Upending decades of continuity in the world of design patents, the United States Court of Appeals for the Federal Circuit (“CAFC”), sitting en banc in LKQ Corporation v. GM Global Technology Operations LLC, overturned the Rosen/Durling standard for obviousness of design patents, originally set forth in In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982) and further refined in Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996), to align the test for obviousness for design patents with the U.S. Supreme Court precedent for utility patents originally set forth in Graham v. John Deere Co., 383 U.S. 1 (1966) and refined in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).  In so doing, the CAFC outlined the new framework by which design patent obviousness is to be determined at the United States Patent & Trademark Office (“USPTO”) during examination and post-grant proceedings, as well as during district court litigation involving infringement or invalidity challenges of design patents.

The LKQ Opinion

Focusing on Supreme Court precedent, the en banc CAFC discussed KSR, Graham, and Smith v. Whitman Saddle Co., 148 U.S. 674 (S. Ct. 1893), the latter of which pre-dates the statutory implementation of 35 U.S.C. §103 (1952) by nearly sixty years.  While it will take years to flesh out various aspects of the test set forth by the en banc court in LKQ in the context of design patents, the overall framework by which obviousness is to be determined is well-known to utility practitioners since it finds its roots in the Supreme Court’s Graham decision.

At the first step, the LKQ court held that “[t]he primary reference will likely be the closest prior art, i.e., the prior art design that is most visually similar to the claimed design[, and] [t]he more visually similar the primary reference design is to the claimed design, the better positioned the patent challenger will be to prove its § 103 case.”  LKQ v. GM at *31. Providing flexibility to the inquiry, the CAFC further held that “[t]he primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.” Id.  At the second step, the fact finder should “determin[e] the differences between the prior art designs and the design claim at issue,” id., and the differences between the art and the claimed design are compared “from the perspective of an ordinary designer in the field of the article of manufacture.”  Id. at *32. Unsurprisingly, the CAFC held that at step three, when “the level of ordinary skill in the pertinent art [is] resolved” Graham, 383 U.S. at 17, the person of ordinary skill is an ordinary designer in the field to which the claimed design pertains.  See LKQ, at *33. Finally, the CAFC held that at step 4, “the obviousness inquiry for design patents still requires assessment of secondary considerations” with an emphasis that some secondary considerations will be determined by future cases. Id. at *36

What comes next?

Several open questions remain in the wake of the LKQ opinion. For starters, the district courts and USPTO will need to wrestle with a standard for what will typically satisfy as a primary reference upon which an obviousness rejection can be predicated.  While the Rosen standard of “something in existence [with] basically the same” design characteristics has been abrogated as too strict, the LKQ court was careful to rule that a suitable primary reference must still be identified to protect against hindsight because “almost every new design is made up of elements which, individually, can be found somewhere in the prior art.” Id. at *23 (internal citation omitted).  That is, the court was clear to hold that a primary reference must be an actual design already in existence, rather than some Frankenstein-like monster of design features stitched together from various prior art references.  Therefore, it appears that some new standard must be established for what will generally qualify as a suitable primary reference, since if no single prior art reference has at least a reasonable baseline similarity in overall design to the claimed design, then it would be impermissible to predicate an obviousness rejection on that reference without violating the prohibition on hindsight combination of individually-appearing design features, as noted above.

Another open question—which is perhaps the most difficult of all in the context of industrial designs—is what will be considered suitably “analogous” art.  For utility patents, a two-part test is used to determine the scope of analogous art: (1) whether the art is from the same field of endeavor as the claimed invention; and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.  While the first part of this test has a relatively straightforward application to the design context, we predict that the USPTO and district courts (and very likely the CAFC again on appeal at some point in the future) will struggle to articulate a sensible doctrine for application of the “reasonably pertinent to the particular problem” prong of this test to the design context.  Clearly lacking for an answer, the LKQ court explicitly left the contours of this question to be addressed on a case-by-case basis in future matters. Thus, design patent stakeholders will have an important role to play in advocating for sensible application of the Graham obviousness factors to the design context, in particular the contours of the imputed knowledge of a “designer of ordinary skill who designs articles of the type involved,” as well as establishing which secondary considerations as indicia or obviousness or nonobviousness are logical in this context.

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