As we have previously written about here, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has granted a petition for an en banc rehearing of LKQ Corp. et al v. GM Global Technology to rule on the issue of whether the current test for determining obviousness of design patents, i.e., the Rosen/Durling Standard, is proper in view of the Supreme Court’s 2007 decision in KSR v. Teleflex, 550 U.S. 398 (2007), which significantly broadened the obviousness inquiry for utility patents beyond the classic Teaching Suggestion Motivation (“TSM”) test.  The Rosen/Durling Standard was originally set forth in In re Rosen, 673 F.2d 388 (CCPA 1982) and both upheld and further clarified by the Federal Circuit in Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996).  The Standard first requires the identification of a proper primary or Rosen reference, which is “a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design’” and then the modification of the primary reference with a secondary reference. Durling, 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391). Continue Reading Design Patent Obviousness Inquiry Is Up for Review at the CAFC

In a surprising move, the Court of Appeals for the Federal Circuit (“CAFC”) has granted a petition for rehearing en banc on the issue of whether the test for determining obviousness of design patents has been overruled by the Supreme Court’s 2007 decision in KSR v. Teleflex, 550 U.S. 398 (2007).  In the case, captioned LKQ Corp. et al v. GM Global Technology, the en banc CAFC has requested briefing as to whether the design patent obviousness test originally set forth in In re Rosen, 673 F.2d 388 (CCPA 1982) and blessed by the CAFC in Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) is good law in view of the Supreme Court’s obviousness holding in KSR, which significantly modified the obviousness inquiry for utility patents.  While there was no doubt that KSR did not apply to design patents since the underlying obviousness analysis for utility patents differs so significantly from that for design patents, the en banc CAFC has clearly demonstrated a renewed interest in the issue, and any changes to the test can have significant implications for all future-filed, pending, and active design applications and patents. Continue Reading Uncertainty Ahead if Design Patent Obviousness Test is Abrogated by en banc CAFC