The Federal Circuit Upends Design Patent Obviousness in LKQ v. GM
On May 21 an en banc Federal Circuit issued its long-awaited opinion in LKQ Corp. v. GM Global Tech. Oper., announcing a new standard for obviousness in the field of design patents. Even the opinion admits that the change may result in “some degree of uncertainty for at least a brief period.”
For the past few decades, the design patent world has evaluated obviousness through application of the Rosen-Durling test, which takes its name from a pair of Federal Circuit cases from the prior millennium. In order to establish obviousness under the Rosen-Durling test two things must be shown:
1) the existence of a single prior art primary reference that had design characteristics that were “basically the same as the claimed design” (commonly known as a Rosen reference); and
2) if a Rosen reference is found, the existence of secondary (other) prior art reference(s) so related to that primary reference that ornamental features in the secondary reference(s) would be applicable to those of the primary reference to suggest application of features from the secondary reference(s) to those of the primary reference, so as to produce the claimed design.
Many an obviousness challenge to a design patent has foundered on the first prong of the Rosen-Durling test, with a finding that there was no Rosen reference that had ornamental characteristics that were “basically the same as the claimed design” (to quote both Rosen and Durling). In such a situation the second prong of the test (applying secondary reference(s) to bridge the gap between the primary reference and the claimed design) is not even considered. Such was the outcome previously in LKQ, where the Patent Trial and Appeals Board (in the context of an inter partes review of a design patent for car fenders) found that the closest prior art reference did not qualify as a Rosen reference, in that it did not create “basically the same visual impression as the patented design.” A Federal Circuit panel had affirmed that conclusion. Without the establishment of a Rosen reference, there could be no obviousness under the Rosen-Durling test.
However, after the Federal Circuit decided the Rosen and Durling cases the Supreme Court issued its opinion in KSR v. Teleflex, 550 US 398 (2007), which mandated more flexibility in the obviousness standard applied to utility patents. The main question in LKQ was whether the greater flexibility for obviousness in utility patents required by KSR also changed the standards for obviousness in design patents. The LKQ opinion answered that question in the affirmative, expressly overruling the Rosen-Durling test, and setting a new standard for obviousness in design patents.
So what is the new standard for design-patent obviousness? In crafting a new standard, the Court in LKQ looked not only to the analytical flexibility expressed in KSR, but also to the “Graham factors” that the Supreme Court put forward in a 1966 opinion concerning utility patent obviousness -- that in an obviousness analysis, the finder of fact should consider: 1) the scope and content of the prior art within the knowledge one of skill in the relevant art; 2) the differences between the prior art and the claim at issue; 3) the level of skill in the relevant art; and 4) secondary considerations mitigating against obviousness (such as commercial success of the claimed device, or an unmet long-felt need), see Graham v. John Deere, 383 US 1, 17-18 (1966). Although those factors were crafted for utility patents, in LKQ they received a gloss for applicability to design patents.
In applying the first Graham factor the LKQ opinion stressed that the most relevant prior art, the starting point for an obviousness analysis, need not be “basically the same as the claimed design,” as was required by the Rosen-Durling test. Nonetheless, the “more visually similar the primary reference design is to the claimed design, the better positioned the patent challenger will be to prove” obviousness.
Regarding the combinability of prior art references, the LKQ opinion stated that the “primary and secondary references need not be ‘so related’ such that features in one would suggest application of those features in the other [as was provided in the Rosen-Durling test] but they must both be analogous art to the patented design.” Also, the motivation to combine the references need not come from the references themselves, but must be found in some reason on the record (which cannot involve hindsight). According to the opinion, with regard to both whether prior art is analogous and whether there was a motivation to combine prior art references, “the problem to be solved may have less relevance in the design patent context than in the utility patent context.”
Thus the main ambiguities coming out of LKQ are 1) what in the context of design patents constitutes “analogous art”; and 2) what will qualify as a sufficient motivation to combine prior art references to render a design claim invalid. Subsequent cases will no doubt flesh out these areas of design patent law, but for the time being there will be increased uncertainty in this area of patent law.
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