CRITICAL DESIGN PATENT CASE: LKQ SUBMITS OPENING BRIEF IN LKQ v. GM, WHILE VARIOUS AMICI FILE BRIEFS IN SUPPORT OF LKQ, AND OTHERS WHICH SUPPORT NEITHER PARTY

As many of you are no doubt aware, the U.S. Court of Appeals for the Federal Circuit on June 30, 2023 granted a rehearing en banc in the LKQ v. GM design patent case.  The rehearing Order focused on the issue of whether the Supreme Court’s decision in KSR v. Teleflex, involving the analysis of obviousness of a utility patent, also applies to design patents.  This squarely places the seminal case of In re Rosen in the Court’s crosshairs, namely, does it need to be overturned or abrogated in light of KSR.  The Federal Circuit’s original decisions in the case and a summary of the issues in the en banc Order were discussed in my prior blog posts.

Since then, LKQ has filed its opening brief.  A number of amicus curiae briefs have also been filed, some supporting LKQ and some supporting neither party.  Among the latter group, the brief submitted by the United States (and the USPTO), through the Department of Justice, provides some substance that the Court may ultimately adopt, since deference may be given to the government’s position (as it was in Samsung v. Apple).  The government’s argument is summarized in its brief thusly:

“There is no question that the principles the Supreme Court has announced regarding § 103, including the Graham factors and KSR’s emphasis on the need for an “expansive and flexible” approach, apply to design patents. The only question is how those principles should apply. While this Court’s Rosen-Durling test reflects helpful insights that help guard against the improper use of hindsight in the obviousness inquiry, it has become overly restrictive in several respects, and should be reformulated to reflect the expansive and flexible principles the Supreme Court has articulated in the utility-patent context.

“The United States therefore urges the Court to adopt a test that preserves the basic Rosen-Durling framework but replaces Rosen’s “basically the same” terminology with language directing the examiner or other factfinder to inquire whether there is a suitable starting point or base reference broadly having a similar overall visual effect as the claimed design. The Court should make clear that the lack of such a reference should not cut off the obviousness inquiry but may signal that the obviousness case is not particularly strong. The Court should also eliminate Durling’s “so-related” requirement in order to allow the decisionmaker to take into account the ordinarily skilled designer’s experience, creativity, and common sense, when considering combinations involving the base reference. 

“Under such an approach, at each step of the inquiry, the decisionmaker should consider the claimed design as a whole and take into account not just the ordinarily skilled designer’s experience, creativity, and common sense, but also may consider factors including what market demands and industry customs exist in the design community, which ornamental features are commonplace in the relevant field, the extent to which ornamental features are motivated by functional considerations, and whether industry designers face similar design problems as other industries or otherwise look to other industries for design ideas.”

Also filed in support of neither party was an amicus brief by the Institute for Design Science and Public Policy, written by noted designer Charles Mauro and myself and endorsed by 36 distinguished industrial designers, that focused on the third question asked by the Court in its en banc Order, namely: 

“If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?”

The brief summarizes its arguments as follows:

“Design patents are an extraordinarily important form of intellectual property. Their importance continues to grow because the marketplace and social interactions more generally are increasingly driven byvisual information and cues. For that reason, the present case is a critical opportunity for the Court to make several needed adjustments to design patent law to ensure that the law aligns with the role of designs in the marketplace and how designs are developed and perceived. 

“First, a deeper understanding of the design process and how design innovation functions in the marketplace is a necessary predicate to answering the Court’s en banc questions. The design process’s main objective is to create innovation that is distinguishable from other designs and which is attractive to consumers. Empirical research has expanded the understanding that neither designers nor consumers view product designs as an assemblage of individual parts. Studies have likewise confirmed that an experienced designer perceives designs differently than the average consumer—the latter of which is the intended target/user of design innovation.

“Second, that experiential foundation of design innovation underscores several deficiencies with current design-patent law—one being the open question of whether the “ordinary observer” test should apply to the obviousness analysis. Precedent shows how this open question developed, and the Court now has an opportunity with this case to clarify the applicable standard for assessing obviousness of design patents.

“Third, the Court should clarify that the ordinary observer—not the ordinary designer—applies to deciding nonobviousness of design patents. This clarification would remedy the status quo, which leads to anomalous outcomes between patentability and infringement. Applying the ordinary observer test also aligns with the real-world understanding and application of design innovation.

“Fourth, the novelty analysis for designs should be restored to its traditional and statutory basis. Correctly applying the ordinary observer for both anticipation and obviousness leads to the anomalous outcome where both analyses reduce to the same effective test, with anticipation using “substantially the same” and obviousness using “basically the same.” The answer is to restore the anticipation analysis to its classical formulation—requiring identicality to find a lack of novelty.

“Fifth, the Court should largely retain the Rosen two-step test for analyzing obviousness, but the second step should be eliminated or restricted to narrow circumstances. This approach aligns the obviousness analysis with how designers and consumers view product designs—not as an assemblage of individual parts but as a holistic perception. Secondary references should be used not at all or only in very circumscribed situations where the differences between the claimed design and the prior art are de minimis, and such differences are shown in one or more products in the exact same category of products as the claimed design.

“Finally, Amici provide concise answers to the Court’s en banc questions.

“The present brief focuses primarily on if and how the Rosen-Durling test should be modified, and Amici also provide their experienced perspective on the additional en banc questions.”

GM’s brief is due October 12, 2023, and amicus briefs supporting GM are due within 14 days (October 26th if GM files on the 12th).  Stay tuned for futher developments.