Secondary Considerations in Design Patent Law
Introduction
One of the four factual inquires within the Graham obviousness analysis for design patents is assessment of secondary considerations. See LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280, 1300 (Fed. Cir. 2024) (citing and quoting Graham v. John Deere Co., 383 U.S. 1 at 17-18 (1966)) (“Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”).
LKQ did not disturb the existing design patent case law regarding the secondary considerations of commercial success, industry praise, and copying. But LKQ stated “[i]t is unclear whether certain other factors such as long felt but unsolved needs and failure of others apply in the design patent context.” The Court left it to future cases to determine whether such considerations have significance to the obviousness inquiry in the design patent context.
Evidence of nonobviousness may be present when a prima facie case of obviousness is evaluated or it may be presented in rebuttal of a prior obviousness rejection. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1335-36, 110 USPQ2d 1235, 1242-43 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 1310, (Fed. Cir. 2010)
Requirement of a Nexus
For a secondary consideration to be given weight, there must be a nexus between the merits of the claimed invention and the evidence of secondary considerations. See Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575 (Fed. Cir. 1984), cert. denied, 471 U.S. 1065 (1985). The burden is upon the patent applicant to demonstrate a nexus. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1336 (Fed. Cir. 2014). Merely establishing that a design has been commercially successful without showing that the success is attributable to the claimed design features is not enough to establish a nexus. Id. at 1336. However, “there is a presumption of nexus for objective considerations when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘is the invention disclosed and claimed in the patent.’” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329 (Fed. Cir. 2016). The required nexus cannot be shown based on claim features available in the prior art. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”).
Commercial Success
“Commercial success is of considerable importance in determining the validity of a design patent because in the end the objective of most such designs is to enhance saleable value.” Lancaster Colony Corp. v. Aldon Accessories, Ltd., 506 F.2d 1197, 1199 (2nd Cir. 1974) (citing Robert W. Brown & Co. v. DeBell, 243 F.2d 200, 202 (9th Cir. 1957). But the commercial success “must be shown to have in some way been due to the nature of the claimed invention, as opposed to other economic and commercial factors unrelated to the technical quality of the patented subject matter.” Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985).
Industry Praise
In Apple, Inc. v. Samsung Elecs. Co., 2012 U.S. Dist. LEXIS 90889, *81-82 (N.D. Cal. 2012), Samsung moved for summary judgment that the iPad and iPad2 designs were invalid as obvious. In response, Apple provided evidence of industry praise for the design of the iPad and iPad2, as well as evidence of copying of the iPad design. The Court denied the motion for summary judgment, holding that Apple raised a genuine issue of material fact on the question of the existence of these secondary considerations.
In App. No. 29/776,594, the applicant claimed a design for an Inflatable Towable Vehicle. The Examiner rejected the claim based on obviousness over two prior art references. The applicant presented evidence of commercial success and industry praise and showed that the commercial product was covered by the claimed design. The Examiner withdrew the obviousness rejection and allowed the claim.
Copying
Although copying can be a secondary consideration, “more than the mere fact of copying by an accused infringer is needed to make that action significant to a determination of the obviousness issue.” Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985). That is because copying could result from other factors unrelated to obviousness, such as a general lack of concern for patent property. Id.
Unmet Need and Failure of Others
The Federal Circuit in LKQ considered it “unclear whether certain other factors such as long felt but unsolved needs and failure of others apply in the design patent context,” 102 F.4th 1300, and left it to future cases to determine whether such considerations have significance to the obviousness inquiry.
In the utility patent context, the Federal Circuit has held that evidence of an unmet need in the industry for the solution to a recognized and persistent problem may help support a conclusion of nonobviousness. See, e.g., Ecolochem, Inc. v. S. California Edison Co., 227 F.3d 1361, 1376 (Fed. Cir. 2000). The rationale is that if a problem is identified but left unsolved, the failure to solve the problem supports a conclusion of nonobviousness. Consequently, to demonstrate unmet need, the patentee must point out an “articulated identified problem and evidence of efforts to solve that problem” that were unsuccessful before the invention. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993).
Despite the apparent incongruity between the “unmet need” and “failure of others” secondary considerations and design patents, applicants have tried to include these considerations in a design patent obviousness analysis. For example, in App. No. 29/817,289 for a Key Tag, the applicant declared “[i]n my opinion the design that is the subject of the present application has fulfilled an unmet need to combine the key tag with the design element and fun factor of the bubble pops.”
In App. No. 29/634,280, the claimed design was for a Medication Accessory. The Examiner issued an obviousness rejection. In response, the applicant declared “[t]he goal of my accessory device is to provide patients with a more appealing avenue, tool or vehicle that they can relate positively with, and then also with the medication they are taking from the accessory- attached bottle-promoting a positive behavior change with associated higher adherence to medications. Therefore, my accessory device has high potential to address significant unmet need with a tool that would benefit millions of patients, in the United States and worldwide, and reduce disease-related complications as well as unnecessary avoidable healthcare costs.”
Medication Accessory
In App. No. 29/634,280, the claimed design was for a Medication Accessory. The Examiner issued an obviousness rejection. In response, the applicant declared “[t]he goal of my accessory device is to provide patients with a more appealing avenue, tool or vehicle that they can relate positively with, and then also with the medication they are taking from the accessory- attached bottle-promoting a positive behavior change with associated higher adherence to medications. Therefore, my accessory device has high potential to address significant unmet need with a tool that would benefit millions of patients, in the United States and worldwide, and reduce disease-related complications as well as unnecessary avoidable healthcare costs.”
In App. No. 29/757,619, the claimed design was for a Ceramic Light Hoop. After the Examiner issued an obviousness rejection, the applicant declared “[t]wo master mold makers told me it would be very difficult or impossible to make such ceramic light hoops with any precision and consistency.”
