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IP News

BY Jeff Ginsberg
July 01, 2024

Federal Circuit Sitting en banc Overrules Long-standing Test for Assessing Obviousness of Design Patents and Adopts the Same Framework Established for Utility Patents

On May 21, 2024, Federal Circuit sitting en banc issued an opinion, authored by Judge Stoll, in LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024). Petitioner LKQ appealed from the Patent Trial and Appeal Board's (Board) final written decision in an Inter Partes Review (IPR) proceeding that found a design patent claim: 1) not anticipated under the ordinary observer test; and 2) not obvious under the long-standing Rosen-Durling test. Because the Rosen-Durling test is inconsistent with Supreme Court precedent, the Federal Circuit overruled In re Rosen, 673 F.2d 388 (CCPA 1982) and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996), and adopted the same framework established for utility patents, including the application of the factors enumerated in Graham v. John Deere, 383 U.S. 1 (1966),and the flexible analysis under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Federal Circuit affirmed the Board's finding of no anticipation, and consistent with the change in the applicable framework, vacated the Board's non-obviousness determination and remanded for further proceedings.

LKQ challenged GM's design patent covering a vehicle's front fender in an IPR proceeding under 35 U.S.C. §§102 and 103. Slip Op. at 5. The Board found that the challenged claim not anticipated under the ordinary observer test. Id. at 6-7. The Board further found that the challenged claim not obvious under the long-standing Rosen-Durling test because the prior art reference failed to meet the threshold Rosen requirement. Id. at 7-8. On appeal, a Federal Circuit panel affirmed the Board's decisions. Id. at 8. The Federal Circuit granted rehearing en banc. Id. at 10.

The en banc court (court) first addressed whether the two-part Rosen-Durling test for evaluating obviousness of design patents is inconsistent with Supreme Court precedent and found that it is. Id. at 15. The court first examined the Rosen requirement, i.e., the primary reference be "basically the same" as the challenged design claim, and found it "improperly rigid." Id. at 15-17. The court noted that the Supreme Court, in its 1893 Whitman Saddle opinion, held that combining the front half of a first prior art saddle design and the back half of another prior art saddle design was not inventive even though neither prior art design would have met the rigid Rosen requirement. Id. The court also concluded that the rigid Rosen requirement is "inconsistent with the Supreme Court's general guidance in KSR," which "emphasized … an expansive and flexible approach." Id. at 17. The court then examined the Durling requirement, i.e., a secondary reference cannot be relied on to supply ornamental features missing in the primary reference unless the secondary reference is "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" and found it improperly rigid. Id. The court noted that the Durling requirement finds no support in 35 U.S.C. §103, which requires consideration of the differences between the claim and the prior art and an inquiry into whether those differences would have been obvious to a skilled artisan. Id. at 17-18. The court also found Durling's inflexible approach to be: 1) analogous to the rigid application of the teaching-suggestion-motivation test rejected by the Supreme Court in KSR; and 2) inconsistent with Whitman Saddle, in which the Supreme Court did not ask whether the prior art references were "so related" and also grounded its decision on the "knowledge and practice" of a skilled artisan. Id. at 18-19. Because of these inconsistencies with Supreme Court precedent, the court overruled Rosen and Durling. Id. at 19.

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