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.

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.

Inter Partes Review Invalidates First Design Patent

On Monday, April 21, the Patent Trial and Appeal Board handed down a milestone final decision, for the first time invalidating a design patent challenged in inter partes Review.  Munchkin, Inc. v. Luv N' Care, Ltd., No. IPR2013-00072 (P.T.A.B. Apr. 21, 2014) (Paper No. 28).

Design Patent Links

Stanford’s Design Patents in the Modern World conference earlier this month seems to have generated a good deal of design patent buzz across the internet. This wave of interested has continued through the end of April, with several new developments in the area of designs. Below is a sampling of some of the design patent stories from the last week.

For those who weren’t able to attend, the organizers have been good enough to post video from this month’s Design Patents in the Modern World Conference at Stanford Law School. We have provided a link to the first of several videos covering the conference.

On April 23, 2013, the American Intellectual Property Law Association, the Intellectual Property Owners Association, the American Bar Association Section of Intellectual Property Law and the Industrial Designers Society of America hosted its annual Design Day conference with the USPTO. The seminar included a discussion of the written description requirement in the wake of In re Owens. If any of our readers attended the conference, we would be interested in hearing from you.

IP 360 is reporting on the first inter partes review in a design patent case, which was initiated by the PTO last week. The decision to grant this review review is notable, if for no other reason, because of the dearth of citable authority from the PTO relating to design patent law.

Patently-O posted an interesting article on Multiplicity of Design Patent Rights, covering some of the more sophisticated design patenting techniques practiced by design-patent savvy applicants.

PatentBytes commented on California Institute of Technology’s new design patent for the descent stage of the Mars rover. But one wonders whether the Mars rover is the proper subject for a design patent if nobody actually sees it during its normal, intended use.

The Daily record posted an article providing an update on USPTO regulations implementing the portions of the Hague Agreement concerning international design patent applications. While the PTO continues to mull over its international design patent regulations, Lexology reports on how to prepare a combined U.S. and international design patent application. 

Collision Repair Magazine commented on the PARTS Act, which is currently making its way through Congress. This bill would reduce the term for design patents covering car parts from 14 years to 30 months. It is unclear why the authors of the bill consider car parts to be a special case or whether the United States would even be able to carve out the term for certain design patents without running afoul of its international commitments on design patent law. IPO Daily also reported on the PARTS Act. Here is a link to the current version of the bill.