By Sarah Burstein, Professor of Law at Suffolk University Law School

LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2023) (docket).

As Professor Crouch has noted, the Federal Circuit has granted rehearing en banc in the design patent case of LKQ v. GM. The main question raised in the petition for rehearing—and in the court’s order granting that petition—is the continuing viability of the Rosen primary reference requirement for evaluating whether a design is obvious under § 103.

The court has ordered briefing on the issue of whether Rosen and Durling (the Federal Circuit case that expanded upon the Rosen approach) were overruled, abrogated, or otherwise affected by the Supreme Court’s decision in KSR and, if so, what the test should look like going forward. For my own thoughts on those issues, see this article and this post. (Tl;dr: The primary reference requirement is good but the Federal Circuit has applied it too strictly.)

In this post, however, I wanted to discuss another issue raised by the court. In granting LKQ’s petition for rehearing, the court asked:

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?

These are good questions and well worth discussing. They also stood out to me in light of some of the arguments that were made at the petition stage.

In support of LKQ’s petition for rehearing, some of my friends and colleagues submitted an amicus brief wherein they argued against what they called “design patent doctrinal exceptionalism.” According to these amici, “except where Congress has explicitly specified otherwise, there should be no ‘exceptional’ approach to design patent law doctrines that render them different from utility patent law doctrines. Congress, not the Supreme Court, has imposed this requirement of consistency.” I respectfully disagree.

Section § 171(b) provides: “The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” But the statute says nothing about legal “doctrines.” It refers only to the statutory “provisions.” Saying that a statutory provision applies to design patents is very different than saying that judicial decisions about how to apply that provision to utility patents also apply to design patents.

Indeed, due to the differences between utility patent and design patent claims, neither courts nor the USPTO could directly import those rules anyway.  Design patents cover different things (ornamental designs as opposed to useful inventions). They are claimed differently (using central as opposed to peripheral claiming). They are fundamentally different types of patents. General principles may be transferrable but the actual tests are generally not.

Consider novelty. Section 102 says a patentable invention must be novel. Section 171(b) says that this requirement of novelty applies to designs. But that doesn’t mean that the judicially-created tests for determining when a useful invention is novel also must be used to determine when a design is novel.

A useful invention is deemed not to be novel if all of its elements can be found in a single prior art reference. But design patent claims don’t have elements in the same way that utility patent claims have elements. (A design patent claim consists of a  pro forma verbal portion that incorporates by reference drawings that show the claimed design.) So courts can’t simply apply the “all elements” rule to design patents. Instead, courts have, quite rationally and fully consistent with § 171, developed a different anticipation test for design patents (for more on that test, see this short piece). That’s not “design patent exceptionalism,” it’s a thoughtful and appropriate application of a generally-applicable statutory requirement to a fundamentally different type of patent.

A similar problem occurs with § 103. Because design patent claims don’t have “elements” in the way utility patent claims do, we can’t just apply the utility patent mix-and-match approach to design patents.

Some might argue that we could just let litigants chop up design patent claims into “elements” in litigation and let them fight it out utility-patent style. But that would be inconsistent with longstanding case law emphasizing that the thing protected by a design patent is the design as a whole. It would also be inconsistent with design theory. Not to mention the significant litigation and uncertainty costs such an approach would entail.

A visual design isn’t simply a collection of visual pieces. It is, as a group of amici explained during Apple v. Samsung, a “cohesive and integrated whole.” While it might be technically obvious to take existing visual pieces and recombine them into new shapes or surface designs, that doesn’t mean that doing so always (or even often) creates a visually obvious result.

It’s true that actual designers don’t (often and definitely not always) start designing by taking a primary reference and modifying it. But the question of what we should deem obvious is ultimately a policy question, not a factual question about the actual processes of invention. Cf. The “Winslow tableau.” There’s nothing irrational about saying that, as a policy matter, we don’t think a design should be deemed visually obvious when there’s nothing that looks “basically the same” in the prior art.

This, of course, means that we need a concept of what looks “basically the same.” In particular, there needs to be a meaningful difference between what is deemed “basically the same” (i.e., similar enough to be a primary reference) and “the same” (i.e., similar enough to anticipate/infringe). The way the Federal Circuit has been applying Rosen doesn’t seem to leave much blue sky between those two concepts. But that is a problem with the application of Rosen, not a problem with Rosen itself.

One more thing: It’s true that it’s difficult to invalidate design patents. (If you’re tempted to ask about those old studies, read this.) It’s also true that the Rosen approach leaves some plainly uncreative designs immune from § 103 attacks—or at least, from successful ones. But maybe § 103 isn’t the best way to address that issue. Maybe, as I argue in this forthcoming article, courts should start taking the originality requirement of § 171(a) seriously.