Takeaway: A challenge based on functionality under 35 U.S.C. § 171 is not permitted in an inter partes review because it is not based on 35 U.S.C. § 103 nor is it based on prior art that consists of a patent or printed publication.
In its Decision, the Board denied Petitioner’s Petition for inter partes review of the sole design patent claim of the ’731 patent, because the Board was not persuaded that there was a reasonable likelihood that Petitioner would prevail on at least one alleged ground of unpatentability with respect to the claim of the ’731 patent. Thus, no trial was instituted.
The ’731 patent relates to a truck headlamp. As for claim construction, the parties had disagreed “whether functional elements of the design form part of the claim.” Petitioner had argued that “the design feature of a given embodiment cannot be the result of functional or mechanical considerations, and therefore the functional elements of the headlamp of the ’731 patent do not form part of the claim.” In contrast, it was Patent Owner’s position that “whether or not these elements are functional, they must be considered and construed as part of the visual impression created by the patented design as a whole.”
The Board agreed with Patent Owner on this point, indicating that Petitioner had impermissibly conflated “invalidity based on functionality under 35 U.S.C. § 171 with invalidity based on obviousness under 35 U.S.C. § 103.” Citing High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013), the Board stated that whether a design patent is “primarily ornamental” is distinct from the nonobviousness requirement.
The Board went on to note that “a challenge based on functionality under 35 U.S.C. § 171 is not permitted in an inter partes review because it is not based on 35 U.S.C. § 103 nor is it based on prior art that consists of a patent or printed publication.” Thus, the Board agreed with Patent Owner that the allegedly functional elements identified by Petitioner had to be considered when conducting the obviousness analysis of the visual impression created by the patented design as a whole.
The Board then addressed Petitioner’s challenge to the sole claim of the ’731 patent, all of which involved obviousness positions under 35 U.S.C. § 103. Each of the asserted grounds of unpatentability relied upon Kobayashi as the primary reference. Petitioner proposed to modify the headlamp of Kobayashi “by adding a side Lamp D,5 adding striations and a checkered surface pattern, and curving the bezel.” But the Board did not agree with Petitioner that the headlamp of the ’731 patent and Kobayashi headlamp have essentially the same shape. Because of this and other differences, the Board found that “a designer of ordinary skill would [not] have viewed the Kobayashi lamp to give the same visual impression as the ’731 patent.” Thus, the Board concluded that Petitioner had not shown a reasonable likelihood of prevailing with regard to any of the grounds of unpatentability. The Board went on to state that “[e]ven if Kobayashi were a valid primary reference, which we have determined above it is not, the modification proposed by Petitioner would not result in ‘the same overall visual appearance as the claimed design.’
Dorman Products, Inc. v. Paccar, Inc., IPR2014-00542
Paper 10: Decision Denying Institution of Inter Partes Review
Dated: September 5, 2014
Patent D525,731 S
Before: James T. Moore, Phillip J> Kauffman, and Philip J. Hoffmann
Written by: Kauffman
Related Proceeding: Dorman Products Inc. v. PACCAR, Inc., Civil Action No. 2:13-cv-06383-JD (E.D. Pa.)