Thursday, March 12, 2015

Inter Partes Review for Design Patents - Part 2

Recently, we looked into the use of inter partes review, an administrative method for challenging the validity of a patent, as it has been used for challenging design patents.  Our examination showed that the practice was still in its infancy.  Moreover, only one patent had been successfully invalidated in IPR.  Munchkin, Inc. v. Luv N' Care, Ltd., No. IPR2013-00072 (P.T.A.B. Apr. 21, 2014).  We reported on that decision last April.  Today, we can report on a decision on the merits by the Patent Trial and Appeal Board invalidating three more design patents.  We are also taking a look at two additional pending petitions for IPR that may tell us more about the usefulness of this process in future design patent cases.

Sensio, Inc. v. Select Brands, Inc., IPR2013-500, -501, -580 (P.T.A.B. Feb. 9, 2015) (final decision)

When we last reported on the Sensio reviews, they were the only pending petitions for IPR that had been instituted but that had not yet reached a decision on the merits.  Those decisions were reached on February 9, 2015.  The board invalidated the sole claims of U.S. Design Patent Nos. D669,731,  D675,864 and D686,447, finding each was anticipated by or obvious over foreign patent publications CN 101695429 A to Shi, CN 301282889 to Shi, or CN 301383763 to Lu.

The challenged patents claim the ornamental design for a slow cooker manufactured by Select Brands, Inc.  However, Select Brands was not the only party involved in the production of this cooker.  According to the patent owner, the named inventors of the challenged patents conceived of the design for the cooker in the United States.  They then "communicated" this design to a Chinese company, Ningbo Wuji Electric Appliances Co., Ltd.  Wiju produced a prototype, which it delivered to Select Brands on January 27, 2010.  The alleged inventors at both Wiju and Select Brands filed patent applications claiming the design in their respective countries, and Wiju's first application published on April 21, 2010, roughly 8 months before the filing date of the challenged D'731 Patent.  

Select Brands argued that the references were not prior art to the challenged patents because they had "reduced the design to practice" at least as early as January 27, 2010, upon the receipt of the Wiju prototype.  Alternatively, they argued Wiju's prototypes inured to Select Brands' benefit because there was an "agency relationship" between Wiju and Select Brands. 

The PTAB rejected the patent owner's defenses.  The January 27th prototype could not constitute "a reduction to practice" for Select Brands because Wiju, not the Select Brands or the American inventors, produced the slow cooker.  Nor could the patent owner claim that Wiju's prototype inured to their benefit.  Select Brands would have had to show that it had conceived of the design first, and they failed to do so.  Select Brands offered testimony from the American inventors asserting an earlier conception of the design, but the patent owner could offer no corroborating evidence of that conception pre-dating the receipt of the Wiju prototype.

Having established that the patent owner could not exclude or otherwise swear behind the prior art references, the patents were invalid.  Select Brands offered no argument that they could distinguish their claimed design from the prior art.  Under the circumstances, that was not unreasonable.  The Shi references and the challenged patents covered the same slow cooker design. 

These reviews bore a facial similarity to the Munchkin review.  In both cases, the patent owner did not dispute that the prior art references were substantially similar to the claimed designs.  In Munchkin, this was because the prior art references were utility patents filed by the same inventor as the claimed design, covering essentially the same article.  In Sensio, the key prior art references were foreign patents filed by the Chinese prototype manufacturer of the patent owner's own slow cooker.  While the decisions are consistent, they may offer little guidance to design patent defendants considering filing an IPR petition with references that don't have some factual nexus to the claimed designs.

Two recent petitions for inter partes review may offer a broader perspective on the utility of IPR for design patents.  No decision to institute or deny either petition has been reached.  But the challenged claims, and the prior art references asserted, make these interesting cases to consider.

Caterpillar Inc. v. Miller Int'l Ltd., IPR2015-416 (P.T.A.B. filed Dec. 22, 2014) (D673,982). 

The first pending petition for IPR concerns U.S. Design Patent D673,982 entitled "Operator-Visible Warning Symbol on a Coupler." A figure from the D'982 is shown below.

Caterpillar is asserting 8 grounds of invalidity in its IPR petition, all based on obviousness.   Caterpillar spends a large portion of its limited petition page space building a context for viewing the claimed design.  The equilateral triangle warning symbol, according to the petitioner, has been an international standard since World War II, and triangular warning symbols had been used on Caterpillar machinery since at least 1994.  The question as they would prefer to frame it is then, whether it can be patentable to apply a well-known symbol to a well-known article in a particular way, as claimed.  A figure from the petition illustrating one ground of obviousness is shown below.

If Caterpillar's petition is successful, it will represent the first time inter partes review has been instituted based on prior art references which are not factually tied to the claimed design (as in Munchkin or Sensio), and where the only basis for institution is obviousness.  If Caterpillar's petition is denied on the merits, it may be a strong sign that IPR may not be the best venue for challenging a design patent on the basis of obviousness.

Lowe's Home Centers, LLC v. Reddy, IPR2015-00306 (P.T.A.B. filed Nov. 25, 2014) (D677,423).  

The second petition for IPR worth watching concerns a case we have been following for more than a year.  Maureen Reddy first filed her complaint for patent infringement on November 25, 2013, alleging Lowe's sells vanity light shades manufactured by Evolution Lighting that infringe her D'423 Patent.  We briefly commented on that case in December, 2013.  The case came up again last November, when Judge Young from the District of Massachusetts issued a construction of the claim in that case that merited some discussion.  Shortly thereafter, Lowe's filed this petition for IPR.  A image from our earlier coverage comparing a figure from the D'423 Patent and the accused design in the district court litigation is shown below.

The petitioners in Lowe's have chosen an interesting strategy.  As we have previously discussed, one hypothetical benefit to IPR for design patents in is that the single claims and limited claim scope of design patents can make it easier to challenge the patent on more grounds than one could challenge a utility patent, given the strict page limits imposed by the PTAB.  But Lowe's has taken a different approach.  They have chosen to assert a single ground for anticipation and two grounds for obviousness, based on a combination of just two prior art references.  The petition as a whole comes in more than 20 pages under the PTAB's strict page limit.  A figure from the petition illustrating Lowe's partially anticipation argument is shown below.

It is also worth noting that the patent owner's preliminary response to Lowe's petition was filed pro se.  That may have been a factor in Lowe's decision to file a more limited petition.  Perhaps cost considerations are more predominant in this case than others.  Or, perhaps Lowe's has more confidence in its prior art than other petitioners facing more sophisticated opposition.  We will know more when the Board's decision is due late this May.

Lowe's, much like Caterpillar, may be able to tell the design patent community a great deal about the viability of inter partes review.  The prior art appears strong relative to the patent. But without a reference exactly disclosing the claimed design as in Sensio or Munchkin, there is no precedent in favor of institution. 

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