INTA wades into design patent review at Fed Circ
The International Trademark Association files amicus brief urging Appeals Court to maintain obviousness test | Design patents have become “front line of defence” to combat counterfeiting, INTA argues.
In an unusual move, the International Trademark Association (INTA) has intervened in a design patent en banc review being heard at the US Court of Appeals for the Federal Circuit.
INTA filed an amicus brief dated October 26, urging the appeals court to maintain the ‘Rosen-Durling’ test for evaluating obviousness in the context of design patents, and not modifying it, as requested by the appellant in the case.
The outcome of the case—LKQ Corporation et al v GM Global Technology Operations—could significantly impact the automotive industry and design patent law.
Automotive replacement parts marketplace LKQ Corporation originally petitioned for inter partes review of a patent held by GM Global Technology Operations, an automotive manufacturer.
The patent at issue (US number D797,625) is directed to an “ornamental design for a vehicle front fender” (wing), which GM Global supplied to LKQ.
The Patent Trial and Appeal Board (PTAB) decided that LKQ had not demonstrated obviousness, at which point LKQ appealed to the Federal Circuit along with co-appellee Keystone Automotive Industries, distributor and marketer of automotive equipment and accessories.
INTA members rely on trade dress
According to the Federal Circuit, five other amici curiae have filed their briefs, all in support of LKQ—Hyundai Motor Company and Kia Corporation; the Alliance For Automotive Innovation and Rivian Automotive; Apple; the Industrial Designers Society of America; and Ford Motor Company.
In its brief, INTA said it “offers its view…because many INTA corporate members have intellectual property portfolios that feature trade dress and design patents to combat rampant counterfeiting in the marketplace.”
The association’s primary interest in the case, it said, is to address a question posed by the appeals court in its June 30, 2023 order, which granted the appellants’ petition for rehearing en banc:
“Given the length of time in which the Rosen-Durling test has been applied, would eliminating or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of the law?”
“The answer to this question is yes,” said the association.
‘Front line of defence’
It emphasised the “complementary” forms of design patent and trade dress protections, arguing that modifying the test would increase the potential for infringement and counterfeiting, and upset the balance between trade dress and design patent protection.
“In many ways, design patents have become the front line of defence to combat the growing counterfeiting problem plaguing many brand owners when it comes to product designs,” it argued.
The Rosen-Durling test, INTA explained, “has governed the inquiry into obviousness for design patents for decades properly limits the ability of challengers to invalidate design patents, while simultaneously ensuring that granted design patents do not stifle competition or innovation.”
The brief was filed as part of an en banc review of a prior Federal Circuit panel decision, in which some members of the panel questioned whether the Rosen-Durling test continues to be valid in light of the Supreme Court’s decision in KSR International v Teleflex, 550 U.S. 398 (2007).
The Rosen-Durling test was created from In re Rosen, 673 F.2d 388 (C.C.P.A. 1982); and Durling v Spectrum Furniture, 101 F.3d 100 (Fed. Cir. 1996).
Counsel acting for INTA are: Bruce Ewing of Dorsey & Whitney; Martin Schwimmer of Leason Ellis; and Vijay Toke of Rimon.
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