On Tuesday, July 2, 2019, the Court of Appeals for the Federal Circuit affirmed two Inter Partes Review final written decisions which had invalidated two design patents as obvious under 35 U.S.C. 103. The PTAB determined that the patent owner had not antedated the prior art with evidence of its prior conception, diligence and reduction to practice, and the Federal Circuit agreed. The decision comes approximately seven months after oral argument on December 6, 2018.
Kolcraft Enter., Inc. v. Graco Children’s Prods., Inc.
2018-1259 (IPR 2016-00816)
2018-1260 (IPR2016-00826)
The patent owner did not argue that the patented designs are not obvious in view of the cited ‘393 reference, but rather alleged prior conception, diligence and reduction to practice of the ‘970 and ‘231 designs. The patent owner filed an inventor declaration which alleged conception prior to the filing date of the ‘393 reference, but neither the inventor declaration nor its exhibits included specific dates of conception. In deposition testimony, the inventor based a specific date of conception, later un-redacted from the declaration, on metadata of the exhibits. However, computer files of the photos containing the metadata proving the purported dates of conception were not filed with the PTAB. The Court cited case law holding that inventor testimony must be corroborated with evidence from which it can independently discern prior conception, and concluded that the Board finding was supported by substantial evidence.
Design Patent IPR Outcomes
To date, 39 requests for Inter Partes Review of design patents have been filed.
• One institution decision is pending;
• Of the 38, 42% have been instituted;
• All of the 16 instituted proceedings have been decided; and
• 69% (11) resulted in finding the patented design invalid.
Design Patent IPR Appeals
Seven of the final written decisions (in four separate controversies between parties) have been appealed to the Federal Circuit.
• Two controversies involve two patents each;
• Three of the appealed decisions found the claimed design unpatentable;
• Four of the appealed decisions found the claimed design patentable;
• Five of the seven appeals have been decided and all affirmed;
• Three decisions affirmed without opinion (Rule 36);
• Two decisions involve the same parties and patent, which went through IPR twice;
• Two of the decisions, in one proceeding, are pending.
Other Pending Design Patent Appeals
In addition to the pending IPR decisions noted above (Campbell Soup Co. v. Gamon Plus, Inc., 18-2029 & 18-2030, argued May 6, 2019), there are several other design patent appeals of interest:
In January 2019, the Federal Circuit held argument in Automotive Body Parts Ass’n v. Ford Global Tech., LLC (18-1613) as to whether the district court improperly denied ABPA’s Motion for Declaratory Judgment that Ford’s design patents for car hoods and headlights are invalid for lack of ornamentality.
In March 2019, the Court held argument in Hafco Foundry and Mach. Co., Inc. v. GMS Mine Repair and Maint., Inc. (18-1904) following the jury’s finding of infringement.
In May 2019, the Court held argument in Curver Luxembourg, SARL v. Home Expressions Inc. (18-2214) regarding the district court’s dismissal of patentee’s infringement claim against defendant’s basket product where during the prosecution, in response to an Office action of a type supposed to be limited to “formal matters,” the title and claim of the asserted design patent were amended from “furniture, part of” to “pattern for a chair.”
Argument is yet to be scheduled for Columbia Sportswear v. Seirus Innovative Accessories (18-1329) regarding the district court’s grant of summary judgment finding infringement of a design patent for “heat reflective material” by defendant’s glove products.
Briefing is scheduled in Lanard Toys Ltd. v. Toys “R” Us, Inc. (19-1781) following the district court’s finding of infringement, with Appellant’s brief due July 17, 2019.
Briefing has not yet been scheduled in Ford Global Tech., LLC v. New World Int’l, Inc. (19-1746) following the jury’s determination that defendant willfully infringed 13 Ford design patents.
Briefing has also not yet been scheduled in Sealy Technology, LLC v. Simmons Bedding Company (19-1872) involving two design patents held invalid through ex parte reexamination.
George D. Raynal