Amici for IP and the automotive industries require the full CAFC to commit to what works in design patents

Amici for IP and the automotive industries require the full CAFC to commit to what works in design patents

“Once again, the aftermarket auto parts industry, with the support of insurance companies that stand to benefit alongside it, is seeking a radical change in design patent law that would allow it to evade patent rights with impunity.” – About Hyundai Motor Company

Design patentLate last week, more than a half-dozen amicus briefs were filed in support of General Motors’ global technology operations in a case that would change design patent law. Most recent summaries are generally encouraged On the bench US Court of Appeals for the Federal Circuit (CAFC) to keep the law intact in order to avoid major disruptions.

In June this year, the FCA agreed to a rare review of its January 2023 decision in… LKQ Corporation v. GM Global Technology Operations, Which affirmed the ruling of the Patent Trial and Appeal Board (PTAB) that LKQ failed to demonstrate by a preponderance of the evidence that GM’s design patent was foreseeable or obvious.

The CAFC opinion explained that “the application of the tests established in Rosin And Durling“, the Board found that LKQ failed to establish a sufficient basis of reference and therefore failed to establish clarity by a preponderance of the evidence.” The court agreed with the PTAB and further held that “(we), as a body, cannot overrule Rosin or Durling Without clear guidance from the Supreme Court.” But in June, the court approved the comprehensive review.

What’s called Roisin Dorling The test requires that, first, under In re Rosen (CCPA, 1982), courts determine a prior art reference “whose design characteristics are essentially the same as the claimed design.” Next, under Dorling v. Spectrum Furniture Company101 F.3d 100, 103 (Fed. Cir., 1996)), if such a reference is identified, the court considers whether it can be modified based on other references to achieve “the same general visual appearance as the claimed” design. “

LKQ argued in its petition for a court rehearing in March that the CAFC and its predecessor tribunal had been applying a “rigid approach” to determining the obviousness of design patents for 40 years, and that the High Court’s 2007 ruling in KSR International v. Teleflex, Inc. Expressly vetoed such an approach.

In August, 10 friends favored LKQ or neither party. Six of the briefs were filed by the auto repair and insurance industries and generally called for repeal Roisin Dorling Completely tested. The memorandum submitted by the United States proposed that the agreement be largely preserved Roisin Dorling framework, but clarifying the framework to essentially replace “Rosen’s terminology” itself “with language that directs the examiner or other fact-finder to inquire whether there is a suitable starting point or broadly based reference that has a similar overall visual impact as the claimed design.”

Latest Amici: Leave well enough alone

However, summaries last week mostly cautioned against changes to testing. The Intellectual Property Owners Association (IPO) has called for cancellation or substantial modification Roisin Dorling The test is “undesirable and unnecessary,” and he said it would create too much uncertainty for examiners and patent owners. If the court decided to do so, the IPO suggested resorting to Graham v. John Deere Corporation of Kansas City383 US 1 (1966) as a “high-level foundational framework for evaluating the obviousness of all types of inventions covered by patent law,” rather than relying on KSR. With a ‘proper design-oriented focus’, the Graham Title, as reported Whitman saddle and subsequent appellate cases that formed the basis Roisin Dorling“It would be a practical, albeit less predictable, alternative framework for determining the clarity of design patent claims…” the brief added.

The International Trademark Association (INTA) focused its brief on Question 3(e) posed by the FCA, which asks “Given the length of time it takes Roisin Dorling If the test were applied, would eliminating or modifying the design patent obviousness test create uncertainty in an area of ​​law that would otherwise be settled?”

The answer to that question is clearly yes, INTA said, and that significantly modifying or eliminating the current test would not only create uncertainty in design patent law but would also “upset the carefully established balance between design patentability and trade dress protection,” To the detriment of intellectual property owners and consumers alike.

“There is no reason to give up,” Apple, Inc.’s brief said Roisin Dorling The framework that design-focused industries have relied on for decades. Apple focused in particular on the compromise the US government outlined in its amicus brief, which the company said “poses a significant risk of hindsight bias.” Apple listed several examples of how it believed the government’s approach could go wrong, including one that claimed a patent competitor could have relied on an earlier Greek sculpture of Helios to invalidate a Statue of Liberty design patent under the government’s approach “by saying… That it was an appropriate starting point because it “broadly possesses a similar overall visual impact” as the Statue of Liberty.

Hyundai Motor and Kia filed a more accusatory memorandum. The petition “is part of a larger, deliberate campaign by the aftermarket parts industry that is openly hostile to automobile manufacturers’ design patent rights,” the amicus curiae said. The summary continues:

“Once again, the aftermarket auto parts industry, with the support of insurance companies that stand to benefit alongside it, is seeking a radical change in design patent law that would allow it to evade patent rights with impunity.”

“The gist of the new briefs is: If it ain’t broke, don’t fix it,” said Chris Carani of McAndrews Heald & Malloy, who wrote the ASIL brief that supports neither side.

Karani noted that the latest round of briefs represents a “much broader scope” that includes major intellectual property associations, designers, and design-focused companies.

Furthermore, Karani said the approach taken by the latest briefs “is largely consistent with the positions of the US Attorney’s Office and the International Bar Association, both of which have not endorsed either party, and call for maintaining the current system but with some clarifications.”

This may suggest to the Court that there is more support for a watered-down or status quo approach than for comprehensive reform.

Here are links to additional summaries filed last week that were not discussed above:

Ford Motor Company
Alliance for Automotive Innovation and Rivian Automotive, Inc.
Society of Industrial Designers of America

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Author: gstockstudio
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