Premiere Gem Corp. v. Wing Yee Gems – Petitioner Turned Down in Diamond Jewelry Design IPR

In July, the Patent Trials and Appeals Board (PTAB) declined to institute Inter Partes Review of a design patent for an ornamental design of diamond jewelry.  Then, just last week, the Board denied a petition to rehear that earlier decision.  These decisions in Premier Gem Corp. et al. v. Wing Yee Gems & Jewelry Ltd. (IPR2016-00434) demonstrate how failing to introduce into evidence the details of the prior art can be fatal to a claim of anticipation or obviousness. They also offer a reminder that challenged designs and the prior art are to be compared on the basis of “overall visual appearance,” not mere “design concepts.”

Petitioners Premier Gem Corp. and Jay Gems Inc. (collectively, “Petitioner”) petitioned the Board to invalidate U.S. Design Patent No. D618,132 (the “’132 patent”).  The patent claims a jewelry design in which a large “full cut” central diamond is surrounded by nine smaller “single cut” diamonds.  (As the decision explains, “[f]ull-cut diamonds have more facets than single-cut diamonds, and typically produce a greater sparking effect.”)  The two figures of the patent are reproduced below:

U.S. Design Patent. D618,132

Apple v. Samsung - Preview of Upcoming Oral Arguments before the Supreme Court of the United States

After a brief hiatus, nothing helps to kickstart the Ordinary Observer blog like another episode in the Apple v. Samsung saga. This installment, of course, takes place at the Supreme Court with next week’s oral arguments on the all-important apportionment issue. For those who are casually following the case or just need a refresher, we summarize the party positions and key amicus briefs after the jump. We’ll also be reporting from the Court next week so stay tuned for a first-hand account of the arguments and predictions from the courthouse steps next Tuesday.

Continuation-in-Part Design Patent Applications

Deciding when and under what circumstances a design patent application can claim priority to an earlier filed application can be a challenging task. In particular, we often get asked whether a design patent application may be filed as a continuation-in-part (CIP) of an earlier filed design patent application. While the quick answer is yes, the disadvantages associated with CIPs often outweigh the benefits.

Design Patent Destinations - Hague Seminar to be Presented by WIPO in Geneva

If you're looking to travel and learn about international design patent application regimes, then look no further than WIPO's Hague Seminar, which is taking place on June 23 in Geneva, Switzerland.   The stated objectives of the Seminar are to give practical guidance to users when designating the United States of America, Japan or the Republic  of Korea in an international design application and to receive feedback from those Offices as Designated Contracting Parties.  You can access WIPO's brochure for the seminar here.

WIPO's Hague Convention seminar comes at an important point in the United States' adoption of the Hague Convention.  While the Hague Convention filing process has been available in the United States since May of 2015, surprisingly few applicants have applied for an International Design Patent through the United States Patent Office, as we learned this year at Design Day.  While the Hague Convention certainly presents a more streamlined and cost-effective approach to international design registration, uncertainty regarding regional differences in design practice may be slowing the adoption of the system here in the United States.  Hopefully, the WIPO seminar in June can help provide a clearer path for U.S. filers.

Sport Dimension v. Coleman Company - Federal Circuit Seeks to Clarify Functionality

Last week, the Federal Circuit issued an opinion in Sport Dimension, Inc. v. The Coleman Company, Inc., No. 15-1533 (Fed. Cir. Apr. 19, 2016), seeking to clarify how courts may properly construe design claims containing significant functional aspects.  The court's decision adds some weight behind last year's Federal Circuit decision in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., and answers a few additional questions related to design patent functionality.

In order to explain this case, we first have to see the problem.  To do that, we begin by looking back to the Federal Circuit's 2010 decision, Richardson v. Stanley Works, Inc.  That case concerned design patent D507,167 for a multi-function tool, and an alleged infringing tool designed by Stanley, as shown below:

Design Day Report from the Front Lines Slides

We've had a few requests for the slides from yesterday's Design Day - Report From the Front Lines presentation.  We're happy to share them with the usual disclaimers.  This presentation was prepared for educational purposes only and does not represent the opinions of either the U.S.P.T.O. or Lando & Anastasi.  Nor can we guarantee the accuracy of the underlying data presented, which was gathered from third party sources.

Here is a link to view and download the slides.

If you re-post or use the slides, please be sure to give credit to William Seymour of Lando & Anastasi, LLP and the Ordinary Observer design patent blog.

Enjoy!

USPTO Requests Comments on Proposed Written Description Guidance for Design Patents

The United States Patent and Trademark Office has issued a Request for Comments on its proposed guidance to patent examiners regarding the written description requirement in Section 112 of the Patent Act with respect to design patents.  The proposed guidance would address situations where an amended or continuing application claims only a subset of the elements disclosed in an earlier or original application.  In other words, in the example below, if the original claim comprised the images on the left, can the amended claim cover only the subset of elements shown in solid lines on the right?