The majority of 2024 was a quiet year for design patent cases at the Court of Appeals for the Federal Circuit. The court issued five opinions involving U.S. design patents: one Rule 36(a) affirmance, two decisions involving litigation misconduct, one affirmance of an Examiner’s (and Board’s) rejection, and one en banc decision that overturned more than 40 years of obviousness case law. Below we discuss the two substantive cases: LKQ Corporation v. GM Global Technology Operations LLC and In re: Justin Samuels, Samuel Rockwell.
LKQ Corporation v. GM Global Technology Operations LLC (en banc)
2024 brought the first en banc Federal Circuit patent decision in over five years and the first in over a decade to deal with design patents. The decision addressed whether the long-standing obviousness analysis applied to design patents is in line with Supreme Court precedent. The decision was based on an inter partes review challenge that LKQ filed challenging GM’s design patent. LKQ was once a licensed repair part vendor for GM. But after renewal negotiations fell through in early 2022, GM informed LKQ that the parts LKQ was selling were no longer licensed and therefore infringed GM’s design patent. In response, LKQ sought to invalidate GM’s auto fender design patent in an inter partes review. The U.S. Patent Trial and Appeal Board (PTAB) ruled in GM’s favor—finding that LKQ had not shown that the patent was obvious.
LKQ appealed. LKQ argued to the Federal Circuit that the U.S. Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)—a case involving the obviousness analysis for utility patents—should apply to design patents. In particular, LKQ argued that the Rosen-Durling obviousness standard for design patents (which the PTAB applied in LKQ’s IPR) is inappropriate and should more closely parallel the obviousness standard used for utility patents. The original three-judge Federal Circuit panel rejected LKQ’s argument and affirmed the PTAB’s finding. But, on June 30, 2023, the full Federal Circuit agreed to hear the case en banc and consider whether the design patent obviousness analysis requires modification.
On May 21, 2024, the en banc Federal Circuit ruled that the Rosen-Durling test was too rigid and incompatible with the Supreme Court’s KSR decision. The decision eliminates the Rosen-Durling test, overruling more than 40 years of precedent defining the design patent obviousness standard. In particular, the court rejected both the previous requirement that the primary reference be “basically the same” as the claimed design and the previous requirement that any secondary reference be “so related to the primary reference that the appearance of certain ornamental features in one would suggest application of those features to the other.” To replace the Rosen-Durling test, the court stated that a flexible approach should be applied, akin to that used for utility patents. In particular, the court stated that the four Graham factors should apply to the design patent obviousness analysis: 1) the scope and content of the prior art, 2) the differences between the prior art and the claimed invention, 3) the level of ordinary skill in the art, and 4) any secondary considerations of non-obviousness.
The court left the challenge of determining precisely how the utility patent test would apply to design patents to later cases. For instance, the en banc decision explicitly left open the question of what will constitute analogous art in the design patent context. The court stated that a prior art reference in the same field of endeavor as the claimed design would be analogous art (as it is for utility patents), but did not “foreclose that other art could also be analogous.” The court did not define the contours or test for this second, open-ended option for determining if art is analo-gous, leaving it to be “addressed on a case-by-case basis” and developed in the future.
The decision also explicitly left open the question of what secondary considerations of non-obviousness will be possible for design patents. The court noted that secondary considerations, including “commercial success, industry praise, and copying” can demonstrate non-obviousness. It went on to state that it is “unclear whether certain other factors such as long felt but unsolved needs and failure of others apply in the design patent context.”
Answering these questions—as well as assessing motivation to combine arguments—will likely be a source of uncertainty and cost for design patent applicants, patent owners, and challengers, as well as design examiners at the USPTO.
The decision also offered a concurring opinion, which advocated for simply loosening Rosen-Durling rather than over-ruling it altogether. The concurrence believed the test just needed “a bit of tinkering.” But the majority disagreed.
In re: Justin Samuels, Samuel Rockwell
Justin Samuels and Samuel Rockwell (collectively, “Appel-lants”) filed U.S. Design Patent Application No. 29/577,270 on September 12, 2016. The application was titled “Waffle Having a Waffle Pattern Side and a Smooth Side” and claimed an “ornamental design for a waffle having a waffle patterned side and a smooth side.” Figures 1 and 3 of the application (reproduced below) show a top view and a bottom view, respectively, of the claimed design.
The Examiner rejected the claim under 35 U.S.C. § 102(a)(1) as being anticipated by a video posted publicly on YouTube. The video is a review of a waffle sandwich that includes two waffles and filling between the two waffles. The Patent Trial and Appeal Board (PTAB) affirmed the rejection. Appellants then filed an appeal with the Federal Circuit.
Stills from the YouTube video are reproduced below. The Examiner and PTAB held that the image on the left shows (with the annotated arrow) the waffle-side top of the waffle and that the image on the right shows (with the annotated arrow) the flat bottom of the waffle.
Under the ordinary observer test, a prior-art design anticipates a claimed design “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, [the] two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Here, the Federal Circuit held that the anticipation test was satisfied. In particular, the court noted that the PTAB had properly considered as a whole both the claimed waffle and the prior-art waffle. The court said Appellants’ arguments were directed to specific features and failed to explain how any of the alleged differences would alter, to an ordinary observer, the “overall visual impression” of the prior-art waffle as compared to claimed waffle design. Because the ordinary observer test “is not an element-by-element comparison” and instead requires the factfinder to “compare similarities in overall designs, not similarities of ornamental features in isolation,” the Federal Circuit ruled that Appellants’ arguments failed and affirmed the rejection.
This article appeared in the 2024 Design Patents Year in Review: Analysis & Trends report.
