On February 9, 2023 the PTAB issued a Final Written Decision in Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC, determining the design claim of US D930,702 (“D’702”) unpatentable, as both anticipated and obvious based on a single reference, Reddy, US 2018/0260806 A1 (“Reddy”). See Consolidated PGR2022-00031 and PGR2022-00045, Paper No. 34. D’702 claimed a display screen having an animated graphical user interface (GUI).
As shown below, while much of the GUI was in broken lines, and thus disclaimed, a first image of the claimed GUI depicted three square corners of a QR Code, and a second image depicted a price of $0.00:
The PTAB found D’702 was both anticipated and obvious from Reddy. The PTAB reproduced the following comparison of representative figures of D’702 (modified to omit all aspects that were depicted in broken lines, a technique employed by the Federal Circuit in Campbell Soup Co. v. Gamon Plus, Inc., discussed here) to figures from Reddy, similarly modified to omit all but the most similarly-looking features:
By adopting the petitioner’s expert’s rationale, the PTAB panel suggests that when obviousness is based on a single prior art reference, it is proper to employ functional considerations as motivation to modify the reference to arrive at the claimed design.
Crediting Petitioner’s arguments, the PTAB found that “‘the ordinary designer would have modified Reddy’s design to mirror the claimed design’ in order ‘to increase the amount of data’ contained in the code.” PGR2022-00031; PGR2022-00045, Paper No. 34, at 9. Petitioner’s Expert had opined that “[a] designer of ordinary skill would be motivated to [replace the QR code of Reddy with a QR code that would inherently include relatively smaller and further spaced apart squares] to increase the amount of data that the QR code contains.” The PTAB’s decision suggests that it is proper to employ functional considerations as motivation to modify a single reference to arrive at the claimed design.
The PTAB’s reasoning appears at odds with recent Federal Circuit decisions. For example, in LKQ Corp., et al., v. GM Global Technology Operations LLC, a pair of per curium opinions designated nonprecedential, the Federal Circuit recently rejected arguments that the Supreme Court’s KSR Int’l v. Telflex, Inc. decision overruled the tests for obviousness of design patents established in Durling v. Spectrum Furniture Co., Inc. and In re Rosen. Under Rosen / Durling test (discussed generally here), a “secondary reference 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.” In a strict application of the Rosen / Durling test, the only motivation to modify a primary reference according to a secondary reference depends upon finding the primary and secondary references are similar in appearance. However, Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC is one of several PTAB decisions, and those of its predecessor, the Board of Patent Appeals and Interferences, in which panels were persuaded by functional motivations to modify one or more references to find obviousness. These other decisions include:
Caterpillar, Inc. v. Miller International, Ltd., IPR2015-00416 Final Written Decision (PTAB July 9, 2015)(discussed here)(concluding that one of ordinary skill in the art would look to a curved portion of a secondary reference’s coupler for an earthmoving machine “as the reasonable location for moving the warning symbol disclosed in” the primary reference “because, in this location on the coupler, the symbol would be ‘readily visible to the operator of the earth-moving equipment.’” Paper No. 7, at 11).
Lowes v. Reddy, IPR2015-00306 Final Written Decision (PTAB Mar. 30, 2016) (finding claim to bathroom vanity light shade obvious based on a single reference, adapted in accordance with functional considerations: “We are persuaded by the teachings in [the sole reference] and Mr. Woodring’s testimony that a designer of ordinary skill reading Cohrs would have had little difficulty designing a decorative vanity strip light shade, in accordance with Cohrs Figure 6, having a translucent plastic sheet on the bottom to diffuse light shining down on the bathroom sink and vanity, and having a rectangular open top to ventilate heat and allow light to shine up on the wall and ceiling.” Paper No. 21, at 24).
Ex parte Hardy and R. Neal Post, 2005-1424 (BPAI 2005), aff’d (without opinion)(Fed. Cir. 2006)(affirming a rejection of a design patent claim to a mesh waste basket with tapered walls based on prior art vertical-walled basket and secondary references showing baskets with tapered sidewalls: “According to Pope [one of the secondary references], the tapered sidewalls afford the functional advantage of increased basket volume…. Pope teaches that it was known to taper sidewalls in a mesh basket to increase basket volume.” The Board in Hardy went one step further, finding that “the tapered sidewall feature is largely functional rather than ornamental. ‘“When a claim is rejected under 35 U.S.C. 103(a) as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability.” MPEP § 1504.03 (8th ed., Rev. 2, May 2004); see also Jones v. Progress Industries, Inc., 163 F.Supp. 824, 826 (D.R.I. 1958)(‘Functional features or forms cannot be relied upon to support its patentability.’).”
While recent Federal Circuit decisions have cast doubt on the application of KSR to design patent cases, the PTAB still appears to be entertaining functional motivations to modify a single reference to find obviousness. KSR’s less-rigid approach to obviousness determinations, even if not mandated, continues to permeate the administrative body tasked with adjudication of disputes as to the patentability of ornamental designs.
 10 F.4th 1268 (Fed. Cir. 2021) (“Campbell II”).
 Appeal Nos. 2021-2348; 2022-1253 (Fed. Cir. Jan. 20, 2023)(nonprecedential)(per curium)(petition for rehearing en banc filed March 23, 2023).
 550 U.S. 398 (2007).
 101 F.3d 100 (Fed. Cir. 1996).
 673 F.2d 388 (C.C.P.A. 1982).
 LKQ v. GM, Appeal Nos. 2021-2348; 2022-1253 (Slip Op.), at 11-12.