The Federal Circuit is set to decide en banc whether its design patent obviousness framework was overruled or abrogated by the Supreme Court’s seminal obviousness decision in KSR International Co. v. Teleflex Inc.[1]  Over 15 years ago, the Supreme Court in KSR instructed against applying a rigid approach to obviousness in favor of a more flexible and expansive approach.[2]  While KSR addressed utility patent obviousness, according to appellants in LKQ Corp. v. GM Glob. Tech. Operations LLC, KSR’s holdings are equally applicable to design patent obviousness.[3]  Particularly, the LKQ appellants contend that the Federal Circuit’s design patent obviousness framework requires exactly the kind of rigid and restrictive approach explicitly rejected in KSR.[4]  The Federal Circuit recently granted the LKQ appellants’ petition for rehearing en banc to decide this and other related issues.[5]  Interested parties have an opportunity for amicus briefing and should follow the outcome of this case to stay abreast of design patent validity requirements.

Design patent obviousness is governed by the same statute as utility patent obviousness—35 U.S.C. § 103.[6]  However, the jurisprudence for design patent obviousness has developed along a largely separate path from utility patent obviousness.[7]  The Federal Circuit has outlined a two-part test—sometimes referred to as the Rosen-Durling test—for determining whether a claimed aesthetic design is obvious.[8]  First, a suitable primary reference must be identified, “the design characteristics of which are basically the same as the claimed design.”[9]  Second, “other ‘secondary’ references ‘may be used to modify [the primary reference] to create a design that has the same overall visual appearance as the claimed design.’”[10]  However, “secondary references may only be used to modify the primary reference if they are ‘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.’”[11]  The Rosen-Durling test has been in place for over 25 years, and the impact of KSR on the test has not been decided, until now.[12]  Appellants in LKQ contend that the Rosen-Durling test is inconsistent with the Supreme Court’s interpretation of 35 U.S.C. § 103 in KSR, and should be overturned.[13]

The LKQ case reached the Federal Circuit on appeal from an inter partes review of U.S. Design Patent D797,625S (the ’625 patent), which is directed to an “ornamental design for a vehicle front fender.”^[14]  Applying the Rosen-Durling test, the Patent Trial and Appeal Board (the Board) determined that LKQ had not demonstrated that the ’625 Patent would have been obvious to an ordinary designer.^[15]  Specifically, the Board found that LKQ had failed to identify a suitable primary reference having “basically the same” visual impression as the claimed design, as required by the Rosen-Durling test.^[16]  The Board did not reach the second step of the Rosen-Durling test—i.e., considering LKQ’s proposed obviousness reference combination—because, according to the Board, no suitable primary reference had been identified.[17]  LKQ appealed the Board’s determination on the grounds that “the Supreme Court’s decision in KSR implicitly overruled the long-standing Rosen and Durling tests for obviousness of design patents.”^[18] 

A Federal Circuit panel consisting of Judges Lourie, Clevenger, and Stark rejected LKQ’s arguments and affirmed the Board’s application of Rosen and Durling.  The panel noted that “KSR did not involve or discuss design patents,” and that only two appeals involving design patent obviousness had even “tangentially” raised the correctness of Rosen and Durling in the more than fifteen years since KSR was decided.[19]  The panel characterized LKQ’s appeal as “an outlier” and declined to overrule Rosen or Durling “without a clear directive from the Supreme Court.”[20]

Though the panel opinion was a per curiam opinion, Judges Lourie and Stark also wrote separate concurring opinions to express additional views.  Judge Lourie expressed the view that, although 35 U.S.C. § 103 “does not differentiate between types of inventions, and hence applies to all types of patents,” design patent obviousness “requires different considerations,” which KSR did not intend to address.[21]  Judge Lourie further cited an academic review of design patent obviousness that concluded “‘KSR has very limited, if any, applicability to design patents.’”[22]  By contrast, Judge Stark acknowledged “substantial tension between the Supreme Court's holding in KSR and our Durling test” and “how one might conclude that KSR implicitly overrules the Durling test.”[23]  However, Judge Stark would not have reached LKQ’s KSR argument at all and would have found the argument “forfeited before the Board.”[24]

LKQ petitioned for rehearing en banc of the panel’s decision on the grounds that “Rosen and Durling rigidly restrict the obviousness inquiry” and reflect the kind of “bright-line rules or mandatory formulas” explicitly rejected by the Supreme Court in KSR.[25]  According to LKQ, “[i]f ever there was a rigid rule of obviousness, it is Rosen’s primary reference requirement.”[26]  For example, LKQ pointed to Judge Stark’s observation that the Rosen primary reference requirement “‘appears to prevent consideration of the ordinary designer’s creativity,’” as a rigidity in contradiction with KSR.[27]  LKQ further argued Durling’s requirement that a secondary reference “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’ is inconsistent with

KSR.”[28]  LKQ argued that “the Rosen/Durling test prevented the Board from considering [LKQ’s obviousness combination],” and that “[a]ny analysis that reaches a conclusion on obviousness without … looking at the universe of prior art cannot stand.”[29]

The Federal Circuit granted LKQ’s petition for rehearing en banc and vacated the panel opinion.[30]  In support of the en banc rehearing, the Court requested additional briefing on the following questions:[31]

1. Does KSR overrule or abrogate Rosen and Durling?
2. Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and suggest the court should eliminate or modify the Rosen-Durling test?
3. If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?
4. Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.
5. Given the length of time in which the Rosen-Durling test has been applied, would eliminating or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?
6. To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?

In addition to briefing from the parties, the Federal Circuit has invited briefing on the questions outlined above from amicus curiae without consent and leave of the court.  Amicus briefs supporting LKQ’s position are due in late August, and Amicus briefs supporting GM’s position are due in late September. 

With regards to the Court’s briefing request item C—i.e., what should the test be for evaluating design patent obviousness—LKQ did not articulate an alternative obviousness test in its petition,[32] and few alternative proposals were identified in a review of academic literature.  One scholar has proposed that the Rosen-Durling test’s primary reference requirement should be retained but applied more flexibly and with recognized exceptions to account for other evidence of obviousness, such as industry practice or custom.[33]  The same scholar has also proposed abandoning the Federal Circuit’s rules for modifying primary references in favor of new rules to take account of additional factors, such as “non-aesthetic motivations to modify.”[34]  With few alternative proposals previously debated in the academic community, the party and amicus briefing on this issue may be of particular interest to practitioners and rights holders, particularly if the Court decides to overrule the Rosen-Durling test.

With recent research finding that design patents survived validity challenge over 88% of the time in U.S. district court litigation,[35] design patent holders may prefer continuity and to avoid the potential uncertainty that a decision overruling the Rosen-Durling test could entail.  In this regard, Judge Lourie has clearly expressed the view that KSR did not alter the Rosen-Durling test.[36]  However, with the Supreme Court’s repeated instruction that judicial discretion should guide application of the patent laws rather than rigid tests,[37] it is possible the Federal Circuit feels compelled to act.  Practitioners and rights holders should follow the outcome of this case to find out whether the other circuit judges agree with Judge Lourie, or whether a change in the law of design patent obviousness is articulated. 

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