Guest Post: “Design Patent Exceptionalism” Isn’t

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.

57 thoughts on “Guest Post: “Design Patent Exceptionalism” Isn’t

  1. 9

    >>Guest Post by Prof. Koffi: A Gender Gap in Commercializing Scientific Discoveries

    All this just stinks of quota systems and punishing white men or more aptly people lower on the intersectionality hierarchy.

    I’ve worked as an engineer at big corporations in the innovation division with lots of women.

    I’ve taught as an adjunct professor computer science classes.

    I’ve managed over 100 engineers. What I found was the only thing that worked was to treat everyone equally and make everyone understand the rules.

    Focus on early education. And focus on setting up rules for all people to follow. Favoring people and telling others they must be punished for the greater good or because of history merely poisons the well.

    The author is the type of person that caused problems at work. And the author and her cohorts have not made progress. Progress has been made despite her authoritarian efforts.

    1. 9.1

      The only thing that worked, you write, was to “treat everyone equally”. Easy to say in the abstract but rather harder though, isn’t it, to make concrete “progress” in real life towards that which works. An urge to treat people equally is not a given. If it is so important, it has to be nurtured. But how?

      Focus on early education, you write. I agree. I’m sure that nearly all parents buy their children the best early education that their money can buy. But in the light of the recent SCOTUS decision, my doubts whether top universtites treat every applicant for undergraduate study “equally” are aggravated. As I understand it, when deciding who gets in, and who does not, it is still OK for the university to take into account how much the parents donate to the institution.

      If the USA’s top academic institutions are still not able to bring themselves to “treat everyone equally” what hope is there, NW, of “progress”, of getting as far as the only thing that works?

      1. 9.1.1

        ^^^ there is SO much wrong with MaxDrei’s last paragraph that it boggles the mind.

        But then one realizes that this is from MaxDrei, whose 40+ trips around the same small EPO Uber Alles block and lack of awareness of American culture, history and even history of culture, merely reflects his lack of recognizing that “top academic institutions” (actually academia writ large) has L O N G been captured by the Sprint Left crowd and exhibits some of the LEAST actual inclusive (of the important things to be inclusive of) environments.


          True, true. MaxDrei understandably doesn’t understand the “American culture” of being so intimidated at the idea that white men might not be automatically be given the benefit of the doubt over anyone else that they will rage against equity in the comments section of a post that has nothing to do with it because the post they’re actually scared of doesn’t invite comments. I should know better than to look at the comments here, but I occasionally want to see if you are all still clearly underemployed enough to grant you the time to pontificate as anonymous “practitioners” of little skill gifted with an astounding level of over confidence (or overcompensation) of what little skill you have. Yep. You’re still here. *mwah* Enjoy your unfulfilled day!


            that white men….

            You have no clue as to my “identity-politics” in view of any membership, and the rest of your emotive rant is equally as c1ue1ess.

            But maybe YOU have some alternative Sprint Left reality that you would rather dwell in anyway, so you go right on being you.


            Do people really not know that Asians were challenging the affirmative action tactics of the universities as well? I mean, really? The Harvard case challenged discrimination against Asian-Americans; the UNC case challenged discrimination against whites and Asian-Americans. Yet, ghostndrag on made it all about white men?


              PM, that concept has been “covered” with the term “white-adjacent.”

              I have (on multiple occasions) provided the deep explanations (including works of the likes of Drs. James Lyndsay and Jordan Peterson) that the likes of the Sprint Left crowd never engage on the merits.

    2. 9.2

      Squishy words at the “right” places reveal the Motte and Bailey in play with yet another “Equity” virtue signaling.

      Without awareness of the underlying philosophical/religious aspects, there is a tendency to fall for the “Mom and Apple Pie” well-of-course-everyone-wants-that surface ornamentation.

  2. 8

    One thing people miss is that product development at large corporations is very sophisticated with marketing analysis and break-downs of ever decision being made and every part.

    Corporations that copy designs know exactly what they are doing and do it to sell their product. The ever ridiculous CAFC acts as if design of products is performed by air heads that haphazardly throw things together and don’t give much thought to taking others’ designs.

    1. 8.1

      “ The ever ridiculous CAFC acts as if design of products is performed by air heads that haphazardly throw things together and don’t give much thought to taking others’ designs.”

      Is this another thread about computer “inventors”?

      1. 8.1.2

        Well, MM AKA “The Prophet”, at least you didn’t resort to name calling or defamation.

    2. 8.2

      “Corporations that copy designs know exactly what they are doing”

      Entities who file design patents on anticipated, obvious functional c r a p know exactly what they are doing.

    3. 8.3

      It would make for an interesting and useful law school study to see if, as asserted in comments here, most design patent infringement suits are against competitors who copied design-patented design elements for competitive product sales.
      If so, injunctions should logically be much more likely granted in successful design patent suits.

      1. 8.3.1

        P.S. That should also make corporate CPCs more concerned about design patent suits, because they should be insuring that new product designs are run by the corporate patent department to check with the product designers to make sure that there was no copying or “inspiration” by a prior product non-functional design feature of another that the new product would compete with.

      2. 8.3.2

        If so, injunctions should logically be much more likely granted in successful design patent suits.

        F’n seriously…?

        That’s bassackwards Paul.

  3. 7

    +1 Perry (below).

    Indeed, infringer profits disgorgement should be available for ALL patents; not just design patents.

    Reasonable royalties — especially in an age when injunctions are next to impossible to obtain for the great majority of patent owners — are an insufficient penalty for stealing the innovative work of others.

    1. 7.1

      [I]njunctions are next to impossible to obtain for the great majority of patent owners…

      If this is true, why are permanent injunctions granted ~65% of the time (fig. 2) when the patentee asks for one?

      1. 7.1.1

        Directly there in the Abstract:

        It finds that eBay has effectively created a bifurcated regime for patent remedies,… In contrast, non-competitors and other non-practicing entities are generally denied injunctive relief.

        ANYONE that understands the foundational aspects of the US Patent System, including the notion that the personal property right of a granted patent was ALWAYS intended to be fully alienable, and does not see a problem with this infection of ‘must make’ really needs to just go away – far away – from being involved in patents and patent policy.

      2. 7.1.2

        Mind you, I think that the CAFC got eBay right, and the SCOTUS got it wrong. I think that a permanent injunction should be the default outcome following an infringement judgment.

        Nevertheless, it is important to be able to keep more than one true statement in one’s head at the same time. It is simultaneously true (1) eBay made it noticeably harder to get a permanent injunction and (2) the majority of patent infringement judgments result in a permanent injunction. The idea that it has become “impossible” anymore to get an injunction is quite common but not true.


          “ The idea that it has become “impossible” anymore to get an injunction is quite common but not true.”

          Okay but nothing is patentable anymore because everything is abstract.


          I think that a permanent injunction should be the default outcome following an infringement judgment.

          Lol – no.

          While effectively arriving at the exact same spot***, the Ends do not justify the Means, and the analysis should be made explicit.

          *** that is, a proper analysis that genuinely recognizes the nature of what a patent right is (a negative right), what transgressed actually means (it does NOT mean that there is any sort of “must-make” bias); AND keeping in mind both the nature of equity — in context — here, specifically, injunction is NOT an atom bomb as it might be viewed in matters of general remedy, and making the transgressed as whole as possible to the nature of the right transgressed; AND the critical view (as must be taken any time one branch of the government shares their authority with another branch) of the words of 35 USC 283 (emphasis added):

          The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

          It would be an EASY walk, but a walk that must be taken nonetheless.

  4. 6

    The single biggest problem with US design patent law is the statute giving “profits” instead of a reasonable royalty if infringement is shown. Maybe that made sense very long ago when the statute was written, but it now makes no sense. Especially (but not only) in cases where the sales of the infringing article are not primarily driven by aesthetics.

    1. 6.1

      Why am I not surprised that the meaningful stick is the one thing that a litigator would think to be ‘the worst thing ever’….?

      Innovation — across any of the IP areas — is BEST served with having strong BOTH items of the carrot and the stick.

      Quite in fact, the weakness of utility patents is one thing that has fostered the biggest hindrance for innovation protection: the Efficient Infringer syndrome.

      It is simply NOT enough to have it be ‘the prize’ to give to the transgressed what they would have been due from the get-go and thus making it a simple business decision to ALWAYS evade a right’s holder call for a stop to infringement.

      This cancer is NOT limited to design patent either (the topic as provided by Litig8or).

      1. 6.1.1

        i am not suggesting that damages for design patent infringement be ZERO; just saying that they don’t merit “total profits.” Especially because designs protect only ornamentality and not function.


          It is far too easy to infringe, and my counter point was that the stick should be bigger across the board.

          As it is, the TOO LOW penalties simply make Efficient Infringement into being a smart business decision.

          We ALL should not want that to be the case.


            If the damages for design patent infringement were limited to a reasonable royalty, the infringer would regard it simply as a cost of doing business, and proceed to knock-off product after product after product. Congress realized a long time ago that the best way to discourage that kind of behavior was to make disgorgement of the infringer’s profits the penalty. And this is especially apt for ornamental designs which – as Dennis has said – frequently act as trademarks, the theft of which can ruin the market for the rights holder.

    2. 6.2

      Maybe that made sense very long ago when the statute was written, but it now makes no sense. Especially (but not only) in cases where the sales of the infringing article are not primarily driven by aesthetics.

      I am a great fan of the common law legal framework, in large measure because the most fundamental rule of the common law—viz., stare decisis—accords with my own fundamental intuition that “if it ain’t broke, don’t fix it.”

      When you say that the award of profits “now makes no sense,” what evidence would you adduce to demonstrate as much? What real world phenomena can we observe to tell us that the world has materially changed in a manner that makes this rule no longer supportable?

      Can you point to several successful businesses driven under by ruinous losses following a judgment of design patent infringement? I really cannot think of many, but perhaps I have not been following the literature attentively enough.

  5. 5

    It’s important to acknowledge (as the post authors seems to do) that US design patent law is not something that can be “fixed”. It needs to be destroyed and rebuilt from scratch after an assessment of (1) what exactly do we want the system to achieve and (2) to the extent we want the system to function similarly to the system(s) in other countries, how do we account for the differences between our legal system generally and the legal systems in those other countries? That seems like a minimum starting point.

    Beyond those fundamental questions, there are more specific (but no less fundamental questions) that should be answered, e.g., how should examination differ between an ornamental physical design for a useful object (vase, car bumper, toothbrush, etc) versus an ornamental design that is merely applied to an article (and which may contain information about the manufacturer or some expressive content) or exists only virtually (as lights on a screen or projected on a surface)? The universe of prior art for both types of designs is large but the prior art for the latter, which includes abstract patterns, seems beyond human comprehension.

    Question: how many abstract pattern designs are in the USPTO database and what fraction of those designs were put in the database only because they were the subjects of design patent applications?

    1. 5.1

      What is this “USPTO database” that you speak of?

      Genuinely curious (seeing as the general disdain for attempting to shoehorn a design patent system into a the framework of a utility patent system being asinine has long been my position).

      1. 5.1.1

        Nowadays, don’t they supplement their internal DB with COTS image search engine results??


          Thanks OC,

          Does the Office really maintain (and rely on) their own image database?

          Your answer indicates that they have one, but do not rely solely on that one.

          I suppose that not relying solely may be a ‘saving grace,’ and that – like patents and patent publications – it may may sense to start with what you have, but given how ineffective the Office is generally with electronic processing, an image database seems like a tall order, even for what they may have.

  6. 4

    In the end, it doesn’t matter how the SCOTUS decides the case if the USPTO won’t implement it because the USPTO feels it favors applicants over examiners.

    1. 4.1

      “the USPTO feels it favors applicants over examiners”

      Because patent law is just a competition between applicants and examiners. Right. And the USPTO operates on that principle. Sure it does.

      For cripessake stop inhaling the patent crack.

      1. 4.1.1

        Try reading what I actually wrote instead of reading it through the lens of your own bias.


          Did you mean to say “ it doesn’t matter how the SCOTUS decides the case if the USPTO won’t implement it because the USPTO recognizes that the public and Congress will not accept the awful patents that would necessarily flow from the a poorly reasoned SCOTUS decision.”

          That would make some sense.


            Is it your impression that the SCOTUS wants to make it easier to get a patent, but the USPTO is obstructing that pathway? That is about 180° the opposite of what I observe.



              What is it with the panic from those that do not want straying from the Biden-Puppet Controller’s narrative?


              An interesting counter to Greg’s Kennedy denigration:

              link to

              No matter what one may think of Kennedy, at least he (unlike Greg) is engaging on the merits and plainly putting his views out there.

              (it is no small coincidence that Greg finds solace in someone denigrating Kennedy, given Kennedy’s anti-Big Pharma stance)


              I’m glad to see those flunkoids got a new banner, I rather like it. Would be nice if they worked more on being less of a flunkoid tho.


          your own bias

          B-b-but Malcolm is not anti-patent.

          Leastwise that’s how he attempts to gaslight.

  7. 3

    Professor Burstein, you said: “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).

    However, the test for infringement is not “the same”; it’s “substantially the same”.

    And the meaningful difference already exists: “basically the same” is judged through the eye of a designer of ordinary skill while “substantially the same” is judged through the eye of an ordinary observer. Since a designer is presumably someone with greater visual acuity than an ordinary observer, the designer will notice more differences between two designs than would an ordinary observer. Perhaps this is why there are so few designs found obvious compared to those found infringed.

    1. 3.2

      Perry: “ Since a designer is presumably someone with greater visual acuity than an ordinary observer”


      Where did you dig this nonsense up, Perry?

  8. 2

    OT, but considering the multibillion battle shaping up since Meta since started mass competing with Twitter-style social media [for more mass public time-wasting, medical quackery and other misinformation?], what IPL protection, if any, does Twitter have? Especially if Meta’s claim of independent software development without using former Twitter employees is correct? If so, how can Twitter mount a valid trade secret or copyright case? Does Twitter have any broad effective patents? Is there any “trade dress” case?
    If not, features-copying for providing competitive services is perfectly legal, if not favored.

    1. 2.1

      The big IPL asset is everyone’s chat history (and existing list of followers). IIRC, some of the many clones have attempted to scrap their new users’ Twitter histories… which is presumably against the EULA/TOS and possibly unfair competition.

      1. 2.1.2

        Interestingly, the “X” [formerly Twitter] attorney letter noted below does not actually accuse Meta of having already done such scraping of users or their followers, just informing them that they cannot do so without permission.


          Maybe because such an “active accusation” IS a bit pre-mature, eh?

          You seem to not understand the larger world of business moves and feints there Paul.

          None of this is all that unusual, or even mildly exciting.

          In fact, the “support” based on pre-existing political narratives as well as the opposing memes of Meta’s bizarre censorships already under way is FAR more interesting.

    2. 2.2

      ^^^ from a guy who refuses to speculate on Supreme Court cases (and the patent law issues therein), this type and level of speculation comes across most odd.

    3. 2.3

      That was fast. Reportedly on July 5 lawyers for Twitter wrote a letter to Meta [re its newly launched Threads] accusing it of engaging in “systematic, willful, and unlawful misappropriation of Twitter’s trade secrets and intellectual property.” The letter also asserts that Meta has hired dozens of former Twitter employees who had access to its trade secrets. [They will have to get a lot more specific for an actual state or federal trade secrets suit.]

      1. 2.3.2

        Link to story with the letter:

        (use of a chrome extension appears to detract from a direct link):

        link to

        As to the letter, of course (as a letter) it will not have the same content as would an actual law suit (and one would not expect it to be so, eh?).

        Two items of the letter seem worthy of note:

        1) The very first sentence of, “I write on behalf of X Corp., as successor in interest to Twitter, In.” Just as FaceBook went “Meta,” Twits went “X” (layers of humor may not be for all)

        2) The overall intent of the letter can be found in its last paragraph: notice to preserve documents that could be relevant.

        As for Greg, and his Malcolm-like adoration of LGM, typical Sprint Left (anything against Musk must be good) type of tr011ing. Perhaps Lemieux should understand that taking of trade secrets has nothing to do with the ability (or perhaps more accurately lack of ability) that were canned at The X.

  9. 1

    Indeed, due to the differences between utility patent and design patent claims, neither courts nor the USPTO could directly import those rules anyway


Comments are closed.