Galaxia Electronics Co., Ltd. v. Revolution Display, LLC, PGR2016-00021, Galaxia sought post-grant review of Revolution’s U.S. Design Patent No. D736,750, entitled “Modular Video Support Frame Member.” The patented design was directed to a support frame for video monitors used in large-scale LED video image displays, such as those used on-stage at rock concerts, on the sides of buildings, or at amusement parks. Galaxia sought cancellation of the claimed design on grounds of non-joinder of proper inventors, and lack of ornamentality under 35 U.S.C. § 171. On November 2, 2016, the PTAB denied institution of the PGR.

The PTAB’s decision highlights that when attacking a design patent for failing to name inventors, a petitioner must be prepared to establish who actually conceived the claimed invention. A petitioner may not satisfy its burden to demonstrate the challenged claim is more likely than not unpatentable through vague allegations that a company’s employees contributed or assisted in reducing ideas to drawings, PowerPoint presentations, or 3D renderings. The PTAB rejected arguments that agreements calling for cooperation with the patentee in the development of a superior video support frame provided sufficient evidence to show who actually conceived the invention.

The PTAB also rejected petitioner’s arguments that the claimed design was functional, and therefore not entitled to design patent protection. A design patent is invalid if the claimed design is primarily functional rather than ornamental. Slip Op. at 11 (citing Power Controls Corp. v. Hybernetics, Inc., 806 F.3d 234, 238-39 (Fed. Cir. 1986)). The PTAB cautioned that because a design patent covers the ornamental design of an article of manufacture that has a function, all design patents will necessarily have some functionality to them: “[T]he fact that the article of manufacture serves a function is a prerequisite of design patentability, not a defeat thereof. The function of the article itself must not be confused with ‘functionality’ of the design of the article.” (quoting Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1460 (Fed. Cir. 1997). The PTAB noted that the existence of alternative designs to perform the function alleged to render the design patent invalid is “an important—if not dispositive factor in evaluating the legal functionality of a claimed design.” (Id., quoting Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1329-30 (Fed. Cir. 2015).

The PTAB found that petitioner’s efforts to show the contribution of its employees to the claimed design served to undermine its argument that the design was functional. In an effort to undermine Revolution’s claims of inventorship, Galaxia had offered pictures of various video panel support frame designs it had exchanged with Revolution Display. The PTAB pointed to these same images as evidence that alternatives were available, defeating the argument that the claimed design was dictated solely by function.

The PTAB was unreceptive to petitioner’s efforts to dissect the design into individual elements that it claimed were functional. The PTAB noted that petitioner’s arguments failed to explain how each and every aspect of the claimed design was dictated by function. Thus, while divots in a corner block of the frame might have been intended to reduce weight, the PTAB noted that the specific shape of those divots was not dictated by the requirement of being lightweight.

While design patents are not immune from PGR attacks, Galaxia v. Revolution Display, LLC shows that challengers face significant evidentiary burdens to initiate a PGR on grounds other than prior art, such as for incorrect inventorship or for functionality.