Design Patents Year in Review – Design Patents at the PTAB: 2024 in Review

Inter partes activity involving design patents at the Patent Trial and Appeal Board (PTAB) was relatively low in 2024. The PTAB rendered just two inter partes decisions involving design patents: Next Step Group, Inc. v. Deckers Outdoor Corp., IPR2024-00525, Paper 16 (PTAB Aug. 6, 2024) and Hangzhou Taihe Trading v. EP Family Corp., IPR 2023-00658, Paper 16 (PTAB Aug. 16, 2024).

An analysis of inter partes PTAB decisions between 2013 and November 2024 reveals that the design patent institution rate remains significantly lower than the utility patent institution rate and that the design patent invalidation rate at the final written decision stage remains steady. To date, the institution rate for design patents is 38%—significantly lower than the current utility patent institution rate of about 65%.1 2024 also did not see a change in the design patent claim invalidation rate at final written decisions; the rate remains at the previous year’s rate of 65%. This compares to a utility patent claim cancellation rate of about 75% at final written decision.

Hurdles to securing institution of challenges to design patents before the PTAB remain post-LKQ

Petitioner Next Step Group, Inc. challenged U.S. Patent D927,161 S, owned by Deckers Outdoor Corporation, in an inter partes review (IPR). Citing six references (three online webpages and three patents), Petitioner asserted that the patented design for a footwear upper was unpatentable based on two grounds of anticipation and eight grounds of obviousness.

The PTAB denied Petitioner’s request for an inter partes review. As an initial matter, the PTAB determined that Petitioner failed to provide sufficient evidence showing that the cited online webpages were printed publications that qualified as prior art. According to the PTAB, “the date that a product was listed as first available on a website…is not sufficient evidence that the content of the listing, including the photo-graphs depicted therein, were [sic] published at that time.” Further, because “[s]elling products online is dynamic,” “a statement on a commercial website as to when a product was “first available”…is not sufficient evidence that the listing itself, or any photograph depicted therein, has not changed over time. However, the PTAB determined that even if it were to conclude that the cited online webpages constituted prior art, Petitioner failed to demonstrate a reasonable likelihood that the claimed design is obvious or anticipated.

Concerning the asserted grounds of obviousness, the PTAB determined that Petitioner failed to compare the over-all visual appearance of the claimed design and the prior art under LKQ. As discussed in Federal Circuit Appeals: A Very Big Decision in an Otherwise Quiet Year, the Federal Circuit’s decision in LKQ overturned the long-standing Rosen-Durling obviousness test for design patents—that a primary reference be “basically the same” and that any secondary references be “so related” to the primary refer-ence that features in one would suggest application of those features to the other—as improperly rigid. After LKQ, the analysis for design patent obviousness more closely follows the Graham factors used for utility patent obviousness. For example, Petitioner failed to address the size ratio and the angle and curvature of features on the footwear.

As for the asserted grounds of anticipation, the PTAB determined that Petitioner failed to adequately address differences between the claimed design and the prior art as viewed by an ordinary observer or to provide any persuasive argument that these differences are minor or trivial.

This denial is notable because it is the first inter partes PTAB decision since the Federal Circuit’s en banc decision in LKQ Corporation v. GM Global Technology Operations LLC.

The denial also illustrates that post-LKQ, Petitioners may continue to face a high bar for invalidating design patents through PTAB proceedings.

Design patent invalidation rate at final written decision stage remains unchanged relative to 2023

The PTAB issued a final written decision in Hangzhou Taihe Trading v. EP Family Corp., an inter partes review challenge concerning U.S. Patent No. D934,012 S for a “Table Top,” owned by EP Family Corp. Petitioners Hangzhou Taihe Trading Co., Ltd. and Ningbo Likeju Trading Co., Ltd. sought to invalidate the patent.

Instead of filing a Patent Owner Response defending the validity of its patent, EP Family filed a noncontingent Patent Owner’s Motion to Amend requesting to cancel the original design claim in reliance on the proposed substitute claim.

The PTAB granted EP Family’s motion to cancel the sole original claim of the patent, and therefore did not reach the unpatentability grounds asserted in the IPR Petition against the original claim. The PTAB separately denied EP Family’s motion to add the proposed substitute claim, finding it indefinite under 35 USC 112, and therefore did not reach the Petitioners’ unpatentability grounds against the proposed substitute claim. The PTAB noted that EP Family could pursue the substitute claim in a reissue or reexamination proceeding, and EP Family filed a reissue application after the final written decision was issued. The reissue application is pending and not yet examined.

This article appeared in the 2024 Design Patents Year in Review: Analysis & Trends report.