In a recent en banc panel decision, the U.S. Court of Appeals for the Federal Circuit overruled a decades-old test for obviousness of design patents.

Reasoning that the old test was “improperly rigid,” the Federal Circuit said May 21 that the obviousness analysis for design patents should be treated similarly to the obviousness analysis for utility patents as set forth in the Supreme Court’s 2007 decision in KSR Int’l v. Teleflex Inc.[1] Accordingly, the Federal Circuit overruled the previous Rosen-Durling test for design patent obviousness and introduced a revised approach.

The “Old” Test: Rosen-Durling

The old test arose from two previous rulings: In re Rosen[2] and Durling v. Spectrum Furniture Co.[3] It had two parts: (1) find a single reference (a Rosen reference) with design characteristics that are “basically the same” as the claimed design;[4] and (2) consider secondary references that are “so related” to the Rosen reference that “the appearance of ornamental features in one would suggest the application of those features to the other.”[5] Under Rosen-Durling, if “no Rosen reference is found, the obviousness inquiry ends without consideration of step two.”[6]

The LKQ Decision

In LKQ, the Federal Circuit considered an appeal from an inter partes review (IPR) decision of the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office. LKQ had filed the IPR against GM’s U.S. Design Patent No. D797,625 (’625 Patent), alleging that the ’625 Patent design was obvious over a primary reference and a secondary reference.[7] According to the PTAB, the patented design was not obvious because LKQ had failed to establish a Rosen reference that created “basically the same” visual impression as the claimed design. Without a Rosen reference, it was not necessary to proceed any further under the Rosen-Durling test. On appeal to the Federal Circuit, a three-judge panel affirmed the PTAB’s conclusion of non-obviousness, despite LKQ arguing that the Supreme Court’s KSR decision implicitly overruled the Rosen-Durling test. The Federal Circuit then granted rehearing en banc.

The “New” Test under LKQ

In its en banc decision, the Federal Circuit overruled Rosen and Durling, vacated the prior panel opinion and remanded the case to the PTAB to reevaluate obviousness of the claimed design using a more flexible test. Relying on the Supreme Court’s directive in KSR, theFederal Circuit emphasized that rigid rules are improper in an obviousness inquiry,[8] and that the long-established obviousness framework fromGraham v. John Deere Co. of Kansas City[9] should be applied to design patents. As summarized by the Federal Circuit, the Graham factors include: (1) determining the scope and content of the prior art; (2) examining differences between the prior art and claimed invention; and (3) determining the level of ordinary skill in the art.

Regarding the first Graham factor, the Federal Circuit asserted that, as with utility patents, the prior art must be analogous to the claimed invention. Analogous prior art is typically from the same field of endeavor as the claimed invention, but may also be outside that field if it is reasonably pertinent to the problem the inventor aims to solve.[10] While acknowledging that design patents, which are limited to aesthetics and ornamentation, may not be trying to solve any particular problem, the Federal Circuit nevertheless declined to provide guidance as to how to determine if prior art outside the claimed design’s field of endeavor might qualify as analogous.

Regarding the second Graham factor, the Federal Circuit explained that the visual appearance of the claimed design must be compared to the prior design “from the perspective of an ordinary designer in the field of the article of manufacture.”[11]

Regarding the third Graham factor, the Federal Circuit maintained prior interpretations of a skilled artisan in the design patent context as referring to an “ordinary designer in the field to which the claimed design pertains.”[12]

With the Graham factors ascertained, the analysis turns to “whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design ‘to create the same overall visual appearance as the claimed design.’”[13] Notably, the Federal Circuit pointed out that the references must be analogous to the patented design, but need not be “so related” to each other, as required under Rosen-Durling, and that “the motivation to combine these references need not come from the references themselves.”[14] Rather, the Federal Circuit explained a key aspect of the analysis by stating:

“[T]here must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture 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.[15]”

The Federal Circuit further noted that although motivation to combine prior art disclosures may have less relevance with respect to design patents than utility patents, a patent challenger will need to do “more work” to establish a motivation to alter the primary prior art design and prove obviousness as the overall appearances of the primary and secondary references differ more from each other.[16]

Lastly, the Federal Circuit confirmed that secondary considerations set forth in Graham remain important in assessing design patent obviousness. Factors such as commercial success, industry praise and copying are all relevant and can help demonstrate that a claimed design is non-obvious. The Court declined to opine as to whether other secondary considerations, such as long felt need and failure of others, have significance in a design patent obviousness inquiry.

Conclusion

This en banc decision could prove beneficial for patent challengers because it loosens the standards for finding a design patent obvious over prior art and eliminates the requirement to find a single reference that is “basically the same” as the challenged design. As discussed in Smith v. Whitman Saddle Co.[17], which was heavily cited in the LKQ decision, two references each showing half of a claimed design may be sufficient to render a design obvious. With design patents becoming increasingly valuable in recent years,[18] this decision could have a large impact on the validity of existing design patents and could also make it more difficult to patent new designs. However, the decision does provide some avenues for patent owners and applicants to bolster a non-obviousness position by, for example, establishing that the prior art is non-analogous, showing that there is no motivation to alter the primary reference and providing evidence of secondary considerations.

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