In LKQ Corp. v. GM Global Tech. Operations LLC, the Court of Appeals for the Federal Circuit (“CAFC”) or “Federal Circuit”) overruled the existing Rosen-Durling test for analyzing obviousness of design patents. That test required that the primary reference must (1) be “basically the same” as the challenged design claim and (2) that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. In place of the Rosen-Durling test, the Federal Circuit's new, more flexible approach is more consistent with the statutory scheme for obviousness of utility patents. The LKQ Court noted that, “[a]s with any change, there may be some degree of uncertainty for at least a brief period, [] our elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent.” This decision will likely make obviousness rejections more common, and design patents harder to obtain, as examiners have greater flexibility in establishing primary references and combining the primary references with secondary references. Additionally, this decision will likely make invalidating existing design patents easier as a wider array of prior art will be available to challengers.
On May 21, 2024, the Federal Circuit issued an en banc decision overruling the existing Rosen-Durling test for obviousness determination of design patents.1 The new test aligns design patents with utility patents in terms of nonobviousness under 35 USC § 103. Citing the U.S. Supreme Court's Graham v. Deere decision,2 the CAFC explained that the ultimate question of obviousness, for both utility and design patents, is based on factual inquiries that include: (1) “the scope and content of the prior art”; (2) “differences between the prior art and the claims at issue”; and (3) “the level of ordinary skill in the pertinent art.” In addition to these factors, “[s]uch secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented” and may be relevant as “indicia of obviousness or nonobviousness.” Generally speaking, these are the same inquiries employed when analyzing nonobviousness of utility patents; the specific manner of their application, however, may still differ.
Scope and Content of Prior Art
Regarding the scope and content of prior art, the CAFC repeated the familiar instructions that “the fact finder should consider the ‘scope and content of the prior art' within the knowledge of an ordinary designer in the field of the design.” For design patents, the CAFC has made clear there is no longer a threshold “basically the same” requirement to qualify as prior art, but rather, an analogous art requirement applies to each reference that “reins in the scope of prior art and serves to guard against hindsight.”
When analyzing nonobviousness of utility patents, a prior art reference is considered analogous prior art if (1) the prior art is from the same field of endeavor as the claimed invention, regardless of the problem addressed by the reference, or (2) where the reference is not within the field of the inventor's endeavor, if it is still reasonably pertinent to the particular problem with which the inventor is involved.
Regarding (1), the Federal Circuit held that “analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design.” However, regarding (2), the CAFC noted that this alternative test would not seem to apply to design patents in the same way as utility patents. Design patents themselves do not solve “a particular problem with which the inventor is involved.” Instead, design patents are solely focused on overall visual impression and ornamentality. Further, design patents do not include a specification which informs the scope of the claims. Thus, the CAFC stated that “[p]rior art designs for the same field of endeavor as the article of manufacture will be analogous, and we do not foreclose that other art could also be analogous. Whether a prior art design is analogous to the claimed design for an article of manufacture is a fact question to be addressed on a case-by-case basis,” leaving it to future cases to further develop the application of this standard.
Differences Between Prior Art and the Claims at Issue
For the second of the Graham factors, i.e., assessing the differences between prior art and the claims at issue, the Federal Circuit noted that the differences between the claimed design and prior art designs should be compared based upon their visual appearance from the perspective of an ordinary designer in the field of the article of manufacture. As such, the second Graham factor is applied in design patent cases in essentially the same manner as for utility patents.
The Level of Ordinary Skill in the Pertinent Art
For the third of the Graham factors, the CAFC interpreted “a person of ordinary skill in the art to which the invention pertains” in § 103 as meaning an ordinary designer in the field to which the claimed design pertains. As such, the third Graham factor is now also applied in essentially the same way for both designs as for utility patents. However, as with the second prong of the analogous art inquiry, future courts will have to further refine the bounds of “the field to which the claimed design pertains.”
Determining Obviousness
After the three Graham factors are established, obviousness or nonobviousness will then be ascertained. The CAFC reiterated that the primary and secondary references no longer need to be “so related” such that features in one would suggest application of those features in the other. Further, the primary reference will likely be the closest prior art, and will typically be in the same field of endeavor as the claimed design of manufacture, but it need not be, so long as it is analogous art. Where a primary reference alone does not render the claimed design obvious, secondary references may be considered. As with primary references, 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.”
Consistent with utility patents, the motivation to combine these references need not come from the references themselves, but “there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.” Further, the Federal Circuit stated that the problem to be solved in the case of design patents may be less pertinent than in utility patents.
In addition, the CAFC did not alter “secondary indicia of obviousness or nonobviousness” as applied to utility patents. Secondary considerations such as commercial success, long felt but unsolved needs, failure of others, etc., may be used to give light to the circumstances surrounding the claimed subject matter and may be relevant in determining obviousness or nonobviousness, but exactly how some of these secondary considerations might be applied in the design patent context is not further explained.
Memorandum on Determining Obviousness in Design Patents in view of LKQ
On May 22, 2024, the US Patent & Trademark Office (USPTO) issued a memorandum to patent examiners related to examination instructions for determining obviousness of design patents in light of LKQ.3
Keeping with the CAFC decision, the memorandum states that there is no definition of how to determine whether a prior art design outside the field of endeavor of the article of manufacture is analogous. The examiner should consider the degree to which an ordinarily skilled designer would be motivated to consider other fields. If a design is not analogous art, it may not be considered by the examiner in assessing obviousness. However, like the CAFC opinion, the memorandum does not establish a bright-line test for determining analogous art.
Finally, in evaluating obviousness, the memorandum states that the inquiry must focus on the visual impression of the claimed design as a whole and not on selected individual pieces. If an ordinary skilled 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, then the examiner should reject the claim barring convincing secondary indicia of nonobviousness being of record. However, examiners are instructed to keep in mind that, generally, the more different the overall appearances of the primary reference versus the secondary reference(s), the more difficult it will be to establish a motivation to alter the primary prior art design in light of the secondary design to set forth a prima facie case of obviousness.
Footnotes
1 LKQ Corp. v. GM Global Tech. Operations LLC, No. 2021-2348, (Fed. Cir. May 21, 2024) (en banc)
2 Graham v. John Deere Co., 383 U.S. 1 (1966).
3 https://www.uspto.gov/sites/default/files/documents/updated_obviousness_determination_designs_22may2024. pdf
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