Design Patent Litigation: Is "Obvious to Try" Unavailable for Validity Challenges Under 35 U.S.C. § 103?, 16 J. Marshall Rev. Intell. Prop. L. 173 (2017)

Ten years ago, the United States Supreme Court shook the foundation of U.S. patent law when it announced that a patented invention could be invalidated because the claimed combination of heightened the thr whether a person of ordinary skill in the art would deem a combination of features obvious to try can be measured against a perceived a likelihood of success for achieving a purpose. But the concept does not easily translate to design patents. Those types of patents are directed to ornamental features, which by definition cannot be dictated by functionality, and thus, the success of a combination cannot be measured on an objective scale. This imperfect fit between design patents position on if and how to apply it in the context of design patents.

This article provides an overview of how courts have applied the test of nonstandard, and practice tips for litigants who wish to challenge or are met with challenges over the validity of design patents.