On May 21, 2024, the Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Technology Operations LLC, No. 2021-2348, eliminating the long-established test for proving design patents invalid for being obvious as "improperly rigid" in favor of a more flexible approach. In doing so, it decided the same test for utility patent obviousness applies to design patents.

The LKQ case was based on the Patent Trial and Appeal Board's (the "Board") decision in LKQ's petition to institute an inter partes review of GM's U.S. Design Patent No. D797,625 directed to a design for a vehicle's front fender, which was used on GM's 2018-2020 Chevrolet Equinox. To assess the obviousness of the claimed design, the Board applied the long standing Rosen-Durling two-part test and found that LKQ failed to establish that the challenged claim would have been obvious. This decision was affirmed by the three-judge panel of the Federal Circuit, before an exceedingly rare en banc review was instituted based on LKQ's argument that the Federal Circuit had been applying a rigid approach to determining obviousness of design patents for over 40 years and the Supreme Court had overruled such an approach in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).

Under the first part of the test, Rosen required that "[b]efore one can begin to combine prior art designs . . . one must find a single reference, 'a something in existence, the design characteristics of which are basically the same as the claimed design.'" During v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed Cir. 1996) (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)). This primary reference that has "basically the same" visual impression as the patented design is typically referred to as the Rosen reference and if no Rosen reference is found, the obviousness inquiry ends.

Turning to the second part of the test, Durling required that "[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design." Id. The key to the second part of the test was any secondary references used must be "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." Id. (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)).

The Federal Circuit gave great weight to Supreme Court precedent, including Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), wherein the Court explained that the ultimate question of obviousness of a utility patent is based on the following four factors: (i) the scope and content of the prior art; (ii) differences between the prior art and the claims at issue; (iii) the level of ordinary skill in the pertinent art; and (iv) such secondary considerations that may be relevant as indicia of obviousness or nonobviousness. In addition, it highlighted KSR, wherein the Supreme Court rejected rigid application of the teaching, suggestion, or motivation ("TSM") test in determining obviousness for utility patents. Finally, it noted the Supreme Court's analysis of the validity of design patent claims in Smith v. Whitman Saddle Co., 148 U.S. 674, 680 (1893), focused on "the prior art in the field of the article of manufacture, the knowledge of an ordinary saddler, and the differences between the prior art and the claimed design." The Federal Circuit held that each of these three cases "suggest a more flexible approach than the Rosen-Durling test when determining obviousness."

Overruling the Rosen-Durling test will undoubtedly create some uncertainty as a new test gains traction in the courts (a point GM argued and Judge Louie agreed with in his concurring opinion — even the majority opinion of the Court tacitly acknowledged this fact) and likely make obtaining a design patent more difficult. In an attempt to provide some clarity, the U.S. Patent and Trademark Office ("USPTO") issued updated guidance and examination instructions shortly after the LKQ decision. USPTO Director Katherine Vidal initially summarized the Federal Circuit's decision as requiring "a more flexible approach that amounts to a restatement of KSR . . . for design patent claims while recalibrating the helpful aspects of Rosen, namely, starting with a 'primary reference' that is 'something in existence' and 'visually similar' to the claimed design to protect against hindsight.

Director Vidal proceeded to set forth four factual inquiries that must be undertaken during examination. First, a primary reference must be identified, which is analyzed in terms of its visual similarity to the claimed design, i.e., "[t]he 'more visually similar the primary reference is to the claimed design, the better positioned' a design examiner will be to set forth a prima facie case of obviousness." While the primary reference should typically be in the same field as the claimed design, it does not have to be as long as it is in analogous art (non-analogous art may not be considered by the examiner in assessing obviousness).

Turning to the second through fourth inquiries, the four Graham factors must be considered. Specifically, the second inquiry is directed to the scope and content of the prior art and the differences between the prior art designs and the design claim at issue must be determined. In doing so, the design examiner must compare the visual appearance of the claimed design with prior art designs from the perspective of an ordinary designer in the field of the article of manufacture." The third inquiry notes that in determining the level of ordinary skill in the art, the design examiner must consider the knowledge of a designer of ordinary skill who designs articles of the type being examined. Finally, design examiners must consider secondary considerations whenever present.

After ascertaining these factual inquiries, the design examiner must evaluate the obviousness/nonobviousness of the claimed design. This entails the determination of whether an ordinary designer in the relevant field of design "would have been motivated to modify the prior art designs to create the same overall visual appearance as the claimed design." If the answer is yes, the design claim should be rejected under 35 U.S.C. §103 absent convincing secondary considerations of nonobviousness being of record.

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