Trending At The PTAB: Disclaiming A Design Claim

• Published date: 14 July 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Elizabeth Ferrill and Kelly Horn

Design patents may be the subject of inter partes review and post grant review actions, although these proceedings are not as common as for utility patents.

While the procedural aspects are similar, many of the legal aspects of these proceedings are unique to design patents.

As with utility patents, situations do arise in which design patent owners desire to terminate a proceeding, even if it results in a judgment against a patent.

Under those circumstances, patent owners may request an adverse judgment under Title 37 of the Code of Federal Regulations, Section 42.73(b).

Often, patent owners request the adverse judgment to serve its assertion goals in a corresponding district court action.

However, as with utility patents, design patent owners requesting adverse judgment may encounter procedural impediments that hinder a swift resolution of the Patent Trial and Appeal Board proceeding.

Design patent owners should consider how the requirements for requesting adverse judgment uniquely apply to design patents if the goal is a fast resolution of the PTAB proceeding.

This article provides an overview of some of the challenges design patent owners have encountered when seeking adverse judgments at the PTAB.

Title 37 of the Code of Federal Regulations provides that a patent owner "may request judgment against itself at any time during a proceeding" and sets forth four actions that are "construed to be" such a request.¹

One way to request adverse judgment is through "[d]isclaimer of the involved application or patent."² Another action that is similarly construed is "[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial."³

A design patent is permitted to include only a single claim,⁴ but a design patent may include figures showing more than one embodiment, provided that those embodiments are patentably indistinct.⁵

Design patent owners seeking adverse judgment in design patent proceedings should also be mindful of the procedural requirements for statutory disclaimers if their goal is for the PTAB to construe that statutory disclaimer as a request for adverse judgment.

Consider, for example, the October 2022, statutory disclaimer filed in Early Warning Services LLC v. Fintech Innovation Associates LLC.⁶

In that case, the patent owner stated that it "hereby donate[s] the D945,453 sole claim to the public domain."⁷

Yet while the disclaimer was directed to the entirety of the design patent claim, the patent owner specified...