Design Patent Obviousness

New LKQ Corp. Standard Established by the Federal Circuit

Background and Evolution of Design Patent Obviousness

The Federal Circuit’s recent decision in LKQ Corporation v. GM Global Technology Operations LLC has significantly refashioned obviousness analysis in the context of design patents. By overruling the longstanding Rosen-Durling test, the court introduced a more flexible approach for evaluating design patent obviousness, aligning it more closely with the framework for utility patents. This article explores the background, implications, and practical considerations stemming from the Federal Circuit's decision.

Background of Design Patent Obviousness

Design patents, which protect certain ornamental features of manufactured articles, have long been subject to the Rosen-Durling test to determine obviousness. This test required a primary reference that was “basically the same” as the claimed design and any secondary references must be “so related” to the primary reference that their combination would result in the same overall visual appearance. While this rigid framework aimed to reduce hindsight bias, it often limited the flexibility needed to invalidate undeserving design patents.

Criticism of the Rosen-Durling test grew following the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., which emphasized a flexible approach to obviousness for utility patents. It was frequently argued that this flexibility should extend to design patents. In LKQ Corporation v. GM Global Technology Operations LLC, the Federal Circuit finally heeded these calls, finding the Rosen-Durling test “improperly rigid” and inconsistent with Supreme Court precedent.

The LKQ Decision Overrules Rosen Durling Test and Shifts to Graham Factors

The case involved a challenge to a GM design patent for a vehicle fender, with LKQ Corporation arguing that the patented design was obvious in light of prior art. The Patent Trial and Appeal Board (PTAB) upheld the patent, citing LKQ’s failure to identify a “Rosen reference” with design characteristics “basically the same” as the claimed design. On appeal, the Federal Circuit granted an en banc rehearing and ultimately overruled the Rosen-Durling framework.

In its en banc decision, the court adopted the Graham v. John Deere Co. factors to evaluate design patent obviousness:

1. Scope and content of the prior art.
2. Differences between the prior art and the claimed design.
3. Level of ordinary skill in the art.
4. Secondary considerations, such as commercial success and industry praise.

This flexible approach considers the overall visual impression created by the prior art designs and the claimed design, emphasizing the perspective of an ordinary designer in the field. The court’s reliance on Graham aligns design patent obviousness with utility patent principles.

Understanding the New Design Patent Obviousness Test

The Federal Circuit’s new framework redefines the test for design patent obviousness. It begins by identifying a primary reference—the most visually similar prior art design—without requiring it to be “basically the same” as the claimed design. Secondary references can be considered to determine whether there is a combination of prior art features of the secondary reference with the design of the primary reference that would result in the same overall appearance as the patented design.

The court emphasized the importance of the analogous art requirement, which ensures that prior art comes from the same field or is reasonably pertinent to the purpose and field of the claimed design. By eliminating the rigid “so related” requirement for secondary references, the court allows for a broader but fact-specific inquiry.

Secondary considerations, such as commercial success, industry praise, and copying, now also play a critical role as “indicia of obviousness or nonobviousness.” However, these factors must be supported by evidence demonstrating their relevance to the claimed design’s ornamental features.

Key Considerations

Ordinary Designer’s Perspective

The new standard shifts focus to the “ordinary designer,” emphasizing whether the claimed design’s overall visual impression would have been obvious to such a designer.

Analogous Art Requirement

The analogous art test ensures that prior art is relevant, considering designs from the same field or those reasonably pertinent to the claimed design’s purpose.

Flexible Framework

By aligning the obviousness inquiry with the Graham factors, the Federal Circuit ensures a more nuanced and comprehensive evaluation, reducing the risk of improperly rigid outcomes.

Practical Implications

The shift in the obviousness standard has significant implications for both design patent applicants and challengers:

For Applicants

Enhanced Examination Scrutiny: The new test may result in more rigorous examinations by the USPTO, potentially leading to an increase in rejections based on prior art.

Proactive Strategies: Applicants should include detailed disclosures and evidence of secondary considerations, such as commercial success and industry recognition, to strengthen their applications.

Broader Searches: Comprehensive prior art searches, including analogous designs from related fields will now be more critical to successful patenting.

For Challengers

Increased Opportunities: The flexible framework provides challengers with greater latitude to combine prior art references, improving the likelihood of invalidating weak design patents.

Evidence-Driven Arguments: Successful challenges will require robust evidence, including motivation to combine references and the overall visual appearance created by the combination.

USPTO Guidance and Next Steps

Following the Federal Circuit’s decision, the USPTO issued updated examination instructions, emphasizing the application of the Graham factors and the importance of analogous art. The guidance encourages a focus on the claimed design’s overall visual impression rather than isolated ornamental features.

The USPTO has pledged to provide further examples and training to ensure consistency in applying the new standard. Patent practitioners and applicants should stay abreast of these developments and adapt their strategies accordingly.

Conclusion

The Federal Circuit’s decision in LKQ Corporation v. GM Global Technology Operations LLC represents a monumental shift in design patent law. By overruling the Rosen-Durling test and adopting a flexible framework based on the Graham factors, the court has aligned design patent obviousness with utility patent principles. While this new standard introduces some uncertainty, it promises a more equitable and rigorous evaluation of design patent claims.

Patent applicants and challengers alike must adapt to this evolving legal landscape. Consulting with experienced patent professionals is essential to navigating the complexities of the new obviousness standard and ensuring the robust protection of innovative designs. Contact our office for a free consultation.

© 2024 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.