Dyson successfully defeated Puppy’s (Puppy Electronic Appliances Internet Technology Beijing Co.，Ltd.) invalidation challenges in two cases involving design-patents. Puppy Electronic, established 5 years ago, is a vacuum-cleaner manufacturing company whose cordless vacuum cleaner was sued by Dyson for design patent infringement. As a defending measure, Puppy filed an invalidation request against the said Dyson design patents. In the invalidation cases, Puppy cited more than one prior designs to comment on the patentability of the design patent by using a combination of prior design features. Beyond the contentious case itself, it is also interesting to learn the viewpoint of the Patent Reexamination Board (PRB) towards whether or not a design patent significantly differs from a combination of prior design features.
In the field of vacuum cleaner, there is no doubt that the cordless vacuum cleaner designed by Dyson is the shiny new star. Dyson cleaners are designed in a simple and modern style, having strong suction power, at the same time, easy to use or store, which constitute the subject matter of the design patents involved in this case.
Dyson’s patents involved here are design patents ZL201430281821.8 and ZL201430281733.8, both related to a head of a vacuum cleaner. The vacuum cleaner head has basically two parts, the head part and the sucking pipe part. The two parts are connected by pivot elements including a pair of supporting lugs on the head part and pivoting pins on the sucking pipe. The head part comprises a case and two roller brushes arranged in the front and in the back respectively. The front roller has a bigger size than the back one. Hence, the case which accommodates the front and the back rollers has a drop-like shape with a larger front part and a small rear part if viewed from the side. In addition, the surface of the brush body has a certain pattern.
The main invalidation ground that Puppy Electronic used in its invalidation request against the two design patents is that Dyson’s patents do not differ significantly from the combination of the prior design features, and therefore do not comply with the provisions of Article 23, Paragraph 2 of the Patent Law. Puppy Electronic cited several prior designs, aiming to use these combinations of prior designs to invalidate Dyson’s patents. Although the combination of prior designs still differs from Dyson's design patents, Puppy Electronic alleged that these differences were either non-significant or belong to common design features, so that they do not have significant impact on the overall visual effects.
Dyson contended that: Puppy Electronic’s allegation was wrong since the simple combination of the cited prior design features could not produce Dyson’s patent, i.e. the corresponding parts of the Dyson’s patent are distinctively different from the cited prior design features respectively. Therefore, Puppy Electronic’s allegation of ‘non-significant’ lacks factual basis. On the other hand, in Dyson’s patent, the sucking pipe is connected to the head part through a specially formulated feature at a selected location, while none of the cited prior designs or design features has taught such feature of connection relation. In other words, there is no apparent enlightenment for making proper combination from the prior designs to obtain the patented design.
PRB upheld Dyson's position in their decisions. In Decision 36107 and Decision 36108, PRB held Dyson’s patents were valid with the following reasoning: to determine whether the patent involved can be obtained from the combination of prior design features, one shall compare the prior design part with the corresponding design part of the patent involved; if they are the same or there are only non-significant differences, and in the meantime, if the specific combination manner has taught by the prior design of the same or similar kinds of products, it can be then concluded that there is no significant difference between the patent and the combination of the prior design features. In the present case, however, the prior design part cited by Puppy Electronic for combination is different from the corresponding parts of Dyson’s patents, and such differences are far beyond nuance. In addition, since one can also find significant difference in the connection manner between the head part and the sucking pipe, there is no apparent enlightenment for such combination. Therefore, PRB upheld Dyson's design patent rights as valid.