On May 21, 2024, the en banc Federal Circuit overruled the Rosen-Durling test for design patent obviousness, holding that Supreme Court law dictates "a more flexible approach … for determining non-obviousness. LKQ v. GM, --- F.4^th --- (Fed. Cir. May 21, 2024). This decision should afford design patent challengers more creativity in framing obviousness theories, yet the decision also cautions that creativity is not always persuasive and reiterates the bar against impermissible hindsight.

The old Rosen-Durling test required: (i) a primary reference that is "basically the same" as the challenged design; and (ii) secondary references that are "so related to the primary reference that features in one would suggest application of those features to the other." The court held that Rosen-During was "too rigid" in light of Graham v. John Deere, KSR v. Teleflex, and other Supreme Court precedents.

The court largely adopted the Supreme Court's broader Graham factors for utility patent obviousness: scope and content of the prior art, differences between the prior art and the challenged claim, level of ordinary skill, and secondary considerations. Nonetheless, the court cautioned that a patent challenger "will likely need to do more" to prove obviousness when its prior art references have disparate visual appearances. And the court also stressed that obviousness cannot be shown by hindsight, but requires proof that, at the time the design was invented, an ordinary designer would have been motivated to combine or modify the prior art to achieve the claimed design.

In sum: Design patent challengers now have more flexibility to frame their obviousness theories under LKQ. Nevertheless, they must still develop visually persuasive reasons for why a designer of ordinary skill would combine or modify prior art to achieve the challenged design, without the use of impermissible hindsight.