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The Federal Circuit Creates A New Standard For Assessing The Nonobviousness Of Design Patents
06/04/2024On May 21, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit” or “court”) issued an en banc opinion, affirming-in-part, vacating-in-part, and remanding a United States Patent and Trademark Office, Patent Trial, and Appeal Board (“Board”) decision that the prior art, including U.S. Design Patent No. D773,340 (“Lian”) did not render unpatentable Appellee GM Global Technology Operations LLC’s (“GM”) U.S. Design Patent No. D797,625 (the “D’625 patent”), pursuant to 35 U.S.C. §§ 102 and 103. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, __F.4th__, 2024 WL 2280728 (Fed. Cir. May 21, 2024). The en banc court affirmed the Board’s § 102 decision of no anticipation but vacated and remanded its § 103 decision of nonobviousness because the court overruled the long-standing Rosen-Durling test. Id.
Appellants LKQ Corporation and Keystone Automotive Industries, Inc. (collectively, “LKQ”), filed a petition to institute an inter partes review (“IPR”) of the D’625 patent, which claims the ornamental design for a vehicle front fender—a design used in GM’s 2018–2020 Chevrolet Equinox. LKQ challenged the D’625 patent claim’s patentability under § 102 based on Lian and challenged the claim’s patentability under § 103 based on Lian alone or as modified by other prior art.
The Board instituted the IPR and applied the ordinary observer test, set forth in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871), to determine whether the D’625 patent claim was anticipated. The Board held that LKQ had not established by a preponderance of the evidence that Lian anticipates the D’625 patent claim. The Board found that, while “there are certain articulable and visible similarities in the overall appearance of the claimed design and Lian that would be apparent to an ordinary observer,” differences between the designs, including the (1) wheel arch shape and the terminus, (2) door cut line, (3) protrusion, (4) sculpting, (5) inflection line, (6) first and second creases, and (7) concavity line, affected the overall visual impression of each design such that they are not substantially the same.
The Board then applied the Rosen-Durling test to assess the nonobviousness of the D’625 patent claim. For the Rosen-Durling test—a two-part test—step one requires that, “[b]efore one can begin to combine prior art designs . . . one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’” Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)). As the Board explained, Rosen’s “basically the same” test requires consideration of the visual impression created by the patented design as a whole. Rosen, 673 F.2d at 391. If no Rosen reference is found, the obviousness inquiry ends without consideration of step two. Step two requires that, “[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” Durling, 101 F.3d at 103. Nevertheless, any secondary references 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.” Id. (alteration in original).
The Board found that Lian does not “create[] ‘basically the same’ visual impression” as the D’625 patent and ended its obviousness inquiry without consideration of step two.
LKQ appealed. A Federal Circuit three-judge panel, bound by the Rosen and Durling decisions, affirmed the Board’s decision, holding that “substantial evidence supports the Board’s finding that Lian and the claimed design ‘created different overall impressions’ and, thus, Lian did not anticipate the D’625 patent.” Additionally, the panel concluded that substantial evidence supported the Board’s findings of nonobviousness because LKQ “failed to identify ‘the correct visual impression created by the patented design as a whole,’” and “failed to show that Lian creates ‘basically the same’ visual impression as the claimed design.”
The court then, however, granted rehearing en banc, requesting briefing on (1) whether KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) overrules or abrogates the Rosen-Durling test; (2) if not, whether the court should nonetheless eliminate or modify the Rosen-Durling test; and (3) if the court answered either of these two questions affirmatively, what test should apply for evaluating design patent obviousness challenges.
Following the parties’ briefing and briefing from several amici, the court decided that the “test for design patent obviousness, in its present form, does not adequately align with KSR, [Smith v.] Whitman Saddle [Co., 148 U.S. 674 (1893)], and other precedent, both in terms of its framework and threshold rigidity.” The court stated that Rosen-Durling is out of keeping with the Supreme Court’s general articulation of the principles underlying obviousness, as well as its specific treatment of the validity of design patents, thus, a more flexible approach is required when determining obviousness. Accordingly, the court concluded that the Rosen-Durling test was improper.
The Federal Circuit, having overruled Rosen and Durling, relied on its precedent in Hupp v. Siroflex of Am., Inc., 122 F.3d 1456 (Fed. Cir. 1997), wherein it held that “[i]nvalidity based on obviousness of a patented design is determined [based] on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent under § 103, that is, on application of the Graham factors.” Id. at 1462.
The Federal Circuit acknowledged that, as applied to design patents, for Graham factor one—which considers the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of the design—when determining the scope of the prior art, an analogous art requirement applies to each reference. For Graham factor two—which considers the differences between the prior art designs and the design claim at issue—there is a comparison between the visual appearance of the claimed design and the prior art designs, albeit from the perspective of an ordinary designer in the field of the article of manufacture. For Graham factor three—which considers the level of ordinary skill in the field of the invention—the knowledge of “a designer of ordinary skill who designs articles of the type involved” is relevant.
After ascertaining the three Graham factors, obviousness of the claim is evaluated, i.e., one must consider whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design “to create the same overall visual appearance as the claimed design.” “This inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.” Note that, where a primary reference alone does not render the claimed design obvious, secondary references may be considered. And, consistent with Graham, the obviousness inquiry for design patents requires an analysis of Graham factor four, i.e., an assessment of secondary considerations as indicia of obviousness or nonobviousness, when evidence of such considerations is presented.
The en banc court affirmed the Board’s determination of no anticipation, vacated its determination of nonobviousness, and remanded for the Board to address, in the first instance, whether the D’625 patent would have been nonobvious under 35 U.S.C. § 103, applying the proper framework for evaluating obviousness of design patent that it set forth.
Judge Lourie concurred because he disagreed with overruling Rosen and Durling. He stated that, to the extent that KSR abjured the rigid tests for evaluating patent issues, the court simply should have made the Rosen and Durling precedents less rigid.
Categories: Design Patents, IP in the Supreme Court, IP Litigation Procedure, IPRs, Obviousness, Prior Art, PTAB
