DESIGN PATENT CONUNDRUM – The Test for Design Patent Anticipation vs. The Test for Priority

In re Floyd (No 2023-2395) (nonprecedential), handed down by the U.S. Court of Appeals for the Federal Circuit on April 22, 2025, raises an odd issue between the test for design patent anticipation and the test for priority.

The applicant appealed the Patent Trial and Appeal Board’s decision holding that her priority claim to her parent application was denied because the parent application did not explicitly disclose the claimed design. And as a result, the Board held that her claimed design was anticipated by the parent application drawings.

The claimed design was a cooling blanket that has an array of squares arranged in a 5x6 configuration, while the parent application disclosed two similar but not identical configurations: a 4x6 configuration, and a 6x6 configuration (the parent application was a pending utility patent application).

The Federal Circuit affirmed the Board’s decision, finding that the test for priority - “whether a skilled artisan would recognize that Floyd possessed the particular design claimed in the parent application” was not met. The Federal Circuit noted that “The [parent] application’s disclosure of two specific arrays of individualized compartments provides no basis on which to conclude that a skilled artisan would necessarily recognize that she possessed the different claimed six-by-six design.” The Court parried all of Floyd’s arguments to the contrary.

Regarding anticipation, governed by 35 U.S.C. 102, the Federal Circuit did not deal with it at all, because it was not challenged by the applicant on appeal. It implicitly agreed with the Board’s holding: “Applying the ordinary observer test for anticipation, the Board affirmed the Examiner’s finding that the … [parent] application anticipated the design claimed in the [current] application.”

It was not surprising that Floyd did not challenge the Board’s finding that because priority was denied, the design was anticipated by the parent application because the claimed 5x6 array was “substantially the same” as that shown in the parent application, i.e., the 4x6 and 6x6 arrays. This is because the test for design patent anticipation has become entrenched in the case law since the case of Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) which held that the test for anticipation was the same as the ordinary observer test for infringement, i.e., whether the claimed design and the prior art were “substantially the same” in the eye of an ordinary observer.

But the result in the Floyd case is still a bit odd: priority was denied because the prior art in the parent application (the 4x6 and 6x6 arrays) did not disclose the exact claimed design (a 5x6 array), and yet the same 4x6 and 6x6 arrays in the parent application was sufficient to anticipate, and thus render unpatentable, the 5x6 claimed design.

How can a claimed design be denied priority because the claimed design is not shown exactly in the priority document, and the same priority document nevertheless anticipates the claimed design that is not shown exactly in the priority document?

Traditionally, the decision was justified by the fact that in the case law, the test for claiming priority is not the same as the test for anticipation.

But, as I have pointed out for years, the test for design patent anticipation, as interpreted in the 2009 case of International Seaway, is clearly incorrect. Seaway held that the test for anticipation is the same as the test for infringement. This holding veered sharply from the prior case law which held that the test for anticipation is whether the same design is “identical in all material respects” as the claimed design, as was stated in Hupp v. Siroflex 122 F.3d 1456 (Fed. Cir. 1997) and many other cases prior to Seaway.

In fact, the “identical” standard for anticipation is literally supported by language in the statute itself. 35 U.S.C. 103 begins: “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102…” (emphasis added). For years, anticipation in both utility and design patents required the prior art to disclose the identical claimed invention.

So how did Seaway change the “identical” standard to the “substantially the same” standard? Basically, by misinterpreting – more particularly, not updating - the holding in the 1889 Supreme Court case of Peters v. Active which set forth the famous “maxim”: “that which infringes, if later, anticipates if earlier”. I have explained the Seaway court’s erroneous interpretation of this “maxim” as applied to design patents in my 2020 article Design Patents Are Sinking in International Seaway: Rethinking Design Patent Anticipation, which I first posited in a brief snippet 9 years earlier in BNA’s PTC Journal. Because my analysis is somewhat lengthy, I shall refrain from detailing it here, but commend you to those articles for a thorough explanation.

Assuming I am correct (I welcome challenges to my analysis), the “substantially the same” infringement test is an improper test for design patent anticipation. Therefore the result in Floyd would have been different, and would have actually made sense. Using “identical” as the proper test for anticipation, in spite of the fact that priority to Floyd’s parent application was denied, the claimed design would not have been anticipated by the priority document. In other words, the fact that the identical design was not found in the priority document would have meant that the priority document did not anticipate the claimed design.

One day, maybe we can anticipate (ha) that the Court will revisit the holding in Seaway and restore the test for design patent anticipation to its proper “identical” standard, as set forth in many cases prior to Seaway, and, in fact, as set forth in the patent statute itself.