Chris Carani and Dunstan Barnes authored an amicus brief filed on behalf of The American Intellectual Property Law Association (AIPLA) with the Court of Appeals for the Federal Circuit in the pending en banc review of LKQ Corp. v. GM Global Technology Operations LLC. The case marks only the third time in the history of the Federal Circuit that the court has reviewed a design patent case en banc, with the last time being 2008 in the landmark Egyptian Goddess v. Swisa. Chris authored the amicus brief for AIPLA in that case as well.
The LKQ case concerns whether the Supreme Court’s 2007 decision in KSR (which involved a utility patent) overrules or abrogates the current Rosen-Durling framework used by the Federal Circuit for assessing obviousness in the design patent context.
The brief argues that KSR neither overrules nor abrogates Rosen or Durling, and calls for the retention of the Rosen-Durling framework while noting key aspects of its flexibility and expansiveness, including that (1) the framework is not an absolute rule, (2) for a Rosen reference (i.e. primary reference, or basic reference) to be “basically the same” it need only have a similar overall visual appearance, and (3) the perspective of a designer of ordinary skill in the art should be applied with common sense in mind and without undue limitations or restrictions. The brief also examines the fundamental differences between design patents and utility patents that warrant a tailored approach to assessing obviousness for design patents. The brief also explains the valuable role of the current framework, pointing out that in design patent context where (i) every aesthetic design modification is possible, (ii) the risk of hindsight reconstruction is very high, and (iii) there rarely is an obvious reason for making an aesthetic design modification let alone multiple aesthetic design modifications, the primary reference inquiry serves the valuable purposes of: (a) focusing the inquiry on the overall appearance of the claimed design rather than obviousness of individual ornamental aspects; (b) guarding against a “mix-and-match” approach where disassociated bits and pieces from the prior art are cobbled together to arrive at the claimed design; and (c) identifying compelling (yet rebuttable) evidence of non-obviousness if no primary reference is identified. Finally, the brief notes that eliminating the current framework would cause significant uncertainty in a challenging area of design patent law that has operated reasonably well for over 40 years.
To read the full brief, please click here.
