USA - TEXAS Trends and Developments Contributed by: Danielle Healey and Matthew David, Spencer Fane LLP
Spencer Fane LLP 3040 Post Oak Boulevard Suite 1400 Houston TX 77056 USA Tel: 713 552 1234 Fax: 713 963 0859 Web: www.spencerfane.com
Death knell for design patents? The Rosen-Durling test applied a formulaic con- struct for evaluation of prior art to determine if a design patent was “basically the same” as pre- existing designs, and hence invalid due to obvi- ousness. In LKQ Corporation v GM Global Tech, the Federal Circuit dismantled the rigid test and its “basically the same” standard, replacing it with the more flexible Graham v John Deere test that has traditionally governed utility patent obvi- ousness. This is a flexible standard that allows for an obviousness based on the appearance of the design, with only a few broad guideposts instead of the formulaic rules in Rosen. Design patents based on prior art combina- tions may now be invalidated more frequently because of the ruling, which represents a funda- mental change in design patent law. Under the new standard, analogous prior art is expected to be construed more broadly, and secondary prior art reference need not be “so related” to a primary prior art reference such that it creates its motivation to combine.
Significant Patent Law Changes in 2024 May Increase the Threat of Invalidity and Reduce the Threat of Damages Introduction Recent US court rulings in patent law are reshaping key aspects of patent validity, dam- ages calculations, and litigation strategies. Deci- sions from the courts over the past year have simplified challenging design patents, expanded the scope of foreign damages, and increased scrutiny of patent damages models. At the same time, ongoing cases such as EcoFactor v Goog- le may set new standards for expert testimony and royalty calculations. Going into 2025, proposed patent legislation aims to reduce uncertainty surrounding pat- ent eligibility, specifically the “Patent Eligibil- ity Restoration Act” (PERA), and to reinstate injunctions as the standard remedy in patent infringement lawsuits, via “The Realizing Engi- neering, Science, and Technology Opportuni- ties by Restoring Exclusive Patent Rights Act of 2024” (RESTORE). If passed, these bills would dramatically improve patent owners’ ability to enforce their patents, but the government over- haul implemented by President Trump will likely mean these bills lose Congressional attention.
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