By Andrew M. Ollis
| July 9, 2020
Design patents relate to the decorative pattern for articles of manufacture. Almost by definition, an item of manufacture is designed to perform a useful function. But when the design is an item of manufacture dictated Due to its function, especially if no alternative designs are available that fulfill the same function, the design patent may be invalid because it does not have any ornamentality according to 35 USC § 171. That being said, opinions and discussions use the terms “functionality” and “lack of ornamentation” ”interchangeably when discussing 35 USC § 171 requirement for designs. The U.S. Patent and Trademark Office recently described a decision as informative that initiated a Post-Grant Review (PGR) on the issue of design functionality Saddler tech. Corp. v Humancentric Ventures, LLC, PGR2019-00030, paper no. 9 (“Decision”).
A little post-grant background is helpful in setting the stage. When a competitor’s U.S. patent is granted, a company has nine months to decide whether to challenge the patent’s patentability by filing a PGR if the patent’s effective filing date is on or after March 16, 2013 lies. Alternatively, a company can request the granted patent by waiting until nine months after it was granted and then filing an application inter partes Verification (IPR). With both IPR and PGR, the applicant can take part in the proceedings before the patent office and respond to the patent proprietor’s positions. A third way to challenge a competitor’s patent is to request re-examination anytime after the patent has been granted. However, once initiated, the requesting party will not be able to take a re-examination and a re-examination may only be requested on the basis of printed publications. Since an applicant is unable to re-examine once established, companies often prefer to attack an opponent’s patents by filing an IPR or PGR application.
IPR and PGR procedures differ in scope and timing. A patent can can be challenged on a patentability basis in a PGR, while a patent can only be challenged on the basis of printed publications in an IPR. If a final decision is made in favor of the patentee in an IPR or a PGR, the challenger is prevented from raising validity issues in litigation that could have been brought in the patent office proceedings. This means that a loss in a final decision in a PGR has more far-reaching consequences than a corresponding loss in an IPR. A loss in a PGR completely prevents a company from filing a disability defense in litigation, while a loss in an IPR (in principle) only prevents the company from filing a disability defense on the basis of printed publications.
When a company sees a competitor’s patent about to be granted and wants to file a PGR or IPR based only on printed publications, it is faced with a strategic decision: (a) To attack the competitor’s patent immediately after it is granted, but take the risk to abandon all disability defenses in litigation (PGR) or (b) wait nine months to file an IPR in order to limit any litigation to printed publications but risk the nine month delay that gives the patentee a strategic advantage in the market in Litigation or even in IPR itself procured (if a parallel litigation progresses quickly). In the post-AEI world, this choice is becoming increasingly common as most currently granted patents have an effective filing date on March 16, 2013 or later. On the other hand, if a company wishes to challenge the patentability of a patent with the Patent Office on a basis other than in printed publications, the company must file a PGR within the short period of nine months after the patent was granted.
in the Saddler, US Design Patent No. D823,093 (“the ‘093 Patent”) entitled “VESA Mount Adapter Bracket” issued July 17, 2018. The’ 093 patent was derived from an application filed on February 17, 2017 granted and was eligible to be challenged when issued in a PGR. Figure 1 of the ‘093 patent is shown below:
As can be seen, the perimeter of the body of the bracket appears in phantom lines and is therefore not part of the claimed design. Instead, the claimed design includes three tabs and the eight spaced-apart grommet heads.
Saddler filed a PGR on January 15, 2019 (less than nine months after the ‘093 patent was granted) contesting the validity of the’ 093 patent only because of a lack of ornamentation, that is, on the grounds that the design depends on the function was dictated. Saddler Therefore, the strategic decision was made to file a PGR immediately and run the risk that in any subsequent litigation involving the ‘093 patent, in the event of an adverse final decision in the PGR, all disability defenses would be lost.
In the decision, the standard was initially cited that “[A] The design can be declared invalid if the design claimed is primarily functional and not primarily decorative, ie if the design claimed is dictated by the purpose of the article High Point Design LLC v Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013). Decision, p. 7. The decision also focused on the Federal Circuit’s guidelines that “an investigation into whether a claimed design is primarily functional should begin with an investigation into the existence of alternative designs”. Decision, pp. 8-9, citing Ethicon Endo-Surgery, Inc. v Covidien, Inc.796 F.3d 1312, 1330 (Fed. Cir. 2015).
In making its decision, the Board took into account the fact that adapter brackets are used for VESA (Video Electronics Standards Association) mounting based on the VESA Standard for Flat Panel Mounting Interfaces, Copyright 2006 (“VESA FDMI Standard”). Saddler argued that most, if not all, of the components of the ‘093 patent are determined by their use and purpose. Decision, p. 9. The board cited to prove that the adapter brackets for VESA mounting fit into pre-existing slots on the back of a video monitor, that the grommet spacing matches the dimensions of the screw mounting interface in the VESA FDMI standards, and that the Size of the grommets is set by VESA standards and this height of the grommet edges were selected to improve strength. I would.Pp. 10-13.
In examining the alternative designs, the board cited references to commercial products that also had the same tab shape and grommet spacing as the ‘093 patent. I would.Pp. 14-16. The board also noted that the overall look and feel of the design appeared to be primarily functional. I would.Pp. 17-18. For these reasons, the Board concluded that Saddler met the PGR institutional standard that it was more than likely that the ‘093 claim was not patentable due to lack of ornamentation, and introduced the PGR. I would., p. 19. In particular, the Board’s decision did not make a final decision on patentability. I would.
Shortly after the decision was made, the patentee rejected the ‘093 patent and requested a negative judgment, likely based on an agreement between the parties. The Patent Office issued a negative judgment on October 18, 2019, which corresponds to a rejection of an unscathed lawsuit before the Federal Supreme Court and which leads to a victory for Saddler.
Finding a design patent that is not patentable as functional or devoid of ornamentation can be difficult, especially because alternative designs are often available. However, if a compelling argument can be made that the patented design is functionally determined, and a challenger is willing to take the risk of sacrificing any future disability control measures in litigation, a PGR can be a very effective tool in getting the design patent of a Competitor acquiring soon after there are problems. To the Saddlerthe PGR risk has paid off.
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