In a surprising move, the Court of Appeals for the Federal Circuit (“CAFC”) has granted a petition for rehearing en banc on the issue of whether the test for determining obviousness of design patents has been overruled by the Supreme Court’s 2007 decision in KSR v. Teleflex, 550 U.S. 398 (2007).  In the case, captioned LKQ Corp. et al v. GM Global Technology, the en banc CAFC has requested briefing as to whether the design patent obviousness test originally set forth in In re Rosen, 673 F.2d 388 (CCPA 1982) and blessed by the CAFC in Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) is good law in view of the Supreme Court’s obviousness holding in KSR, which significantly modified the obviousness inquiry for utility patents.  While there was no doubt that KSR did not apply to design patents since the underlying obviousness analysis for utility patents differs so significantly from that for design patents, the en banc CAFC has clearly demonstrated a renewed interest in the issue, and any changes to the test can have significant implications for all future-filed, pending, and active design applications and patents. 

Under the current Rosen test, an obviousness inquiry for design patents is predicated on the finding of a proper primary or Rosen reference, i.e., “a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’”  Durling, 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391).  In finding such a Rosen reference, the “basically the same” test requires consideration of the “visual impression created by the patented design as a whole.”  Id.  Once the Rosen reference is found, “other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.”  Id.; see also In re Harvey, 12 F.3d 1061, 1063 (Fed.Cir.1993).  The Durling court further specified thatthe secondary references “may only be used to modify the primary reference if they are ‘so related [to the Rosen reference] 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).

While very few issued, active design patents have been subject to obviousness rejections made under 35 U.S.C. § 103 (only 1.0–2.5% of such design patents received obviousness rejections), a new obviousness framework for design patents could create uncertainty for patent holders and applicants alike.  For example, a new test abrogating Rosen could render certain active design patents invalid in view of an expanded universe of prior art that could now be applied in an obviousness inquiry.  The en banc CAFC appears to have prospectively identified the potential underlying uncertainty as an issue, and has requested that the parties weigh in regarding whether modifying the existing Rosen test would “cause uncertainty in an otherwise settled area of law.” 

It remains to be seen how the en banc CAFC will determine the obviousness issue presented in LKQ and if the universe of prior art that can be used to reject a design claim should be expanded, but if recent panel decisions related to novelty and infringement in In re SurgiSil, F.4th 1380 (Fed. Cir. 2021) and Curver Luxembourg, SARL, v. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019), respectively (and discussed here), provide any insight, it is likely that a change is on the horizon and design patent holders and applicants will have to revisit and revise procurement and assertion strategies accordingly.