In a recent en banc decision concerning the standard for assessing obviousness challenges to design patents, the United States Court of Appeals for the Federal Circuit discarded its long-standing standard, known as the Rosen-Durling test and regarded by many as overly-rigid, and held that the standard for design patents should be the same as for utility patents.  The decision in LKQ Corporation v. GM Global Technology Operations LLC[1] will have significant implications for design patent applicants and owners going forward.

While utility patents protect what an invention does and how it is used, such as the function of a machine, design patents protect the design of an article, including ornamental characteristics, but not the article itself.  This could include protecting the shape of a bottle or decoration on packaging.  While design patents do not always attract the same level of attention as utility patents, they can be significant, such as in the multiple cases between Apple and Samsung throughout the 2010s regarding alleged infringement of several design patents covering various elements of the iPhone.

The case involved a petition by LKQ for inter partes review of a U.S. design patent owned by GM Global Technology LLC for the design of a vehicle’s front fender (the “GM patent”).  LKQ’s challenge was based on third-party prior art references for a front fender.  While the case also presented questions of patent anticipation, the key question was whether the fender design was obvious and, thus, unpatentable.  The Patent Trial and Appeal Board found that LKQ had not sufficiently established that the third-party patent anticipated the GM patent or that the claims of the GM patent were obvious under the Rosen-Durling test.[2]  A three-judge panel of the Federal Circuit affirmed, and the court then granted en banc review to consider whether the Rosen-Durling test had been overruled by recent Supreme Court cases.

After consulting the discussion of nonobviousness in Section 103 of the Patent Act, which does not distinguish between utility and design patents, the en banc panel turned to Supreme Court decisions regarding utility patents for guidance, specifically the seminal case setting out the factors to consider for obviousness in utility patents, Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), and the more recent KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).  The en banc panel paid specific attention to KSR, in which the Supreme Court held that the obviousness determination set out in Graham was supposed to be “expansive and flexible.” 550 U.S. at 415.

In contrast to this flexibility, the Rosen-Durling test used since the 1990s for assessing the obviousness of design patents required (i) identification of a single primary prior art reference that is “basically the same” as the claimed design, Rosen, 673 F.2d at 391, and (ii) that if any secondary references are combined with the primary reference to create a design with the “same overall visual appearance” as the claimed design, the 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,” Durling, 101 F.3d at 103. Given Section 103’s broad requirements to consider “differences between the claimed invention and the prior art,” 35 U.S.C.§ 103, and KSR’s rejection of rigid tests, the court overruled Rosen and Durling.

In laying out the new standard for determining design patent obviousness, the court turned to the Graham factors used for utility patents, including (i) the “‘scope and content of the prior art’ within the knowledge of an ordinary designer in the field of the design,” (ii)  “the differences between the prior art designs and the design claim at issue” and (iii) “the level of ordinary skill in the pertinent art.”  However, the en banc panel acknowledged that certain Graham factors applied to utility patents would not make sense for design patents, such as considering long felt but unresolved needs.  The decision also replaced the Rosen-Durling requirement that a prior art reference be basically the same as the claimed design with a standard that each reference must be an “analogous art,” which is determined by considering the field of endeavor of the designs, though the en banc panel left open the specifics of determining what constitutes an analogous art for design patents.  It then vacated the Board’s finding of nonobviousness and remanded for consideration in light of the newly announced standards.

The one concurrence in the case, by Judge Lourie, suggested that modifying the Rosen-Durling test to make it less rigid, rather than overruling Rosen-Durling wholesale, would suffice.  Judge Lourie’s opinion echoed many of the amici in the case, who cautioned that overruling Rosen-Durling would disrupt settled design patent practice and cause uncertainty in the field.

The LKQ decision may have far reaching implications in the design patent field, though alignment on using the Graham factors brings the analysis closer to that used for utility patents.  Some design patents that may have been found nonobvious under the Rosen-Durling test may be deemed the opposite under the Graham test, and new design patent applicants may face greater difficulty in securing protection. 

Key Takeaways

  1. Obviousness for both design and utility patents will now turn on the factors laid out in Graham.
  2. While not every component of the Graham test will easily apply to design patents, the standard for nonobviousness under Section 103 of the Patent Act does not distinguish between utility and design patents, necessitating equivalent treatment. 
  3. Prior art references for the design patent nonobviousness analysis must be “analogous art,” a term that is likely to be further fleshed out in future cases.

[1] The full text of the decision is available here

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