Argument Recap / En Banc Activity

Earlier this month, the Federal Circuit heard oral argument in LKQ Corporation v. GM Global Technology Operations LLC, a design patent case being heard by the court en banc. In this case, the Federal Circuit is reviewing a judgment of the Patent Trial and Appeal Board and, in the process, determining whether to adopt a more flexible test for analyzing design patent obviousness compared to the existing “Rosen-Durling” test. This is our argument recap.

Mark A. Lemley argued on behalf of LKQ Corporation and Keystone Automotive Industries, Inc. He began by asserting that “the text” of 35 U.S.C. § 103 “requires that the obviousness analysis in design or utility patents be done by reference to a person of ordinary skill in the art.” He argued that the Rosen-Durling test for obviousness of design patents, however, “adopts a strict rule that forbids courts and the Board from even looking beyond a single reference unless” both references address “basically the same as the patented invention.” He argued that this is “inconsistent” with the Supreme Court’s decision in KSR International Co. v. Teleflex Inc. and suggested a more flexible test would be more suitable. 

Several judges questioned what standard would take the place of the Rosen-Durling test if it were eliminated. Lemley responded by contending that, because designs and circumstances differ, “the right question is a factual one,” as prescribed by the Supreme Court in Graham v. John Deere Co. and as refined by the Supreme Court in KSR. Lemley conceded that certain concepts from utility patent law, such as “reasonable likelihood of success,” do not “translate particularly well” to design patent law.  

The argument turned to whether he would object to an opinion indicating that a reference showing basically the same design, while not always required, would be a “useful and compelling tool” in the obviousness analysis, and that courts should “expect that a base reference. . . be the same article of manufacture and have . . .a number of visual similarities to the claimed design.” Lemley responded that using Rosen as one “easy way” to show obviousness would be acceptable. He argued, however, against a bright line rule disallowing visually dissimilar base references.

The judges expressed concern over the automotive industry-specific nature of the case, the amicus briefs in support of Lemley’s clients, and the implications a new test may have for industries that have not participated in a similar public outcry. Lemley argued that KSR‘s fact-specific approach would be “sufficiently general” to consider the differences between industries and cases. He maintained, however, that the Rosen test is particularly problematic in the automobile industry because “companies like GM are getting hundreds of dubious design patents in an effort to shut down the right to repair your car.”

Farheena Yasmeen Rasheed argued on behalf of the United States. She asked the court to “resist LKQ’s overreading of KSR and GM’s underreading” of the same case. She highlighted that KSR did not overrule the teaching-suggestion-motivation test, which “provides a very helpful insight” and a fast way to arrive at obviousness. And she argued the government’s position is that the court should “remove all threshold requirements” to show obviousness, but the current analogous art test can exist as is. 

One judge sought clarification, asking how the government could argue for no threshold while upholding the Rosen test, which “absolutely has a threshold requirement” in that a primary reference “must be basically the same.” Rasheed responded that the government is asking the court to “soften” and expand the meaning of “basically the same” to mean “an overall similar impression.” One judge asked if she meant, “[t]his is a nice threshold, but if you don’t meet it, you still go on.” Rasheed answered that that was correct, asking that the new test “leave the door open to common sense” when the threshold is not met. 

The judges then asked what test would apply if an obviousness analysis did not pass this threshold. Rasheed argued the proper inquiry is “whether or not an ordinary designer would have incorporated those elements that are missing.” She said, however, that this is a “rare situation” with respect to design patents. The said a design is most likely not obvious if the art is not visually similar.

One judge asked if the court should instead adopt a two-step analysis, like with utility patents, where “if you fail on the first test, you go on to the second.” Rasheed argued that a two-part test is unnecessary and that a “holistic approach” is better. In response, a judge expressed concern, asking, for example, because the Patent Office does not employ furniture designers, “how are [patent examiners] going to know that [they] can look to prior art in the architecture field because a designer in that space would otherwise do that.” Rasheed responded that an examiner considers the nature of the design and, through “extensive” research, can ascertain what is “common practice.” 

Joseph Herriges, Jr. argued on behalf of GM Global Technology Operations LLC. He asserted the “Rosen-Durling framework is an important and thoughtfully developed application of Graham tailored to the unique issues in design patent litigation.” He argued KSR did not overrule the Rosen-Durling test and doesn’t prohibit its application.

One judge asked whether Heerriges’s understanding is that the Rosen-Durling test is “an open test,” instead of a closed one where if “you don’t have a Rosen reference, it’s over.” Herriges said GM’s position is not that of the government, who argued “it is a matter of ordinary course” to continue without meeting the Rosen threshold. Instead, he argued, while there may be a case out there that is an exception, “it was not articulated.” Herriges proposed that the court simply affirm the principles of the Rosen-Durling test, “but not foreclose the possibility” that an exception may apply. 

Another judge asked what circumstances would justify a departure from Rosen. Herriges answered by saying it would be a “rare case, if any.” He suggested that, under the correct set of facts, new products may allow an exception to be articulated. Additionally, he asserted, contrary to LKQ’s argument, GM’s position encourages “consideration of the full scope of prior art.”

One judge asked, if the court overruled Rosen, how he suggests analogous art should be defined. Herriges argued it is an art that “a person of ordinary skill in the design . . . would look to.” One judge asked if this were relevant to the ordinary observer or the ordinary designer. Herreiges responded that courts should “remain focused on the perspective of the ordinary designer.”

Finally, Herriges turned the argument to the government’s proposed change to “basically the same,” arguing that a “semantic” change or a more flexible standard will not clarify a meaning honed by forty years of case law. He reiterated that the Rosen-Durling test is not overly restrictive just because it requires “merely a visual similarity between the references such that a designer of ordinary skill would look to that secondary reference.” 

In rebuttal, Lemley suggested all three parties argued at some point for a change in the law. Additionally, he asserted, while his client agreed with the entirety of the government’s briefing, it does not support the idea that it is “rare to go beyond one prior reference.” Additionally, he argued, simply applying the Rosen-Durling test “with flexibility” is “not sufficient.” At the end of his rebuttal, one judge asked if the court were to make one change to the law, what LKQ thinks it should be. Lemley responded, “Overrule Rosen and Durling.” Notably, a judge responded, “That’s not going to happen.” 

We will continue monitoring this case and report on developments.