Under the America Invents Act, post-grant reviews are only
available for patents having at least one claim with an effective
filing date of March 16, 2013 or later. If this condition is not
satisfied, the Patent Trial and Appeal Board (PTAB) must dismiss
the post-grant review petition. While this standard appears to be
simple on its face, it becomes a more complicated issue when a
child patent (continuation or divisional) does not contain the same
disclosure as its parent patent. In David's Bridal v. Jenny
Yoo, the PTAB addressed this exact issue on a design patent,
holding that the parent patent's disclosure sufficiently
supported the "new matter" disclosed in the child patent
and denied the post-grant review petition.
The design patent-at-issue (the '723 patent) claimed a
"convertible dress" and included eight figures disclosing
different views of the claimed dress. The '723 patent was filed
on August 10, 2013—after the March 16, 2013, cutoff date for
post-grant review. The patent, however, is a divisional of, and
claimed priority to, its parent patent (the '548 patent) that
was filed on February 12, 2012. The question before the PTAB was
whether the '723 patent could claim the effective filing date
of the parent patent to escape post-grant review. The petitioner
argued that the earlier filing date was improper because the
'723 patent included three figures that were different from the
corresponding figures in the parent '548 patent. In particular,
the petitioner alleged that the length of the "new"
dresses in the three figures was longer than the length of the
dresses in the counterpart figures in the '548 patent and thus
not sufficiently disclosed in the parent patent.
The PTAB rejected the petitioner's argument. Although the
PTAB agreed that the three figures were modified to show a
longer-length dress, it recognized that the petitioner's
arguments were improperly focused on "differences between
versions of individual figures as opposed to viewing the claimed
convertible dress as a whole." Citing to one of its earlier
opinions on design patents, the PTAB reiterated that "the test
for new matter is not whether the desired correction was ever
specifically illustrated in a particular figure as filed, but
whether there is any support anywhere in the drawings for the
necessary or desirable figure corrections." Here, the PTAB
found that the parent '548 patent disclosed both a long and
short version of the convertible dress, and that the exact same
figure of the longer dress from the parent patent (figure 5) was
included in the '723 patent (figure 1). Thus, because the
parent '548 patent disclosed the "longer dress"
claimed in the new figures in the '723 patent, the PTAB held
that the '723 patent could rely on the pre-March 16, 2013
effective filing date and denied institution of the post-grant
David's Bridal, Inc. v. Jenny Yoo Collection, Inc.,
PGR2016-00041 (PTAB Feb. 22, 2017) (Paper No. 9).
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