LKQ En Banc Argument Suggests CAFC Could Soften Test for Design Patent Obviousness

An en banc panel of the U.S. Courtroom of Appeals for the Federal Circuit (CAFC) today heard arguments from LKQ Company, the U.S. authorities and GM International Know-how Operations in a case that might change the take a look at for assessing design patent obviousness. The judges appeared concerned with tweaking the present “Rosen-Durling” take a look at however struggled with getting the events to obviously articulate a substitute method wouldn’t be doubtlessly simply as unhealthy.

The so-called Rosen-Durling take a look at for design patent obviousness requires that, first, below In re Rosen (C.C.P.A., 1982), courts determine a previous artwork reference “the design traits of that are mainly the identical because the claimed design.” Subsequent, below Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir., 1996)), if such a reference is recognized, the court docket should think about whether or not it may be modified primarily based on different references to give you “the identical total visible look because the claimed design.”

In a January, 2023, decision, the CAFC discovered that, “making use of the checks established in Rosen and Durling, the Board discovered that LKQ did not determine a ample main reference, and subsequently did not show obviousness by a preponderance of the proof” of GM’s U.S. Patent D855,508, which covers a “automobile entrance skid bar.” The court docket in the end mentioned that “[w]e, as a panel, can’t overrule Rosen or Durling with no clear directive from the Supreme Courtroom.”

However in June 2023, the court docket granted a uncommon en banc evaluation following a petition by which LKQ argued that the CAFC and its predecessor court docket have been making use of a “inflexible method” to figuring out obviousness of design patents for 40 years, and that the Supreme Courtroom’s 2007 holding in KSR Worldwide v. Teleflex, Inc. expressly overruled such an method. The petition requested the en banc court docket to contemplate the next two questions:

“1. Whether or not the inflexible method to evaluating the obviousness of designs below In re Rosen, 673 F.second 388, 391 (CCPA 1982) and Durling v. Spectrum Furnishings Co., Inc., 101 F.3d 100 (Fed Cir. 1996) is in step with the Supreme Courtroom’s interpretation of 35 U.S.C. § 103 in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007); and

2. What customary, in step with KSR and 35 U.S.C. §171, ought to substitute the present requirement {that a} patent challenger determine a main reference that’s mainly the identical because the claimed design as a prerequisite to evaluating obviousness and the additional limitation that permits modification of the first reference provided that there’s a secondary reference that’s “so associated” to the first reference that the looks of sure decorative options in a single would counsel the applying of these options to the opposite.”

In its decision granting review, the CAFC vacated the panel opinion and requested the events to handle six questions of their briefs (paraphrased):

• Does KSR abrogate In Re Rosen and Durling?
• If it doesn’t, ought to the court docket nonetheless modify the Rosen-Durling take a look at in any manner in view of KSR’s holding that obviousness checks shouldn’t be inflexible?
• What ought to the brand new take a look at be in that case?
• Has any precedent from the CAFC already taken steps to make clear Rosen-Durling?
• Would eliminating or modifying the take a look at create uncertainty?
• What variations are there between design and utility patents and what position ought to these distinction play in a take a look at for design patent obviousness?

The court docket additionally invited the views of america.

A variety of amici weighed in on the case, with some, just like the American Intellectual Property Law Association (AIPLA) and the United States, warning in opposition to creating uncertainty by wholly abrogating a time-tested framework, whereas others—principally within the automotive and insurance coverage industries—argued that the Rosen-Durling take a look at is “overly-rigid” and has allowed authentic tools producers (OEMs) to “acquire and implement design patents on insignificant part-variations year-over-year.”

CAFC Judges Push for Clear Steering on Potential New Check

In at this time’s arguments, Professor Mark Lemley argued for LKQ and was shortly lower off by Chief Choose Moore, who pressed Lemley to handle what the substitute take a look at for Rosen-Durling ought to be. Lemley agreed with Choose Moore that there ought to nonetheless be an “analogous arts requirement” of some form, however Moore appeared unclear on what the precise parameters of that will be.

“I can solely discover one case of ours that talks about what the usual for analogous arts is within the design patent context,” Moore mentioned. “Nary a quick, regardless of the numerous briefs we received, educated this court docket on what the substitute customary for analogous arts ought to be.”

In its opening brief, LKQ mentioned that KSR Worldwide Co. v. Teleflex Inc., 550 U.S. 398 (2007) rejected inflexible approaches like Rosen-Durling and subsequently “implicitly abrogated” the take a look at. As a substitute, the take a look at for design patent obviousness ought to be “the expansive and versatile method prescribed by [Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 6 (1966)] and refined by KSR, utilized within the method that method was meant to be utilized: that’s, to find out whether or not, in gentle of the information and proof, an individual having extraordinary ability within the artwork would have discovered the claimed design apparent.”

Arguing for the federal government, USPTO Solicitor Farheena Rasheed mentioned the court docket ought to “resist LKQ’s overreading of KSR and likewise resist GM’s underreading of it.” The USPTO’s middle-of-the-ground method suggests doing precisely what the Supreme Courtroom did in KSR, Rasheed mentioned, which was to say the teaching-suggestion-motivation (TSM) take a look at offers useful perception, somewhat than to overrule it altogether.

However the judges didn’t appear clear on the federal government’s urged method both. “Our method is to mainly take away all the edge necessities,” Rasheed mentioned.

“What about analogous artwork?” requested Chief Choose Moore.

Christopher Carani of McAndrews Held & Malloy mentioned the court docket’s give attention to analogous artwork all through the listening to was odd as a result of the problem wasn’t earlier than the court docket “and it doesn’t appear to reply the questions that have been.”

Rasheed defined that the take a look at can exist precisely because it does presently, with some modifications, particularly to the second a part of Rosen-Durling. “With regards to the second a part of the Rosen-Durling take a look at we predict mere similarities, as this court docket present in [MRC Innovations, Inc. v. Hunter Mfg., LLP]…is ample,” Rasheed mentioned.

However Moore challenged this: “You need us to maintain Rosen-Durling however [you say] there shouldn’t be any threshold necessities. Rosen completely has a threshold requirement – you possibly can’t be thought-about as the first reference except you’re mainly the identical.”

Rasheed defined that the federal government would merely soften “mainly the identical” to take a extra expansive method that dictates “an total comparable visible impression.”

Lastly, arguing for GM was Joseph Herriges of Fish & Richardson, who mentioned “the Rosen-Durling framework is a crucial and thoughtfully-developed utility of Graham tailor-made to the distinctive points in design patent litigation. KSR didn’t overrule Rosen-Durling.”

Herriges mentioned “there could also be a case on the market by which a patent challenger can present obviousness exterior of the context of Rosen-Durling, however to my information that hasn’t been an exception that’s been articulated.” He urged if the court docket desires to present extra flexibility to the take a look at, it ought to affirm Rosen-Durling however not foreclose the chance that sooner or later, exceptions may happen, although it could doubtless be “a uncommon case, if any.”

Commenting on at this time’s arguments, which he attended in particular person, Carani mentioned “it looks like the court docket will keep the [Rosen-Durling] step of starting with a main reference however will make the presence of a main reference a common rule somewhat than an absolute requirement.”

Eliminating Rosen-Durling solely would pose issues for the USPTO that Carani mentioned the court docket appeared sympathetic to. “Stripping away the Rosen-Durling framework and easily leaving the method to a battle of skilled affidavits submitted to the USPTO didn’t sit properly with the court docket,” Carani defined.

The final time the en banc Federal Circuit took on a design patent case was in 2008 in Egyptian Goddess v. Swisa.

Matthew McKay, Senior Vice President, Normal Counsel & Company Secretary, at LKQ Corp., despatched the next written assertion to IPWatchdog:

“A aggressive product design panorama is crucial to defending shopper selection and affordability. The inflexible Rosen-Durling take a look at of design patent obviousness is inconsistent with the dictates of the Supreme Courtroom, and has allowed massive companies to grab monopolies for designs of merchandise which might be solely trivially completely different than what got here earlier than. A extra versatile and expansive method is crucial – amongst different issues – to making sure shoppers have a variety of secure, high quality choices when making fundamental automobile repairs.

Judges Cunningham and Newman didn’t take part in at this time’s listening to.