USPTO Adapts to CAFC’s New Guidelines: What Design Patent Examiners Need to Know

USPTO Adapts to CAFC’s New Guidelines: What Design Patent Examiners Need to Know

by Dennis Crouch

On May 22, 2024, the day after the Federal Circuit’s en banc LKQ v. GM decision, the USPTO issued a memorandum to its examiners providing updated guidance and examination instructions in light of the court’s overturning of the long-standing Rosen-Durling test for determining obviousness of design patents. The memo, signed by USPTO Director Kathi Vidal, aims to immediately align USPTO practices with the more flexible approach outlined by the Federal Circuit, which eliminated the rigid requirements that: (1) a primary reference be “basically the same” as the claimed design, and (2) secondary references be “so related” to the primary reference that features in one would suggest application to the other.  This is a major shift in examination practice for design patents so it will be important to watch the developments to see whether the office ramps up design examination.

Although the primary reference need not be “basically the same” as the claimed invention, the court still maintained that the obviousness analysis begins with a primary reference. The opinion though doe snot grapple with this issue in any depth but rather appears to assume that the analysis will begin with a primary reference, without thoroughly examining potential alternatives. 

Continue reading USPTO Adapts to CAFC’s New Guidelines: What Design Patent Examiners Need to Know at Patently-O.

Speck v. Bates: Federal Circuit’s Two-Way Test for Pre-Critical Date Claims Limits Belated Interferences and Derivation Proceedings

by Dennis Crouch

Speck v. Bates, No. 23-1147 (Fed. Cir. May 23, 2024)

In likely one of the last interference proceeding appeals, the Federal Circuit has applied a “two-way test” to determine whether pre-critical date claims and post-critical date claims are “materially different” under pre-AIA 35 U.S.C. § 135(b)(1). The court found that Bates’ post-critical date claims in its U.S. Patent Application No. 14/013,591 were time-barred because they were materially different from Bates’ pre-critical date claims.

Although the decision is based upon an interference proceeding, the same provision is found within the new version of 135(b) that covers derivation proceedings. Thus, this same two-way test should apply to determine an amended claim was filed within the 1-year period.

Under the pre-AIA first-to-invent patent system, if two parties claimed the same invention in separate patent applications or patents, the USPTO could declare an interference proceeding to determine which party was the first to invent and thus entitled to the patent. However, Congress imposed a one-year time limit on when an interference could be provoked:

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.

Continue reading Speck v. Bates: Federal Circuit’s Two-Way Test for Pre-Critical Date Claims Limits Belated Interferences and Derivation Proceedings at Patently-O.

Decoding Patent Ownership beginning with Core Principles

by Dennis Crouch

In a recent decision, the Federal Circuit vacated a district court’s grant of summary judgment that an inventor, Dr. Mark Core, had automatically assigned a patent associated with his PhD thesis to his then-employer and education funder TRW.  Core Optical Techs., LLC v. Nokia Corp., Nos. 23-1001 (Fed. Cir. May 21, 2024). The key issue was whether Dr. Core developed the patented invention “entirely on [his] own time” under his employment agreement. The majority opinion written by Judge Taranto and joined by Judge Dyk held the contract language was ambiguous on this point and remanded for further factual development to determine the parties’ intent.  Judge Mayer dissented.

Although not discussed in the court’s decision, the appellant brief includes a suggestion that the Federal Circuit should “narrow or overrule” the automatic assignment law seen in FilmTec Corp. v. Allied Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), and its progeny.

Whether a present assignment of future inventions automatically conveys legal title to those inventions when the inventions come into being, or instead merely conveys equitable title and requires a separate written instrument to transfer legal ownership.

Continue reading Decoding Patent Ownership beginning with Core Principles at Patently-O.

Decoding Patent Ownership beginning with Core Principles

by Dennis Crouch

In a recent decision, the Federal Circuit vacated a district court’s grant of summary judgment that an inventor, Dr. Mark Core, had automatically assigned a patent associated with his PhD thesis to his then-employer and education funder TRW.  Core Optical Techs., LLC v. Nokia Corp., Nos. 23-1001 (Fed. Cir. May 21, 2024). The key issue was whether Dr. Core developed the patented invention “entirely on [his] own time” under his employment agreement. The majority opinion written by Judge Taranto and joined by Judge Dyk held the contract language was ambiguous on this point and remanded for further factual development to determine the parties’ intent.  Judge Mayer dissented.

Although not discussed in the court’s decision, the appellant brief includes a suggestion that the Federal Circuit should “narrow or overrule” the automatic assignment law seen in FilmTec Corp. v. Allied Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), and its progeny.

Whether a present assignment of future inventions automatically conveys legal title to those inventions when the inventions come into being, or instead merely conveys equitable title and requires a separate written instrument to transfer legal ownership.

Continue reading Decoding Patent Ownership beginning with Core Principles at Patently-O.

Nominate Someone (Yourself?) for the USPTO’s Advisory Committees

by Dennis Crouch

The USPTO is seeking nominations for several open positions on its Patent Public Advisory Committee (PPAC) and Trademark Public Advisory Committee (TPAC). [Fed Reg Notice] These prestigious committees advise the Director of the USPTO on policy matters relating to patents and trademarks respectively.  Serving on the PPAC or TPAC is an incredible opportunity to help shape the future of intellectual property rights in the United States. As a member, you would review policies, goals, performance metrics, budgets and user fees at the USPTO. You would also prepare an annual report for the President and Congress on these key issues.  Members must be U.S. citizens with substantial expertise in areas like finance, management, labor relations, science, technology or automation. At least 25% of the PPAC must represent small entity patent applicants.

Nominations are due by the July 5th. New members are appointed by the Secretary of Commerce, typically based upon advise from the USPTO Director.  See 35 U.S.C. 5.

Current PPAC members:

  1. Loletta (Lolita) Darden (Chair) – Visiting professor and director of the IP and Technology Clinic at George Washington University Law School.
  2. Charles Duan (Vice Chair) – Senior Policy Fellow at American University focused on technology and innovation policy.

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Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

by Dennis Crouch

In a highly anticipated en banc decision, the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). The court held that the two-part test’s requirements that 1) the primary reference must be “basically the same” as the claimed design, and 2) any secondary references must be “so related” to the primary reference that features from one would suggest application to the other, “impose[] limitations absent from § 103’s broad and flexible standard” and are “inconsistent with Supreme Court precedent” of both KSR (2007) and Whitman Saddle (1893). Rejecting the argument that KSR did not implicate design patent obviousness, the court reasoned that 35 U.S.C. § 103 “applies to all types of patents” and the text does not “differentiate” between design and utility patents.  Therefore, the same obviousness principles should govern.  This decision will generally make design patents harder to obtain and easier to invalidate.  However, design patents will likely continue to play an important role in protecting product design.

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Cellect or Reject? SCOTUS Asked to Consider Fate of ODP Doctrine

by Dennis Crouch

In its new petition for certiorari in Cellect LLC v. Vidal, No. __ (U.S. May 20, 2024), Cellect argues that the Federal Circuit erred in upholding the PTAB’s (PTAB) invalidation of Cellect’s four patents based on the judicially-created doctrine of obviousness-type double patenting (ODP). The key issue is whether ODP can cut short the patent term extension provided by the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b). Meanwhile, Dir. Vidal is looking to extend the power of ODP via rulemaking. This is an important case coming at an important time. 

  • Cellect Cert. Petition
  • Cellect Petition Appendix

The facts are as follows: Cellect owns four patents that claim technology related to image sensors in portable devices like cell phones and PDAs. All four patents claim priority to the same 1997 application, and therefore normally would have expired on the same date in 2017, 20 years from that priority date.  However, due to delays by the PTO during prosecution, three of the four patents were granted PTA under § 154(b), ranging from 45 to 759 days. As a result, the patents had staggered expiration dates. 

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Federal Circuit Limits Defendant Attorneys’ Fees Awards for IPR Expenses

by Dennis Crouch

The Federal Circuit’s recent decision in Dragon Intellectual Property LLC v. DISH Network L.L.C. affirms the district court’s grant of attorneys’ fees to the successful defendants, while denying recovery of fees incurred solely in the IPR proceedings and from plaintiff’s counsel.  The case offers important legal conclusions for attorney fees in cases that involve both district court and IPR litigation.

The district court found the case exceptional under § 285 due to the substantive weakness of Dragon’s infringement position, including clear prosecution history disclaimer precluding infringement by the accused products. A key issue on appeal was whether § 285 allows recovery of fees incurred in parallel IPR proceedings. The majority held that when a defendant voluntarily pursues an invalidity challenge through IPR, the fees incurred solely in the IPR are not recoverable. The court distinguished the facts from its prior decision in PPG Industries v. Celanese Polymer, where the defendant’s participation in reissue proceedings was not optional because the plaintiff had initiated them.

The majority also held that § 285 does not permit prevailing defendants to recover fees from plaintiff’s counsel. The statute’s silence on counsel’s liability, in contrast to other statutes and rules explicitly allowing recovery from attorneys, indicated that Congress did not intend § 285 to extend liability to counsel.

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