Thursday, February 5, 2015

Looking at Inter Partes Review for Design Patents

It has been nearly one year since the Patent Trial and Appeals Board first invalidated a design patent in inter partes review. Munchkin, Inc. v. Luv N' Care, Ltd. decision, No. IPR2013-00072 (P.T.A.B. Apr. 21, 2014).  The Ordinary Observer reported on that decision last April.  The time seems right to check in on the PTAB to see how design patents have fared since that decision made waves in the patent community.

Despite the impact made by the PTAB in Munchkin, IPR remains a rarely used tool for defendants in design patent litigation.  In addition to Munchkin, we have found 7 petitions for review on 7 design patents from 3 petitioners since the practice began in September 2012.  To date, only Munchkin has reached a final decision on the merits.  While this subset is still limited, it may give us some insight into how the Board is interpreting these petitions, and where the practice may be headed.

We begin by looking at the petitions filed by each of the three petitioners.

ATAS Int’l, Inc. v. Centria, IPR2013-259 (P.T.A.B. Sept. 24, 2013) (petition denied)

ATAS International filed one petition for inter partes review challenging U.S. Patent No. D527,834.  The patent claims a design for a type of modular wall paneling and includes 7 distinct embodiments.  Because of the multiple embodiments, the PTAB felt it necessary to provide a verbal description of some features of the claim:
The seven embodiments of the patented design share several common characteristics. All seven have both raised and recessed areas along the length of the panels. See Prelim. Resp. 4. All panels have either one or two recessed well-type areas. Id. at 5. Each of the recessed well-type areas is bounded by angled portions having differing angles. All panels have two or three raised areas. The width of at least one of the raised areas is at least twice as wide as any of the recessed areas. Id. at 5. Together, these characteristics result in each of the seven embodiments having an overall asymmetric and irregular appearance. 

An image of the claimed paneling adapted from the D’834 patent is shown below.

The petitioners challenged the D’834 patent as being invalid for anticipation or obviousness based on 5 prior art references in 9 separate combinations.  Perhaps the closest reference considered by the Board was the BRK160 reference, an image of which is shown below alongside a figure from the D’834 patent.

The Board was not convinced that the BRK160 reference or any of the other prior art references cited by the petitioner were substantially the same or created basically the same visual impression as the claimed design.  ATAS International’s petition was denied.

Sensio, Inc. v. Select Brands, Inc., IPR2013-500, -501, -580 (P.T.A.B. Feb. 11, 2014) (IPR instituted) 

Sensio, Inc. filed 3 petitions for inter partes review, challenging three design patents asserted by Select Brands, Inc.: U.S. Design Patent Nos. D669,731, D675,864 and D686,447.  The 3 patents relate to designs for a slow cooker, each similar to the figure shown below from the D’731 Patent.

The PTAB issued its decision to institute IPR proceedings on February 11, 2014.  Their final decision is due in February, 2015.

The petitioners cite a large number of references against all three challenged patents.  The D’731 Patent was challenged as anticipated or obvious in view of 10 references or combinations of references.  Both the D’864 and D’447 patents were alleged to be invalid over 9 references and combinations.  For each patent, the majority of the prior art references are Chinese design patents issued to Mr. Junda Shi, including CN 101695429, CN 301282889, CN 301010547, CN 101564269 and CN 100577069.  A figure from one of the prior art Chinese patents is shown alongside a figure from the challenged D’731 Patent, below.

The clear similarities between the prior art patent and the claimed design do not appear to be coincidental.  According to the petitioner, Junda Shi is a legal representative of Ningbo Wuji Electric Appliance Co., Ltd.  This happens to be the company that Select Brands allegedly contracted to produce the prototypes of the slow-cooker that embodying their claimed design.
Incidentally, the challenged patents do not name Shi or the other Chinese inventor, Huaping Zhang, as inventors of the asserted American patents.  The American inventors are W. Eric Endres, Mark T. Krasne and William S. Endres.  This is not directly relevant to the IPR proceedings, though, because the limited jurisdiction of the PTAB does not permit the Board to address many issues, such as inventorship, that might be at issue in civil litigation.
Based on the papers filed by the Patent Owner, it does not appear that Select Brands is attempting to distinguish the so-called Shi references.  The bulk of their defense is that they had reduced the design to practice in the form of a prototype prior to the publication date of the prior art cited against them.  Sensio counters that there is not enough evidence to prove that Select Brands had the prototype on the claimed date.
We should not have long to wait in order to see what the PTAB decides in this case.  The Board’s decision is due within the next few weeks.
Dorman Prods., Inc. v. PACCAR, Inc., IPR2014-542, -555 (P.T.A.B. Sept. 5, 2014) (petition denied)

Dorman Products, Inc. filed two petitions for IPR challenging two patents asserted by PACCAR, Inc.: U.S. Design Patent Nos. D525,731 and D526,429.  The PTAB issued its decision denying Dorman's petitions on September 5, 2014.
The challenged patents in this case relate to two related designs for an automobile headlight.  A figure from the D’731 Patent illustrating that claimed design is shown below.

The petitioner challenged each of the patents as being obvious in view of the prior art under four grounds.  Each of the four grounds challenging the D’731 patent relied on one primary reference: U.S. Design Patent No. D498,859 to Kobayashi.  The challenge to the D’429 patent asserts that patent is invalid as obvious over three other primary references, but also cites the Kobayashi prior art patent as its first primary reference.  A comparison of figures from the D’731 patent and the Kobayashi patent are shown below.

The Board could not conclude a designer of ordinary skill would have viewed the two references as giving the same visual impression.  Therefore, the Kobayashi patent could not serve as a primary reference for an obviousness challenge to either patent.  Since this was the only primary reference cited in the obviousness challenges to the D’731 patent, the Board’s analysis went no further before denying Dorman’s petition.  With respect to the D’429 patent, the Board analyzed the additional primary references asserted by the petitioner, but reached a similar conclusion for all three.


The few petitions that have been filed, and the even fewer reviews that have been instituted, tell us something about where design patent IPR practice may be headed and why it is not being used by defendants very often.

One potential reason IPR and design patents are not a particularly good fit relates to claim construction and the limited jurisdiction of the PTAB.

A theoretical advantage of inter partes review over district court litigation is that claims in IPR are construed to have their “broadest reasonable interpretation” while claims in traditional litigation have the narrower “ordinary and customary meaning.” That distinction can mean a lot for utility patents in IPR. The scope of a utility patent’s claims can be radically broadened or narrowed by differing interpretations of the often technical claim terms. The broader interpretation of claims in IPR can mean some patents can be invalidated by the PTAB on grounds that would rarely be considered by a district court. But design patents have virtually no claim scope. The figures define the metes-and-bounds of the claim. Whether given its broadest reasonable interpretation or the ordinary and customary interpretation, both the courts and the PTAB should give designs roughly the same interpretation.

While design patent IPR petitioners lack the claim construction advantages the review process ostensibly offers, they bear the same procedural constraints. IPR has a very limited scope. Petitioners must make all of their arguments on printed publications. The board interprets this very strictly. An anticipating prior art reference must show all of the claimed features within the four-corners of the document, and the petitioner must discretely point out where in the prior art reference all the claimed elements are found. The board tends to disregard most extrinsic evidence, as well as demonstratives and expert testimony that might be considered by a district court. ATAS International learned this lesson the hard way. One of their more forceful arguments appeared to be that connecting 2 prior art wall panels together as they would normally be installed created the same visual impression as 1 of the claimed panels. Such a combination might not be hard to visualize, but the Board declined to consider it because there was nothing in the prior art reference itself that showed that configuration.

Under these constraints, the design patent IPR petitions that have done well tend to be those that can rely on prior art with a common source to the patented design. The invalidating references in Munchkin were utility patent publications by the inventor of the challenged design patent. Similarly, review has been instituted in Sensio based on prior art from the company that produced the prototype for the patent owner on what is likely the same design. We have not found a review instituted on a patent based entirely on prior art produced by an unrelated source.

Despite the challenges discussed above, there should still be some good potential reasons for defendants to consider using IPR to challenge design patents.

IPR remains a cheaper alternative to litigation, and the patent office has a familiarity with design patent law that many judges simply lack. If a defendant has very strong printed prior art in their pocket, the best place to present it may still be the PTAB.

Additionally, design patents are less affected by some of the constraints put in place by the PTAB. The Board has very specific guidelines for how prior art may be presented in a petition and the page limits for those petitions. For a complicated utility patent, a petitioner could be hard pressed to make out a complete argument on just one or two references. But design patents have only one claim and most require no formal claim construction. This means design patent IPR petitions should be able to challenge patents with many more grounds with many more references.

Design patents also generally avoid one of the unintentional pitfalls of IPR. The PTAB has declared it has discretion to institute review on only some of the challenged claims, rather than all or none. The Board can institute review on a small fraction of the asserted claims in a case, leaving the remainder active at the district court and forcing the petitioner to fight a battle on two fronts. This isn’t possible in many design patent cases where there is only one claim at issue. Either the petition succeeds, and the case is likely taken entirely out of the district court, or the petition fails and the case proceeds before the court with little direct cost to the defendant.

Whatever the theoretical benefits may be, the current track record for design patent IPR petitions would not instill a lot of confidence in prospective petitioners. Perhaps as more cases such as Sensio are instituted, and more patents are invalidated as in Munchkin, the advantages of IPR will become more tangible and less potential.

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