Reevaluating Design Patent Obviousness | Patently-O

by Dennis Crouch

Design patents proceed to rise in significance, however the underlying legislation filled with eccentricities.  The crux of the problem lies within the method patent legislation selections are sometimes written. Most of precedential patent selections are penned with a robust concentrate on utility patent doctrine, but, surprisingly, the identical patent doctrines of novelty, obviousness, definiteness, enablement, and written description are additionally relevant within the realm of design patents.

The Federal Circuit has determined to reevaluate this dichotomous scenario particularly in relation to the query of obviousness. The case underneath scrutiny is LKQ Corp. v. GM International Tech, 21-2348 (Fed. Cir. 2023). The courtroom has set forth six key questions for the events to think about:

A. Does KSR Worldwide Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2nd 388 (CCPA 1982), and Durling v. Spectrum Furnishings 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 recommend the courtroom ought to get rid of or modify the Rosen-Durling take a look at? Particularly, please tackle whether or not KSR’s statements faulting “a inflexible rule that limits the obviousness in-quiry,” 550 U.S. at 419, and adopting “an ex-pansive and versatile method,” id. at 415, ought to trigger us to get rid of or modify: (a) Durling’s requirement that “[b]efore one can start to mix prior artwork designs . . . one should discover a single reference, ‘a one thing in existence, the design traits of that are principally the identical because the claimed design,’” 101 F.3dat 103 (quoting Rosen, 673 F.2nd at 391); and/or (b) Durling’s require-ment that secondary references “could solely be used to change the first reference if they’re ‘so associated to the first reference that the looks of sure decorative fea-tures in a single would recommend the appliance of these options to the opposite,’” id. at 103 (quot-ing In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (inner alterations omitted).

C. If the courtroom have been to get rid of or modify the Rosen-Durling take a look at, what ought to the take a look at be for evaluating design patent obviousness challenges?

D. Has any precedent from this courtroom already taken steps to make clear the Rosen-Durling take a look at? If that’s the case, please establish whether or not these instances resolve any related points.

E. Given the size of time during which the Rosen-Durling take a look at has been utilized, would eliminat-ing or modifying the design patent obviousness take a look at trigger uncertainty in an in any other case settled space of legislation?

F. To the extent not addressed within the responses to the questions above, what variations, if any, between design patents and utility patents are related to the obviousness inquiry, and what position ought to these variations play within the take a look at for obviousness of design patents?

En Banc Order.

The case itself entails design patents protecting GM elements, similar to entrance fenders.  See D797,625.  The existence of the design patent implies that restore elements should come from licensed producers and channels.  For years, auto insurance coverage firms and others have argued that this improperly raises prices.

The original appellate decision was non-precedential and supported the PTAB IPR determination that the patent challenger didn’t display obviousness. The courtroom relied on the checks delineated in Rosen & Durling, placing a highlight on a main reference that must be “principally the identical” because the claimed design. Notably, this can be a considerably completely different method than the one employed in utility patent obviousness doctrine.

The unique panel was composed of Judges Lourie, Clevenger, and Stark. Although the panel launched a per curium opinion, separate opinions have been additionally issued by Judges Lourie and Stark. Choose Lourie expressed his conclusion that it’s completely acceptable for the design patent obviousness take a look at to be completely different from that in utility patents. “Obviousness of a decorative design thus requires completely different concerns from these of a utility invention.”  Choose Stark disagreed with the bulk opinion on a procedural grounds (forfeiture of sure 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 symbolize GM.

The courtroom particularly invited the US Gov’t to file an amicus temporary and likewise welcomed further briefs of amicus curiae — noting that they “could also be filed with out consent and depart of the courtroom.”  For those who assist LKQ (making it simpler to invalidate design patents), amicus briefs shall be due in late August.  For those who assist GM, briefs shall be due in late September.