On June 30th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC.[1] LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM’s design patent for a front fender design,[2] arguing it was anticipated by a prior art reference (Lain) and obvious over Lian alone or in combination with a brochure for the 2010 Hyundai Tucson. The PTAB ultimately affirmed the patentability of GM’s claimed design, prompting LKQ to appeal to the Federal Circuit. On appeal, LKQ argued that the PTAB’s obviousness analysis utilized tests overruled by the Supreme Court’s decision in KSR, and, as such, the obviousness standard for design patents should mirror the standard for utility patents set forth in KSR. However, a three-judge panel of the Federal Circuit disagreed, noting in relevant part that “it is not clear the Supreme Court has overruled” the tests for obviousness applied by the PTAB.Continue Reading Federal Circuit to Decide Whether KSR Applies to Design Patents

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On February 9, 2023 the PTAB issued a Final Written Decision in Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC, determining the design claim of US D930,702 (“D’702”) unpatentable, as both anticipated and obvious based on a single reference, Reddy, US 2018/0260806 A1 (“Reddy”). See Consolidated PGR2022-00031 and PGR2022-00045, Paper No. 34. D’702 claimed a display screen having an animated graphical user interface (GUI).Continue Reading PTAB Invalidates GUI, but Leaves Obviousness Test Gooey

No design patents for you!--Extension of Fox Factory Complicates Reliance on Indicia of Non-ObviousnessIn Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit reversed the PTAB’s finding that Gamon’s design patents on gravity-fed displays for soup were non-obvious. 10 F.4th 1268 (Fed. Cir. Aug. 19, 2021) (“Gamon II”). As the Supreme Court denied Gamon’s petition for writ of certiorari (in which Gamon argued it did not have an opportunity to request review of the PTAB’s decision by a properly-appointed Director of the USPTO), here’s a closer look at the Federal Circuit’s opinion.
Continue Reading No design patents for you!–Extension of Fox Factory Complicates Reliance on Indicia of Non-Obviousness

PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

In Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. Sept. 26, 2019), the Federal Circuit vacated the PTAB’s decision (discussed here) upholding the validity of Gamon’s design patent D621,645 (“the ‘645 patent”) for soup can display racks.  The court determined that substantial evidence did not support the Board’s finding that Linz is not a proper primary reference for a design patent obviousness challenge. 
Continue Reading PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

Update: On September 26, 2019, the court vacated and remanded the PTAB’s decision.

Next trip to the grocery store, stop in the canned soup aisle and take a closer look at how the canned soups are displayed on the shelves. You may notice a gravity feed dispenser with a label area. Between 2002 and 2009, Petitioner Campbell Soup Co. purchased $31 million of Patent Owner Gamon’s gravity feed display racks protected by design patent D621,645 (“the ‘645 patent”).
Continue Reading Contour of Soup Can Saves Gravity Feed Display Design Patent

Digital Billboard (12-6-16 Post)Galaxia Electronics Co., Ltd. v. Revolution Display, LLC, PGR2016-00021, Galaxia sought post-grant review of Revolution’s U.S. Design Patent No. D736,750, entitled “Modular Video Support Frame Member.” The patented design was directed to a support frame for video monitors used in large-scale LED video image displays, such as those used on-stage at rock concerts, on the sides of buildings, or at amusement parks.  Galaxia sought cancellation of the claimed design on grounds of non-joinder of proper inventors, and lack of ornamentality under 35 U.S.C. § 171.  On November 2, 2016, the PTAB denied institution of the PGR. 
Continue Reading It All Depends On How You Frame It

Less than one percent of petitions for inter partes review (“IPR”) involve design patents.  This is not surprising, as over 9,000,000 United States utility patents have issued compared to only about 735,000 design patents.  Several recent developments in design patent law, however, may narrow the gap as applicants look for less expensive ways to enhance their portfolios. Design Patent V2 For example, U.S. design patents filed on or after May 13, 2015 enjoy a 15-year term with no maintenance fees.  And U.S. design patent applicants may now file their design applications under the Hague Agreement, which publish six months after filing.
Continue Reading PTAB Provides Roadmap for Petitioning for IPR of Design Patents