This morning, the Federal Circuit granted LKQ Corporation’s petition for rehearing en banc in LKQ Corporation v. GM Global Technology Operations LLC, a design patent case addressing obviousness. In its petition, LKQ asked the en banc court to review two questions related to obviousness in the context of design patents. In its order granting en banc rehearing,the Federal Circuit ordered the parties to address several related questions in supplemental briefs. Here are the details.
In its petition, LKQ asked the en banc court to review the following questions:
- “Whether the rigid approach to evaluating the obviousness of designs under In re Rosen, 673 F.2d 388, 391 (CCPA 1982) and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed Cir. 1996) is consistent with the Supreme Court’s interpretation of 35 U.S.C. § 103 in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).”
- “What standard, consistent with KSR and 35 U.S.C. § 171, should replace the current requirement that a patent challenger identify a primary reference that is basically the same as the claimed design as a prerequisite to evaluating obviousness and the further limitation that allows modification of the primary reference only if there is a secondary reference that is ‘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 Corporation argued the panel erred by reaching a decision that is “contrary to the statutory language of 35 U.S.C. §§ 103 and 171(b)” as well a number of Supreme Court decisions in the context of design patent law. LKQ explained that the Federal Circuit “and its predecessor have, for more than forty years, approached design patent obviousness with just the sort of rigid, mandatory formula that the Supreme Court rejected in KSR.” LKQ further argued the framework used by the panel for patent obviousness had “no statutory basis” and was “inconsistent with the way designers create new designs.”
In response, GM explained that, “fundamentally, KSR does not address the unique obviousness issues present in design patents and does not overrule” the precedential “framework for design patent obviousness, expressly or otherwise.” GM further argued that, even if the precedential “framework could be applied in an overly rigid way, as LKQ suggests,” that “most certainly did not happen here.”
The court received four amicus briefs supporting rehearing.
- TYC Brothers Industrial Co., an aftermarket automotive parts company, filed an amicus brief arguing that the restrictive “Rosen/Durling  obviousness formula” should be eliminated in favor of the “more flexible . . . KSR” approach. TYC Brothers contended that the current approach “[a]llows OEMS to eliminate aftermarket parts,” which “significantly increase[s] consumer costs.” Moreover, argued the group, “the elimination of readily available and affordable aftermarket repair parts could cause consumers to delay or forgo needed repairs, which clearly creates a safety risk for themselves as well as other drivers.”
- In the second amicus brief, a group of intellectual property law professors argued “Congress simultaneously made clear that all the same utility patent law requirements were to apply to designs, except where Congress had explicitly provided otherwise.” Subsequently, the group argued, “this court should conform its design patent doctrines to the [person having ordinary skill in the art] PHOSITA’s [or Designer of Ordinary Skill in the Art] (DOSA’s) perspective.” The group further contended that, under this approach, the court “should conform its design patent obviousness doctrine to KSR‘s treatment of the PHOSITA‘s creativity,” and depart from the Rosen approach.
- In the third amicus brief, two trade organizations argued that, “[b]ecause of the overly rigid Rosen/Durling test, original equipment manufacturers (OEMs) are able to obtain and enforce design patents on insignificant part-variations year-over-year in a crowded field.” These groups maintained that “[t]hese design patents, which would otherwise be deemed obvious to an ordinary designer, unfairly exclude competitive aftermarket repair parts from the marketplace and thereby substantially increase repair costs.” They argued rehearing is needed to reconcile the Rosen/Durling standard with Egyptian Goddess, Inc. v. Swisa, Inc. standard, which, they said, “mandates a holistic approach to designs.”
- In the final amicus brief, filed by the Automotive Body Parts Association, the ABPA argued the primary reference requirement creates a problem with assessing patentability. According to the ABPA, “the current low threshold to patentability is contrary to the purpose of patent law, which is promote the progress of science and useful arts.” The ABPA argued the “solution to this larger problem is to eliminate the strict need for a primary reference, further develop the concept of what the prior art teaches a designer of ordinary skill, and in appropriate circumstances, to allow the prior art to provide an implicit teaching for obviousness.”
In today’s order granting en banc rehearing, the court indicated the following questions must be addressed in new briefs by each party:
- “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)?”
- “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).”
- “If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?”
- “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.”
- “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?”
- “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?”
We will continue watching this case and report on developments.