It is said that
The Board's determinations of nonobviousness were premised on its finding that the iQ Maximizer-the commercial embodiment of the claimed design-was "coextensive" with the claimed design and that a presumption of a nexus should apply to the evidence of commercial success and industry praise. Id. at 7. However, the Federal Circuit saw things differently and reminded the Board that being "coextensive" means that the commercial embodiment as a whole "is the invention disclosed and claimed." Id. at 10 (citing
As the Court highlighted and as depicted below, the differences between what is claimed in the design (shown in solid lines) and what is unclaimed (shown in dashed lines) is very significant in this case.
According to the Court, the Board erred by analyzing whether the unclaimed features were insignificant to the "ornamental design." Id. at 11. Ornamentality is typically central to the analysis of design patents. But the "coextensiveness" test-which does not distinguish between design patents and utility patents-asks "whether the unclaimed features are 'insignificant,' period." Id. As shown above, the claimed design covers only a small portion of the entire product: the label area, cylindrical object, and stops. However, the entire rearward rails and side portions are unclaimed. It was not disputed that those other structures are significant because they facilitate the loading and dispensing of soup cans. Id. After applying the correct standard, the Court held that the commercial embodiment is not coextensive with the claimed design. Id. at 11-12.
In its decision, the Court recognized the difficulty of applying its standard to design patents. Because design patents cannot claim significant functional features, a design patent will always have some significant unclaimed features when compared to its functional commercial embodiment. The Court explained in a footnote that it is "hard to envision a commercial product that lacks any significant functional features such that it could be coextensive with a design patent claim." Id. at FN1. Thus, while the Court stated that it does "not go so far as to hold that the presumption of nexus can never apply in design patent cases," it is very unlikely that such a presumption can reasonably be met. See id.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
Mintz
MA 02111
Tel: 6175426000
Fax: 6175422241
E-mail: www.mintz.com
URL: www.mintz.com
© Mondaq Ltd, 2021 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source