The Decision
In a recent ruling by the Patent Trial and Appeal Board (PTAB) (view the decision here), Next Step Group’s attempt to invalidate a design patent owned by the makers of Ugg® boots failed. The petitioners argued that the design patent, which protects the ornamental features of Ugg® boots, should be invalidated based on obviousness—a legal standard used in patent law when prior art exists that could have led to the design being known or predicted.
The PTAB, however, found that the arguments presented by Next Step Group did not meet the required threshold. Specifically, the PTAB held that their analysis failed to sufficiently demonstrate how the combination of prior art references would result in a design obvious enough to invalidate the existing design patent.
The Issue
Next Step Group petitioned the PTAB to invalidate the Ugg® boot design patent based on the concept of obviousness. The doctrine of obviousness applies when a person skilled in the field could reasonably combine prior art references (previous designs) to arrive at the patented design, making the design unworthy of protection due to its lack of originality.
In this case, Next Step Group attempted to apply a new test for design patent obviousness stemming from the LKQ decision (view that ruling here). This test was intended to provide clearer guidance on when obviousness applies to design patents. Despite this new test, the PTAB ruled that the group did not sufficiently explain how the prior art references should be combined or why this combination was obvious.
The Takeaway
This case emphasizes how difficult it can be to invalidate design patents, especially when dealing with ornamental designs. Unlike utility patents, design patents protect only the appearance of an article of manufacture—not its functionality. For companies whose products feature distinctive ornamental elements, securing design patent protection can be a powerful legal tool. The denial of Next Step Group’s petition reinforces the value of design patents and the necessity of well-founded, detailed arguments when attempting to challenge them.
For businesses considering design patents to protect the look of their products, this decision is a reminder of their strong legal standing and the importance of thorough legal strategy when seeking to invalidate a competitor’s patent.
