The case of LKQ Corporation v. GM Global Technology Operations LLC is proceeding apace at the US Court of Appeals for the Federal Circuit, Case Nos. 21-2348 and 22-1253 (en banc).  The case threatens to upend the obviousness standard for design patents. 

At issue in the appeal is whether the prevailing design patent standard for obviousness, based on the cases of In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996) (the “Rosen-Durling Test”), should continue to apply, in light of the US Supreme Court case of KSR Int’l v. Teleflex Inc., 550 U.S. 398, 416 (2007), which altered the obviousness standard for utility patents.

Our prior article discussing LKQ’s brief in support of altering the design patent obviousness standard can be found here.

GM has now filed its own response brief in support of maintaining the Rosen-Durling Test for design patent obviousness. In its brief, GM makes a number of arguments.

First, GM argues that design patents require their own unique obviousness framework, separate from utility patents, a framework best addressed through the existing Rosen-Durling Test.  In making this argument, GM emphasizes other differences between design patents and utility patents, such as that design patents are simpler, have no written description or written claims, and are dominated by the appearance, visual impressions, artistry, and style of ornamental subject matter.  GM argues that this means that the obviousness standard should likewise differ for design patents.

GM contends that the Rosen-Durling Test is effective in preventing issues with hindsight and addressing the paramount importance of visual appearance for design patent obviousness.  GM argues that the Rosen-Durling Test is consistent with KSR.  In this regard, GM argues that KSR does not implicitly overrule the Rosen-Durling Test because the Supreme Court in KSR found fault with the way the Federal Circuit had applied the teaching-suggestion-motivation test in that particular case, not with the application of obviousness frameworks as a general matter.  KSR is also fifteen years old and many design patent appeals have continued to be decided in that time on the basis of the Rosen-Durling Test, a point which GM also emphasizes as showing the precedential soundness of continuing to apply the Rosen-During Test now.  

GM emphasizes that KSR does not prohibit the use of frameworks like the Rosen-Durling Test in analyzing obviousness, which GM argues is sufficiently flexible to comport with KSR, because it allows the factfinder to consider the full scope of the relevant prior art and to rely on common sense.  GM supports its argument that the Rosen-Durling Test is flexible by further pointing to the Rosen-Durling Test’s varying application in specific cases, and the high incidence of obviousness determinations under the test, with the Federal Circuit finding design patent obviousness in nearly 70% of post-Durling cases that end in final judgment.

Finally, GM argues that stare decisis is particularly strong in supporting the long-standing precedent of the Rosen-Durling Test, and at most requires clarification.  GM’s proposed framework for clarifying Rosen-Durling includes (a) providing additional explanation of what it means for a primary reference to be “basically the same”; (b) making clear that nothing in Rosen or its progeny precludes the factfinder from considering the full scope of the relevant prior art during the obviousness analysis; (c) clarifying that the “so related” inquiry is nothing more than a requirement that there be a design-based motivation for an ordinary designer to combine two designs or otherwise modify the primary reference; (d) emphasizing the availability of common sense in the design patent obviousness inquiry.

As can be seen, instead of advocating solely for completely preserving the Rosen-Durling Test as it stands, GM makes specific and clear openings for the Federal Circuit to “clarify” the Rosen-Durling Test.  This is of particular interest, because such openings allow the Federal Circuit a way to “uphold” the Rosen-Durling Test, but also change the test in meaningful and drastic ways consistent with Supreme Court precedent under KSR.  This could liberalize the test and allow courts more leeway in analyzing design patents for obviousness, which could lead to an even greater prevalence of obviousness holdings.  It is significant that GM—the party tasked with defending the Rosen-Durling Test—is leaving such extensive openings for major changes to the test.

This stance by GM increases the likelihood, as touched on in our prior article, that the Federal Circuit will change the obviousness standard for design patents, making them more vulnerable to obviousness challenges.  This could make it more difficult and expensive both to conduct reliable prior art searches and to prosecute design patents, and it could decrease an applicant’s certainty in the patentable strength of its design; meanwhile it could also bring invalidity defenses in infringement allegations more in line with the design patent “ordinary observer” infringement standard under Egyptian Goddess, Inv. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).

Oral argument in the case is set for February 5, 2024.

As always, Dentons attorneys are here to advise in every step of the design patent process, whether obtaining design patent protection, protecting design patent rights, or defending against infringement allegations.

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