On May 21, the Federal Circuit, in an en banc decision of LKQ Corp. v. GM Global Tech. Operations LLC, has overruled the Rosen-Durling test applied in evaluating obviousness of design patents. Instead, the CAFC applied the Graham v. John Deere Co. requirements for obviousness, and further defined by KSR, that is already applied in utility patents.

The Rosen-Durling two-part test provides that (1) a primary reference must be “basically the same” as the challenged design, and (2) 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. In rejecting the Rosen test, the court asserted that these tests were too rigid and the requirements that limits a primary reference to designs that are “basically the same” as the claimed design imposes limitations “absent from § 103’s broad and flexible standard.” The court continued stating that this “basically the same” requirement is additionally inconsistent with the Supreme Court’s analysis in Whitman Saddle and the general guidance in KSR.

The Court also rejected the second factor under the Rosen-Durling test concluding that the “so related” requirement is similarly at odds with the broad standard for obviousness set forth in § 103

and Supreme Court precedent. Instead, the Federal Circuit confirmed that the Graham factors already being applied in utility patents should apply for design patents based on an analogous art requirement, and that there is no threshold similarity or “basically the same” requirement to qualify as prior art. The Court did acknowledge the difference between utility patents and design patents in determining analogous art. As such, the Federal Circuit concluding that the first part, of the two part test applied in utility patents to determine analogous art, can similarly be applied to determine “whether the art is from the same field of endeavor as the claimed invention.” The court, however, acknowledged differences in applying the second part where “if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” The decision did not define how the “reasonably pertinent” and “analogous art” considerations are to be applied, and instead left it open to be developed through future cases.