Wednesday, October 23, 2013

Obviousness Inquiry for Design Patents – The Answer Is Not So Obvious

["Author's" note: this post was authored by David Lu, of Lando & Anastasi, and is based on a discussion of High Point that he recently presented during a monthly Federal Circuit review. David's practice includes patent prosecution, opinion work, due diligence, and general intellectual property counseling in the areas of biochemistry, molecular biology, cell biology, immunology, microbiology, genetics, and genomics. David now dabbles in design patent law as well.]

In High Point Design LLC v. Buyer’s Direct, Inc., Case No. 12-1455 (Fed. Cir. September 11, 2013) the Federal Circuit addressed several interesting issues surrounding how invalidity under 35 U.S.C. § 103 should be determined for design patents.

First, the court addressed what should be the standard for assessing the potential obviousness of a design patent. The court asked whether obviousness should be determined from the vantage point of an “ordinary observer” or “an ordinary designer” in the art? The Federal Circuit held that an “ordinary designer” standard is required in an obviousness analysis relating to a design patent and the use of an “ordinary observer” test would run contrary to the court’s precedent. Interestingly, in International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) the Federal Circuit ruled that the ordinary observer test is the sole test for anticipation of design patents. Here, the court did not say that the decision in International Seaway reached a contrary conclusion. Rather, the court suggested that the International Seaway court might in fact have had the designer of ordinary skill standard in mind when it used the term “ordinary observer.” After all, the ultimate inquiry is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.

It is unclear whether the ordinary designer test would make it easier or more difficult to invalidate a design patent or render it obvious. However, expert opinions will likely play a more important role in future battles for obviousness. Indeed, the court noted that a valid expert opinion cannot be disregarded just because an expert is an ordinary designer and not an ordinary observer.

The second issue the Federal Circuit addressed relates to claim construction in design patent cases. To evaluate the potential obviousness of a design patent, a fact finder must first find a single reference that teaches the design characteristics that are basically the same as the claimed design. In order to do that, a court must first discern the correct visual impression created by the patented design as a whole. The Federal Circuit relied on Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), ruling that the district court erred by failing to translate the patented design into a verbal description. In particular, the court stated that the district court should add sufficient detail to its verbal description of the claimed design to evoke a visual image consonant with that design. Interestingly, in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) the Federal Circuit abolished the requirement for detailed verbal claim construction in design patent infringement cases. In fact, the Federal Circuit preferred that district courts not construe the claimed design with a detailed verbal description. The Egyptian Goddess court seemed to suggest that a different requirement should be in place for invalidity cases. However, the court in High Point did not clarify this distinction, nor provide guidance on what would constitute the “sufficient detail” in order to evoke the visual image necessary for obviousness analysis.

Further confusing the issue is whether High Point is even controlling on the issue of claim construction, given that Egyptian Goddess cautioned against verbal claim construction of design patents and was decided en banc.

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