In a rare en banc decision, the Federal Circuit rejected longstanding tests for proving design patents are obvious based on earlier designs. The court ruled that those tests should instead be replaced with the obviousness standard used for utility patents. This change raises many questions about how to apply that standard to design patents.
Finnegan partner Beth Ferrill told Law360 that, "I see these cases as going a lot further than they might have gone before, in terms of a defendant having a viable invalidity position that they might take to trial."
She added that there are now more opportunities for challengers to seek out evidence and make obviousness arguments about design patents. "I think good advocates will do a good job, and that will probably end up with more patents being invalidated," she said.
Beth mentioned that while this decision adds flexibility, "it also puts a lot more on the defendant to prove this up" and demonstrate why earlier designs would render the patent obvious.”
Read “Questions Abound as Fed. Circ. Scraps Design Patent Tests”
