Invalidating a design patent


Flipping the switch on the last remaining claims in the case, a Massachusetts Court recently dismissed as moot two defendants’ counterclaims for declaratory judgment of invalidity and unenforceability following a PTAB decision invalidating the asserted patent. D677,423, alleging that Evolution Lighting made and sold Lowe’s infringing light shades.

In 2013, Maureen Reddy sued defendants Lowe’s and Evolution Lighting for infringement of U. Defendants asserted counterclaims for declaratory judgment of non-infringement, invalidity, and unenforceability.

The patent examiner in the reexamination explained: The patent owner is advised that the design in this patent is not described in the originally filed disclosure of earlier applications, 29/282834 or 29/270999. Without the ability to claim priority back to January 5, 2007, two other Apple design patents – U. Design Patent D602,014 (filed August 31, 2007) and U. Design patent D618,204 (filed June 27, 2007) – were prior art. 102(e), and were used to support one of three separate obviousness rejections.

The design in this patent is different from that of the earlier applications in that the new claim includes a front surface entirely covered with a translucent black surface without color contrast and excludes the surface within the round home button while including the entire capsule-shaped speaker opening. 112, first paragraph, needed to claim benefit under 35 U. These two references qualify as prior art as of the date they were filed under pre-AIA 35 U. The ‘204 design patent was also used to support a pre-AIA 102(e) rejection based on the fact that the appearance of the planar front surface of the ‘204 design patent is substantially the same as that of the patented design.

One provision that sets these two types of patents apart is 35 U. After a short historical review of the law permitting an award of an infringer’s profits in design cases, this article discusses the conditions for such a remedy to be awarded.

This article also addresses the relationship between § 289 and other remedy provisions, such as double recovery, enhanced damages, and marking.

Parallel to the District Court case, Lowe’s filed for inter partes review of the ’423 patent.

The IPR concluded in April 2016, with the PTAB issuing a final decision invalidating the ’423 patent as obvious.



MRC appealed, but the Federal Circuit affirmed the district court.Shortly after the PTAB’s final decision, the Court stayed the case until the time for Reddy to appeal the PTAB decision expired or any appeal terminated.


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