Wednesday, March 27, 2013

Federal Circuit Alert - In re Owens

On Tuesday, the Federal Circuit issued a precedential design patent decision with major implications for the written description requirement for design patents in the case of In re Owens, No. 2012-1261, --- F.3d --- (Fed. Cir. March 26, 2013).  In re Owens was an appeal from a final rejection for a design application on what appears to be a mouthwash bottle designed by Procter & Gamble (“P&G”).  On Dec. 21, 2004, P&G filed design patent application No. 29/219,709 (“the ’709 application”), which claimed the bottle as shown on the left, below.   On Nov. 7, 2006, the ’709 application issued as U.S. Design Patent No. 531,515.  On February 2, 2006, P&G also filed U.S. design patent Application No. 29/253,172 (“the ’172 application”).  The ‘172 application claimed priority to the ‘709 application, and claimed the bottle as shown in the center, below.

P&G conceded to the PTO that the design of the ‘172 application had been on sale for more than a year before the application date and that without a valid priority claim to the ‘709 application, the ’172 would be obviated by prior sales.  Unfortunately for P&G, the Examiner rejected the ‘172 application, finding that the new, dashed horizontal line in the ‘172 application defined an entirely new trapezoidal shape which he considered new matter, not within the disclosure of the ‘709 application, as shown on the right, below.  “As such, the examiner rejected the ’172 application for lack of written description under 35 U.S.C. § 112, ¶ 1, and furthermore rejected the application as unpatentably obvious in view of the earlier-sold bottles under 35 U.S.C. § 103(a).”  The Board affirmed the rejection, finding that P&G “had claimed previously undisclosed ‘trapezoidal sections occupying  part, but not all, of the surface area of the front and back panels.’”

On appeal, the Federal Circuit panel, which included judges Prost, Moore, and Wallach, stated that “[t]he test for sufficiency of the written description, which is the same for either a design or a utility patent, has been expressed as ‘whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. … Thus, when an issue of priority arises under § 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application.” (internal citations omitted). 

Both the P&G and the PTO agreed on appeal that “a design patentee  may, under certain circumstances, introduce via amendment a straight  broken line without adding new matter, even ‘[w]here no [corresponding] boundary line is shown in a design application as originally filed.’” (citing MPEP § 1503.02) (alterations in original).  P&G argued that the unclaimed, horizontal line it introduced in the ‘172 application did not introduce a new trapezoidal shape, but merely claimed only the upper portion of the design of the ‘709 application, citing In re Daniels, 144 F.3d 1452, (Fed. Cir.1998).  The patentee of Daniels removed  an entire floral design element from a prior design application for a container (a “leecher”), as shown below.  

There, the Federal Circuit held that “Mr. Daniels is entitled to the parent application's filing date for the subject matter of the continuation, thus obviating the rejection based on the intervening publication.”  The court reasoned:

The leecher as an article of manufacture is clearly visible in the earlier design application, demonstrating to the artisan viewing that application that Mr. Daniels had possession at that time of the later claimed design of that article. The leaf ornamentation did not obscure the design of the leecher, all details of which are visible in the drawings of the earlier application. The leaf design is a mere indicium that does not override the underlying design. The subject matter of the later application is common to that of the earlier application. In the context of 35 U.S.C. § 171 (“design for an article of manufacture” is the subject matter of a design patent), it is apparent that the earlier application contains a description of what is claimed in the later application.

In re Daniels at 1456-1457 (internal citations omitted)

But the Federal Circuit panel distinguished Daniels, reasoning that there, the original application disclosed a bottle that one of skill would recognize as patentable, even if the floral design was removed.  The panel further reasoned that “the question for written description purposes is whether a skilled artisan would recognize upon reading the parent’s disclosure that the trapezoidal top portion of the front panel  might be claimed separately from the remainder  of that area.”  (citing Ariad, 598 F.3d at 1351.).  Thus, for purposes of design applications, it appears as though the written description requirement would now include an element of foreseeability.

The difficulty with In re Owens is that the ’709 application appears to disclose at least one embodiment of the ‘172 application.  For instance, if the ‘172 application were allowed, the design of the ‘709 application would appear to be within its scope.  Intuitively, practitioners seem to expect that the disclosure of one embodiment of an invention should be sufficient to support a broader claim.  However, the Federal Circuit’s citation of Ariad, although not discussed, appears to be apt.  There, the Federal Circuit held that the disclosure of a single embodiment was insufficient to support the written description of a claim with “far broader” scope:

Whatever thin thread of support a jury might find in the decoy-molecule hypothetical simply cannot bear the weight of the vast scope of these generic claims. See LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed.Cir.2005) (holding that "[a]fter reading the patent, a person of skill in the art would not understand" the patentee to have invented a generic method where the patent only disclosed one embodiment of it); Reiffin, 214 F.3d at 1345-46 (noting that the "scope of the right to exclude" must not "overreach the scope of the inventor's contribution to the field of art as described in the patent specification"); Here, the specification at best describes decoy molecule structures and hypothesizes with no accompanying description that they could be used to reduce NF-kB activity. Yet the asserted claims are far broader. We therefore conclude that the jury lacked substantial evidence for its verdict that the asserted claims were supported by adequate written description, and thus hold the asserted claims invalid.

Thus, after In re Owens, if a designer of skill in the art would not reasonably have foreseen the subject matter claimed by a continuation application, the claims may not be supported by the written description of the parent.  Based on this interpretation of the law, it is likely that the written description requirement will become a more robust doctrine in design patent law, and a major weapon to design patent defendants.   It will be interesting to see whether the Federal Circuit reviews this decision en banc.

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