Publications – Oblon, McClelland, Maier & Neustadt, L.L.P.

Federal Circuit Holds Prosecution History Disclaimer Applicable to Design Patents

25 Jul 2025 00:00:00 -0800

On June 17, 2025, the Federal Circuit reversed a jury’s finding that Top Brand LLC had infringed Cozy Comfort Company’s U.S. Patent No. D859,788 and trademarks. Top Brand LLC v. Cozy Comfort LLC, No. 2014-20191. In a precedential decision, the Federal Circuit held the principle of prosecution history disclaimer applies to design patents. The Federal Circuit noted that it had previously held in Pacific Coast Marine Wind-shields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014) that disclaimer (surrender of subject matter) as a result of amendments made during prosecution of a design patent. The Court found that a similar logic should apply to arguments made during prosecution of a design patent and concluded that “a patentee may surrender claim scope of a design patent by its representations to the Patent Office during prosecution.”

Cozy Comfort’s design patent is directed to an “enlarged over-garment with an elevated marsupial pocket.” During prosecution, to gain allowance of the design, Cozy Comfort Company focused on specific features to distinguish its design from the prior art. Specifically, Cozy Comfort contended its design patent claimed a different pocket size and shape, armhole placement and hem slope than that of the prior art references cited by the Examiner. When considering the issue of infringement in light of this prosecution history, the Federal Circuit found “multiple significant aspects of the accused products are the same ones Cozy Comfort disclaimed during prosecution, and they cannot be relied on to show design similarity between the accused and patented designs.” Because Cozy Comfort only pointed to disclaimed features as being similar between Top Brand’s accused product and Cozy Comfort’s design, the Court found a “hypothetical ordinary observer” could not find infringement. Consequently, the Court overturned the jury’s infringement finding and reversed the district court’s denial of judgement of no infringement as a matter of law.

The Court’s opinion can be found here.

The PTAB Radically Changes its Approach to Discretionary Denials

25 Jul 2025 00:00:00 -0800

Over the past several months the PTAB has dramatically increased the number of discretionary denials of Petitions for Inter Partes Review (IPR). The extent of, and varying rationales for, the discretionary denials has caught many members of the patent bar by surprise and led, at least for now, to significant uncertainty for those considering filing an IPR Petition.

On February 28, 2025, the U.S. Patent and Trademark Office (USPTO) rescinded former USPTO Director Kathi Vidal’s 2022 memo, “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Vidal Memo). The USPTO announcement directed that parties to post-grant proceedings should “refer to Patent Trial and Appeal Board (PTAB) precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).” The period immediately following the Vidal Memo rescission saw an increased reliance on the Fintiv factors (focusing on the status of parallel proceedings such as related district court litigation) to discretionarily deny IPR institutions.

Subsequently, on March 26, 2025, Acting Director, Coke Morgan Stewart, published a memo titled “Interim Process for PTAB Workload Management” (Interim Process Memo). The memo implemented a new bifurcated process for pre-institution IPR and PGR proceedings consisting of: (i) a first phase of “discretionary considerations”; and (ii) a second phase of “merits and other non-discretionary statutory considerations.” In the first phase, the Director, with at least three PTAB judges, determines whether a petition should be discretionarily denied and issues a decision accordingly. Only if the Director does not find a discretionary basis for denial is the petition referred to a three-member panel for the second phase of the bifurcated process. In the second phase, the three-member panel handles the petition “in the normal course including a decision on institution addressing the merits and other non-discretionary statutory considerations.”

The Interim Process Memo listed the following as relevant considerations for discretionary denials in the first phase:

Whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims;
Whether there have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability;
The strength of the unpatentability challenge;
The extent of the petition's reliance on expert testimony;
Settled expectations of the parties, such as the length of time the claims have been in force;
Compelling economic, public health, or national security interests; and
Any other considerations bearing on the Director's discretion.

The Acting Director has been referencing a "holistic assessment of all of the evidence and arguments presented," in her recent discretionary denial decisions. E.g., Tessell, Inc. v. Nutanix, Inc., No. IPR2025-00322, Paper 14 (June 12, 2025). However, as evidenced by recent discretionary denials some considerations may be more critical to the assessment than others – namely, “settled expectations.”

“Settled expectations” is a new consideration that looks at the length of time a challenged patent has been in force. The Acting Director first applied settled expectations as a consideration to discretionarily deny institution of five related IPRs in iRhythm Technologies v. Welch Allyn, No. IPR2025-00363, Paper 10 (P.T.A.B. June 6, 2025). The Acting Director noted several factors weighed against discretionary denial. However, the patent owner argued “because one of the patents [had] been in force since as early as 2012 and Petitioner was aware of it as early as 2013 … settled expectations favor[ed] denial of institution.” No. IPR2025-00363, Paper 10, at *2. Finding the patent owner’s argument persuasive, the Acting Director concluded “Petitioner’s awareness … and failure to seek early review … outweigh[ed other] considerations.”

In another decision, Dabico Airport Sols., Inc. v. AXA Powers ApS, No. IPR2025-00408, Paper 21 (P.T.A.B. June 18, 2025), the Acting Director once again discretionarily denied institution based on settled expectations. However, unlike iRhythm, in Dabico there was no evidence of petitioner’s longstanding prior knowledge of the challenged patent. Furthermore, neither party raised the argument for settled expectations. Nonetheless, the Acting Director determined discretionary denial was appropriate because of the settled expectations created by “the challenged patent [which had] been in force almost eight years,” and the petitioner’s failure to provide “any persuasive reasoning why an [IPR was] an appropriate use of Office resources.” No. IPR2025-00408, Paper 21, at *2. While acknowledging the lack of any “bright-line rule” to guide settled expectations, the Acting Director noted “the longer the patent has been in force, the more settled expectations should be.” Id. She suggested this approach was appropriate by comparing it to the six-year statutory limit on damages for filing infringement lawsuits. iRhythm and Dabico highlight firstly, that “settled expectations” can be a critical, even dispositive, consideration in a discretionary denial.

The cumulative effect of the Vidal Memo rescission and Interim Process Memo has been a dramatic policy shift in favor of discretionarily denying inter partes reviews. Members of the PTAB bar have raised numerous questions about whether the shift towards discretionary denials is appropriate and how strategic thinking about IPR filing will be affected. Other questions have been asked about whether the USPTO’s approach towards discretionary denials may shift again once USPTO Director John Squires is (presumably) approved by the Senate. Until then, members of the PTAB bar will be learning how to effectively utilize the new discretionary denials briefing phase and looking for increased clarity and predictability in the PTAB’s new approach to discretionary denials.

USING ESPACENET.COM FOR RETRIEVING REFERENCES

10 Feb 2025 00:00:00 -0800

If you need to find a translation of a foreign reference, you can look in espacenet.com:

https://worldwide.espacenet.com/

Espacenet will bring you to this screen. Type in your foreign reference in the searching box including the country designation. See below example:

If no translation, try clicking on the Print button – and select print to PDF – this should provide you with the English Abstract (see below). For purposes of an IDS, if you have the foreign document, an English Abstract SHOULD be sufficient for inclusion on the IDS 1449.

When filling out the 1449, instead of your foreign reference stating “CN (with machine translation)”, you would simply put “CN (with English Abstract)” and insert the XX in the “No” column under “TRANSLATION”.

USPTO Withdraws Proposed Changes to Terminal Disclaimer Practice

04 Dec 2024 00:00:00 -0800

Further to our article of May 13, 2024 (here), the U.S. Patent and Trademark Office (USPTO) announced on December 4, 2024, that it is withdrawing the Notice of Proposed Rulemaking published in the Federal Register on May 10, 2024. According to the USPTO, "In light of resource constraints, the USPTO has decided not to move forward with the proposed rule at this time and to withdraw the proposed rule. Despite the decision not to move forward with the proposed rule at this time, the USPTO appreciates and takes seriously the thoughtful perspectives raised by commenters."

Recall that the proposed rule sought to require that a Terminal Disclaimer include a provision stipulating that the patent will be unenforceable if it is linked directly or indirectly to another patent whose claims have been invalidated due to prior art. This raised valid concerns that filing a Terminal Disclaimer would entail a risk that the enforceability of an entire patent could depend on the validity of a single claim in another patent.

Many patent applicants and owners will welcome the withdrawal of this proposed rule. At least for now, current practice remains, where claims are typically assessed individually even within a single patent.

The USPTO’s announcement is available here: Federal Register

USPTO Announces Fee Increases Effective January 19, 2025

22 Nov 2024 00:00:00 -0800

The United States Patent and Trademark Office (USPTO) has finalized fee increases set to take effect on January 19, 2025. Certain fees will rise significantly. Below is an overview of some of the most notable changes. The “undiscounted” fees discussed below apply to large entities, but discounts are available for small and micro entities. Further details are available on the USPTO’s website.

The upcoming fee adjustments by the USPTO introduce several key changes to patent-related costs based on the following framework: An approximate 7.5% increase will apply “across the board” to all patent fees that are not “targeted." Examples of non-targeted fees include the fees for filing a terminal disclaimer and maintenance fees. Additionally, "front-end" patent fees, which include filing, search, and examination fees, will experience an additional 2.5% increase resulting in a total front-end increase of 10%:

The targeted fees will see more significant increases. Furthermore, a few new fees will be introduced, such as surcharges for filing certain “continuing applications” and new charges for Information Disclosure Statements (IDSs). These changes highlight the importance of planning and efficient patent management to mitigate the financial impact.

With respect to continuing applications, the Office will require a new surcharge of $2,700 for each continuing application filed 6 years after its earliest benefit date (“EBD”), and of $4,000 for each continuing application filed 9 years after its EBD. In this context, “continuing” includes continuation, divisional, and continuation-in-part applications (not Requests for Continued Examinations, which are covered by targeted fees discussed further below). EBD refers to the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78(d). The EBD is also the date from which the 20-year patent term is calculated, and thus is not the filing date of a foreign application or the filing date of a provisional application. These new surcharges should motivate applicants to file certain continuing applications before the January 19, 2025, effective date.

The targeted “excess claims” fees also merit attention: In its final rule, the USPTO is increasing the fee for each excess independent claim (in excess of three) to $600 for undiscounted entities. This amounts to a 25% increase. The USPTO is also increasing the fee for each excess total claim (in excess of 20) to $200 for undiscounted entities, which amounts to a 100% jump from the existing fee. The multiple dependent claim fee will increase by about 7.5% to $925. As a reminder, the fee for a multiple dependent claim is calculated based on the number of claims to which the multiple dependent claim refers. These changes to the claim fees should encourage the filing of preliminary amendments seeking to mitigate filing costs.

The RCE fees are other targeted fees of interest: In its final rule, the USPTO is increasing the fee for a first RCE to $1,500 (an increase of “only 10%”). USPTO is increasing the undiscounted fee for the second and subsequent RCEs to $2,860 (a 43% increase). Applicants will thus want to streamline examination, in order to avoid prolonged prosecution with multiple RCEs. This task will not be eased by the expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0), which the USPTO decided to terminate based on the public feedback received earlier this year criticizing a proposed new fee of $500.

The USPTO is introducing a new IDS size fee based on the cumulative number of items of information provided during the pendency of the application or reexamination proceeding. “Provided” in this context refers to items cited on an IDS under § 1.98(a)(1), whether or not an actual copy of the cited item is submitted to the agency. The IDS size fee is as follows: a first amount of $200 for a cumulative number of items of information in excess of 50; a second amount of $500 for a cumulative number of items of information in excess of 100 but not exceeding 200, less any amount previously paid; and a third amount of $800 for a cumulative number of items of information in excess of 200, less any amounts previously paid. Note that the USPTO is not requiring any new fee when the cumulative number of items of information is less than 50. These new fees should not affect most applicants. According to the USPTO, applicants provide over 50 total items of information in only about 13% of applications.

Finaly, the USPTO is raising the fees for AIA trials by 25%. Specifically, for an Inter Partes Review, the request fee will be $23,750 and the post-institution fee will be $28,125.

Latest Case Decisions Affecting Patent Licenses in U.S., Europe and Japan

04 Oct 2024 00:00:00 -0800

Congratulations to Dr. Yorikatsu Hohokabe for having his article selected as Article of the Month in the September edition of Les Nouvelles on the Licensing Executives Society International (LESI) website. This article was co-authored with Hideaki Kobayashi and Dirk Schubler-Langeheine. Read the article here.

USPTO Sunsets the After Final Consideration Pilot Program 2.0 (AFCP 2.0)

02 Oct 2024 00:00:00 -0800

The U.S. Patent and Trademark Office (USPTO) announced that it is temporarily extending the After Final Consideration Pilot Program 2.0 (AFCP 2.0) through December 14, 2024, followed by termination of the program. The USPTO will not accept any AFCP 2.0 Requests after December 14th.

According to the USPTO, “[b]ecause the public is not widely receptive to paying a fee to participate in the AFCP 2.0, the USPTO has decided to terminate the program after a brief extension to December 14, 2024.” There is currently no USPTO fee for filing an AFCP 2.0 Request. However, the USPTO proposed for fiscal year 2025 a $500 fee (undiscounted) for filing an AFCP 2.0 Request, ostensibly to “offset the USPTO’s costs of administering the AFCP 2.0”.

The USPTO indicated that the extension through December 14th is “to provide program users with reasonable time to adjust to the program’s upcoming termination should they be in the process of preparing a request for consideration under AFCP 2.0.”

Regular after-final practice is not affected by the termination of the AFCP 2.0.

The Notice is available here: https://www.govinfo.gov/content/pkg/FR-2024-10-01/pdf/2024-22481.pdf

More information is available here: https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20

CAFC Affirms Post-AIA Invalidity of Process Claims Based on Sale of Product Made by Claimed Process

15 Aug 2024 00:00:00 -0800

The U.S. Court of Appeals for the Federal Circuit (CAFC) recently affirmed the International Trade Commission's (ITC) decision in Celanese International Corp. v. ITC, ruling that Celanese's process claims were invalid due to secret sales of products made by the claimed process prior to the one-year on-sale bar, as codified in 35 U.S.C. § 102(a). This decision followed the Supreme Court's reasoning in Helsinn Healthcare v. Teva Pharmaceuticals (2019), rejecting Celanese's argument that the America Invents Act (AIA) altered the on-sale bar to exclude sales of products made by undisclosed processes.

The case arose from an ITC investigation into sweeteners imported by a Chinese manufacturer, which allegedly infringed Celanese's patents. It was undisputed that Celanese's process was used in Europe, resulting in sales by Celanese of the sweetener more than a year before the patents' effective filing date. The ITC found the process claims invalid, concluding that the AIA did not change the on-sale bar's interpretation.

On appeal, the Federal Circuit emphasized that the on-sale bar has been part of U.S. patent law since the Patent Act of 1836, consistently interpreted to include sales of products made by a secret process. The court cited prior cases where patent claims were invalidated due to the commercial exploitation of a process more than a year before filing for patent rights.

Celanese argued that AIA's change of wording in Section 102(a)(1) from "invention" to "claimed invention" and the addition of "otherwise available to the public" meant the process itself must be sold or publicly disclosed to invalidate the patent. The Federal Circuit rejected these arguments, noting that the changes were clerical and did not alter the established interpretation of the on-sale bar. Additionally, the one-year grace period for public disclosures in Section 102(b)(1) did not apply, as Celanese's sales occurred outside this window.

New Bill Introduced in U.S. Congress to Overturn the 2006 eBay Decision

13 Aug 2024 00:00:00 -0800

Historically, patent infringement judgments in U.S. federal courts led almost automatically to injunctive relief under 35 USC 283. This section of the patent statute provides that a court “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” The situation changed with the Supreme Court's 2006 decision in eBay Inc. v. MercExchange. The eBay decision rejected the notion that injunctions should be generally granted upon a showing of infringement and required instead a detailed analysis based on four principles of equity: irreparable injury to the plaintiff, inadequacy of legal remedies, balance of hardships, and public interest. This decision eliminated the presumption of injunctive relief, particularly affecting non-practicing entities (NPEs). Since the eBay decision, many U.S. patentees have faced challenges in obtaining injunctive relief.

A new bipartisan bill, the RESTORE Patent Rights Act of 2024, was recently introduced in both houses of the U.S. Congress to return to the pre-eBay situation. The bill introduces a rebuttable presumption that an adjudged patent infringer should face injunctive relief, thus simplifying the process. Under the bill, 35 USC 283 would be amended by adding the following subsection:

If … the court enters a final judgment finding infringement of a right secured by patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct

Supporters argue that the eBay decision undermined the exclusivity of patent rights and encouraged predatory infringement by large companies. Opponents of the bill cite concerns about enabling opportunistic "holdup" situations by NPEs. Despite the bill's bipartisan support, strong opposition and the upcoming election year make its passage uncertain.

Federal Circuit Adopts New Test for Design Patent Obviousness

30 May 2024 00:00:00 -0800

The Federal Circuit’s recent decision in LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, (Fed. Cir. May 21, 2024) (en banc) has overruled the longstanding test for obviousness of design patents. Specifically, the Federal Circuit found that the test for obviousness, known as the Rosen-During test, was inconsistent with Supreme Court precedent that called for “a more flexible approach than the Rosen-During test for determining non-obviousness.”

In place of the Rosen-During test, the Federal Circuit has chosen to align design patents obviousness with that of utility patents. Specifically, invalidity based on obviousness of a patented design will be determined based on the application of the Graham factors laid out by the Supreme Court in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). These factors include “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; and “the level of ordinary skill in the pertinent art.” In addition to these factors, secondary considerations such as commercial success, long felt but unsolved needs, failure of others, etc., may be relevant as “indicia of obviousness or nonobviousness.”

Regarding the test for obviousness based on the Graham factors, the Federal Circuit noted that “[t]his test has proven workable for utility patents and we see no reason why it would not be similarly workable for design patents. As with any change, there may be some degree of uncertainty for at least a brief period, but our elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent.”

Just one day after the Federal Circuit handed down their opinion in LKQ, the USPTO issued updated guidance and examining instructions on evaluating obviousness in design patent applications and design patents. Following an introduction to the implications of the Federal Circuit’s LKQ ruling on obviousness for designs, the USPTO provided examining instructions that addressed each of the Graham factors as Factual Inquiry One, Two, and Three.

Of note, Factual Inquiry One (“the scope and content of the prior art”) still requires that a primary reference be identified. Instead of the primary reference being “basically the same” (as under the Rosen-During test), the primary reference need only be “something in existence — not . . . something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.” The primary reference does not even have be in the same field of endeavor as the claimed design so long as it is analogous art. Any secondary reference must also be analogous art. The USPTO guidance notes that “the Federal Circuit did not define how to determine whether a prior art design outside the field of endeavor of the article of manufacture is analogous.” The USPTO guidance does not explain how to determine whether a prior art design is analogous, but does instruct examiners to “consider the degree to which an ordinarily skilled designer would be motivated to consider other fields.” If the examiner still is unsure, then the examiner should contact their SPE, though it is unclear what metric the SPE will use to help the examiner decide. The USPTO will also begin compiling examples of when a reference has been determined to be analogous art.

In evaluating obviousness of design applications, the USPTO guidance cautions that “there must be some record-supported reason (without impermissible hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design. Design examiners should keep in mind that, generally, the more different the overall appearances of the primary reference versus the secondary reference(s), the more difficult it will be to establish a motivation to alter the primary prior art design in light of the secondary one and set forth a prima facie case of obviousness.”

The now-overruled Rosen-Durling test was very workable and helped maintain a high allowance rate for design applications and helped to make it difficult to invalidate existing design patents based on obviousness. Regardless of how workable this new obviousness test proves to be in the design context, it certainly has created a lot of questions for practitioners and examiners, and we will be closely following its implementation.