A Collision of Precedents: Assessing the <em> LKQ Corp. v. GM Global Technology Operations LLC </em> Patent Case
For the first time since 2018, the Court of Appeals for the Federal Circuit sat en banc to review a patent case. LKQ Corp v. GM Global Technology Operations LLC marks a pivotal battle over design patents and spotlights the debate surrounding existing Court precedents.
Attribution
Brief for the United States as Amicus Curiae on Rehearing En Banc in Support of Neither Party at 8, LKQ Corp. v. GM Glob. Tech. Operations LLC, 71 F.4th 1383 (Fed. Cir. 2023) (No. 2021-2348).
Patent law centers on a constantly evolving foundation of precedents chasing to meet the acceleration of modern invention. The recent case of LKQ Corp v. GM Global Technology Operations LLC, which made its way to the U.S. Court of Appeals for the Federal Circuit, stands as a testament to this reality. The case centers on the validity of a design patent held by General Motors (GM) for a front vehicle fender and the implications of the prevailing tests for obviousness in design patents.
LKQ was a licensed aftermarket auto parts maker for GM. When their contract ended in February 2022, GM notified LKQ that the continued production of their designs infringed GM’s patents. LKQ then petitioned the Patent Trial and Appeals Board (PTAB) for inter pates review of the front vehicle fender (‘625 patent in question), asserting it was anticipated by the “Lian” patent either alone or in combination with the design of the 2010 Hyundai Tucson. LKQ argued that the earlier designs created the same visual impression as GM’s ‘625 patent, and thus, the patent was invalid as obvious. However, both the PTAB and a subsequent two-judge panel at the Federal Circuit ruled in favor of GM, upholding the patent’s validity.
The Federal Circuit made the rare decision to rehear the case en banc, marking the first such instance in a patent case since 2018. Central to this decision was the debate regarding the validity of the Rosen-Durling test, a precedent established by the Federal Circuit for assessing obviousness in design patents. Under In re Rosen, the test requires the challenging party to identify a prior art reference “basically the same as the claimed design,” also called a “Rosen reference.” Then, under Durling v. Spectrum Furniture Co., the challenger must overcome any difference between the “Rosen reference” and the challenged design, pointing to additional prior art “so related” that they create “the same overall visual appearance as the claimed design.” LKQ and supporting amicus briefs argue the test sets an excessively high bar, allowing patent holders to protect designs that offer only increment and non-innovative changes over existing ones.
In the recent oral arguments held on February 5, 2024, both sides presented their compelling arguments. Mark Lemley, attorney for LKQ, argued that the Rosen-Durling test is inconsistent with the Supreme Court’s precedent set forth in KSR Int’l Co. v. Teleflex Inc., which provided a more flexible approach to determining the obviousness of utility patents. In KSR, the Court stated that a patent combining prior arts could be considered obvious if a person of ordinary skill would see the combination of prior arts as obvious. Exceptions to this rule exist where there are secondary factors, such as commercial success or long-felt market need, which courts consider when determining if there is an area left unfulfilled or unaddressed by previous patents, even if the design appears obvious. Judges were quick to question applying a utility patent standard to a design patent case as design “problems” differ between utility and aesthetics. Lemley held that LKQ is not arguing for cut and dry application of KSR but rather for the ability to use the view and knowledge of “one of ordinary skill in the art” to challenge a patent, which Rosen-Durling does not allow for.
The USPTO was represented in oral arguments by Acting Solicitor Farheena Rasheed, who agreed the law should be expanded but not as far as suggested by LKQ. Rasheed urged the court “not to replace one rigid test with another.” Joe Herriges for GM argued to preserve the status quo and reject LKQ’s overstatements regarding the rigidity of the Rosen-Durling test. The en banc panel expressed skepticism. However, no replacement test was articulated during the arguments.
The outcome remains uncertain as the Federal Circuit deliberates on this pivotal case. The decision could reshape the landscape of design patents and influence the balance between innovation and competition in the automotive industry and beyond. The clash between established precedents and evolving legal standards highlights the dynamic nature of intellectual property law. The Federal Circuit now has the opportunity to affirm the use of the Rosen-Durling test for design patents, outline additional qualifications to question obviousness, or overrule the test altogether.