In a decision throwing out the long-standing test for design patent obviousness, the Federal Circuit in LKQ Corp. v. GM Global Tech. Operations LLC, (Fed. Cir. 2024) (“LKQ”) determined that the Rosen-Durling test was “improperly rigid” and that requiring an earlier design to be “basically the same” as the patented design was too narrow. The Circuit Court found that the Rosen-Durling test contradicted statutory guidelines and Supreme Court precedent by imposing an improperly rigid test. According to the Federal Circuit, Supreme Court cases, including Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), all suggest a more flexible approach in determining obviousness.
For a patent design to be obvious, the Rosen-Durling test required that (1) a primary reference be basically the same as the design in question, and (2) any secondary references be so related to the primary reference that the features in one would suggest application of those features to the other. If the first requirement was not met, the entire obviousness analysis would conclude.
First, the Circuit Court rejected the first requirement of the Rosen-Durling test, that the primary reference be “basically the same” as the challenged design claim. According to the Court, the Rosen-Durling requirement imposed a limitation in excess of the standard set forth in §103 of the Patent Act. Moreover, the first part of the Rosen-Durling test did not fit all obviousness scenarios for designs and could not be reconciled with Supreme Court precedent. Specifically, the heightened requirement under Rosen-Durling was directly inconsistent with Whitman Saddle, in which the Supreme Court found that the combination of the front half of one existing saddle with the back half of another saddle in creating their design was obvious. Neither prior saddle was “basically the same” as the final product and would have failed the Rosen test; yet the Supreme Court found obviousness.
The Federal Circuit court also rejected the second Rosen-Durling requirement that any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other. This second element was similarly rejected as contradicting Whitman Saddle. In Whitman Saddle, the Supreme Court relied on the knowledge and practice of a saddler or ordinary workman of the trade, rather than the “so related” requirement.
Having rejected the prevailing test, how did the Federal Circuit address obviousness? Analysis under LKQ begins by analyzing the scope of analogous art.
1. Is the prior art from the same field of endeavor as the claimed design?
If so, then obviousness could be present. For purposes of the inquiry, “same field of endeavor” includes designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs but does not include the broad universe of abstract design or creativity.
2. If the reference is not within the field of the inventor’s endeavor, is the reference still reasonably pertinent to the particular problem with which the inventor (or designer) is involved?
Application of the second part of the analysis remains somewhat unclear because design patents, unlike utility patents, are defined by the overall visual impression that the drawings convey not the problems they solve. Thus, the Federal Circuit did not conclusively determine whether other art could also be analogous. Instead, it categorized the inquiry as a fact-based question to be determined on a case-by-case basis, with future cases likely to shed light on how this analysis will be applied in the design patent context.
The Court also considered whether it would be obvious for a designer to combine earlier designs to arrive at the claimed design. Such an analysis would require consideration of whether a skilled designer would have a motivation to combine them. How such a designer’s motivation will be assessed is also an open question.
Another aspect of the obviousness analysis that was absent from the Rosen-Durling test but found in traditional utility patent analysis are so-called “secondary considerations,” such as commercial success, industry praise, and copying. The Federal Circuit stated that such items should be considered in the obviousness analysis of design patents. However, it is unclear if other factors, like enduring but unsolved needs and failure of others to solve the problem, apply to design patents. The Federal Circuit left these issues for future cases to determine.
The principal take-away from LKQ is that it is likely that more design patent applications will be rejected, and defendants in design patent cases now will have greater options available to defend their cases. Further, the Patent Trial and Appeal Board (PTAB) will have more flexibility in invalidating patents during inter partes review Now, it would seem that findings of obviousness by examiners and the PTAB are more likely since the analysis no longer hinges on a finding of prior art that is “basically the same” as the design in question. However, the application of LKQ to specific designs will remain highly uncertain until courts begin to apply the new standard in practice.
Article by Mohammed Alzweiy