On May 21, 2024, in a rare en banc decision, the Court of Appeals for the Federal Circuit (CAFC) overruled the long-standing Rosen–Durling test used to assess non-obviousness of design patents, holding that the test was “improperly rigid” and inconsistent with the Supreme Court’s decisions in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and Smith v. Whitman Saddle, 148 U.S. 674 (1893).  In doing so, the CAFC applies to design patents the same test for obviousness that has been applied to utility patents as dictated by Graham v. John Deere Co., 383 U.S. 1 (1966), and supplemented in KSR.

The Rosen–Durling Test

The two-part test required finding a single primary “Rosen” reference (“something in existence”) that created “basically the same” visual impression as the claimed design.  The obviousness analysis would stop at this point if no Rosen reference was found.  But if a Rosen reference is found, the second part of the test called for finding secondary references that are “so related” to the Rosen reference that the features of the secondary references would suggest a combination with the Rosen reference.  The purpose of test was to prevent a challenger from picking and choosing features from multiple references to create something new that would change the overall visual impression of the original design.  However, in practice, invalidation of design patents would typically require identifying a primary reference that was nearly identical to the claimed design.

LKQ Corp. v. GM Global Tech. Ops. LLC

The original dispute arose from a petition by LKQ Corporation for an inter partes review (IPR) of a design patent for a vehicle front fender owned by GM Global Technology Operations LLC.  Relying on the Rosen–Durling test, the Patent Trial and Appeal Board (PTAB) held that LKQ had not established a valid Rosen reference, and thus, had not demonstrated that the patent at issue was anticipated or rendered obvious.  LKQ appealed the Board’s decision contending, among other issues, that the Rosen–Durling test had been implicitly overruled by the Supreme Court’s decision in KSR.

A previous panel decision by the CAFC (see 2023 WL 328228 (Fed. Cir. Jan. 20, 2023)) agreed with the PTAB in that the patent at issue was not rendered obvious under a Rosen–Durling analysis.  Regarding the question of the Rosen–Durling test, the court held that it could not overrule the test without a “clear directive” from the Supreme Court or from the court en banc.

Graham Factors for Design Patents

In overruling the previous two-part test, the court establishes a four-factor framework for evaluating the obviousness of design patents that emphasizes a flexible approach consistent with the standards used for utility patents espoused in Graham.  The factors, as applied to design patents, are: (1) the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of the design, (2) determining the differences in visual appearance between the prior art designs and the design claim at issue, (3) the knowledge of a designer of ordinary skill who designs articles of the type involved, and (4) secondary considerations of nonobviousness (e.g., commercial success, unsolved needs, failure of others, etc.).

In applying the first factor, the court indicates that a primary reference must be identified, however, such a reference only needs to be “something in existence” from the same or different fields of endeavor but still reasonably pertinent to the particular problem.  In applying the second factor, the court indicates that the inquiry needs to focus on the visual impression of claimed design as a whole and not on selected individual features.

USPTO Updated Guidance

On May 22, 2024, the Office issued a memorandum titled “Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corp. v. GM Global Technology Operations LLC”.  The memorandum includes updated examination instructions that, among other suggestions, states that for the factual inquiry of the first factor that the “more visually similar the primary reference is to the claimed design, the better positioned” a design examiner will be to set forth a prima facie case of obviousness.”  (citing LKQ, slip op. at 23-24).