As a result of the high-profile Apple vs. Samsung dispute, the activity of obtaining and enforcing design patents has increased significantly. But practitioners may not understand that the validity of a design patent can be challenged using inter partes revision (DPI) and post-grant revision (RPG) procedures. As of July 2017, the PTAB had received 42 IPR and PGR applications involving design patents, with an overall institution rate of around 40%. Eight design patent IPRs led to final written decisions, with 6 determinations of patentability (75%).
The validity of design patents can be challenged in the same way as utility patents, because design patents are subject to similar validity rules. IPRs allow an applicant to challenge validity using only patents and printed publications. Applicants have a broader arsenal of PGRs, including defenses such as the Undefined, Empowerment, and Written Description which are available under 35 USC 112, as well as design patent-specific defenses like lack of ornamentation under 35 USC 171.
The IPR and RPG proceedings offer certain procedural advantages to parties contesting the validity of a patent. For example, disability only needs to be demonstrated by a preponderance of evidence, as opposed to the clear and persuasive standard that applies in federal courts. There are also potential drawbacks, such as the estoppel effects of the PTAB’s final written decision.
Interestingly, there are potential strategic advantages to seeking out IPRs or GARs, even in cases where the PTAB denies the institution or considers the disputed patents to be valid. For example, the PTAB interprets the claimed design of a contested patent in its decision whether or not to initiate an IPR or GAR proceeding, as well as its final written decision. In doing so, the PTAB can influence functional aspects of the design or address technical issues such as claimed object (solid lines) versus unclaimed object (broken lines). As another example, the PTAB may take the priority of the claimed design into account in determining whether the claimed prior art meets applicable legal requirements. Such interpretations of claims and priority determinations could be relevant for parallel litigation in federal courts to frame other defenses, such as non-infringement.