A recent en banc Federal Circuit decision overruled the unique test for obviousness of design patents and advised that the same analysis should apply to both utility patents and design patents. LKQ Corporation v. GM Global Technology Operations (LKQ). Courts had previously used the Rosen-Durling test in determining invalidity due to obviousness of design patents. The Federal Circuit's decision overruled the Rosen-Durling test and instructs courts to instead apply the Supreme Court's analysis in its KSR decision and utilize the Graham factors as they would with a utility patent when evaluating the obviousness of a design patent. This important en banc decision may cause uncertainty surrounding the application of the Graham factors to design patents and the enforcement of design patents generally.
The Rosen-Durling Test
Under the Rosen-Durling test, a primary reference was to be identified in which the design characteristics are “basically the same” as the claimed design. This reference was often referred to as the Rosen reference, and, if the challenger did not bring a reference that was sufficiently similar, then the design patent was nonobvious. If a primary reference was found, the next step was to look at other references to see if they created a design with the same overall visual appearance, requiring that they be “so related” to the primary reference to suggest certain ornamental features of one would be applicable in the other.
The Federal Circuit in LKQ was concerned by the rigidity of the Rosen-Durling test, particularly how it conflicted with Supreme Court precedent. For example, previously, the Supreme Court in KSR International Co. v. Teleflex Inc. rejected another test as unnecessarily rigid, recognizing that Graham provides an “expansive and flexible approach.”This reasoning is the backbone of the Federal Circuit's conclusion that both steps of the Rosen-Durling test are “improperly rigid.”
How to Apply the Graham Factors to Design Patents
In overruling the Rosen-Durling test, the Federal Circuit found that the Graham factors used for utility patents should also be used to evaluate the obviousness of design patents. The first Graham factor considers the “scope and content of the prior art” within the knowledge of an ordinary designer. In turn, to determine the scope and content of prior art, there are two factors: (1) whether the art is from the same field as the claimed invention; and (2) if not within this field, whether the reference is relevant to the problem. The Federal Circuit did acknowledge that the second step is less apparent when it comes to design patents, since a design invention is defined by visual impression, not by a written claim, but noted that this will be a fact question discussed on a case-by-case basis.
The second Graham factor involves comparing the differences between the prior art designs and the design claim at issue. Here, there is no “similarity” requirement, as in the Rosen-Durling test, and the differences in visual appearances of the claimed design and prior art must be compared from the viewpoint of an ordinary designer. In the third Graham factor, the level of skill in the pertinent art, the design must not be obvious to an ordinary designer. The final factorevaluates any secondary considerations, such as commercial success, industry praise, and copying, that contextualize the circumstances in which a design was created to show nonobviousness. Using these factors, the obviousness of the design is analyzed with the objective of deciding if the prior art would have motivated an ordinary designer to create the “same overall visual appearance” of the entire claimed design.
Potential Impact on the Design Patent Process
What does this Federal Circuit decision mean for future and existing design patent holders? GM argues in LKQ that changing the Rosen-Durling test will “increase confusion, disrupt settled expectations, and leave lower courts and factfinders without the necessary guidelines to properly conduct the obviousness analysis.” The concern for uncertainty surrounding the future of patented designs, potential harm to design innovation, and expectations for applicants was raised by multiple amicus briefs, but the Federal Circuit disagreed. The Federal Circuit suggests that the Graham analysis will be sufficient for design patents as it has been for utility patents. Although the Court turns to the Graham factors for their flexibility, the lack of rigidity could make it easier for obviousness challenges of design patents to succeed, leading to an increase in canceled designs that would have previously been valid and patentable under the Rosen-Durling approach. The repercussions of this decision are unclear as of now, but design patent holders, challengers, and their attorneys should be prepared to adjust to a new way of evaluating obviousness of design patents.
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