SIGN NOW

Read Our Amicus Brief Draft: Click the button below to read our current amicus brief draft. Please note that the draft may be modified in minor ways prior to final submission, but the draft at the link below is substantively the document we will be submitting to the US Court of Appeals for the Federal Circuit in the LKQ v. GM en banc hearing. You can sign the amicus brief by selecting the “Sign Now” button below. If you are interested in more information about the case and amicus brief before signing, please see the additional information section below.

Importantly, all signatures must be captured by Sunday, August 27th, 2023, so please consider becoming a signatory with urgency.

Additional Information Regarding Why You Should Sign the Amicus Brief

Design Is Worth Protecting: If you are like most professional designers, regardless of your application area, your focus is routinely on challenging design problems. In such an environment, it is common for design professionals to overlook the benefits and complexity of design intellectual property theory and practice. Most of our design colleagues leave design IP to the lawyers. But times have changed and for good reason.

The Increasing Value of Design: Based on research focusing on the business value of design combined with new research in neuroaesthetics, it is becoming clear that the design of products and, most specifically, the visual design of products, is far more critical to corporate success than initially thought. For the first time, we see leading corporations focusing on creating and managing robust design patent portfolios. However, not everyone thinks design protections should be strengthened to match the increase in design value.

Who is Trying to Diminish the Value of Design and Design IP? Most designers are surprised to find out that there are leading technology companies that work to dilute the strength of design IP, even though they employ dozens of designers. Moreover, a large group of law school professors have joined together to aggressively attack design patents and design rights. The professors appeared first in the Apple vs. Samsung case and have been a constant opposing force in design IP practice ever since. You read that right…Law school professors are working to dilute or eliminate design IP and damage your career.

Pay Attention or Perish: Either designers begin to engage with the legal activity surrounding design patents or designers will find their profession diminished in ways that will impact compensation, acceptance, and corporate positioning.

What the LKQ v. GM Case Is About: The case at hand, LKQ v. GM, appears on the surface to be related to an arcane legal concept of design IP law.  But there is much more than meets the eye. The actual issue goes to the heart of design patent validity, namely: What should the proper test be to determine if a design patent is "obvious" in view of the prior art?  GM is supporting the current 40 year-old test, while LKQ wants to equate design patent obviousness to utility patent obviousness which could greatly dilute design patent protection. To some extent, in this case resides the future of design IP. 

Accidents Waiting To Happen: The products involved in this case are seemingly mundane automobile crash parts…the parts that your autobody repair shop purchases and installs when you have a fender bender. Seems like boring stuff, but under the hood is a massive legal war being waged by two global corporations that have now gotten to the level of possibly damaging core design IP law on an enormous scale.

Design Patents on Parts: GM, of course, makes automobiles, millions and millions of cars. However, for many years, GM, for apparently logistical reasons, did not make most of its own replacement parts. Enter LKQ. LKQ contracted with GM to produce GM crash parts. GM being an astute entity and big supporter of design IP, applied for design patents on its overall automobile designs AND on each automobile’s individual autobody parts…fenders, bumpers, headlights…you name it. As a reminder, design patents only protect the visual design of objects. That is, just how things look visually.

The GM design patents were for the same parts being produced by LKQ Corporation. Suddenly, for reasons not fully understood, GM made a decision to start making its own crash parts and terminated its agreement with LKQ. This, of course, left LKQ with massive investments in tooling and production that were essentially useless. The ins and outs of what happened next are circuitous and not crucial in the context of design IP.

Infringement Was Clear: LKQ, trying to stem a massive loss, continued to make GM aftermarket parts. Those were the same parts covered by GM design patents. Not surprisingly, GM sued LKQ for design patent infringement because, after all, replacement parts are exact copies of the originals. Otherwise, they have no value. Therefore, any test for infringement was essentially moot. An exact copy equals infringement…full stop. There was no place for LKQ to hide.

This left LKQ with only one option, an option utilized by many defendants in design IP cases: Attack the validity of the GM design patents. Attacking patent validity can be done by anyone at anytime after the patent is issued and before it expires 15 years later.

Invalid Thinking: LKQ has said in court and in its filings that the GM design patents are invalid because the designs are “obvious” in light of what came before them. It turns out that a design patent’s validity can be challenged based on obviousness. In fact, there is actual case law and procedures for how one goes about determining if a patented visual design of a product is obvious. This might seem like serious navel-gazing by a bunch of lawyers, but it gets more interesting.

Combinations and Then Some: The currently accepted test for obviousness is for the defendant to find an example of a product that came before the patent was filed that is “Basically The Same” as the patented design. This, however, is no easy task given that designers strive to create differentiation, not copies. Since it is nearly impossible to find one exact design, the courts have allowed a sort of workaround. To meet the test for obviousness, the courts have permitted defendants to find a second visual design that, when combined with the first example, achieves basically the same design through a combining of the primary and secondary references (products). Now, to be clear, the current law is not that great and is subject to considerable abuse by defendants. However, the current law is clear and has been used in many cases. Reenter LKQ.

Appealing To A Higher Order: LKQ has attempted to invalidate the GM design patents for its crash parts at trial but, not too surprisingly, has been soundly rejected. With every loss, LKQ can appeal its verdicts to a higher court. This is where we are today. LKQ has appealed its prior failures at invalidity to the Court of Appeals for the Federal Circuit (CAFC). It seems simple enough…well nothing in design IP is really that simple.

Features Connect Features: With its current appeal to the Federal Circuit, LKQ has actually asked the court to change the law for determining obviousness. LKQ is recommending that the court allow the combination of any number of prior designs until they have a design that is the same as the GM patented designs. By any measure, LKQ is asking the court for a get-out-of-jail-free card…actually, an entire stack of get-out-of-jail-free cards. Enter the anti-design IP law school professors.

Professor Lemley and Team: The law school professors, led by Mark Lemley of Stanford Law School, have written a series of amicus briefs supporting LKQ’s requested change to the test for obviousness. Here is a copy of one their briefs. Should the court agree with LKQ and allow defendants to continue to patch together any number of visual design features from virtually any products in the marketplace, it becomes clear that design patents have no future. This would be death by a thousand design cuts.

Defendants could simply create frankendesign examples, combining as many design features as possible, until the court caves in and declares a patent, even a GM patent, invalid. Fortunately, there is a formal process for allowing those who oppose the LKQ proposal to submit alternate recommendations to CAFC. This is where the Institute for Design Science and Public Policy (IDSPP) comes in and where we need your support.

In Brief an Amicus: When LKQ filed its appeal, the CAFC requested alternate opinions. Such opinions are submitted to the court via amicus briefs, short 7000-word expositions with supporting research and case law references. IDSPP has written prior amicus briefs that have been signed by the world’s leading designers, architects, and fashion designers. Click here to read our prior brief in Apple vs. Samsung, sent to the US Supreme Court.

IDSPP has written an amicus brief for the LKQ v. GM case not opposing or supporting either party, but proffering design-driven recommendations to resolve the test for obviousness using new procedures and methods. You can read the current amicus brief draft by clicking the button below. You can become a signatory on this amicus brief now by clicking the “Sign Now” button below. A summary of the legal arguments in the amicus brief follows.

THE SUMMARY OF OUR AMICUS BRIEF LEGAL ARGUMENT

The actual process of creating new designs informs what the test should be for design patent obviousness.  Designs are created holistically not assembled from a disparate collection of parts, and thus are – and should be – viewed as a whole.  

The design process has as its main goal to design a product that is not only distinguishable from other products, but which is sufficiently attractive so that consumers buy it.  In other words, the goal of designing a new product is to create one which is not basically the same as previous products, which translates directly into creating a patentable design.  

Designers create designs in the same way as the human mind sees objects in the real-world. Modern neuroscience and shape perception science confirms that humans detect entire objects rather than an assemblage of discrete elements.  

The test for design patent obviousness should remain whether a design is overall basically the same as a prior art design, but with a major difference:  an ordinary observer – a consumer – should be the person making that judgment, rather than the current ordinary designer.  Ordinary observers have been making the same judgment – whether two designs are essentially identical – in applying the test for infringement for over 150 years.   

Designers actually measure the success of a design in its visual ability to invoke in consumers certain reactions to and associations with the underlying product.  Thus the perspective of consumers, i.e., ordinary observers, can meaningfully measure whether a design has succeeded in creating the intended distinct visual impression, or not.   To the extent that the design patent system purports to reward designers of nonobvious designs with a patent, it would be more appropriate for consumers, not designers, to effectively decide whether the design creates a visual impression worthy of protection.  If such an ordinary observer believes that a particular design is basically the same as a prior art design, it should not be granted a patent.

The fact that neither designers nor consumers view product designs as an assemblage of individual parts augers against the current secondary test for design patent obviousness, i.e., one which allows certain design features from other products to be combined with a new product if they are so related as to suggest their combination. Combining design features in such a puzzle-like fashion makes no sense in the world of design because aesthetic features do not “suggest” anything—at least not in the way that functional features do a la the TSM test.    

 We suggest that either secondary references not be used at all, or that they only be used in very limited situations where the differences between the claimed design and the prior art are de minimis, and such differences are shown in one or more products in the exact same category of products as the claimed design.

Join the World’s Leading Designer Who Have Signed Our Briefs: If you support our opinion, please add your name to the list of signatories by clicking the “Sign Now” button below. Being a signatory on the brief does not bind you in any way, legally or otherwise. Signing the brief says to the court that you support the contents of the amicus brief and nothing more. We hope you will add your support to this long list of leading designers who support robust design IP.

Charles Lee Mauro, CHFP, IDSA
President & Founder, Mauro Usability Science
Founder / Chairman, IDSPP.org
Contact email: Cmauro@MauroUsabilityScience.Com