As we have previously written about here, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has granted a petition for an en banc rehearing of LKQ Corp. et al v. GM Global Technology to rule on the issue of whether the current test for determining obviousness of design patents, i.e., the Rosen/Durling Standard, is proper in view of the Supreme Court’s 2007 decision in KSR v. Teleflex, 550 U.S. 398 (2007), which significantly broadened the obviousness inquiry for utility patents beyond the classic Teaching Suggestion Motivation (“TSM”) test.  The Rosen/Durling Standard was originally set forth in In re Rosen, 673 F.2d 388 (CCPA 1982) and both upheld and further clarified by the Federal Circuit in Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996).  The Standard first requires the identification of a proper primary or Rosen reference, which is “a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design’” and then the modification of the primary reference with a secondary reference. Durling, 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391). 

With the Rosen/Durling Standard, a secondary reference “may only be used to modify the primary reference if they are ‘so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.’”  Id. (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)). Under the current Standard, the range of applicable prior art combinations in design cases is limited.  An acceptable example of a prior art combination under the Rosen/Durling Standard is shown in MRC Innovations, Inc. v. Hunter Mfg., LLP, in which the combination of dog jerseys shown in the right two columns below were used to invalidate the enforced design patent in the left column. 747 F.3d 1326, 1334 (Fed. Cir. 2014).

In contrast to the Rosen/Durling Standard, the U.S. Supreme Court held in KSR that in relation to utility patents, the obviousness inquiry is “an expansive and flexible” inquiry that need not be limited to the TSM test, as had been held by the lower circuit courts.  KSR, 550 U.S. at 415.  As such, in the post-KSR world, the prior art combinations that are now available in the utility patent context are generally more flexible and expansive than the prior art combinations that are applicable to design cases, which are more narrowly limited to primary and secondary references that encompass related designs.  Durling, 101 F.3d at 103. 

Although there is a little doubt to this author that KSR does not apply to design patents since the underlying obviousness analysis for inventions differs so significantly from that for industrial designs, there appears to be a renewed interest by the Federal Circuit in reviewing the issue.  Given that the ruling in LKQ could change the obviousness inquiry for design patents—which could have substantial implications for all future-filed and pending design applications and issued design patents—the Federal Circuit has agreed to hear this case en banc.  This will mark the first time in over 15 years that the Federal Circuit has done so, the last occurrence being the case of Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).  In addition to the Federal Circuit recognizing the substantial implications at stake, public and private actors have taken note of the high stakes and subsequently have submitted numerous amicus briefs for the hearing.  As it stands, there have been seven amicus briefs submitted in support of LKQ that have an underlying tone of supporting a right to repair, four amicus briefs submitted in support of neither party, and seven amicus briefs submitted in support of GM which have an underlying tone of protecting design rights holders.

The en banc case will be held on February 5, 2024 and will be available for streaming here.