ATTENTION CORPORATE AMERICA! IT’S TIME TO ADOPT A U.S. DESIGN REGISTRATION SYSTEM

We’ve all had a chance to absorb, and perhaps wretch over, the LKQ v. GM decision wherein the Federal Circuit last month jettisoned the venerable Rosen/Durling tests for determining whether a claimed design is non-obvious.  See my earlier blog where I attempted to deconstruct the opinion. 

The LKQ case leaves a whole lot to be desired.  In overturning Rosen and Durling, which were used over 40 years to analyze Sec. 103 for designs, the Court basically adopted the utility patent test for determining design patent obviousness.  Forty years of development of design patent case law have been wiped out.  We are back to 1952, when Sec. 103 was first enacted, and the subsequent Graham v. John Deere case from the Supreme Court in 1964 setting forth a 4-part inquiry for determining obviousness of a utility patent.  This was all done in the name of the Supreme Court’s KSR decision of 2007 in which the Court required that Sec. 103 analysis be performed with “flexibility” – again, in a utility patent case. 

The LKQ case leaves design patents in limbo.  It will create lots of work for design patent lawyers and litigators, to be sure, but will also give their clients grave anxieties.  The result, no doubt, will be fewer design patents being found valid and even fewer being applied for.  Combined with the recent steep increase in USPTO fees for design patent applications (from the current $1,760 to $2,600), even the large corporate rights-holders are likely reevaluating whether design patents are worth it.  In the absence of an alternative, many will continue down the design patent path.

Is there an alternative?  Yes.  It’s in the form of a new law, a system for registering (not examining) designs.  But without you, Corporate America, it won’t happen.

As background to this post, I suggest that you review my August 1, 2023 post: AN OBVIOUS WAY TO RESOLVE THE DESIGN PATENT NON-OBVIOUSNESS PROBLEM. In that post, I explained in detail the history of how non-obviousness for designs has always been problematic.  The venerated CCPA Judge Hon. Giles Rich spoke out often about the subject.  As one example, he wrote a concurring opinion in In re Nalbandian 661 F.2d 1214 (C.C.P.A. 1981) wherein he said:

“It is time to pass [a design registration system] and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office, giving some sense of certainty to the business world of what designs can be protected and how. (emphasis added).” 

Now, in the wake of LKQ, this makes more sense than ever.  Nobody knows how LKQ will be applied.  The USPTO doesn’t know.  Applicants for design patents don’t know.  Their clients don’t know.  The PTAB doesn’t know.  The federal district courts don’t know.  Corporate America doesn’t know. And the Federal Circuit left so many questions open in LKQ, they don’t know either.  Nobody knows what LKQ hath wrought.

Webinars will be given that purport to predict what will happen, and to give advice to design patent applicants about how best to navigate design patent non-obviousness in the post-LKQ world.  But although well-intentioned, it will be somewhat speculative advice, because, like the stock market,  no one knows what will happen.

In 2007, I gave a speech before the AIPLA Industrial Designs Committee advocating the adoption of a sui generis design registration system much like that advocated by Judge Rich.  At the time, there were some troublesome things happening to design patents (see my article The Crisis in the Law of Designs).  But some design patent practitioners who heard the speech could see only the downside.  As I recall, the main objection was something like “I’d rather deal with the devil we know [i.e., design patents] than the devil we don’t know [i.e., design registrations]”.

Following the AIPLA speech, my good friend, the late Theresa Esquerra and I wrote an article (“A Manifesto on Industrial Design Protection: Resurrecting the Design Registration League”, 55 Journal of the Copyright Society of the USA 2-3, Winter-Spring, 2008).  We called on design rights-holders to form a coalition, which we dubbed The Design Registration League (DRL) based on the name of the original group advocating such legislation in the 1910s.  Here’s an article on the DRL from the New York Times in 1922.   Nothing much happened.

Later I also spoke at the USPTO’s annual Design Day advocating the same thing.  The USPTO design patent examiners and officials in attendance were somewhat in shock, feeling that their very livelihoods were at stake, despite a provision in the bill that actually preserved the design patent system.  Nothing much happened.

In retrospect, I feel that the main reason nothing happened was that Corporate America did not get behind it.  Without serious support and lobbying, nothing happened, and nothing was going to happen. 

In an attempt to create more momentum, Theresa and I actually drafted a Design Registration Bill.  It wasn’t as hard as it sounds.  We simply started with the Vessel Hull Act, a law already on the books that is part of the Copyright Act (17 U.S.C. 1301 et seq.).  The Vessel Hull Act, in turn, was patterned after previous unsuccessful design registration bills including those advocated by Judge Rich.  We changed the class of designs to be protected, i.e., vessel hulls, to “designs”.  We consulted with officials at the Copyright Office to garner their support, to elicit their views on various terms in the draft and amended it accordingly.  We also looked at the highly successful Registered Community Design (RCD) system in Europe, and solicitated input from European practitioners.  Finally, we inserted and deleted some provisions that we had been deemed problematic in the design patent system. 

The bill we drafted is far, far from perfect, but we thought it would make a good starting point, with the the eventual terms being negotiated by rights holders and other interested parties.

It is clear that after LKQ, the time has come for Corporate America – the rights-holders with the greatest influence in Congress - to take a hard look at the uncertainties surrounding design patents and give serious consideration to adopting a design registration system.   

As stated by Judge Rich, it is high time to get the intractable issue of non-obviousness out of the design protection system.  Post-LKQ, it could not be more clear.

Personally, I would much rather have a system where design rights could be obtained inexpensively and quickly.  In my 40+ years of experience, most design patents are tucked away by my clients, to be pulled out only if there’s an infringement problem.  And the percentage of design patents that have an infringement problem is probably far fewer than 1%.  Why invest so much resources into a non-appreciating asset having such little use?

In the EU, design registrations can be obtained quickly and cheaply, especially considering that a registration covers all 27 EU countries.  Also, up to 100 designs can be registered in the same application.  Currently, it takes the USPTO ~17 months to issue a first Office action, while in Europe you can get a registration in as little as one week.

I am attaching the bill that Theresa and I drafted that was distributed at my 2007 speech.

One of the notable provisions of the bill is that within two years of a registration, the owner can file a design patent application and claim priority to its earlier design registration.  This would effectively result in a two-tier system, which has already been used to good effect in other countries, e.g., Australia.

An infringement occurs when someone copies the protected design.  While protection is limited to copies, that is by far and away exactly how design patents are effectively used today - to stop copycats. In the draft bill, a design is not deemed copied if it is original and not substantially similar in appearance to the protected design.  The word “ornamental” is not in the bill, and “functionality” is clearly defined as a design for which there are no alternative designs that will perform substantially the same function.

A unique provision – suggested by the Copyright Office – is to establish staggered terms of protection based on the type of design.  Designs having relatively short lifetimes such as clothing and apparel would have a short term, while designs that have long lifetimes such as musical instruments and heavy machinery, would be given a long term. 

Another provision is that attorney’s fees shall be awarded to the prevailing party in an action for infringement.  This is an important bulwark against baseless claims by those who obtain weak or falsely obtained registrations and assert them against legitimate companies.

Statutory damages up to $250,000 or $5 per copy can be awarded, or the infringer’s profits.

Of course, other provisions could be added to the bill, such as: opposition proceedings; a process to deal effectively with online resellers; and/or using a design registration to stop imports at the border like trademark and copyright registrations are currently used.

Also, rather than the Copyright Office, the system could be administered by the USPTO, which makes sense if the two-tier provision is adopted.

I urge you to review the bill.  Give it to your corporate clients for serious consideration.  Ask your professional organizations (the AIPLA, IPO, INTA, ABA) to get behind it.  Organize. Let’s get the ball rolling.

I’ve had enough of everyone trying to shoehorn design patents into the utility patent system, a gift that keeps on giving - to infringers.

Let’s get the United States into the 21st century and enact design protection legislation that makes sense. 

LKQ v. GM REDUX – WITH APOLOGIES TO THE USPTO

In my blog post yesterday I predicted that it would take a long time for the USPTO to issue guidance to Group 2900 examiners on how to handle obviousness rejections based on the en banc decision of the Federal Circuit in the LKQ v. GM case.

I was wrong.

On May 22, 2024, one day (!) after the decision was handed down, the USPTO issued “Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corp. v. GM Global Technology Operations, LLC”.  It was signed by Kathi Vidal, Director of the USPTO.

The document in large part reiterated what the CAFC said in it’s opinion (there is something new!), but the speed with which the guidance was released must be a record for the USPTO as concerns design patents.  Kudos!

Interestingly, the guidance included the following:

“… USPTO personnel must apply a flexible approach to obviousness similar to that applied in utility applications.  See MPEP 2141 et seq. for the guidelines to follow in utility applications.”

The Federal Circuit, in doing away with Rosen’s “basically the same” requirement for a primary reference and Durling’s “so related” requirement for a secondary reference, said that the new gateway for prior art is whether it’s “analogous”  to the claimed design, setting forth the 2-part test used in utility patent examinations to determine analogous art, without hinting as to how prior art is analogous under the second part of the test, the part that addresses whether a reference outside the field of endeavor is analogous.   

Responding to the analogous art issue, the USPTO said:

“As the Federal Circuit did not define how to determine whether a prior art design doutside the field of endeavor of the article of manufacture is analogous, the design examiner should consider the degree to which an ordinarily skilled design would be motivated to consider other fields (emphasis added).” [ED note: absent was any guidance for how to determine motivation.]

The guidance went on (this is the new part):

“If the examiner questions whether a design is analogous art, the examiner should confer with their supervisory primary examiner (SPE). The USPTO will compile examples of when it has determined a reference to be analogous art, and those examples will reduce the need to discuss the determination with an examiner’s SPE over time.”

Then, getting to the meat of the issue, the USPTO reiterated almost exactly what the CAFC said about how to determine obviousness.  Interestingly, the USPTO guidance directed examiners to use Form Paragraph 15.19.aia to make a rejection based on two or more references.  This form paragraph simply says:

MPEP 15.19.aia 35 U.S.C. 103 Rejection (Multiple Reference)

“The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1] in view of [2]. Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.”

Finally, the examination instructions said that “The USPTO is continuing to study LKQ in the context of existing precedent; further guidance and training will be forthcoming.”

Everyone in Group 2900, as well as the design patent bar,  anxiously awaits such further guidance.

WHERE IS DESIGN PATENT OBVIOUSNESS HEADING? VEGAS, BABY!

The U.S. Court of Appeals for the Federal Circuit handed down its long-awaited en banc decision in LKQ v. GM, the case that decided whether the Supreme Court’s KSR’s utility patent obviousness test applies to design patents. 

Sadly, for some, the Court answered in the affirmative, concluding that KSR’s requirement of “flexibility” in obviousness analysis required the Court to abandon the venerable Rosen and Durling cases, essentially overruling them.

I said “for some” since the decision will be a boon for challengers (alleged infringers) to contest the validity of design patents.  The PTAB will also see a rise in business.  And, of course, lawyers will be much busier trying to figure out what the LKQ case means. 

For others, like patentees and design rights holders, the decision calls into question not only the validity of their 400,000 unexpired design patents, but whether design patents are still worth the not-inconsiderable cost of obtaining them.   And the USPTO’s design patent examining group 2900 will have their knickers in a twist trying to figure out new rules/regulations for how obviousness will be determined by design patent examiners.  Note:  one can expect a long wait for such rules/regulations, since it took the USPTO quite a long time to provide guidance to examiners regarding less significant, but important recent cases, such as In re: Surgisil.

Perhaps, on the bright side, serious consideration might now be given to creating a US design registration system (the subject of an earlier blog) where a rights-holder can quickly and cheaply obtain a design registration without having to undergo what will now become an even more expensive and problematic examination.  Under such a system, registrations will be relatively easily obtained. But only those that are important, e.g., are being infringed, would likely be challenged by an infringer in a validity proceeding, to be presided over by the PTAB.  I imagine that perhaps 98% of design patents are never violated or enforced, so the huge investment in obtaining them would, under a registration system, be avoided.  Those 98% can quietly sit in an owner’s stable, and if and when an infringement problem arises, the registration can be upgraded to a design patent after full examination.  I’ve proposed this in an earlier blog, and, in view of the LKQ case, will elaborate in a coming post.

The particular facts about LKQ v. GM are beyond the scope of this post, but the lead-up to the current decision has been extensively discussed in numerous prior posts here here here and here

Those are my opening thoughts about LKQ. My other observations follow, in no particular order:

1.       SMITH v. WHITMAN SADDLE

The Court relied heavily upon the Supreme Court’s 1893 design patent decision of Smith v. Whitman Saddle, involving a design patent on a saddle where the patentee essentially (but not completely) combined half of the prior art Granger saddle and half of the prior art Jenifer saddle.  Below are illustrations of the patented design, the Granger, the Jenifer, and the accused design.

PATENTED DESIGN

GRANGER

JENIFER

ACCUSED DESIGN

Even after combining the two halves, a significant feature of the patented design – a drop in the pommel – was absent from the accused design, so the Court concluded that there was no infringement.  But it did not hold the patented design devoid of novelty, i.e., in the parlance of the day it did not lack inventiveness.  In essence, this was an infringement case, not a validity case.  So whatever the Court had to say about the patentability of the design was dicta. Nevertheless, the Federal Circuit relied heavily on it in LKQ. 

Two sentences of the Court’s LKQ opinion really grabbed me.  First, in discussing Rosen, it said: “[In Whitman Saddle], the Court did not ask whether the design of the prior art Granger saddle was “basically the same” as the claimed saddle design.”  Later, in discussing Durling, it said: ““[T]he Supreme Court did not ask [in Whitman Saddle] whether the Granger and Jenifer references were “so related” that the use of certain ornamental features in one would suggest the application of those features to the other.”

It almost goes without saying that Whitman Saddle was decided almost 60 years before Sec. 103 was enacted by Congress in 1952, long before Rosen was decided in 1982, long before Durling was decided in 1996, and obviously (pardon the pun) long before 2024 when LKQ came before the Court. 

Suggesting that the Rosen and Durling requirements were not the tests used by the Supreme Court in Whitman Saddle is like saying Gorham v. White (1871) didn’t mention that one had to evaluate the similarity between the patented and accused designs “in the context of the prior art” as required in the 2008 Egyptian Goddess case, or that the Litton “point of novelty” test is flawed because it was not quoted in Gorham.

Whitman Saddle’s precedential value to LKQ is thus highly questionable.

Therefore it's interesting to me that Whitman Saddle formed the backbone of the Court’s opinion in LKQ.  In considering first the Rosen test requiring a primary reference to be “basically the same” as the claimed design, the Court said that the Rosen test “does not adequately align with…Whitman Saddle”, and that “The Rosen “basically the same” requirement is … inconsistent with the Supreme Court’s analysis in Whitman Saddle”.   It seems like the Court’s real objection to Rosen was that in the absence of a primary reference that is “basically the same” as the claimed design, the analysis “abruptly” ends, which is not a broad and flexible test as required by KSR.

The Court also said that “[N]either the Granger nor Jenifer would qualify as a Rosen reference.” I respectfully disagree.  After looking at the drawings, I think either Granger or Jenifer would have qualified as a Rosen reference.

The Court also said that Durling’s “so related” requirement was inflexible because it “denied factfinders recourse to common sense.” However, there are many examples where the same Court resorted to common sense in deciding obviousness of a design patent, such as in the Campbell Soup case where the Court imputed the existence of a claimed can in a purportedly primary reference, Linz, even though no can was there (see my previous blog).  In the MRC v. Hunter case, the absence of surge stitching in a secondary reference was not fatal to an obviousness holding, the court finding the surge stitching to be de minimus.

2.       ANALOGOUS ART

The second major issue that the Court tackled, having done away with Rosen’s “basically the same” requirement for a primary reference and Durling’s “so related” requirement for a secondary reference, was the threshold for determining the appropriateness of a prior art reference in design patent obviousness analysis.  This threshold turned out to be whether the prior art was “analogous” to the claimed design.

In order to get there, the Court first cited the 3 part inquiry for obviousness analysis set forth in the Supreme Court’s seminal Graham v. John Deere decision of 1966 (which was based on obviousness of a utility patent claim). 

This is not altogether inappropriate, since Graham has been cited in a number of design patent cases as the framework for Sec. 103 analysis, even before the court decided Rosen and Durling.  And Graham is deeply ensconced in patent law, including being cited in Chapter 1500 (Design Patents) of the MPEP.  Although being frequently cited, it hasn’t been regularly applied – just cited.  In other words, most courts have just given lip service to Graham, before going on to a Rosen/Durling analysis.

Nevertheless, the Federal Circuit in LKQ has essentially re-established (one might say reincarnated) the Graham framework for design patent obviousness analysis.  For those of you unfamiliar with Graham, it comprises a 3 step inquiry:

First, determine the scope and content of the prior art.

Second, determine the differences between the prior art and the claims at issue.

Third, determine the level of ordinary skill in the art.

Then, secondary considerations, e.g., commercial success, copying, long felt but unsolved needs, etc., can be considered.

Here’s where analogous art comes in.  In the first step of Graham, the Federal Circuit “reaffirmed” that “an analogous art requirement applies for obviousness of design patents.”, and that “we limit the scope of the prior art to analogous arts.”

In limiting the scope of prior art usable in obviousness analysis of design patents, the Court had to implicitly overrule the seminal In re Glavas case of 1956 (upon which Durling had been based).  In Glavas, the CCPA said that “the principle of nonanalogous arts … cannot be applied to design cases in exactly the same manner as to mechanical cases because design patent combinations rely on appearance rather than use.”  Even though the CCPA’s logic in Glavas is IMHO still valid, it has clearly bitten the dust.

The Court cited the two-part utility patent test to determine the scope of analogous art:  (1)  whether the art is from the same field of endeavor as the claimed invention; and if not then (2) is the reference still “reasonably pertinent” to the particular problem with which the inventor is involved. (emphasis added).  It is immediately apparent to any design patent practitioner that rarely, very rarely, is a designer concerned with solving a particular problem, as opposed to utility patent inventors.  Industrial designers are normally tasked with designing a new product, one that is distinctive, and not a simple follow-on to a competitor’s product.  The designer’s goal, in many cases, is to get as far away as possible from competitors’ designs to create an appearance of its own, which in many cases can result in a brand of the owner.  There are no “particular problem[s]” to be solved.  So, how do you apply the analogous art test to designs?  The LKQ court said the first step is easy:  appropriate prior art will almost always be in the same field of endeavor as the designer’s article of manufacture.  As to how to apply the second step? The Court essentially said “we don’t know” and let future cases figure it out.

Let the games begin!

One particularly vexatious sentence of the Court’s analogous art discussion was this:  “The primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.”  But the Court had just said it could not give guidance on the second test for analogous art. 

Let the games begin!

What about the In re Surgisil case where the court said that a prior art reference in an anticipation rejection had to be the same article of manufacture as that of the claimed design? 

What about the recent holding in Columbia v. Serius where the Court held that in infringement determinations comparison prior art had to be the same article of manufacture as the claimed design?

But now the Court is saying that prior art in an obviousness case – whether a primary or secondary reference - need not be the same article of manufacture as the claimed design.  It only has to be “analogous”, but you go figure out what that means.

The outcome?  Prior art available for obviousness rejections/defenses will enlarge. Obviousness rejections in the USPTO will undoubtedly increase (with a concomitant decrease in anticipation rejections), as will obviousness defenses in litigation, and obviousness challenges in the PTAB.  

At least the Court said, with respect to Graham factor (1), that a primary reference must be identified.  But it need not be “basically the same” as the claimed design (the Rosen test).  Thankfully the Court tried to put to rest the “Frankenart” problem in approving the In re Jennings warning that “the primary reference [cannot be] something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.”   

3.       MOTIVATION TO COMBINE

In a short portion of the opinion, the Court reiterated that the Graham factors must first be considered, and then the obviousness inquiry is “whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design” citing Campbell Soup (emphasis added).

The Court, while dispensing with the need for a primary and secondary reference to be “so related”, again stated that they both must be analogous to the claimed design (while leaving how to determine that to future case law).  Then it said that the “motivation to combine” those references “need not come from the references themselves”…. “but there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.” (employment opportunities for designers to be expert witnesses just skyrocketed). This presents a conundrum for the USPTO since it does not have any mechanism or resources to create a “record-supporting reason” for showing a motivation to combine.  The Federal Circuit was warned about this shortcoming in the PTO’s amicus brief.

The Court was quick to point out the obvious (pun intended):  “Just as with the analogous art inquiry, in the area of motivation to combine, the problem to be solved may have less relevance in the design patent context than in the utility patent context.”

Let the games begin!

4.       THE EFFECT UPON THE DESIGN PATENT SYSTEM

Finally, the Court addressed the concerns of several amici who quite properly pointed out how doing away with the Rosen/Durling tests would essentially create havoc in the design patent system, including “exposing up to 400,000 U.S. design patents to substantial uncertainty and upsetting settled expectations for applicants before the USPTO…” (from the AIPLA amicus brief).  The response of the Court:  “We do not agree.”  It said that Graham has been the law for a long time and there is considerable precedent from which the PTO and courts can draw when assessing obviousness in the design patent context.”

It is hard to imagine how precedent in utility patent obviousness determinations would be helpful, or even analogous (pun intended), in the design patent context, given how wholly different these two forms of patents are, i.e., utility patents protect a product’s functions without regards to how it looks, and design patents protect a product’s appearance without regards to how it works. 

5.       JUDGE LOURIE’S OPINION

Judge Lourie filed a concurring opinion in which he agreed with the result to vacate and remand the current case, but disagreed with the need to jettison the Rosen and Durling tests.  His main argument was that rather than overruling them, they could be modified to be more flexible, because “Overruling is destabilizing.  Courts should, if possible, rule in modest steps, not abrupt acts of overruling.”

Judge Lourie pointed to amicus briefs filed not by allies to LKQ  or GM, but by broad-based organizations “with a primary interest in the stability and clarity of the law”, including the IPO, AIPLA, INTA, the Institute for Design Science and Public Policy (full disclosure:  I co-authored the latter brief) and the IDSA.  

He said:  [W]e did not need to “overrule” a case with language that a reference’s ‘design characteriscs’ must be  “basically the same” to substitute “most visually similar”.  Those two phrases, he said, are basically the same or similar, pointing out that maybe the word “must” used in Rosen was excessive, and maybe the word “only” in Durling is excessive, but both Rosen and Durling could have been tinkered with, or fine-tuned, rather than overruled.”

He concluded that “Rosen and Durling … expressed the same concepts now adopted by the majority, albeit with a couple of unnecessarily strong words…. And should have been allowed to stand, as modified, rather than decisively overruled.

Kudos to Judge Lourie.  But one must ask why his common sense did not get the support of any of the other judges?  Perhaps the rest of the judges were wary of having its decision appealed to the Supreme Court which has not exactly been hospitable to some previous Federal Circuit decisions.  Perhaps it felt that it had to go all the way and overrule Rosen and Durling lest there be a repeat of the KSR case where the Supremes rejected the Federal Circuit’s TSM test.

Unfortunately, Judge Newman – who has over the decades demonstrated a deep understanding of design patent law - was not allowed to participate in the case.

Let the games (sigh) begin.

JUDGE REYNA: MORE DESIGNERS RESPOND TO YOUR QUESTIONS IN LKQ v. GM

My blog post yesterday provided one answer to Judge Reyna’s questions during oral argument of the LKQ v. GM.  He asked:

“Looking at all the amicus briefs that we got, and we’ve got quite a few of them, almost all of them, if not all, are within the auto parts and auto industry. Where’s everybody else? Where’s the outcry? Where are the other designers?”

I pointed to the brief filed on behalf of the Institute of Design Science and Public Policy (IDSPP) and 36 distinguished industrial designers, and the posting on IPWatchdog discussing same.

It was brought to my attention that the Industrial Designers Society of America (IDSA) also filed an amicus brief – co-authored by noted design lawyer Robert Katz -  that is relevant to answering Judge Reyna’s questions.  The voices of designers - other than those from the auto industry - are loud and clear.

WHERE ARE THE DESIGNERS? JUDGE REYNA WANTS TO KNOW.

On February 5, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) held its en banc oral argument in the LKQ v. GM case to reconsider the obviousness test for design patents, during which Judge Reyna posed the following questions:

“Looking at all the amicus briefs that we got, and we’ve got quite a few of them, almost all of them, if not all, are within the auto parts and auto industry. Where’s everybody else? Where’s the outcry? Where are the other designers? . . . So aren’t we entering a slippery slope here in trying to fashion a new test under your arguments when we don’t fully understand the implications of what we’re doing?”

Charles Mauro, noted industrial designer and co-author of an amicus brief filed on behalf of the Institute of Design Science and Public Policy (IDSPP) and 36 distinguished industrial designers, penned an answer to Judge Reyna and the Court in a recent posting on IPWatchdog.  In the article’s introduction, Mr. Mauro stated:

“Listening to the argument, it became instantly clear that the designer’s voice was missing from the arguments of both parties. The judges had deeply probing and important questions that need the input of a design professional. As an experienced design professional, I penned this article to highlight the designer’s voice by providing answers to several critical questions posed by the court during oral argument.

“Judge Reyna’s questions hit the nail on the head. Any modification to basic design-patent law must consider the role of design in many industries—not just the concerns of one company in one narrow industry.

With a strong interest in this case, I took Judge Reyna’s questions as an opportunity to highlight our amicus brief,  which answers many questions and concerns presented during the oral argument.”

I encourage you to read the IPWatchdog article and the designers’ amicus brief to understand exactly why the designers’ input is so important in determining the proper test for design patent obviousness.

PATENT CONTINUATION STRATEGIES FACE MAJOR THREAT

In Sonos v. Google, in a decision dated October 6, 2023 from the US District Court for the Northern District of California, the court held that Sonos’ utility patent was unenforceable for prosecution laches based on “unreasonable and inexcusable delay”.  The utility patent was the latest in a long line of continuation applications filed by Sonos that claimed a priority date going back to 2006.  The 55 page opinion delved extensively into the technology of the patent, and the history of the law of prosecution laches.  Part of the court’s reasoning was based on Sonos’ alleged introduction of new matter in the asserted patent, although that was subject to some dispute. 

I can do no better than provide a link to the Patently-O story that has an extensive discussion of the case.  The post also has a link to the actual opinion from the district court.  You may also find of interest the posted comments, the vast majority of which were very critical of the decision, and many of which criticized the judge, William Alsup, who was characterized as an anti-patent judge.

Long story short, the decision does raise into question the very standard practice (at least in my experience) of filing continuation applications while waiting to see if a competitor later introduces a product which could be covered by a newly drafted claim.  Infringers are clever, especially in design patent practice, in making a few changes here and there in their products in an attempt to circumvent a particular issued design patent.  The patentee can then try and craft a claim in a continuation application to cover the new knock-off. Importantly, in order to preserve priority, such a claim must have a basis in the originally filed application, i.e., no new matter may be introduced in the patent being asserted.  Stated another way, the claim to the new knock-off must have written description support in the priority application.  

The Sonos case will no doubt be appealed to the Federal Circuit and will be closely watched by both utility and design patent practitioners.  I expect that a slew of amicus briefs will be filed in order to support long standing continuation practice. 

As a personal footnote, the Sonos case cites In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002) as “the decision in which the Federal Circuit applied prosecution laches for the first time”.  I have the unwanted distinction of having represented the applicant Bogese. The facts in this case are very different, and arguably more egregious, that those in the Sonos case.  A major distinguishing fact is that in Bogese prosecution laches was applied by the USPTO, while in Sonos it was applied by a federal court with equitable powers.  Judge Pauline Newman in Bogese wrote a vigorous dissent, saying essentially that the USPTO had no power to do what it did.   

p.s.  GM has filed its brief in the en banc case of LKQ v. GM involving the critical issue of design patent obviousness.  I will post comments with links to the GM brief and amicus briefs as soon as they are filed.

BREAKING (BROKEN?) NEWS! IN COLUMBIA V. SERIUS, THE FEDERAL CIRCUIT GIVETH WITH ONE HAND, TAKETH WITH THE OTHER

The long-awaited decision in Columbia Sportswear North America, Inc. v. Serius Innovative Accessories, Inc. (Columbia II) came down last week from the U.S. Court of Appeals for the Federal Circuit.  The Court ultimately reversed the jury’s finding of infringement, and remanded to the district court for a 3rd trial (the first trial being limited to damages).  For a full discussion of the background to this case, including images and opinions cited below, see my earlier blog posts.

This was a 33-page opinion, focusing on two substantive issues:  (1) whether comparison prior art must be of the same article of manufacture as the claimed design;  and (2) whether the infringer’s logo on its product has any bearing in determining infringement.   The Court spent 10 pages deciding the first issue, and 5 pages on the second.

The conclusion on the first issue was somewhat predictable in view of the Court’s prior decisions in Surgisil and Curver.  The Court concluded that comparison prior art must be of the same article of manufacture as the accused design.  Interestingly, the Court listed a half dozen previous cases where comparison prior art was a non-issue, because the comparison prior art used in those cases was always the same article of manufacture as the patented design.  It was able to identify only one case (and in a footnote no less) – Lanard Toys v. Dolgencorp – where it could have been an issue had the patentee raised it.  In that case, pencils had been used as comparison prior art for a claimed design to a chalk holder.

The more important issue was whether the infringer’s use of logos on its design could be taken into account in determining whether it was substantially the same in appearance to the claimed design.  If the answer is yes, then it offers infringers a rather easy roadmap to attempt to avoid infringement.  Simply stick your logo on your product. 

During oral argument on this case in January, 2023, Columbia’s counsel Chris Carani valiantly tried to impress upon the Court the critical importance of this issue when he said:

“[Branding information] is not just another line, or curve, or surface, this is supercharged information” and “This is radioactive information, a maiden voyage, a tinderbox. If upheld, the infringers have a slam-dunk holding of non-infringement.”

He was not overstating the problem. 

Columbia hung its hat on improper jury instructions, saying the court failed to tell the jury (1) that consumer confusion as to source is irrelevant to design-patent infringement, or (2) that a jury need not find a likelihood of confusion to find such infringement.  This caused the Court to launch into a discussion to distinguish trademark/trade dress infringement from design patent infringement, noting that the presence of a logo/labeling on a product helps to avoid consumer confusion in trademark law, but design patent infringement “does not consider consumer-confusion as to source” so that infringement is “not avoided by labeling”, curiously citing the 1993 LA Gear v. Thom McAn case in support (“A would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its name”).   

Yes, there are certainly differences between trademark/trade dress law and design patent law when it comes to determining infringement.  And it’s clear that in trademark law labeling can help to avoid a likelihood of confusion.  But it is hard for this writer to distinguish the L.A. Gear case – where the infringer used its brand BALLOONS on the side of its shoe - from this one where Serius used it’s logo (including its brand “Serius”) on its products.  Nevertheless, the Federal Circuit – and Columbia - was stuck with the Court’s decision in the first appeal (Columbia I) where it found that its precedent, i.e., the L.A. Gear case, “does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between” a claimed and accused design.

Indeed, the Court said, it would be improper “to ignore elements of the accused design entirely, simply because those elements included the name of the [accused infringer].”

Adding insult to injury, the Court said:  “… just because a logo’s potential to eliminate confusion as to source is irrelevant to design-patent infringement, its potential to render an accused design dissimilar to the patented one – maybe even enough to establish non-infringement as a matter of law – should not be discounted.” (emphasis added). This is an open invitation for lower courts to grant summary judgment of non-infringement simply because an accused infringer includes its logo on its products. 

After analyzing the propriety of the jury instructions, the Court said it was “not insensitive to Columbia’s overarching concern” stating further “In design patent infringement cases involving logos, we appreciate the potential for a jury to be led astray and mistakenly conflate the significance of a logo’s source-identifying function with whatever impact it might have on a comparison of the designs.”  Ultimately, the Court left it up to the trial judge to determine whether and when to provide clarification of this issue to the jury.

Of course, just as happened in the second trial in this case, once the district court instructs the jury by quoting the language of the Federal Circuit in Columbia I, it’s game over.

(note to infringers:  it’s the logo, stupid.)

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.

AN OBVIOUS WAY TO RESOLVE THE DESIGN PATENT NON-OBVIOUSNESS PROBLEM

Is there a better way to protect designs that would take the problem of non-obviousness out of the equation?  You betcha!

As background, as you likely know the Federal Circuit has granted an en banc rehearing in the LKQ v. GM case.  The rehearing raises the significant issue of whether the long-standing test for design patent non-obviousness, as enunciated in the seminal In re Rosen and Durling v. Spectrum Furniture cases, should be changed or overruled in view of the Supreme Court’s KSR case which involved only utility patent non-obviousness.  On its face, this seems to be a ridiculous proposition, since as aptly pointed out by concurring Judges Lourie and Stark in the initial LKQ opinion, utility patents and design patents are such different animals that it makes total sense that the tests for non-obviousness should be different for these distinct forms of intellectual property.

As pointed out in my previous blog post, changing the 40-year-old Rosen standard and the 30 year old Durling standard would have the effect of throwing up for grabs the validity of about 400,000 unexpired design patents that were examined and issued based on Rosen and Durling.  As Laurel & Hardy might comment to the court: what a mess you’ve gotten us into.

There are two questions one must ask.  First, what does it actually mean for a visual design to be “non-obvious” over the prior art?  Second, are design patents the best way to protect industrial designs?

Since the Federal Circuit and numerous amicus briefs will soon address the first question, this blog post will focus on the second question.

The answer to how best to protect industrial designs is neither new nor easy. One scholar has characterized the seemingly intractable problem of protecting industrial designs as “the world’s oldest intellectual property dilemma.” (Graeme B. Dinwoodie, Federalized Functionalism: The Future of Design Protection in the European Union, 24 AIPLA Q.J. 611, 618 (1996)).  Great minds have given great thought to solving this problem by drafting and introducing legislation, organizing ad hoc coalitions, and testifying before Congress, including: Hon. Giles S. Rich, Alan Latman, Henry D. Williams, Pasquale J. Federico, Cooper Woodring, Senator Herman Talmadge, Congressman Carlos Moorhead, and several Registers of Copyright (e.g., Thorvald Solberg, Arthur Fisher, Barbara Ringer, and Ralph Oman).

Absent some new approach to protecting industrial designs, we are left with the design patent system, one which, through an unfortunate accident of history, was shoehorned into the utility patent system (35 USC 101 et seq) that was crafted largely to protect functional and utilitarian features of products rather than their visual features that were left to design patents.  There are many sections of 35 USC that simply make no sense when it comes to design patent subject matter, and non-obviousness (35 USC 103) is one of them.

What’s the answer?  I posit that adopting a new system for registering designs (instead of examining them) should be given serious consideration.  Two of the main advantages of a design registration system, such as the one used in the European Union, are that it would be faster and cheaper than our current system that requires design patent applications to be examined by the USPTO for novelty, nonobviousness, written description requirements, functionality, etc.  Recently a lot of time has been spent to determining the “article  of manufacture” to which the patented design must be applied, as required by 35 USC 171.  Clearly, our design patent examination system soaks an incredible amount of time and money.  No design patent practitioner could say otherwise.  And after the design patent applicant jumps through all those hoops, all of the same issues involving patentability can then be raised again as a defense in an infringement suit to enforce the patent.   Why not do it once?  Issue a quick and relatively inexpensive design registration, and then if it comes time to enforce it, let the accused infringer raise all the invalidity defenses it wants.

This is a clear way to resolve the design patent nonobviousness brouhaha.  I believe that a design registration system would better serve designers, their employers and clients, and the involved government agencies. 

I am not alone in this belief.

The late, great Judge Giles Rich spoke directly about this in the seminal case of In re Nalbandian 661 F.2d 1214 (C.C.P.A. 1981) [note:  the C.C.P.A. was the predecessor court to the Federal Circuit].  The main issue in Nalbandian was whether the person judging non-obviousness should be an ordinary observer or ordinary designer, the court deciding on the latter.

In his concurring opinion, the legendary Judge Rich, intimately involved in design protection, not only questioned the wisdom of using non-obviousness as a measure for determining patentability of designs, but offered a sensible, workable solution:  adopt a design registration system.

Some form of design registration system has been advocated since 1914 when a group called the Design Registration League (which included stove manufacturers, Eli Lilly & Co., Meinecke & Co., Cadillac Motor Car Co., and pocket watch, lace and embroidery manufacturers) went before Congress to propose amending the copyright statute to protect industrial designs using a registration system.  It bears serious consideration today, especially in view of the LKQ brouhaha.

Judge Rich’s entire quote from Nalbandian is worthy of reading.  He said:

“The real problem … [is] … the necessity under Title 35 of finding non-obviousness in a design. (emphasis added). The problem long antedates 1952 and its Patent Act and existed from the beginning, the pre-1952 test being the presence of "invention" in a design. The problem was well known to the drafters of the 1952 Act (of which I was one) and it was also known that many prior legislative efforts had been made to solve it. When work on revision of the patent statutes began in 1950, a deliberate decision was made not to attempt any solution of the "controversial design problem" but simply to retain the substance of the existing design patent statute and attack the design problem at a later date, after the new Title 35 had been enacted.  Records I made in the mid 50's show that, beginning in 1914, some 45 bills were introduced in the House and Senate directed to some improved form of protection for designs. Many of these bills were, of course, duplicates, substantially the same bill being introduced in each house or reintroduced in successive years. Those interested in the history can examine Barbara A. Ringer's 70-page Bibliography on Design Protection published for Copyright Office use June 1, 1955, and an enlarged 160-page version or "supplement" compiled by W. Strauss, Varmer, Caruthers, and Berger on June 1, 1959, bearing the same title. Fabulous amounts of time and effort have been poured into solving the design protection problem with, to date, no legislative solution. See also Kelsey M. Mott's two-installment article The Standard of Ornamentality in the United States Design Patent Law, 48 ABA J. 548, 643 (June, July 1962). Thus it was that the patentability of designs came to be subject to the new § 103 which was written with an eye to the kinds of inventions encompassed by § 101 with no thought at all of how it might affect designs. (emphasis added). Therefore, the design protection problem was in no way made better; perhaps it was made worse. The intention of the drafters of the 1952 Patent Act to tackle the design protection problem was carried out, by both the private and public sectors, commencing in 1954, by a new "Coordinating Committee" of which I was chairman, and by 1957 new legislation was introduced in the 85th Congress, 1st Session in the form of Willis Bill H.R. 8873. In the 86th Congress, 1st Session, S. 2075 was introduced by Senators O'Mahoney, Wiley, and Hart, being the same bill in substance. From that time on, the legislative effort was continuous until the bill became Title III of the Copyright Revision Bills, later became Title II, and finally was jettisoned to facilitate passage of the main bill, the Act of October 19, 1976, Pub.L. No. 94-553, now 17 U.S.C. § 101 et seq. (1977). Congressmen said they would deal with designs later. The point of this review is to call attention to the resulting presently pending legislation, H.R. 20, 97th Congress, 1st Session, introduced January 5, 1981, by Mr. Railsback, a bill "To amend the copyright law, title 17 of the United States Code, to provide for protection of ornamental designs of useful articles." The present case and its companion, In re Spreter, 661 F.2d 1220 (Cust. Pat.App.), concurrently decided, are but the latest examples of the need for a law tailored to the problems of designers, of their employers and clients in the business world, and of the government agencies now concerned. (emphasis added). The now pending legislation is substantially the same bill introduced in 1957, after the refining process of 24 years of legislative consideration. It is time to pass it and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office, giving some sense of certainty to the business world of what designs can be protected and how. (emphasis added).”  

He went on to say:

“Commissioner of Patents and Trademarks Gerald Mossinghoff in his maiden speech to the ABA Patent, Trademark and Copyright Law Section in New Orleans on August 8, 1981, said:  “We are again urging enactment of an inexpensive and effective form of registration protection for designs and, specifically, we are supporting H.R. 20 introduced by Congressman Railsback last January largely because the concept of unobviousness is not well suited to ornamental designs. We believe a registration system, such as that contemplated in H.R. 20, would serve industry better at lower cost. [Judge Rich’s emphasis.] The bar would do well to devote its energies to backing this effort of the PTO rather than pursuing appeals such as these which may sometimes result in patents to "extraordinary" designers whose patents, as the Commissioner also pointed out, may then suffer a 70% mortality rate in the courts at the hands of judges reviewing the § 103 unobviousness of the designs. (emphasis added).”

In 1987 Judge Rich testified in the US Senate hearings in favor of a sui generis industrial design law: “The main purpose of the bills before you is to create a more equitable, practical and workable law for the protection of ornamental designs than the inequitable conglomerate we now have, namely, inadequate patents, overprotective copyright and a great middle ground still inadequately provided for.” (The Industrial Innovation and Technology Act: Hearings on S. 791 Before the Subcomm. on Patents, Copyrights and Trademarks of the Senate Comm. on the Judiciary. 100th Cong., 22 (1987)).

The failed efforts to create a design registration system referred to by Judge Rich carried through to the early 1990s when the last such bills were introduced (H.R. 902, H.R. 3017, H.R. 3499).  They failed to pass, due in large part to staunch opposition from the auto parts knock-off industry.

Then something interesting happened. The boat industry, in desperate need of protection against rampant knocking off of vessel hulls, resurrected the most recent drafts of the failed design registration bills and cleverly defined “vessel hulls” as the designs to be protected.  This resulted in legislation directed only to the registration of vessel hulls.  That bill, now known as the Vessel Hull Design Protection Act of 1998, 17 U.S.C. 1301 et seq., (hereafter the Vessel Hull Act) passed Congress without objection.  The U.S. Copyright Office was charged with implementing the system.  Although infrequently used, it is a template for a successful design registration system, having its roots in legislation introduced periodically in the previous 75 years, including those spearheaded by Judge Rich. 

Then another curious thing happened.  Several years after implementation of the Vessel Hull Act, the fashion design industry desperately needed to protect against the copying of high fashion, Paris-runway designs that were knocked off within weeks of introduction. Quick protection was critical since the half-life of fashion designs was perhaps 3 months.  The fashion industry saw the success of the Vessel Hull Act, and got legislation introduced (The Innovative Design Protection and Piracy Prevention Act [H.R. 2511]) to amend the Vessel Hull Act to add fashion designs to vessel hulls as the two classes of goods that could be registered. However, the Fashion Bill, as it was called, faced stiff opposition from the California-based knockoff clothing industry, and despite being re-introduced over several years, and having had several Congressional hearings, never passed.

The Vessel Hull Act exists and operates today as this country’s only design registration system (excluding the rather unrelated Semiconductor Chip Protection Act of 1984 which upon registration protects the layout of an integrated circuit). 

Clearly, the Vessel Hull Act – already a law - is a template of what can be done to register all industrial designs, by simply substituting “designs” for “vessel hulls”. 

Enactment of a design registration system is a ready alternative to answering  the unanswerable question of what a non-obvious design is. And a registration system will be easy to implement since it can simply be an amendment to a design protection law that’s already on the books.

It’s obviously time to move away from nonobviousness. 

I will follow up this post in a few days to describe my previous efforts to promote a design registration system.

THE USPTO FAILS TO CONSIDER COMPARISON PRIOR ART IN ANTICIPATION REJECTIONS

There is a serious problem in the USPTO design examination procedure regarding the failure to cite comparison prior art when rejecting a design patent claim based on 35 USC 102 (anticipation).

I am not aware whether the USPTO has ever applied a purported 102 reference to the claimed design by comparing them in the context of the prior art. This is contrary to established case law as summarized in the en banc Egyptian Goddess decision.

Interestingly, the MPEP 1504.02 correctly says:

          “For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)). In International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir. 2009), the Federal Circuit held that the ordinary observer test, the test used for infringement, is “the sole test for anticipation.” Under the ordinary observer test, “‘if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.’” Gorham, 81 U.S. at 528. In Egyptian Goddess, an en banc panel of the Federal Circuit "characteriz[ed] the ordinary observer as being ‘deemed to view the differences between the patented design and the accused product in the context of the prior art.’” Seaway, 589 F.3d at 1239-40, 93 USPQ2d at 1005, quoting Egyptian Goddess Inc. v. Swissa Inc.,[stet] 543 F.3d 665, 676, 88 USPQ2d 1658, 1666-67 (Fed. Cir. 2008) (en banc). The court also explained that “‘when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.’” Id. (emphasis added).”

 In Egyptian Goddess, Inc. v. Swisa Inc. (Fed. Cir. 2008), the court clearly stated the importance of considering the prior art in determining infringement.  The court said:

“In [two early cases], the courts emphasized that the defendant's product would appear different from the plaintiff's protected design to an ordinary observer aware of the great number of closely similar prior art designs. In Applied Arts, the accused ash tray would not appear to be the same as the claimed ash tray as long as "similitude of appearance is . . . judged by the scope of the patent in relation to the prior art." 67 F.2d at 429. And in Sears, Roebuck, the court concluded that the accused fruit juicer would not appear similar to the claimed design if the fact-finder performed the required "comparison of the features of the patented designs with the prior art and with the accused design." 140 F.2d at 396. Not only is this approach consistent with the precedents discussed above, but it makes sense as a matter of logic as well. Particularly in close cases, it can be difficult to answer the question whether one thing is like another without being given a frame of reference. The context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison.  (emphasis added).”

The entire tenor of Egyptian Goddess is that under the ordinary observer test, the question of whether the patented and accused designs are “substantially the same” must be made “in the context of the prior art”, i.e., with due consideration of comparison prior art.  According to the court: “[I]t makes sense as a matter of logic…. it can be difficult to answer the question whether one thing is like another without being given a frame of reference.”

As noted above, in deciding questions of anticipation, MPEP 1504.02 says: [T]he Federal Circuit held [in International Seaway] that the ordinary observer test, the test used for infringement, is “the sole test for anticipation.”  

However, despite citing Egyptian’s “in the context of the prior art” in MPEP 1504.02, there is no further explanation in the MPEP of whether or how an examiner should take comparison prior art into account in making an anticipation rejection.

Egyptian Goddess did excuse consideration of the prior art under one condition:

          “In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear "substantially the same" to the ordinary observer, as required by Gorham. (emphasis added).”

Thus, according to Egyptian, one need not consider the prior art if two designs are “sufficiently distinct”.  But obviously if a claimed design is “sufficiently distinct” from a potential 102 reference, there is no ground for a 102 rejection.

The Federal Circuit followed the “sufficiently distinct quote by saying:

          “In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, as in many of the cases discussed above and in the case at bar. (emphasis added).”

Again, the court emphasized the importance of considering comparison prior art in infringement determinations, and by extension in anticipation rejections during prosecution.

As evidence of the USPTO’s failure, following is the actual text of an anticipation rejection that occurred during the prosecution of U.S. Pat. No. D770,027 (USSN 29/531,907) claiming a ceiling fan.  The claimed design and applied 102 Haiku reference are as shown below:

USPTO 102 Rejection (US Pat. No. D770,027)

The rejection from the examiner’s Office action in its entirety follows:

          “The claim is rejected under 35 USC 102(a)(1) as being clearly anticipated by “Haiku 5 Foot Ceiling Fan” reference as seen on YouTube because the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

           “The appearance of the Haiku 5 Foot Ceiling Fan is substantially the same as that of the claimed design.  The ordinary observer test is the sole test for anticipation. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (Fed. Cir. 2009).

           “Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other.” Door-Master Corp. v. Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)).

          “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as ‘minor differences between a patented and an accused article’s design cannot, and shall not, prevent a finding of infringement’, so too minor differences cannot prevent a finding of anticipation.” Int’l Seaway, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).”

This is not an isolated occurrence;  the same language was used in the same application based on two other 102 rejections..

Regardless of the merits of this rejection, it’s clear that comparison prior art was not considered.

There would be many benefits if the USPTO had to take into account comparison prior art in making 102 rejections.  For one thing, the subjectivity inherent in current 102 rejections would disappear. As evidenced by the excerpt above (“The appearance of the Haiku 5 Foot Ceiling Fan is substantially the same as that of the claimed design”)  examiners now simply have to allege that the 102 reference and the claimed design are “substantially the same”, which is rife with subjectivity.  If they had to consider comparison prior art, it would bring some objectivity to the rejection, a frame of reference to put “substantially the same” in context, as required by Egyptian Goddess. 

Also, 102 rejections allow examiners to avoid having to make 103 rejections which require examiners to undertake a more rigorous analysis. A 103 rejection necessitates that they identify a primary reference which is “basically the same” as the claimed design (but keep your eye on the currently pending en banc case of LKQ v. GM case that is reconsidering the basis for design patent obviousness).

As an aside, I have long been a critic of International Seaway that equated the test for anticipation with the test for infringement. I’ve published an article about it:  “Design Patents Are Sinking in International Seaway”.  And Seaway puts the USPTO in the unheard of position of essentially deciding whether one design infringes another.

In summary, the failure of the USPTO to take into account comparison prior art in anticipation rejections of a design patent claim under 35 USC 102, as evidenced by the foregoing, is simply wrong. The USPTO needs to do something about it.

FEDERAL CIRCUIT PUTS OVER 400,000 DESIGN PATENTS AT RISK OF BEING INVALIDATED BASED ON OBVIOUSNESS

On June 30, 2023, in LKQ Corp. et al v. GM Global Technology, the U.S. Court of Appeals for the Federal Circuit granted LKQ’s petition for rehearing en banc, setting in motion the distinct possibility that the test for design patent obviousness could drastically change. 

During the past 40 years, over 700,000 design patents have issued.  Of those, the number of unexpired design patents today exceeds 400,000. 

And for the past 40 years (40 years!), the seminal In re Rosen case defined the requirement for a proper primary reference to support a design patent obviousness rejection/defense:

“[T]here must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. Such a reference is necessary whether the holding is based on the basic reference alone or on the basic reference in view of modifications suggested by secondary references.”

The Rosen test has been used exclusively by USPTO examiners and courts to evaluate the question of design patent obviousness since it was handed down in 1982. In 1996, the Durling v. Spectrum Furniture case defined the requirement for proper secondary references:  

“Once [a] primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design. These secondary references may only be used to modify the primary reference if they are "so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other."  

The LKQ case presents a question of first impression:  does the Supreme Court’s 2007 decision in KSR v Teleflex – a case that involved only utility patent obviousness - also apply to design patent obviousness?  In KSR, the Court made it easier to prove a utility patent claim was obvious when it jettisoned the Federal Circuit’s TSM (teaching, suggestion, motivation) requirement under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.  

In the Federal Circuit’s original panel decision of January 20, 2023 it held that the 3-judge panel (Judges Lourie, Clevenger and Stark) cannot overrule its prior Rosen and Durling decisions without a “clear directive from the Supreme Court” since panels “are bound by prior panel decisions until they are overruled by the court en banc or the Supreme Court.”  While the majority sidestepped the issue which they have now decided to consider, the original panel decision, with 3 separate concurring opinions, gives a good glimpse of the considerations now facing the court in the en banc rehearing, and I commend you to read it.

In terms of the potential impact on design patent law, this case ranks up there in importance with the court’s 2008 en banc decision of Egyptian Goddess v. Swisa. 

Over 400,000 unexpired design patents have claimed a design that had been determined to be nonobvious over the prior art.  If the test now changes, the validity of those patents can be challenged under new rules that were not in existence when those patents were examined and litigated.  It could be disastrous to design rights holders, who might very well be pushed even farther away from obtaining design patents if their existing portfolios are drastically devalued.

For a detailed discussion of the factual background of this case, and the positions taken by several judges in concurring opinions, I refer you to my prior blog posts of December 18, 2022 and January 23, 2023.

LKQ is led by a notorious band of anti-design patent professors who also managed several years ago to get SCOTUS to weaken a 100-year-old rule that had allowed a successful design patent owner to obtain an infringer’s total profit attributable to sales of the accused design.  They now have managed to get the court to consider the obviousness issue en banc, i.e., by the entire court of 11 judges, i.e., not just a panel of 3 judges.   

The court’s en banc Order pretty clearly spells out the issues the court is concerned with, as it directs the parties in their brief to address the following questions:

A. Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture 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 suggest the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR’s statements faulting “a rigid rule that limits the obviousness inquiry,” 550 U.S. at 419, and adopting “an expansive and flexible approach,” id. at 415, should cause us to eliminate or modify: (a) Durling’s requirement that “[b]efore one can begin to combine prior art designs . . . one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design,’” 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling’s requirement that secondary references “may only be used to modify the primary reference if they are ‘so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other,’” id. at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).

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

D. Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.

E. Given the length of time in which the Rosen-Durling test has been applied, would eliminating or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?

F. To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?

The court noted that LKQ’s opening brief is due in 45 days (August 14, 2023), and GM’s response is due within 45 days of service of LKQ’s opening brief (e.g., if LKQ files its opening brief on August 14, 2023, then GM’s response will be due September 28, 2023).  LKQ may file a reply brief within 30 days of GM’s response.

The court also invited the United States (through the Department of Justice) to file an amicus curiae brief.  Other amicus briefs may be filed without consent and leave of the court. 

An amicus brief supporting LKQ’s position, or supporting neither position, must be filed within 14 days of service of LKQ’s opening brief, and an amicus brief supporting GM’s position must be filed within 14 days after service of GM’s response brief. 

This Order will no doubt set off a flurry of activity by the professional IP associations such as the IPO, AIPLA, and ABA, as well as other interested companies and individuals.  I anticipate that a record number of amicus briefs will be filed by design patent rights holders.

DISTRICT COURT FAILS TO PROPERLY CONSIDER THE PRIOR ART IN ITS NON-INFRINGEMENT HOLDING, INSTEAD CONCLUDING THAT THE DESIGNS AT ISSUE WERE “SUFFICIENTLY DISTINCT”

In North Star Tech. v. Latham Pool Products, the US District Court for the Eastern District of Tennessee granted a motion for summary judgment of non-infringement of US Pat. No. D791,966 for a fiberglass pool.

Shown below are drawings from the ‘966 patent, underneath which are comparable views of the accused design:

‘966 Patented Design

Accused Design

In arriving at its conclusion of non-infringement, the court determined that the ornamental appearance of Defendant’s pool is “sufficiently distinct” from and “plainly dissimilar” to the ‘966 patent, citing the test from Egyptian Goddess v. Swisa that is most frequently used by accused infringers to escape liability.  Of the several tests for infringement set forth in the seminal Egyptian Goddess case, this is the only one which allows the court to ignore the prior art. 

I have long advocated that the “sufficiently distinct” and “plainly dissimilar” tests are unfair and highly subjective because they have no point of reference – the prior art is not considered.  Without the prior art, there’s no way to determine if the patented and accused designs are substantially the same.  It’s very easy to compare a patented and accused design and identify differences, as did the court.  Any 5-year-old can do it.  But what’s the frame of reference? If the patented and accused designs (despite minor differences) are closer to each other in their overall visual impression than either is to the overall visual impression created  by the prior art, a finding of infringement is usually justified.  On the other hand, if either the patented or accused design are closer to the prior art, then a finding of non-infringement is usually justified.   But you can’t get there without comparing the overall visual impression of the patented and accused designs to the overall impression created by each prior art swimming pool.

The ’966 patent had nearly 100 prior art references that were considered by the examiner, who apparently felt that the overall claimed design was novel and nonobvious over all of them.  It’s true that the sheer volume of the prior art cited during prosecution would require a lot of time to make a design-by-design comparison between each of them and the claimed and accused designs, to see which is closer to which.  But it is notable that the court, infusing its opinion with portions of prior art designs, wasn’t able to compare overall appearances, even though the closest prior art cited by the court in the case was very likely provided by the accused infringer.

To its credit, the district court did note in its opinion that even when an accused design is readily distinguishable to an ordinary observer “a full analysis may include a comparison of the claimed and accused designs with the prior art”.  However, in this case, the court failed miserably to do so, instead relying on the teachings of disparate individual elements in the prior art to support its non-infringement finding:  “Each of the pertinent design elements included in the D’966 patent and [accused design] – from the entry steps to the deep end benches – existed before Plaintiffs filed the D’966 patent.”  The court’s cursory analysis of the prior art ignored the well-accepted rule that the designs are to be compared in their entireties, not by individual elements. In the end analysis, it is the overall ornamental impression that is the key to determining whether two designs are substantially the same, not whether individual elements are similar or different.

A proper analysis would have relied upon a comparison of the overall appearance of prior art swimming pools, rather than isolated elements.  Such a comparison might have led one to conclude that the patented and accused designs were closer to each other than either was to the closest prior art.  I am not saying that the accused design infringed or didn’t infringe the ‘966 patent.  But at the very least, the court should have denied the motion and allowed the jury to make this critical factual determination after looking at the patented and accused designs and the prior art.

FREE PASS TO ATTEND WEBINAR ON MAY 23, 2023

It has come to my attention that the free pass function in my prior post about my May 23, 2023 webinar may not have worked properly. If you would like a free pass, please email me at ps@perrysaidman.com and I’ll send one to you directly.

PERRY’S UPCOMING WEBINAR: “HOT TOPICS IN DESIGN PATENT LAW” + FREE PASS

On May 23, 2023, Perry will present a webinar covering the following topics:

*Design patent obviousness as reflected in the recent LKQ v. GM decision from the US Court of Appeals for the Federal Circuit. The issue is whether the Supreme Court’s KSR v. Teleflex case setting forth a new test for utility patent obviousness should apply to design patents, a question of first impression. A decision in favor of the infringer, LKQ, will turn years of case law based on the seminal In re Rosen case on its head.

*Design patent infringement as reflected in the Columbia v. Serius case now pending before the Federal Circuit. The main issue – another question of first impression - is the scope of the prior art that is relevant to an infringement determination. A decision in favor of the patentee Columbia will limit the scope of the relevant prior art. Another issue is whether an accused infringer’s logo on its product can be taken into account in determining substantial similarity with the patented design. A previous decision from the Federal Circuit indicated that it could, and Columbia is appealing this issue again.

*Obtaining total profit damages under 35 U.S.C. 289 can be very important to successful design patentees. The calculation of damages in the Columbia v. Serius case will be a backdrop to discussing tips for maximizing total profit damages.

The program description and registration information is here.

Readers of this blog can use this free pass to attend.

HON. JUDGE PAULINE NEWMAN, DESPITE CURRENT EFFORTS TO REMOVE HER FROM THE BENCH BASED ON HER AGE, HAS A STELLAR DESIGN PATENT RECORD

As written up recently in a Patently-O blog:

“The recent controversy at the Court of Appeals for the Federal Circuit involving Chief Judge Kimberly Moore and Judge Pauline Newman has raised concerns and garnered attention. The Court has now confirmed the rumors about Judge Moore’s actions to remove Judge Newman [age 95] from an active role on the bench. According to a statement of court and two published orders, it seems that Chief Judge Moore also has the support of her fellow judges in this matter.

Judge Newman’s obstinance appears to be rooted in her belief that she is “the only person [on the Court] who care[s] about the patent system and innovation policy.”  Throughout her 39 years on the Court, Judge Newman has been a stalwart supporter of strong patent rights.”

In my view Judge Newman has been a blessing to design patent law. Whether writing in the majority, or in dissent (with impeccably correct opinions), design patents would be in an even bigger mess than they are now had it not been for her analysis. Just to mention a few:

 LA Gear v. Thom McAn involving a logo placed on the side of the accused design [an issue that continues to be hotly contested in the pending Columbia v. Serius case] (“Design patent infringement relates solely to the patented design, and does not require proof of unfair competition in the marketplace… or allow avoidance of infringement by labelling.”).

Best Lock v. Ilco Unican involving functionality of a key blade blank (in dissent: “The design of the key profile is not removed from access to the design statute because the key fits a matching keyway. That two articles are designed in harmony does not deprive the design of access to the design patent law. The design of the key profile is not determined by the function of the key to fit the lock. In the case at bar there are said to be “thousands” of alternative key blade profiles.”).

In re Daniels involving continuation practice (“The Board was incorrect in holding that any change in the design defeats a priority claim as a matter of law. As for any application asserting a priority claim, § 120 requires that the subject matter for which priority is requested must be disclosed in accordance with the requirements of § 112. A wealth of precedent guides the application of this statute. Applying the guidance of precedent, as we have discussed, the later claimed subject matter is contained in the earlier application. The leaf ornamentation in the parent application, superimposed upon the design of the leecher itself, does not obscure that design, which is fully shown in the parent application drawings. On the correct law, it must be concluded that Mr. Daniels possessed the invention that is claimed in the continuation application, and that he is entitled to claim priority under § 120.”).

Revision Miliary v. Balboa involving the lower court’s refusal to consider relevant prior art in determining infringement on the basis that the designs were essentially sufficiently distinct (“Although individual features may indeed serve in assessing the “impact on the overall appearance,” in determining whether apparently minor differences between specific features would be recognized as distinguishing the designs, it is often helpful to refer to any prior art with which the ordinary observer would reasonably be familiar. As stated in Egyptian Goddess, “the background prior art, provides … a frame of reference and is therefore often useful in the process of comparison.” The district court did not consider the prior art context in which the ordinary observer test is applied. Although the district court stated that “[b]ecause this is not a particularly close case, the court does not need prior art as a ‘frame of reference’ to apply the ‘ordinary observer test,’ ” the record suggests otherwise.”).

Campbell Soup v. Gamon, involving a Sec. 103 obviousness rejection where a major claimed design element [a cylindrical can] was missing from the purported primary reference to Linz: (“My colleagues hold that the designs are substantially the same despite the absence in Linz of the cylindrical object, reasoning that it may be assumed that the Linz dispenser is for a cylindrical object. However, … the cylindrical object is a major design component. The absence from the primary reference of a major design component cannot be deemed insubstantial… My colleagues err in design patent law—in modifying the Linz design by adding a can, in order to create a design more similar to the Gamon design.”)

I should only hope to live to age 95 and have made as significant contributions to the field of design patent law as has Judge Newman. No matter what lies ahead, I tip my hat to her.

PERRY WILL BE SPEAKING ON “VERY HOT TOPICS IN DESIGN PATENTS” AT A CONFERENCE TO BE HELD MARCH 23-24, 2023 NEAR WASHINGTON DC

I will be a speaker at the 15th Annual Advanced Patent Law Institute that is sponsored by the University of Texas School of Law.  The CLE conference will be held in person at the US Patent & Trademark Office in Alexandria, VA on March 23-24, 2023.

My talk is scheduled for Friday afternoon, March 24.  Among other topics, I will cover two major questions of first impression before the Federal Circuit.

First, design patent scope has been turned on its head by In re: Surgisil, greatly affecting not only patentability but infringement analysis as recently argued in the pending Columbia v. Serius case (a decision expected perhaps as soon as March).

Second, regarding design patent obviousness, the Federal Circuit in LKQ v. GM handed down in January two decisions per curiam in which they declined to overrule the venerable In re Rosen case.  However, two judges in separate concurring opinions grappled with the unresolved issue of whether the Supreme Court’s KSR case – involving only utility patents - applies to design patents.  I understand that LKQ is preparing a petition for rehearing en banc.

I will also cover another topic of great interest: How to maximize the recovery of total profit damages.

Program details and registration information can be found here.

BREAKING NEWS! ROSEN SURVIVES! FEDERAL CIRCUIT DECLINES TO APPLY SUPREME COURT’S KSR OBVIOUSNESS STANDARD TO DESIGN PATENTS

In a pair of very significant decisions - LKQ Corp. et al. v. GM Global Technology Operations LLC, (Nos 2021-2348 and 2022-1253, decided January 20, 2023 –) - the U.S. Court of Appeals for the Federal Circuit considered whether the U.S. Supreme Court’s KSR v. Teleflex decision of 2007 involving the obviousness standard (35 USC 103) for utility patents, should apply to design patents.  The oral argument in this case was discussed in last month’s post (Dec. 18, 2022).

Of particular interest is that the main opinion, filed per curiam, was accompanied by two additional opinions, both having extensive discussions of the KSR issue.   

Here’s the background.  For many years, the design patent test for obviousness has been as stated in the seminal In re Rosen case (673 F.2d 388 (CCPA 1982)) as follows:

“[T]here must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. Such a reference is necessary whether the holding is based on the basic reference alone or on the basic reference in view of modifications suggested by secondary references.”

The Rosen case was followed by Durling v. Spectrum Furniture, 101 F.3d 100 (Fed. Cir. 1996) which added the condition of whether you could combine secondary references with a proper primary reference, stating:

“[S]econdary references may only be used to modify the primary reference if they are “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.”

LKQ had challenged the validity before the USPTO’s Patent Trial and Appeal Board (PTAB) of two design patents owned by GM that covered car body replacement parts (US Pat. Nos. D797,625 and D855,508).  On appeal, in addition to challenging the PTAB’s holdings that the patents were neither anticipated nor obvious over the prior art, LKQ asserted before the Federal Circuit that the Rosen test on which the PTAB relied in its obviousness analysis has been implicitly overruled by the Supreme Court’s KSR case of 2007.  Rather than discussing the substantive holdings regarding anticipation and obviousness of GM’s design patents, this post focuses on the more interesting, and very significant, KSR/Rosen/Durling issue.   

In short, the court (in curiously non-precedential opinions) concluded that the panel (Judges Lourie, Clevenger and Stark) cannot overrule its prior Rosen decision without a “clear directive from the Supreme Court” since panels “are bound by prior panel decisions until they are overruled by the court en banc [Ed. note: sitting as a whole] or the Supreme Court.”   [Ed. note: this “rule” has been honored more in the breach, e.g., the court’s 2009 International Seaway decision ignored its earlier precedent of Lewmar v. Barient (1987) that clearly modified and updated the anticipation/infringement “maxim” of the 1889 Peters v. Active case upon which Seaway relied].

The LKQ holding, while not surprising, was made much more interesting by those two separate appended opinions of Judge Lourie (writing with “additional views”) and Judge Stark (“concurring in part and concurring in judgment”), both of which were focused on the KSR/Rosen/Durling brouhaha.

LOURIE, Circuit Judge, additional views.

Judge Lourie disagreed with LKQ’s position that KSR “overruled an almost forty-year-old design patent decision that this court has been bound to follow and has continued to follow in the decade since KSR was decided.”  First, he noted the obvious fact (excuse the pun) that KSR involved utility patents, not design patents, and that those two types of grants are distinct.  He also noted that while 35 USC 103, dealing with the requirement of non-obviousness, does not differentiate between design and utility patents, the latter requires considerations such as unexpected properties, utility, and function, while the former focuses on overall appearance, visual impression, artistry, and style, saying “Ornament is in the eyes of the beholder; functional utility is objective.”

He asked the pertinent questions:  “what is the utility or function of something that’s ornamental? ... and “what is an unexpected property in the context of design patents … [since] function is not to be considered in evaluating obviousness of a design?”

He concluded that obviousness of designs “requires different considerations from those of a utility invention”, and that KSR did not address, or even mention, design patents:

“[The Supreme Court] cannot reasonably be held to have overruled a precedent of one of our predecessor courts [i.e., the CCPA] involving a type of patent it never mentioned.”

Second, he noted that while Rosen may have overstated its point in adding to the 1950 precedent In re Jennings, it “hardly reflects the rigidity the Court was condemning in KSR.” [Ed. note:  Rosen added the requirement of identifying “a single primary reference” to Jennings’ earlier finding (1950) that “the appearance of the design must be viewed as a whole and compared with something in existence — not with something that might be brought into existence by selecting individual features from prior art and combining them.”].

Finally, Judge Lourie said that “Rosen was not essentially incorrect.”  It simply stated that one challenging a design patent under Sec. 103 “has to start from somewhere” (i.e., a piece of prior art – “something in existence”).

STARK, Circuit Judge, concurring in part and concurring in judgment.

Judge Stark, in his opinion, criticized the per curiam opinion of the court on the issue of forfeiture, where the court had concluded that LKQ did not forfeit its argument that KSR overruled Rosen.  He posited that LKQ was being very unfair to the PTAB, since its only argument there “plainly and unambiguously challenged the post-KSR vitality of the Durling test’s “so related” second step. Judge Stark said that LKQ in the appeal to the Federal Circuit had “completely shift[ed] its focus to the first step” of the Rosen/Durling test, i.e., the notion that a single primary reference first needs to be identified that is “basically the same” as the claimed design as held in Rosen.  The Board, he said, should not “face the potential of being reversed on an issue no party asked it to address”, characterizing such behavior as “sandbagging”. 

Judge Stark also posited that the current situation is “not so exceptional that we should exercise our discretion to address it”, reviewing the court’s law regarding discretion to hear “exceptional” issues.

Finally, Judge Stark quite significantly gave LKQ a leg to stand on if it appeals to the Supreme Court.  The judge said that there is “substantial tension between … KSR and Durling”, noting that in KSR the Supreme Court explained that “when a court transforms [a] general principle into a rigid rule that limits the obviousness inquiry . . . it errs.”

Judge Stark then said:  “A strong case can be made that the step one Rosen reference requirement is precisely the type of limiting, rigid rule KSR faulted; if a design patent examiner fails to identify a Rosen reference, the obviousness analysis stops.  In this way, the Durling test can prevent the consideration of a combination of prior art references.”

He posited that the requirement to identify a Rosen reference “can prevent consideration of the ordinary designer’s creativity” and that the Durling test provides additional rigidity “which limits consideration solely to prior art references that are ‘so related’ to the identified Rosen reference’ that ‘the appearance of certain ornamental features in one would suggest the application of those features to the other.’”

In an attempt to keep it even-handed, he summarized: “I can see how one might conclude that KSR implicitly overrules the Durling test. Alternatively, I can also see how one might persuasively argue that design patents are so fundamentally different than utility patents that they warrant their own test for obviousness, a test that the  Supreme Court would likely  allow to coexist alongside the KSR test we apply to utility patents.”

LKQ’s lead counsel, Professor Mark Lemley (who represented Samsung in the Supreme Court case against Apple involving total profit damages) must now decide, with his client, whether to file a cert. petition at the Supreme Court on the KSR/Rosen/Durling issue.  If he does, the design patent bar needs to sharpen its pens by filing amicus briefs, since a decision from SCOTUS overruling Rosen/Durling would wreak havoc with the thousands of design patents issued since Rosen was decided in 1982, and plunge design patent obviousness inquiries into unchartered, murky waters. 

DESIGN PATENT OBVIOUSNESS: IN RE ROSEN IN DANGER OF BEING OVERRULED

On December 5, 2022, the Federal Circuit heard oral arguments in two cases between LKQ and GM. LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348 (submitted but not decided) (oral argument recording available here). In one of them, LKQ asked the court to rule that the current primary reference requirement for design patent obviousness, as stated in In re Rosen and Durling v. Spectrum Furniture is inconsistent with the Supreme Court’s decision in KSR v. Teleflex.

In the oral argument, LKQ, through its counsel Professor Mark Lemley (who led the charge against Apple in the Court’s Samsung v. Apple decision), argued that KSR, a 2007 Supreme Court opinion involving obviousness of utility patents, should also apply to design patent obviousness analysis.  He posited that the long-standing precedent of In re Rosen, a 1982 CCPA decision that has been universally used in design patent obviousness analysis, is inconsistent with KSR.

 As is very familiar to every design patent practitioner, In re Rosen held that in analyzing design patent obviousness:  “[T]here must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. Such a reference is necessary whether the holding is based on the basic reference alone or on the basic reference in view of modifications suggested by secondary references.”

 The challenge to an examiner in making a 103 rejection, or to one attempting to invalidate a design patent, is to identify a proper primary/basic or so-called “Rosen” reference.  If such a primary reference could not be identified, then the analysis ends – the design is non-obvious.  Secondary references don’t matter unless there’s a proper primary reference.  In other words, secondary references can only be considered if a proper primary reference has been identified. 

Rosen analysis is unique to design patents which claim visual designs.  It prevents a challenger from combining bits and pieces from the prior art to construct the claimed design, a so-called Frankenart approach.  Although such a Frankenart approach is sometimes acceptable in utility patent practice, a visual design is much different than a mechanical or electrical invention where the visual appearance of the invention is of no moment. 

This was recognized in the 1950 case of In re Jennings that was the precedent relied upon by the court in Rosen.  Jennings, in reversing an obviousness rejection, said:  “In the instant case individual features seem to have been selected from different of the reference patents and compared with features shown in appellant’s drawings. In other words, it seems to have been held [by the  examiner and the Board] that by selecting features taken from five different patents, that is, one feature from one patent, another from another, etc., a device might be considered which would so closely-resemble the drawings of appellant that his design would not be patentable over such possible construction.  In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence — not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature, as would be required here.”

In KSR, involving obviousness of a utility patent, the Supreme Court was critical of the Federal Circuit’s rigid rule that the TSM factors must always be considered. The Federal Circuit had held that there must always be a teaching, suggestion, or motivation [TSM] in the prior art to sustain an obviousness holding of a utility patent.  The Court said that although TSM can be considered in an appropriate case:  “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation…”.  The Court did not say that references could not be combined, it simply said that the Federal Circuit’s requirement that there had to be a TSM to combine was too strict. 

TSM is not used in design patent obviousness analysis, so the reason the Court took the KSR case is simply irrelevant to design patents.   

Although an in-depth analysis of KSR will not be attempted here, it should be noted that in the last 15 years, it has never been applied by the Federal Circuit in design patent obviousness analysis.  A few snippets from the Supreme Court’s KSR opinion demonstrate why this might be:

 “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” 

 The foregoing implicitly supports Jennings/Rosen, but then the Court in contrast stated:

“Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”

The Court also said:

“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.”

“Technical grasp” has little meaning to a designer who is focused on the overall appearance of a new design.  “Anticipated success”, “common sense”, “predictable solutions”, and “obvious to try” also have little meaning in creating visual designs/objects.

During oral argument, Lemley said:

“The Board erred in not even considering secondary references because they said there was no primary reference. KSR says there are no “special rules” in applying 103, e.g., no more TSM test.  Therefore, the “special rule” for identifying a Rosen reference is wrong.”

Counsel for GM countered:

“Even if the so-called special rule was dispensed with, GM would still win under the facts of this case since 7 elements were missing from one reference [the primary reference] and only 2 of those elements were in the secondary reference.  The outcome would be the same.”

One judge took the position that:  

“The court in Rosen made a mistake when it misread Jennings. In Jennings, you don’t need to start with anything; overall appearance is the key. In Rosen, you must start with a primary reference that is basically the same as the claimed design. So, “basically the same” is the problem.  You stop the 103 analysis if you don’t have something that’s “basically the same”.”

The court then asked Lemley:  “Do we have the power to overrule Rosen?” to  which Lemley replied:  “Absolutely.  Rosen is inconsistent with the later decided Supreme Court decision in KSR.”

Following that, the court queried:  “Aren’t you asking us to do something that’s a “sea change” in design patent law, something that would suggest an en banc panel make the decision?”  to which Lemley replied:  “Not necessarily, it depends on the panel decision.”

One judge squarely stated the main issue:  “The real question, it seems, is whether it makes sense to apply KSR, a utility patent case, to design patents at all.”

The Supreme Court in KSR mentioned several factors relevant to utility patent obviousness analysis, and one can only ask, as did the Federal Circuit judge, whether it makes sense to consider those factors, listed below, when it comes to design patent analysis:

Is there ever a “problem” that a designer is trying to solve?

Does a designer ever fit the teachings of multiple patents together like pieces of a puzzle?

Is there ever a design “need”?

Are there ever a “finite number of predictable solutions”?

Is “obvious to try” relevant in the case of a design?

Clearly, overruling Rosen, a fixture in design patent obviousness analysis for 40 years, would have severe implications for the validity of thousands of design patents, and create a situation where 103 rejections become very subjective and more numerous.

The decision, expected early next year, obviously (pun intended) bears close attention.

FEDERAL CIRCUIT REVERSES GRANT OF PRELIMINARY INJUNCTION IN HOVERBOARD DESIGN PATENT CASE

On October 28, 2022, in ABC Corporation I et al. v. Ebay et al., the US Court of Appeals for the Federal Circuit reversed the lower court’s grant of a preliminary injunction.  The decision was based on the patentee’s failure to prove a likelihood of success on the issue of infringement.  A large portion of its opinion was based on alleged insufficiencies in plaintiffs’ expert’s report.   

The plaintiffs held 4 design patents of varying scope covering its design of a hoverboard (D784,195; D785,112; D737,723; and D738,256).  They accused 4 products sold by appellants of infringing each of the design patents.  The court included an Appendix to its opinion showing comparisons (proffered by the appellants) of each view of each of the 4 design patents to one of the accused products (called Product D).  I suggest you refer to the court’s opinon to see the various images in its lengthy Appendix.

Two of the accused products appear below:

PRODUCT D

PRODUCT A

The Appendix also compared the patented designs, Product D and the main prior art reference D739,906, one figure of which is shown below:

‘906 PRIOR ART

The court characterized the prominent feature of the ‘906 prior art to be its hourglass shape. 

According to the court, the expert’s report showed side-by-side images of the asserted patent and accused products and described how the ordinary observer test for infringement applied to the accused products as a group.  The problem, the court said, is that the expert did not provide “a product-by-product analysis”.   

As an example, the court quoted a portion of the expert report:  “Unlike the cited prior art, the claimed design of the ‘195 patent and the Accused Products share an integrated hourglass body with many horizontal styling lines across the body and a relatively flat surface across the top, arched covers over the wheel area, larger radii on the front and back of the underside.  Unlike any of the prior art the foot plates narrow as they extend toward the center.” (emphasis by the court).  The court chided the expert for failing to explain why having an hourglass body was unlike the ‘906 prior art;  this was a theme throughout its opinion.   

This was a bit unfair, since the full quote from the expert’s report calls for a combination of the stated elements, rather than a list of individually unique elements (note the expert’s use of the word “integrated”). This is in accordance with the generally accepted notion that designs are to be viewed and analyzed as a whole, not dissected element-by-element.  The court, in contrast, focused on the hourglass shape and never mentioned the other elements in its opinion (save in footnote 3).   

However, the seminal Egyptian Goddess case did say:  “When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art”.  The court rephrased this as follows:  “{W}here a dominant feature of the patented design and the accused products – here the hourglass shape – appears in the prior art, the focus of the infringement substantial similarity analysis in most cases will be on other features of the design.  The shared dominant feature from the prior art will be no more than a background feature of the design, necessary for a finding of substantial similarity but insufficient by itself to support a finding of substantial similarity.” 

This analysis, focusing on a single element as a “dominant feature”, seems to go against the expert’s “integrated” approach where he did not dissect the claimed design. It also raises another concern, namely whether the court, not an expert in design, is qualified to conclude that a particular design element is “dominant”.

The court also criticized the district court in failing to apply the ordinary observer test on a product-by-product basis, which it said was particularly important in this case in light of the significant differences among the accused products.   

Regarding the need for analysis product-by-product, the court said:  “Even a cursory review of the four accused products shows that they are different from each other, display features not found in the asserted patents, and lack features shown in the asserted patents.” 

This is no big surprise, since cases where an infringer exactly copies a patented design normally settle (the noted exception being Samsung’s behavior in Apple v. Samsung, a behavior that eventually cost it several hundred million dollars despite winning its appeal in the Supreme Court).

Perry Quoted in Article About Columbia v. Serius

Check out this story about the Columbia v. Serius case pending at the Federal Circuit.