The landscape of design patent law has recently evolved with the introduction of a new standard for determining obviousness. For decades, the Rosen-Durling test was used to assess obviousness of design patents. The test’s rigid standard resulted in few design patents being invalidated as obvious. In its first en banc decision since 2018, the Federal Circuit overruled the long-established obviousness test in the case of LKQ Corporation v. GM Global Technology Operations LLC.
The Rosen-Durling test had been the standard for evaluating the obviousness of design patents since the 1990s. It involved a two-step process. First, a single primary reference, often referred to as the “Rosen reference,” must be identified, possessing design characteristics that are “basically the same” as the claimed design. If no Rosen reference is found, the assessment ends here. If the first step is satisfied, the second step requires the use of additional references to supplement the primary Rosen reference. These additional references must be “so related” to the primary Rosen reference that applying certain ornamental features from one to the other would be obvious. This rigid framework often made it difficult to invalidate design patents, as challengers had to find a primary reference that was nearly identical to the patented design. The LKQ case represents a significant shift in how obviousness in design patents is evaluated, moving away from the stringent Rosen-Durling test.
General Motors (GM) is well-known for manufacturing automobiles, many of which are protected by intellectual property (IP) rights, including design patents for various components like fenders, bumpers, and headlights. For many years, GM did not produce most of its replacement body parts; instead, it contracted with LKQ to manufacture those parts. Eventually, GM decided to start producing its own replacement body parts, terminating its agreement with LKQ.
Despite the termination of the agreement, LKQ continued to manufacture aftermarket parts for GM—specifically the parts covered by GM’s design patents. In response, GM sent a cease-and-desist letter to LKQ, asserting that LKQ was infringing on approximately 250 different design patents held by GM. In turn, LKQ filed multiple Inter Partes Review (IPR) and Post Grant Review (PGR) petitions concerning various design patents, including an IPR against U.S. Design Patent No. D979,625, which claims the ornamental design for a vehicle front fender.
The Patent Trial and Appeal Board (PTAB) determined that the ’625 Patent was valid when evaluated against prior art on both anticipation and obviousness grounds. Specifically, the PTAB found that LKQ failed to meet step one of the Rosen-Durling test because the primary reference was not “basically the same” as the claimed design. LKQ then appealed to the Federal Circuit.
The panel of the Federal Circuit affirmed the PTAB’s decision, prompting LKQ to request a hearing en banc, which was granted. On appeal, LKQ argued that the Rosen-Durling test was inconsistent with the Supreme Court’s decision in KSR, which advocated for a more expansive and flexible approach to assessing obviousness in utility patents. The en banc Federal Circuit agreed with LKQ, ruling that the Rosen-Durling test was unduly rigid. The court held that the non-obviousness requirement under Section 103 applies equally to both design and utility patents and adopted the Graham factors used for evaluating obviousness in utility patents when assessing design-patent obviousness.
There are four Graham factors to consider when assessing obviousness. The first Graham factor involves determining the scope and content of the prior art. For design patents, this entails identifying a primary reference, which is the piece of prior art that most closely resembles the claimed design. The key requirement for a primary reference is that it must be at least analogous art. The Federal Circuit clarified that “analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design.” LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1297 (Fed. Cir. 2024). This guidance aligns with the current practice in examining utility patents, where only references that are at least analogous to the claimed invention are considered valid for evaluating obviousness. According to the Federal Circuit, the requirement for identifying a primary reference is intended to protect against hindsight bias, ensuring that designs that are less visually similar do not overly influence the determination of obviousness. “Analogous art” includes previous designs from the same field—such as automobile fenders in the LKQ case—or other designs outside the field that would fall within the knowledge of a hypothetical ordinary designer familiar with the type of object being designed. For instance, a nursing pad and necklace adhesive brassier may be analogous art to a flexible garment insert, whereas a teardrop-shaped vase and engagement ring likely would not be.
When evaluating the differences between the prior art designs and the design claim in question, we must follow Graham factor 2. This evaluation does not require a threshold “similarity” criterion. Instead, it involves comparing the overall visual appearance of the claimed design with that of prior art designs from the perspective of an ordinary designer familiar with the type of product in question. The Federal Circuit emphasizes that both the claimed design and the prior art should be assessed based on their overall visual appearances, rather than on the specific similarities or differences of individual elements.
The third Graham factor examines the level of ordinary skill in the relevant field. The Federal Circuit determined that the correct perspective for evaluating whether a design is obvious is that of “a designer of ordinary skill who designs articles of the type involved.” The primary and secondary references do not need to be “so related” that features in one would directly suggest the application of those features in the other. However, both must be considered analogous art to the patented design. Additionally, the motivation to combine these references does not have to come explicitly from the references themselves. It is required that there be some record-supported reason—free from hindsight—that an ordinary designer in that field would have modified the primary reference using features from the secondary reference(s) to achieve an overall appearance similar to the claimed design.
The court confirmed that secondary factors related to nonobviousness (specifically Graham factor 4) should be taken into account for design patents. These factors include commercial success, industry recognition, and acts of copying. However, it was left to future courts to decide whether long-standing unmet needs and the failures of others are relevant in the context of design patents.
So, what does this all mean? The overruling of the Rosen-Durling test is expected to significantly impact the prosecution and enforcement of design patents. The new standard will simplify the process for determining design patent obviousness, likely making it more challenging to secure and protect these patents. Now, the focus will be on whether prior art is considered analogous, which opens up a broader range of references for evaluation.
This new approach encourages a more nuanced, fact-based analysis, allowing for greater consideration of common sense and the knowledge of an ordinary designer. GM raised concerns that overruling the Rosen-Durling test may lead to confusion and inconsistency. The Federal Circuit acknowledged these concerns but noted that there is a substantial body of precedent to guide the Patent Office and courts when assessing obviousness.
While there is undoubtedly less certainty in the near future, the Federal Circuit stated that “[w]hether a prior art design is analogous to the claimed design for an article of manufacturer is a fact question to be addressed on a ‘case-by-case basis.’” LKQ Corp., 102 F.4th at 1297-98. Future cases will help clarify how parties, examiners, and courts should apply the Graham factors and the analogous art requirement to design patents.