Using an RCD to try to defeat a US design patent?

A member of the industrial designs listserv asked:

In general can a Registered Community Design be cited as prior art to counter a claim of design patent infringement of an issued US design patent in the US?  Do you know of a case that says that?

Here’s what I think.  And I hope that readers will offer their own comments.

This is a very interesting question (or two questions, I guess).  And it subdivides into several interesting sub-questions.

First we may recall that a US design patent is subject to the same statutory conditions as a US utility patent.  It gets granted only if the USPTO Examiner says its claimed subject matter is novel and unobvious.  The USPTO Examiner, considering whether or not to allow a design application, would be permitted to consider any of a wide range of references, including magazines, catalogs, public uses, US utility patents, US design patents, and newspaper clippings.

(We keep in mind of course that the Examiner cannot use any old random reference to reject a design application — it needs to be a Rosen reference.  If the subject matter of a design application is, say, a kitchen trivet, the would-be anticipatory reference has to itself be a trivet (or something close to trivets in the world of “articles of manufacture”) and could not, for example, be a bicycle.)

My point here is that I cannot think of any reason why a Registered Community Design would somehow be less eligible for use by an Examiner as a reference against a pending US design application than any of the types of references just mentioned.

As a separate matter there is the simple reality that if you are an examiner in Technology Center 2900 (the collection of Art Units that examines US design patent applications) you will find it to be easy and comfortable and familiar to search the databases containing US design patents and utility patents.  So most often when you cite references in a case that you are examining, many and maybe all of the references you cite will be from those USPTO databases.  By comparison you probably won’t routinely search (for example) the OHIM database for RCDs (Registered Community Designs) or the WIPO database for IDs (International Design Registrations) in nearly as a great a depth as you search the USPTO databases.

The plain fact is that if you look on the front page of a dozen randomly selected recently granted US design patents to review the “references cited”, you will see lots of US design patents cited, and a few US utility patents cited, and then not very many other types of references.  And probably you will not see even one US design patent in which an RCD is listed as a “reference cited”.

In writing this blog post I did a search just now and found ten (yes only ten) issued US design patents in which an RCD is a “reference cited”, but before that I am pretty sure I had never seen an issued US design patent in which an RCD had been a “reference cited”.   (See for example US design patent numbers D649,746 and D633,190 and D629,718 and D628,770 each of which lists at least one RCD as a “reference cited”.)

Let’s now move closer to the question as originally presented.  The listserv member was not asking about citation of references by an Examiner during the prosecution of a US design patent.  The listserv member was asking about defending oneself in an infringement case.

Defending oneself in an infringement case surely does include exploring whether the US design patent can be shown to be invalid.  The accused infringer might counter the claim of design patent infringement by attempting to show that the claimed subject matter lacks novelty, or by attempting to show that the claimed subject matter is obvious, when compared with the relevant prior art.  A typical line of attack involves finding a reference that was not of record before the Examiner back when the design patent application was being examined, and arguing to the court that the newly discovered reference puts into question the novelty or the unobviousness of the claimed subject matter.

And once again I can’t think of any reason why a Registered Community Design would be somehow any less eligible than the other kinds of references for use by an accused infringer in attempting to invalidate a US design patent.  The fact that there are at least ten issued US design patents in which an Examiner listed an RCD as a “reference cited” seems to belie any suggestion that RCDs would somehow be unavailable as references for an invalidity attack in litigation.

But for an accused infringer in a US design patent case, I suggest that invalidity is not the only game in town.  A court is only going to say “accused infringer wins” on an invalidity attack in the relatively rare case where the evidence meets or surpasses the “clear and convincing evidence” standard.  Not an easy standard to satisfy!

But I said that I think invalidity is not the only game in town.  For an accused infringer in a US design patent case, the other game in town, I suggest, is the game of manipulating and attempting to constrain the scope of the claim.

The thing about a US design patent is that it has a claim.  Just one claim, but it has a claim.  And just like any claim in a US utility patent, that claim has some scope.  By the time the court does its work, the court may have determined that the claim is broader or may have determined that the claim is narrower.  Although it is perhaps a bit of a simplification, I think one can say generally that

• when a US design patent turns out at litigation time to be surrounded by lots of close prior art, the court will determine that the claim has a relatively narrow scope, and
• when a US design patent turns out at litigation time not to have very much nearby prior art, the court will determine that the claim has a relatively broad scope.

Part of what this means is that on the day a US design patent is issued, one does not really know very much about what the scope of its claim will turn out to be in licensing or in litigation.  One can make a bit of a guess, based upon the “references cited” and any other prior art of which one is aware.  But it’s only a guess.  Only at licensing time or litigation time will we know what prior art has been developed at that point.  Only by looking at that later-developed prior art (to see how close it is) would we be in a position to opine as to the claim scope at that time.

Returning to the question as presented … Can an RCD be used at litigation time to attempt to constrain the scope of the claim of a US design patent?  And the answer is, I am unable to think of any reason why an RCD should somehow be ineligible for this purpose merely because it is an RCD.  It seems to me that an RCD would be as good a candidate as a US utility patent or US design patent or newspaper clipping for this purpose.

Is there a case that says “yes you can cite an RCD to try to attack a US design patent”?  I don’t know.  I have not seen such a case.  But I don’t think you need a case that says this.  You can simply read 35 USC § 102 which lists the sorts of things that are citable as references.  (RCDs seems to be just as eligible under 35 USC § 102 as US utility patents or US design patents or newspaper clippings.)  And you can point to all ten (ten!) of the granted US design patents that seem to exist that happen to list an RCD as a “reference cited”.

I’m sure we have many alert readers with views about this.  Won’t you please post a comment or two?