Invalidating design patents
The underlying rationale for this requirement is that the patentee must set forth clearly the line of demarcation between what is protected by the patent and what is not in order that a third party may have a reasonable standard by which to determine whether particular conduct will infringe the patent.
For purposes of evaluating validity, each patent claim is considered separately.
It further requires that the disclosure reveal the "best mode" contemplated by the inventor of carrying out the invention.
Failure to comply with either of these disclosure requirements can result in the patent being invalid.
Law360, New York (April 12, 2016, PM EDT) -- The U. Supreme Court’s grant of certiorari to review the scope of patent damages for design patents in Samsung Electronics Co. Unlike utility patents whose damages are limited to either lost profits or reasonable royalty, under current law design patent owners are entitled to disgorgement of the entire unapportioned profits of the infringer regardless of the status of the design patent holder as practicing or nonpracticing entity.
Apple Inc., No 15-777, illustrates the elevated importance of design patents in recent years.
In making decisions on these three issues, consultation with technical experts in the field of technology involved can be helpful.
Where possible, it is frequently desirable to obtain information regarding the actions of the inventors in dealing with the claimed invention.
For example, if the inventor has derived the invention from another, the patent is invalid.
The patent statute requires that the specification disclose the invention in such a manner as to enable any person skilled in the art to which it pertains to make and use the same.
In addressing Seaways contention that the district court should have applied the point of novelty test during its anticipation analysis, the Federal Circuit first noted that:, 543 F.3d 665 (Fed. 2008) (en banc), changed the test for infringement.