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No. 2021-2348

UNITED STATES COURT OF APPEALSFOR THE FEDERAL CIRCUIT
LKQ CORPORATION, KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
Appellants,v.
GM GLOBAL TECHNOLOGY OPERATIONS LLC,
Appellee.
On Appeal from the United States Patent and Trademark Office,Patent Trial and Appeal Board in IPR2020-00534
BRIEF FOR AMICUS CURIAE APPLE INC. IN SUPPORT OF
APPELLEE GM GLOBAL TECHNOLOGY OPERATIONS LLCMARK C. FLEMINGWILMER CUTLER PICKERINGHALE AND DORR LLP
60 State Street
Boston, MA 02109(617) 526-6000
BENJAMIN S. FERNANDEZWILMER CUTLER PICKERINGHALE AND DORR LLP
1225 17th Street, Suite 2600
Denver, CO 80202(670) 274-3135

October 26, 2023

TRACY-GENE G. DURKIN
STERNE KESSLER
GOLDSTEIN & FOX PLLC
1101 K Street N.W.,
10th Floor
Washington, DC 20005(202) 371-2600

MARK D. SELWYN
S. DENNIS WANG
WILMER CUTLER PICKERINGHALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306(650) 858-6000
LAURA E. POWELLWILMER CUTLER PICKERINGHALE AND DORR LLP
2100 Pennsylvania Avenue, N.W.
Washington, DC 20037(202) 663-6000
Attorneys for Amicus Curiae
Apple Inc.

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CERTIFICATE OF INTEREST
Counsel for Amicus Curiae Apple Inc. certifies the following:
1.
Represented Entities. Fed. Cir. R. 47.4(a)(1). Provide the fullnames of all entities represented by undersigned counsel in this case.
Apple Inc.
2.
Real Party in Interest. Fed. Cir. R. 47.4(a)(2). Provide the fullnames of all real parties in interest for the entities. Do not list the real parties ifthey are the same as the entities.
None.
3.
Parent Corporations and Stockholders. Fed. Cir. R. 47.4(a)(3).
Provide the full names of all parent corporations for the entities and all publicly
held companies that own 10% or more stock in the entities.
None.
4.
Legal Representatives. List all law firms, partners, and associatesthat (a) appeared for the entities in the originating court or agency or (b) are
expected to appear in this court for the entities. Do not include those who havealready entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
None.

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5.
Related Cases. Other than the originating case(s) for this case, arethere related or prior cases that meet the criteria under Fed. Cir. R. 47.5(a)?
Yes (file separate notice; see below)

X No

N/A (amicus/movant)If yes, concurrently file a separate Notice of Related Case Information thatcomplies with Fed. Cir. R. 47.5(b). Please do not duplicate information. This
separate Notice must only be filed with the first Certificate of Interest or,
subsequently, if information changes during the pendency of the appeal. Fed. Cir.
R. 47.5(b).
6.
Organizational Victims and Bankruptcy Cases. Provide any
information required under Fed. R. App. P. 26.1(b) (organizational victims incriminal cases) and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R.
47.4(a)(6).
None.
Dated: October 26, 2023

/s/ Mark D. Selwyn
MARK D. SELWYNWILMER CUTLER PICKERINGHALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306(650) 858-6000- ii -

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TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST .................................................................................iTABLE OF AUTHORITIES ....................................................................................iv
INTEREST OF AMICUS CURIAE............................................................................ 1
SUMMARY OF THE ARGUMENT ........................................................................ 3
ARGUMENT ............................................................................................................. 5
I.

THE ROSEN-DURLING FRAMEWORK ADDRESSES THE SPECIAL
NATURE OF DESIGN PATENTS .......................................................................... 5

II.

THE ROSEN-DURLING FRAMEWORK IS FULLY CONSISTENT WITH
LONG-STANDING SUPREME COURT PRECEDENT ............................................. 11

III.

THE GOVERNMENT’S PROPOSED MODIFICATIONSUNNECESSARILY DEVIATE FROM WELL-SETTLED LAW ................................. 16

IV.

THE ROSEN-DURLING FRAMEWORK PROVIDES PREDICTABILITY
AND CONSISTENCY TO THE EVALUATION OF DESIGN PATENTOBVIOUSNESS WHILE PROMOTING DESIGN INNOVATION AND
PROTECTION ................................................................................................... 26

CONCLUSION ........................................................................................................ 29
CERTIFICATE OF COMPLIANCE- iii -

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TABLE OF AUTHORITIESCASES
Page(s)Airbus S.A.S. v. Firepass Corp.,
941 F.3d 1374 (Fed. Cir. 2019) .......................................................................... 15
Campbell Soup Co. v. Gamon Plus, Inc.,
10 F.4th 1268 (Fed. Cir. 2021), cert. denied, 142 S. Ct. 1129
(2022) ...........................................................................................................passim
Campbell Soup Co. v. Gamon Plus, Inc.,939 F.3d 1335 (Fed. Cir. 2019) .................................................................... 12, 19
Corephotonics, Ltd. v. Apple Inc., No. 22-1340,__ F.4th __, 2023 WL 6798899 (Fed. Cir. Oct. 16, 2023) ................................. 15
Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996) .....................................................................passim
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) ......................................................23, 24
Gorham Manufacturing Co. v. White,
81 U.S. (14 Wall.) 511 (1871) ............................................................................ 27
Graham v. John Deere Co.,
383 U.S. 1 (1966) ......................................................................................3, 11, 17
In re Blum,
374 F.2d 904 (C.C.P.A. 1967) .............................................................................. 5
In re Glavas,
230 F.2d 447 (C.C.P.A. 1956) .............................................................................. 6
In re Harvey,
12 F.3d 1061 (Fed. Cir. 1993) .............................................................................. 6
In re Jennings,
182 F.2d 207 (C.C.P.A. 1950) ............................................................................ 11- iv -

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In re Oetiker,
977 F.2d 1443 (Fed. Cir. 1992) .......................................................................... 15
In re Rosen,
673 F.2d 388 (C.C.P.A. 1982) .....................................................................passim
In re Slovish,
769 F.2d 738 (Fed. Cir. 1985) ............................................................................ 15
Kimble v. Marvel Entertainment, LLC,
576 U.S. 446 (2015) ............................................................................................ 26
KSR International Co. v. Teleflex Inc.,
550 U.S. 398 (2007) .....................................................................................passim
MRC Innovations, Inc. v. Hunter Manufacturing, LLP,
747 F.3d 1326 (Fed. Cir. 2014) .................................................................... 13, 14
Patterson v. McLean Credit Union,
491 U.S. 164 (1989) ............................................................................................ 26
Samsung Electronics Co. v. Apple Inc.,
580 U.S. 53 (2016) .............................................................................................. 27
Smith v. Whitman Saddle Co.,
148 U.S. 674 (1893) ......................................................................................20, 21
STATUTES
35 U.S.C. § 103 ..............................................................................................3, 23, 26
OTHER AUTHORITIES
Cosm Chair, Herman Miller,
https://www.hermanmiller.com/products/seating/officechairs/cosm-chairs/ (last visited Oct. 25, 2023) ................................................. 10
Disbursement of Wages, Cuneiform Tablet No. 13, Library ofCongress (2039 B.C.),
https://www.loc.gov/resource/amedscd.2020741382_cf0013/?sp=1&r=-1.898,-0.248,4.795,1.798,0 (last visited Oct. 25, 2023) ............................. 25-v-

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Dyson Purifier Cool Gen1, Dyson, https://www.dyson.com/airtreatment/air-purifiers/purifier-cool-gen1-tp10/white#, last visited
Oct. 25, 2023 ......................................................................................................... 9
Helios on His Chariot, Museum of Fine Arts, Budapest,
https://www.mfab.hu/artworks/176769/ (last visited Oct. 25, 2023) ........... 18, 23
Macias, Amanda, 7 Facts About Coca-Cola's Iconic Bottle, On Its
100th Birthday, Business Insider (Nov. 16, 2015, 1:09 PM),https://www.businessinsider.com/facts-about-coca-colas-iconicbottle ..................................................................................................................... 8
Mossberg, Walter S. & Katherine Boehret, Testing Out the iPhone,Wall Street Journal, June 27, 2007 ....................................................................... 6
Taylor, Eric, Sixth Panel: Torch, Crown with Rays and Ribbons, Whipfrom The Mithraeum of Felicissimus, Ostia Antica,
https://www.ostia-antica.org/regio5/9/9-1.htm (last visited Oct. 25,2023) ................................................................................................................... 23
U.S. Intellectual Property and Counterfeit Goods—Landscape Review
of Existing/Emerging Research, Federal Research Division,
February 2020,
https://www.uspto.gov/sites/default/files/documents/USPTOCounterfeit.pdf (last visited Oct. 25, 2023) ........................................................ 28
U.S. Design Patent No. D11,023 (1879) (Statue of Liberty).......................17, 18, 23
U.S. Design Patent No. D48,160 (1915) (Coca-Cola Bottle) .................................... 8
U.S. Design Patent No. D593,087 (2009) (Original 2007 iPhone) ........................... 7
U.S. Design Patent No. D598,532 S1 (2009) (Dyson Fan) ....................................... 9
U.S. Design Patent No. D874,860 (2020) (Herman Miller Cosm Chair)................ 10
Wikipedia, iPhone (1st generation),
https://en.wikipedia.org/wiki/IPhone_(1st_generation) (last visited Oct.
25, 2023) ............................................................................................................... 7- vi -

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INTEREST OF AMICUS CURIAE1
Design is a foundational principle at Apple. Since its founding in 1976,
Apple has committed to design innovation, developing products that consistently
elicit surprise, delight, and recognition for their reimagination and reinvention of
the look and feel of consumer electronics. Shortly after founding, Apple launched
its Industrial Design Group to bring design in-house and to drive design
innovation. Apple’s early products reflected its design-centric approach. In 1984,
Apple released Macintosh, whose distinctive appearance broke the mold of
traditional personal computer design. Design has remained part of Apple’s DNA
ever since, as reflected by products such as iMac, iPod, iPhone, iPad, Apple
Watch, and recently-announced Apple Vision Pro.
Apple’s successes are due in significant part to its uncompromisingcommitment to design. Rather than make design secondary to technological and/or
manufacturing practicality, Apple puts design at the forefront with significant
investment in design innovation and technological advancement supporting design
implementation. Apple also champions innovation in the design community
through many programs that support independent developers and small and

1This brief is filed pursuant to the Court’s order dated June 30, 2023. No counsel
for any party authored this brief in whole or in part, and no person or entity otherthan amicus and its counsel made a monetary contribution intended to fund the
preparation or submission of this brief.
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midsized enterprises (SMEs). Every year, Apple presents Apple Design Awards
honoring developers for innovative application and game design.
To protect its substantial investments in design, Apple has developed arobust patent portfolio that includes more than four thousand active U.S. design
patents. Design patents are critical for Apple to protect its brand identity by
preventing competitors from copying its designs and counterfeiters from flooding
the market with copycat products. And in developing and defending its designs,
Apple has relied on the robust, balanced, and predictable framework for evaluating
obviousness in design patents set forth in this Court’s Rosen-Durling
jurisprudence. See Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir.
1996); In re Rosen, 673 F.2d 388 (C.C.P.A. 1982).
The Rosen-Durling framework properly addresses the substantial risk ofhindsight bias that would arise if a design patent challenger could show
obviousness by piecing together multiple disparate designs that are merely similar
in concept. Rosen and Durling are also consistent with KSR and long-standing
Supreme Court obviousness precedent. Thus, there is no reason for the Court toabandon the Rosen-Durling framework. Although other amici, including thegovernment (Dkt. 120), suggest clarifications to Rosen-Durling, the proposed
modifications would remove important safeguards against hindsight that are built
into the existing test as applied by this Court. The Court should retain those-2-Case: 21-2348

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safeguards and maintain a predictable patent landscape for U.S. design innovators
by reaffirming Rosen-Durling.
SUMMARY OF THE ARGUMENT
Consistent with long-standing Supreme Court and Federal Circuit precedent,
the Rosen-Durling framework recognizes the special nature of design patents,
while providing a flexible approach to determining whether a design would havebeen obvious under 35 U.S.C. § 103. As such, there is no reason to abandon the
Rosen-Durling framework, on which design-focused industries have relied for
decades. Apple offers the following additional arguments in support of Appellee
GM Global Technology Operations LLC (“GM”).
1.

Rosen-Durling addresses the special nature of design patents, which

renders them more susceptible to hindsight bias during an obviousness analysis.
This Court’s jurisprudence incorporates key safeguards to prevent such hindsightbias, and properly focuses the analysis on the visual impression of the design as awhole.
2.

Rosen-Durling is consistent with the Supreme Court’s decisions in

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and KSR International Co.
v. Teleflex Inc., 550 U.S. 398, 428 (2007). As this Court has explained, RosenDurling’s two-step framework addresses the first three Graham factors upheld in
KSR. See Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1275 (Fed. Cir.

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Filed: 10/26/20232021) (Campbell II), cert. denied, 142 S. Ct. 1129 (2022). Further, Rosen andDurling do not impose a rigid rule; they allow for a flexible analysis of the first
three Graham factors, consideration of multiple prior art references, and relianceon the common sense of the designer of ordinary skill. Moreover, Rosen andDurling resemble other obviousness doctrines that this Court has correctly
continued to apply flexibly post-KSR, including the test for determining whether areference is “analogous art” to be considered for purposes of the utility patent
obviousness inquiry.
3.

Modifying the Rosen-Durling framework as proposed by thegovernment would remove critical safeguards that prevent hindsight bias in thecontext of design patents. See Brief for the United States as Amicus Curiae on
Rehearing En Banc In Support of Neither Party (Dkt. 120) (“Gov. Br.”). Rosen
and Durling already provide for a flexible and balanced approach to assess design
patent obviousness in a manner that is consistent with KSR.
4.

The Rosen-Durling framework has provided predictability andconsistency to the evaluation of design patent obviousness for decades, and asubstantive change in the law would harm design expectations. Design innovators
rely on clear design patent rules to obtain patent protection and to use design
patents to remove counterfeit and copycat products from the marketplace. This
Court should reaffirm the Rosen-Durling framework as the appropriate framework.

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ARGUMENTI.

THE ROSEN-DURLING FRAMEWORK ADDRESSES THE SPECIAL NATURE OF
DESIGN PATENTS
Design patents, by their nature, present unique issues when analyzing

obviousness not typically present for utility patents. For example, claimed designs
are inherently unitary. There are “no portions of a design which are ‘immaterial’or ‘not important.’ A design is a unitary thing and all of its portions are material inthat they contribute to the appearance which constitutes the design.” In re Blum,
374 F.2d 904, 907 (C.C.P.A. 1967). The Court’s Rosen-Durling framework
therefore properly focuses the obviousness analysis on the visual characteristics ofthe design as a whole. It does so, for example, by first ensuring that there is a
primary reference already in existence with “basically the same” overall visual
impression as the claimed design. Durling, 101 F.3d at 103; Rosen, 673 F.2d at
390-391. Only then does a court consider whether it would have been obvious toan ordinary designer to modify the primary reference in a way that would produce
the claimed design. Campbell II, 10 F.4th at 1275. The primary reference
requirement ensures that the claimed design is considered as a whole when
determining the scope and content of the prior art and comparing that prior art tothe claimed design.
Unlike utility patents, which can often be described by their constituent
parts, a design is viewed by its overall visual impression—i.e., the visual-5-Case: 21-2348

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impression that one senses by viewing the complete design. Further, while utility
patent subject matter often involves complex technology or science, a design
patent is limited to its “ornamental design” and its “visual appearance.” In re
Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993) (citing In re Glavas, 230 F.2d 447,
450 (C.C.P.A. 1956)). This renders designs more susceptible to hindsightreconstruction from known shapes and objects—an improper exercise given adesign’s inherently unitary nature. In other words, once a design is known, it canbe tempting to characterize the design as a mere combination of existing shapes
and objects.
The hindsight reconstruction problem is particularly pronounced with regard
to minimalist designs. Some of the most innovative product designs areminimalistic and “simple” in concept, but create unique overall visual impressions.
Apple’s iconic products, such as iPhone, iPad, Mac, and Apple Watch, havereceived industry acclaim for their surprising and striking—yet minimalistic—visual appearances. Consider, for example, the original iPhone’s design, which, at
its introduction, The Wall Street Journal summed up as “simply beautiful.”2

2

Mossberg & Boehret, Testing Out the iPhone, Wall Street Journal, June 27, 2007,
at 3.
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U.S. Design Patent No. D593,087 (2009) (Original 2007 iPhone);https://en.wikipedia.org/wiki/IPhone_(1st_generation) (last visited Oct. 25, 2023).
Other popular product designs exhibit similarly minimalistic qualities. For
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U.S. Design Patent No. D48,160 (1915) (Coca-Cola Bottle); Macias, 7 Facts About
Coca-Cola’s Iconic Bottle, On Its 100th Birthday, Business Insider (Nov. 16, 2015,
1:09 PM), https://www.businessinsider.com/facts-about-coca-colas-iconic-bottle.

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U.S. Design Patent No. D598,532 S1 (2009) (Dyson Fan); Dyson Purifier Cool
Gen1, Dyson, https://www.dyson.com/air-treatment/air-purifiers/purifier-coolgen1-tp10/white#, last visited Oct. 25, 2023.

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U.S. Design Patent No. D874,860 (2020); Cosm Chair, Herman Miller,
https://www.hermanmiller.com/products/seating/office-chairs/cosm-chairs/ (lastvisited Oct. 25, 2023). Although one could try to break these now-existing designs
down into disparate elements, doing so would ignore the specific design innovation
required to achieve the designs for these specific consumer products.
The Rosen-Durling framework is tailored to address these unique aspects ofdesign. It considers the unitary nature of a design by emphasizing that whenanalyzing obviousness, “it is the overall appearance, the visual effect as a whole ofthe design, which must be taken into consideration.” Rosen, 673 F.2d at 390. This
Court explained that, unless the design’s visual characteristics are considered as a
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whole, a court runs the risk of holding an innovative design obvious even where
the prior art contains no actual preexisting design that resembles the patented
design, simply because “individual features from prior art” could be combined in a
way that “would require modification of every individual feature[.]” Id. at 391(quoting In re Jennings, 182 F.2d 207, 208 (C.C.P.A. 1950)). The Rosen-Durling
framework does not arbitrarily impose rigid restrictions, but instead reflects theunique, unitary nature of design patents and promotes continued design innovation.
II.

THE ROSEN-DURLING FRAMEWORK IS FULLY CONSISTENT WITH LONGSTANDING SUPREME COURT PRECEDENTThe Rosen-Durling framework provides the proper obviousness framework

for assessing design patents under the Supreme Court’s Graham factors, whichwere upheld in KSR. Graham, 383 U.S. at 17-18; KSR, 550 U.S. at 407 (“[T]he[Graham] factors continue to define the inquiry that controls.”); see Campbell II,
10 F.4th at 1275 (“In the design patent context, we address the first three Grahamfactors by determining whether a designer of ordinary skill would have combined
teachings of the prior art to create ‘the same overall visual appearance as theclaimed design.’” (quoting Durling, 101 F.3d at 103)). In applying the RosenDurling framework, courts address the first three Graham factorsi.e., the scopeand content of the prior art, the differences between the claims and the prior art,
and the level of ordinary skill in the art, Graham, 383 U.S. at 1, 17-18while- 11 -

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recognizing the unique nature of design patents, which are unitary and protect
ornamental appearance. Campbell II, 10 F.4th at 1275.
Unlike the rigid rule that the Supreme Court found problematic in KSR, thisCourt has applied the Rosen-Durling framework flexibly and has not hesitated touse that framework to invalidate design patents as obvious over prior art designs
where appropriate. For example, the first step of Rosen-Durling (the “basically thesame” prong) ensures that the primary reference and the claimed design cannot
have “substantial differences in the[ir] overall visual appearance” or differencesthat would require “major modifications.” Campbell II, 10 F.4th at 1273. In
Campbell I, this Court held that a prior art reference lacking express disclosure of aclaimed cylindrical object still satisfied the “basically the same” prong of the
Rosen-Durling framework, allowing for consideration of common sense whenevaluating a claimed design. See Campbell Soup Co. v. Gamon Plus, Inc., 939
F.3d 1335, 1335 (Fed. Cir. 2019) (Campbell I); see Durling, 101 F.3d at 103(“[T]he ultimate inquiry under section 103 is whether the claimed design would
have been obvious to a designer of ordinary skill who designs articles of the type
involved.”). This is plainly different from the rigid application of the teachingsuggestion-motivation test that the Supreme Court rejected in KSR for denying“recourse to common sense.” KSR, 550 U.S. at 421 (“Rigid preventative rules that- 12 -

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deny factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.”).
This Court has also flexibly applied the second step of Rosen-Durling,which analyzes whether the secondary references are so related to the primaryreference that the appearance of certain ornamental features in one would suggest
the application of those features to the other. Rosen, 673 F.2d at 391. For
example, in MRC Innovations, Inc. v. Hunter Mfg., LLP, this Court relied on theskill of an ordinary designer in the art to conclude that certain claimed ornamental
features not present in any of the secondary references would have been “deminimis” and an “insubstantial change that would have been obvious to a skilled
designer.” 747 F.3d 1326, 1355 (Fed. Cir. 2014). The Court noted that “onnumerous occasions we have invalidated design patents despite the inclusion ofornamental features that were entirely absent from prior art designs” by findingthat the features would have been de minimis to an ordinary designer in the art. Id.
(collecting cases).
Further, while KSR explained that the obviousness analysis should consider“common sense,” KSR noted that it still “can be important to identify a reason thatwould have prompted a person of ordinary skill in the art to combine the elements
as the new invention does.” KSR, 550 U.S. at 401. Consistent with KSR, theRosen-Durling framework considers whether the secondary references “are so- 13 -

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related [to the primary reference] that the appearance of certain ornamental
features in one would suggest the application of those features to the other.”
Rosen, 673 F.2d at 391 (emphasis added).
The Rosen opinion itself applied a flexible approach to the obviousness
inquiry consistent with KSR. Rosen considered a broad scope of prior art furniture
designs that “would reasonably fall within the scope of the knowledge of thedesigner of ordinary skill” and “realm of knowledge.” Rosen, 673 F.2d at 390.
The Court also noted that the analysis considers whether “features mightreasonably be interchanged with or added from those in other pertinent references
to achieve [the claimed] design.” Id. at 391 (emphasis added). Rosen’s analysis
thus reflects an “expansive and flexible approach” described in KSR. KSR, 550
U.S. at 415.
The mere fact that the Rosen-Durling framework involves a structured twostep inquiry does not mean it is invalid under KSR. KSR does not prohibit astructured framework that sets forth criteria for evaluating obviousness. This
Court has continued to apply a structured approach to the four-factor Graham test
in other contexts. For example, when analyzing secondary considerations, theCourt requires that the patentee carry the “burden of production to demonstrate anexus between the claimed design and the secondary considerations.” MRC
Innovations, 747 F.3d at 1336. In a similar vein, Rosen-Durling requires the patent- 14 -

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challenger to carry the burden of identifying a primary reference before proceeding
to the second step of the framework.
Indeed, the Rosen-Durling framework resembles other obviousness-related
inquiries that continue to apply after KSR. For instance, the “analogous art”
doctrine sets forth a prerequisite test for utility patent obviousness that must be
satisfied for a reference even to qualify as prior art: “A reference qualifies as priorart for an obviousness determination only when it is analogous to the claimed
invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019);
see also Corephotonics, Ltd. v. Apple Inc., No. 22-1340, __ F.4th __, 2023 WL
6798899, at *7 (Fed. Cir. Oct. 16, 2023) (“Art that is ‘too remote’ from the patents
being attacked cannot be treated as prior art.” (citing In re Slovish, 769 F.2d 738,
741 (Fed. Cir. 1985))); id. (“The combination of elements from non-analogous
sources, in a manner that reconstructs the applicant’s invention only with thebenefit of hindsight, is insufficient … [for] obviousness.” (quoting In re Oetiker,
977 F.2d 1443, 1447 (Fed. Cir. 1992))). Like Rosen’s primary reference
requirement, in the utility patent context, if no analogous art is identified, theobviousness inquiry will not proceed. Airbus, 941 F.3d at 1379 (reference can beused for obviousness “only when it is analogous” (emphasis added)).
Like the analogous art doctrine, Rosen-Durling also identifies ground rules
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reference must have “basically the same” visual impression as the claimed design,
and any secondary references must be “so related [in appearance to each other] thatthe appearance of certain ornamental features in one would suggest the applicationof those features to the other.” Durling, 101 F.3d at 103, 105; Rosen, 673 F.2d at
391. This is no different, whether in degree or kind, from the analogous-art
requirement that this Court has continued to apply in determining the universe of
potentially invalidating references for utility patents following KSR.
III.

THE GOVERNMENT’S PROPOSED MODIFICATIONS UNNECESSARILY
DEVIATE FROM WELL-SETTLED LAW
In its amicus brief, the government seeks to clarify Rosen-Durling, but indoing so, proposes modifications that would shift the focus to individual aspects ofa design or abstract concepts, rather than the overall visual impression of a design.
The government suggests three modifications: (1) replacing the “basically the samevisual impression” language with “broadly have a similar overall visual effect”; (2)allowing the obviousness analysis to continue even without a single primaryreference; and (3) jettisoning the “so related” requirement. Gov. Br. 26-29. The
suggestion of changing “basically the same” to “broadly hav[ing] a similar overallvisual effect” introduces significant risk of hindsight bias. Moreover, as explained
below, each proposed modification would remove safeguards that Rosen-Durlingrecognized prevent hindsight bias in the context of evaluating design patents—aconcern that the Supreme Court reaffirmed in KSR as a proper consideration under- 16 -

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Section 103. KSR, 500 U.S. at 421 (“A factfinder should be aware, of course, ofthe distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” (citing Graham, 383 U.S. at 36)).
First, eliminating Rosen-Durling’s requirement to identify a primaryreference with “basically the same visual characteristics,” and instead allowing useof a primary reference that merely “broadly ha[s] a similar overall visual effect”(Gov. Br. 12), invites hindsight into the obviousness analysis. Doing so would
allow a challenger to assert obviousness based on prior art that is merely
conceptually similar to the claimed design or even an arbitrary subset of theclaimed design, but does not disclose a similar overall visual impression. The
challenger would undoubtedly use hindsight to seek a conclusion that it would
have been obvious to modify the primary reference to look like the claimed design.
In Durling, this Court properly rejected the defendant’s attempt to use thisapproach. See Durling, 101 F.3d at 103-105 (holding that district court erred byfocusing on the “general concept of a sectional sofa with integrated end tables”
instead of the design’s visual appearance as a whole).
Take, for example, a design patent from 1879 entitled “Liberty Enlightening
the World,” more commonly known as the Statue of Liberty. See U.S. Design
Patent No. D11,023 (1879). Under the government’s proposed rule, a patentchallenger could rely on a prior art Greek sculpture of Helios to invalidate the- 17 -

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patent by arguing that it is a proper starting point because it “broadly ha[s] asimilar overall visual effect” as the Statue of Liberty:

See U.S. Design Patent No. D11,023 (1879) (Statue of Liberty); Helios on His
Chariot, Museum of Fine Arts, Budapest, https://www.mfab.hu/artworks/176769/(last visited Oct. 25, 2023). As shown above, the Helios sculpture is similar inconcept to the Statue of Liberty (e.g., it depicts a human figure wearing robes anda multi-pointed crown), but it conveys a very different overall visual impression.

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Under the current Rosen-Durling analysis, Helios would not be a proper starting
point to invalidate the Statue of Liberty design because it does not have “basicallythe same” overall visual impression. Unlike the Statute of Liberty, Helios is inmotion, the horses and chariot dominate the sculpture, and Helios’ body postureand orientation are different from Lady Liberty’s. But under the government’s“broadly similar” test, which allows for many more differences between the
primary reference and the claimed design, there is enhanced risk of relying on
hindsight to diminish the differences between Helios and the claimed design toconclude that Helios is a proper starting reference.
When properly applied, the “basically the same” requirement is not rigid,
contrary to the government’s assertion. Gov. Br. 18-25. As the Court recognizedin Campbell I, a factfinder can still find a proper primary reference, even if it lacks
all the claimed design elements. Campbell I, 939 F.3d at 1340-1341 (holding thatprior art showing a dispenser design was a proper primary reference, even though
it did not expressly show the claimed can within the dispenser). Rosen itself
referred to the primary-reference requirement as a “starting point,” thus allowing—
and, in fact, requiring—further analysis based on one or more secondary references
if the starting point is “something in existence, the design characteristics of which
are basically the same as the claimed design ….” Rosen, 673 F.2d at 391. And, as
explained above, the “basically the same” analysis allows consideration of the- 19 -

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ordinary designer’s creativity and common sense, with which KSR was concerned.
See supra Section II.
Further, while LKQ and certain amici contend that the “basically the same”
test of Rosen-Durling conflicts with Smith v. Whitman Saddle Co., 148 U.S. 674,
681 (1893), that is not the case. See Appellants Br. 24-25; Gov. Br. 21-26;
Automotive Body Parts Association Br. 9. The design patent in Whitman Saddle
was obvious under Rosen-Durling’s framework. Whitman Saddle involved apatented design that essentially combined the front half of one prior art saddle withthe rear half of another prior art saddle. The Supreme Court highlighted evidence
that “there were several hundred styles of saddles or saddletrees belonging to theprior art, and that it was customary for saddlers to vary the shape and appearanceof saddletrees in numerous ways, according to the taste and fancy of thepurchaser.” 148 U.S. at 681. The Court determined that evidence showed both
halves of the claimed saddle design were used on a variety of prior art saddles andthat “the addition of a known cantle to a known saddle, in view of the fact thatsuch use of the cantle was common,” did not produce a patentable design. Id.
None of this undermines the Rosen-Durling framework. In Whitman Saddle,
the Supreme Court identified two references, the Granger and Jenifer saddles, that,when combined, would have resulted in the claimed design. The two saddles wereso similar to the claimed design that either reference could have served as a

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primary reference that was “basically the same” as the claimed design, with theother reference being “so related” to the first as to suggest combining the different
feature from the second reference with the first. After finding one of the two
saddles a primary reference, the trier of fact could “determine whether, using
secondary references, an ordinary designer would have modified the primaryreference to create a design that has the same overall visual appearance as theclaimed design.” Campbell II, 10 F.4th at 1275. While the Supreme Court did not
expressly identify the Granger saddle using the term “primary reference,” itsanalysis focused on “difference[s] compared with the Granger saddle,” and wasthus consistent with treating Granger as the primary reference that had “basicallythe same” visual appearance. Whitman Saddle, 148 U.S. at 682 (in summarizing
its analysis, stating that “the design of the patent had two features of difference ascompared with the Granger saddle, one the cantle, the other the drop” (emphasis
added)); see also id. at 680 (describing differences of claimed design from Granger
saddle); id. (noting that accused saddle was “substantially the Granger saddle
with the Jenifer cantle” (emphasis added)). Thus, there is no analyticalinconsistency between Rosen-Durling and Whitman Saddle.
Second, the Court should not adopt the government’s suggestion that adesign patent may be obvious even in the absence of an adequate primaryreference. Gov. Br. 12, 23-26. Again, taking the design patent for the Statue of- 21 -

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Liberty as an example, under the government’s proposed rule, without a starting
reference, a patent challenger could take individual features from the Helios
sculpture and combine them with individual features from a prior art mosaic toinvalidate the design patent by piecing together the individual concepts in each of
the prior art designs.

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See U.S. Design Patent No. D11,023 (1879) (Statue of Liberty); Helios on His
Chariot, Museum of Fine Arts, Budapest, https://www.mfab.hu/artworks/176769(last visited Oct. 25, 2023); Taylor, Sixth Panel: Torch, Crown with Rays andRibbons, Whip from The Mithraeum of Felicissimus, Ostia Antica,
https://www.ostia-antica.org/regio5/9/9-1.htm (last visited Oct. 25, 2023). By
allowing the continued applicability of additional prior art references even withouta primary reference that is “basically the same” in overall visual impression as theclaimed design, the government’s proposed rule again invites hindsight, because achallenger could combine any number of known design concepts to form theclaimed design. See Gov. Br. 25-29. In so doing, the government’s test would
shift the focus from the claimed design as a whole to its individual features,contrary to the statute’s instruction that obviousness be considered with regard to“the claimed invention as a whole.” 35 U.S.C. § 103.
The government’s proposed test also conflicts with this Court’s en bancholdings in the infringement context. In Egyptian Goddess, this Court addressed
whether, for purposes of determining infringement of design patent, a claimed
design’s “points of novelty” should be identified for comparison with an accuseddesign. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 671 (Fed. Cir. 2008)(en banc). This Court held that dissecting a design into one or more “points ofnovelty” would improperly shift the focus to a “single specified feature of the- 23 -

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claimed design, rather than on the proper inquiry, i.e., whether the accused design
has appropriated the claimed design as a whole.” Id. at 677. The government’s
proposed test would create a divide between how the same claimed design isunderstood for infringement on one hand and for invalidity on the other.
Third, the Court should not adopt the government’s proposal to jettison the“so related” requirement—a proposal the government states is necessary “to allow
the decisionmaker to take into account the ordinarily skilled designer’s experience,creativity, and common sense, when considering combinations involving the basereference.” Gov. Br. 12. As explained above, the Rosen-Durling framework
already permits the decisionmaker to consider the ordinarily-skilled designer’scommon sense and creativity when determining whether the ornamental features ofsecondary references would suggest their application to the primary reference. See
supra Section II. And the “so related” requirement is critical to prevent the use ofhindsight in combining ornamental features from visually unrelated prior art,
similar to the purpose of the analogous art doctrine for utility patents. See id.
In the Statue of Liberty example, one of the many differences between the
Statue of Liberty and the Helios sculpture is that the latter is not holding a torch ora tablet. Without the “so related” requirement, a challenger could rely on designs
wholly unrelated in appearance to the Helios sculpture to provide teachings of the- 24 -

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missing features that one would only combine with the benefit of having first seen
the Statute of Liberty design.

As depicted above, the missing elements in the Helios sculpture incomparison to the Statue of Liberty can be found in an unrelated mosaic, whichshows a torch, and an unrelated cuneiform tablet. Disbursement of Wages,
Cuneiform Tablet No. 13, Library of Congress (2039 B.C.).3 If the government’s
proposal to “jettison” the “so related” requirement were adopted, these disparate
elements taken from three designs that are visually unrelated to each other could be3https://www.loc.gov/resource/amedscd.2020741382_cf0013/?sp=1&r=-1.898,0.248,4.795,1.798,0 (last visited Oct. 25, 2023).
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used to recreate the Statue of Liberty based purely on hindsight—not on any
suggestion of visual similarity in the works themselves.
In sum, the Rosen-Durling framework should be preserved and not bealtered in the manner suggested by the government, as its proposed modifications
would invite hindsight bias at the expense of the Patent Act’s intended protectionof a design “as a whole.” 35 U.S.C. § 103.
IV.

THE ROSEN-DURLING FRAMEWORK PROVIDES PREDICTABILITY ANDCONSISTENCY TO THE EVALUATION OF DESIGN PATENT OBVIOUSNESSWHILE PROMOTING DESIGN INNOVATION AND PROTECTION
A final important consideration is the longevity of the Rosen-Durling

framework, which has provided predictability to the evaluation of design patent
obviousness for decades, and on which innovators in design-heavy industries haverelied to protect their investments and brand value.
As the Supreme Court has repeatedly observed, stare decisis is of particularimportance in interpretation of statutory schemes, as Congress can always amend
the statute if it sees fit. See Kimble v. Marvel Entm’t, LLC, 576 U.S. 446, 456(2015) (explaining that “stare decisis carries enhanced force when a decision, …
interprets a statute” and “unlike in a constitutional case, critics of our ruling cantake their objections across the street, and Congress can correct any mistake itsees”); Patterson v. McLean Credit Union, 491 U.S. 164, 172-173 (1989)(“Considerations of stare decisis have special force in the area of statutory- 26 -

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interpretation, for here, unlike in the context of constitutional interpretation, thelegislative power is implicated, and Congress remains free to alter what we havedone.”). Here, the Rosen-Durling framework has long endured without any
criticism from Congress. Doing so would cause unnecessary uncertainty in a wellfunctioning area of the patent law.
The U.S. patent system provides incentives for innovations and public
disclosures that contribute to further innovation. As the Supreme Court explained
over a century ago, “the grant of patents for designs were plainly intended to giveencouragement to the decorative arts[.]” Gorham Mfg. Co. v. White, 81 U.S. (14Wall.) 511, 524 (1871). Design patents contain valuable aesthetic ornamental
features of a commercial product that “may enlarge the demand for it, and may be
a meritorious service to the public.” Id. at 524-525; see also Samsung Elecs. Co. v.
Apple Inc., 580 U.S. 53, 55 (2016) (“The federal patent laws have long permitted
those who invent designs for manufactured articles to patent their designs.”).
Rosen-Durling’s predictable framework for design patent validity allows
innovators and businesses of all sizes to rely on patent protection to not only
continue protecting existing products but to develop new products. It also
incentivizes investment in related engineering advancements required to supportand implement those designs, such as new tooling and infrastructure. On the other
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difficult for the USPTO and courts to apply rules in a consistent manner, leading toless predictable outcomes and increased litigation.
Such unpredictability, in turn, may further embolden copycats to create
counterfeits and knockoffs of innovative designs, flooding the market withproducts that harm brand value. For example, the original iPhone design is as
immediately recognizable to a consumer as the registered Apple logo such thatthey both contribute to Apple’s brand identity. Indeed, it is so recognizable that
infringers can (and do) sell knockoffs that appear to be iPhones, even without
using “Apple” or the Apple logo on the product or as part of the knockoff listing
on online marketplaces. Low-quality counterfeits and knockoffs threaten brandidentity by creating subpar product experiences that can impact customer loyalty
and consumer safety.4
In addition to iPhones, infringers sell counterfeit and knockoff power
products, such as phone chargers, that copy Apple’s patented designs and lead
consumers to believe they are purchasing genuine Apple products. But those
products often do not meet the quality or safety standards required by Apple,

4

See U.S. Intellectual Property and Counterfeit Goods—Landscape Review of
Existing/Emerging Research, Federal Research Division, February 2020 at 11,
https://www.uspto.gov/sites/default/files/documents/USPTO-Counterfeit.pdf (lastvisited Oct. 25, 2023).
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causing customers of those products to be faced with economic risk and potential
physical harm from unsafe, low-quality products.
Without appropriate design patent protection for innovative product designs,
Apple and other innovative companies across all industries and of all sizes would
have limited IP tools available to them to stop knockoffs and counterfeiters thatcopy a product’s designs. Strong and predictable design patent protection is
critical to stopping these bad actors.
CONCLUSION
For the foregoing reasons, this Court should affirm the Rosen-Durling
framework for analyzing obviousness in the design patent context.

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Respectfully submitted,/s/ Mark D. Selwyn
MARK D. SELWYN
S. DENNIS WANG
WILMER CUTLER PICKERINGHALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306(650) 858-6000

MARK C. FLEMINGWILMER CUTLER PICKERINGHALE AND DORR LLP
60 State Street
Boston, MA 02109(617) 526-6000
BENJAMIN S. FERNANDEZWILMER CUTLER PICKERINGHALE AND DORR LLP
1225 17th Street, Suite 2600
Denver, CO 80202(670) 274-3135

TRACY-GENE G. DURKIN
STERNE KESSLER
GOLDSTEIN & FOX PLLC
1101 K Street N.W., 10th Floor
Washington, DC 20005(202) 371-2600

LAURA E. POWELLWILMER CUTLER PICKERINGHALE AND DORR LLP
2100 Pennsylvania Avenue, N.W.
Washington, DC 20037(202) 663-6000

Attorneys for Amicus Curiae
Apple Inc.

October 26, 2023

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CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
LIMITATIONS
The foregoing filing complies with the relevant type-volume limitation of
the Federal Rules of Appellate Procedure and Federal Circuit Rules because:
1.

The filing has been prepared using a proportionally-spaced typeface

and includes 5,323 words.
2.

The brief has been prepared using Microsoft Word for Office 365 in

14-point Times New Roman font. As permitted by Fed. R. App. P. 32(g), theundersigned has relied upon the word count feature of this word processing system
in preparing this certificate.

/s/ Mark D. Selwyn
MARK D. SELWYNWILMER CUTLER PICKERINGHALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306(650) 858-6000
October 26, 2023