En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

By: Rajiv P. Patel , Emily Bullis , Jennifer R. Bush , Jonathan T. McMichael

What You Need To Know

  • The Federal Circuit has issued a precedential decision addressing the legal framework for determining whether a design patent is obvious under 35 U.S.C. § 103.
  • The court’s decision overrules the rigid, long-standing Rosen-Durling test, and going forward, the obviousness analysis for design patents follows the more flexible test applied to utility patents.
  • This more flexible standard may lead to an uptick in office actions during prosecution and more frequent challenges to design patents in district courts and the Patent Trial and Appeal Board (PTAB).

On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is obvious in view of the prior art.

The Long-Standing Rosen-Durling Test

For nearly 30 years, determining whether a design patent was obvious required a two-step inquiry deemed the Rosen-Durling test after the decisions In re Rosen (1982) and Durling v. Spectrum Furniture (1996). Step one required identifying a primary reference with “basically the same” visual impression as the claimed design. Only if a so-called “Rosen reference” was found did the inquiry proceed to step two: consideration of whether an “ordinary designer” would have been motivated to modify the primary reference to create a design with the same overall visual impression as the claimed design.

This threshold “basically the same” requirement at step one caused many obviousness attacks to fail, including LKQ’s attempts to invalidate two GM Global design patents relating to a vehicle front fender and a front skid bar. LKQ challenged GM Global’s patents in inter partes review (IPR) and post-grant review proceedings before the PTAB. The PTAB ruled for GM Global in both cases, stating that the identified references did not anticipate the claimed designs nor were they proper Rosen references. The PTAB thus ended the obviousness inquiry without considering secondary references or motivations to create the claimed design at step two.

The Federal Circuit’s En Banc Decision Aligns Obviousness Test for Design and Utility Patents

LKQ appealed to the Federal Circuit. It argued that the U.S. Supreme Court implicitly overruled the Rosen-Durling test in its 2007 decision KSR International Co. v. Teleflex, and that the Rosen-Durling test reflected the kind of “bright-line rules or mandatory formulas” that the Supreme Court had explicitly rejected.

The en banc Federal Circuit agreed. The court held that the long-standing Rosen-Durling test is “improperly rigid” and “does not adequately align with KSR, Whitman Saddle, and other precedent, both in terms of its framework and threshold rigidity.” Instead, “[t]he statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.”

That “more flexible approach” is the Graham test, which looks to:

  1. The scope and content of the prior art
  2. Differences between the prior art and the claimed design
  3. The level of ordinary skill in the art
  4. Motivations to combine and secondary considerations of non-obviousness, such as commercial success, long-felt but unresolved needs, and failure of others

The court’s decision aligns the standard for analyzing the obviousness of design patents with the standard that has governed utility patents for many years. The court also downplayed concerns that overruling the Rosen-Durling test would cause uncertainty, as courts and the U.S. Patent and Trademark Office (USPTO) can rely on “considerable precedent” applying the Graham factors to utility patents.

The Federal Circuit notably stopped short of answering all unresolved questions in this area of law. It held, for example, that obviousness references in the design patent context must come from analogous arts. But the court declined to “delineate the full and precise contours” of this requirement for design patents, leaving it to be addressed on a “case-by-case basis” in future cases. The court also left to future cases whether the new obviousness test would impact the secondary considerations of non-obviousness when being applied in a design patent context.

Key Takeaways

Patent Prosecution: Historically, design patent applications have rarely received art rejections, with current overall allowance rates hovering around 90%. The Federal Circuit’s rejection of Rosen-Durling signals a major shift in how these applications will be examined by the USPTO. Applicants are likely to see a significant drop in allowance rates and an increase in obviousness rejections as patent examiners explore their wider latitude to reject design claims under § 103. The expected uptick in examination cycles (office actions) also may increase prosecution costs as well as overall pendency of design applications.

Patent Enforcement: Design patents are more vulnerable to obviousness attacks without the shield of Rosen-Durling. IPR challenges to design patents are rare, with six or fewer petitions filed per year over the past three fiscal years out of more than 1,200 petitions filed each year. Even with so few petitions filed, institution rates for design patent IPRs (~33–50%) are also lower than for utility patent IPRs (~68%). These low numbers in part reflect the difficulty challenging design patents under Rosen-Durling and thus may rise with the Federal Circuit’s overruling of that test.

The LKQ decision will impact district court litigation as well. Litigants no longer must identify a primary reference that is “basically the same” as the claimed design—a hurdle that posed a significant challenge in many cases, especially at summary judgment. Elimination of the Rosen-Durling threshold requirement opens the door to more flexible obviousness challenges at every stage of litigation and trial. That said, challengers continue to bear the burden of proving a design patent is obvious, and it remains to be seen whether the highly factual Graham test will ultimately lead to more invalidation of design patents.