The Ramifications of the Federal Circuit's Decision on the Secondary References Standard

The primary reference can be modified with secondary references to create a combination that has the same overall visual appearance as the appearance of the design patent. Or where there are only minor differences between the two, a gap between the primary reference and the design patent can be bridged with secondary references. The references 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” for the references to constitute secondary references that can modify the appearance of the primary reference.

Even if the Fidler had been categorized as a primary reference, the Federal Circuit said obviousness would fail because the two references could not be combined since they were so different from each other in appearance that “[they did] not qualify as a comparison reference under” the secondary reference standard. According to Alley, the Federal Circuit’s decision “has effectively instituted a strict TSM test, requiring that the prior art features not only call out for combination, but do so in a manner demonstrated by the visual closeness of the references.” This is another difficult standard for a defendant to meet. Even if the defendant is able to find a primary reference, he still may not fulfill the secondary reference standard if he needs a secondary reference to modify the primary reference. Such a strict standard for secondary references reinforces the difficulty for defendants in challenging the validity of a design patent on obviousness grounds.
 
Please see the previous post: Part Two: 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.
 
**Sources**
Ryan Alley, “Apple v. Samsung- Design Prosecution Lessons,” Intellectual Property Law: Building Assets from Ideas, 2012-05-21, http://alleylegal.com/2012/05/apple-v-samsung-design-prosecution-lessons/
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