Inter partes review (“IPR”) proceedings often arise in the context of high-stakes patent infringement litigation, and district courts frequently stay litigation pending parallel IPRs, which may fully resolve a...more
The most persuasive IPR petitions offer fresh unpatentability theories never considered before. But petitions that simply repackage old issues often don’t gain traction. So, when you’re citing prior art that was before the...more
While design patents follow many of the same rules as utility patents, the application of those rules in determining design patent infringement can be less than straightforward. But a recent Initial Determination by ALJ...more
The PTAB’s recent decision instituting post-grant review of a design patent in Man Wah Holdings Ltd. v. Raffel provides interesting perspectives on how design patent invalidity theories work. This decision highlights the...more
On July 23, 2019, the U.S. Court of Appeals for the Federal Circuit released its decision affirming summary judgment that the asserted design patents were not invalid for non-ornamentality under 35 U.S.C. § 171, and rejecting...more
7/30/2019
/ Appeals ,
Auto Parts ,
Automotive Industry ,
Design Patent ,
Ford Motor ,
Functionality ,
Ornamental Design ,
Patent Exhaustion ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Prosecution History Estoppel ,
Summary Judgment
On October 23, 2018, the PTAB found unpatentable B/E Aerospace’s U.S. Design Patent No. D764,031 (“’031 patent”). C&D Zodiac, Inc. v. B/E Aerospace, Inc., PGR2017-00019, Paper 37 (PTAB Oct. 23, 2018). The ’031 patent...more
11/13/2018
/ America Invents Act ,
Design Patent ,
Final Written Decisions ,
On-Sale Bar ,
Patent Applications ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Priority Patent Claims ,
Section 102 ,
Section 112 ,
Utility Patents
This win is one of the most significant in U.S. history for a design patent case.
Vacuum and appliance manufacturer Dyson voluntarily dismissed its appeal to the U.S. Court of Appeals for the Federal Circuit on July 30,...more
The decision in HVLP02 LLC v. Oxygen Frog turned on whether or not a YouTube video could qualify as a "printed publication," and therefore constitute prior art for patent purposes. As courts tend to assign the term "printed...more
7/25/2018
/ Accessibility Rules ,
America Invents Act ,
Intellectual Property Protection ,
MPEP ,
Patent-Eligible Subject Matter ,
Patents ,
Printed Publications ,
Prior Art ,
Section 102 ,
USPTO ,
Video Recordings ,
YouTube
Like utility patents, design patent validity can be challenged in inter partes review (“IPR”) proceedings. Nonetheless, the Patent Trial and Appeal Board (“PTAB” or the “Board”) tends to reach different results in design...more
U.S. patent laws allow for the disgorgement of the "total profits" earned by a design patent infringer deemed to have applied the "patented design" to "any article of manufacture." The disgorged profits historically were...more
6/28/2018
/ 35 U.S.C. § 284 ,
35 U.S.C. § 289 ,
Apple v Samsung ,
Article of Manufacture ,
Calculation of Damages ,
Component Parts Doctrine ,
Department of Justice (DOJ) ,
Design Patent ,
Patent Infringement ,
Patents ,
Remand ,
SCOTUS
On May 24, 2018, a jury in the U.S. District Court for the Northern District of California awarded Apple over $533 million in damages for Samsung's infringement of three Apple design patents covering portions of Apple's...more
5/30/2018
/ Apple ,
Apple v Samsung ,
Article of Manufacture ,
Damages ,
Design Patent ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Samsung ,
SCOTUS ,
Smartphones ,
Special Damages
An expert asserting that a patent claim reciting different features than the prior art is nonetheless “equivalent” to the prior art must address and account for the recited limitations head-on, or otherwise lose persuasive...more
2/19/2018
/ Appeals ,
Claim Construction ,
Evidentiary Hearings ,
Expert Testimony ,
Obviousness ,
Patent Assertion Entities ,
Patent Trial and Appeal Board ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Software Patents
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...more
2/7/2018
/ America Invents Act ,
Appeals ,
Design Patent ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 101 ,
USPTO ,
Utility Patents
In district courts’ claim construction analyses, intrinsic evidence is of paramount importance. Although extrinsic evidence “may be useful to the court,” it is considered “less significant” than the claim language,...more
In the wake of the high-profile dispute in Apple v. Samsung, design patent procurement and enforcement activity has increased significantly. But practitioners may not appreciate that design patent validity can be attacked...more
On June 23, 2017, the Federal Circuit held in NantKwest v. Matal that patent applicants seeking review of a decision from the United States Patent and Trademark Office ("PTO") to the district court must pay the PTO's legal...more