Design Day 2023: Highlights and Caselaw

Maier & Maier

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:

  • Find a primary reference (a single reference, something in existence, the design characteristics of which are basically the same as the claimed design).
    • BUT also provide an explanation as to how the primary reference is basically the same as the claimed design despite particular differences between the two designs.
  • Use secondary reference(s) to modify the primary reference to create a design that has the same overall visual appearance as the claimed design.
    • BUT also provide an explanation as to how and why the primary reference(s) would have been modified to arrive at a design that has the same overall visual appearance as the claimed design.

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.

USPTO Transitions to Electronic Patent Grants

Maier & Maier

The USPTO recently announced through the publishing of a new Federal Register final rule (88 Fed. Reg. 12560) that effective Tuesday, April 18, 2023 all newly issued patents will be issued electronically. Electronically issued patents will bear the digital signature of the USPTO director, and the corresponding patent cover sheet will be nearly identical to current cover sheets; however, they will include the seal and Director’s signature in digital form. As an additional update the new official USPTO digital seal will serve as authentication of the patent, and will include an encrypted digital signature embedded within the seal.

Eventually patents will no longer be issued in paper form and will be digital only, however there will be a yet-to-be determined transition period where a paper copy of the electronic patent will be provided as a courtesy. The courtesy copy will be mailed to the correspondence address of record. After the transition period ceremonial copies or presentation copies (certified copy of the front page that can be used for display) will be available for nominal fees. Advance copies of issued patents however will no longer be available for purchase.

Moving to electronic Patent grants will, according to the office, reduce pendency of patent applications, foster a green economy by reducing paper waste, and permit issued patents to be viewed and printed by applicants and the public immediately upon issuance in patent center. As a practical matter, the move to electronic grants will have some impact on patent practice, particularly with regards to continuation practice. Under the current system there is typically a delay of several weeks between the mailing of the issue notice and the actual issue date of the patent. Under the electronic patent process, the Office notes that patents will issue “shortly after the patent number and issue date are assigned, which will result in the reduction of pendency for allowed patent applications.” This means Applicants will have less time between the payment of the issue fee and grant, and therefore less time to file continuations, quick path Information Disclosure Statements, or petitions to withdraw an application from issue under 37 CFR 1.313(c). In line with this change the Patent Office recommends that going forward all these filings should be done as early as possible, and particularly with respect to continuations should be preferably done before the payment of the issue fee.

The above rule is just one of many steps the Patent Office has taken towards digitizing their processes. For example, the Patent Office also finalized another rule (88 Fed. Reg. 13028) the same week as the above which establishes that effective May 1, 2023 all “patent term extension (PTE) applications, interim PTE applications, and any related submission to the USPTO must be submitted electronically via the USPTO patent electronic filing system”. Professional and knowledgeable patent counsel are more important than ever to help clients navigate the ever changing and advancing systems of the USPTO.

USPTO Director Vidal issues key decisions regarding abuse of process in proceedings before the Patent Trial and Appeal Board

Maier & Maier

Two key decisions have been issued from the Patent Trial and Appeal Board (Board) this Thursday regarding abuse of process.

The first, Patent Quality Assurance, LLC, v. VLSI Technology LLC, IPR2021-01229, Paper 102, is a precedential decision where the Director of the USPTO Kathi Vidal held that Petitioner Patent Quality Assurance (PQA) abused the Inter-Partes Review (IPR) process by using the proceeding for the purposes of extortion.

According to the decision, PQA failed to offer a verifiable, legitimate basis for filing its petition, which was filed only after a district court awarded large monetary damages keyed to the subject ‘373 patent. The Director identified that petitions unrelated to any pending litigation may raise concerns of petitioners who file “petitions, filed for the primary purpose of obtaining a cash settlement” from patent owners in order to settle and terminate the proceed.

The Director also found that PQA made material misrepresentations in order to ensure that another petition would be denied so that PQA’s petition, which was a replica of an earlier petition filed by Intel Corp., could proceed. The Director concluded that “To safeguard the proper functioning of the patent system, and the confidence therein, it is incumbent on me and the USPTO to protect against that harm.”

In a second, related decision, OpenSky Industries LLC v. VLSI Technology LLC, IPR2021-01064, Paper 121, the Director sanctions Petitioner OpenSky by precluding them from participating the proceeding based on their abuse of the IPR process in addition to sanctionable conduct including discovery misconduct, violation of an express order, and unethical conduct.

The standard applied to PQA and OpenSky was one of “compelling merits”. This requires that the petitioner present a compelling, meritorious challenge, which requires a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. §314(a).

Our team at Maier & Maier is proud of our success in both petitioning and defending IPRs and other cases in front of the Board.

New Deadlines to Respond to Trademark Office Actions

Maier & Maier

On December 3, 2022, the United States Patent and Trademark Office will shorten the response deadline for Trademark office actions from 6-months to 3-months. This shortened deadline will apply to all office actions issued on or after December 3, 2022.

There will be an opportunity to file one 3-month extension for an additional fee. The USPTO fee for a 3-month extension will be $125 and the extension request must be filed before the initial 3-month deadline.

The goal of the shortened response deadline is to decrease the time to obtain a registration, while also allowing flexibility to request additional time to respond to more complex office actions.

The new shortened deadline will not apply to applications filed through the Madrid Protocol section 66(a).

The deadline for post-registration office actions will remain unchanged until October 7, 2023.

If a response deadline is missed, it may still by possible to revive the application by filing a petition to revive.

We look forward to assisting our valued clients as we navigate the transition to a 3-month response timeline.

USPTO Transitions to New Online Search Tool, Patent Public Search

Maier & Maier

On September 30, 2022, the United States Patent and Trademark Office (USPTO) consolidated and replaced four legacy search tools with a single Patent Public Search tool. The new tool is intended to streamline the search process for users and to incorporate new, useful features.

The legacy tools that were phased out include:

  • Public-Examiner’s Automated Search Tool (PubEAST)
  • Public-Web-based Examiner’s Search Tool (PubWEST)
  • Patent Full-Text and Image Database (PatFT), and
  • Patent Application Full-Text and Image Database (AppFT).

The new Patent Public Search tool can be accessed here.

Design Day 2022 Highlights

Maier & Maier

On April 21, 2022, the United States Patent and Trademark Office hosted its annual Design Day event, featuring speakers discussing recent developments in design patent practice. The virtual event was joined by over 600 attendees.

The amount of design patents filed in FY2021 increased by 17.6% over the previous year, to a total of 54,201 applications, a new record for the USPTO. The increase in design patent applications shows the recognition of the value of design patent protection by inventors and rights holders. Of those filings, 40.4% originated in the United States, while 30.5% were from China. As a consequence of the increased volume of filings, first action pendency increased to 16.6 months, while total pendency remained relatively flat at 21 months.

The next presentation focused on the anticipated entry of China into the Hague system in May 2022. The Hague system allows an applicant to file a single international application for a single international registration, which is then examined according to the laws of each contracting party designated in the registration. With China’s entry on May 5, 2022, the Hague system will include 76 contracting parties, covering 94 countries.

To align with the requirements of the Hague Agreement, China has updated its design laws to increase the patent term from 10 to 15 years, and to include protection of partial designs. Prior to this update, the entire article of manufacture was required to be claimed in a Chinese design patent application. After May 5, applicants for Chinese design protection will be able to disclaim subject matter in broken line, allowing the claiming of only the desired portions of an article.

Subsequent speakers discussed suggestions for effective appeal briefs and examiner’s answers, particularly for obviousness rejections. For examiners, it was recommended to construe the claim when helpful, create a composite of multiple references, and address the differences and their effect on overall similarity. For practitioners, it was recommended to determine the differences and the overall visual impression created by the differences alone and when viewed in the composite of multiple references. The visual impression of the composite can then be compared to the claimed design and the difference between the two determined.

The Patent Trial and Appeal Board’s views on the obviousness of changes in proportion were also discussed. With respect to changes in proportion, many examiners have relied on In re Stevens, 173 F.2d 1015 (1949), which stated that changes in proportion as per se obvious. However, the PTAB has now been giving consideration as to how mere changes in proportion can create a significant difference in the overall visual impression of an article. In particular, in In re Salas, 2019 WL 7790867 (2019) the PTAB declined to view Stevens as a per se rule that all changes in arrangement and proportion are unpatentable. Rather, board referred to In re Blum, 364 F.2d 904 (1967) which stated that  there are no portions of a design that are immaterial or not important.

 In re Surgisil was a 2021 Federal Circuit decision that changed long-standing anticipation analysis for design patents. Prior to this case, examiners relied on In re Glavas, 230 F.2d 447 (1956), which stated that anticipation of a design does not require that the prior art and the claim design were from analogous art. In the Surgisil case, the examiner rejected the design of a lip implant based on the appearance of an art tool. The applicant appealed to the PTAB, which affirmed the rejection, stating that only minor differences exist between the two designs, and the article of manufacture can be ignored for the purposes of determining the claim scope. However, the Federal Circuit reversed, holding that the board decision was erroneous, and that the claim language should match the article that is identified. Consequently, the art tool could not anticipate a design of a lip implant. Subsequent to Surgisil, the test for applicable prior art for designs would now depend on the particular article of manufacture to which the design is applied.

In re Maatita: in this 2018 case, the Federal Circuit held that some designs, for example shoe bottoms, are capable of being enabled by a single plan view drawing. This has led to filings where complex, three-dimensional objects, such as ceiling fans, are depicted by a single, perspective-view drawing, with examiners rejecting those as non-enabled and indefinite. Board decisions have considered this scenario to be a different factual inquiry than that in Maatita. For example, foreshortening distortions due to perspective can introduce uncertainty to the design claim in certain circumstances. At this point, the sufficiency of a single perspective view is not dictated by Maatita, but rather is decided based on a case-by-case analysis.

For more information and analysis regarding design patent protection in the United States and abroad, as well as analysis regarding the impact of these recent developments on your IP rights, please feel free to reach out to us.

USPTO First Office Action Estimator Now Available

Maier & Maier

The United States Patent and Trademark Office (“USPTO”) has announced the availability of an online First Office Action Estimator tool to provide an estimate on when to expect a first Office Action for pending U.S. patent applications.

The estimator has been updated to account for the recent changes to the methodology for assigning patent applications to patent examiners.  In fiscal year 2001, the USPTO transitioned to using the Cooperative Patent Classification (CPC) to assign applications.

While the estimator can provide helpful insight, the estimates are not guaranteed by the USPTO.

You may access the First Office Action Estimator here.

USPTO Deferred Subject Matter Eligibility Response (DSMER) Pilot Program to Launch February 1, 2022

Maier & Maier

A new Deferred Subject Matter Eligibility Response (DSMER) Pilot Program will launch at the USPTO on February 1, 2022. This Pilot Program is designed to address issues currently present in examination of applications for eligibility under 35 U.S.C. 101.

The Pilot Program will allow applicants to defer examination under Section 101, such that the application is first examined under all grounds of patentability under Sections 102, 103, and 112. Under the Pilot, applicants will first amend claims to overcome rejections under the more objective patentability standards of these Sections, which may also have the benefit of informing the examiner that the claims are eligible under Section 101 as well. Subsequent to examination under these Sections, the examiner will conduct an eligibility analysis under Section 101. It is intended that such an examination sequence will result in stronger, more reliable, and higher quality patents.

Participation in this program is by invitation only. The criteria for participating in this program are listed on the DSMER Pilot Program page of the USPTO website.

Additional Filing Fee for Non-DOCX Format Delayed Until 2023

Maier & Maier

An additional filing fee for any nonprovisional utility patent application filed under 35 U.S.C. 111, including continuing applications, that are not filed in DOCX format was set to take effect on January 1, 2022.  However, on November 22, 2021, the USPTO issued a final rule delaying the effective date of the new fee until January 1, 2023.  The reason for the delay is to give both the USPTO and applicants more time to adjust to DOCX filing procedures and to address known issues.

United States Patent and Trademark Office Expands Prioritized Examination (Track One) Program

Maier & Maier

The United States Patent and Trademark Office (USPTO) has further expanded their Track One prioritized examination program by increasing the annual limit on accepted requests. Previously, the USPTO only accepted 12,000 Track One requests per fiscal year, but this announcement increases the limit to 15,000 requests per year.

Track One expedites the patent prosecution process by allowing applicants to receive a final disposition (such as a notice of allowance or final rejection) of a patent application within twelve months from the date of the Track One request.

This is an important development, since Track One allows applicants to avoid lengthy prosecution with less requirements than other prioritized examination programs. An application under Track One typically receives a final disposition in under six months on average. Non-track one applications, however, don’t even receive a first office action for over 16 months, and remain pending for an average of 23.2 months.

At Maier & Maier we take pride in developing sophisticated patent portfolios for our clients and are well equipped to navigate and take advantage of the Track One, Patent Prosecution Highway, or other programs offered by the USPTO.