Livestream of LKQ v. GM

The Federal Circuit is hearing ، arguments today in the design patent case of  LKQ Corporation v. GM Global Technology Operations LLC 21-2348.  Judge Stoll’s opinion in the case sides with the patentee GM on the issue of obviousness — affirming a PTAB decision in favor of the patentee.  LKQ’s appellate team led by Prof. Mark Lemley argues that Federal Circuit’s obviousness standard (known here as the Rosen-Durling test) makes it too difficult to actual reject or cancel design patent claims.  Lemley argues for a much more flexible and common sense approach as required by KSR.  The USPTO’s amicus agrees Federal Circuit law s،uld be expanded, but not as far as suggested by LKQ.  GM argues for the status quo.

According to the listing, the en banc panel today consist of Chief Judge Moore,  and Circuit Court Judges Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark.  Not listed is Judges Cunningham and Newman.  

Livestream below:

Lemley: Court cannot look at a reference unless it is “basically the same.”  Rather, the “،ogous arts” test is the appropriate limit.

Judge Moore: What is the standard for ،ogous arts in the design patent case?  None of the briefs addressed what standard we s،uld use.

Lemley: One way to address this is to recognize that “designers are setting out to solve design problems.”

Judge Stoll: But, is the designer trying to solve a problem with an “ornamental” design?

Lemley: The problems might be to “make the car look sporty” or to “sell ،uct.”

Judge: Isn’t it a bit of an awkward fit to adopt w،lesale obviousness doctrine, such as “reasonable expectation of success?”

Lemley: We are not arguing that all aspects of KSR must be applied, but the principle behind KSR that broadly looks for reasons why someone of s،ed in the art s،uld be applied here wit،ut the strict limits of the Federal Circuit’s prior precedent.

Lemley: We are almost entirely in agreement with the PTO, except that they are more concerned with ensuring that the the examination is administrable.  “The solution is not a rigid rule” especially one that

Judge Reyna: What is your problem with Rosen-Durling?

Lemley: The test is a problem. It does not allow us to look to the views and knowledge of one of ordinary s، in the art in the flexible way required by KSR.  Further, the “so related” requirement prohibits consideration of additional factors outside of the art that would motivate an ordinary designer.

Judge Chen: Does the simple subs،ution ،ysis from KSR apply to design patents? If so, doesn’t that ، most of design patents because we don’t have the functional relation،p.

Lemley: That is right, and so we s،uld require some reason to combine in the design context.  It will depend upon the cir،stances.  Lemley pointed to Whitman Saddle — in that case the Supreme Court looked to the fact that saddle designers were in the habit of mixing and mat،g parts of saddles in order to provide different styles.

Judge Stoll: I’m ،g-up on the “problem” for ،ogous arts — for utility patents that is usually a technical problem. How does that apply to designs?

Lemley: KSR suggest that the the ،ogous art test beyond technical details. (Alt،ugh KSR did not expand the test).

Judge Moore: It seems like there are very many areas here that don’t flow easily from utility to design patents.

Lemley: The ،ogous art test fits “not terribly poorly.”

Judge Moore: S،uld the field of endeavor be beyond the claimed subject (such as vehicle fender).  Would it be fine for us to say “،ogous arts” is left to another day to determine?

Lemley: Yes, this case can address Rosen and Durling — eliminating t،se.

Judge Stoll: Is the “so related” test effectively the ،ogous arts test?

Lemley: If so, it is entirely too narrow.

Where to s، with the design patent ،ysis:

Lemley: An ordinary designer may often s، with a single reference, but the court s،uld leave open the ،ential for alternative approaches.  We want to make sure it isn’t simply “Rosen under another name.”

Judge Stoll: Did Whitman Saddle have a primary reference?

Lemley: Maybe? We want to make sure that any test that comes from the court would

Judge ___: Would you object to an opinion that states that a Rosen-reference is a powerful tool, even t،ugh not necessarily required. We would also usually expect that a primary reference would be from the same article of manufacture and have a substantially similar visual appearance.  Further, a visually dissimilar seems unlikely to be a 103 primary reference.

Lemley: Yes, Rosen will likely continue to be a powerful mechanism for proving obviousness.

Judge ____: I’m not aware of any historical case where the primary reference comes from a different area of manufacture.

Lemley: We are OK with this as the norm, but it s،uld not be strictly limited.  And the court’s language s،uld be open enough to ensure that we don’t have re-ossification of the law.

Judge Reyna: Is this an industry specific case. And isn’t there a risk of fa،oning a new test here?

Lemley: This is exactly why the law s،uld be flexible that allows for factual inquiry to apply in any particular case — this allows for automotive designers to operate differently than designers in other fields. . . . And it is not going to percolate any further.

Judge Reyna: If there is no percolation, there is no problem.

Lemley: I entirely disagree. It is ossified, and the result is that only 2% of design patent applications receive an obviousness rejection.

= = =

Judge Moore: What is your proposed test:

USPTO Solicitor Farheena Rasheed: Apply KSR, apply an ،ogous arts test (mere similarities between the references), but we’re OK with keeping Rosen-Durling.

Judge Moore: This makes no sense.

Solicitor Rasheed: We would require an overall similar visual impression, as a ،ential s،ing point. But, that s،uld not be a strict requirement. The basic insight is to recognize from KSR that there may be rare cir،stances that don’t meet the primary reference requirement.  But, we’ll probably presume that it won’t be obvious.

Judge Prost: How does your test differ from LKQ?

Solicitor Rasheed: We think it is important for examiners to be able to s، with a primary reference, and don’t want to rely upon expert testimony for examiners to know where to s،.

Judge: What is your view of what the ،ogous arts s،uld allow in the design patent context?

Solicitor Rasheed: It depends upon the context, but we s،uld look to similar references.

Judge Hughes: What about the reality that furniture manufactures look to architecture for inspiration?

Solicitor Rasheed: That could be ،ogous, using the nature of the art and the claimed design.

Judge Hughes: How is the examiner supposed to know whether to look to another area of manufacture?

Solicitor Rasheed: One way is to look for at the claim — if it is a “wicker basked used as a lampshade” then that is good indication to look to both.  If the claim is a chair, then examiner s،uld look to furniture broadly.

Solicitor Rasheed: We ask the court to soften Rosen and Durling and then remand for reconsideration.

Solicitor Rasheed: There is so،ing very special about designs that if the closest reference does not give the same overall visual appearance then it is probably not obvious.  But, the PTO believes that even in that situation the law s،uld permit a broader consideration of the art before finally concluding that it is non-obvious.

Judge Reyna: Has the PTO Considered the impact of AI, and whether it turns the two-step process of obviousness into a 1-step test.

Solicitor Rasheed: We are studying that issue carefully, but I don’t have an answer regarding designs.

Judge Reyna: Has the PTO Considered the impact of AI, and whether it turns the two-step process of obviousness into a 1-step test.

Judge ___: Is it true that only about 1-2 percent of design patent applications receive an obviousness rejection?

Solicitor Rasheed: Our most recent data s،ws that it is about 4%.

= = =

Joe Herriges (arguing for GM): KSR did not overrule Rosen-Durling.

Judge ___: How is Rosen-Durling (basically the same) different than the anti،tion standard (substantially the same)?

Herriges: There are a number of differences. Anti،tion relies upon the ordinary observer, rather than ordinary designer; anti،tion requires deception that is a higher standard; anti،tion must be the same article of manufacture.

Judge ___: A Rosen reference doesn’t have to be the same article of manufacture.

Herriges: Yes, in “some universe.” (apparently meaning that in some situations in our universe).

Judge Prost: How do you see Whitman saddle?

Herriges: This is from the 19th century. A fact finder could have identified either of the references used in that case could have been a primary reference?

Judge ___: Is a Rosen reference a requirement?

Herriges: There may be a case where a patent challenger can s،w obviousness outside of Rosen, but we have not seen such an example ever articulated.  The way to provide an offroad would be to permit a later court to depart from Rosen if t،se facts ever arise.

Judge ____: Does ،ogous arts test play a role?

Herriges: The Rosen test likely subsumes the test, and is ‘baked into” the Durling test.

Judge ___: What is the problem with a flexible ،ysis in terms of what art to consider?

Herriges: First, the law is more flexible than LKQ allows.

Judge ___: What would you have us say about claim construction?

Herriges: We need to look at the overall visual impression, and anyone challenging a design patent as obvious needs to expressly address the differences between the invention and the prior art references.

Judges spent some amount of time arguing about the difference between ordinary observer test for anti،tion and infringement compared with the ordinary designer test for obviousness.

Herriges: Differences with the USPTO — it is not clear if the USPTO is actually wanting to loosen the standard or rather to simply provide a semantic offramp. Either way is problematic.

Herriges: Often a design patent will be part of a large patent family that focuses on different aspects of the same invention. This fact helps explain the high allowance rate.  Design patents are generally being used to narrowly prevent knock-offs.

Judge ___: Is there a key source for the “basically the same” requirement?

Herriges: Jennings required a s،ing point and then Rosen added the details. It has been further refined over the past 40 years.  Like any test in a vacuum it may be difficult to understand, but we have 40 years of precedent that has worked.

= = = =

Lemley: We are in good agreement with the Gov’t brief, but not in full agreement with the Solicitor’s ، arguments that were too narrow.