Patent Trial and Appeal Board: Design Patents Continue to Escape Challenges

Continuing the trend that we analyzed in May 2020, petitions to the US Patent and Trademark Office Patent Trial and Appeals Board (PTAB) requesting inter partes review or post-grant review for design patents maintained an institution rate well below 50% in 2020. Specifically, the design patent institution rate reached only 27%. This is based on a total of 18 institution decisions (5 granted, 13 denied), each involving grounds of prior art.

In 2021, the design patent institution rate reached 50%. This may be attributed to the relatively few—only two—PTAB decisions involving design patents issued in 2021: Cellpak Inc. v. Mambate USA Inc. and Sattler Tech Corporation v. Lyu. In Cellpak, institution was granted in part on grounds of anticipation. IPR2021- 00007, Paper 7 (PTAB Apr. 21, 2021). Based on the evidentiary record, which notably did not include a Patentee’s Preliminary Response, the PTAB determined that there is a “substantial similarity in the overall appearance” of challenged patent D846,728 S (’728) and the asserted prior art, Chinese Design Patent No. CN 302112862 S (’862). Id. at 10. Comparisons of the two designs are shown below.

As a whole, however, the institution rate for petitions filed against design patents is well below 50%— specifically, 38%. This is based on a total of 66 institution decisions (25 granted, 41 denied). While the design patent institution rate reflects that it is often difficult for petitioners to present a sufficient case that the challenged design patent is unpatentable based on prior art, petitioners that succeeded in getting inter partes review or post-grant review instituted are successful in invalidating the challenged design patent in 64% of the cases. Of the 25 instituted cases, 16 found the challenged patent to be unpatentable based on prior art. A more detailed analysis of those cases show that in more than half, grounds based on anticipation were successfully asserted. Specifically, of the 16 patents invalidated, 7 were invalidated on grounds based on anticipation.

This article appeared in the 2021 Design Patents Year in Review: Analysis and Trends report.