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.

Design Patent Links - May 19, 2014

It has been a while since our last design patent links post, so there's lots to share.  We begin with a design patent issue of first impression in the Eastern District of Arkansas and wrap up with a check-in on Apple v. Samsung:

Law360 has published an article about a fascinating design patent decision from the Eastern District of Arkansas.  In P.S. Prods. Inc. et al. v. Activision Blizzard Inc. et al., Case No. 4:13-cv-00342-KGB (E.D.Ark. filed June 5, 2013), P.S. Products sued Activision for infringing U.S. Design Patent No. 561,294 for a "Stun Gun," shown below.  The problem is that Activision is in the video game business, not the stun gun business.  P.S. Products was accusing Activision of infringement through its Call of Duty line of video games, which includes a video game stun gun that P.S. Prods claimed infringed its design patent.  On a motion to dismiss, the court found that the video game and the real-life stun gun were not “analogous article[s] of manufacture."  The Law360 article was authored by in-house counsel for Activision, Omer Salik and Neil Yang. 

In an interesting post on The Ordinary Observer (link), we recommended filing "virtual" design patents with any physical design, which may have avoided this very issue.

 
We usually try to stay away from the "interesting design patent" posts here at The Ordinary Observer, but this new Samsung design patent caught our eye for obvious reasons.  Can you tell which of the below designs belongs to Apple and which belongs to Samsung?  Both of these icon design have been granted by the USPTO:

ANSWER: The icon on the left is Samsung's U.S. Design Patent No.  704,217, which was granted back on May 6.  The icon on the right is Apple's U.S. Design Patent No. 671,558.  Several commentators have already picked up on the similarity between these two design patents, including MacRage, PatentlyApple, and Cult of Mac.  We have previously observed that the scope of design patents before the PTO appears to be far narrower than in a court of law, which is the opposite of what was intended.  However, this principle could be used as a shield in a design patent infringement suit.  Potential defendants may seek design patents of their own and, in effect, get an advisory opinion of non-infringement from the PTO in the form of a design patent listing the relevant prior art on its face.  In this sense, design patents, unlike utility patents, may be used as a shield as well as a sword.  Samsung appears to be applying this principle while it restarts settlement negotiations in their ongoing patent war with Apple, according to DailyTech.  

Finally, in addition to our own commentary, several others have posted on the first-ever successful Inter Partes Review process for Luv N' Care's sippy cup design patent, including Law360, Rstreet, National Law Review, and Virtual Press.  As noted by Digital Journal, Luv N' Care has issued a "clarification" of its pending lawsuit against Munchkin, stating its loss in the PTAB was based on a "technicality."  Apparently, Luv N' Care considers the Patent Act a technicality...