A New Era for Design Patent Claims: Federal Circuit Overrules Rosen-Durling Test in LKQ Corp. v. GM Glob. Tech Operations LLC | Haug Partners LLP
[author: Ruchita Jain]
In LKQ Corp. v. GM Global Tech Operations LLC, the United States Court of Appeals for the Federal Circuit, sitting en banc, overruled the Rosen-Durling test for assessing obviousness of design patents.1 The now-outdated Rosen-Durling test set forth a two-part analysis.2 First, the test required that the primary reference cited must be “basically the same” as the challenged design claim.3 Second, the test required 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.4 In overruling this approach, the Court held that the obviousness determination for design patents requires “a more flexible approach” consistent with the requirements of 35 U.S.C. § 103.5
Aligning the new test with U.S. Supreme Court precedent, including KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and Congress’s statutory scheme for design patents, the Court created a more flexible approach for determining nonobviousness of design patents.6 Applying the same test used to assess obviousness of utility patents, the Court adopted the Graham factors when conducting an obviousness analysis for design patent claims.7
Background
The patent at issue is U.S. Design Patent No. D787,625 (“the ’625 Patent”), which claims a design for a vehicle’s front fender.8 The ’625 Patent is owned by GM Global Technology, LLC (“GM”).9 Appellants LKQ Corporation and Keystone Automative Industries, Inc. (“LKQ”) challenged the ’625 Patent, asserting invalidity under 35 U.S.C. § 102 or § 103 based on a reference (“Lian”) alone or as modified by a second reference (“Tucson”).10
LKQ filed a petition to institute inter partes review of the ’625 Patent.11 Applying the two-part Rosen-Durling test, the Board found that the challenged claim was not obvious.12 Under Rosen step one, the Board found that LKQ failed to identify a reference that created “basically the same” visual impression as the patented design.13 Because step one of the Rosen-Durling test was not met, the Board did not reach the second step.14
LKQ appealed the decision to the Federal Circuit, arguing that the Supreme Court’s decision in KSR implicitly overruled the Rosen-Durling test.15 Refusing to overrule the test without a clear directive from the Supreme Court, a Federal Circuit panel comprised of Judges Lourie, Clevenger and Stark affirmed the Board’s decision.16 The Court agreed with the Board that LKQ failed to show that the Lian reference created “basically the same” visual impression as the claimed design.17
LKQ filed a petition for en banc review.18 The Court was asked to consider the following questions: whether KSR overrules or abrogates the Rosen-Durling test; if not, whether the court should nonetheless eliminate or modify the Rosen-Durling test; and, if the test is overturned, what test should apply for evaluating design patent obviousness challenges.19
Discussion
The Federal Circuit, sitting en banc, vacated the Board’s determination of nonobviousness for the design patent claim in question.20 The decision was remanded for a nonobviousness analysis using the Graham factors described below, considering the Lian reference alone, or the Lian reference modified by the Tucson reference.21
The opinion issued by the Court began with a discussion of Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) and KSR.22 The Court explained that in both cases, the Supreme Court made clear that the obviousness analysis cannot be confined by a formalistic conception; rather, it must be more expansive and flexible.23 For example, in Graham, the Supreme Court noted several factors relevant to the obviousness inquiry, such as scope and content of prior art, and in KSR, the Supreme Court rejected the rigid “teaching, suggestion, or motivation” test.24
The Court also cited a notable design patent case, Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), where the Supreme Court considered whether a design patent claim directed to an ornamental design for a saddle was patentable in view of the combination of two prior art saddles.25 There, the Supreme Court considered the prior art in the field, the knowledge of an ordinary saddler and the differences between prior art and the claimed design, to conclude that the combining the two saddles was nothing more than the exercise of the ordinary skill of workmen in the saddle trade.26
Relying on these cases, the Court ruled that both steps of the Rosen-Durling test were inconsistent with Supreme Court precedent and the statutory language of § 103, because both steps were rigid and limiting, and imposed limitations that were absent from § 103’s broad and flexible standard.27
New Framework for Design Patent Claims
Having overruled the Rosen-Durling test, the Court adopted the more flexible Graham factors used in the utility patent obviousness analysis as the analytical framework for reviewing the validity of design patent claims.28
As reiterated by the Court, the first Graham factor is “scope and content of the prior art” within the knowledge of an ordinary designer in the field of the design.29 The first Graham factor does not consider whether the primary reference is “basically the same” as the challenged design claim, but rather requires finding an analogous art reference to limit the scope of prior art and guard against hindsight.30 The Court explained that analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design.31 However, the Court refused to define a test for determining whether the asserted prior art is “analogous”.32 Rather, the Court stated that this is a case-by-case inquiry for future courts to develop an application of this standard.33
With respect to the second Graham factor (“determining the differences between the prior art designs and the design claim at issue”)34, the Court noted that the visual appearance of the claimed design must be compared with prior art designs from the perspective of an ordinary designer in the field of the article of manufacture.35
On the third Graham factor—which requires determination of “the level of ordinary skill in the pertinent art”—the Court interpreted the hypothetical person in design patent cases to mean a designer of ordinary skill who designs articles of the type involved.36
Under LKQ’s application of the Graham factors to design patent obviousness analyses, the inquiry now focuses on whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design.37 The Court reaffirmed the principle that the visual impression is considered as a whole and not on selected individual features.38 Where there is no single primary reference that renders the claimed design obvious, secondary references may be used.39 However, those secondary references do not have to be “so related”, as articulated by step 2 of the Rosen-Durling test.40
Consistent with KSR, the Court also noted that the obviousness inquiry may also require the assessment of secondary considerations, such as commercial success, industry praise and copying.41 The Court left the determination of other factors often considered in utility patent cases, such as failure of others, to future courts.42
Takeaways
The decision in LKQ overturns almost three decades of precedent since the Rosen-Durling test issued and will have significant impact on design patent validity moving forward. The new test will make expand the scope of prior art that can invalidate design patents for obviousness, and also make it more difficult to obtain design patents. However, by using the obviousness test from utility patents, this new approach promotes consistency in evaluating both utility and design patents.
1 LKQ Corp. v. GM Glob. Tech. Operations LLC,, 2024 U.S. App. LEXIS 12139, at *5 (May 21, 2024) (referencing the test set forth in In re Rosen, 673 F.2d 399 (C.C.P.A. 1982) and Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996)).
2 Id.
3 Id.
4 Id.
5 Id.
6 Id.
7 Id. at *25.
8 Id. at *6.
9 Id.
10 Id.
11 Id.
12 Id. at *6-7.
13 Id. at *7.
14 Id. at *8.
15 Id. at *9.
16 Id. at *9-10.
17 Id. at *10.
18 Id. at *11.
19 Id.
20 Id. at *39.
21 Id.
22 Id. at *12-15.
23 Id. at *15.
24 Id. at *12-15.
25 Id. at *15.
26 Id. at *17.
27 Id.
28 Id. at *25.
29 Id.
30 Id. at *26-27.
31 Id. at *29.
32 Id.
33 Id.
34 Id. at *31.
35 Id. at *32.
36 Id.
37 Id. at *34.
38 Id.
39 Id.
40 Id. at *35.
41 Id. at *36-37.
42 Id.
