by Dennis Crouch
Design patents continue to rise in importance, but the underlying law full of eccentricities. The crux of the issue lies in the manner patent law decisions are typically written. Most of precedential patent decisions are penned with a strong focus on utility patent doctrine, yet, surprisingly, the same patent doctrines of novelty, obviousness, definiteness, enablement, and written description are also applicable in the realm of design patents.
The Federal Circuit has decided to reevaluate this dichotomous situation specifically in relation to the question of obviousness. The case under scrutiny is LKQ Corp. v. GM Global Tech, 21-2348 (Fed. Cir. 2023). The court has set forth six key questions for the parties to consider:
A. Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)?
B. Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and suggest the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR’s statements faulting “a rigid rule that limits the obviousness in-quiry,” 550 U.S. at 419, and adopting “an ex-pansive and flexible approach,” id. at 415, should cause us to eliminate or modify: (a) Durling’s requirement that “[b]efore one can begin to combine prior art designs . . . one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design,’” 101 F.3dat 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling’s require-ment that secondary references “may only be used to modify the primary reference if they are ‘so related to the primary reference that the appearance of certain ornamental fea-tures in one would suggest the application of those features to the other,’” id. at 103 (quot-ing In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).
C. If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?
D. Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.
E. Given the length of time in which the Rosen-Durling test has been applied, would eliminat-ing or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?
F. To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?
The case itself involves design patents covering GM parts, such as front fenders. See D797,625. The existence of the design patent means that repair parts must come from authorized manufacturers and channels. For years, auto insurance companies and others have argued that this improperly raises costs.
The original appellate decision was non-precedential and supported the PTAB IPR decision that the patent challenger failed to demonstrate obviousness. The court relied on the tests delineated in Rosen & Durling, putting a spotlight on a primary reference that ought to be “basically the same” as the claimed design. Notably, this is a substantially different approach than the one employed in utility patent obviousness doctrine.
The original panel was composed of Judges Lourie, Clevenger, and Stark. Though the panel released a per curium opinion, separate opinions were also issued by Judges Lourie and Stark. Judge Lourie expressed his conclusion that it is totally acceptable for the design patent obviousness test to be different from that in utility patents. “Obviousness of an ornamental design thus requires different considerations from those of a utility invention.” Judge Stark disagreed with the majority opinion on a procedural grounds (forfeiture of certain arguments).
Barry Irwin teamed up with Profs Mark Lemley and Mark McKenna for the en banc petition. Joseph Herriges and John Dragseth from Fish & Richardson represent GM.
The court specifically invited the US Gov’t to file an amicus brief and also welcomed additional briefs of amicus curiae — noting that they “may be filed without consent and leave of the court.” If you support LKQ (making it easier to invalidate design patents), amicus briefs will be due in late August. If you support GM, briefs will be due in late September.