Imagine That IP Law Blog

On Tuesday, the Federal Circuit issued an en banc decision in LKQ Corp. et al. v. GM Global Technology Operations LLC, case number 21-2348 (Fed. Cir. May 21, 2024) (en banc) overruling decades long precedent for challenging design patents based on obviousness under 35. U.S.C. § 103.

The prior test, known as Rosen-Durling, required as a primary reference an earlier design that had "basically the same" visual impression as the patented design, to which features could be added from additional prior art designs that are "so related" to it that the appearance of features in one design suggested using those features in the other design.

In LKQ, the Federal Circuit overruled the Rosen-Durling test, which was found to be too inflexible as compared to the developed obviousness standards in other areas of patent law. In place of Rosen-Durling, the Federal Circuit held that obviousness would now be determined under the same guidelines used for utility patents as set forth in the Supreme Court's precedent in Graham v. John Deere, 383 U.S. 1 (1966) and as further discussed KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). This allows the use of “analogous art” that is not required to be from the same field of endeavor, with the Federal Circuit stating "we do not delineate the full and precise contours of the analogous art test for design patents. … 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.”

The Federal Circuit did note that a primary reference must still be identified that “need not be ‘basically the same’ as the claimed design,” and that the “more visually similar the primary reference design is to the claimed design, the better positioned the patent challenger will be to prove its §103 case.” However, secondary references can be used that are not bound by the prior “so related” standard of the Rosen-Durling test, that the features in the references themselves suggest application of those features of one reference to the other. Rather, there only needs to 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 of the claimed design.”

Given the broad scope of reasons for combining references in determining obviousness in utility patents under the Graham four-part obviousness test, design patent practitioners should appreciate that there must be more guidance to come from federal courts that must apply the new test for challenging design patents as obvious. The decision in LKQ brings some uncertainty, given the low standard now set for “analogous art”, which could allow selected parts of various designs to be stitched together in crafting obviousness rejections. This change will certainly impact both design patent prosecution before the United States Patent and Trademark Office, as well as federal design patent litigation.