PTAB 2019 Year in Review: Analysis and Trends: Design Patents Resist Attacks in Post-Grant Procedures | Sterne, Kessler, Goldstein & Fox PLLC



While petitioners succeed at least 60% of the time in getting the PTAB to initiate a patent lawsuit in the areas of biotechnology, chemistry, electrical / computer science, mechanics and business methods, this is not the case for design patents. Since September 2016, the establishment rate of the PTAB for applications filed against design patents has remained well below 50%. To date, the institutional rate is only 41%. This is based on a total of 46 establishment decisions (19 grants and 27 refusals).

Why do design patents escape post-grant challenges by a much wider margin than their utility counterparts? The rate of design patent institutions reflects the fact that applicants fail about 60% of the time when challenging design patents based on prior art. As noted below, the legal standards governing anticipation and obviousness in the case of design patents are nuanced, and the rights themselves prove resistant to prior art challenges.

From an app perspective, that’s good news. Design patents are becoming an increasingly popular way to protect the ornamental appearance of products, from graphical user interfaces to auto parts, and to ward off potential competitors and those who are likely to copy or counterfeit. The possibility of recouping the profits from the infringer also makes design patents a particularly powerful threat. Combined with their apparent resistance to challenges before the PTAB, as will be discussed in detail below, design patents represent a powerful tool in an application arsenal.

Why is securing institution denial at PTAB important for enforcement purposes? A defendant’s unsuccessful attempt to initiate post-grant proceedings raises the specter of a stay pending review by the PTAB and often dampens confidence in a defendant’s claims of invalidity. Securing the denial of an institution could also weigh in favor of granting a preliminary injunction. And it goes without saying that gaining a quick victory before the PTAB can help promote the settlement.

Here we summarize the status of PTAB design patent challenges from 2019 and provide an analysis of why design patents resist attack.

Design patents are the only area of ​​technology with an institution rate below 50%

As shown in the graph below,1 design patents have maintained an institution rate well below 50%, which is in stark contrast to all other areas of technology. A more granular analysis of the PTAB institution’s decision making for design patents reveals that this is due to applicants failing to sufficiently substantiate anticipation in 50% of cases and failing to provide sufficient justification for prior art. failed to sufficiently substantiate the obvious 60% of the time. Obvious grounds are more common than anticipation grounds. Anticipation grounds were invoked in 22 motions, obvious grounds in 43.

These figures are no longer anecdotal, they reveal a significant and sustained trend: that design patents are difficult to invalidate before PTAB. The trend is even more significant when one takes into account that the institutional standard is easier to meet than the post-trial burden of proof. To obtain the institution, the applicant need only show “a reasonable probability” of winning. 35 USC § 314 (a). Thus, the PTAB finds that the clear majority of the applicants do not even demonstrate a reasonable probability of proving patentability.

One reason is that the standards for design patents are specialized and nuanced.

The validity challenges described above are associated with standards specific to design patent law. The standard of anticipation of a design patent is called the “ordinary observer” test, which provides that a design claim is not patentable if “in the eyes of an ordinary observer, granting Attention that a buyer usually pays, two designs are substantially alike, if the resemblance is such as to mislead such an observer into purchasing one assuming it is the other.2 Applicants have found it difficult to meet this standard because the PTAB often finds that the differences between the state of the art and the claim are significant and not insignificant.3

The standard of obviousness of a design patent is “whether the claimed design would have been obvious to a draftsman of ordinary skill who designs articles of the type concerned”.4 This analysis involves a two-step survey: (1) “You have to find a single reference. . . whose design characteristics are basically the same as the claimed design “, often referred to as a Rosen reference after a seminal case of that name, and (2)”[o]Once this primary reference is found, other references can be used to modify it to create a design that has the same overall visual appearance as the claimed design.5 It is very common for petitioners to fail at the first step.6 This trend continued in 2019, with two of the three petitions filed against design patents being denied because the petitioner failed to submit an adequate Rosen citation, i.e. a primary citation that essentially creates the same visual impression as the claimed design.7

More precisely, in Levitation Arts, Inc. v Flyte LLC, PGR2018-00073, a post-grant procedure involving a design request for a levitating bulb and its base, the PTAB ruled: “[W] e are not persuaded that the petitioner sufficiently shows that [the asserted primary reference] is a good Rosen reference. The petitioner presents a side-by-side comparison which reveals significant differences between [the primary reference’s] design and design claimed. Likewise, in Man Wah Holdings Limited v Raffel Systems, LLC, IPR2019-00530, an DPI involving a design claim for a cup holder, the PTAB ruled: “Since several elements and features that the applicant acknowledges are part of the claimed design are totally absent… we find the assertion unconvincing of the applicant that the differences between the designs are simply minimal. “

Another reason is that design patents seem to withstand the challenges of the prior art well.

While understanding the nuances of these specialized standards is one aspect of the difficulty applicants seem to encounter, that is not all. Perhaps more accurately, the ability of design patents to withstand examination after grant is a reflection of the quality of the initial examination. In general, the PTAB appears to be instituted on the basis of the force of the art, rather than the skill with which applicants make their legal arguments. If this is true for the most part, then the best explanation for the exceptional resistance of design patents to attack seems to be that the design claim is patentable and the Patent Office has done its job thoroughly.

In sum, a significant and sustained trend has emerged that design patents are more likely to survive the challenges of PTAB at the institutional stage. Not only does this trend have strategic implications for patentees, it has a positive impact on the quality of the original examination.

1Source: Sterne Kessler compilation of official statistics from the United States Patent and Trademark Office relating to the Patent Trial and Appeal Board from January 2017 to November 2019.
2Int’l Seaway Trading Corp. vs. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009) (citing Gorham Mfg. Co. v. White, 14 Wall. 511, 81 US 511 (1871)).
3 See, for example, MacSports, Inc. et al v. Idea Nuova, Inc., IPR2018-01006, Document 6 (PTAB 13 November 2018); Campbell Soup Company v. Gamon Plus, Inc., IPR2017-00091, Document 12 (PTAB March 30, 2017); Graco Children’s Products Inc. v. Kolcraft Enterprises, Inc., IPR2016-00810, Document 8 (PTAB September 28, 2016); Aristocrat Technologies, Inc. v. IGT, IPR2016-00767, Document 8 (PTAB September 14, 2016); Medtronic, Inc. v Nuvasive, Inc., IPR2014-00071, Document 7 (PTAB March 21, 2014); ATAS International, Inc. v. Centria, IPR2013-00259, Document 11 (PTAB September 24, 2013).
4Apple, Inc. v Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (citing Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citing In re Rosen, 673 F.2d 388, 391 (CCPA 1982))).
5High Point Design, LLC v Buyers Direct, Inc., 730 F.3d 1301, 1311 (Cir. Fed. 2013).
6See, e.g., Top of Form MacSports, Inc. et al v. Idea Nuova, Inc., IPR2018-01006, Document 6 (PTAB 13 November 2018); Skechers USA, Inc. v Nike, Inc., IPR2016-01043, Document 8 (PTAB November 16, 2016); Aristocrat Technologies, Inc. v. IGT, IPR2016-00767, Document 8 (PTAB September 14, 2016); Premier Gem Corp. et al. vs. Wing Yee Gems et al., IPR2016-00434, Document 9 (PTAB July 5, 2016); Vitro Packaging, LLC v Saverglass, Inc., IPR2015-00947, Document 13 (PTAB September 29, 2015); Dorman Products, Inc. v Paccar, Inc., IPR2014-00542, -00555, article 10 (PTAB September 5, 2014); Medtronic, Inc. v Nuvasive, Inc., IPR2014-00071, Document 7 (PTAB March 21, 2014); ATAS International, Inc. v. Centria, IPR2013-00259, Document 11 (PTAB September 24, 2013).
7Man Wah Holdings Limited v Raffel Systems, LLC, IPR2019-00530, Paper 7 at 15, 18 (PTAB July 26, 2019) (involving a design claim for a cup holder); Levitation Arts, Inc. v. Flyte LLC, PGR2018-00073, Paper 14 at 21 (PTAB January 17, 2019) (involving a design claim for a design claim for a levitating bulb and its base).

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