United States: Recent Design Decisions Provide Insight For Design Patent Prosecution

Three recent decisions relating to design patents provide useful insights into design patent prosecution.  First, the PTAB recently instituted two IPR petitions directed to design patents, bringing the total number of instituted design petitions to nine.  In addition, the Central District of California recently found a design patent directed to an interlocking floor mat to be invalid as obvious on summary judgment.

Skechers USA, Inc. v. Nike, Inc., IPR2017-00620, -00621

In a November 2016 post, we discussed a series of petitions Skechers filed against Nike involving design patents directed to athletic shoes.  At that time, all eight of Skecher's petitions were denied institution by the Patent Trial and Appeal Board (PTAB).  In a new series of petitions filed on different grounds, Skechers once again sought to invalidate the same Nike design patents.  This time around, however, the PTAB granted institution on two of Skechers' petitions, IPR2017-00620 and IPR2017-00621, and denied institution on the remaining five.

Skechers' petitions for IPR2017-00620 and IPR2017-00621 involved design patents D723,783 and D723,781, respectively, which are both directed to the design of the "midsole" (Fig. 1 of '783 and '781 patents), "outsole" (Fig. 1 of '783 and '781 patents), and heel (Fig. 3 of '783 and '781 patents) of an athletic shoe.

Nike also urged the PTAB to exercise its discretion to deny a later petition under 35 U.S.C. § 314(a) or to deny institution under 35 U.S.C. § 325(d) because several of the references were submitted to the Patent and Trademark Office (PTO) during prosecution.  For its § 314(a) argument, Nike argued that all seven of the Nvidia factors weighed against institution, including that the two primary references relied on by Skechers in the petition were brought before the Examiner during prosecution.  In response, the PTAB considered only whether the references had been brought forward during a previous IPR proceeding,[3] which they had not.  Further, the PTAB did not find Nike's § 325(d) argument persuasive, because Nike "did not direct [the PTAB's] attention to any substantive discussion of the identified references by either the examiner or the applicant during prosecution."[4]  As such, the PTAB did not find denial of institution to be warranted on these grounds.Skechers claimed that the designs were obvious over multiple prior art references.  Nike attempted to swear behind two of the references, CN1388 and RCD 0005, because they were published after the invention date of both design patents.  To support its argument, Nike submitted a declaration from Mark Miner, the named inventor, that contained three attached documents corroborating Miner's statement that "the claimed design was conceived and/or reduced to practice in the U.S. on or before June 22, 2011"—a date prior to the two prior art references being published.  The PTAB found that the Miner Declaration was "insufficient evidence to support [Nike's] attempt to establish an earlier priority date for the [design patents]."[1]  In particular, the three attached documents failed to illustrate the alleged date of conception and/or reduction to practice.  Therefore, the PTAB found the CN1388 and RCD 0005 references to be classified as prior art.[2]

It remains to be seen whether the '783 and '781 patents will be found unpatentable. Final Written Decisions on these two IPRs are expected in mid-2018.

Parallax Group Int'l, LLC v. Incstores LLC (C.D. Cal. June 30, 2017)[5]

Parallax brought an infringement action against Incstores in the Central District of California, asserting the D543,764 patent ("the '764 patent"), which was directed to a design for interlocking floor mats.  According to the '764 patent's specification, the top (Fig. 1) and bottom (Fig. 2) sides of the floor mat were different colors.

Incstores moved for summary judgment, claiming the '764 patent was invalid as anticipated and obvious.  In its anticipation analysis, the court looked to whether the '764 design was "identical in all material respects" to the EVAHWCG reference.[6]  The court also made a passing reference to the Federal Circuit's International Seaway decision from 2009, noting that the ordinary observer test must logically be the sole test for anticipation. Although the EVAHWCG reference was "somewhat blurry" and it "appeared to have more 'teeth' at the boundaries than the '764 patent," the court found that discrepancies between the corners of the two designs (e.g., smaller corner tooth as compared to side teeth) left a genuine issue of material fact that could not be decided through summary judgment.[7]

For obviousness, the court found that, despite minor differences, the EVAHWGC reference had "design characteristics . . . [that were] basically the same as the claimed design" of the '764 patent.[8]  The mats were both found to have a square perimeter made up of similarly configured teeth and dual layering and coloring.  Parallax argued that differences in the spacing and sizing of the teeth distinguished its design from that of the EVAHWGC reference. The court noted that it would have been obvious to arrive at the same number of interlocking teeth per side (10 in the case of the '764 patent) because the prior art references taught floor mats having 3­–15 teeth per side.  Further, any differences in tooth shape were found to be de minimis by the court because the overall visual impression of the floor mat would not differ.[9]

Parallax attempted to fend off the obviousness finding by arguing the existence of secondary considerations, such as commercial success.  The court, however, did not find a sufficient nexus between the commercial success and alleged merits of the claimed design to defeat the obviousness finding.[10]  Thus, the court found the claimed design of the '764 patent obvious and granted Incstores's Motion for Summary Judgment of Invalidity.

Lessons Learned

The institution decisions in the Skechers case give insight into how events that happen during prosecution may affect proceedings before the PTAB.  For 35 U.S.C. § 325(d) to apply, it appears that the patent owner must at least show that a reference cited in a petition for IPR was substantively discussed during prosecution by either the examiner or the applicant.

From the Parallax decision, it is interesting to note that the court appears to have considered two different standards for anticipation.  The court noted the "identical in all material respects" standard from Hupp v. Siroflex, as well as the "ordinary observer" standard from International Seaway.  Both opinions were panel decisions of the Federal Circuit, and thus there remains some ambiguity about which standard should govern. Although the MPEP mentions both tests, recently, examiners in the design technology center appear to have applied the "ordinary observer" standard in favor of the "identical in all material respects" test.  Cases like the Parallax decision suggest that both standards may continue to be relevant during prosecution.

Footnotes

[1] Institution Decision, IPR2017-00620, Paper 13 at 10; see also Institution Decision, IPR2017-00621, Paper 13 at 11.

[2] Id. at 11; see also IPR2017-00621, Paper 13 at 12.

[3] Id. at 12; see also IPR2017-00621, Paper 13 at 13.

[4] Id.; see also IPR2017-00621, Paper 13 at 13.

[5] Order Regarding Defendant's Motion for Summary Judgment of Invalidity, Parallax Group Int'l, LLC v. Incstores LLC, No. 8:-cv-00929 (C.D. Cal. June 30, 2017).

[6] Id. at 7.

[7] Id. at 7-8.

[8] Id. at 9.

[9] Id.

[10] Id. at 10-11.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
25 Sep 2017, Speaking Engagement, New York, United States

Finnegan partner Jason Stach will participate in the panel discussion “The Final Written Decision, Rehearing & Appeals to the CAFC” at Practising Law Institute’s program, USPTO Post-Grant Patent Trials.

26 Sep 2017, Speaking Engagement, New Orleans, United States

Finnegan attorneys Beth Ferrill and Clara Jimenez will participate in the panel discussion “Don’t Leave Valuable IP Unprotected - Design Patents in the Wearable Market” at the Industrial Fabrics Association International Expo.

27 Sep 2017, Seminar, Louisiana, United States

Finnegan is a Silver sponsor of the 13th annual Corporate Counsel Women of Color Career Strategies Conference.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.