Part One: The Ramifications of the Federal Circuit's Decision on the Primary Reference Requirement

To categorize a prior art reference as a primary reference, one reference must single-handedly have design characteristics that are basically the same as the design characteristics of the design patent. However, note of caution: the terms “design characteristics” from the primary reference test have been defined to mean “overall visual appearance.” This definition means that the test for a primary reference necessitates having one reference that has basically the same overall visual appearance as the claimed design. What does this “basically the same overall visual appearance” standard require, especially when compared to the “same overall visual appearance” standard for the general obviousness inquiry for design patents?

The “basically the same overall visual appearance” requirement for primary references is incredibly important to the obviousness analysis for design patents. Primary references act as a per-se threshold requirement for obviousness. In order to conduct the obviousness inquiry, the challenger of the patent must present a primary reference. Whereas, without a primary reference, the challenge to patent validity based on obviousness automatically fails. Thus if the federal circuit is tightening (making it more difficult to prove), the requirements for finding a prior art reference to be a primary one are stricter and more obvious challenges are barred from being presented. Tightening the requirements for primary references makes it easier for the patentee to argue likely success on the merits in the sense that it will be harder for the defendant to argue invalidity due to obviousness.

Please see the previous post: Ramifications of Federal Circuit Opinion: Proving Irreparable Harm re Design Patent Infringement through Design Dilution? for more on this topic. For more on emergency business litigation, click here or call 312-223-1699 to speak with one of our Chicago law firm attorneys.


Ryan Alley, “Apple v. Samsung- Design Prosecution Lessons,” Intellectual Property Law: Building Assets from Ideas, 2012-05-21,

Sarah Burstein, “Apple v. Samsung,” PatentlyO: The Nation’s Leading Patent Blog, 2012-05-18,

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