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IP Alert: Elements of a Design Patent Claim Can’t Be Challenged for Functionality in an IPR Proceeding

September 26, 2014

On September 5, 2014, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings in Dorman Products, Inc. v. PACCAR, Inc. As part of its analysis, the PTAB concluded that an IPR proceeding was not the proper vehicle for attacking the features of a design patent claim on grounds of functionality.

PACCAR and Dorman have a number of disputes pending relating to certain PACCAR design patents. In March of 2014, Dorman sought inter partes review of one of PACCAR’s design patents. The illustrated design depicts a truck headlamp with a faceted design and a surrounding bezel. In its IPR request, Dorman alleged that the design patent claim was obvious over certain combinations of references, in each case “further in view of the functionality of the bezel and facets.” Dorman contended that these allegedly functional features did not form part of the design patent claim.

PACCAR filed a preliminary response, arguing that Dorman’s challenges “are actually premised on functionality allegations under 35 U.S.C. § 171” and that such a challenge was outside the statutory basis for instituting an IPR proceeding. PACCAR further argued that whether or not the bezel and facets were functional, they must be considered and construed as part of the visual impression created by the patented design as a whole.

On the functionality analysis, the PTAB agreed with PACCAR, holding that Dorman “conflates invalidity based on functionality under 35 U.S.C. § 171 with invalidity based on obviousness under 35 U.S.C. § 103.” Following the Federal Circuit’s decision in High Point Design LLC v. Buyers Direct, Inc., the PTAB held that the analysis of “whether a design patent is ‘primarily ornamental’ is an inquiry that is distinct from the nonobviousness requirement.” From this, the board reasoned that “a challenge based on functionality under 35 U.S.C. § 171 is not permitted in an inter partes review because it is not based on 35 U.S.C. § 103 nor is it based on prior art that consists of a patent or printed publication.” The board then concluded that it was obligated to consider the allegedly functional bezel and facet elements when assessing in the visual impression created by the patented design as a whole: “[W]e agree with Patent Owner that the allegedly functional elements identified by [Dorman] must be considered in an obviousness analysis of the visual impression created by the patented design as a whole.”

Based on the above reasoning, and taking into consideration the claimed bezel, the PTAB considered the claimed design in light of the cited prior art. The board concluded that certain features of the claimed design—including the bezel—sufficiently distinguished the claimed design from the prior art. Accordingly, the PTAB refused to institute the IPR proceedings.

Although not expressly stated in the board’s opinion, Dorman appears to be open to argue functionality in any district court litigation between the parties. That is because the board’s decision apparently turned on the procedural constraints of the board’s jurisdiction and not on a substantive functionality analysis.

The Dorman decision is instructive for those parties dealing with inter partes review of design patents. A party wishing to challenge a design patent in an IPR proceeding must take into account all of the aspects of the claimed design, and cannot attempt an argument that aspects of the claimed design may be ignored as functional.

For more information on this decision, please contact Fitch Even partner Allen E. Hoover.

--Written by Fitch Even attorney Conor S. Hunt

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