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No.: 2021-2348
IN THE UNITED STATES COURT OF APPEALSFOR THE FEDERAL CIRCUIT

LKQ CORPORATION, KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
Plaintiffs-Appellees,v.
GM GLOBAL TECHNOLOGY OPERATIONS LLC,
Defendant-Appellant.
APPEAL FROM THE UNITED STATES COURT OF APPEALS FOR THE FEDRAL CIRCUIT
CASE NO. 21-2348, CIRCUIT JUDGES LOURIE, CLEVENGER, AND STARKBRIEF FOR AMICUS CURIAE NEW YORK INTELLECTUAL
PROPERTY LAW ASSOCIATION IN
SUPPORT OF NO PARTY
CHARLES R. MACEDO
Co-Chair, PTAB Committee
DAVID P. GOLDBERG
Board Liaison, Amicus Briefs Committee, andBoard Liaison, PTAB Committee
AMSTER, ROTHSTEIN & EBENSTEIN,LLP
405 Lexington Ave Floor 48
New York, NY 10174(212) 336-8000
Cmacedo@arelaw.com

August 28, 2023

ROBERT J. RANDO
President
Greenspoon Marder LLP
590 Madison Avenue, Suite 1800
New York, NY 10022
PAUL COLETTI, application pending
Co-Chair, Amicus Briefs Committee
Johnson & Johnson
1 Johnson and Johnson Plaza
New Brunswick, NJ 08933
KSENIA TAKHISTOVA
Co-Chair, Inventor of the Year Committee
7 Ellison Ave.
E. Brunswick, NJ 08816

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TABLE OF CONTENTSI.

INTEREST OF AMICUS CURIAE .................................................................1

II. SUMMARY OF THE ARGUMENT .................................................................3
III.

ARGUMENT....................................................................................................4

A.

Design Patents Utilize the Same Statutory Framework as Utility Patents,
Unless Otherwise Provided ................................................................................... 4

B.

The Federal Circuit’s pre-KSR Jurisprudence on Obviousness ...................... 5C.

The Supreme Court’s Decision in KSR Adopted a More Flexible Approachto Obviousness Under 35 U.S.C. § 103 ............................................................. 6

D.

The Federal Circuit’s Current Approach to Design Patents Is Less Flexible
Than KSR .................................................................................................................. 8E.

If The Federal Circuit Adopts a Flexible Approach to Design Patent
Obviousness, the Approach Should Consider KSR and Develop ThroughCaselaw ...................................................................................................................... 9IV.

CONCLUSION ..............................................................................................11iCase: 21-2348

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TABLE OF AUTHORITIES
Cases

Page(s)Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996) .................................................................. 5, 8, 10
Gorham Co. v. White,
81 U.S. (14 Wall.) 511 (1871) ............................................................................. 9In re Bergel,
292 F.2d 955 (1961) ............................................................................................ 5
KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007) ........................................................ 3, 4, 5, 6, 7, 8, 9, 10, 11
LBT IP I LLC v. Apple Inc.,
Nos. 2022-1613, -1614, -1615, -1616, -1617,2023 U.S. App. LEXIS 14376(Fed. Cir. June 9, 2023) ...................................................................................... 8
LKQ Corp. v. GM Glob. Tech. Operations L.L.C.,
No. 2021-2348, 2023 U.S. App. LEXIS 1412 (Fed. Cir. Jan. 20, 2023) ............ 8
Statutes
35 U.S.C. § 102 .................................................................................................... 3, 4
35 U.S.C. § 103 ................................................................................................ 3, 4, 6
35 U.S.C. § 171 ......................................................................................................... 4
OtherDavid L. Schwartz & Xaviere Giroud, An Empirical Study of Design Patent
Litigation,
72 Ala. L. Rev. 417 (2020) .................................................................................. 10ii

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I.

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INTEREST OF AMICUS CURIAE
The New York Intellectual Property Law Association (“NYIPLA” or“Association”) respectfully submits this amicus curiae brief in support of no party. 1
The NYIPLA is a bar association of attorneys who practice in the area of patent,
trademark, copyright, and other intellectual property (“IP”) law. It is one of thepreeminent regional IP bar associations in the United States. Its members include
in-house counsel for businesses and their organizations, and attorneys in private
practice who represent both IP owners and their adversaries (many of whom arealso IP owners). Its members represent inventors, entrepreneurs, businesses,
universities, and industry and trade associations.
Many of the NYIPLA’s member attorneys actively participate in patent
prosecution, patent licensing, and patent litigation, representing patent applicants,
challengers, licensors, licensees, owners, and accused infringers in the U.S. Patent
and Trademark Office, the marketplace, and the courts—including with respect todesign patents. The NYIPLA thus brings the informed and well-rounded
perspective of stakeholders to patent issues. The NYIPLA, its members, and their

1

Pursuant to this Court’s Order of June 30, 2023 granting the Petition for
Rehearing En Banc, amicus curiae are invited to submit briefs without consent andleave of the Court.
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respective clients share a strong interest in the particular design patent issues
presented in this case.
The arguments set forth in this amicus curiae brief were approved on August23, 2023, by an absolute majority of the officers and members of the Board of
Directors of the NYIPLA (including any officers or directors who did not vote forany reason, including recusal), but do not necessarily reflect the views of amajority of the members of the NYIPLA, or of the law or corporate firms withwhich those members are associated.
No party’s counsel authored this brief in whole or in part. No party or
party’s counsel contributed money that was intended to fund preparing or
submitting this brief. No person other than amicus curiae, its members, or its
counsel contributed money that was intended to fund preparing or submitting thisbrief.
After reasonable investigation, the NYIPLA believes that no officer,
director, or member of the Committee on Amicus Briefs who voted in favor of
filing this brief, nor any attorney associated with such officer, director orcommittee member in any law or corporate firm, represents a party in thislitigation.

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II.

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SUMMARY OF THE ARGUMENT
It is a fundamental principle of patent law that unless the statute otherwise

provides, the same statutory provisions that apply to utility patents also apply todesign patents. As such, the same prior art provisions of Title 35 (Sections 102
and 103) should apply to both design patents and utility patents.
The Association respectfully urges the Federal Circuit to provide clarity as
to whether a more flexible approach as set forth in KSR for utility patents should beapplied to design patents. To the extent this Court determines that the distinction
between utility patent functionality analysis and design patent ornamentality
assessment does not require a different approach to determining obviousness, theAssociation urges this Court to adopt a more flexible approach similar to that
adopted by the Supreme Court for utility patents in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007), to determine obviousness for design patents.
Specifically, the Supreme Court in KSR rejected the Federal Circuit's
restrictive approach to obviousness analysis for utility patents. In this design patentcase, the Federal Circuit's continued application of the so-called Rosen test may beconsidered potentially inconsistent with the Supreme Court's rationale in KSR.
Should the Court find that the flexibility of KSR is applicable to design
patents, the Association urges this Court to adopt a more flexible approach to3

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determining obviousness of design patents, akin to KSR, in which the Rosen test is
one potential rationale for finding obviousness of design patents, but not theexclusive rationale available. Future cases can develop other potential rationales
that could be used for determining obviousness of design patents consistent withthe flexible approach in KSR.
III.

ARGUMENTA.

Design Patents Utilize the Same Statutory Framework as Utility
Patents, Unless Otherwise Provided

Pursuant to the Patent Act, 35 U.S.C. § 171(a), “[w]hoever invents any new,original and ornamental design for an article of manufacture may obtain a patent
therefor, subject to the conditions and requirements of this title.” As a default,
Section 171(b) confirms “[t]he provisions of this title [Title 35] relating to patents
shall apply to patents for design, except as otherwise provided” (emphasis added).
Thus, design patent law statutes require that, by default, the same statutory
provisions for conditions for patentability for inventions apply to design patents
and utility patents.
With respect to prior art, the same Sections 102 and 103 of Title 35 apply toboth design and utility patents. At issue here is how the courts should determine
obviousness under Section 103 for design patents.

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B.

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The Federal Circuit’s pre-KSR Jurisprudence on Obviousness

Prior to the U.S. Supreme Court's decision in KSR, the U.S. Court ofAppeals for the Federal Circuit (and its predecessor courts, the Court of Customs
and Patent Appeals and Court of Claims) adopted two separate tests for
obviousness of utility and design patents. With respect to utility patents, theFederal Circuit and its predecessor courts had adopted the so-called Teaching/
Suggestion/ Motivation to combine test (“TSM”), which was applied in a relatively
restrictive manner. See In re Bergel, 292 F.2d 955, 956–57 (1961) (establishing theTSM test). The TSM test required “demonstrating a teaching, suggestion, or
motivation to combine known elements in order to show that the combination is
obvious.” KSR, 550 U.S. at 418 (discussing Bergel).
For design patents, the Federal Circuit and its predecessor courts, prior to
KSR, had adopted the Rosen test as the sole test for determining obviousness.
Determining obviousness of the ornamental design under the Rosen test firstrequires identifying “a single reference, ‘a something in existence, the design
characteristics of which are basically the same as the claimed design.’” Durling v.
Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Rosen,
673 F.2d 388, 391 (C.C.P.A. 1982)). Second, if a satisfactory primary reference
exists, the court asks: whether an ordinary designer would have modified the5Case: 21-2348

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primary reference to create a design with the same overall visual appearance as theclaimed ornamental design. Id.
One arguable benefit of the Rosen test is predictability—users of the patent
system know what the rule is and how to apply it. However, it does seem to be thekind of strict test, similar to the TSM test for utility patents, that the Supreme Court
has rejected in the past. This Court now has the opportunity to clarify whether
Rosen should remain as the sole test for obviousness of a design patent, or whether
a more flexible approach, in addition to the Rosen test, should be adopted. If it
adopts a more flexible approach now, this Court can preserve the Rosen test as oneof a number of rationales for obviousness and may be able to avoid an outright
rejection of the Rosen test by the Supreme Court in the future.
C.

The Supreme Court’s Decision in KSR Adopted a More Flexible
Approach to Obviousness Under 35 U.S.C. § 103

In KSR Int’l Co. v. Teleflex Inc., the Supreme Court rejected a narrow,inflexible application of the TSM test in favor of a more flexible approach. 550
U.S. 398 (2007). The broad thrust driving the KSR decision was that “[t]hroughout
this Court’s engagement with the question of obviousness, our cases have set forth
an expansive and flexible approach.” Id. at 415. “Rigid preventative rules that denyfactfinders recourse to common sense … are neither necessary under our[obviousness] case law nor consistent with it.” Id. at 421.
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Regarding utility patents, “[t]he obviousness analysis cannot be confined bya formalistic conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit content ofissued patents.” Id. at 419. Indeed, “[i]t is common sense that familiar items may
have obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces of apuzzle.” Id. at 421.
Thus, in KSR, the Supreme Court recognized that any of a variety of relevant
rationales could support a finding of obviousness, including: (1) the “teachingsuggestion-motivation” approach; (2) combining prior art elements according toknown methods to yield predictable results; (3) simple substitution of one known
element for another to obtain predictable results; (4) use of a known technique toimprove similar devices, methods, or products in the same way; (5) applying aknown technique to a known device, method, or product ready for improvement toyield predictable results; (6) the “obvious to try” approach — choosing from afinite number of identified, predictable solutions, with a reasonable expectation of
success; and (7) known work in one field of endeavor may prompt variations ofthat to be used in either the same field or a different one based on design incentives
or other market forces, if the variations are predictable to one of ordinary skill in
the art. KSR Int’l Co., 550 U.S. 398.
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D.

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The Federal Circuit’s Current Approach to Design Patents Is Less
Flexible Than KSR

In response to KSR, the Federal Circuit has adapted its obviousness analysis
for utility patents to be more flexible. See, e.g., LBT IP I LLC v. Apple Inc., Nos.
2022-1613, -1614, -1615, -1616, -1617, 2023 U.S. App. LEXIS 14376, at *18-19(Fed. Cir. June 9, 2023). But, for design patents, this Court has continued to apply
the Rosen test exclusively. See, e.g., LKQ Corp. v. GM Glob. Tech. Operations
L.L.C., No. 2021-2348, 2023 U.S. App. LEXIS 1412, at *11 (Fed. Cir. Jan. 20,2023) (discussing the “long-standing Rosen and Durling tests for obviousness ofdesign patents.”)
Rosen’s requirements for ornamental design patent obviousness analysis
have been viewed as parallel to those of the rigid TSM utility patent test that theSupreme Court rejected in KSR. Rosen’s requirement to identify a single
reference, which is “essentially the same” as the allegedly obvious design patent,
has been considered as the type of “[r]igid preventative rules that den[y]factfinders recourse to common sense” that KSR struck down. 550 U.S. at 421; seealso LKQ, 2023 U.S. App. LEXIS 1412, at *35-36 (Stark, J., concurring) (“Astrong case can be made that the step one Rosen reference requirement is precisely
the type of limiting, rigid rule KSR faulted.”).

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E.

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If the Federal Circuit Adopts a Flexible Approach to Design Patent
Obviousness, the Approach Should Consider KSR and Develop
Through Caselaw

The Supreme Court in KSR criticized the narrow conception of the TSM test
as the sole test for determining obviousness but did not address the Rosen test for
design patents. It is unclear if KSR is limited to utility patents, or if it also applies
to design patents. The Association thus respectfully urges that the Federal Circuitprovide clarity as to whether KSR requires that a more flexible approach toobviousness be applied to design patents.
Should this Court determine that the distinction between utility patentfunctionality analysis and design patent ornamentality visual assessment does not
require a different approach to determining obviousness for each type of patent, theAssociation respectfully urges the Federal Circuit to apply the same types offlexible principles underlying KSR to design patents, taking into consideration thatthe nature of design patents is ornamental rather than functional. As the Supreme
Court noted in Gorham Co. v. White, for design patents “it is the effect upon theeye [of the ordinary observer] which adds value to articles of trade or commerce.”
Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 526 (1871). It is also noteworthy
that the variety of relevant rationales for finding obviousness with utility patents
are based upon analyses that relate to functionality and utility rather than visualappearance as required with design patents.
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Formulating a flexible obviousness standard for ornamental design is a
dynamic process, best formulated through caselaw progression. As noted in thepanel opinion that preceded this en banc hearing, the Federal Circuit has heard
over fifty design patent cases since KSR. In these appeals, the Court hascontinually applied Rosen and Durling. Should the Federal Circuit adopt a more
flexible approach encompassing obviousness tests beyond just Rosen and Durling,
the Federal Circuit will have many opportunities for a flexible caselaw on design
patent obviousness to develop. See generally David L. Schwartz & Xaviere
Giroud, An Empirical Study of Design Patent Litigation, 72 ALA. L. REV. 417(2020) (noting increasing rates of design patent prosecution and litigation in the20th century).
For example, like in KSR, where for utility patents a Person of Ordinary
Skill in the Art (POSA) could combine prior art elements according to known
methods to yield predictable results, similarly, for determining obviousness ofdesign patents, the Court potentially may consider whether a Designer of Ordinary
Skill in the Art (DOSA) could combine prior art design elements according toknown ornamental design methods to yield predictable results (but while avoiding
casting too wide a net of prior art ornamental designs).

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IV.

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CONCLUSION
By their very nature, design patents (which protect ornamental designs) andutility patents (which protect functional and structural inventions) are different. It
is thus unclear whether KSR should apply to design patents. Should this Court
determine that KSR does apply to design patents, it will need to develop an
obviousness standard, like the Supreme Court did in KSR, which adopts a wide
variety of potentially relevant rationales for considering obviousness of a new
ornamental design.
Dated: August 28, 2023

By: /s/ Charles R. Macedo
CHARLES R. MACEDO
Co-Chair of the PTAB Committee
DAVID P. GOLDBERG
Board Laison Amicus Brief Committee, andBoard Liaison, PTAB Committee
AMSTER, ROTHSTEIN & EBENSTEIN,LLP
405 Lexington Ave Floor 48
New York, NY 10174(212) 336-8000
Cmacedo@arelaw.com

ROBERT J. RANDO
President
Greenspoon Marder LLP
590 Madison Avenue, Suite 1800
New York, NY 10022

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PAUL COLETTI
Co-Chair Amicus Brief Committee
Johnson & Johnson
1 Johnson And Johnson Plaza
New Brunswick, NJ 08933
KSENIA TAKHISTOVA
Co-Chair Inventor of the Year Committee
LCM Biosensor Technologies
20 Maple Avenue
East Setauket, NY 11733

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FORM 19. Certificate of Compliance with Type-Volume Limitations

Form 19
July 2020

UNITED STATES COURT OF APPEALSFOR THE FEDERAL CIRCUITCERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATIONS
Case Number: 2023-1460, 23-1559
Short Case Caption: LKQ Corporation, et al. v. GM Global Technology Operations, LLC
Instructions: When computing a word, line, or page count, you may exclude any
items listed as exempted under Fed. R. App. P. 5(c), Fed. R. App. P. 21(d), Fed. R.
App. P. 27(d)(2), Fed. R. App. P. 32(f), or Fed. Cir. R. 32(b)(2).
The foregoing filing complies with the relevant type-volume limitation of theFederal Rules of Appellate Procedure and Federal Circuit Rules because it meets
one of the following:✔

the filing has been prepared using a proportionally-spaced typeface
2,253
and includes __________
words.
the filing has been prepared using a monospaced typeface and includes__________ lines of text.
the filing contains __________ pages / __________ words / __________
lines of text, which does not exceed the maximum authorized by thiscourt’s order (ECF No. __________).

08/28/2023
Date: _________________

Signature:/s/ Charles R. Macedo

Name:Charles R. Macedo

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