Prefacing Note on Intellectual Property Tests and Standards (Part 4 of 4)

                The anticipation and obviousness inquiries are different for design patents, as compared to utility patents.  Given that three of the patents at issue are designs, a clear understanding of both anticipation and obviousness is necessary to understand Samsung’s invalidity arguments.  As discussed earlier, we are focusing on anticipation and obviousness as grounds for invalidating a patent.

                As mentioned in the last post, patent law theory essentially posits the same tests for anticipation and obviousness.  The anticipation inquiry requires only one single reference.  If an ordinary observer would think that one single prior art reference is “substantially the same” as the design patent, then that reference is anticipatory and invalidates the design patent.  A prior art reference is substantially the same as the design patent if “‘the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.’” As the district court emphatically stated, “the focus should likewise be on ‘the overall design’ of the patent as compared” to the anticipatory reference. Court Order Denying the Motion for Preliminary Injunction at 10-11, 18.

The inquiry for obviousness is more complicated.  If a designer “of ordinary skill [in the design of the articles involved] would have combined teachings of the prior art to create the same overall visual appearance as the claimed design,” then the design patent is obvious and invalid. Richardson at 3.  Determining if the combined prior art creates the same overall visual appearance as the design patent falls under the ordinary observer test: would an ordinary observer think the appearance of the design created by combined prior art is substantially similar to the appearance of the design patent?  If yes, then the combined prior art renders the patent obvious. Wharton, Blog Entry.  In sum, the obviousness analysis centers on the overall appearance of the claimed design, not on the design concept. Richardson at 3, Manual of Patent Examining Procedure (“MPEP”) at 1504.03.

The combination must contain one “primary [prior art] reference” and at least one other “secondary [prior art] reference.” Tambolas, Blog Entry.  This primary reference must be one prior art reference with “design characteristics [that] are basically the same as the claimed design.” Richardson at 3. The “design characteristics” term is defined to mean “overall visual appearance.” MPEP at 1504.03. So, the primary reference must have the “basically the same overall visual appearance” as the design patent. This standard is an incredibly stringent test.

If the defendant doesn’t find a primary reference that has basically the same appearance as the design patent, then he cannot argue that the design patent is invalid due to obviousness. Id.  This prior art reference must be “something in existence, and not something brought into existence by selecting and combining features from prior art references.” Id.  Differences between the primary reference and design patent are permissible where such differences are minor or don’t concern the overall appearance of the design.  Where there such permissible differences, then secondary references can be utilized to bridge the gap between the two.  However, the defendant must prove that these differences would have been obvious to a person of ordinary skill in the art. Id.

After finding a primary reference, secondary sources can be used to modify the primary reference.  However, in order to qualify as a secondary reference, the reference must be “‘so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.’” Richardson at 3.  Essentially, a designer of ordinary skill in the art must see some sort of suggestion in one of the references to combine it with the other. 3-4.  Secondary references can be used to modify the primary reference by: adding new features from the secondary references to the primary reference; interchanging features of both references with the other; or, deleting features from the primary reference due to something in the secondary reference. However, the secondary references can only be combined if such a combination would have been obvious to a designer of ordinary skill in the art.


Court Order Denying Motion for Preliminary Injunction, Docket No. 450, 2011-12-02.

Manual of Patent Examining Procedure, 8th Ed. 2011-08, Section 1504.03 Nonobviousness [R-5] – 1500 Design Patents,

Julie Richardson, “Design Patents: Alternative Protection for Articles of Manufacture”, available at:

Teresa Tambolas, “Chicago Design Patent Attorney Explains How An Obviousness Challenge Can Trump a Motion for Preliminary Injunction in a Design Patent Case, Pattishall IP Blog,

Jake Wharton, “Federal Circuit Updates Design Patent Invalidity Standard,” Furniture Law Blog, 2010-01-23,

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