Federal Circuit Overrules Decades-Old Test for Design Patent Obviousness | Lathrop GPM
On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, overruled its longstanding test used to assess the obviousness of design patents. LKQ Corp. et al. v. GM Global Technology Operations LLC. In doing so, the court aligned the obviousness test for design patents with the more flexible test applied for utility patents, making it more difficult for would-be design patent owners to demonstrate the non-obviousness of their designs and easier for challengers to invalidate design patents based on obviousness.
GM Global Technology LLC owns U.S. Design Patent No. D797,625 which claims a design for a vehicle’s front fender. LKQ Corporation and Keystone Automotive Industries Inc. (collectively, “LKQ”) petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review of the patent, claiming in part that it was obvious based on two prior art fender designs.
The PTAB rejected LKQ’s obviousness argument, and denied the petition, by applying the “Rosen-Durling test,” which the Federal Circuit had instituted as the test for obviousness of design patents nearly thirty years ago. Under this test, prior art designs may be combined to invalidate a design patent as obvious only if (1) one of the prior art designs (the so-called primary reference or “Rosen reference”) is “basically the same” as the claimed design and (2) the other prior art designs are “so related” to the primary reference that features in one would suggest application of those features to the other. In rejecting LKQ’s obviousness argument, the PTAB determined that LKQ did not satisfy the first step because it did not identify a “Rosen reference”—a prior art design that was “basically the same” as the claimed design. And because LKQ did not satisfy this first step, the PTAB ended its obviousness analysis without further consideration.
LKQ appealed, arguing in part that the U.S. Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007) implicitly overruled the Rosen-Durling test. In KSR, the Supreme Court rejected “rigid” and “formalistic” rules in favor of an “expansive and flexible” approach to determining obviousness in the context of utility patents. This flexible approach focuses on whether differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the pertinent art at the time of the invention.
The Federal Circuit panel affirmed the PTAB’s application of the Rosen-Durling test, concluding that it could not overrule Rosen or Durling because it did not have clear directive from the Supreme Court. The full court then granted rehearing en banc to decide the issue.
The majority opinion concluded that the Rosen-Durling test is “improperly rigid” and out of step with the Supreme Court’s precedent. Instead, the majority opinion held that the more flexible obviousness standard for utility patents should also apply to design patents. Rather than require a primary prior art reference to be “basically the same” as the claimed design and secondary references to be “so related” to the primary reference, prior art designs need only be “analogous” to the claimed design.
The Federal Circuit’s opinion is significant because it overrules a test that has governed the validity of design patents for nearly three decades. In addition, because it reinterprets existing law, it takes effect immediately and applies not only to pending design patent applications but also to design patents already issued. By applying the more flexible standard for obviousness of utility patents to design patents, as well, the opinion makes it more difficult for design patent applicants to obtain their patents and easier for challengers to invalidate design patents in infringement litigation and in PTAB proceedings. The pool of potential prior art in the context of design patents is no longer shallow—design patent applicants and patentees will now have to contend with the deep waters of analogous prior art, just as utility patent applicants and patentees have for decades.
Challengers of design patents are rejoicing with the newfound flexibility provided by this opinion. Design patent holders and designers may be nervous about the long-term impact this may have on their current and future design patents. In either situation, it is important to have strong legal advice for how best to challenge or protect a design patent.
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