Compelled by Supreme Court Precedent, En Banc CAFC Overrules "Rigid" Design Patent Obviousness Test

In LKQ Corp. vs. GM, the U.S. Court of Appeals for the Federal Circuit (CAFC), sitting en banc, overruled the long-standing Rosen-Durling test used to assess non-obviousness of design patents under 35 U.S.C. § 103.  The decision was driven by Supreme Court precedent, including KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), which favored a more flexible approach to assessing obviousness of patents.  The court viewed the Rosen-Durling test as overly rigid due to its requirements that a primary reference must be “basically the same” as the challenged design claim and that any secondary references must be “so related” to the primary reference that features in one would suggest the application of those features to the other. 

In the case under review, the Patent Trial and Appeal Board had applied the Rosen-Durling test in the course of an inter partes review of GM’s design patent.  The Board found that the primary reference was not “basically the same” as the claimed design and ended the obviousness analysis without addressing the secondary reference.  A panel of the CAFC affirmed the Board’s decision.

On en banc review, the court stated that invalidity based on obviousness of a patented design should be determined based on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent under § 103, that is, by applying the four factors [i.e., Graham factors] set forth in Graham v. John Deere Co., 383 U.S. 1 (1966).  The court then laid out the Graham factors and discussed how to evaluate each of those factors through the lens of design patents.

Under the first Graham factor, the fact finder should consider the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of the design.  In determining the scope of the prior art, an analogous art requirement applies to each reference.  According to the court, “[t]he analogous art requirement reins in the scope of prior art and serves to guard against hindsight.”  The court thus concluded that analogous art for a design patent includes at least “art from the same field of endeavor as the article of manufacture of the claimed design.”  While the court did not foreclose the possibility that art residing in a different field of endeavor could be considered analogous, it cautioned that “[t]he scope of the prior art is not the universe of abstract design and artistic creativity, but designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.”

Under the second Graham factor, the fact finder should determine the differences between the prior art designs and the design claim at issue.  According to the court, “In addressing the differences between the claimed design and prior art designs for validity purposes, we compare the visual appearance of the claimed design with prior art designs, albeit from the perspective of an ordinary designer in the field of the article of manufacture.”

Under the third Graham factor, the fact finder must resolve the level of ordinary skill in the pertinent art.  This requirement comes directly from § 103, which provides that a claimed invention is unpatentable if it would have been obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to which the claimed invention pertains.  After ascertaining the knowledge of an ordinary designer in the relevant field, the scope and content of the prior art, and the differences between the prior art and the claimed design, the fact finder must evaluate the obviousness or nonobviousness of the claimed design.  The court, in prior cases, had described this inquiry as 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.

The court went on to describe that where a primary reference alone does not render the claimed design obvious, secondary references may be considered.  According to the court, “the primary and secondary references need not be ‘so related’ such that features in one would suggest application of those features in the other, but they must both be analogous art to the patented design.”  In its statement of the standard for establishing obviousness based on combined references, the court cautioned that “there 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.”

Under the fourth Graham factor, the obviousness inquiry for design patents requires assessment of secondary considerations as indicia of obviousness or nonobviousness, when evidence of such considerations is presented.  The court reaffirmed that the secondary considerations applied in prior cases involving design patents—including commercial success, industry praise, and copying—might be considered in the obviousness analysis.

In reaching its decision, the court dismissed industry concerns that overruling Rosen-Durling would create uncertainty, arguing that the Graham factors have “proven workable for utility patents, and we see no reason why it would not be similarly workable for design patents.  As with any change, there may be some degree of uncertainty for at least a brief period...”  In this particular case, the court vacated the Board’s nonobviousness determination and remanded the matter to the Board.

Buchanan Ingersoll & Rooney stands ready to assist our clients with understanding the impact (if any) that this decision may have on their prospective or existing U.S. design patents.