Danger Ahead? Graham and KSR Now Apply to Design Patents | McDermott Will & Emery
On May 21, 2024, the US Court of Appeals for the Federal Circuit issued an en banc opinion overruling the long-standing Rosen-Durling test for obviousness of design patents in favor of the analytical framework used for utility patents outlined in Graham v. John Deere Co. and KSR Int’l Co. v. Teleflex Inc. LKQ Corporation et al. v. GM Global Technology Operations, LLC, Case No. 2021-2348 (Fed. Cir. May 21, 2024) (Stoll, Moore, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stark) (Lourie, concurring).
IN DEPTH
LKQ Corporation and Keystone Automotive Industries, Inc. (collectively, LKQ) filed an inter partes review (IPR) of GM’s design patent for a car part, asserting that it was unpatentable as obvious. The Patent Trial & Appeal Board applied the Rosen-Durling test and found that GM’s patent claim was not obvious. LKQ appealed the Board’s decision and a Federal Circuit panel affirmed the Board’s decision, declining to overrule the Rosen-Durling test for obviousness of design patents. The Court subsequently granted rehearing en banc.
Sitting en banc, the Federal Circuit overruled the Rosen-Durling test for obviousness of design patents and explained the new standard.
The Federal Circuit first addressed the Rosen-Durling test’s applicability for obviousness of design patents by reviewing Section 103 of the Patent Act, the Graham and KSR standards for obviousness of utility patents and the Supreme Court of the United States’ 1893 decision in Smith v. Whitman Saddle Co. Based on its review, the Federal Circuit determined that the Rosen-Durling test does not align with KSR, Whitman Saddle or any other precedent because of the rigidity of its framework. Specifically, the Court determined that the first part of the Rosen-Durling test was unduly rigid for requiring that the primary reference be “basically the same” as the challenged design claims, as Section103 and this approach conflicts with KSR’s flexible and expansive inquiry for obviousness.
In assessing the second part of the Rosen-Durling test, the Federal Circuit found that the requirement that the secondary reference be “so related” to the primary reference that the appearance of a certain ornamental feature in one would suggest the application of those features to the other did not align with Section 103 or Whitman Saddle, resulting in a rigid application of the obviousness inquiry.
After overruling Rosen and Durling, the Federal Circuit determined that the proper inquiry to assess the obviousness of design patents was to apply the Graham factors, which is used to assess utility patents. The Court proceeded to explain the application of the Graham factors to design patents.
In applying the first Graham factor, the Federal Circuit confirmed that the analogous art requirement applies to design patent obviousness instead of the “so related” test of Rosen-Durling, finding that the analogous art requirement should not be abandoned because it’s a flexible fact-based analysis. The Court further discussed the traditional two-part test for analogous art of utility patents, finding that the first part of the test (whether the art is from the same field of endeavor as the claimed invention) would apply to design patents in a straightforward manner.
As to the second part of the test, which is whether a reference that is not in the same field of endeavor is reasonably pertinent to the problem with which the inventor is involved, the Federal Circuit reasoned that it could not apply in the same manner because design patents do not clearly indicate any particular problem to be solved. The Court did not delineate what the full analogous art test would be for design patents, instead leaving future cases to address it on a case-by-case basis. The Court then went on to say that once analogous art was found, the first Graham factor required the identification of a primary prior art reference and, in the case of design patents, that reference would be the prior art that is the most visually similar to the claimed design and would typically be in the same field of endeavor (but did not have to be).
In applying the second Graham factor, the Federal Circuit explained that the visual appearance of the claimed design must be compared to that of the allegedly infringing design. In applying the third Graham factor, the Court determined that the level of ordinary skill of the art for design patents is the knowledge of a designer of ordinary skill who designs articles of the type involved.
According to the Federal Circuit, once the Graham factors have been applied, the obviousness of the claimed design is evaluated with an inquiry that focuses on the visual impression of the claimed design as a whole as opposed to selected individual features. The Court reiterated that a primary reference can be combined with secondary references to render a design obvious, but those secondary references do not need to be “so related” and instead need to be analogous art. Further, the motivation to combine these references must be supported by the record and indicate that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the features from the secondary references to create the same overall appearance as the claimed design.
Further, consistent with Graham, the Federal Circuit found that obviousness for design patents still requires assessing secondary considerations as indicia of obviousness or nonobviousness, including commercial success, industry praise and copying. The Court did not decide whether other secondary considerations apply to design patents, like unsolved needs or failure of others, leaving it open for future cases to determine whether they could apply in the design patent context.
Numerous amici filed briefs stated concerns that eliminating the Rosen-Durling test creates uncertainty for many design patents. The Federal Circuit disagreed, finding that courts could draw on precedent that applies the Graham test to utility patents when assessing the obviousness of design patents.
Lastly, the Federal Circuit addressed the merits of case. The Court remanded to the Board to apply the newly promulgated standard and address whether GM’s patent would have been obvious under Section 103 based on the prior art references raised by LKQ. In doing so, the Court also rejected the Board’s alternative ground for obviousness, finding that the Board cannot rely on claim construction in design patent cases for a detailed verbal description of the claimed design because it’s better represented by an illustration.
Judge Alan Lourie concurred in the Federal Circuit’s decision to vacate and remand the case for reevaluation of the claimed design in light of the majority opinion but did not agree that Rosen and Durling needed to be overruled. He believed that all that was necessary was to make the Rosen and Durling precedents less rigid by removing the use of “must” and “only” in their analyses. Judge Lourie further opined that the Rosen-Durling test has been applied to design patents for decades and that overruling the standard was destabilizing.
Practice Note: The Federal Circuit’s ruling changes the obviousness requirements for design patents to a less rigid standard, which can open design patents to additional scrutiny and validity challenges. Design patents should be sought with this new framework in mind and design patent owners should be aware of this new standard and its implications as it relates to the validity of their design patents.
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