September 26, 2023

by Dennis Crouch

Design patents proceed to rise in significance, however the underlying regulation stuffed with eccentricities.  The crux of the problem lies within the method patent regulation selections are sometimes written. Most of precedential patent selections are penned with a robust deal with 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 beneath scrutiny is LKQ Corp. v. GM World Tech, 21-2348 (Fed. Cir. 2023). The court docket has set forth six key questions for the events to contemplate:

A. Does KSR Worldwide Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.second 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 court docket ought to eradicate or modify the Rosen-Durling check? Particularly, please handle 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 eradicate 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 mainly the identical because the claimed design,’” 101 F.3dat 103 (quoting Rosen, 673 F.second at 391); and/or (b) Durling’s require-ment that secondary references “could solely be used to switch 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 applying of these options to the opposite,’” id. at 103 (quot-ing In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (inside alterations omitted).

C. If the court docket have been to eradicate or modify the Rosen-Durling check, what ought to the check be for evaluating design patent obviousness challenges?

D. Has any precedent from this court docket already taken steps to make clear the Rosen-Durling check? If that’s the case, please determine whether or not these circumstances resolve any related points.

E. Given the size of time through which the Rosen-Durling check has been utilized, would eliminat-ing or modifying the design patent obviousness check trigger uncertainty in an in any other case settled space of regulation?

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 function ought to these variations play within the check for obviousness of design patents?

En Banc Order.

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

The original appellate decision was non-precedential and supported the PTAB IPR choice that the patent challenger didn’t show obviousness. The court docket relied on the checks delineated in Rosen & Durling, placing a highlight on a main reference that should be “mainly the identical” because the claimed design. Notably, it is a considerably totally 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 check to be totally different from that in utility patents. “Obviousness of a decorative design thus requires totally 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 signify GM.

The court docket particularly invited the US Gov’t to file an amicus transient and in addition welcomed extra briefs of amicus curiae — noting that they “could also be filed with out consent and depart of the court docket.”  If you happen to assist LKQ (making it simpler to invalidate design patents), amicus briefs will probably be due in late August.  If you happen to assist GM, briefs will probably be due in late September.