The Federal Circuit on June 30 granted a petition for re-hearing en banc of its per curiam decision in LKQ Corp. v. GM Global Tch. Operations, LLC. finding the PTAB had correctly decided that GM's design patent D797,625 was not unpatentable, i.e., valid. The issue raised was whether the Federal Circuit's rulings in Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996); In re Rosen, 673 F.2d 388 in (C.C.P.A. 1982) followed by the PTAB in its decision created a "rigid" rule for obviousness in design patent in violation of Supreme Court's 2007 KSR decision overturning the Federal Circuit's rigid rule for obviousness of utility patents, the "teaching, suggestion motivation" (TSM) test for obviousness.
In deciding obviousness of a design, one uses the "ordinary observer" test. The tests established in Rosen and Durling require identification of a sufficient primary reference. Failure to identify a sufficient primary reference is sufficient to establish a failure to prove obviousness. Many are concerned that adopting a less rigid standard could make it easier to invalidate design patents.
This concern should be shared by medical device makers, especially those involved with making drug administration devices such as inhalers where design patents are used to protect the device. GSK, for example, protects its dry powder inhalers with design patents and utility patents. A design patent may affect the ergonomics of the device and impact useability of the device. Also, where the device has graphical user interface this is protectable with a design patent. For small molecules the FDA requires that where a device is used by the patient to administer the drug, the generic device must be operable using the directions of banded product, thus restricting the generic company's design options. The reality is that beginning at the turn of the 20th century the courts decided that the same rule about obviousness (then the "invention" standard, today obviousness) for utility patents applied to design patents. KSR overturned the Federal Circuit's rigid TSM test for utility patents, and there seems to be no reason why it wouldn't also apply to design patents. The Court has a bias against hard and fast rules but looks for a flexible approach which attempts to achieve the objective of the statute. In the recent Amgen v. Sanofi case, the Court looked at the objective of the enablement provision and adopted an approach that achieved the objective and did not adopt the Wands approach.
In addition to whether KSR overruled the present law of obviousness for design patents, the court also teed up these questions:
B. Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and suggests the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR's statements faulting "a rigid rule that limits the obviousness inquiry," 550 U.S. at 419, and adopting "an expansive and flexible approach," id. at 415, should cause us to eliminate or modify: (a) Durling's requirement that "[b]efore one can begin to combine prior art designs . . . one must find a single reference, 'a something in existence, the design characteristics of which are basically the same as the claimed design,'" 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling's requirement that secondary references "may only be used to modify the primary reference if they are 'so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other,'" id. at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).
C. If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?
D. Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.
E. Given the length of time in which the Rosen- Durling test has been applied, would eliminating or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?
F. 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?
Item E is interesting since the Federal Circuit, in its decisions about judicial exceptions, is all over the map with no consistency between panels which is the primary problem patentees face. One problem facing the court is that historically courts, including the Supreme Court, have varied how they understand the question of design patent obviousness. Until the 1902 design patent law amendment it often appeared that novelty was the sole test. The Patent Office considered that the 1902 Act placed design patents where they belonged, between copyrights and utility patents. The 1902 Act replaced "useful" for design patents with "ornamental." The Act also deleted reference to designs produced byindustry, genius, efforts, and expense which courts had interpreted as indicating a lower threshold for patentability. The impact of the Act was to reduce the issuance of design patents from 1,734 in 1901 to 640 in 1902. As to length of time the Rosen-Durling test being in place, whether it's been 26 years as Durling or 40 years as Rosen, if it's wrong it should be fixed.
The Court should consider the objective of the design patent law as the Supreme Court considered the objective of the enablement requirement in Amgen v. Sanofi and its history. This will lead the Court to a better result but is requires reviewing the over 180-year history of design patents in the United States.
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