by Dennis Crouch
On Monday, February 5, 2024, the Federal Circuit will sit together for the first time in years to hear an en banc patent case. In LKQ Corporation v. GM Global Technology Operations LLC, the court will consider whether to apply a more stringent obviousness test to design patents. In a 2010 article, I concluded that “the current design patent examination system operates as a de facto registration system” with very little obviousness analysis except in cases of clear copying. Although design patent examination has become more rigorous, obviousness rejections remain relatively rare in comparison to their utility patent brethren.
Oral arguments will include the 11 Federal Circuit judges (absent Judge Newman) along with Mark Lemley (arguing for the accused infringer and seeking a more rigorous obviousness test); Joe Herriges (arguing for the patentee GM largely seeking to preserve the status quo); and USPTO Acting Solicitor Farheena Rasheed (for amicus USPTO). The case particularly focuses on whether the Supreme Court’s flexible test for obviousness from KSR v. Teleflex also applies to design patents. In particular, the Federal Circuit’s Rosen-Durling test for design patent obviousness requires a primary reference as a starting point that is “basically the same” as the design being patented. Lemley would throw out this approach entirely. In its brief, the USPTO agrees that KSR requires more flexibility and that Rosen-Durling is “overly restrictive in several respects.” However, the USPTO suggests retaining the basic framework as a standard approach to obviousness, while permitting other approaches as necessitated by particular cases — allowing for both flexibility and the application of common sense.
On Feb 6 I am gathering online for a Suffolk Law School event to debate the case and its potential outcome and impact. I will be joining Suffolk professor Sarah Burstein along with Meredith Lowry (Wright Lindsey); Darrell Mottley (Banner + Howard University); and Laura Sheridan (Google). See you there (REGISTRATION).
Lemley would throughout this approach entirely.
That should read “Lemley would throw out…}, right?
Thanks!
USA needs to do like every other jurisdiction and to stop pretending that industrial designs are patents. Take the design stuff out of the patent sphere and do it as its own thing. Or get rid of it altogether.
Agree.
Without the necessity of including repugnant links (“L”emly and Ag”r”ee) of a semi-hidden nature (to Kool-Aid swilling Sprint Left propaganda), I am in full agreement that the decision to insert NON-utility intellectual property protection INTO a utility intellectual property protection system was a B A D idea from day one.
Ok, copyright office it is (with the commensurate 120 year terms)
Three quick observations:
1) Lemley against a patent holder – naturally.
2) intersection with recent design cases on the express limitation as to selected type of manufacture?
3) curious as to the resident expert on Design Patent Law weighing in to preempt Paul’s continued miss as to the inherent differences between Design and Utility patents.
Re this 2/5/24 Federal Circuit “first time in years” en banc patent case hearing in LKQ Corporation v. GM Global Technology Operations LLC.
Long term readers will be well aware that what I had actually said for a long time is that the Fed. Cir. needed to stop just ignoring KSR and the non-statutory old CCPA Rosen-Durling test for design patents, and rule on it. Their unique en banc review here, coupled with their prior amicus requests, clearly shows that the Fed. Cir. IS now taking these questions very seriously, more so than most design patent suit defense counsels have done in the past.
BTW, while many of us can agree with various expressed feelings that we need a very different statutory system for ornamental designs than we have now, much more like copyright, that pie in the sky wish is not even in the cards, much less on deck here. The courts must deal with the statutes we have now.
And certainly they must – as must YOU in your tendency to twist utility concepts that clearly cannot fit a non-utility item.
As our resident expert on Design Patents (Perry Saidman) has likely become tired of correcting you.
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