The Board issued Final Written Decisions in the second, third, and fourth IPRs involving design patents, in Sensio, Inc. v. Select Brands, Inc., IPR2013-00500, Paper 33 (Feb. 9, 2015); IPR2013-00501, Paper 32; IPR2013-00580, Paper 31. To date, only ten IPRs have been filed involving design patents. With these latest decisions, four patents have been found unpatentable, four IPRs were not instituted, and two are pending a decision on institution.

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The Board instituted IPRs on anticipation and obviousness grounds of three design patents directed to portions of a three-pot slow cooker design. Select Brands did not dispute that the references disclosed the claimed designs, but attempted to antedate the references by showing a reduction to practice of the of the design before the earliest publication date of the references. In support, Select Brands provided three nearly identical declarations from the named inventors alleging that a third-party supplier created an earlier prototype at their direction, but only provided documents dated after the first prototype was built. Sensio replied that Select Brands had not provided evidence that the inventors conceived of the claimed design or that the inventor should be given credit for the third party’s prototype. In a sur-reply, Select Brands argued that because it had demonstrated reduction to practice before the relevant date, conception was irrelevant.

The Board disagreed, finding that the “Patent Owner must show it conceived the design and communicated the design to [the third party] in order for the prototypes [made by the third party] to inure to Patent Owner’s benefit.” Paper 33 at 11.  The Board dismissed the Patent Owner’s arguments that the inurement precedent should be limited to the interference context or should not apply to design patents. Id. at 12 n.3, 9.

The Board also found that the Patent Owner had not produced sufficient evidence to show it conceived of the claimed design prior to the publication of the earliest reference. Noting that a co-inventors’ testimony could not corroborate another’s, the Board found that the remaining technical documents did not “address[] the claimed design, much less who conceived the design.” Id. at 14. Thus, the Board found that the claimed designs were invalid under 35 U.S.C. §§ 102, 103.

These decisions are notable because they reaffirm that, while design patents have case law specific to them, the remaining body of utility patent law also applies. Also, the Board permitted the Patent Owner to file a sur-reply to address the issue of reduction to practice.