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Goodbye Rosen references, hello Jennings references?

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Guest Post by Sarah Burstein, Professor of Law at Suffolk University Law School

LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2024) (en banc).

In its decision in LKQ v. GM, the en banc Federal Circuit may have raised as many questions as it answered. For now, I’d like to focus on one:  What counts as a proper primary reference under LKQ?

While the Federal Circuit overruled the Rosen requirement that a primary reference look “basically the same” as the claimed design, the court did not overrule the requirement that there be a primary reference.

According to the Federal Circuit “In applying Graham factor one, the scope and content of the prior art, a primary reference must be identified.” And, as required by Rosen, that primary reference must still be “something in existence,” not “something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.” But for this last point, the Federal Circuit doesn’t cite Rosen. Instead, it cites the decision that Rosen cited for that point, In re Jennings, 182 F.2d 207, 208 (CCPA 1950).

So what does Jennings tell us about references and § 103? Not much. Here is the entirety of the CCPA’s discussion of the issue:

In the instant case individual features seem to have been selected from different of the reference patents and compared with features shown in appellant’s drawings. In other words, it seems to have been held that by selecting features taken from five different patents, that is, none feature from one patent, another from another, etc., a device might be considered which would so closely resemble the drawings of appellant that his design would not be patentable over such possible construction.

We feel constrained to disagree with the concurring conclusions reached by the tribunals of the Patent Office.

In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence—not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature, as would be required here.

182 F.2d 207 at 208. The Jennings court lists the cited references but does not say—let alone show—which “features seem to have been selected” from each or how they were “compared with features shown in appellant’s drawings.” Nonetheless, the CCPA did helpfully emphasize that, in analyzing whether a design is obvious, the design must be considered as a whole.

Going back to LKQ, the en banc Federal Circuit further tells us that “[t]he primary reference will likely be the closest prior art, i.e., the prior art design that is most visually similar to the claimed design” and that “[t]he primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.”

So what to make of all of this?

First, and perhaps most importantly, the Federal Circuit’s decision in LKQ is a clear repudiation of the Frankenart approach to design patent obviousness. A challenger (or an examiner) can’t just slice and dice a design claim into “limitations,” find those in the prior art, and then stitch them together into an invalidating reference. That’s a good thing.

Second, we know that a proper primary reference no longer has to look “basically the same” as a claimed design, as that phrase was applied by the Federal Circuit. (For a few examples of the extremely high degree of visual similarity required by the Federal Circuit prior to LKQ, see here and here.)

Nonetheless, the court’s citation to and reaffirmation of the Jennings rule suggests that, even after LKQ, a primary reference must still have at least some quantum of overall visual similarity. If no reference looks at least somewhat similar to the claimed design, then are we not simply “selecting individual features from prior art and combining them” to invalidate the design?

So what about Whitman Saddle? The LKQ court tells us that it doesn’t matter that Whitman Saddle predated the enactment of § 103 and spoke about “invention,” not obviousness. They tell us, without any citation or explanation, that “[t]he reasoning of Whitman Saddle carries over to the modern § 103 standard of obviousness.” (I suspect that Judge Rich would have disagreed.) Perhaps some patent challengers will attempt to argue that, following LKQ, “half is enough”—i.e., that if half of the claimed design can be found in a piece of prior art, that constitutes a proper primary reference. I don’t think that’s right. Whitman Saddle was a case with unusual facts and, in its discussion, the Supreme Court expressly relied on the existence of a “mix and match” custom in the field of saddle design. In that case, the Supreme Court tells us, the issue wasn’t that the different parts of the claimed saddle design could be found in the prior art and hypothetically could have combined but rather because, the Supreme Court tells us, it was “customary” to do so. Without that custom, then the reference combining in Whitman Saddle would seem to be nothing more than the Frankenart approach rejected in Jennings—and now in LKQ. In cases without evidence of a similar type of custom, Whitman Saddle may have limited precedential value.

Third, the LKQ court left open the possibility that the primary reference could be both the “most visually similar to the claimed design” but not the type of reference that could anticipate the claimed design under § 102. That’s because the primary reference need not disclose a design for the same type of article, as required for anticipation. It merely needs to be “analogous art.” Thus, the Federal Circuit has indicated that, for designs, the universe of § 103 prior art is broader than the universe of § 102 prior art. That’s the opposite of how it works in utility patents. That’s not a problem, though. Or even a bad thing. (Indeed, I’ve argued that this is how it should be.) But it’s still notable.

One more point: The LKQ court justified its retention of a primary reference requirement as being necessary to avoid “hindsight.” That may be true in some sense. But, as I’ve written before, requiring a primary reference does more than that—it focuses the inquiry, quite properly and as required by Jennings, on the design as a whole. It recognizes that design patents are fundamentally different than utility patents. They protect fundamentally different innovations (visual designs) in a fundamentally different way (central claiming using images). The Frankenart approach rejected by Jennings—and now by the en banc Federal Circuit in LKQ—essentially asks whether it would have been technically possible to combine preexisting design elements. It tells us nothing about whether it would have been visually obvious to do so. Exactly how this new primary reference requirement will develop remains to be seen. But the Federal Circuit’s renewed and reemphasized focus on the fact that a design must be emphasized as a whole is extremely important and a point not to be missed.

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For more on the history of § 103, design patents, and some thoughts about what types of modifications to a primary reference would be obvious (from a design perspective), see this article.

Guest post by Lolita Darden: PPAC’s Bold Strategy to Transform Patent Inclusion

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Guest post by: Lolita Darden, Chair, U.S. Patent and Trademark Office Patent Public Advisory Committee; Managing Partner, Darden Betts Strategic Intellectual Property Counselors; Visiting Associate Professor, George Washington University Law School.  This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here.)

This year the Patent Public Advisory Committee, also known as PPAC, turns 25.  Established in 1999, PPAC is a 9-member advisory committee appointed by the Secretary of Commerce. Each member serves a 3-year term, and I am starting my second year. The primary purpose of the Committee is to review the policies, goals, performance, budget, and user fees of the USPTO with respect to patents. The Committee is also charged, by statute, to advise the Director of the USPTO on these matters and to prepare a report to Congress on the advisory actions the Committee has undertaken during the calendar year. You can find the 2023 PPAC Annual Report

As the new Chair of PPAC, I look forward to collaborating with the Committee and Director Vidal to serve the interests of the American people and the IP community in ways that enhance national and global competitiveness, accelerate growth in GDP, and drive innovation and entrepreneurship.

For those of you not familiar with PPAC, another function of the Committee is to provide the Director with feedback from our constituents about initiatives being undertaken by the USPTO with respect to patent matters. In that regard, I view my role as Chair as a facilitator, working closely with Committee members to provide advice and counsel to the Director based on feedback received from our respective constituencies.

This year, PPAC will continue to work with Director Vidal to link patents and invention more explicitly to national competitiveness, through both increasing invention activity and making patent protection available to more inventors around the U.S. It is widely known that innovation is a key driver of competitiveness and long‐term economic growth. It is also known that patents are important measures of innovation. Recent studies show that significant increases in U.S. innovation are achievable by encouraging inclusive innovation, which involves bringing under-represented individuals and communities into the innovation ecosystem. For example, ,” which represents substantial potential growth to the United States economy.

In my capacity as a private citizen and law professor, I have devoted countless pro bono hours assisting under-resourced inventors with protecting their rights in intellectual property, as well as educating them regarding the benefits of protection.  Research shows that the biggest deterrent to the pursuit of IP protections by individuals from historically resourced communities is awareness.  My vision for increasing the number of participants in the innovation ecosystem from under-resourced communities is education.  Ideally, law schools and law firms would pledge to offer community-based programs educating inventors from under-resourced communities about IP basics, i.e., what is protectable, how it can be protected, and pro bono resources for pursuing protection.  I am excited to continue this work of raising awareness in an advisory role as Chair of PPAC.

One of the interesting things about PPAC is that we are composed of individuals with different backgrounds and views on the U.S. patent system and how it should operate.  Nevertheless, we have been able to find common ground in thinking about how patents can best help the nation.  In addition to inclusive innovation, the Committee will continue to work to support the USPTO’s efforts to maintain a patent system that best serves the American people and the IP community.

Three main takeaways:

  1. Role of PPAC: PPAC, established in 1999, is a 9-member advisory committee appointed by the Secretary of Commerce, serving 3-year terms. Its primary function is to review and advise on the policies, goals, performance, budget, and user fees of the USPTO with respect to patents, and to prepare an annual report to Congress on its advisory actions.
  2. Focus on National Competitiveness and Inclusive Innovation: PPAC aims to enhance national and global competitiveness by linking patents and invention more closely, promoting increased invention activity, and expanding patent protection to more inventors across the U.S. The committee emphasizes the importance of inclusive innovation, highlighting that significant increases in U.S. innovation and economic growth could be achieved by encouraging participation from under-represented groups in the innovation ecosystem.
  3. Education for Under-resourced Inventors: PPAC also aims to raise awareness and educational resources for under-resourced inventors about IP protection. This includes the vision to work with law schools and law firms to provide community-based programs on IP basics, aiming to increase the number of participants from under-resourced communities in the patent ecosystem.

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