The longstanding test for obviousness in design patent cases is under attack, with the en banc Federal Circuit scrutinizing that test against Supreme Court precedent that thus far has only applied to utility patents. 

In LKQ Corporation v. GM Global Technology Operations LLC, the US Court of Appeals for the Federal Circuit (Case Nos. 21-2348 and 22-1253) is hearing a case en banc for the first in more than five years.  The case involvesclaims by GM against LKQ for patent infringement, after GM’s license to LKQ was not renewed, but LKQ continued to act as vendor of GM repair parts.

Before a three-judge panel at the Federal Circuit, LKQ argued that GM’s pertinent design patents were invalid as obvious in light of the prior art.  LKQ further argued that the prevailing standard for obviousness in the design patent context—based on the cases of In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996) (the “Rosen-Durling Test”)—was too rigid, because it required that there be a primary reference that was “basically the same” as the patent in question, as well as prior art that is “so related” to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.  

LKQ argued that this needed to be changed to accord with the Supreme Court’s ruling in KSR Int’l v. Teleflex Inc.  In KSR, the Supreme Court rejected the previous “rigid” test for obviousness of utility patents, instead opting for an “expansive and flexible approach,” finding that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” KSR, 550 U.S. 398, 416 (2007),which included changes such as holding that obviousness references could come from fields beyond those of the problem sought to be solved by the invention in question.  However, the Supreme Court’s ruling in KSR explicitly only addressed utility patents, not design patents.  LKQ argued that KSR should also apply to design patents.  The three-judge panel rejected this argument, and upheld the Rosen-Durling Test for design patent obviousness.

The full Federal Circuit then decided to hear the case en banc at the urging of multiple amicus curiae.  The Court ordered the parties to brief a number of questions, including: whether KSR applies to design patents such that it overrules, abrogates, eliminates, or modifies Rosen and Durling; and if so, what the replacement test should be.

In their recently-filed en banc opening brief, LKQ argues that the obviousness standard of KSR should apply equally to design patents and utility patents, as both types of patents are subject to the same fundamental principles that prohibit patents in obvious subject matter.  LKQ also argues that the Rosen-Durling test is irreconcilable with KSR’s flexible approach.  In this regard, LKQ extends the arguments it made before the three-judge panel, with arguments including that the Rosen-Durling Test’s rigidity reduces the ordinary designer to an automaton, and allows for patent monopolies for designs that would be obvious to the ordinary observer.  Instead, LKQ argues, the correct test for obviousness for design patents, in light of KSR, should be the same as for utility patents, namely whether a person having ordinary skill in the art would have found the claimed design obvious. 

To address the issue of whether KSR may cause uncertainty for design patents, LKQ argues that the Rosen-Durling Test already causes uncertainty.  LKQ argues that such uncertainty arises through requirements such as Durling’s unclear standard that a patent challenger “discern the correct overall visual impression created by the patented design,” and the vagueness of Rosen’s standards that secondary references be “related,” as well its requirement of “basic similarity” with an earlier design.  LKQ further argues that the Supreme Court’s KSR case should not be ignored simply because it might disrupt settled expectations.

LKQ’s arguments suffer from some internal tension.  For example, LKQ argues that the Rosen-Durling test is both too rigid, but also uncertain.  Yet if a test is rigid, then its application would be quite certain.  Alternatively, if it is true that the Rosen-During test already creates uncertainty, then one could argue that it is already be applied in a flexible way, similar to how KSR would be applied. 

There also remains the fundamental question of whether design patents and utility patents really are so different that different obviousness standards should apply to both.  In the Patent Act, patentability of inventions, including the obviousness standard of 35 U.S.C. § 103, is included in Chapter 10, relating to the “Patentability of Inventions,” while design patent-specific provisions are otherwise located in Chapter 16.  However, the provisions of Chapter 16 are quite sparse, and there is no separate statutory standard for design patent obviousness within the chapter.  Chapter 16 even makes clear that, “The provisions of this title [i.e. Title 35, the Patent Act], relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” 35 U.S.C. § 171(b). Therefore, the statutory standard for obviousness, found in 35 U.S.C. § 103, has long been held to apply to both utility patents and design patents, with the courts in design patent cases like Rosen and Durling grounding their obviousness analysis in that provision.  If Congress desired for different obviousness standards to apply to utility patents and design patents, it could have otherwise provided in the Patent Act.  At a basic level, then, the same articulation of the obviousness standard should apply to both utility patents and design patents. 

Most importantly, it is apparent that the Federal Circuit is seriously reconsidering its longstanding obviousness standard for design patents.  If the Federal Circuit does hold that KSR overruled the Rosen-Durling test, or that the Rosen-Durling test should otherwise be modified, this would drastically change the design patent landscape.  It could make design patents much more vulnerable to obviousness defenses, it could make it more difficult and expensive both to conduct reliable prior art searches and to prosecute design patents, and it could decrease an applicant’s certainty in the patentable strength of its design; meanwhile it could also bring invalidity defenses in infringement allegations more in line with the design patent “ordinary observer” infringement standard under Egyptian Goddess, Inv. V. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). 

The next steps in the case will be GM’s response, due within 45 days of service of LKQ’s opening brief, after which LKQ will have 30 days from service in which to file a reply brief.  Oral argument time and date will be announced at a later date. 

As always, Dentons attorneys are here to advise in every step of the design patent process, whether obtaining design patent protection, protecting design patent rights, or defending against infringement allegations.

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Authored by Partner Nicholas Jackson and Senior Managing Associate Benjamin Harbuck.