions. Most notably in the guidance were 1). the requirement to properly cite assertions made in rejections and 2). the need to identify a specific category of abstract behavior for claims. If examiners fail to follow the guidance correctly, practitioners may request another non-final rejection to correct the errors made in guidance application.

New Informative decisions: Since passing the 2019 101 Guidance, the PTAB has designated five subsequent PTAB decisions as informative on its application. These 5 cases address how to properly analyze the subject matter of the claims in accordance with the guidance:

Ex parte Smith, 2018-000064 (Feb. 1, 2019)

Ex parte Olson, 2017-006489 (Mar. 25, 2019)

Ex parte Kimizuka, 2018-001081 (May 15, 2019)

Ex parte Savescu, 2018-003174 (Apr. 1, 2019)

Ex parte Fautz, 2019-000106 (May 15, 2019)


Supreme Court to Rule On Two Trademark Litigation Cases Next Term

The Supreme Court has granted certiorari to two cases that could have significant impacts on trademark litigation. In Lucky Brands Dungarees, Inc., et al. v. Marcel Fashions, Inc., the Court will address whether new, un-litigated defenses in response to newly asserted claims are permissible with federal preclusion principles. Meanwhile, in Romag Fasteners, Inc. v. Fossil, Inc. et al., the Court hear arguments on whether willfulness is required for awarding infringing profits for false designation of origin of false descriptions.

Lucky Brands Dungarees, Inc. et al. v. Marcel Fashions, Inc.

For Lucky Brands, the dispute at issue arose when Marcel Fashion Group, Inc. (“Marcel”) sued Lucky Brand Dungarees, Inc. and affiliates (“Lucky Brand”) under the Lanham Act in 2011. Marcel alleged that Lucky Brand infringed their mark for “Get Lucky” with their use of the word “Lucky” on apparel, but the district court dismissed the claim as previously settled per a 2003 agreement. On appeal, the Federal Circuit ruled that the district court erred because Lucky Brand was precluded from bringing the defense.

After the settlement agreement in 2003, Marcel had brought another suit in 2005 for Lucky Brand’s use of “Get Lucky”. Lucky Brands asserted the settlement defense multiple times early on in the litigation, but failed to do so in its Motion for Summary Judgment or to the jury. The jury found for Marcel, which Lucky Brands did not appeal.

In 2011, Marcel then filed the present lawsuit, asserting their “Lucky” trademark. After initially winning with other defenses before it was remanded after appeal, Lucky Brands was dealt a second amended complaint by Marcel. In response, Lucky Brands asserted the affirmative 2003 settlement defense for the first time in this litigation. Marcel argued Lucky Brands’ argument was precluded res judicata due to the 2005 disposition. The judge ruled that issue preclusion did not apply because the issue was not actually litigated and resolve by the 2005 action. Similarly, the judge found that claim preclusion did not apply because Lucky Brand was not asserting a claim against Marcel.

On appeal, the Second Circuit reversed the district court ruling. The Second Circuit relied on the fact that Lucky Brands could have raised the defense in the 2005 lawsuit. This created a circuit split with the Eleventh and Ninth Circuits, which had ruled the opposite way in similar cases.

In its petition for certiorari, Lucky Brands argued that no Supreme court precedent allows for issue or claim preclusion for defenses which were not resolved in previous litigation, emphasizing the different cause of action as particularly noteworthy. Additionally, Lucky Brands points out that the inconsistency of relying on preclusion for purposes fairness and efficiency. To the efficiency argument, this precedent would require defendants to raise any and all defenses in every single lawsuit for fear of additional unrelated lawsuits that may overlap with a defense that could have been used in that case, resulting in more litigation. On the fairness angle, Lucky Brands argues that the ruling raises the requirements of defenses even higher than that of counterclaims, because counterclaims must only be brought when arising from the same transaction or occurrences of the initial claims, which is not the case here since the trademark being asserted is not the same one.

The Supreme Court ruling here will be of significant interest to both plaintiffs and defendants since it would have profound impact on the arguments being made, anticipated, and precluded in the course of litigation.

Romag Fasteners, Inc. v. Fossil, Inc. et al.

In Romag, Romag Fasteners, Inc. (“Romag”) sued Fossil, Inc. et al (“Fossil”) for both patent and trademark infringement in the District of Connecticut. The jury found that Fossil liable for both, but that the trademark infringement was merely “callous”, not “willful. Based on this finding, the district court ruled against awarding profits for the trademark infringement. After being appealed and remanded on grounds relating to the patent infringement award and a new relevant Supreme Court decision coming down, the case was again appealed to the Second Circuit to challenge the willfulness requirement.

Romag argued that the precedent relied upon for the decision, George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1540 (2d Cir. 1992), was no longer good law. They based this argument on the amendments to the Lanham Act that occurred in 1999, seven years after the relevant precedent.

The Federal Circuit found no reason to discuss what it viewed as settled law again, citing that “when a court decides upon a rule of law, that decision should continue to govern the same issues in subsequent stages in the same case” (citing to, among others, Arizona v. California, 460 U.S. 605, 618 (1983).

However, contrary to the assertion of it being settled law, the decision results in a 6-6 Circuit split. The Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits have no willfulness requirement for an award of profits, while the First, Second, Eighth, Ninth, Tenth and D.C. Circuits fall in line with the Federal Circuit ruling.

The highly divided circuit split and how the Supreme court resolves it, especially with its significant implications for damage awards, bare watching moving forward.


Federal Circuit Makes En Banc Plea for Help on Subject Matter Eligibility In Athena Rehearing Rejection

On July 3, 2019 the Federal Circuit issued its en banc decision in Athena Diagnostics, Inc. et al. v. Mayo Collaborative Services, LLC. The decision came down 7-5 against rehearing on the patent’s eligibility, with a staggering eight separate written opinions (four concurring and four dissenting). The common refrain amongst the opinions, concurrences and dissenting alike, was the need for intervention from the Supreme Court or Congress to address the current binding precedent from Mayo.

The petition arose from a District of Massachusetts case where Athena Diagnostics asserted claims relating the diagnosis of disorders relating to antibodies to a muscle-specific tyrosine kinase (MuSK) in U.S. Patent 7,267,820. Mayo challenged the eligibility of such claims, which was appealed to the Federal Circuit, where they were deemed ineligible by Judges Newman, Lourie, and Stoll. Athena and its co-petitioners petitioned for the case to be re-heard en banc, resulting in the 7-5 denial. Those in favor were Judges Lourie, Reyna, Chen, Prost, Taranto, Hughes, and Chen, while Judges Moore, O’Malley, Wallach, Stoll, and Newman opposed.

In the dissents, the judges emphasized that there was no disagreement in the deliberations as to whether the claims should be eligible. Judge Moore explains that “This is not a case in which the judges of this court disagree over whether diagnostic claims, like those at issue in Athena, should be eligible for patent protection. They should. None of my colleagues defend the conclusion that claims to diagnostic kits and diagnostic techniques, like those at issue, should be ineligible.” He goes on to lament the fact that since Mayo, the Federal Circuit has held every single diagnostic claim before it to be ineligible, and cites the many serious research subjects that are negatively impacted by such precedent including breast cancer, tuberculosis, down syndrome, and many more.

On the concurring side, Judge Hughes succinctly represented the court’s current and unfortunate position. Per his opinion, “[T]he bottom line for diagnostics patents is problematic. But this is not a problem that we can solve. As an inferior appellate court, we are bound by the Supreme Court. I, for one, would welcome further explication of eligibility standards in the area of diagnostics patents. Such standards could permit patenting of essential life saving inventions based on natural laws while providing a reasonable and measured way to differentiate between overly broad patents claiming natural laws and truly worthy specific applications. Such an explication might come from the Supreme Court. Or it might come from Congress, with its distinctive role in making the factual and policy determinations relevant to setting the proper balance of innovation incentives under patent law.”

The Federal Circuit’s emphatic cry for help gives greater importance to the current 101 reform initiatives in congress.


Supreme Court Rules Government Not A ‘Person’ For PTAB Proceedings

Under the 2012 America Invents Act (“AIA”), Congress created three new post-issuances avenues for a “person” to challenge patents before the Patent Trial and Appeal Board (PTAB) in IPR’s, PGR’s, and CBM’s. With this ruling, the Supreme Court has deemed that the Federal Government is not a “person” for these purposes and thus is ineligible to institute these AIA proceedings.

The issue was decided in Return Mail, Inc. v. Postal Service, et al., where Return Mail, Inc. held a patent for a method of processing undeliverable mail, which it asserted against the Postal Service in 2006. After filing for an ultimately unsuccessful ex parte reexamination of the subject patent, the Postal Service brought its challenge before the PTAB to seek CBM review. The Board then instituted review and ultimately found the patent covered ineligible subject matter, which was reviewed and upheld in the Federal Circuit along with the holding that the Postal Service was a ‘person’ for PTAB proceedings, before being overruled by the Supreme court here.

The Decision

The decision was written by Justice Sotomayor, with Roberts, Thomas, Alito, Gorsuch, and Kavanaugh joining. The Court explained that “In the absence of an express statutory definition, the Court applies a ‘longstanding interpretative presumption that ‘person’ does not include the sovereign.”[1] The Court then cites to the fact that the AIA defines person to “include[] corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals,” which notably does not include the Government.[2]

On the other hand, the AIA uses the term person in various forms in the statute and that some of those uses do, in fact, include the government. One example comes from where the statute provides “States ‘shall not be immune . . . from suit in Federal court by any person, including any governmental or nongovernmental entity””.[3] Based on the expressed inclusion of the government for the use of person in this instance, the Court explained this use would include the government.

However, the strength of the presumption could not be overcome by mixed use because those other uses contained additional context which indicated that the government was intended to be included in those other instances. Without any evidence that congress had intended to grant the Government the ability to initiate post-issuance proceedings under the AIA, the Court was unwilling to expand the meaning of the term across the entirety of the statute.

The court also found unpersuasive references to the MPEP where the Government was included as a person for the purposes of filing for ex parte reexamination (as they had here before the CBM filing). Because these proceedings differ significantly in the involvement of parties compared to AIA proceedings, the Court deemed that congress could very well have had reasons for distinguishing the ability to file between non-governmental ‘persons’ and the Government.

The Dissent

The dissent, drafted by Justice Breyer and joined by Ginsburg and Kagan, found the context of the AIA as a whole to be persuasive enough to indicate that Congress intended for the Government to be able to challenge invalidity at the PTAB. The dissenting opinion cited the AIA aims of improving the quality of patents, making it easier to challenge questionable patents, providing rights to those being sued for infringement, among the persuasive factors in its viewpoint.

With the holding, the Court has strengthened the position of Patent Owners at the PTAB, giving them an avenue to avoid further review at a time when they have notably lost the ability to do so with sovereign immunity based on recent Federal Circuit decisions in both Saint Regis and Regents of the University of Minnesota.

[1] Return Mail, Inc. v. Postal Service, et al., 587 U. S. ____, Slip. Op. at 6-7, (2019).

[2] Return Mail, Inc. v. Postal Service, et al., 587 U. S. ____, Slip. Op. at 7, (2019).

[3] Return Mail, Inc. v. Postal Service, et al., 587 U. S. ____, Slip. Op. at 10 n. 3, (2019).


Federal Circuit Rules No State Sovereign Immunity For PTAB Proceedings

Expanding on its precedential ruling against the use of tribal sovereign immunity at the Patent and Trial Appeal Board (“PTAB”) from last summer in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., the Federal Circuit ruled that there is no sovereign immunity for states in proceedings at the PTAB either. The decision was based on the fact that tribal sovereign immunity and state sovereign immunity “do not differ in a way that is material to the question of whether IPR proceedings are subject to state sovereign immunity.”

The ruling came in Regents of the University of Minnesota v. LSI Corporation, where the Regents of the University of Minnesota (UMN) had appealed the decision of the PTAB not to dismiss an inter partes review that had been petitioned against their patent by LSI Corporation and Ericsson Inc. (collectively LSI). LSI had been sued UMN for infringement in district court and filed the petition for a review of the patent before the PTAB in response. UMN then attempted to assert sovereign immunity to avoid the review at the Patent Office.

This ruling by the Federal Circuit gains added importance when considering that the Supreme court denied cert to review the tribal sovereign immunity issue on April 15 earlier this year. It will bear watching how this case proceeds and whether state sovereign immunity might be able to make it farther than Saint Regis did or if both state and tribal sovereign immunity has had their last appearance at the PTAB.


PTAB Designates a Flurry of Opinions As Precedential In Wake of Boalick Appointment

Since his official appointment to his post as Chief Judge of the PTAB, Boalick has wasted no time in making his mark. Beginning the very day his permanent appointment became official last month, the PTAB has issued a number of precedential opinions. Most notably, the new Precedential Opinion Panel or POP (created in September’s updates to the Standard Operating Procedures) issued their first opinion.

The POP (which includes Chief Judge Boalick and his Deputy Jacqueline Bonilla among others) issued its first decision in an Inter Partes Review between Proppant Express Investments and Oren Technologies (IPR2018-00914, Paper 38). At issue in the decision was the hot button same party joinder issue. In the decision, the POP declared that 35 U.S.C. § 315(c) provides discretion for the Board to allow a petitioner to join a proceeding in which it is already a party, as well as the joinder of new issues into an existing proceeding. The decision emphasized the rarity in which such a circumstance would come about and identified fairness, undue prejudice, and the § 315(b) timebar as important considerations when deciding whether to exercise such discretion.

Among the other newly precedential opinions are the following:

Adello Biologics LLC v. Amgen Inc., Case PGR2019-00001 (PTAB Feb. 14, 2019) (Paper 11) (allowing update to Mandatory Notices without assigning a new filing date because omission of RPI was not in bad faith nor was it unduly prejudicial to Patent Owner)

Proppant Express Investments, LLC v. Oren Technologies, LLC, Case IPR2017-01917 (PTAB Feb. 13, 2019) (Paper 86) (finding no timebar because RPI added to petition would not have been timebarred if it had been added when it was originally filed and laying out factors relating to the related POP decision)

Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., Case IPR2017-00651 (PTAB Jan. 24, 2019) (Paper 152) (dismissing Petition because omitted RPI would have been timebarred if named in original filing)

K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (listing factors to be considered in permitting live testimony)

DePuy Synthes Products, Inc. v. MEDIDEA, L.L.C., Case IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29) (finding inventor testimony at oral hearing to be impermissible new evidence without previously provided declaration)

Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC, Case IPR2018-00816 (PTAB Jan. 8, 2019) (Paper 19) (procedural overview for submission of new evidence and showing of good cause)

These and more precedential decisions are available on the PTAB’s Precedential and Informative Decisions page.


2019 Design Day: Caselaw Highlights

Last week was the United States Patent and Trademark Office’s annual Design Day where they hosted speakers on the last year in design patent practice. The following cases from the Federal Circuit, the Patent Trial and Appeal Board, and District Courts were highlighted throughout the day for their impact on design patent practice. 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.

Federal Circuit Cases:

Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co.

Holding: A restriction requirement response electing for broader coverage instead of embodiments with extra features does not estop a patent holder from asserting against infringing designs with the non-elected extra features.

In re Maatita

Holding: A § 112 indefiniteness rejection based on three dimensional flexibility of a single view design claim was overruled because § 112 only applies “if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” For practice purposes, it is important to note that in some situations, a single view may be used to obtain broader protections.

Pending-Automotive Body Parts Association (“ABPA”) v. Ford Global Technologies, LLC

Issue 1. Are replacement components eligible for design patent protection?

Lower Court Holding: Yes, design patents may protect replacement components because a). the design of the replacement components was relevant at the time of the original sale which constitutes a matter of concern b). the aesthetic-function doctrine does not extend to design patents and c). the physical need to fit as a replacement is insufficient to establish that the design is dictated by function.

Issue 2. Do design patents for replacement parts violate the exhaustion doctrine?

Lower Court Holding: No, design patents for replacement components do not violate the exhaustion doctrine because they protect the individual components, not the purchased vehicle as a whole.

Pending-Hafco Foundry and Machine Co. v. GMS Mine Repair

Issue: Are functional features of a design patent filtered out when determining whether a product infringes?

Pending-Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc.

Issue: Is corroborating expert testimony necessary for a 131 declaration to swear behind and establish priority of invention?

PTAB Proceedings:

MacSports v. Idea Nuova

Denying petition for failure to account for all views of the claimed design in the § 103 challenge and failure to acknowledge and discuss differences with claimed design in § 102 challenge.

Campbell Soup Company v. Gamon Plus, Inc.

Prior art of a can display was insufficient to invalidate Cambell’s design patent, even though it showed a similar can display, because there was no can included in the prior art despite the inherent need for a can to be present for its intended use.

C&D Zodiac, Inc. v. B/E Aerospace, Inc.

Finding figures from previous utility patent alone were insufficient to establish a priority date, because they lacked a written description for the claimed design. The loss of priority date led to PGR eligibility, and ultimately invalidity due to a prior sale.

Ex Parte Sonos

Priority to previous patent applications is based on the common elements between designs embodiments of the priority and new application, not the differences between design embodiments in the two. Examiner’s failure to consider these common elements led to the PTAB’s acceptance of priority claim.

District Court Cases:

Wine Enthusiast v. Vinotemp

Infringement claim against a product with a black surface on a wine rack of a design patent for a black surface on a wine rack was dismissed because the design patent included a specific shape to the surface not present in the product.

Lanard v. Toys R Us

Applying the Egyptian Goddess infringement analysis to find that while two chalk holders that look like no. 2 pencils share a broad design concept, the similarities stem from function and well-established prior art, and do not infringe.

Daimler v. A-Z Wheels LLC

Applying Egyptian Goddess infringement analysis to find that the patented design and accused product were substantially similar and that there were no sharp distinguishing features between the prior art and the accused product nor the design patent itself.

Bobcar v. Aardvark

Applying the “Ordinary Observer” standard to conclude that the design patent and the provided images are ‘sufficiently similar as to deceive an ordinary observer” and deny the defendant’s motion to dismiss under 12(b)(6) for failure to state a claim. Additionally, finding no sanctions against plaintiff for bringing suit despite knowledge of prior art references which defendant had sent to plaintiff prior to their filing suit, because there were sufficiently clear differences from the prior publications to prevent the suit from being frivolous with no chance for success.


2019 Design Day: Caselaw Highlights

Last week was the United States Patent and Trademark Office’s annual Design Day where they hosted speakers on the last year in design patent practice. The following cases from the Federal Circuit, the Patent Trial and Appeal Board, and District Courts were highlighted throughout the day for their impact on design patent practice. 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.

Federal Circuit Cases:

Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co.

Holding: A restriction requirement response electing for broader coverage instead of embodiments with extra features does not estop a patent holder from asserting against infringing designs with the non-elected extra features.

In re Maatita

Holding: A § 112 indefiniteness rejection based on three dimensional flexibility of a single view design claim was overruled because § 112 only applies “if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” For practice purposes, it is important to note that in some situations, a single view may be used to obtain broader protections.

Pending-Automotive Body Parts Association (“ABPA”) v. Ford Global Technologies, LLC

Issue 1. Are replacement components eligible for design patent protection?

Lower Court Holding: Yes, design patents may protect replacement components because a). the design of the replacement components was relevant at the time of the original sale which constitutes a matter of concern b). the aesthetic-function doctrine does not extend to design patents and c). the physical need to fit as a replacement is insufficient to establish that the design is dictated by function.

Issue 2. Do design patents for replacement parts violate the exhaustion doctrine?

Lower Court Holding: No, design patents for replacement components do not violate the exhaustion doctrine because they protect the individual components, not the purchased vehicle as a whole.

Pending-Hafco Foundry and Machine Co. v. GMS Mine Repair

Issue: Are functional features of a design patent filtered out when determining whether a product infringes?

Pending-Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc.

Issue: Is corroborating expert testimony necessary for a 131 declaration to swear behind and establish priority of invention?

PTAB Proceedings:

MacSports v. Idea Nuova

Denying petition for failure to account for all views of the claimed design in the § 103 challenge and failure to acknowledge and discuss differences with claimed design in § 102 challenge.

Campbell Soup Company v. Gamon Plus, Inc.

Prior art of a can display was insufficient to invalidate Cambell’s design patent, even though it showed a similar can display, because there was no can included in the prior art despite the inherent need for a can to be present for its intended use.

C&D Zodiac, Inc. v. B/E Aerospace, Inc.

Finding figures from previous utility patent alone were insufficient to establish a priority date, because they lacked a written description for the claimed design. The loss of priority date led to PGR eligibility, and ultimately invalidity due to a prior sale.

Ex Parte Sonos

Priority to previous patent applications is based on the common elements between designs embodiments of the priority and new application, not the differences between design embodiments in the two. Examiner’s failure to consider these common elements led to the PTAB’s acceptance of priority claim.

District Court Cases:

Wine Enthusiast v. Vinotemp

Infringement claim against a product with a black surface on a wine rack of a design patent for a black surface on a wine rack was dismissed because the design patent included a specific shape to the surface not present in the product.

Lanard v. Toys R Us

Applying the Egyptian Goddess infringement analysis to find that while two chalk holders that look like no. 2 pencils share a broad design concept, the similarities stem from function and well-established prior art, and do not infringe.

Daimler v. A-Z Wheels LLC

Applying Egyptian Goddess infringement analysis to find that the patented design and accused product were substantially similar and that there were no sharp distinguishing features between the prior art and the accused product nor the design patent itself.

Bobcar v. Aardvark

Applying the “Ordinary Observer” standard to conclude that the design patent and the provided images are ‘sufficiently similar as to deceive an ordinary observer” and deny the defendant’s motion to dismiss under 12(b)(6) for failure to state a claim. Additionally, finding no sanctions against plaintiff for bringing suit despite knowledge of prior art references which defendant had sent to plaintiff prior to their filing suit, because there were sufficiently clear differences from the prior publications to prevent the suit from being frivolous with no chance for success.