In LKQ v. GM, a May 21, 2024 en banc decision on an appeal of an IPR final written decision determining that the challenged claim of GM’s U.S. Design Patent No. D797,625 (directed to the design for a vehicle front fender) was not obvious, the Federal Circuit vacated and remanded the PTAB’s decision, overruling the Rosen–Durling test for obviousness of design patents and articulating general guidance for a new obviousness test it determined was more consistent with Supreme Court authority, in particular the “flexible standards” applied in Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), Graham v. John Deere, 383 U.S. 1 (1966), and KSR v. Teleflex, 550 U.S. 398 (2007).
Under the LKQ v. GM framework, the test for obviousness of design patents should generally follow the Graham v. John Deere factors, as explained by the Court:
Graham Factor One
“Applying Graham factor one, the fact finder should consider the ‘scope and content of the prior art’ with in the knowledge of an ordinary designer in the field of the design.” Slip Op. 19. “In determining the scope of the prior art, … an analogous art requirement applies to each reference. The analogous art requirement reigns in the scope of prior art and serves to guard against hindsight.” Slip Op. at 19.
“[A]nalogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design.” Slip Op. 22. “[W]e do not foreclose that other art could also be analogous. 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 and we ‘leave it to future cases to further develop the application of this standard.’” (citations omitted). Slip Op. 23.
The “primary reference need not be ‘basically the same’ as the claimed design. Rather, the primary reference need only be ‘something in existence’”. Id. “The primary reference will likely be the closest prior art, i.e., the prior art design that is most visually similar to the claimed design. … The primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.” Slip Op. 23-24.
Graham Factor Two
“[I]n addressing [Graham factor two,] the differences between the claimed design and prior art designs for validity purposes, we compare the visual appearance of the claimed design with prior art designs, albeit from the perspective of an ordinary designer in the field of the article of manufacture.” Slip Op. 24.
Graham Factor Three
Under Graham factor three, ‘the level of ordinary skill in the pertinent art [must be] resolved.’ … [F]or Graham factor three, we consider the knowledge of ‘a designer of ordinary skill who designs articles of the type involved.’” Slip Op. 25.
Graham Factor Four
Next, “the obviousness or nonobviousness of the claimed design is evaluated.” Slip Op. 26. “We reaffirm that the ‘inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.’ … Where a primary reference alone does not render the claimed design obvious, secondary references may be considered. The primary and secondary references need not be ‘so related’ such that features in one would suggest application of those features in the other but they must both be analogous to the patented design. Consistent with KSR, the motivation to combine these references need not come from the references themselves. … But there must 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.” Id.
“Just as with the analogous art inquiry, in the area of motivation to combine, the problem to be solved may have less relevance in the design patent context than in the utility patent context.” Slip Op. 27.
Secondary Considerations
“Consistent with Graham, the obviousness inquiry for design patents still requires assessment of secondary considerations as indicia of obviousness or nonobviousness, when evidence of such considerations is presented. … We do not disturb our existing precedent regarding the application of secondary considerations such as commercial success, industry praise, and copying to the obviousness analysis in design patents. … We leave to future cases the determination of whether considerations such as long felt but unresolved needs and failure of others will have significance to the obviousness inquiry in the design patent context.” Slip Op. 27-28.
[a]s with any change, there may be some degree of uncertainty for at least a brief period, but our elimination of the rigid Rosen–Durling test is compelled by both the statute and Supreme Court precedent.
The en banc panel dismissed concerns over uncertainty that may result from overruling the Rosen–Durling test, indicating that “[a]s with any change, there may be some degree of uncertainty for at least a brief period, but our elimination of the rigid Rosen–Durling test is compelled by both the statute and Supreme Court precedent.” Slip Op. 29.
In a concurring opinion, Judge Lourie (who sat on the original panel, the opinion of which was vacated when the Federal Circuit granted LKQ’s request for en banc rehearing) indicated that while agreeing the PTAB decision should be vacated and the case remanded, there was no need for the Court to overrule Rosen and Durling, and the tests articulated in those cases could have been applied less rigidly by replacing the terms “must” and “only” in the analysis with words such as “generally,” “usually,” or “typically.” Concurring Op., 1-2.
On remand, the PTAB will determine whether GM’s design patent is obvious under the Federal Circuit’s revised framework.
