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  • The Federal Circuit Creates A New Standard For Assessing The Nonobviousness Of Design Patents

    On May 21, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit” or “court”) issued an en banc opinion, affirming-in-part, vacating-in-part, and remanding a United States Patent and Trademark Office, Patent Trial, and Appeal Board (“Board”) decision that the prior art, including U.S. Design Patent No. D773,340 (“Lian”) did not render unpatentable Appellee GM Global Technology Operations LLC’s (“GM”) U.S. Design Patent No. D797,625 (the “D’625 patent”), pursuant to 35 U.S.C. §§ 102 and 103. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, __F.4th__, 2024 WL 2280728 (Fed. Cir. May 21, 2024). The en banc court affirmed the Board’s § 102 decision of no anticipation but vacated and remanded its § 103 decision of nonobviousness because the court overruled the long-standing Rosen-Durling test. Id. 

  • Federal Circuit Affirms Summary Judgment Of Validity of Automotive-Part Design Patents, Rejecting The Argument That In The Automotive Context, The Parts’ Aesthetic Appeal Is Functional

    On July 23, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) made public an opinion affirming a district court’s sua sponte summary judgment that design patents covering the hood and headlamps of Ford’s F-150 truck are not invalid for claiming functional features.  Automotive Body Parts Assoc. v. Ford Global Techs., LLC, ___ F.3d ___ (Fed. Cir. July 23, 2019).  The CAFC rejected arguments that the aesthetic appeal of replacement parts that match the original equipment makes the designs functional.  The CAFC also rejected an argument for a design-patent-specific exception to the permissible-repair doctrine.
    Category : Design Patents
  • Federal Circuit Reverses PTAB Rejection Of Design Patent Application

    On August 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the Patent Trial and Appeal Board (PTAB) in which the PTAB had rejected a design patent application for indefiniteness.  In re Ron Maatita, —F.3d—, (Fed. Cir. Aug. 20, 2018).  The CAFC ruled that the PTAB had wrongly applied the indefiniteness standard in the context of a design patent claiming the design of the sole of an athletic shoe.
    Categories : Design PatentsPTABSection 112
  • Federal Circuit Rules On Issue Of Prosecution-History Estoppel In Design-Patent Case

    On Wednesday, August 1, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a district court dismissal in a design-patent case.  Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., —F.3d—, (Fed. Cir. August 1, 2018).  The CAFC determined that prosecution-history estoppel did not bar the patent owner’s infringement claim, and remanded the case for further proceedings.
    Category : Design Patents