Changes to design patent validity law may be coming thanks to LKQ v. GM, a case that we’ve been tracking since April 2021.  On February 5, 2024, in a rare en banc hearing, the Court of Appeals for the Federal Circuit asked tough questions on the foundations of the standard for design patent obviousness under Rosen/Durling.  Though the questions were wide-ranging, the overall takeaway from the full court’s questioning indicates discomfort with Rosen/Durling and signals that the existing standard is too rigid under Supreme Court precedent.  Here are some of the highlights from the argument:

The en banc court posed difficult questions about what, if anything, should be done about the Rosen/Durling test.  It struggled with whether focusing on the “problem to be solved,” as is done with utility patents, made any sense for ornamental designs.  The court also wondered about how, if at all, ornamental design validity should be assessed under the “analogous art” doctrine (another utility patent principle).  Concerns about upsetting long-settled precedent also arose, though some judges seem persuaded that KSR mandates more flexible obviousness analysis than the rigid Rosen/Durling analysis seems to contemplate.

Building on the KSR point, the appellant suggested that Whitman Saddle, an 1893 Supreme Court decision involving the combination of one prior art saddle’s front half with the back half of another saddle, established a more-flexible framework than Rosen/Durling.  The appellant speculated that the piecemeal prior art analysis might not pass muster under Rosen/Durling, suggesting incompatibility with KSR.  Some judges questioned whether the PTAB’s analysis in this IPR would’ve come out differently had the PTAB followed the Whitman Saddle analysis as opposed to Rosen/Durling.  Other judges questioned whether there was a difference between the “basically the same” standard for a primary reference, and the “substantially the same” standard for anticipation.

The PTO tried to split the difference, proposing that Rosen/Durling’s “basically the same” standard should be framed as “overall similar visual impression,” and that the analysis shouldn’t necessarily end if the threshold finding of overall visual similarity isn’t met.  The court seemed somewhat skeptical that “basically the same” is distinct from “overall similar visual impression,” and one judge asked the PTO to provide a “measuring stick” in cases like LKQ, where the references looked essentially the same.

Key Takeaways:  The en banc Federal Circuit is taking a hard look at the Rosen/Durling test for design patent obviousness.  Whether the court reaffirms the test, or modifies it, remains to be seen.  The wide-ranging questions from the full court suggest the judges are grappling with difficult questions about the foundations of design patents.  The court’s decision is likely to issue in the next few months.  Stay tuned.