Some Post-Argument Thoughts on LKQ vs. GM
“To turn design-patent obviousness into a wide-open, ‘fact-specific,’ ‘industry-specific’ test, as LKQ wants, would create a quagmire that does not comport with how industrial designers learn or create.”
On February 5, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) held its en banc oral argument to reconsider the obviousness test for design patents. Overall, the many judges’ questions indicated a hesitancy to change the current law, as they expressed concern with positions advanced by the patent challenger. Listening to the argument, it became instantly clear that the designer’s voice was missing from the arguments of both parties. The judges had deeply probing and important questions that need the input of a design professional. As an experienced design professional, I penned this article to highlight the designer’s voice by providing answers to several critical questions posed by the court during oral argument.
Some of the most intriguing questions came during the opening argument of LKQ’s counsel, when Judge Reyna asked the following questions:
Looking at all the amicus briefs that we got, and we’ve got quite a few of them, almost all of them, if not all, are within the auto parts and auto industry. Where’s everybody else? Where’s the outcry? Where are the other designers? . . . So aren’t we entering a slippery slope here in trying to fashion a new test under your arguments when we don’t fully understand the implications of what we’re doing?
Judge Reyna’s questions hit the nail on the head. Any modification to basic design-patent law must consider the role of design in many industries—not just the concerns of one company in one narrow industry.
With a strong interest in this case, I took Judge Reyna’s questions as an opportunity to highlight our amicus brief, which answers many questions and concerns presented during the oral argument. The brief was filed by the Institute of Design Science and Public Policy (IDSPP) and 36 distinguished industrial designers, including me.
IDSPP’s Broad Perspective Provides a Response to the Questions
I founded IDSPP to provide a voice for designers across many industries. What designers do and how they create articles of manufacture are important considerations for design-patent law. When the full Federal Circuit decided to hear this case, it was an ideal opportunity for IDSPP, along with the 36 esteemed industrial designers, to provide a broad designer-based perspective from many industries—not just the auto industry. While the attorneys who argued the case provided fine responses to the judges’ questions, many questions lingered about whether the court should retain, modify, or discard the current design patent test for obviousness, known as the Rosen-Durling test.
With that in mind, I provide some thoughts in response to the exchanges among the judges and attorneys during oral argument. The thoughts below flow from IDSPP’s amicus brief and are reflective of the views of skilled and experienced industrial designers. Ultimately, our concern mirrors that of Chief Judge Moore when she observed: “We don’t want to replace one potentially bad test with a different potentially bad test.”
Judge Reyna: ‘Where Are the Designers on This?’
Probably the most important question of the oral argument came from Judge Reyna when he asked about the designer’s perspective on whether the Rosen-Durling test should be changed as proposed by LKQ. Where the design profession comes out on this issue is simply that the basic Rosen-Durling paradigm aligns perfectly with what designers actually do every day in the design of articles of manufacture. The court got it right decades ago. Here is why.
A designer’s creative mental model is to always work from an overall concept, solidify that overall concept shape, and then add detail as required to complete a full articulation of the desired ornamental appearance. We proceed from creating a fully formed overall shape and then add detailed articulation to the ornamental design to complete a design.
In this regard, Rosen-Durling’s requirement of first identifying a primary reference aligns perfectly with what designers do everyday. As we wrote in IDSPP’s amicus brief, “the primary-reference requirement comports with how designs are developed, used, and perceived in the real-world commercial context.” Allowing examination of secondary references to complete an understanding of how such references might impact the overall shape aligns with the designer’s mental model, but in the real-world, designers focus first and foremost on the overall shape. When assessing shape similarity, design experts must proceed based on modern shape-perception research, from the overall shape to salient details.
While IDSPP’s amicus brief was not highlighted during oral argument, I suspect that the judges have considered and will further consider IDSPP’s views. After all, our brief provides the perspective of distinguished designers across industries—thus directly answering Judge Reyna’s questions. Notably, none of the other amicus briefs included a well-articulated view from the design profession. This is an interesting point since the judges specifically asked in their decision granting review for comments addressing more than just legal theory and practice.
Further, we know from modern neuroscience and neuroaesthetics that this is also how consumers (ordinary observers) view products in the marketplace. Designers create ornamental designs in much the same way that consumers view products.
Quite frankly, many designers I know are baffled by LKQ’s argument that a designer simply cobbles together ornamental designs from a pile of disparate references, much akin to a pile of random Lego® pieces. No designer works this way.
How Do Designers Reference Other Design Content and How Does That Influence the Creation of Innovative Design Solutions?
Chief Judge Moore started the questioning by asking how an “analogous-arts requirement” might fit into design-patent law. She also noted her “natural disinclination to employ what feels like the functional language of the analogous arts test for utility patents and drag it over to the design context.” Along similar lines with respect to LKQ’s analogous-arts proposal, Judge Lourie asked, “What problems exist in respect to ornamental design?” These questions highlight the difficulty with imposing an analogous-arts requirement on design-patent law, and also explain why an understanding of how a designer uses design content in the invention process is not the same as solving problems in the utility-patent space.
Designers typically utilize reference materials in two ways: (1) Direct Product Category References, and (2) Indirect Product Category References.
With the first way, a designer captures images and reference materials on competitive products in the marketplace in the same or very similar product category. This form of design reference material is classically also known as “product market analysis.” For instance, in a question to the U.S. Patent and Trademark Office (USPTO) counsel, Judge Hughes invoked the furniture designer as an example. The furniture designer creating new office ergonomic seating would reference such materials to determine detailed technical specifications, material choices, and ergonomic adjustment profiles. They do not merely use the research as a means of picking and choosing ornamental design details that are then simply combined to create an overall ornamental design. Instead, designers work to create unique overall unified ornamental solutions that follow the design theory known as MAYA—“Most Advanced, Yet Acceptable”—which was developed by the father of industrial design, Raymond Loewy.
This creative process is totally different than that of an engineer tasked with solving a functional problem on the same chair design. Engineers “select-and-combine” based on the engineering problem at hand. Engineers have at their disposal a very wide range of engineering concepts that are functional, not ornamental. For example, in the engineering design of the same ergonomic office chair noted above, the engineer working alongside the ornamental designer would be charged with the engineering problem of creating the ergonomic chair mechanical adjustability mechanisms, including seat tilt, rotate, height adjust, seat slant, and backrest tilt.
When solving this engineering problem—which can be appropriately protected by a utility patent—the engineer of ordinary skill in the art investigates a wide range of engineering options that combine cable systems, linkage systems, lever systems, and combinations of these three functional concepts. Specifically, an engineer in this example would routinely turn to aircraft-control systems, bicycle and motorcycle cable and lever engineering, and medical devices that utilize complex cable activation. These options are used by the engineer to create a workable and innovative functional solution by combining existing hardware solutions.
One can see immediately that KSR International v. Teleflex, Inc., at a core structural level, is entirely appropriate for functional engineering solutions because it supports the mental model of the engineer as they go about their everyday task of solving engineering problems by picking and choosing from a vast universe of engineering solutions. At its very heart, KSR further matches the mental model of how engineers work. This approach is validated in utility patent prosecution analysis where patented functional solutions are routinely innovative combinations of existing functional features. The massive universe of engineering parts catalogues, parts vendors, and engineering testing facilities supports this way of working for the engineering discipline. Most important, there are virtually no parts catalogues for ornamental design features.
Ornamentality in the hands of a professional designer aesthetically packages engineering functionality in a manner that produces a complete marketable product. Modern design science has shown that the ornamental design of a product created by a designer comes to represent the entire product, including its underlying functions in the eye and mind of the consumer (ordinary observer).
In the example of the ergonomic office chair, the ornamental designer starts with the chair’s overall shape and continues to refine the overall ornamental shape by applying theory and practice from visual aesthetics, including scale, proportion, alignment, transparency, texture, visual weight, and the like. The ornamental designer works from one unified overall shape concept and never from the act of pasting togethering numerous other ornamental design references from analogous products. This is why the current Rosen-Durling test—which requires focus on an initial overall ornamental design shape—is perfectly aligned with what designers do in the real world. Engineering problem solving and ornamental design are fundamentally different and what constitutes a reliable test for obviousness can never be remotely the same, regardless of the argument put forth by LKQ.
However, obviousness in the context of a design patent is made by one of ordinary skill in the art thinking first and foremost about how the ordinary observer will view the product in the marketplace. Designers create for the eye and mind of the ordinary observer (MAYA) while engineers create for underlying functional performance of the product. In this regard, the obviousness analysis for a design patent is always filtered through the analysis of the designer putting themselves in the eye and mind of the ordinary observer. This is important because the difference defines the problem that design patents vs. utility patents are solving in protecting successful products in the marketplace.
In the second “indirect” approach, a professional designer uses materials to capture broad visual design trends that are present in the marketplace that they then use to set the mood or tone of their design solutions in very general ways. Again, using Judge Hughes’s example, a furniture designer may examine the visual design of modern buildings. This same designer will also likely examine dishes and flatware, fabrics from high fashion brands, automotive designs, and even travel and nature images. All these reference materials are used to establish an “aesthetic mood” for their furniture.
Importantly, the designer does not utilize this category of reference materials to create the actual overall ornamental shape of their furniture, however. The designer does not assemble actual elements from this category of visual research into the ornamental design of their furniture. Instead, a designer uses this material to capture the mood of the possible furniture solutions. Designers organize such material onto panels known not surprisingly as “mood boards.”
In short, and contrary to LKQ’s suggestions, designers do not slice and dice competitive ornamental designs and reassemble them into new overall ornamental designs. Had this been a standard methodology, the commercial world would be flooded by Frankenstein-esque ornamental product designs stitched together from disparate embodiments.
In this critical regard, the Rosen-Durling test is an entirely appropriate decision-making framework for the practice of ornamental product design and the test of obviousness. Designers in training and in professional practice strive to create overall visual-design solutions that are unique when compared to the competition, but still familiar enough to fall within the product category membership.
How Do Designers in Different Industries Assess the Impact of this Case and the Rosen-Durling Test?
One of the more concerning suggestions from LKQ’s counsel is that the Federal Circuit should apply KSR to design patents and then “articulate . . . a fact-specific, industry-specific test.” That is precisely what the court should NOT do.
Moreover, the current Rosen-Durling test adequately accounts for a designer’s core expertise level, regardless of the industry sector in which they produce marketable ornamental design solutions. To the extent that differences exist, the Rosen-Durling test accounts for it by incorporating considerations of the “basically the same” and “so related” requirements. To turn design-patent obviousness into a wide-open, “fact-specific,” “industry-specific” test, as LKQ wants, would create a quagmire that does not comport with how industrial designers learn or create.
Professional design education focuses on the application of theory and practice of aesthetic concepts derived from the visual arts. Designers complete their education as generalists with an understanding of how to apply principles of aesthetics such as proportion, balance, texture, and the like to all consumer products in the real world. When they move into the stream of commerce charged with developing ornamental designs for products, they do so generally in a specific product category like furniture, electronic products, or automotive design. This is important because it is at the specific industry-product category level that designers become focused on applying their generalized ornamental design expertise to industry-specific design requirements. For example, a watch designer applies their generalized aesthetic training at the micro-level, while a designer of an automobile works at a much larger scale with an entirely different set of industry accepted practices. Nonetheless, both designers focus on ornamental design that starts with the overall shape concept followed by the integration of salient details.
What this means objectively in the context of this matter is that all designers apply their core expertise in the same way to meet different industry ornamental design objectives. A designer of an automotive SUV body knows their ornamental design solution must have certain overall proportions, but within that envelope, they are free to create their unique ornamental design solution. The same is true for the watch designer tasked with design of a women’s luxury timepiece.
Designers Produce Biased Decisions When Asked to Determine If a Design is Obvious
An increasing body of research, including in the design arts, shows that experts analyze facts and make decisions differently than novices and those with no professional training in a given discipline. This research is important because it shows that, a design professional defined as one of ordinary skill in the art, when charged with determining if two designs are infringing, obvious or anticipated, will bring to such assessments a high degree of bias.
Some of my research has focused on how the design sensitivity of a skilled designer (the “ordinary designer”) differs from that of the consumer (the “ordinary observer”). Utilizing validated scientific testing methodologies, it is clear that design professionals focus on minute design details when comparing design concepts and in this regard design experts are far more likely to find two very similar designs to NOT be basically the same. In contrast, a consumer without design training who compares the same two products will far more likely find the two designs to be basically the same.
This neuroscience-based finding strongly suggests that the current Rosen-Durling test is aligned with current design professional practice. The test forces one of ordinary skill to first focus on the overall primary reference and to not rely on a stack of marginally related features. Relying on multiple, marginally related references would not comport with how designers actually work in the real world. The current Rosen-Durling test thus reduces expert bias when making a judgment on obviousness by requiring a POSITA to focus first on one overall shape and then, if appropriate, to consider an additional reference, but only if it is “so related to the primary reference.”
LKQ’s Request to Adopt KSR is Merely a Narrow Industry Sector Hoping for Relief Relevant to Design IP
Candidly, it is difficult to view LKQ’s request as anything but a self-interested play to weaken design-patent law and advance its own short-term economic interests. It ought not be lost on the court that there are no other industry-specific groups clamoring for LKQ’s radical proposal to change design-patent law. From the standpoint of how designers work in the real world, there is no objective support for adopting the KSR approach allowing consideration and assembly of many different features into a design concept that would render a design patent obvious.
The court got it right decades ago, and nothing about design as a professional service to industry has changed that would validate a change in the test for obviousness under Rosen-Durling.
With the benefit of years of design experience and wisdom, I can see no benefit to radically changing the Rosen-Durling test. Our amicus brief does propose a slight improvement to the Rosen-Durling test. Perhaps the court will consider our modest proposal, but whatever happens, hopefully the court will not impose the radical changes advanced by LKQ. No designer works the way implied by LKQ’s proposal.
The author thanks Chris Morley, Matthew J. Dowd, Robert J. Scheffel, and Perry Saidman for their work on the amicus brief and assistance with this article.
