Federal Circuit Overrules Obviousness Test for Design Patents | Morrison & Foerster LLP
Overview
In its first en banc patent decision since 2018, the Federal Circuit overruled the longstanding obviousness test for design patents under 35 U.S.C. 103. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21‑2348 slip op. (Fed. Cir. May 21, 2024) (en banc). The court concluded that the test, known as the Rosen‑Durling test, is overly rigid and inconsistent with Supreme Court opinions on the obviousness of utility patents.
Factual Background
Appellee GM Global Technology LLC (“GM”) owns a design patent covering the design for the front fender used in GM’s 2018-2020 Chevrolet Equinox. Appellants LKQ Corporation and Keystone Automotive Industries, Inc. (collectively “LKQ”) supply aftermarket auto parts. LKQ filed a petition to institute an inter partes review of GM’s patent, alleging that the patent is unpatentable under 35 U.S.C. 102 based on a U.S. design patent by Lian (“Lian”) or under 35 U.S.C. 103 based on Lian alone or Lian in view of a promotional brochure for the 2010 Hyundai Tucson.
The PTAB found for GM on both grounds. LKQ Corp. v. GM Global Tech. Operations LLC, IPR 2020‑00534, WL 3411458 (PTAB Aug. 4, 2021). The Board dispensed with the Section 102 challenge by applying the “ordinary observer” test for anticipation of design patents set forth in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871). That test asks if an ordinary observer, giving such attention as a purchaser usually gives, would find two designs to be substantially the same and be induced to purchase one design supposing it to be the other. The Board also rejected LKQ’s Section 103 challenge after applying the Rosen-Durling test for design patent obviousness. Earlier this year, a Federal Circuit panel affirmed. LKQ Corp. v. GM Global Tech. Operations LLC, No. 2023-2348, 2023 WL 328228 (Fed. Cir. Jan. 20, 2023).
The Rosen-Durling Test for Obviousness
The Rosen-Durling test is a two-prong test derived from In re Rosen, 673 F.2d 388 (CCPA 1982) and Durling v. Spectrum Furniture Co, Inc., 101 F.3d 100 (Fed. Cir. 1996). The first prong requires the existence of what is commonly known as a Rosen reference, which is “a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’” Durling, 101 F.3d at 103. Whether the design characteristics of a Rosen reference are “basically the same” depends on the visual impression created by the patented design as a whole. Rosen, 673 F.2d at 391.
The second prong of the test states that, “once 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.” Durling, 101 F.3d at 103. 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.” Id.
En Banc Decision
The Federal Circuit vacated the panel opinion, concluding that the Rosen-Durling test is overly rigid and inconsistent with Supreme Court precedent regarding obviousness of utility patents set forth in Graham v. John Deere Co., 383 U.S. 1 (1966) and supplemented by KSR Int’l Co. v. Teleflex, 550 U.S. 398 (2007). Graham established a four-factor test for determining obviousness. These factors include the scope and content of the prior art, the differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and secondary considerations of nonobviousness (e.g., commercial success, long felt need, failure of others, etc.). Graham, 383 U.S. at 17-18. More recently, the Supreme Court addressed the obviousness standard in KSR, opting for an even more flexible, common-sense approach. The Supreme Court held that courts should still consider the Graham factors in assessing obviousness, but the analysis should not be based upon “rigid preventative rules that deny factfinders recourse to common sense.” 550 U.S. at 421.
The court concluded that the Rosen-Durling test’s requirements that the primary reference be “basically the same” as the challenged design and that any secondary references 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” are the kind of rigid requirements that KSR discouraged. The court found support for this position in an 1893 design patent-specific obviousness case, Smith v. Whitman Saddle Co., 148 U.S. 674 (1893). In Whitman Saddle, the Supreme Court considered whether a design patent to a saddle was obvious in view of two prior art saddles, one of which described the front half of the claimed saddle and one of which described the back half of the claimed saddle. The Supreme Court ultimately determined that the saddle design was obvious, but its analysis focused on “the prior art in the field of the article of manufacture, the knowledge of an ordinary saddler, and the differences between the prior art and the claimed design,” rather than a rigid inquiry like the Rosen-Durling test. Id. at 681. Of particular importance to the Federal Circuit was that Whitman Saddle did not require that either prior art saddle was “basically the same” as the claimed design. Thus, in the Federal Circuit’s view, Whitman Saddle, coupled with Graham and KSR, requires the obviousness inquiry for design patents to be more flexible.
The New Obviousness Test
As a result of this decision, the new obviousness test for design patents mirrors that for utility patents. Obviousness will be 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.” LKQ, No. 21-2348 slip op. at 19 (quoting Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997)).
In discussing the application of the Graham factors to design patents, the Federal Circuit reaffirmed that obviousness should be assessed from the perspective of an ordinary designer in the field to which the claimed design pertains. Id. at 25. The court also stated that an “analogous art requirement,” which the prior art relied upon for obviousness be analogous to the field of the claimed invention that applies to design patents. Id. at 20. The Federal Circuit recognized that, “in this opinion, we do not delineate the full and precise contours of the analogous art test for design patents.” Id. “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.” Id. at 23. The court also reaffirmed that secondary considerations of non‑obviousness should be considered. Id. at 27.
Implications
Where does this leave us? GM and several amici raised concerns that overruling the Rosen-Durling test would lead to confusion and inconsistency. The Federal Circuit acknowledged as much, but pointed out that there is a large body of precedent to guide the Patent Office and courts when assessing obviousness. Id. at 28.
For litigants, there is undeniably less certainty, at least in the near term. As the Federal Circuit recognized, “[w]hether a prior art design is analogous to the claimed design for an article of manufacturer is a fact question to be addressed on a ‘case-by-case basis . . . .’” Id. at 23. Future cases will inform how parties, patent examiners, and courts should apply the Graham factors and the analogous art requirement to design patents.
This decision also is likely to have a noticeable impact on the examination of design patent applications. During oral argument, the Solicitor for the Patent Office indicated that only about four percent of design patent applications are rejected as obvious. With this new, more flexible test, this rate is likely to increase. That, in turn, will likely cause longer examination periods and increased cost for applicants.
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