En Banc CAFC Overrules Design Patent Obviousness Test in Light of KSR
“[O]ur elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent.” – CAFC opinion
Source: CAFC opinion
The full U.S. Court of Appeals for the Federal Circuit (CAFC)—minus Judges Newman and Cunningham—today overruled the so-called Rosen-Durling test for determining design patent obviousness, explaining that it has adopted “an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents.” The decision also said the Supreme Court’s precedent in KSR v. Teleflex favors a more flexible approach than Rosen-Durling.
The case stems from a January, 2023, decision in which the CAFC explained that, “applying the tests established in Rosen and Durling, the [Patent Trial and Appeal] Board [PTAB] found that LKQ failed to identify a sufficient primary reference, and therefore failed to prove obviousness by a preponderance of the evidence” of GM’s U.S. Patent D797,625, which covers an “ornamental design for a vehicle front fender.” The court ultimately said that “[w]e, as a panel, cannot overrule Rosen or Durling without a clear directive from the Supreme Court.”
But in June 2023, the court granted an increasingly rare en banc review following a petition in which LKQ argued that the CAFC and its predecessor court have been applying a “rigid approach” to determining obviousness of design patents for 40 years, and that the Supreme Court’s 2007 holding in KSR International v. Teleflex, Inc. expressly overruled such an approach.
In oral arguments held in February of this year, the CAFC judges seemed interested in tweaking the “Rosen-Durling” test but struggled with getting the parties to clearly articulate a replacement approach that wouldn’t be potentially just as bad.
The so-called Rosen-Durling test for design patent obviousness requires that, first, under In re Rosen (C.C.P.A., 1982), courts identify a prior art reference “the design characteristics of which are basically the same as the claimed design.” Next, under Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir., 1996)), if such a reference is identified, the court must consider whether it can be modified based on other references to come up with “the same overall visual appearance as the claimed design.”
Rosen-Durling is Too Rigid
Today’s precedential decision, authored by Judge Stoll, held that the court’s “test for design patent obviousness, in its present form, does not adequately align with KSR, Whitman Saddle, and other precedent, both in terms of its framework and threshold rigidity.”
While the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) rejected “rigid and mandatory formulas” for patent obviousness, the Court was not considering design patents. The Court also addressed design patent claims in Smith v. Whitman Saddle, an 1893 decision that looked at the validity of design patents in view of combined prior art but did not explicitly address “obviousness” because the term didn’t yet exist in the patent law.
But the CAFC concluded today that the two steps of the Rosen-Durling test “are improperly rigid” in light of this precedent. Instead, design patents, like utility patents, should be assessed for obviousness based on the Graham factors, which are derived from Graham v. John Deere Co. of Kansas City and are used to assess utility patent obviousness. The Court in KSR reaffirmed the Graham factors as the best way to analyze obviousness.
Applying Graham to Designs
The four Graham factors teach that when assessing obviousness one must consider: 1) the scope and content of the prior art; 2) the differences between the prior art and the claims at issue; 3) the level of ordinary skill in the art; and 4) secondary considerations of nonobviousness.
With respect to Graham factor one, the CAFC explained that “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 analogous art requirement reins in the scope of prior art and serves to guard against hindsight.”
During oral argument in LKQ, CAFC Chief Judge Moore lamented the fact that “I can only find one case of ours that talks about what the standard for analogous art is in the design patent context. Nary a brief, despite the many briefs we got, educated this court on what the replacement standard for analogous art should be.”
In the utility patent context, a two-part test is used to determine the scope of analogous art: “(1) whether the art is from the same field of endeavor as the claimed invention; and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”
The CAFC’s opinion said the first prong of this test applies in “a straightforward manner” to design patents but that how the second prong applies to design patents “is less apparent,” since “a design patent itself does not clearly or reliably indicate ‘the particular problem with which the inventor is involved.’” In light of this ambiguity, the court seemed to choose to leave it to future panels to flesh out:
“In this opinion, we do not delineate the full and precise contours of the analogous art test for design patents. Prior art designs for the same field of endeavor as the article of manufacture will be analogous, and we do not foreclose that other art could also be analogous. 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 case-by-case basis and we ‘leave it to future cases to further develop the application of this standard.’”
A primary reference still must be identified, as part of the first Graham factor analysis, but it “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,” said the court.
At factor two, the visual appearance of the claimed design must be compared with that of allegedly infringing design; at factor three the level of ordinary skill in the art is assessed “from the viewpoint of an ordinary designer in the field to which the claimed design pertains”; and at factor four, secondary considerations are considered. The court did not disturb the latter analysis.
Compelled by Precedent
The CAFC dismissed amici concerns that overruling Rosen-Durling would create uncertainty, arguing that “[t]he Graham four-part obviousness test for utility patents has existed for a very long time and there is considerable precedent from which the PTO and the courts can draw when assessing obviousness in the design patent context.”
While the court acknowledged there may be some brief initial upheaval, “our elimination of the rigid Rosen-Durling test
is compelled by both the statute and Supreme Court precedent.”
In light of its ruling, the court vacated the PTAB’s determination of nonobviousness and remanded to the PTAB for assessment based on the new framework set forth in its opinion. It also reinstated the portion of the panel opinion holding that substantial evidence supports the Board’s finding of no anticipation.
Concurrence and Comment
In a concurring opinion, Judge Lourie said he would have allowed the Rosen-Durling test to stand and that it did not need to be overruled but ultimately concurred that the Board’s decision should be vacated and remanded “for reevaluation of the validity of the claimed design in light of the majority opinion.”
While Lourie conceded that the Rosen and Durling cases “may have used overly strong language,” he disagreed that it needed to be totally overhauled: “‘[O]verruled’?” It only needed to be modified. Overruling is destabilizing.”
IPWatchdog Founder and CEO Gene Quinn had this to say about today’s decision:
“If I had the opportunity to decide what the law of obviousness should be there is little doubt in my mind that I would never come up with the test announced in KSR. Not only does KSR make obviousness more subjective, it is ridiculous to pretend that there are six different rationales in addition to teaching, suggestion and motivation. There is only one KSR rationale—reasonably predictable—repeated six times using slightly different articulations. But be that as it may, as subjective as KSR is, that is the law and well-established precedent treats all patents and applications similarly for purposes of novelty and nonobviousness. Thus, while KSR makes little sense and lacks intellectual rigor, it is hardly shocking that the Federal Circuit would rule that KSR applies to design patents as well.
As far as the substance goes, this case also highlights the continuing problem with double standards. Lian, the primary reference, is virtually identical to the claimed design at issue, with the most minor of differences. If KSR were applied evenly to all applications, a lot less would issue in many technology areas, and maybe that is what it will take for common sense reform. Forcing everyone to deal with the arbitrary and capricious obviousness laws seems much more fair than only applying KSR strictly to innovations of greater consequence.”
