United States: The PTAB Chats Designs: And Now, For Something Completely Different

On February 1, the PTAB held its first "Boardside Chat" of 2018, which featured three judges discussing appeals and AIA trial proceedings for design patents.  Not only are such proceedings less common for design patents than for their utility counterparts, but they also invoke some different statutes, case law, and standards that may seem foreign to those who are more used to working with utility patents.

Perhaps the most conspicuous difference is the subject matter.  Design patents are governed by 35 U.S.C. § 171, which provides that only a "new, original and ornamental design for an article of manufacture" is patentable.  Thus, while their utility counterparts must be "new and useful" pursuant to § 101, pure functionality is a bar to design patent protection under § 171.  Aside from subject matter, designs are subject to the same statutory requirements as utility patents—novelty (§ 102), non-obviousness (§ 103), and even written description (§ 112).  But how those statutes are applied to designs is much different.

For example, the PTAB's chat detailed the obviousness standard for design patents established by In re Rosen (673 F.2d 388 (CCPA 1982)), which is significantly different than the obviousness standard for utility patents.  In Rosen, the CCPA (the Federal Circuit's predecessor) overturned a USPTO rejection of the table design shown on the left, in view of the prior art shown on the right:

In evaluating the obviousness rejection, the CCPA applied what was at the time a new standard – whether the design would have been obvious to a designer of ordinary skill of the articles involved – now referred to as the "ordinary designer" standard.  Additionally, the CCPA established that a primary prior art reference in an obviousness analysis must have "basically the same" design characteristics as the claimed design.  As such, under current CCPA and Federal Circuit law, a design cannot be rendered obvious by picking and choosing elements from prior art references, as sometimes can be done for utility patents.  In Rosen, none of the prior art had basically the same design characteristics as the claimed design; indeed, modifying D240,185 to achieve the claimed table design would "destroy fundamental characteristics" of its design.

The PTAB also explained some cases where they or the Federal Circuit evaluated whether the primary prior art reference had the right design characteristics to qualify as a primary, or "Rosen reference."  One example was an inter partes reexamination of D467,247 to Pentz (BPAI July 31, 2009, 2009-002973) where the claimed data card design (on the left) was nonobvious because the prior art (on the right, of which Keller and Drexler were proposed as primary references) did not illustrate a data card with both a magnetic strip and an aperture, so there was no proper Rosen reference:

This is not to say the PTAB always finds that designs are nonobvious.  The PTAB also discussed In re Borden, 90 F.3d 1570 (Fed. Cir. 1996), which involved the following twin neck dispensing container design (on the left) that was obvious in view of the prior art (on the right, of which Bettix was a proper Rosen reference):

The Federal Circuit identified similarities between the claimed design and the Rosen reference (Bettix) including an oval-shaped main chamber with a cylindrical spout, a small measuring chamber suspended by a thin laminate above the main chamber and adjacent to the cylindrical spout, and a filling tube running along the spine of the container and connecting the two chambers.  The Federal Circuit found differences in the shape of the small chambers of the two designs, but that such features were in Fresh'n Tea and Costa and properly could be combined with Bettix.

Another key aspect of the PTAB's chat was their discussion of the "ordinary designer" standard and the value added by experts in that regard.  The PTAB noted that in the few design IPRs and PGRs that they have handled, very few have included expert declarations.  Such expert declarations have been crucial evidence time and again in PTAB proceedings for utility patents.  The PTAB recommended that practitioners introduce expert testimony as to the qualifications and abilities of an "ordinary designer" for a particular design, and what would be that ordinary designer's view of the obviousness, or nonobviousness of a claimed design.

Additionally, the PTAB noted that the vast majority of the invalidity theories considered involved obviousness, with anticipation arising only rarely, and functionality under § 171 even more rarely.  The PTAB advised that practitioners wishing to invalidate a design patent as obvious (e.g., in an IPR or PGR) may consider presenting detailed arguments as to why the primary reference is proper under the Rosen standard, e.g., to specifically explain each possible similarity between the claimed design and the primary reference, both as a whole and on a feature-by-feature level.  Conversely, practitioners wishing to avoid a finding of obviousness may consider elaborately explaining all of the differences between the claimed design and the primary reference to support an argument that there is no proper Rosen reference.

Other Boardside Chats are posted online, and address subjects ranging from evidence to PTAB statistics.

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
Jaime D. Choi Ph.D.
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Related Articles
 
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions