In its first en banc decision in more than five years, the Federal Circuit has overturned the long-standing Rosen-Durling test for obviousness of design patents under 35 U.S.C. § 103. In LKQ Corp. v. GM Global Tech. Operations LLC (Case No. 21-2348), the en banc Federal Circuit held that Supreme Court precedent dictates that a more flexible test than Rosen-Durling now applies to design patent obviousness. This decision will likely make design patents more difficult to obtain, enforce, and defend in the U.S.

Under the Rosen-Durling test, design patent obviousness required (1) a primary reference that was “basically the same” as the patent in question, and (2) prior art that was “so related” to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other. In LKQ, the appellant argued that this needed to be changed to accord with the Supreme Court’s ruling in KSR Int’l v. Teleflex Inc. In KSR, the Supreme Court rejected the previous “rigid” test for obviousness of utility patents, instead opting for an “expansive and flexible approach,” finding that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” KSR, 550 U.S. 398, 416 (2007), and holding that obviousness references could come from fields beyond those of the problem sought to be solved by the invention in question.

Up until now, the Supreme Court’s ruling in KSR explicitly only applied to utility patents, not design patents. LKQ argued that the obviousness standard of KSR should apply to design patents as well, as both design and utility patents are subject to the same fundamental principles that prohibit patents in obvious subject matter. LKQ also argued that the Rosen-Durling test is irreconcilable with KSR’s flexible approach, and that the Rosen-Durling test’s rigidity reduced the ordinary designer to an automaton, and allowed for patent monopolies for designs that would be obvious to the ordinary observer. Our prior articles analyzing LKQ’s and GM’s briefing in the case can be found here and here.

The Federal Circuit ruled in favor of LKQ, finding that the Rosen-Durling Test is “improperly rigid.” The Court reasoned that, because §103 does not differentiate between utility and design patents, the obviousness standard for design patents should align with that for utility patents, “set[ting] forth an expansive and flexible approach for assessing obviousness.” To reach this conclusion, the Federal Circuit relied on Supreme Court precedent like KSR, Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) (relating to utility patents) and Smith v. Whitman Saddle Co. 148 U.S. 674, 680 (1893) (relating to design patents). In particular, the Federal Circuit found that the rigidity of the Rosen-Durling Test mirrored the rigid application of the “teaching-suggestion-motivation” test that the Supreme Court rejected in KSR.

After rejecting the Rosen-Durling test in LKQ, the Federal Circuit confirmed that design patent’s obviousness, like utility patents, is “determined . . . on application of the Graham factors,” citing its precedent in Hupp v. Siroflex of Am., Inc., 122 F.3d 1456 (Fed. Cir. 1997). The Graham factors require the fact finder to consider:

1. Consider the scope and content of analogous prior art. By ruling this applicability of the first Graham factor, the Federal Circuit explicitly removed the Rosen-Durling requirement that a primary reference be "basically the same" as the claimed design. This requires the fact finder to consider whether the art is from the same field of endeavor as the claimed invention, and then, if not, whether the reference is reasonably pertinent to the particular problem with which the inventor is involved. While the first part is easily applicable to design patents, the second part doesn’t translate as well. The Court found that this is a case-by-case determination and left it to future courts to determine the applicability of the second part of this step.
2. Determine differences between the claimed design and prior art. This means that the fact finder must compare the visual appearance of the claimed design with the prior art designs.
3. Ascertain the level of skill of an ordinary designer in the field in which the claimed design pertains. This is a designer of ordinary capability who designs articles of the type presented in the application.
4. Determine if a motivation to modify the prior art design to create a design with the same overall visual appearance as the claimed design, taking into account any secondary references. In applying this Graham factor, the Federal Circuit removed the Rosen-Durling requirement that the primary and secondary references be “so related” as described above). The Court noted that this factor “focuses on the visual impression of the claimed design as a whole and not on selected individual features,” quoting Borden, 90 F.3d at 1574. The Court also noted, applying KSR, that the motivation to combine need not come from the references themselves, but that there must be some reason to combine, such as the ordinary designer’s experience and creativity, or what the market demands, or what industry customs exist, without impermissible hindsight.

Note that this does not disrupt existing precedent on secondary considerations like commercial success and copying in the design patent context, which remain relevant.

While the immediate impact will be felt first in the automotive aftermarket industry and in the General Motors design patents at issue, the decision has far-reaching consequences for all design patents. Ever since Apple’s billion-dollar verdict over Samsung in 2011 based on Samsung’s infringement of Apple’s patented design, public focus on design patent has increased. Design patent filings have likewise increased consistently since at least 2001, growing from slightly under 20,000 applications in 2001 to over 50,000 applications filed in 2022. Despite this increase in filings, only about 4% of design patent applications currently receive obviousness rejections. The new, more flexible approach of LKQ is likely to result in the USPTO rejecting many more design patents for obviousness, making design patents harder to obtain. The PTO issued a memorandum to examiners providing updated guidance and examination instructions in light of LKQ (available here: https://www.uspto.gov/sites/default/files/documents/updated_obviousness_determination_  designs_22may2024.pdf). Furthermore, already-issued design patents may be more easily invalidated on the basis of obviousness in litigation or post-issuance PTO review. LKQ will likely lead to an increase in post-issuance review petitions. For example, from October 1, 2021, to September 30, 2022, only six of 1367 IPR petitions were for design patents according to the PTO. LKQ will likely lead to many more petitions.

The Federal Circuit’s ruling in LKQ has immediate effect and will apply to all pending and issued design patents. Those seeking or enforcing design patent protection should reevaluate their strategies in light of this major change in the law. Please contact us with any questions regarding the implications of the LKQ decision for your intellectual property.

Dentons will track the application and development of this new standard, including strategic implications to patent portfolio development and enforcement of design patents. Dentons is also monitoring any appeal to the Supreme Court.