In a landmark decision, the US Court of Appeals for the Federal Circuit has overruled the longstanding test for assessing whether a design patent is considered obvious in view of prior art. This decision represents a pivotal change in design patent law, leaving many unanswered questions and requiring strategic adjustments to navigate the new and uncertain landscape effectively.

On May 21, 2024, the Federal Circuit issued an en banc decision in the case of LKQ Corporation v. GM Global Technology Operations LLC, addressing design patent obviousness under 35 USC § 103.[1] The case centered around US Patent No. D797,625, held by GM, which is directed to a vehicle fender design. LKQ Corp. argued that the design was obvious in light of prior art and should not have been granted.

Nine of the 10 Federal Circuit judges agreed that the design patent tests, known collectively as Rosen-Durling, must be discarded due to the US Supreme Court precedent calling for greater flexibility when deciding if a patent is invalid as obvious. While he concurred in the judgement, Circuit Judge Alan Lourie wrote separately, expressing his view that the Rosen-Durling Test should be modified, not overruled.

The Rosen-Durling test required a primary reference that included design characteristics "basically the same" as the claimed design, supplemented by secondary references “so related” to the primary reference that features in one suggest the application of those features to the other to come up with the “same overall visual appearance” as the claimed design.[2]

Judge Kara Farnandez Stoll, for the court, stated that Rosen-Durling is "out of keeping with the Supreme Court's general articulation of the principles underlying obviousness." The Federal Circuit found this test to be overly rigid and inconsistent with the Supreme Court's guidance in KSR International Co. v. Teleflex Inc., which requires a flexible approach to obviousness for utility patents.[3]

NEW TEST FOR DESIGN PATENT OBVIOUSNESS

The court replaced the Rosen-Durling test with a more flexible approach, suggested by US Supreme Court precedent, for assessing the obviousness of design patents and utility patents. The new test leans largely on the factors laid out by the Court in Graham v. John Deere Co.[4] These Graham factors include:

• Scope and content of the prior art
• Differences between the prior art and the claimed design
• Knowledge of an ordinary designer in the relevant field
• Secondary considerations, such as commercial success, industry praise, and copying by competitors

The court emphasized that the Graham test requires a fact finder to assess the difference between the scope and content of prior art that would have been within the knowledge of an ordinary designer and the claimed design to determine whether the claimed design would have been obvious.

The court clarified that the primary prior art reference will likely be the most visually similar design to the claimed one. If a primary reference alone does not render the design obvious, secondary references can be considered. Both primary and secondary references must be “analogous art,” which includes art from the same field of endeavor as the claimed design. The court noted, however, that other art could also be analogous and that whether a prior art design is analogous to the claimed design is a factual case-by-case question.

Additionally, the court emphasized that there must be a record-supported reason, without hindsight, that an ordinary designer would have been motivated to modify the primary reference and secondary reference to achieve the claimed design's overall appearance, which requires a thorough analysis of whether an ordinary designer in the field would have found it obvious to combine features from the prior art references to create the same overall appearance as the claimed design.

The court noted that the Rosen-Durling test’s strict requirements for identifying an earlier design that is "basically the same" and references that are "so related" are inconsistent with the flexible approach demanded by the Supreme Court. The court did not define the scope of “analogous art” apart from confirming that it includes art from the same field of endeavor as that of the claimed design.

It also recognized that at least some traditional secondary considerations (commercial success, industry praise, and copying) will play an important role as evidence of non-obviousness but left open whether specific secondary considerations like long-felt but unsolved need and failure of others would hold any significance in an obviousness assessment.[5] The court acknowledged that there may be "some degree of uncertainty for at least a brief period."[6]

USPTO GUIDANCE ON THE NEW OBVIOUSNESS STANDARD

Following the decision, US Patent and Trademark Office (USPTO) Director Kathi Vidal issued a memo to patent examiners and the Patent Trial and Appeal Board on May 22, 2024. The memo outlined four factual inquiries based on the Graham factors for reviewing designs for obviousness.

Director Vidal offered further guidance for evaluating obviousness, and noted that after gathering information from the factual inquiries, patent examiners and adjudicators must evaluate whether the claimed design would have been obvious to an ordinary designer in the field. This involves assessing whether there would be a motivation to modify the prior art to achieve the claimed design, considering the overall visual impression and not just individual features. Both primary and secondary references must be analogous art, and there must be a reasoned basis, free from hindsight, for an ordinary designer to modify the primary reference based on the secondary references.

The memo emphasizes that the review must focus on the overall visual impression of the claimed design, not on individual features. Additional guidance and training will be provided to ensure the effective implementation of the new standard.

PRACTICAL CONSIDERATIONS

The Federal Circuit's decision has already led to a significant shift in how the USPTO examines design patent applications for obviousness. Examiners have already begun to issue rejections that purport to align with the new obviousness rubric. With the addition of new searching tools, such as image recognition technology, there will likely be a dramatic increase in the number of obviousness rejections and challenges.

Design patent challengers may now have better success invalidating a design patent as obvious, and may be more willing to pursue inter partes reviews or declaratory judgements than in the past. Design patent applicants should consider proactively countering obviousness challenges by exploring strategies like the following:

• Including support in their applications for narrowing drawing and title amendments
• Collect and retain evidence of secondary considerations like evidence of copying, industry awards and accolades, significant sales data attributable to the ornamental design
• Conducting patentability searches to assess prior art before filing
• Including descriptions in their applications to provide support for arguing that certain prior art references are not analogous

The full impact of this Federal Circuit decision will come into sharper focus as the USPTO and courts confront validity challenges to design patents issued under the previous and newly implemented obviousness standards.

[1] LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348 (Fed. Cir. May 21, 2024) (en banc).

[2] In re Rosen, 673 F.2d 388 (C.C.P.A. 1982); Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996).

[3] KSR Int'l Co. v. Teleflex Inc., 550 US 398 (2007).

[4] Graham v. John Deere Co., 383 US 1 (1966).

[5] LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 27-28 (Fed. Cir. May 21, 2024) (en banc).

[6] Id. at 29.

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