May 21 (Reuters) - A U.S. appeals court on Tuesday
overturned a win for GM in a patent dispute with
aftermarket auto-parts provider LKQ over fender designs,
upending a key element of design-patent law in a rare full-court
decision.
The U.S. Court of Appeals for the Federal Circuit threw out
a long-standing test for determining when a design patent is
valid and sent the case back for a U.S. Patent Office tribunal
to reconsider.
Representatives for GM did not immediately respond to a
request for comment on the decision. LKQ said in a statement
provided by its attorney Mark Lemley of Lex Lumina that the
decision is "a critical first step to ensuring consumers have a
range of safe, quality options when making vehicle repairs."
Design patents protect novel visual characteristics of
manufactured objects. LKQ asked the USPTO's Patent Trial and
Appeal Board in 2022 to cancel a GM design patent covering a
front vehicle fender after their licensing agreement expired and
GM threatened to sue for infringement.
LKQ argued GM's patent was invalid as obvious, citing two
earlier designs that it said created the same visual impression.
The board ruled for GM, and a three-judge panel at the Federal
Circuit affirmed the decision last year.
The full Federal Circuit agreed last June to rehear the
case, marking its first full-court rehearing in a patent case
since 2018. It said it would reconsider LKQ's argument that the
obviousness test for design patents was overruled by a 2007
Supreme Court decision that rejected "rigid and mandatory
formulas" for obviousness in the context of utility patents,
which cover inventions.
Auto-parts companies told the appeals court that upholding
the decision would make replacement parts more expensive and
harder to obtain. Apple ( AAPL ) and car companies including
Ford asked the court to keep the current test, which Apple ( AAPL )
argued would "maintain a predictable patent landscape for U.S.
design innovators."
The Federal Circuit agreed with LKQ on Tuesday that the
current test was "improperly rigid" and that courts should adopt
a "more flexible approach" that resembles the test for
utility-patent obviousness.
"This test has proven workable for utility patents and we
see no reason why it would not be similarly workable for design
patents," U.S. Circuit Judge Kara Stoll wrote.
The case is LKQ Corp ( LKQ ) v. GM Global Technology Operations LLC,
U.S. Court of Appeals for the Federal Circuit, No. 21-2348.
For LKQ: Mark Lemley of Lex Lumina
For GM: Joseph Herriges of Fish & Richardson
Read more:
GM fender design victory in limbo after US appeals court
grants rare review
Rare patent argument attracts US government, suspended judge
(Reporting by Blake Brittain in Washington)