In a considerable shift in the law, the Federal Circuit has discarded the long-standing test for determining whether a design patent is invalid as obvious, in favor of the more flexible obviousness test historically applied to utility patents. While this change creates a universal approach to the obviousness analysis, there are concerns that it also brings uncertainty to the validity of hundreds of thousands of design patents in the United States.
On May 21, 2024, in an en banc decision in LKQ Corp. v. GM Global Technology Operations LLC,1 the Federal Circuit held that the Rosen-Durling test that courts have applied for decades in determining whether a design patent is invalid as obvious is overly rigid and does not adhere to Supreme Court precedent regarding obviousness.
The Rosen-Durling test requires two steps to determine whether a design patent is obvious. First, there must be a previous design that had “design characteristics” that are “basically the same” as the claimed design. Second, if that previous primary design is found, the analysis turns on whether any secondary designs can be used to “modify [the primary design] to create a design that has the same overall visual appearance of the claimed design.” The secondary design must be “so related” to the primary design that the appearance of “certain ornamental features” in one previous design suggests using them in the other previous design.2
In overturning this rigid approach, the Federal Circuit found that Supreme Court precedent regarding obviousness under 35 U.S.C. § 103 mandates a broader and more flexible standard for design patents. It noted that the Supreme Court has routinely held that obviousness requires an “expansive and flexible approach”, including in Graham v. John Deer Co. of Kansas City3 and KSR International Co. v. Teleflex Inc.,4 which together form the foundation of the obviousness test applied to utility patents. The Federal Circuit, therefore, held that the long-standing, but rigid, Rosen-Durling test is inconsistent with this mandate and found that there was no reason that the “expansive and flexible approach” set out in Graham and KSR for utility patents should not also govern the obviousness inquiry for design patents.5
Accordingly, the Court held that the obviousness inquiry for design patents should be the same four-factor Graham test that has been applied to utility patents for decades. That test asks whether the challenged design is rendered invalid as obvious in light of prior designs, considering the following factors: (1) the scope and content of the prior art within the knowledge of an ordinary designer; (2) the differences between the prior art designs and the challenged claims or design at issue; (3) the level of ordinary skill for an ordinary designer in the field of the challenged design; and (4) the secondary considerations of nonobviousness, like commercial success or industry recognition.6 Moreover, the Federal Circuit reaffirmed that this test still allows for an inquiry into a “motivation to combine,” meaning whether an ordinary designer in the relevant field would have been motivated to modify the prior art design “to create the same visual appearance of the claimed design.”7 But, the Court clarified that the prior design references used in this inquiry no longer need to be “so related” such that features in one reference suggest combination of those features with the other reference, as previously required in the Rosen-Durling test.
What This Means For You
To the Federal Circuit, the Graham test has been applied to utility patents for decades and that body of law provides sufficient guidelines to aid practitioners in applying this test to design patents. It thus dismissed concerns of the LKQ Corp. plaintiff and certain amici that such a significant departure from a decades-old standard will inevitably result in uncertainty and disruption in the field of design patents. Courts and litigants alike are now left to navigate somewhat uncharted waters as they adapt the well-worn Graham test to new applications. V&E is well-versed in the Graham test and will keep monitoring the legal impact of this landmark decision as it continues to assist clients in their patent litigation strategies before both district courts and the United States Patent and Trademark Office.
1 — F.4th –, No. 2021-2348, 2024 WL 2280728 (May 21, 2024) (en banc).
2 Id. at *2.
3 383 U.S. 1 (1966)
4 550 U.S. 398 (2007) (overturning the Federal Circuit’s use of the strict teaching-suggestion-motivation test to determine obviousness in favor of a more “expansive and flexible approach”)
5 LKQ Corp., 2024 WL 2280728 at *5-7.
6 Id. at *7-12.
7 Id. at *11 (quoting Campbell Soup. Co. v. Gamon Plus, Inc., 10 F.4th 1268. 1275 (Fed. Cir. 2021).
