design patents and ipr: challenging and defending validity...
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Design Patents and IPR: Challenging
and Defending Validity at the PTAB Navigating Prior Art and Obviousness Analyses, Leveraging IPR for Design Patents
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TUESDAY, OCTOBER 18, 2016
Presenting a live 90-minute webinar with interactive Q&A
Elizabeth D. Ferrill, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Mark W. Rygiel, Director, Sterne Kessler Goldstein & Fox, Washington, D.C.
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© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
October 18, 2016
S K G F. C O M
Design Patent PTO Litigation: Statistics, Trends, and Strategies
Mark Rygiel, Esq.
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 5 S K G F. C O M
Agenda
1. Background on Design Patent Challenges
2. Similarities/Differences with Utility Challenges
3. Pre-Trial Trends and Best Practices
4. Post-Institution Considerations
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 6 S K G F. C O M
Design Patent Challenges
• The same PTO Litigation proceedings are available to design
patents as utility patents.
PTO Litigation: Inter partes proceedings created by the America Invents Act
of 2012 for contesting the patentability of issued US patents at the PTAB
(e.g. IPRs, CBMs, and PGRs)
IPR: An inter partes review proceeding
PGR: A post-grant review proceeding
• Ex Parte Reexaminations remain available.
• Some legacy inter partes reexaminations remain pending, but no
new IPX proceedings are available.
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 7 S K G F. C O M
Comparison of the Proceedings
IPR PGR
Field Any Any
Grounds
Patents and printed
publications under
102 & 103
101, 112, and all 102
& 103 prior art
Timing*
Pre-AIA Patents:
Anytime
Post-AIA Patents:
Later of: 9 mos after
issue or re-issue,
termination of PGRs
Pre-AIA Patents:
Not available
Post-AIA Patents:
Must file within 9 mos
of issue
Standard Reasonable likelihood
that a claim is invalid
More likely than not
that a claim is invalid
* Assuming no Petitioner filing bars (e.g. civil action bar or 1-year bar) apply
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 8 S K G F. C O M
PTO Litigation Timeline
Petition Filed
PO Preliminary Response
Decision on
Petition
PO Response & Motion to
Amend
Petitioner Reply & Opposition
Oral Hearing
Final Written Decision PO Reply
3 month no more than 3 mos
2-3 months 2-3 months 1 month 1-2 mos
PO Discovery
Period
PO Discovery
Period
Petitioner Discovery
Period
“Trial” Phase: Must be completed within 12 mos (18 mos in exceptional circumstances)
Motions To
Exclude
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 9 S K G F. C O M
Design Patent Challenges
• Including non-AIA proceedings, there is generally a rise in post-
grant design patent challenges:
4 5
3 4
5
17
4
9
7
3
8 8 7
12
3
19
13
7
9 10
11
20
9 8
15
0
5
10
15
20
25
Design Patent Post-Grant Challenges By Year (through June 2016)
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 10 S K G F. C O M
0
2
4
6
8
10
12
14
16
2012 2013 2014 2015 2016
1
5 4
3
15
Design Patent PTO Litigation
• To date, there have been 28 design patent proceedings since adoption of the AIA
(26 IPRs and 2 PGRs).
• Design patent proceedings are less than 1% of total PTO litigation.
Design PTO Litigation per year
IPR
PGR
2
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 11 S K G F. C O M
Similar or Different?
• Big Picture: many believe PTO litigation favors the Petitioner. True
for designs?
- To date, only 21 institution decisions and 6 FWDs for designs
- Institution rate (proceeding): Overall (71%); Designs (43%)
- Institution rate (claim): Overall (62%); Designs (43%)*
- FWD claim cancel rate: Overall (81%); Designs (100%)
• ‘Broadest reasonable’ claim interpretation standard applies
• Trial conducted by a technically savvy panel of three judges
- Better understanding of technical arguments and patent law than most
district court judges
- No “Tech Center 2900” of PTAB
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 12 S K G F. C O M
Similar or Different?
• As with utility challenges, co-pending litigation at time of filing is
prevalent
When reexaminations are included, potential design infringers may be more pro-
active than others.
Data relating to litigation stays is consistent with utility cases
• To date, predominately domestic petitioners (89%) for designs
• Designs covering a wide range of technology areas have been
challenged
- Apparel - Medical Equipment
- Furnishings - Food and Beverage Equipment
- Jewelry - Building materials
- Transportation - Tools
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 13 S K G F. C O M
Pre-Trial: Petition
• The Petitioner must provide evidence (i.e. prior art and declarations)
showing all required statutory, rule, and procedural thresholds are met
• Almost no further chance is provided for the Petitioner to remedy
evidentiary gaps
• Not too early to take into account demonstratives and oral arguments
• Design IPR petitioner should be thinking about the same issues: strong
prior art, convincing evidence, proper claim construction and complete
analysis.
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 14 S K G F. C O M
Pre-Trial: Grounds for Rejection
• Anticipation
• 3 design IPR FWDs in which claim canceled under § 102
• The ordinary observer or purchaser
• More difficult with designs?
• IPR2015-01453, Decision Instituting (finding reasonable likelihood of Petitioner prevailing under 102 grounds where construction not limited to a specific color).
• Obviousness
• All 6 design IPR FWDs include claim canceled on § 103 ground
• The designer of ordinary skill
• Number of Grounds
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 15 S K G F. C O M
• § 112
• PGR
• To date, 2 of the 37 PGR petitions filed challenge design patents
• Likely to see an upward trend in filings?
• Challenging the priority claim in IPR
Figure 12A of Hakim '604 Publication Figure 3 of Challenged '465 Patent
• IPR2013-00072 (Child Drinking Cup)
Pre-Trial: Grounds for Rejection
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 16 S K G F. C O M
Pre-Trial: Prior Art
• With designs, Patent Owner’s own prior art is often most
useful.
• Utility patents can be (and have been) used successfully in
design challenges.
See, e.g., IPR2015-00306, FWD canceling claim (claim canceled
as obvious over vanity light shade utility patent reference)
• Non-patent literature
• Was the prior art publically available?
See, e.g., IPR2016-00434 (noting that no evidence was proffered
that cited NPLs were publicly accessible)
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 17 S K G F. C O M
Pre-Trial: Prior Art
• Any use of modified drawings in Petition should be done carefully.
Image from prior art Magnified image in Petition
• See, e.g., IPR2016-00130 (Building Insulation), Decision Instituting (magnified image of prior art reference supported by declaration)
• IPR2013-00259 (Building Panel), Decision Denying Institution (no indication of amount of magnification and no declaratory evidence)
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 18 S K G F. C O M
Pre-Trial: Experts
• In evaluating validity of design patents, two related concepts are
relevant: the “ordinary observer or purchaser” of the patented article
and the “designer of ordinary skill.”
• Expert does not have to be POSA necessarily but POSA must be
properly identified
• Use of expert testimony is critical for Petitioner
IPR2016-00434 (Diamond Jewelry)
IPR2015-00947 (Bottle)
• Identifying the correct expert is also critical
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 19 S K G F. C O M
Pre-Trial: Patent Owner Preliminary Response
• Similar checklist of issues for the design Patent Owner:
- Was the Person of Ordinary Skill in the Art properly identified?
- Are all Real Parties-in-Interest properly identified?
- Are claims properly construed?
- Are all Graham requirements addressed including secondary
considerations?
- Are references properly combined?
- Are the references actually prior art?
- Did Petitioner adequately prove prior art publication date?
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 20 S K G F. C O M
Pre-Trial: Patent Owner Preliminary Response
• Heightened opportunity to attack obviousness analysis
Claim construction
IPR2015-00947, Decision Denying Institution (PTAB not persuaded by
Petitioner’s claim construction “because it focuses on general dimensions,
ratios, and elements common to many bottles.”)
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 21 S K G F. C O M
Pre-Trial: Patent Owner Preliminary Response
• Heightened opportunity to attack obviousness analysis
Failure to focus on the overall appearance
IPR2016-00767, Decision Denying Institution (expert’s “side-by-side” comparison was “merely a two-dimensional comparison” and did not take into account entire design)
Focus on design concepts rather than overall visual appearance
IPR2016-00434, Decision Denying Institution (Petitioner focused on a general design concept – mixing stones of different cuts – rather than distinctive visual appearances.)
IPR2016-01004, POPR (Petitioner focused on knitting concepts and manufacturing techniques rather than overall appearance)
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 22 S K G F. C O M
Pre-Trial: Patent Owner Preliminary Response
• For design PTO Litigation, is the calculus for using an expert at POPR
stage different?
• Overall, used in about 37% cases since becoming available
• Use for factual attacks? (see, e.g., IPR2016-01044, Paper No. 6, where the
Petitioner failed to explain why ordinary designer would select two shoe
upper designs over the hundreds shown in the complete reference)
• Secondary Considerations
• Were they raised in prosecution (or other proceeding) and adequately
addressed by Petition?
• Success rate in PTO litigation for Patent Owner generally is extremely low.
• Better or worse for designs?
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 23 S K G F. C O M
• Board is condensing trial to 6-7 months, and only 8-10 weeks to POR
• Objections to evidence must be made within 10 days of institution
• Patent Owner Response
Expert considerations
Deposing petitioner’s expert
Definition of POSA
Claim construction
Prior art teaching
Qualifications to be an expert
Claim Amendments?
• Petitioner Reply
Post Institution Considerations
© 2016 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. 24 S K G F. C O M
Thank You
Mark W. Rygiel, Esq.
mrygiel@skgf.com
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Trends in Design Patent Post-Grant
Proceedings
Elizabeth D. Ferrill
October 18, 2016
26 26
Trends in Design Post-Grant Reviews
• 102 – Anticipation cases
• 103 – Obviousness cases
• Challenges to priority
• PGR petitions
27 27
IPR Petitions with Anticipation Grounds
28 28
Anticipation Framework
Int’l Seaway v. Walgreens
“[T]he ordinary observer test must logically be the sole
test for anticipation as well.”
Ordinary Observer Test
“[Whether] an ordinary observer, familiar with the prior art designs,
would be deceived into believing that the
accused product is the same as the patented
design.”
589 F.3d 1233 (Fed. Cir. 2009)
Richardson v. Stanley Works,
597 F.3d 1288 (Fed. Cir. 2010)
29 29
Trend No. 1:
Design patent owner may be
their own worst enemy.
30 30
Sensio Inc. v. Select Brands, Inc.
IPR2013-00500
31 31
Trend No. 2:
Scope of the claim matters.
32 32
Sensio Inc. v. Select Brands, Inc.
IPR2013-00500
33 33
Sensio Inc. v. Select Brands, Inc.
IPR2013-00500
34 34
Trend No. 3:
The bulk of the utility patent
precedent applies to design IPRs.
35 35
Sensio Inc. v. Select Brands, Inc.
• Select Brands attempted to antedate the
references by showing a reduction to practice of
the of the design before the earliest publication
date of the references
• Supported by nearly identical declarations from
three inventors regarding reduction to practice
• Sensio argued that patent owner had failed to
show inventors conceived of the design
36 36
Sensio Inc. v. Select Brands, Inc.
• “Patent Owner must show it conceived the design
and communicated the design to [the third party] in
order for the prototypes [made by the third party] to
inure to Patent Owner’s benefit.”
• The Board dismissed the Patent Owner’s
arguments that the inurement precedent should be
limited to the interference context or should not
apply to design patents.
37 37
IPR Petitions with Obviousness Grounds
38 38
Obviousness Framework
Primary Reference
Design characteristics of which are basically the same as the
claimed design
(1) discern the correct visual impression created by the patented design as a whole;
(2) single reference that creates “basically the same” visual
impression
Secondary Reference
Can modify the primary reference “to create a design
that has the same overall visual appearance as the
claimed design.”
Appearance of certain ornamental features in one would suggest
the application of those features to the other
39 39
Trend No. 4:
Carefully select the primary
reference to make sure it
is “basically the same.”
Claimed Design Prior Art
40 40
Dorman Prods. v. Paccar
IPR2015-00416 (June 14, 2016)
41 41
Dorman Prods. v. Paccar
IPR2015-00416 (June 14, 2016)
42 42
Dorman Prods. v. Paccar
• Different visual impressions
• Relative length of sides, angles between sides
IPR2014-00555 (Sept. 5, 2014)
Kobayashi Claimed Design
43 43
Dorman Prods. v. Paccar
• Different visual impressions
• Relative length of sides, angles between sides
IPR2014-00555 (Sept. 5, 2014)
Kobayashi Claimed Design
44 44
Dorman Prods. v. Paccar
• D429 gives the visual impression of a four-sided
trapezoid, while Kobayashi gives the impression of
a right triangle with a hypotenuse formed by its top
and right sides.
IPR2014-00555 (Sept. 5, 2014)
Kobayashi Claimed Design
45 45
Caterpillar v. Miller Int’l
IPR2015-00416(June 14, 2016)
46 46
Caterpillar v. Miller Int’l
IPR2015-00416(June 14, 2016)
47 47
Caterpillar v. Miller Int’l
IPR2015-00416(June 14, 2016)
48 48
Caterpillar v. Miller Int’l
• “The Coupler Manual is a suitable primary reference
because the Coupler Manual warning symbol gives the
same overall visual impression when compared to the
claimed warning symbol design as a whole.”
IPR2015-00416 (June 14, 2016)
Coupler Manual Claimed Design
49 49
Caterpillar v. Miller Int’l
• “The requirement that the design characteristics of the
proposed primary reference be the same as the claimed
design does not imply that the appearance of the prior art
article must be identical to the claimed design.”
IPR2015-00416 (June 14, 2016)
Coupler Manual Claimed Design
50 50
Caterpillar v. Miller Int’l
IPR2015-00416 (July 5, 2016)
Hub Coupler Manual
• “Hub is a suitable secondary reference because Hub, like
the Coupler Manual, also discloses a coupler for an
earthmoving machine.”
51 51
Trend No. 5:
For obviousness, motivation to
combine the primary reference and
secondary reference should not be
overlooked.
52 52
• Not shown that POSITA would have used the reference to
modify the primary
Premier Gem v. Wing Yee Gems
IPR2015-00416 (July 5, 2016)
Lotus Carat
Claimed Design
Heritage Art Deco
53 53
• Not shown that POSITA would have used the reference to
modify the primary
Premier Gem v. Wing Yee Gems
IPR2015-00416 (July 5, 2016)
Lotus Carat
Claimed Design
Heritage Art Deco
54 54
• Teo disclosed using “a flexible magnetic material for the
entire warning sign . . . permitting attachment of the
warning sign . . . to a curved surface.”
Caterpillar v. Miller Int’l
IPR2015-00416 (July 5, 2016)
Hub Coupler Manual Teo
55 55
• Teo disclosed using “a flexible magnetic material for the
entire warning sign . . . permitting attachment of the
warning sign . . . to a curved surface.”
Caterpillar v. Miller Int’l
IPR2015-00416 (July 5, 2016)
Hub Coupler Manual Teo
56 56
Trend No. 6:
Challenging priority is possible,
but can be complicated.
57 57
Sketchers U.S.A., Inc. v. Nike, Inc.
Priority Filing U.S. Design Application IPR2016-00870
58 58
Sketchers U.S.A., Inc. v. Nike, Inc.
Priority Filing U.S. Design Application
IPR2016-00870
59 59
Munchkin, Inc. v. Luv N’ Care, Ltd
IPR2013-00072
60 60
Thank You
61 61
Speaker Information
Elizabeth D. Ferrill (elizabeth.ferrill@finnegan.com/1.202.408.4445)
Focuses her practice on all aspects of design patents, including
prosecution, counseling, and litigation
Extensive experience in utility patent litigation in the areas of software-
and hardware-related technologies
62 62
Disclaimer
These materials are public information and have been prepared solely for
educational and entertainment purposes to contribute to the understanding
of U.S. intellectual property law. These materials reflect only the personal
views of the authors and are not a source of legal advice. It is understood
that each case is fact specific, and that the appropriate solution in any
case will vary. Therefore, these materials may or may not be relevant to
any particular situation. Thus, the authors and Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP cannot be bound either philosophically or
as representatives of their various present and future clients to the
comments expressed in these materials. The presentation of these
materials does not establish any form of attorney-client relationship with
the authors or Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
While every attempt was made to ensure that these materials are
accurate, errors or omissions may be contained therein, for which any
liability is disclaimed.
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