On March 6, 2024, in a case captioned In re Samuels, No. 22-1121, the Court of Appeals for the Federal Circuit affirmed the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) decision affirming a final anticipation rejection of a design patent claim to a “Waffle having a Waffle Pattern Side and a Smooth Side” in view of a prior art reference alleged to lack complete views.

In addition to this rather conspicuous title and claim language, the figures clearly depicted the patterned and flat sides.

Design patent anticipation is a question of fact and involves applying the ordinary observer test. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38 (Fed. Cir. 2009). Under that test, a prior-art design anticipates the claimed design “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, tow designs are substantially the same if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other. Id. at 1239 (quoting Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871).

Appellant argued that the cited reference does not show a full bottom view, comparable to FIG. 3 of the claimed design.

Anticipation Without All Views

The Board had found that the video discloses the cited prior art waffle has a flat inner surface, identifying (1) a side view of the waffle sandwich suggesting the inner surface of the waffle is flat, (2) another view showing that the eff filling of the waffle sandwich is flat, and (yet another view showing a partially open waffle sandwich with a flat inner surface of the waffle visible.

Appellant argued that USPTO admitted it relied inherency doctrine and that “[i]nherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002).

The Federal Circuit found no reason to disturb the Board’s findings of fact and substantial evidence which supports the Board’s determination. The Federal Circuit found that video quality notwithstanding, the Board identified specific views from the video from which it was able to discern the features that appellants argued were absent from the prior art.

This decision stands in contrast to the Federal Circuit’s recent decision, by an entirely different 3 judge panel, affirming a PTAB Post Grant Review (PGR) final written decision upholding design patent validity.

On January 20, 2023, the Federal Circuit affirmed appeals of two final written decisions on Inter Partes Review (IPR) and Post Grant Review (PGR) upholding design patent validity over anticipation and obviousness challenges between LKQ, an auto parts manufacturer, as petitioner against the auto manufacturer GM and its design patents directed to auto parts.

The longstanding design patent obviousness analysis utilized in those cases is now under scrutiny, with the Federal Circuit granting LKQ’s request for rehearing en banc, with oral argument held February 5, 2024.

The Federal Circuit’s decision in that case about whether the so-called Rosen-Durling obviousness analysis can properly require a “primary reference” with “basically the same” design characteristics in view of the flexibility called for in the Supreme Court’s KSR v. Teleflex utility patent obviousness holding from 2007 is hotly anticipated. Meanwhile, the anticipation invalidity challenge from that case was not appealed but is relevant again.

The PTAB had determined that the “ordinary observer” would include both retail consumers who purchased replacement skid bars and front fenders, emphasizing that the design patent claimed specific components or articles, not a vehicle in total.

The Federal Circuit agreed that the PTAB’s finding that the ordinary observer would include both retail consumers purchasing replacement parts and commercial replacement part buyers was supported by substantial evidence, noting that LKQ itself is in the business of selling individual replacement parts, and the patented designs are to specific vehicle parts, not the design of a whole vehicle.

Applying that understanding of the ordinary observer, the PTAB concluded in the PGR that although there were some similarities, the references did not show certain aspects of the claimed design (e.g., bottom or sides) and what was visible from the provided images created a different overall impression. The PTAB noted that LKQ did not produce images of the alleged primary reference that would enable a persuasive comparison with the corresponding views of the invention; the provided views do not show a sufficient bottom view to allow comparison and show obscured sides. The Board was not persuaded that an ordinary observer would be deceived into purchasing the cited reference, supposing it to be the patented design and so, declined anticipation.

The Federal Circuit agreed that the references submitted by LKQ do not sufficiently show certain aspects of its design, e.g., the bottom or the sides, to enable comparison with the claimed design, noted that LKQ’s expert admits that the available perspective views are obscured or not shown in the references they provided, and found that this impedes a comparison of the claimed design to the reference by any ordinary observer and is alone sufficient to support a finding of no anticipation.

Neither decision is precedential, so determining whether a cited prior art reference sufficiently illustrates the claimed sign is an important fact issue for applicants and appellants to frame. A footnote in Samuels notes that the Board evaluated the evidence of record under the “substantial evidence” standard of review originating from the Administrative Procedure Act, not the Board’s standard for evaluating examiner actions. The Court noted that the Board’s own precedential decision counsels review of “the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue,” quoting Ex Parte Frye, 94 U.S.P.Q. 2d 1072, 1075 (B.P.A.I. 2010).

Conception and Reduction to Practice versus Effective Priority

Also in Samuels, Appellants argued that the design patent application was constructively reduced to practice prior to the publication date of the cited waffle video. However, the Federal Circuit pointed out that the design patent application was filed September 21, 2016, well after the AIA first-to-file regime took effect on March 16, 2013. The Opinion notes that even if Appellants were able to show an earlier conception or an earlier reduction to practice, it would be irrelevant to the post-AIA anticipation analysis of whether the video was described in the publicly available video before the effective filing date of the claimed invention. Appellants do not content that the design patent application is entitled to the benefit of an earlier filing date, rather they ague that disclosure of an asymmetrical cooking apparatus in a related utility patent application provides evidence that the claimed design in the design patent application was constructively reduced to practice before the publication date of the cited prior art. However, the utility patent publication does not show either the inner or outer surface of the actual waffle produced, “certainly does not show the waffle in question,” and the design patent makes no priority claim to the utility patent application. Appellants utility application rejection was also appealed to the Board and the Federal Circuit, which affirmed the Examiner’s obviousness rejection.

Effective Designs

It isn’t often that a Board decision on a design patent rejection is taken up by the Federal Circuit. The few notable examples include the Federal Circuit’s decision in the case In re Owens, on the issue of written description support for design patent claim amendment boundaries, and in the case In re SurgiSil, where the Court limited design patent anticipation to analogous art.

Coincidentally, the next Board decision on appeal to the Federal Circuit relates to the issue of design patent priority to a utility patent disclosure.

We will report on this case as it develops.

For more information, contact the author below:

George Raynal, Principal

george.raynal@designlawgroup.com

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