GW Design Law conference: current state of the law

Morning Session 2: The Current State of the Law Under 35
U.S.C. § 102, 103 and 112
Moderator: Daniel Gajewski, Sterne, Kessler, Goldstein &
Fox: Issues include continuation practice; maybe new rules coming.  Skechers sought invalidation of a Nike
patent, alleging noncompliance w/ the written description requirement in 112 by
the introduction of new matter.  Nike changed
a photo to a line drawing, and dotted some lines out.  IPR case. 
Changing certain lines, and changing lines to dotted lines claimed new
matter.  Board found 112 satisfied
despite relatively minor differences in way line drawing represented photo—Skechers
went into too great detail rather than looking at it like an ordinary designer.  “Range of reasonableness” enough to provide
sufficient written description via photos. 
“Show and delineate” requirement—the shoe upper was reduced to broken
lines; Skechers argued that one wouldn’t have recognized the design from the
disclosure. Board disagreed.  We aren’t
persuaded that the photos fail to clearly show and delineate the claimed
midsole elements of the design in addition to the upper and outsole elements,
showing that the inventor had possession of the invention.
Perry J. Saidman, Saidman DesignLaw Group: Black letter:
must disclose every element. To anticipate a claim, the disclosure must
anticipate each element of the claim.  1997:
Anticipation requires the earlier design to be identical in all material
respects to the claimed design.  Int’l Seaway
v. Walgreens, Fed. Cir. 2009: the worst decision from the Fed. Cir.  What happened to the law of anticipation:
ordinary observer test must logically be the sole test for anticipation.  If two designs are substantially the same
there’s infringement; thus if the prior art is substantially the same as the
design, the design is anticipated by prior art. 
No longer required to be identical. But these are not the same
things. 
Some people say this is no big deal.  Actual 102 rejections by the PTO show
appalling consequence where prior art has an extra element that the design
doesn’t.  Net effect: more anticipation
rejections than ever before. Very subjective: no analysis necessary.  102 rejections w/o 103 rejections: Alice in
Wonderland effect.  The PTO is now in the
business of deciding infringement, if the anticipation test and the infringement
test are the same. [Shouldn’t there be the possibility of 102 rejections w/o
103 if they are in fact separate bases?] 
By focusing on 102, PTO avoids the rigorous test of 103 for primary and
secondary references.  [Note that if
vagueness is a First Amendment problem for TMs, design patent might have the
same problems.]  Egyptian Goddess says you look at patented design and accused design
in the context of the prior art.  This is
now not being done, so if you get a 102 reference you should tell the PTO to
evaluate the prior art in light of its prior art.
What is the basis for Int’l Seaway?  Peters v. Active, 1889 SCt case.  Maxim: that which infringes, if later, would anticipate,
if earlier.  Graver Tank, 1950, created
doctrine of equivalents for utility patents: substantially the same function in
substantially the same way to produce the same result.  Fed. Cir. said in Lewmar, 1987, said that
Peters v. Active had to be adjusted to take doctrine of equivalents into
account. That which would literally
infringe if later in time would anticipate if earlier.  Lee v. Dayton-Hudson, Fed. Cir. 1988, Gorham test inherently makes doctrine of
equivalents inherent in infringement test. 
The problem: the test for design patent infringement is doctrine of
equivalents, but only in cases of literal infringement is there anticipation.  So infringement isn’t the same as
anticipation.
Elizabeth Ferrill, Finnegan: Examples of obviousness from
recent PTAB decisions. Design patent prosecution isn’t public unless the patent
issues. Affirmance of rejection: we never see that unless there’s an appeal to
the Fed. Cir.  PTAB heard about 15
appeals in design cases last year; ½ never become public.  PTAB cases also create bigger chances for
argument—long briefs, long explanations of decisions.
Obviousness is not as simple as anticipation. Primary
reference, from perspective of ordinary designer: design characteristics have
to be basically the same as the claimed design: (1) does it discern the correct
visual impression created by the patented design as a whole; (2) is the
secondary reference creating “basically the same” visual impression.  Secondary reference can modify the primary
reference to create a design that has the “same overall visual appearance” of
the claimed design.  Appearance of
certain ornamental features in one reference would suggest the application of
another.  Even if one side looks very
similar, other views might not.
Caterpillar v. Miller: Design is a warning triangle applied
to a curved surface of a coupler for an excavator. Invalidated for obviousness.
The appearance of the prior art doesn’t have to be identical to the claimed
design.  Basically the same, but not
exactly.  Secondary reference was another
type of coupler which did show a curved surface.  Coupler manual + curved surface = motivation
to combine. 
Premier Gem v. Wing Yee Gems: picking and choosing secondary
references. Petitioner wasn’t successful in challenging registration of jewelry
design; petitioner shouldn’t choose certain features from secondary references
while ignoring others – hindsight bias.
William LaMarca, USPTO, Office of the Solicitor: We still
apply the same test from the perspective of the ordinary skilled
designer/artisan.  Int’l Seaway impacted
anticipation, not obviousness. 
Ferrill: how could Int’l Seaway override a previous panel
decision? 
LaMarca: previous SCt precedent controls. PTO is correctly following
statute in applying ordinary skilled artisan for 103 obviousness; also
following the Fed. Cir. We think we’re consistent even if there are problems.  Examiner can’t just ignore the legal
standard. 
Ferrill: if the test is the same, you should have to apply
it the way the courts should apply it.
LaMarca: MPEP does discuss and give examples of how they
apply anticipation; they do say it doesn’t have to be identical. There is the
further point that close but slight differences = view it in context of prior
art; if you feel the examiner hasn’t done that you should argue it to the examiner
and in your appeal.
Saidman: expresses doubt that an examiner taking the
perspective of an ordinary observer would behave/react differently than an
examiner taking the perspective of an ordinary designer.

Ferrill: depends on the degree of crowding in the art, but
probably applied very similarly.

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