By Austen Zuege
The Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC that substantially altered the obviousness analysis for design patents. The so-called Rosen–Durling framework was overruled (largely sidestepping the question of its abrogation by KSR). The patentability of ornamental designs of useful articles will now be under the same Graham v. John Deere obviousness standard that applies to utility patents. The LKQ decision emphasized that analogous arts requirements still apply to references cited for obviousness. But what will (or might) the analogous art requirements mean specifically in the design context? The following discussion explores some possibilities in a rough initial take on what might follow in the wake of LKQ.
Analogous and Non-Analogous Art: Two Tests or Prongs
In order to be used as a prior reference to try to establish obviousness, a given reference must be “analogous art”. There are two tests or prongs used to assess whether or not a given reference is analogous art (at least for utility patents). A reference is analogous art if: (a) it is from the same field of endeavor as the claimed invention (even if it addresses a different problem), or (b) if it is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). To be analogous, a given reference must satisfy only one of these two tests/prongs. Although the evidence and analysis may overlap, so some prior art might satisfy both tests.
The analogous arts framework has been around for a long time with respect to obviousness analyses for utility patents. Courts have generally taken a broad and expansive view of what constitutes analogous arts, especially in light of KSR. But it remains in place as a check against hindsight bias by establishing requirements for the factual foundation needed in order to rely on a given prior art reference for an obviousness argument. In that sense, it is about assessing whether a person of ordinary skill would have been motivated to look at or otherwise consider a reference at all in relation to the claimed invention at the time of invention (or effective filing date).
Analogous Art Analysis for Designs: Some Initial Thoughts
Although the LKQ decision paints its holding as something of a modification of the Rosen-Durling framework, that seems to be mainly a diplomatic attempt to counter the “chicken little” arguments that a disastrously chaotic free-for-all would ensue if design patents were held to the same standards as utility patents under KSR. Application of the non-analogous arts standard to designs going forward will likely not be merely a continuation of business-as-usual. LKQ represents a major shift in the patentability analysis for design patents. As a result, design patent prosecution will likely move further away from a quasi-registration process (a prospect that Robert Post once described as “intoxicating” applicants and their agents), with design examination extended beyond rejections for mere procedure and formality defects towards more substantive concerns. Obviousness rejections based on combinations of prior art references—long a ubiquitous feature of utility patent examination—should become more common. And similar effects should be seen in litigation and Patent Trial and Appeal Board (PTAB) challenges.
Yet the LKQ decision is hardly definitive about what will come next. For utility patents, the non-analogous arts test is rarely invoked and courts have generally taken a broad view of analogous art. But there are few if any prior cases applying analogous arts requirements to designs. That means there are many open questions and practical considerations about how it should be approached for designs. Let us turn to the two prongs/tests with those things in mind.
Analyzing the Same Field of Endeavor for Designs
The LKQ decision reaffirmed a statement from an old case that “[t]he scope of the prior art is not the universe of abstract design and artistic creativity, but designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” Even though design patents are short, all design patents have to specify an article of manufacture. Indeed, U.S. Patent & Trademark Office regulations specify that “[t]he title of the design must designate the particular article.” (37 C.F.R. § 1.153(a)). So an applicant cannot obtain a design patent without specifying a particular article in the title, even if no further textual description is required.
What is notable here is that LKQ quotes a prior case that encompasses not only the same article of manufacture, but also “articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” This matters in view of a string of rather questionable Federal Circuit cases that took narrow views that only prior art for the same article of manufacture qualifies as prior art for validity analysis or for three-way infringement comparisons. I call these cases questionable in part because they contradict earlier precedent, but also because their conclusions are poorly explained or highly tendentious. So, a key takeaway is that in an en banc decision the Federal circuit has ruled that the analogous arts same field of endeavor prong/test must extend beyond the same article. This has the effect of neutralizing the impact of In re SurgiSil on the obviousness question (without yet resolving the conflict between SurgiSil and older precedent for anticipation).
As one example, LKQ may permit some generalizing of the article for the field of endeavor prong/test. This can be thought of as saying that the field of endeavor may be a genus of which the claimed invention is a species. For instance, if a particular design patent is for a plow of the sort used with a tractor in a farm or garden, the field of endeavor might be considered to be farm or tractor implements rather than only plows. That might mean that other implements like harrows used with tractors are analogous art. This could mean that a design that merely carries over the ornamental appearance of one farm implement to a different one is merely obvious, even though the implements serve different functions. Or, a prior art reference for a cat toy might be in the same or similar field of endeavor as a claimed dog toy. Different articles might also be similar, or part of the same genus, if they are known substitutes/alternatives.
But there might other ways to look at “similarity” for the field of endeavor prong/test for designs. Take an example of different articles sold together as a set or kit. There might be, for instance, a cutting board plus a large wooden fork and spoon that are sold together as a set, with common ornamentation on each item. This might be common surface ornamentation and/or a similar shape/configuration of handles of each item. Even though cutting boards and forks/spoons are different articles with different characteristics and uses, their sale together as a set may support a conclusion that they fall within similar fields of endeavor. Or there may be different articles advertised together as part of a product line with similar ornamentation, even if the articles are only sold separately. Such approaches to field of endeavor similarity are not entirely unlike the evaluation of the relatedness of different goods/services in trademark cases by looking at proffered evidence that they commonly emanate from a single source under a single brand.
Analyzing What is Reasonably Pertinent to the Problem Faced for Designs
LKQ recognized that a design patent itself does not clearly or reliably indicate the particular problem with which the inventor is involved. The decision further stated that it does not foreclose that art from outside the same field of endeavor could also be analogous. Apart from stating that this is a fact question to be addressed on a case-by-case basis, the court explicitly left this an open question. It will therefore be up to future cases to further develop the application of this standard. It will be interesting to see how this open question will eventually be resolved. What follows are some initial thoughts and suggestions, which draw from insight from social sciences.
Before going further, though, let me say that it is fair to wonder what problem-solving means for non-functional ornamental designs. This opens a rather large can of worms that is the question of whether industrial designs regarding ornamental appearance really involve “invention” at all. This is a big question because, in turn, it implicates the question of whether design patents, first made possible in the 1842 Patent Act following a proposal to have copyright protection for designs modeled on then-recent British law, are constitutional or not. Justice Douglas observed long ago that “attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent.” Does that apply to the very existence of design patents? Although these concerns should be borne in mind, broader questions of constitutionality are for another day. Let us turn to the much narrower question of what designing really involves in terms of solutions it purports to offer.
Setting aside design patent protection pursued for improper purposes (such as to try to preclude functional interoperability), most industrial designs are about marketability. This is a topic Thorstein Veblen wrote about in terms of how the relationship between workmanship and salesmanship was often wrongly blurred by treating the cultivation of saleable appearances as a necessary engineering production cost.
Under that rubric, it may be helpful to look at the ways that designers approach their work. Reference to storytelling and narrative are common. It is easy to find assertions that “[t]he story is the primary motivating event that leads to design and innovation.” Or that design is cultural and tells a story about things like place/geography. It is also said that product design can “tap into users’ emotions” by building on a motivating narrative. Indeed, industrial design training courses in “form fundamentals” even emphasize “How Great Storytelling Leads to Great Industrial Design.”
The way that marketing proposals are presented to clients is also informative. It is typical for advertising pitches to include statements about things like “color psychology” to justify choices of colors in terms that are emotive and feelings-based. For instance, “this is yellow as a symbol of kindness, warmth, and empathy.” Whether this is deployed in a way that is scientific or more akin to pseudo-sciences like phrenology or alchemy is worth consideration here. But the fact remains that visual presentations are presented in this manner in real-world scenarios. Whatever criticisms might be made against the bases for these theories, or their use in a given situation, they might well be what a designer of ordinary skill would consider when devising a new industrial design. The crux is the purported link between social meaning and visual appearance that is known or otherwise already available in the art. And reference to marketing, advertising, and branding rather than product design specifically is still fair, because Federal Circuit panels have held—for better or worse—that design patent and trademark standards are analogous and that blurring distinctions between them is harmless. And talk about storytelling and narratives is often framed as simultaneously being about both product design and branding so that users/customers “understand the value of the product and to build a deeper connection with the brand.”
There have been many efforts to analyze social significance of visual representations. A fascinating example is the television documentary mini-series and corresponding book “Ways of Seeing” by John Berger et al. This looked at artworks and assessed, through critical studies, how certain depictions and themes reinforced things like sexism and patriarchy. The analyses presented are open to criticism, particularly in terms of their underlying essentialism (in somewhat the same way patent as claim construction ruling that seem to simply decree that a given term means one particular thing without explanation). After all, Beethoven’s “Ode to Joy” in his 9th Symphony has been used to represent just about every possible worldview (even fascists used it!), which tends to refute essentialist notions that there is any particular meaning inherent to it. But, still, the “Ways of Seeing” series and book presents a very useful reference (easily accessible to any viewer or reader) that informs how reasonably pertinent problems might be assessed for design patent analogous art. That is, it may be possible to ask what sort of (non-technical/non-functional) social objective is sought to be promoted, and then look at ways that other designers have sought to express those non-visual concepts visually before with the same or different types of articles.
The essentialism of Berger et al.’s approach might be softened or avoided by looking more to something like Pierre Bourdieu’s sociology, which investigates meaning in terms of social fields. Bourdieu’s famous book La Distinction [Distinction: a Social Critique of the Judgement of Taste] is useful in exploring how artistic tastes reflect attempts to draw social distinctions. People’s tastes associate them with one group and distance them from others. To (over)simplify this, taste is less about inherent qualities of artistic works or isolated individual preferences than reflecting social distinctions arising from social factors that have meaning as part of a larger field in which individual instances cluster as nodes. For example, if someone says they “like all types of music except country” they are are probably trying to convey that they are not like the sorts of people who listen to country music. And “disco sucks” epithets were, historically, often effectively dog-whistle homophobic slurs. While Bourdieu’s more formal methods involving surveys will be impractical to routinely apply in patent litigation, a book like David Lee’s Battle of the Five Spot, about why jazz musician Ornette Coleman’s 1959 performances at a New York City club were musicologically significant, shows that the general framework can be applied without extensive surveys.
And this comes up in more seemingly utilitarian contexts as well. A 2021 segment on the long-running British television series Gardeners’ World by Advolly Richmond explored the origins of lawns. These came into being in the later middle ages in Europe on aristocratic estates. They required having many servants to mow them, and technology that made such work feasible. The subsequent expansion of lawns can be seen—though the lens of Thorstein Veblen’s seminal book The Theory of the Leisure Class: An Economic Study of Institutions—as people of lesser means attempting to emulate feudal aristocracy with the aid of improvements to lawn mower technology. That is, lawns were a symbol of aristocratic wealth and privilege and the appearance of a “well kept” lawn evolved into widespread use as a visual symbol meant to convey the owner’s wealth (i.e., ability to hire a servant or available free time to mow him- or herself with a purchased lawnmower device) and/or connection to aristocratic values.
Fads are also relevant here. Take computer presentation slide deck templates. Companies often have these and there are trends/fads that develop such that different templates used by different companies share common features at given times. For instance, one fad was to use blocky sans serif fonts and high-contrast color schemes incorporating bright, vivid colors. Suffice it to say, fads are social determinants that can provide motivations to those devising ornamental designs. And designing slide deck templates is not altogether that different from, say, designing the ornamental appearance of graphical user interfaces and computer-generated icons, which are the subject of design patents. How many companies have explicitly tried to have a minimalist computer search interface that looks “like Google’s”?
What does all this social science framework really tell us about problems faced for those developing industrial designs? Well, if some bit of evidence (more on that later) establishes an intent to modify an existing product design to be more aggressive and powerful looking, then looking to prior art with bigger, thicker, taller, etc. characteristics that create a more aggressive and powerful visual appearance would seem to be analogous in terms of the problem faced, even if pertaining to a different type of article or different field of endeavor.
In a more direct way, there can be situations in which designers reproduce known ornamentation of their own or co-workers. For instance, there might be an explicit intention or goal to “create a sense of continuity and coherence across a brand’s products and services.” Some ornamental feature or general style of ornamentation might simply be copied or ported over to another design project. In the design patent context, this sort of motivation is undoubtedly relevant to questions about the obviousness of re-using and adapting known ornamental aspects of one product to another, even when dealing with different types of products/articles.
The parties in LKQ disputed whether designs solve problems at all. Perhaps another way of looking at that (in a Veblenian way) is to say that most or all designs address the problem of saleability, which is not specific enough to any particular claimed design to be of use for the obviousness analysis. And the word “problem” might imply functional solutions rather than ornamental ones—although dictionaries merely define that word as a question to be considered. But, in this author’s view, the social science guidance discussed above still bears on having a second prong or test for analogous arts for design patents. Perhaps it is simply a matter of renaming the second prong/test, maybe as being about the realization of a type of (visual/social) impression sought rather than the “problem” faced. Here again, we run up against the issue (for another day) of whether ornamental designs are really “inventions” at all.
Evidentiary Considerations
Design patents are scant on text. Their prosecution histories might contain some relevant information about the field of endeavor and/or problem faced, but only on occasion or inferentially (for instance, in terms of what prior art was cited or not cited, or through amendments to the title). And, unique to design patent practice, an unpublished appendix of the original application might contain information relevant to what is analogous art, but not always. Family-related or commonly-assigned or -invented utility patent applications, if they exist, will also be a rich source of information, as they have been for functional vs. ornamental analysis in the past.
In the longer term, design patent applicants might choose to voluntarily insert some sort of problem statement in an application (possibly in the appendix), or the Patent Office might institute a new rule requiring such a statement. While patentees might balk at doing this, it may give the patentee some measure of input or control over the way analogous art analysis proceeds.
Notably, the LKQ decision cites approvingly Airbus S.A.S. v. Firepass Corp., a case that looked at the analogous art “reasonably pertinent” prong/test and said that extrinsic evidence can be considered to link the claimed invention and cited prior art (that fell in a different field of endeavor) by a common technical problem. Airbus relied on KSR to hold that overly strict problem statements cannot be used to limit obviousness to express suggestions to combine references or to otherwise ignore or contradict the background knowledge possessed by a person having ordinary skill in the art. Extrinsic evidence can thus be used to help define the problem faced. And extrinsic evidence will undoubtedly play an even larger role in addressing questions about analogous art status for design patents than with utility patents, particularly when defining the “problem faced” or a similar inquiry.
In litigation, discovery around a designer’s intentions and objectives may be useful. This might convey the problem faced. Advertising by the patentee might also be a fertile source of that kind of information. Do ads highlight a “sleek” look or “curved” lines of the patented product, for instance, like televised car commercials often do? Information about the work experience of a designer named on a design patent might also be relevant to the field of endeavor and scope of “similar” articles.
One difficulty, however, is trying to evaluate any link between a cited prior art design patent or printed publication reference and a common problem faced. If the reference is silent on its face about this, what sort of evidence will either link it to the challenged patented design or differentiate it? A conventional approach is expert testimony. Just in the way copyright litigation can involve expert testimony from musicologists, or the way utility patent litigation involves scientific or engineering expert testimony, there are opportunities to present testimony about links or differences. And, following Airbus, additional extrinsic evidence such as textbooks, printed publications, other patents, etc. might be relevant to link (or differentiate) a given prior art reference. Evidence about fads, trends, or brand/product product line coherence might fall in this category. Another possible approach, less conventional historically, is a survey of ordinary consumers. If we return to the example of making something look more aggressive and powerful, would a significant percentage of ordinary observers use those same words to describe a given prior art reference? Or would a survey somewhat similar to a trademark likelihood of confusion survey also potentially provide relevant evidence? Perhaps such a survey might focus on something other than, or rather more specific than, the overall impression, like aspects of the prior art that are a material part of the overall visual impression to the ordinary observer (and which are shared in common with the claimed design being challenged). Testimony from the designer or author of the cited prior art might be possible, if also potentially subject to attack.
May 2024
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.