On May 21, the Federal Circuit issued its en banc opinion in LKQ Corp. v. GM Global Technology Operations, LLC, striking down the application of the Rosen-Durling test, which has long been the standard used to assess whether a design patent should be invalidated under 35 U.S.C. §103. After concluding that the Rosen-During test is out of keeping with recent Supreme Court precedents, including KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Federal Circuit adopted a new framework for assessing the nonobviousness of design patents, which aims to apply the same standards that have been used in the context of utility patents, while at the same time being mindful of the differences between design and utility patents.
BACKGROUND
The case arises from an inter partes review proceeding commenced by LKQ Corporation seeking to invalidate a design patent, relating to a design for a vehicle’s front fender, owned by GM Global Technology. One of the grounds for invalidity asserted by LKQ was that GM’s design patent was unpatentable under §103 in light of the relevant prior art references. In reaching its conclusion, the Patent and Trial Appeal Board applied the Rosen-Durling test, which has long been the standard analysis used to determine whether a design patent is unpatentable under §103.
The Rosen-Durling test is a two-part test, first, it requires that before combining prior art references, there must be a finding of a single prior art reference that has design characteristics “which are basically the same as the claimed design,” which is often referred to as a Rosen reference. If there is no single reference that satisfies the “basically the same” test, then the analysis stops, and the design patent is patentable under §103. If there is a finding of a valid Rosen reference, then under the second part of the Rosen-Durling test, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design. However, any secondary references must be “so related” to the Rosen reference that the appearance of certain ornamental features in the one would suggest the application of those features to the other.
In applying the Rosen-Durling test, the Board concluded that LKQ failed to identify a Rosen reference because the reference LKQ was relying on was not “basically the same” as GM’s design patent. LKQ then appealed the Board’s decision and ultimately a Federal Circuit Panel affirmed the Board’s decision based on its application of the Rosen-Durling test, but at the same time the Panel noted its concerns over the continued use of the Rosen-Durling test in light of the Supreme Court’s decision in KSR, which involved the test for nonobviounsess in the context of utility patents. As a result, LKQ sought a rehearing en banc, which the Federal Circuit granted and requested arguments on: (1) whether KSR overrules or abrogates the Rosen-Durling test; (2) if not, whether the court should nonetheless eliminate or modify the Rosen-Durling test; and (3) if we answer either of these two questions affirmatively, what test should apply for evaluating design patent obviousness challenges.
THE FEDERAL CIRCUIT’S DECISION AND THE NEW FRAMEWORK FOR DESIGN PATENTS UNDER §103
After reviewing and discussing the Supreme Court’s ruling in KSR, along with other recent Supreme Court and Federal Circuit decisions, the Federal Circuit held:
We conclude that the Rosen-Durling test requirements—that (1) the primary referenced be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.
The Court’s decision to strike down the continued application of the Rosen-Durling test was primarily based on the Supreme Court’s reasoning in KSR where it cautioned against the use of “rigid and mandatory formulas” when analyzing whether a claimed invention is obvious under §103 because the “obviousness analysis cannot be confined by a formalistic conception” and that “rigid preventative rules that deny factfinders recourse to common sense” are improper under §103. Based on this guidance, the Federal Circuit determined that the application of the Rosen-Durling test had become too rigid and formulaic and, therefore, “is out of keeping with the Supreme Court’s general articulation of the principles underlying obviousness, as well as its specific treatment of validity of design patents.” Specifically, the Federal Circuit found that “Rosen’s rigid requirement limiting a primary reference to designs that are ‘basically the same’ as the claimed design—and abruptly ending the analysis in the absence of such a reference—imposes limitations absent from §103’s broad and flexible standard.”
After explaining its rationale for striking down the Rosen-Durling test, the Federal Circuit provided a new framework for evaluating obviousness of design patent claims. While the Court noted the need to be mindful of the differences between design and utility patents, the Court still determined that, in general, the factual criteria that have been developed as analytical tools for reviewing the validity of a utility patent under §103 should also apply to design patents – i.e., application of the Graham factors. The Federal Circuit’s Opinion then provides a detailed analysis and discussion of the application of those factors to design patents, including the following key points:
- “In determining the scope of the prior art, there is no threshold similarity or ‘basically the same’ requirement to qualify as prior art. Rather, an analogous art requirement applies to each reference.”
- “[T]here is no basis for abandoning the underlying analogous art requirement for assessing nonobviousness of design patents and we return to a more flexible fact-based analysis of whether the references are analogous art in a manner similar to utility patents. This approach casts aside a threshold ‘so-related’ requirement but maintains the threshold analogous art requirement.”
- Because a design patent is not an invention aimed at solving a particular problem, the analysis for determining what qualifies as analogous art will not be identical to utility patents, thus the Court does “not delineate the full and precise contours of the analogous art test for design patents.” Nonetheless, the Court still made clear that “analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design” and beyond that the Court did “not foreclose that other art could be analogous” and leaving it to be “a fact question to be addressed on a case-by-case basis.”
- While the “basically the same” test no longer applies, the primary reference stills needs to “be something in existence—not something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.” And while the “primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, it need not be, so long as it is analogous art.”
- In terms of analyzing the differences and similarity between the claimed design and the 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,” – i.e., “from the viewpoint of an ordinary designer in the field to which the claimed design pertains.”
- Finally, similar to utility patents, the analysis must also consider “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.” And if secondary references are needed, 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 sum, while the Court sets forth a new framework for assessing design patent obviousness under §103, the framework that will apply is not necessarily new. Rather, the overall plan for the new framework is to put an end to the “rigid” application of the Rosen-Durling test and to apply the same standards and guidance used in connection with utility patents, but in a way that embraces the Supreme Court’s guidance in KSR to allow for a more “expansive and flexible approach” to obviousness determinations in the context of design patents.
THE IMPACT OF THE FEDERAL CIRCUIT’S DECISION
As the $539 million jury verdict in the Apple v. Samsung design patent infringement suit demonstrated, obtaining, maintaining, and enforcing design patents can play a critical role in the protection of a company’s IP assets. Thus, the Federal Circuit’s decision to upend the long-standing test for determining design patent obviousness will certainly have an impact on both existing and new design patents, and will likely result in an increase in efforts to invalidate design patents under §103. Moreover, while the Court’s Opinion provides useful guidance on the “new” obviousness framework for design patents, the devil will be in the details as this new framework is applied on a case-by-case basis. Accordingly, continued monitoring and analysis of the application of this new framework will be necessary to better understand the potential impact and risks to anyone who owns or relies on design patent protection.
A copy of the Federal Circuit’s Opinion can be found here.