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** FEDERAL CIRCUIT DENIES EN BANC REVIEW OF DESIGN PATENT INFRINGEMENT DECISION
Range of Motion Prods., LLC v. Armaid Co. Inc., 23-2427 — Yesterday the Federal Circuit denied Range of Motion’s petition for rehearing en banc of the court’s prior decision affirming summary judgment of noninfringement of its design patent for a body massaging apparatus. Range of Motion argued the court’s “plainly dissimilar” test for design patent infringement in Egyptian Goddess, Inc. v. Swisa, Inc. was inconsistent with the “substantially the same” test established by the U.S. Supreme Court in Gorham Manufacturing Co. v. White and that allowing judges to resolve disputes of functionality versus ornamentation during claim construction conflicted with the right to a jury trial under Markman v. Westview Instruments, Inc.
Judge CUNNINGHAM, joined by Judge HUGHES, concurred in the denial and emphasized that Gorham supported that a determination of whether designs were “substantially the same” necessarily involved considering both similarities and differences. Summary judgment remained appropriate and was supported by judicial economy when there was no genuine dispute of material fact that an ordinary observer would be “deceive[d]” or “induc[ed]” to purchase one design over the other. Defining the proper scope of a design claim was a question of legal interpretation for the judge that necessitated differentiation between the functional and ornamental aspects of the design and, sometimes, “subsidiary factfinding” to guide the jury’s infringement verdict.
Chief Judge MOORE, joined by Judge REYNA, argued in dissent that Egyptian Goddess had been improperly interpreted to permit courts to resolve design patent infringement without adequate consideration of the prior art and inquiries regarding whether design features were functional or ornamental involved factual determinations to be decided by a jury and not the judge.
(1 to 4 stars rate impact of opinion on patent & trademark law)
USPTO MOVES BIOMEDICAL SCIENCE DEGREE TO CATEGORY A, EXPANDING PATENT BAR ADMISSION CRITERIA
Yesterday the U.S. Patent and Trademark Office announced updates to the General Requirements Bulletin (GRB) governing admission to the patent bar, moving Biomedical Science from Category B to Category A, expanding the list of degrees automatically accepted as satisfying the scientific and technical qualifications required for registration, without further individualized review, effective August 11, 2026.
In 2023 the USPTO adopted a review process under which it evaluates commonly accepted Category B degrees every three years and transitions qualifying ones to Category A. In addition to Biomedical Science, the agency considered adding Artificial Intelligence degrees but declined, citing limited applicant data and wide variation in AI curricula across institutions. The USPTO said it will keep monitoring AI degree development for future review.
IPO ANNUAL MEETING SESSION: COUNTERFEITS, DESIGNS, AND CUSTOMS ENFORCEMENT IN CANADA, ASIA, AND THE U.S.
Register for IPO’s Annual Meeting, September 27-29, and attend a session on “Battles at the Border: Counterfeits, Designs, and Customs Enforcement in Canada, Asia, and the U.S.,” organized by IPO’s Canadian Practice, Anti-Counterfeiting & Anti-Piracy, Asian Practice, and Industrial Designs Committees. From knockoff pharmaceuticals to infringing fashion goods, border officials in Canada, Asia, and the U.S. face a steady influx of rights-infringing goods. That said, not all rights are protected everywhere. This session will explore the practical and legal dimensions of border enforcement in Canada, Asia, and the U.S., including what has, and has not, worked and differences in the scope of protection. Panelists KAREN MACDONALD (Cassels Brock & Blackwell LLP), SANJIV SARWATE (Dell Technologies), MONICA RIVA TALLEY (Sterne, Kessler, Goldsein & Fox, PLLC), and NATHAN YANG (NTD Patent & Trademark Agency Ltd ) will discuss best practices for rights-holders and provide insight into local practices that might be adopted elsewhere. Visit the website for additional information and to register.
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TODAY ON THE IP CHAT CHANNEL™: THE “SCHEDULE A,” B, AND CS OF PROTECTING AGAINST ONLINE COUNTERFEITING
Join the IP Chat Channel™ today at 1:00pm ET for a webinar that will cover the ABCs of Schedule A litigation, including advantages such as joinder of multiple defendants, ex parte temporary restraining orders and preliminary injunctions, alternative service of process, and default judgments. The webinar’s panel will also address court challenges and the future of Schedule A litigation.
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IP Chat Channel™ webinars are free for IPO members. Advance registration is required. CLE offered in most states.