Full Federal Circuit Ditches Decades-Old Design Patent Test

A version of this article was republished by Westlaw Today on June 21, 2024.

This week, the full Federal Circuit overruled its decades-old test for deciding whether a design patent is invalid as obvious. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, 2024 WL 2280728 (Fed. Cir. May 21, 2024). The en banc court held that the “Rosen-Durling” test was “improperly rigid” and that the Graham v. John Deere framework is the correct test going forward.[1] The court’s decision ditches decades of precedent applying the Rosen-Durling test, so the decision will likely create uncertainty for years to come as courts grapple with applying the new test to design patents.

The Rosen-Durling test, first established in the 1990s, requires (1) that a primary reference (a “Rosen reference”) be “basically the same” as the claimed design; and (2) that any secondary references be “so related” to the primary reference that features in one reference would suggest application of those features to the other reference.

LKQ argued that the Rosen-Durling test was overly rigid and inconsistent with KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Federal Circuit agreed, holding that the “basically the same” and “so related” requirements did not “adequately align with KSR, Whitman Saddle, and other precedent, both in terms of its framework and threshold rigidity.”

The court explained that the “basically the same” requirement was inconsistent with Section 103’s “expansive and flexible approach for assessing obviousness,” as well as the Supreme Court’s 1893 decision in Smith v. Whitman Saddle Company.[2] The court explained, using the obviousness analysis in Whitman Saddle, that the “basically the same” requirement was a “rigid rule” and therefore was inconsistent with the Supreme Court’s KSR analysis that “when a court transforms [a] general principle into a rigid rule that limits the obviousness inquiry, . . . it errs.”

The court similarly explained that the “so related” requirement for secondary references under the Rosen-Durling test was inconsistent with § 103 and precedent. The court agreed with LKQ that the “so related” requirement is “analogous to the rigid application of the teaching-suggestion-motivation test rejected by the Supreme Court in KSR.” The court pointed to Whitman Saddle, where the Supreme Court did not ask whether the prior art references were “so related” but, instead, explained that it was not inventive to combine the two references due to record evidence.

After overruling the Rosen-Durling test, the court provided the following guidance on applying the Graham factors to design patents:

• For Graham factor one, the court held that the “analogous art” requirement applied to design patents. The court declined, however, to “delineate the full and precise contours of the analogous art test for design patents.”
• For Graham factor two, the court explained that the proper analysis was to  “compare the visual appearance of the claimed design with that of [the] allegedly infringing design” from the perspective of an ordinary designer in the field of the article of manufacture.
• For Graham factor three, the court explained “that obviousness of a design patent claim is assessed from the viewpoint of an ordinary designer in the field to which the claimed design pertains.”
• Under Graham factor four, the court reaffirmed that the “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.” The court further held that, where the primary reference alone does not render the claimed design obvious, “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 as the claimed design.”
• The court held that secondary considerations of obviousness or nonobviousness apply to design patents, though it noted certain secondary considerations—such as long felt but unsolved needs and failure of others—may not apply to design patents.

The court acknowledged that amici curiae raised concerns about the uncertainty that may result from overruling the Rosen-Durling test, but the court disagreed because the “Graham four-part obviousness test for utility patents has existed for a very long time and there is considerable precedent from which the PTO and the courts can draw when assessing obviousness in the design patent context.”

Takeaways from Decision

It is unclear why it took 17 years for the Federal Circuit to hold that the Rosen-Durling test is overly rigid under KSR. While the court rejected concerns that overruling Rosen-Durling would create uncertainty, there is little doubt that, in practice, courts, Patent Office examiners, and practitioners will need to grapple with applying the Graham factors to design patents. Given how little guidance the court provided, there will be less certainty in determining the obviousness of design patents until courts develop applicable precedent.

Graham factors aside, the court’s decision arguably makes it easier to invalidate design patents because prior art references no longer need to be a “Rosen reference” and secondary references do not need to be “so related” to the primary reference. This may result in an increase in the number of petitions for post-grant review of design patents and will likely factor into a patent owner’s decisions whether to assert design patents in litigation.

[1] Judge Lourie concurred in the judgment but did not agree that Rosen and Durling needed to be overruled. In his opinion, the existing test could be made less rigid simply by removing the use of “must” and “only” in the analysis of the tests.

[2] The court acknowledged that, “[a]t the time [of Whitman Saddle], patent law did not speak of obviousness.”