The en banc Federal Circuit has overruled the Rosen-Durling test for design patent obviousness, holding that the Supreme Court’s KSR decision dictated “a more flexible approach . . . for determining non-obviousness.” LKQ v. GM, — F.4th —, slip op. (Fed. Cir. May 21, 2024). This precedent marks a shift in design patent invalidity law that allows for a less-rigid approach to obviousness—even though the court expressly warned that “creative” patent challenges are not always persuasive.
Specifically, the court overruled the Rosen-Durling two-stage framework that required: (1) a primary reference that must be “basically the same” as the challenged design; and (2) secondary references that must be “so related to the primary reference that features in one would suggest application of those features to the other.” That framework was sometimes unforgiving; for example, courts often rejected obviousness theories at stage (1), because an alleged primary reference was not “basically the same” as the challenged design, without ever proceeding to stage (2). The court held that it was too “too rigid” in light of the § 103 statutory text and Supreme Court precedents, Smith v. Whitman Saddle, Graham v. John Deere, and KSR v. Teleflex.
Whitman Saddle used a less-rigid analysis when it considered and combined two references—neither of which was “basically the same” as the challenged claim. This analysis was incompatible with Rosen-Durling stage (1). Then, in KSR, the Supreme Court rejected the rigid “teach-suggest-motivate” (“TSM”) test for utility patent obviousness, an analysis that in many ways tracked with Rosen-Durling stage (2).
The en banc court then turned to the Supreme Court’s familiar factors for utility patent obviousness from Graham: scope and content of the prior art, differences between the prior art and the challenged claim, level of ordinary skill, and secondary considerations. The en banc court also adopted Graham’s “analogous art” test to determine what types of references should be considered.
Although the law has changed, patent challengers still have their work cut out for them. While a primary reference no longer needs to be “basically the same,” the en banc court still warned that a primary reference “will likely be the closest prior art”—and the closer it is to the challenged claim, “the better positioned the patent challenger will be.” And even though a secondary reference need not be “so related” that the proposed combination presents itself, the en banc court cautioned against slipping into hindsight, clarifying that “there must be some record-supported reason (without hindsight) that an ordinary designer in the field . . . would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.”
Key Takeaways: The Rosen-Durling framework for design patent obviousness has been overruled and replaced with more-flexible standards of KSR and Graham, making it theoretically easier to show obviousness. Yet the en banc Federal Circuit reiterated that primary references should still “be the closest prior art” and secondary references should still be analogous. And, in all events, courts must not lapse into impermissible hindsight in assessing whether a designer of ordinary skill would have been motivated to combine the prior art to achieve a claimed design.
