“The ‘extra versatile strategy’ adopted this week will unquestionably give [design patent] challengers extra latitude to argue that prior artwork warrants a discovering of obviousness.”
Purposes for design patents have surged in recent times, with the U.S. Patent and Trademark Workplace (USPTO) reporting a 20% enhance in purposes during the last 5 years. Design patents have turn out to be an necessary instrument in manufacturers’ mental property portfolios – and for good cause: the place commerce costume safety can take years (and vital assets) to amass, with the precise planning and timing, design patents are straightforward to acquire and provide robust protections for manufacturers.
The Federal Circuit’s en banc resolution in LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 21-2348 (Fed. Cir. Might 21, 2024) this previous Tuesday calls the energy of these advantages into query. Within the much-anticipated resolution, the courtroom held that the longstanding and inflexible check for assessing “obviousness,” a key factor of patent validity, needs to be changed with a extra “versatile” customary.
The magnitude of this shift will likely be clear solely after courts apply the brand new customary, however the resolution is definite to encourage contemporary challenges to the validity of design patents. This may very well be a welcome alternative for opponents to extra efficiently problem probably invalid design patents which have monopolized widespread design options, but when interpreted by courts to be too “versatile,” it additionally might open the door for third events to undermine the power of manufacturers to stop knockoffs.
Design Patents Can Be Abused for the Identical Causes They Are Common
Design patents are potent weapons for manufacturers seeking to defend distinctive improvements or flagship merchandise. Design patent purposes are simpler and less expensive to arrange than purposes for utility patents. In contrast to an utility for a utility patent, which requires a number of, detailed claims in regards to the invention it’s meant to guard, design patents require just one declare and depend on drawings of the design to convey the scope of safety. The simplicity of design patent purposes additionally allows a sooner evaluation by USPTO examiners and makes them much less inclined to rejection. In truth, the USPTO’s most recent statistics present that the design patent allowance is over 81% this yr.
As soon as a design patent points, it’s presumed legitimate, and offers the proprietor 15 years of safety for its design. The patentee can implement these rights by means of an infringement motion in federal courtroom, the place the courtroom will take a look at whether or not the accused product appears considerably the identical because the patented design within the eyes of an bizarre observer.
Plaintiffs have typically had a definite benefit in design patent litigation. Courts first construe the scope of a design patent’s claims and have a tendency to depend on the applying’s illustrations relatively than an in depth written description of the design. This enables the patentee to argue {that a} patent covers a variety of visually comparable merchandise, notably if its drawings are lower than clear. The infringement evaluation then asks whether or not an bizarre observer would discover that the patented design and the accused product “are considerably the identical.” That is exhausting to beat in instances the place the defendant is peddling a knockoff or “dupe” of the patentee’s product, even below a unique model identify. An alleged infringer at instances might find a way defend by contending that the patents at situation are invalid, as an example as a result of they lack novelty, are apparent, or are useful, however – as a result of longstanding courtroom precedent – the requirements are excessive and should be proven by clear and convincing proof. And if legal responsibility for design patent infringement is discovered, damages awards will be devastating for an infringer, as a prevailing patent proprietor can search the infringer’s complete earnings for the article of manufacture.
For all of those causes, for a lot of manufacturers, design patents make a whole lot of sense to acquire. When used proper, they’re a robust instrument. On the identical time, these advantages will be abused by manufacturers that search to guard widespread (and never essentially novel or non-obvious) design options of their merchandise by means of design patents. Due to the problem confronted by defendants in design patent litigation and the potential award of damages (to say nothing of litigation prices for these in depth issues), the specter of litigation from a design patent holder could also be sufficient to stop competitors in a product area, even the place the design patent appears ripe for invalidity.
The Rosen-Durling Check Bolstered the Power of Design Patents by Setting a Excessive Bar for Obviousness
A key factor of patent validity is nonobviousness, that means the claimed design can’t be one which “would have been apparent . . . to an individual having bizarre ability within the artwork to which the claimed invention pertains.” 35 U.S.C. § 103. In observe, nevertheless, obviousness has been troublesome for challengers to show.
Courts had lengthy assessed obviousness utilizing the two-step Rosen-Durling check—derived from Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996) and In re Rosen, 673 F.2nd 388 (CCPA 1982). Below that check, the challenger was required to discover a major reference that was “‘mainly the identical’ because the challenged design declare.” After figuring out that “major reference,” it might use “secondary references” to change the first reference to create a design that has the identical general visible look because the claimed design. Nonetheless, these “secondary references” have been required to be ““so associated’ to the first reference that options in a single would counsel utility of these options to the opposite.”
Step one of this check was a frequent hurdle for challengers that might not determine a enough major reference, and this requirement made it uncommon for courts to achieve the second step of the Rosen-Durling inquiry.
Whereas troublesome for challengers, step one however was regarded by many as an necessary factor of design patent safety. As the sooner panel (which declined to overrule the Rosen-Durling check “with no clear directive from the Supreme Courtroom”) in LKQ Corp. noticed: “This check safeguards towards a challenger choosing and selecting options from a number of references to create one thing totally new, essentially altering the general visible impression of the unique designs.”
The New Customary Outlined in LKQ Will Absolutely Encourage Extra Challenges to Validity on Obviousness Grounds
In its en banc opinion, the Federal Circuit overruled the sooner panel and instructed courts to desert the Rosen-Durling check for design patent obviousness. As a substitute, courts ought to apply the check articulated by the Supreme Courtroom for utility patents in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), which “defined that the last word query of obviousness is one among regulation primarily based on ‘a number of primary factual inquiries,’” together with “the scope and content material of the prior artwork”; “variations between the prior artwork and the claims at situation”; and “the extent of bizarre ability within the pertinent artwork.” Graham additionally requires consideration of sure secondary issues.
The primary Graham issue will now require the actual fact finder to “think about the ‘scope and content material of the prior artwork’ throughout the data of an bizarre designer within the area of the design.” Challengers will nonetheless be required to determine “a major reference,” nevertheless it “want solely be one thing in existence.” There isn’t any longer a “threshold similarity or ‘mainly the identical’ requirement to qualify as prior artwork,” as below Rosen-Durling—as an alternative, “an identical artwork requirement applies to every reference.”
The scope of analogous artwork is, in flip, guided by utility patent precedent, which examines: “(1) whether or not the artwork is from the identical area of endeavor because the claimed invention; and (2) if the reference isn’t throughout the area of the inventor’s endeavor, whether or not the reference nonetheless is fairly pertinent to the actual drawback with which the inventor is concerned.” Because the Federal Circuit acknowledged, the second prong of this check doesn’t “appear to use to design patents in the identical approach” because it applies to utility patents. Nonetheless, the courtroom declined to “delineate the complete and exact contours of the analogous artwork check for design patents,” leaving the event of this customary to future instances.
The courtroom did clarify {that a} major reference below this new customary “will seemingly be the closest prior artwork, i.e., the prior artwork design that’s most visually just like the claimed design” and “will sometimes be in the identical area of endeavor because the claimed decorative design’s article of manufacture, nevertheless it needn’t be, as long as it’s analogous artwork.”
The courtroom additional distributed with the requirement that any secondary references be “‘so associated’ such that options in a single would counsel utility of these options to the opposite.” As a substitute, major and secondary references “should each be analogous artwork to the patented design,” and, consistent with the Supreme Courtroom’s resolution in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), “the motivation to mix these references needn’t come from the references themselves.” Relatively, “there should be some record-supported cause (with out hindsight) that an bizarre designer within the area of the article of manufacture would have modified the first reference with the characteristic(s) from the secondary reference(s) to create the identical general look because the claimed design.”
The “extra versatile strategy” adopted this week will unquestionably give challengers extra latitude to argue that prior artwork warrants a discovering of obviousness. Whether or not these arguments are efficient will depend on how far courts are keen to depart from prior understandings of acceptable major and secondary references. Solely time will inform whether or not the LKQ resolution will lead to a good option to invalidate frivolous design patents that monopolize widespread designs with out undermining the protections that manufacturers depend on to guard their new and modern merchandise.
Picture Supply: Deposit Photographs
Writer: fotoscool
Picture ID: 57926613
