SurgiSil: Lip Implant Case Shows Looks Can Be Deceiving

• Published date: 07 March 2022
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Elizabeth Ferrill

In October 2021, the Federal Circuit issued a two-and-half page decision in In re: SurgiSil, 14 F.4th 1380 (2021). Despite clocking in at just over 600 words, this small decision could have wide-ranging repercussions in the design patent jurisprudence, in three potential ways.

By way of background, Surgisil's design application claimed a design for a lip implant. The examiner rejected the sole claim as anticipated by a catalogue disclosing a similar design, but the prior art design was for a completely different underlying article of manufacture, an art tool.

The Patent and Trial Appeal Board (PTAB) affirmed the rejection, finding the differences in shape between the claimed design and the stump to be minor. It rejected Surgisil's argument that the catalogue could not anticipate the claim because it disclosed a "very different" article of manufacture than a lip implant and, in the PTAB's view, "it is appropriate to ignore the identification of the article of manufacture in the claim language".

It is worth noting that the PTAB's decision was consistent with its longstanding practice that "whether a reference is analogous art is irrelevant to whether the reference anticipates".

On appeal, the Federal Circuit reversed the board, holding that "[a] design claim is limited to the article of...