## Facts

- Racing Strollers, Inc. owned U.S. Design Patent No. Des. 297,525 covering a baby-stroller frame design.
- The design patent issued on September 6, 1988 from a design application filed April 14, 1986.
- The design application stated it was a divisional of an earlier utility application filed October 22, 1984 (later abandoned).
- Racing Strollers sued Tri Industries, Inc. and related defendants in the District of Minnesota for design-patent infringement and sought a temporary restraining order (TRO).
- Racing Strollers admitted it had sold strollers embodying the patented design more than one year before the April 14, 1986 design-application filing date.
- The district court viewed the patent as prima facie invalid under the pre-AIA 35 U.S.C. § 102(b) on-sale bar if April 14, 1986 was the effective filing date.
- Racing Strollers argued the design patent could claim the October 22, 1984 utility-application date under 35 U.S.C. § 120, avoiding the one-year bar.
- Defendants relied on In re Campbell (C.C.P.A. 1954), understood to bar a design application from being a divisional of a utility application for filing-date benefit purposes.

## Issues

1. Whether a design-patent application may be filed as a divisional of an earlier utility-patent application and claim the earlier filing date under 35 U.S.C. § 120.
2. Whether In re Campbell remained controlling precedent requiring rejection of such design-from-utility divisional practice.
3. On interlocutory review, what legal rule should govern the district court’s evaluation of the § 102(b) on-sale bar and likelihood of success for preliminary relief.

## Decision

- The Federal Circuit, sitting en banc, overruled In re Campbell.
- The court held there is no categorical rule preventing a design application from being a divisional of an earlier utility application.
- A design application may claim the benefit of the earlier utility filing date when the statutory and regulatory requirements for such benefit are satisfied (including adequate disclosure in the earlier application).
- The court answered the certified question to remove Campbell as a bar and remanded for further proceedings; it did not decide ultimate validity or infringement.

## Legal Principles

- Pre-AIA 35 U.S.C. § 120 can apply to allow a later-filed application to claim the benefit of an earlier filing date when the statutory requirements are met; the statute does not impose an across-the-board design-versus-utility prohibition.
- A design-patent application may, in appropriate circumstances, be treated as a divisional of an earlier utility-patent application for filing-date benefit purposes.
- The Federal Circuit, sitting en banc, may overrule binding C.C.P.A. precedent where warranted.
- On interlocutory appeal under 28 U.S.C. § 1292(b), an appellate court may resolve a controlling legal question that materially affects further proceedings without reaching final merits determinations.

## Conclusion

The Federal Circuit held that design applications are not categorically barred from claiming § 120 benefit from earlier utility applications and overruled In re Campbell, leaving the district court to reassess the on-sale bar and preliminary-relief factors under the corrected legal rule.


Racing Strollers, Inc. v. Tri Indus., Inc., 878 F.2d 1418 (Fed. Cir. 1989)