In a surprising move, the Court of Appeals for the Federal Circuit (“CAFC”) has granted a petition for rehearing en banc on the issue of whether the test for determining obviousness of design patents has been overruled by the Supreme Court’s 2007 decision in KSR v. Teleflex, 550 U.S. 398 (2007).  In the case, captioned LKQ Corp. et al v. GM Global Technology, the en banc CAFC has requested briefing as to whether the design patent obviousness test originally set forth in In re Rosen, 673 F.2d 388 (CCPA 1982) and blessed by the CAFC in Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) is good law in view of the Supreme Court’s obviousness holding in KSR, which significantly modified the obviousness inquiry for utility patents.  While there was no doubt that KSR did not apply to design patents since the underlying obviousness analysis for utility patents differs so significantly from that for design patents, the en banc CAFC has clearly demonstrated a renewed interest in the issue, and any changes to the test can have significant implications for all future-filed, pending, and active design applications and patents. Continue Reading Uncertainty Ahead if Design Patent Obviousness Test is Abrogated by en banc CAFC

In a recent district court decision, a New Jersey federal judge granted summary judgment to an accused infringer of a patented design. Skull Shaver LLC. v. IdeaVillage Products Corp., No.18cv3836 (EP) (AME) (D.N.J. Dec. 28, 2022).  In its complaint, Skull Shaver claimed that Ideavillage’s leg shaver infringed its design patent on a head shaver.  The patent-in-suit is U.S. D693,060 (“the D’060 patent”) for an electric head shaver, and the accused product is a Flawless Legs Shaver, which is itself covered by U.S. D853,645 (“the D’645 patent”). Continue Reading Flawless Legs and a Shaved Head? An Ordinary Observer Can Tell the Difference

Oral arguments were held on Thursday, January 12, 2023, in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.  The parties faced off in a rematch at the Federal Circuit following an earlier bout involving the same design patent, U.S. D657,093 (“D’093”) for a “Heat Reflective Material,” which as illustrated side-by-side below had been asserted against Seirus’s HeatWave™ material.Continue Reading Design Patents are Heating Up at the Federal Circuit

A recent decision of the United States Court of Appeals for the Federal Circuit has fundamentally altered the law on prior art anticipation for design patent applications. In this decision, captioned In re: SurgiSil, L.L.P. et al., No. 2020-1940 (Oct. 4, 2021), the Federal Circuit reversed a decision by the USPTO’s Patent Trial and Appeal Board (“Board”), which had previously affirmed an examiner’s anticipation rejection of a design patent claim for a lip implant based on a prior art reference depicting a similarly-shaped tool for artists.
Continue Reading In re SurgiSil : Much More than a Cosmetic Change to Design Patent Law

In a recent decision, the Review Board of the United States Copyright Office (“Board”) reversed an examiner’s prior refusal to register a copyright in the artistic elements present in the bed shown above, paving the way for the applicant to obtain a copyright registration in this work.
Continue Reading Design Protection: Don’t Sleep on Copyrights

Two recent decisions by the Patent Trial & Appeal Board (PTAB) highlight the nuances of allowable and impermissible drawing amendments during prosecution of U.S. design patent applications, and provide important guidance to design patent applicants on how to prepare their applications to ensure maximum flexibility during prosecution.
Continue Reading Recent PTAB Guidance on Permissible Drawing Amendments for U.S. Design Applications