Written by: Clyde Alvin Shuman
In a precedential decision, the U.S Court of Appeals for the Federal Circuit recently overruled its long-standing test used to assess non-obviousness of design patents, including its requirements that the primary invalidating reference must be “basically the same” as the challenged design claim and that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. Instead, in LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348 (May 21, 2024), the Court has adopted a more flexible approach to design patent non-obviousness and which provides that the same conditions for patentability that apply to utility patents apply to design patents. The Court’s new, more flexible approach likely will make it easier to invalidate design patents on the basis of obviousness.
By way of background, GM owned a patent claiming a design for a vehicle’s front fender. This design was used in specific GM models. LKQ filed a petition for inter partes review of GM’s design patent, asserting that the challenged claim was unpatentable, inter alia, under 35 U.S.C. § 103 based on a prior art design patent Lian alone or as modified by a promotional brochure depicting the design of the front fender on the 2010 Hyundai Tucson. The Patent Trial and Appeal Board applied the Federal Circuit’s long-standing Rosen-Durling test to assess the non-obviousness of the claimed design.
Under this two-part test, first, In re Rosen required that “[b]efore one can begin to combine prior art designs . . . one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’” This primary reference is commonly referred to as the Rosen reference. As the Board explained, Rosen’s “basically the same” test requires consideration of the visual impression created by the patented design as a whole. At step two, Durling required that “[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” However, any secondary references must be “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.”
In this case, the Board determined that LKQ failed to establish that the challenged claim would have been obvious because LKQ failed to identify a Rosen reference. That is, the Board found that the reference proffered by LKQ differed from the claimed design in, inter alia, “the upper protrusion, the u-shaped notch, the door cut line, a circular wheel arch, the lower rear terminus, . . . first and second creases along with the concavity line, and the inflection line.” The Board found that LKQ’s proffered reference did not “create[] ‘basically the same’ visual impression” as the patented design. The Board ended its obviousness analysis without further consideration. On appeal, a panel of the Federal Circuit affirmed the Board decision. Applying Rosen and Durling, the majority affirmed the Board’s non-obviousness determination, concluding that substantial evidence supported the Board’s findings that “LKQ failed to identify ‘the correct visual impression created by the patented design as a whole,’” and that “LKQ failed to show that [its reference] creates ‘basically the same’ visual impression as the claimed design.” Noting, however, what the Court described as “considerable tension” between the Rosen and Durling tests and the Supreme Court’s obviousness test in KSR, the Court granted rehearing en banc and vacated the panel opinion. Among other questions, the Court requested briefing on: (1) whether KSR overrules or abrogates the Rosen-Durling test; (2) if not, whether the court should nonetheless eliminate or modify the Rosen-Durling test; and (3) if the answer to either of these two questions was affirmative, what test should apply for evaluating design patent obviousness challenges.
On reconsideration, the Court began with the statutory language regarding obviousness, from 35 U.S.C. § 103 (pertinent part): “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” The Court turned to the Supreme Court’s decision in Graham v. John Deere Co. of Kansas City, which identified factual inquiries involved for utility patents, including “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; and “the level of ordinary skill in the pertinent art.” More recently, the Supreme Court again addressed the standards for assessing non-obviousness in KSR. 550 U.S. 398. There, the Supreme Court rejected the Federal Circuit’s rigid application of the “teaching, suggestion, motivation” test in favor of a more expansive approach recognizing common sense. The Supreme Court in KSR further explained that a person of ordinary skill in the art could find a motivation to combine prior art references in ways other than meeting the TSM test as rigidly applied. The Supreme Court explained that while the TSM test might provide helpful insight on the obviousness of an invention, such insights “need not become rigid and mandatory formulas” as the “obviousness analysis cannot be confined by a formalistic conception.”
The Federal Circuit also found that its strict Rosen-Durling test was inconsistent with Supreme Court precedent specific to design patents, which also had employed a more flexible, common sense approach to its infringement analysis.
In light of the foregoing, the Federal Circuit held that its current test for design patent obviousness was inconsistent with Supreme Court precedent (as well as the more flexible language of 35 U.S.C. § 103), including in its threshold rigidity. The Court said, “Rosen-Durling is out of keeping with the Supreme Court’s general articulation of the principles underlying obviousness, as well as its specific treatment of validity of design patents.” The Court concluded that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—were improperly rigid.
With respect to a new, post-Rosen-Durling framework for evaluating obviousness of design patent claims, the Court agreed that invalidity based on obviousness of a patented design is determined based on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent under § 103, that is, on application of the Graham factors. The fact finder should consider the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of the design. The Court held there is no threshold similarity or “basically the same” requirement to qualify as prior art. Rather, an analogous art requirement applies to each reference. The Court adopted a more flexible fact-based analysis of whether the references are analogous art in a manner similar to utility patents. Per the Court, analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design.
Notably, the Court expressly did not delineate the full and precise contours of the analogous art test for design patents. Per the Court, “Whether a prior art design is analogous to the claimed design for an article of manufacture is a fact question to be addressed on a caseby-case basis and we “leave it to future cases to further develop the application of this standard.”” where in the prior art.”
The Court also reiterated that, under its new, more flexible approach, the primary reference need not be “basically the same” as the claimed design. Rather, the primary reference need only be “something in existence—not . . . something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.”
The Court then applied the Graham factors to, inter alia, determine the differences between the prior art designs and the design claim at issue, casting aside a threshold “similarity” requirement.
The Court also considered “the level of ordinary skill in the pertinent art [must be] resolved,” noting that, in the design patent context, it had interpreted “a person of ordinary skill in the art to which the invention pertains” in § 103 as meaning that obviousness of a design patent claim is assessed from the viewpoint of an ordinary designer in the field to which the claimed design pertains.
As for the obviousness inquiry itself, the Court reaffirmed that the “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.” Where a primary reference alone does not render the claimed design obvious, secondary references may be considered. The primary and secondary references need not be “so related” such that features in one would suggest application of those features in the other but they must both be analogous art to the patented design. The motivation to combine these references need not come from the references themselves. But there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.
The Court also held that the obviousness inquiry for design patents still requires assessment of secondary considerations as indicia of obviousness or non-obviousness, when evidence of such considerations is presented. However, the Court left to future cases the determination of whether considerations such as long felt but unsolved need and failure of others will have significance to the obviousness inquiry in the design patent context.
In light of the foregoing, the Court vacated the Board’s determination of non-obviousness of the design patent at issue and remanded for the Board to address in the first instance whether the patent would have been nonobvious under 35 U.S.C. § 103 based on primary reference alone or Lian as modified by the secondary reference, applying the framework for evaluating obviousness of design patent claims set forth in this opinion.
The Court’s new framework for determining obviousness of design patents, consistent with its long-standing KSR-Graham framework for utility patents, should make it easier to invalidate design patents on the basis of obviousness. In rejecting the rigid Rosen-Durling test, the Court has adopted a more common sense, flexible approach that takes into consideration the level of ordinary skill in the art, the scope and content of the prior art (including analogous art), and other considerations. While it is too soon to evaluate the effect of this new framework, its differences from Rosen-Durling suggest that more design patents will be vulnerable to determinations of obviousness.
