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

Popular Blogger Sarah Burstein proposed that the federal circuit tighten the requirements of defining “basically the same overall visual appearance” with its decision on the non-obviousness of the D’889 patent. Apparently, a few years ago the “basically the same” standard indicated that about a 75 to 80% similarity between the appearances of primary reference and the designed patent was required for a prior art reference to qualify as a primary reference. Burstein declared that such a percentage definition would have permitted the Fidler tablet to constitute a primary reference. Although the federal circuit does not clarify a new percentage requirement (i.e. the primary reference must share an 85% similarity in appearance with the design patent), its decision indicates a tightening of the requirement to necessitate the showing of a higher degree of similarity. 

Burstein hesitated in drawing any conclusions about future trends of the federal circuit by stating, “this strict reading of the ‘basically the same’ requirement may make it more difficult to prove obviousness in future design patent cases. And while it’s too early to declare a trend, it is worth noting that the Federal Circuit affirmed a rather strict reading of this requirement last year.”
Another Blogger Ryan Alley criticized that “basically the same overall visual appearance” standard for primary references was permitting the patent holder “to eliminate whole swaths of prior art based on rather abstract optics alone.”  He argued that the federal circuit had disqualified the Fidler tablet from being a primary reference due to some minor differences.  
Essentially, his critique of the federal circuit (and in fact the general standard for obviousness in design patents) is that the test for primary references is too narrow and strict. When defendants object to an injunction based on patent obviousness, patent holders can defeat the objection through differences in “design minutiae” between the primary reference and design patent.
Please see the previous post: Part One: The Ramifications of the Federal Circuit’s Decision on the Primary Reference Requirement 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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