Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By John Evans and Jesse Wynn – The en banc Federal Circuit has overruled the Rosen-Durling test for design patent obviousness, holding that the Supreme Court’s KSR decision dictated “a more flexible approach . . . for determining non-obviousness.”  LKQ v. GM, — F.4th —, slip op. (Fed. Cir. May 21, 2024).  This precedent marks a shift in design patent invalidity law that allows for a less-rigid approach to obviousness—even though the court expressly warned that “creative” patent challenges are not always persuasive ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By John Evans, Vishal Khatri, and Jesse Wynn – In February, the Federal Circuit declined to modify or overrule its long-standing test for obviousness in design patents, the Rosen-Durling test, despite arguments that the Supreme Court overruled it in KSR v. Teleflex.  A series of recent posts outlined the LKQ v. GM case’s challenge to the Rosen–Durling standard.  One post suggested that the Rosen-Durling test may be questioned in future en banc review. On June 30, the Federal Circuit granted en banc review of LKQ v ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Kerry Barrett and John Evans – As with utility patents, a patentee can counter obviousness of a patented design by producing objective evidence that the design was non-obvious, like commercial success, copying, etc.  But to be persuasive, a nexus must exist between that evidence and the design’s merits.  These legal standards seem simple enough, but they can be difficult to apply as reflected in the Federal Circuit’s recent decision in Campbell Soup Co. v. Gamon Plus, Inc., Nos. 20-2344 and 21-1019 (Fed. Cir. Au ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By John Evans and Josh Gold-Quiros – Big changes to design patent invalidity law may be coming.  A pending IPR appeal challenges the Federal Circuit’s 40-year-old obviousness formula as inconsistent with the Supreme Court’s rejection of “a rigid rule that limits the obviousness inquiry” in KSR v. Teleflex, 550 U.S. 398, 419 (2007).  Should the appeals court agree, obviousness could be easier to establish. Some background.  Design patent obviousness turns on whether a designer of ordinary skill (DOSA) would hav ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Clarissa Sullivan and John Evans The Patent Trial and Appeal Board recently designated as informative its decision instituting post-grant review and addressing the issues of design patent functionality in Sattler Tech Corp. v. Humancentric Ventures, LLC.  No. PGR2019-00030, 2019 WL 3385172 (P.T.A.B. July 26, 2019).  The Sattler decision highlights the importance of balancing the proportions of functional and ornamental features claimed in design patent applications. Let’s start with some background on the often ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By John Evans and Callan Foran* These days, we generally think about inter partes review as a first option to challenge patentability.  Rightly so.  But don’t forget about ex parte reexamination (“XPR”).  Even in the IPR era, patent challengers are still successfully using XPR to attack patents of suspect validity and even leveraging XPR results into wins in district courts. A case in point is Golden Eye Media USA, Inc. v. Trolley Bags UK Ltd., 3:18-cv-02109-BEN-LL (S.D. Cal.).  The Golden Eye case arose ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Kerry Barrett and John Evans Design patent obviousness requires a heavy threshold burden of proof.  Challengers have to find a “primary reference,” i.e., prior art that has “basically the same” design characteristics as the claimed design.  Below is an example of an alleged “primary reference” that the Federal Circuit held did not meet the exacting “basically the same” standard: Claimed Design Alleged “Primary Reference” Overall, this alleged “primary reference” looks like the claimed design, but t ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Kerry Barrett and John Evans – Last October, the Federal Circuit reversed the PTAB’s decision that a challenged design patent was not obvious.  Campbell Soup Co. v. Gamon Plus, Inc., 939 F.3d 1335 (Fed. Cir. 2019).  We wrote about how the court applied a more flexible design patent obviousness analysis than the PTAB.  Here, we report on another interesting decision that seems to take another step towards flexibility in the design patent obviousness analysis and borrowing principles from utility patents neve ..read more