LKQ Corp. v. GM Global Technology Operations LLC has brought attention to the ongoing debate surrounding design patent law, particularly with respect to the Rosen-Durling test for design patent obviousness. The outcome of this case could have significant implications for the automotive industry and other sectors that rely on design patents to protect their intellectual property.
Background and Significance
Design patents play a significant role in the automotive industry by protecting the unique and innovative aesthetic features of vehicles and their components. These patents grant exclusive rights to the ornamental design of a functional item, such as a vehicle front fender, headlight, or taillight. By obtaining design patents, automotive manufacturers can prevent competitors from copying their distinctive designs and maintain a competitive edge in the market.
LKQ Corp. v. GM Glob. Tech. Operations LLC, 71 F.4th 1383 (Fed. Cir. 2023) involves a dispute between LKQ Corporation and Keystone Automotive Industries, Inc., and GM Global Technology Operations LLC over a design patent held by GM. The patent, US Patent D797,625 , is directed to an ornamental design for a vehicle front fender. The case arose when LKQ petitioned for inter partes review of the '625 patent, arguing that it was anticipated by a prior art reference (US Patent D773,340) and would have been obvious over this reference alone or in combination with the design of the 2010 Hyundai Tucson as disclosed in a promotional brochure. The US Patent and Trademark Office Patent Trial and Appeal Board (PTAB) issued a final written decision concluding that LKQ had not demonstrated that the '625 patent was anticipated or would have been obvious before the effective filing date.
Key Issue - Applicability of the Rosen and Durling Tests in Light of KSR
On appeal to the Federal Circuit, LKQ contended that the Rosen and Durling tests, which PTAB relied on for its obviousness analysis (see In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)), have been implicitly overruled by the US Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), while GM responded that KSR does not overrule or abrogate Rosen or Durling.
The Rosen-Durling test is a two-step analysis used to determine the obviousness of design patents. The first step requires identifying a primary reference with design characteristics that are "basically the same" as the claimed design. The second step involves determining whether an ordinary designer would have modified the primary reference using secondary references to create a design with the same overall visual appearance as the claimed design.
In KSR, the Supreme Court rejected the rigid "teaching, suggestion, motivation" (TSM) test that had been applied by the Federal Circuit in determining whether a claimed invention would have been obvious to a person of ordinary skill in the art (PHOSITA). The Court advocated for a more flexible and expansive approach to obviousness, emphasizing that a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
The Federal Circuit found that the Rosen and Durling tests for obviousness were not implicitly overruled by KSR and affirmed PTAB’sdecision of no anticipation or obviousness. Following the panel decision, LKQ petitioned for a request for rehearing en banc. The Federal Circuit granted LKQ's petition for rehearing en banc, vacated the previous panel opinion, and reinstated the appeal, requesting the parties to file new briefs addressing specific questions related to the impact of KSR on design patent obviousness and the Rosen-Durling test. In particular, the order raised several issues to be heard, including 1) whether KSR overrules or abrogates Rosen and Durling, 2) whether KSR applies to design patents and suggests the court should eliminate or modify the Rosen-Durling test, 3) what the test for evaluating design patent obviousness should be if the Rosen-Durling test is eliminated or modified, 4) whether any precedent from the court has already taken steps to clarify the Rosen-Durling test, 5) whether eliminating or modifying the test would cause uncertainty in an otherwise settled area of law, and 6) what role the differences if any between design patents and utility patents should play in the design patent obviousness test.
Our Perspectives on the En Banc Issues
KSR addressed the obviousness standard in the context of utility patents, but it did not specifically address design patents. Nevertheless, the KSR decision emphasized a flexible and expansive approach to obviousness, which could potentially be applied to design patents as well. The Rosen and Durling tests, on the other hand, involve a more rigid approach to design patent obviousness.
While the Federal Circuit, in granting en banc review, may be considering whether the KSR decision's emphasis on a flexible approach to obviousness is incompatible with the more rigid Rosen and Durling tests for design patents, it is also possible that the Federal Circuit might find that KSR does not overrule or abrogate Rosen and Durling, as KSR did not explicitly address design patents. The court may also maintain that the more rigid approach in design patent obviousness is justified, due to the unique nature of design patents compared to utility patents.
Nevertheless, if KSR were to apply to design patents, it could suggest that the court should eliminate or modify the Rosen-Durling test to adopt a more flexible approach to design patent obviousness. KSR's emphasis on avoiding rigid rules in the obviousness inquiry and promoting an expansive and flexible approach might lead the court to reconsider the strict requirements of the Rosen-Durling test, such as the need for a single primary reference with "basically the same" design characteristics and the limitations on secondary references.
If the court then were to eliminate or modify the Rosen-Durling test, it would need to develop a new test for evaluating design patent obviousness challenges. One possible approach could involve a more flexible comparison of the claimed design with the prior art as a whole, considering the teachings of multiple references and the knowledge of an ordinary designer. This approach could align more closely with the flexible and holistic analysis endorsed by KSR for utility patents.
As for the existing test, there may be some precedents from the Federal Circuit that have taken steps to clarify the Rosen-Durling test or addressed relevant issues. For example, the court's decisions in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) and Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009) might provide some guidance on the relationship between the Rosen-Durling test and other aspects of design patent law, such as infringement analysis and the treatment of prior art. Egyptian Goddess eliminated the "point of novelty" test for design patent infringement, focusing on a holistic "ordinary observer" test, which encourages comparison of designs as a whole. Titan Tire acknowledged the tension between the Rosen-Durling test and Egyptian Goddess, specifically pointing out the similarity between the "point of novelty" test and the primary reference requirement in Rosen-Durling. These cases suggest that a more holistic and flexible approach to design patent obviousness, consistent with KSR and Egyptian Goddess, may be more appropriate than the rigid Rosen-Durling test.
However, eliminating or modifying the design patent obviousness test after a long period of applying the Rosen-Durling test could cause uncertainty in an otherwise settled area of law. Nevertheless, proponents of modifying the test may argue that the potential benefits of adopting a more flexible and accurate approach to design patent obviousness, consistent with KSR, might outweigh any temporary uncertainty that arises from changing the legal standard.
Also, differences between design patents and utility patents could be relevant to the obviousness inquiry, and these differences might play a role in the test for obviousness of design patents. For example, design patents protect the ornamental appearance of an article, while utility patents protect the functional aspects of an invention. This distinction might warrant different considerations when assessing obviousness, such as focusing on the overall visual impression of a design, rather than specific functional features. Therefore, were the Rosen-Durling test to be modified, the court may need to develop a test that accounts for these differences while still adhering to the flexible approach to obviousness endorsed by KSR.
Clearly, the LKQ Corp. v. GM Global Technology Operations LLC case has the potential to significantly impact the automotive industry and design patent law. The outcome of this case could reshape the landscape of design patent obviousness, with implications for competition in automotive repair parts innovation, design protection, and the marketplace. As the review proceeds, industry stakeholders will closely watch to see how the court addresses the key issues raised and the potential implications for design patent law, particularly in light of the KSR decision and its impact on the Rosen-Durling test.