Under the America Invents Act, post-grant reviews are only available for patents having at least one claim with an effective filing date of March 16, 2013 or later. If this condition is not satisfied, the Patent Trial and Appeal Board (PTAB) must dismiss the post-grant review petition. While this standard appears to be simple on its face, it becomes a more complicated issue when a child patent (continuation or divisional) does not contain the same disclosure as its parent patent. In David’s Bridal v. Jenny Yoo, the PTAB addressed this exact issue on a design patent, holding that the parent patent’s disclosure sufficiently supported the “new matter” disclosed in the child patent and denied the post-grant review petition.
In Sport Dimension, Inc. v. The Coleman Company, the Federal Circuit rejected the district court’s claim construction of the subject design patent claims for improperly eliminating structural features, even though the eliminated structure served a functional purpose.