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LKQ v. GM - Professors Brief
LKQ v. GM - Professors Brief
Appellants,
v.
GM GLOBAL TECHNOLOGY OPERATIONS LLC,
Appellee.
Appeal from the United States Patent and Trademark Office Patent
Trial and Appeal Board in PGR2020-00055 (JJ. Ken B. Barrett, Scott
A. Daniels, and Robert L. Kinder)
Phillip R. Malone
JUELSGAARD INTELLECTUAL
PROPERTY AND INNOVATION
CLINIC
Mills Legal Clinic at Stanford Law School
559 Nathan Abbott Way
Stanford, California 94305-8610
Tel: (650) 724.1900
[email protected]
Pursuant to Federal Circuit Rules 29(a) and 47.4, counsel for amici curiae
certifies that:
1. The full names of the amici I represent are: Intellectual Property Law
2. The name of the real party in interest (if the party named in the caption
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the amici curiae I represent are: None.
4. The names of all law firms and the partners or associates that appeared
for the amici I represent or are expected to appear in this Court (and who have not
5. The title and number of any case known to counsel to be pending in this
or any other court or agency that will directly affect or be directly affected by this
court’s decision in the pending appeal: LKQ Corp., et al. v. GM Global Technology
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and (c) that identifies organizational victims in criminal cases and debtors and
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TABLE OF CONTENTS
CONCLUSION......................................................................................................... 9
CERTIFICATE OF SERVICE
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TABLE OF AUTHORITIES
Page(s)
Cases
In re Clay,
966 F.2d 656 (Fed. Cir. 1992) ............................................................................. 8
Gorham v. White,
81 U.S. (14 Wall.) 511 (1871) ......................................................................... 4, 5
In Re Nalbandian,
661 F.2d 1214 (C.C.P.A. 1981) (en banc) ........................................................... 5
In re Rosen,
673 F.2d 388 (C.C.P.A. 1982) (en banc) ............................................... 6, 7, 8, 10
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Statutes
35 U.S.C. § 103..................................................................................................... 3, 5
35 USC...................................................................................................................... 2
Act of Aug. 29, 1842, Ch. 263, § 3, 5 Stat. 543-44 (1842) ...................................... 2
Other Authorities
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Amici Curiae are the intellectual property law professors at law schools in the
United States listed in Attachment A. They regularly study, teach and write about
patent law, including design patent law. They have no personal interest in the
outcome of this case. But they do share a professional interest in assuring the
conceptual clarity and proper functioning of the patent laws so as to serve the public
useful articles of manufacture under the patent laws. Jason J. DuMont & Mark D.
Janis, The Origins of American Design Patent Protection, 88 IND. L.J. 837, 847-74
(2013). But Congress simultaneously made clear that all the same utility patent law
provided otherwise: “all the regulations and provisions which now apply to the
obtaining and protection of patents not inconsistent with the provisions of this act
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All parties have received notice of the filing of this brief. Counsel for Appellants
indicated they consent to the filing of this brief; counsel for Appellee indicated
they do not oppose the motion. No party or party’s counsel authored this brief in
whole or in part or contributed money that was intended to fund preparing or
submitting this brief. No person other than amici or their counsel contributed
money that was intended to fund preparing or submitting this brief.
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shall apply to [design patents].” Act of Aug. 29, 1842, Ch. 263, § 3, 5 Stat. 543-44
(1842).
revision to the design patent law. The most recent formulation is even more explicit
patents for inventions shall apply to patents for designs, except as otherwise
Thus, except where Congress has explicitly specified otherwise, there should
different from utility patent law doctrines. Congress, not the Supreme Court, has
explained, “[b]y retaining the incorporation clause as utility patent law diverged
from copyright law, Congress has forced blind obedience to a principle that even
[Patent Commissioner] Ellsworth might not have supported.” DuMont & Janis,
Chief Judge of this court used to say, “When all else fails, read the instructions….
When the patent statute (35 USC) is present, the advice has been far too often
ignored.” Howard T. Markey, Talk given April 26, 1983 (quoted in Ronald D.
Hantman, Why Not the Statute? Revisited, 83 J. Pat. & Trademark Off. Soc’y 685,
685 (2001).
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II. This Court Should Conform Its Design Patent Doctrines to the
PHOSITA’s (DOSA’s) Perspective.
hypothetical “person having ordinary skill in the art to which the claimed invention
pertains” (the “PHOSITA” or “POSA”). 35 U.S.C. § 103. See also, e.g., 35 U.S.C.
§ 112(a) (“any person skilled in the art to which it pertains, or with which it is most
nearly connected”); Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(en banc) (“the ordinary and customary meaning of a claim term is the meaning
that the term would have to a person of ordinary skill in the art”). Given Section
171(b), all design patent law doctrines should be determined by reference to the
designer’s clothing.
purpose of the patent laws is to “promote the Progress of … useful Arts.” U.S.
Const., Art. I, § 8, cl. 8. Cf. id. (“promote the Progress of Science”). Thus, patent
laws (even for designs) should focus on technological or aesthetic advancement, not
the purpose and function of the trademark and unfair competition laws.
Yet, for design patent infringement and novelty doctrines, the Supreme Court
and this Court have improperly employed the perspective of the “ordinary observer,”
seeking to protect that person from “confusion.” This departs from Congress’
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explicit statutory command to follow utility patent law principles. The Supreme
Court made this mistake in its first design patent case, Gorham v. White, 81 U.S. (14
Wall.) 511 (1871), when holding that design patent infringement is to be based on
the confusion of ordinary observers, rather than on factual identity with the patented
design (or, under the doctrine of equivalents, on sufficient factual similarity to the
patented design, see, e.g., Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520
U.S. 17, 24-30, 39-40 (1997)). As the Court held in Gorham, “identity of
test for design patent infringement, since “human ingenuity has never yet produced
a design, in all its details, exactly like another, so like that an expert could not
Based on Gorham, the Supreme Court in Smith v. Whitman Saddle, 148 U.S.
674 (1893), extended the ordinary observer perspective to the statutory novelty
words, sameness of effect upon the eye; that it is not necessary that the appearance
should be the same to the eye of an expert, and that the test is the eye of an ordinary
Similarly, this court has adopted an “ordinary observer” test for both
infringement and novelty. See Egyptian Goddess Inc. v. Swisa, Inc., 543 F.3d 665,
669-79 (Fed. Cir. 2008) (en banc) (rejecting the “non-trivial advance” “point of
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novelty” test for assessing factual similarity for infringement in favor of the Gorham
“ordinary observer” test); Int’l Seaway Trading Corp. v. Walgreen’s Corp., 589 F.3d
1233, 1240 (Fed. Cir. 2009) (“In light of Supreme Court precedent and our precedent
holding that the same tests must be applied to infringement and anticipation, and our
holding in Egyptian Goddess . . . we now conclude that the ordinary observer test
must logically be the sole test for anticipation as well.”). But, given the express
language in Section 103, this court has retained the PHOSITA’s perspective for
These mistakes fail to address the patent law nature of design patent doctrine,
and whether and when a design constitutes a creative advance in aesthetics that is
being appropriated by a third party. Whether or not they know of the neurobiological
bases for the aesthetic responses achieved in consumers or other viewers, DOSAs
Whitman Saddle, 148 U.S. at 681. See generally, e.g., WALTER ISAACSON, STEVE
JOBS (2011). In contrast, at least one opinion below incorrectly treated designs as
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Dkt. 45, ECF No. 18 (emphasis added). But see, e.g., Mark Bartholomew,
Nonobvious Design, 108 IOWA L. REV. 601, 604-05 (2023) (discussing the
neurobiology of aesthetics).
It would be highly controversial for this court to refuse to follow the Supreme
Court’s erroneous precedent in adopting the “ordinary observer” test for design
those precedents are clearly contrary to superior statutory command. Cf., e.g., Atl.
Thermplastics Co. v. Faytex Corp., 974 F.2d 1279, 1281 (Fed. Cir. 1992) (en banc)
(Rich, J., dissenting from the denial of rehearing en banc) (“‘A[n earlier panel]
decision that fails to consider [superior] Supreme Court precedent does not control
if the court determines that the prior panel would have reached a different conclusion
But this court can without hesitation reverse its own erroneous precedents for
DOSA’s creativity. This Court should avoid perpetuating conceptual errors that
(C.C.P.A. 1982) (en banc), and Durling v. Spectrum Furniture Co., 191 F.3d 100
(Fed. Cir. 1996), precedents (collectively, the Rosen approach). The Supreme Court
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in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), reversed precisely
the same kinds of erroneous approaches (as in Rosen and Durling) to a PHOSITA’s
(DOSA’s) skill and creativity that underlay this court’s pre-KSR approach to utility
III. This Court Should Conform Its Design Patent Obviousness Doctrine to
KSR’s Treatment of the PHOSITA’s Creativity.
This brief notes only two significant “exceptional” departures of the Rosen
approach to design patents from that of KSR for utility patents. The first is to require
starting with a single, prior art reference “the design characteristics of which are
basically the same as the claimed design.” Rosen, 673 F.2d at 391. The second is
that “secondary references may only be used to modify the primary reference if they
are ‘so related [to the primary reference] that the appearance of certain ornamental
features in one would suggest the application of those features to the other.’”
“suggestion” in the prior art itself to find obviousness. “The obviousness analysis
explicit content of issued patents.” KSR, 550 U.S. at 419. Indeed, “[t]he diversity of
inventive pursuits and of modern technology counsels against limiting the analysis
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in this way. In many fields . . . it often may be the case that market demand, rather
than scientific literature, will drive design trends.” Id. (emphasis added).
Further, the Supreme Court in KSR rejected any requirement that modification
(by combining disparate prior art elements) occur in any particular order, starting
with a “primary” reference. Prior to KSR, this court had decided Ecolochem, Inc. v.
Southern California Edison Co.,227 F.3d 1361 (Fed. Cir. 2000), in which it sought
combat potential “hindsight bias.” But KSR instead found it “[c]ommon sense. . .
that familiar items may have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.” 550 U.S. at 420-21. The Court concluded
that “[r]igid preventative rules that deny factfinders recourse to common sense” are
“neither necessary under our case law nor consistent with it.” Id.
perpetuates the over-extended “analogous art” approach of In re Clay, 966 F.2d 656,
658-59 (Fed. Cir. 1992), which KSR also impliedly overturned. The Supreme Court
noted that a PHOSITA may start with any element in the prior art and may modify
it or combine it with other elements in the art to achieve the patented invention, even
by seeking to solve a different problem than that actually solved by the inventor.
“The question is not whether the combination was obvious to the patentee but
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whether the combination was obvious to a person with ordinary skill in the art. Under
the correct analysis, any need or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide a reason for combining the
elements in the manner claimed.” Id. at 420. The Court continued by noting that it
was an error to assume that a PHOSITA would “be led only to those elements of
prior art designed to solve the same problem . . . . The idea that a designer hoping to
make an adjustable electronic pedal would ignore Asano because Asano was
designed to solve the constant ratio problem makes little sense,” because a “person
of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 425.
As a result, “[j]ust as it was possible to begin with the objective to upgrade Asano
adjustable electronic pedal like Rixon and seek an improvement that would avoid
“primary reference” in the same field having “basically the same” characteristics,
obviousness for inventions. And the statute requires that utility patent requirements
CONCLUSION
This court should rehear this case en banc and reverse Rosen and Durling.
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Phillip R. Malone
JUELSGAARD INTELLECTUAL
PROPERTY AND INNOVATION CLINIC
Mills Legal Clinic at Stanford
Law School
559 Nathan Abbott Way
Stanford, CA 94305-8610
Tel: (650) 725-6369
[email protected]
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CERTIFICATE OF SERVICE
Phillip R. Malone
JUELSGAARD INTELLECTUAL PROPERTY
AND INNOVATION CLINIC
Mills Legal Clinic at Stanford Law School
559 Nathan Abbott Way
Stanford, CA 94305-8610
Tel: (650) 725-6369
[email protected]
TYPE-VOLUME LIMITATIONS
case’s docketing date. The brief is printed in proportionally spaced 14-point type,
and the brief has 2278 words according to the word count of the word-processing
system used to prepare the brief (excluding the parts of the motion exempted by
2. The brief complies with the typeface and type style requirements of
Federal Rule of Appellate Procedure 27(d)(1)(E), 32(a)(5), and 32(a)(6). The brief
has been prepared in a proportionally spaced typeface using Microsoft Word for