Sattler Tech Corp. v. Humancentric Ventures, LLC

Informative decision only: persuasive authority, not binding precedent. A design patent claim may be challenged in post-grant review under 35 U.S.C. § 171 as lacking ornamentality, and the Board will institute under § 324(a) when the petition shows it is more likely than not that the claimed design, viewed as a whole, is primarily functional, that is, dictated by the article's use or purpose. The Board begins with the availability of alternative designs and, on this record, found a lack of alternatives weighed strongly for the petitioner. No prior precedent directly addressed this issue in the text; the Board applied Federal Circuit functionality law to institute a PGR on a design patent challenged solely for lacking ornamentality. For a petitioner, the decision shows that a § 171 functionality ground can carry institution if it ties each claimed element to function (here a VESA standard and monitor fit) and offers third-party products with the same claimed elements and overall appearance. For a patent owner, the decision warns that design elements dictated by an industry standard or mounting function, and similar products differing only in unclaimed features, can support institution; here the owner filed no preliminary response. The Board relied on High Point Design, L.A. Gear, Berry Sterling, Ethicon and PHG, which supply the primarily functional standard and the focus on alternative designs; the institution findings were preliminary. LEGAL TEST OR STANDARD: Institution requires that "it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable." 35 U.S.C. § 324(a). Under § 171(a) a design must be "new, original and ornamental"; it is invalid if primarily functional, i.e., dictated by the utilitarian purpose of the article, judged on overall appearance (Berry Sterling). The inquiry begins with the existence of alternative designs (Ethicon). The Berry Sterling factors apply where alternatives are not dispositive: [1] whether the protected design represents the best design; [2] whether alternative designs would adversely affect the utility of the specified article; [3] whether there are any concomitant utility patents; [4] whether the advertising touts particular features of the design as having specific utility; and [5] whether there are any elements in the design or an overall appearance clearly not dictated by function. TRIGGERING FACTS: The patent was a design patent for a VESA mount adapter bracket, challenged only under § 171 for lacking ornamentality, with the petition filed within nine months of issuance and an effective filing date after March 16, 2013. Claimed elements were top and bottom tabs and eight raised grommets, with the plate shown in broken lines and unclaimed. The petitioner tied tab spacing, size, shape and angle to fitting the monitor, and grommet spacing and size to the VESA FDMI Standard. It showed raised edges strengthen the sheet, and offered Gladiator Joe and VIVO brackets with the same elements and overall appearance that differed only in unclaimed features. The patent owner filed no preliminary response. KEY QUOTE: "Thus, on this record, there appears to be a lack of alternative designs, which weighs strongly in Petitioner's favor." (Paper 9, p. 18) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Federal Circuit authority: High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013); L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.3d 1117 (Fed. Cir. 1993); Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015); and PHG Techs., LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006). PRACTICE TIP: Petitioners challenging a design patent as non-ornamental should map every claimed element to a functional requirement with evidence such as an industry standard, and submit third-party products with the same claimed elements and overall appearance that differ only in unclaimed features. Address the alternative-designs inquiry first and the overall appearance, not only individual elements. Patent owners should file a preliminary response and show real alternative designs.