By Matthew L. Cutler, Principal
Not all claim limitations are treated equally. In Crocs, Inc. v. Polliwalks, Inc., IPR2014-00424, involving US Pat. No. 8,613,148, the Board addressed an argument for patentability based on an ornamental feature found in the challenged claims. But, the Board found the ornamental feature (a specific animal design incorporated into shoes) could not be relied upon to impart patentability to the claims.
Patent Owner had argued that a prior art reference raised against the ‘148 patent did not disclose an animal character or design which was formed by projections and recesses, as recited in the claims. The Board disagreed because ornamental features cannot be relied upon to impart patentability. This doctrine applied here, even though the design or ornamental feature was recited in the claim. As such, the Petition was granted and an IPR trial instituted. It is worth noting that the Board did go on to cover its bases and found that, even if the ornamental feature was to be given patentable weight, the references cited by Petitioner sufficiently suggested making shoes with the claimed animal character or design.