As discussed in a recent post, On May 21, 2024, the Federal Circuit issued its en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC, significantly impacting design patent law. The court overturned the long-standing Rosen–Durling test, a two-part test used to assess the obviousness of design patents. This decision is expected to have far-reaching implications for patent practitioners and clients alike.

The Rosen-Durling Test

The Rosen-Durling test, established in the 1980s and 1990s, had been the cornerstone of design patent obviousness analysis for decades. It consisted of two primary requirements:

1. The primary reference must be “basically the same” as the challenged design claim.
2. Any secondary references must be “so related” to the primary reference that features in one would suggest applying those features to the other.

The KSR Impact

The Federal Circuit’s decision to abandon the Rosen-Durling test was primarily influenced by the Supreme Court’s ruling in KSR International Co. v. Teleflex Inc. (2007). In KSR, the Supreme Court rejected a rigid approach to assessing obviousness for utility patents, instead opting for a more flexible analysis considering what would have been obvious to a person of ordinary skill in the art at the time of the invention. The Federal Circuit explicitly extended this flexible approach to design patents, stating that the rigid requirements of the Rosen-Durling test were inconsistent with the broader, more flexible approach to obviousness mandated by KSR.

A New Era for Design Patent Obviousness

The Federal Circuit’s decision in LKQ aligns the obviousness analysis for design patents more closely with the principles established in KSR. The court announced a more flexible, fact-based approach, focusing on whether an ordinary designer in the relevant field would have been motivated to modify prior art designs to arrive at the claimed design. The court also provided a new framework for evaluating the obviousness of design patent claims, incorporating the Graham factors, a well-established framework for assessing obviousness in utility patents.

Repercussions for Patent Practitioners and Clients

The abandonment of the Rosen-Durling test and the adoption of a more flexible standard will likely have several significant consequences:

1. Increased Difficulty in Obtaining Design Patents: The new standard may raise the bar for obtaining design patents, as it requires a more comprehensive analysis of prior art and the motivations of an ordinary designer.
2. Easier Invalidity Challenges: Existing design patents may become more vulnerable to invalidity challenges under the new standard, as it allows for a broader consideration of prior art and a more flexible analysis of obviousness.
3. Greater Uncertainty: The shift away from a well-established test may create some uncertainty in the short term, as patent practitioners and clients adapt to the new framework. However, the Federal Circuit’s decision provides guidance on applying the Graham factors, a well-established framework for assessing obviousness in utility patents, to design patents.
4. Potential for Increased Litigation: The new standard may lead to an increase in litigation, as parties may be more likely to challenge the validity of design patents under the more flexible approach.

Concurring Opinion

In a concurring opinion, Circuit Judge Lourie disagreed with the majority’s decision to overrule Rosen and Durling completely. He argued that the Rosen-Durling test was fundamentally sound and only needed minor modifications to align with the flexibility emphasized in KSR. Judge Lourie expressed concerns about the potential for destabilization and uncertainty caused by overturning well-established precedent. However, he agreed with the majority’s decision to vacate and remand the Board’s decision for reevaluation under the new framework.

By abandoning the Rosen-Durling test and adopting a more flexible approach to obviousness, the court has aligned the analysis of design patents more closely with the principles established in KSR for utility patents. This decision will likely have a lasting impact on patent practitioners and clients, potentially making it more challenging to obtain and enforce design patents.

Conclusion

The Federal Circuit’s decision in LKQ marks a significant shift in design patent law. By abandoning the Rosen-Durling test and adopting a more flexible approach to obviousness, the court has aligned the analysis of design patents more closely with the principles established in KSR for utility patents. This decision will likely have a lasting impact on patent practitioners and clients, potentially making it more challenging to obtain and enforce design patents. However, the new standard also promotes a more nuanced and comprehensive analysis of obviousness, which may ultimately lead to stronger and more defensible design patents.