Three recent decisions relating to design patents provide useful insights into design patent prosecution. First, the PTAB recently instituted two IPR petitions directed to design patents, bringing the total number of instituted design petitions to nine. In addition, the Central District of California recently found a design patent directed to an interlocking floor mat to be invalid as obvious on summary judgment.
Skechers USA, Inc. v. Nike, Inc., IPR2017-00620, -00621
In a November 2016 post, we discussed a series of petitions Skechers filed against Nike involving design patents directed to athletic shoes. At that time, all eight of Skecher’s petitions were denied institution by the Patent Trial and Appeal Board (PTAB). In a new series of petitions filed on different grounds, Skechers once again sought to invalidate the same Nike design patents. This time around, however, the PTAB granted institution on two of Skechers’ petitions, IPR2017-00620 and IPR2017-00621, and denied institution on the remaining five.
Skechers’ petitions for IPR2017-00620 and IPR2017-00621 involved design patents D723,783 and D723,781, respectively, which are both directed to the design of the “midsole” (Fig. 1 of ’783 and ’781 patents), “outsole” (Fig. 1 of ’783 and ’781 patents), and heel (Fig. 3 of ’783 and ’781 patents) of an athletic shoe.
Nike also urged the PTAB to exercise its discretion to deny a later petition under 35 U.S.C. § 314(a) or to deny institution under 35 U.S.C. § 325(d) because several of the references were submitted to the Patent and Trademark Office (PTO) during prosecution. For its § 314(a) argument, Nike argued that all seven of the Nvidia factors weighed against institution, including that the two primary references relied on by Skechers in the petition were brought before the Examiner during prosecution. In response, the PTAB considered only whether the references had been brought forward during a previous IPR proceeding, which they had not. Further, the PTAB did not find Nike’s § 325(d) argument persuasive, because Nike “did not direct [the PTAB’s] attention to any substantive discussion of the identified references by either the examiner or the applicant during prosecution.” As such, the PTAB did not find denial of institution to be warranted on these grounds.Skechers claimed that the designs were obvious over multiple prior art references. Nike attempted to swear behind two of the references, CN1388 and RCD 0005, because they were published after the invention date of both design patents. To support its argument, Nike submitted a declaration from Mark Miner, the named inventor, that contained three attached documents corroborating Miner’s statement that “the claimed design was conceived and/or reduced to practice in the U.S. on or before June 22, 2011”—a date prior to the two prior art references being published. The PTAB found that the Miner Declaration was “insufficient evidence to support [Nike’s] attempt to establish an earlier priority date for the [design patents].” In particular, the three attached documents failed to illustrate the alleged date of conception and/or reduction to practice. Therefore, the PTAB found the CN1388 and RCD 0005 references to be classified as prior art.
It remains to be seen whether the ’783 and ’781 patents will be found unpatentable. Final Written Decisions on these two IPRs are expected in mid-2018.
Parallax Group Int’l, LLC v. Incstores LLC (C.D. Cal. June 30, 2017)
Parallax brought an infringement action against Incstores in the Central District of California, asserting the D543,764 patent (“the ’764 patent”), which was directed to a design for interlocking floor mats. According to the ’764 patent’s specification, the top (Fig. 1) and bottom (Fig. 2) sides of the floor mat were different colors.
Incstores moved for summary judgment, claiming the ’764 patent was invalid as anticipated and obvious. In its anticipation analysis, the court looked to whether the ’764 design was “identical in all material respects” to the EVAHWCG reference. The court also made a passing reference to the Federal Circuit’s International Seaway decision from 2009, noting that the ordinary observer test must logically be the sole test for anticipation. Although the EVAHWCG reference was “somewhat blurry” and it “appeared to have more ‘teeth’ at the boundaries than the ’764 patent,” the court found that discrepancies between the corners of the two designs (e.g., smaller corner tooth as compared to side teeth) left a genuine issue of material fact that could not be decided through summary judgment.
For obviousness, the court found that, despite minor differences, the EVAHWGC reference had “design characteristics . . . [that were] basically the same as the claimed design” of the ’764 patent. The mats were both found to have a square perimeter made up of similarly configured teeth and dual layering and coloring. Parallax argued that differences in the spacing and sizing of the teeth distinguished its design from that of the EVAHWGC reference. The court noted that it would have been obvious to arrive at the same number of interlocking teeth per side (10 in the case of the ’764 patent) because the prior art references taught floor mats having 3–15 teeth per side. Further, any differences in tooth shape were found to be de minimis by the court because the overall visual impression of the floor mat would not differ.
Parallax attempted to fend off the obviousness finding by arguing the existence of secondary considerations, such as commercial success. The court, however, did not find a sufficient nexus between the commercial success and alleged merits of the claimed design to defeat the obviousness finding. Thus, the court found the claimed design of the ’764 patent obvious and granted Incstores’s Motion for Summary Judgment of Invalidity.
The institution decisions in the Skechers case give insight into how events that happen during prosecution may affect proceedings before the PTAB. For 35 U.S.C. § 325(d) to apply, it appears that the patent owner must at least show that a reference cited in a petition for IPR was substantively discussed during prosecution by either the examiner or the applicant.
From the Parallax decision, it is interesting to note that the court appears to have considered two different standards for anticipation. The court noted the “identical in all material respects” standard from Hupp v. Siroflex, as well as the “ordinary observer” standard from International Seaway. Both opinions were panel decisions of the Federal Circuit, and thus there remains some ambiguity about which standard should govern. Although the MPEP mentions both tests, recently, examiners in the design technology center appear to have applied the “ordinary observer” standard in favor of the “identical in all material respects” test. Cases like the Parallax decision suggest that both standards may continue to be relevant during prosecution.
 Institution Decision, IPR2017-00620, Paper 13 at 10; see also Institution Decision, IPR2017-00621, Paper 13 at 11.
 Id. at 11; see also IPR2017-00621, Paper 13 at 12.
 Id. at 12; see also IPR2017-00621, Paper 13 at 13.
 Id.; see also IPR2017-00621, Paper 13 at 13.
 Order Regarding Defendant’s Motion for Summary Judgment of Invalidity, Parallax Group Int’l, LLC v. Incstores LLC, No. 8:-cv-00929 (C.D. Cal. June 30, 2017).
 Id. at 7.
 Id. at 7-8.
 Id. at 9.
 Id. at 10-11.
*Ryan McDonnell is a Summer Associate at Finnegan.