Two cases being argued this month at the Federal Circuit attracted amicus briefs. One of these cases is LKQ Corporation v. GM Global Technology Operations LLC, a design patent case being heard en banc. In it, the Federal Circuit will review a judgment of the Patent Trial and Appeal Board and, in the process, determine whether to adopt a more flexible test for analyzing design patent obviousness compared to the existing “Rosen-Durling” test. This is our argument preview.
In their opening en banc brief, the defendants-appellants (LKQ Corporation and Keystone Automotive Industries Inc.) argue the Federal Circuit should “find that the appropriate test for design patent obviousness is the expansive and flexible approach prescribed by Graham and refined by KSR, applied in the manner that approach was intended to be applied: that is, to determine whether, in light of the facts and evidence, a person having ordinary skill in the art would have found the claimed design obvious.” The defendants-appellants, moreover, argue the court “should find that the principle of KSR, rejection of rigid limitations on the obviousness inquiry, leads to the conclusion that the Rosen-Durling test should be eliminated because it is even more rigid than the [teaching-suggestion-motivation] test that KSR overruled.”
In its en banc response brief, the plaintiff-appellee (GM Global Technology Operations LLC) argues the “Rosen-Durling framework strikes a careful balance that has worked well for decades.” The plaintiff-appellee maintains that framework “provides flexibility required by KSR, while demanding that the problem of design patent obviousness be analyzed through an appropriate lens.” As a result, according to the plaintiff-appellee, the Federal Circuit “should reaffirm the Rosen-Durling framework for design patent obviousness.”
In their en banc reply brief, the defendants-appellants maintain their position that the current test for non-obviousness for design patents should be eliminated. They contend the correct test should be “what an ordinary designer would actually have found obvious.”
Five amicus briefs filed by the following entities support the plaintiff-appellee:
- Hyundai Motor Company and Kia Corporation;
- Alliance For Automotive Innovation and Rivian Automotive, Inc.;
- Apple Inc.;
- Industrial Designers Society of America; and
- Ford Motor Company.
Three amicus briefs filed by the following entities support the defendants-appellants:
- Eagle Eyes Traffic Industrial Co., Ltd.;
- Patent Law Professors, The Repair Association, Securepairs, Ifixit, and US PIRG; and
- Automotive Body Parts Association.
And three amicus briefs filed by the following entities support neither party:
- United States;
- American Intellectual Property Law Association; and
- Institute For Design Science And Public Policy, and Thirty-Six Distinguished Industrial Designers.
The case will be argued on Monday, February 5. We will report on any new developments.