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.