On May 21, 2024, the Court of Appeals for the Federal Circuit issued an en banc decision (previously discussed here) in LKQ Corp. v. GM Glob. Tech. Operations LLC, overturning the Rosen–Durling test used to determine the obviousness of design patents.¹ The court found that the Graham factors, which were historically reserved for determining the obviousness of utility patents, should also be applied to design patents.

The Rosen–Durling Test

To invalidate a design patent as being obvious under 35 U.S.C. § 103, the Rosen–Durling test considered two criteria. First, the challenger had to identify a primary reference whose design was “basically the same as the claimed design.”² Second, any secondary references had to 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.”³ The similarity of the designs was determined by the “visual impression” they created as a whole.⁴

The test was born of concerns that hypothetical combinations of features on otherwise unrelated designs would invalidate a patent for a design that was visually distinct from any of the references individually.⁵ It also reflected concerns for the breadth of prior art, which could make a design obvious.⁶

The Test After LKQ Corp.

The Federal Circuit in LKQ Corp. overturned the Rosen–Durling requirements and found that the Graham factors apply to both utility patents and design patents.⁷ In particular, Graham requires consideration of the scope and content of the prior art and reasons that analogous art may be considered as a measure against hindsight bias.⁸ Along these lines, for art to be analogous, it was determined that it must be from the same field of endeavor or reasonably pertinent to the particular problem to be solved.⁹ Moreover, it is also notable that while a primary reference is still required as part of the obviousness analysis, it need not meet Rosen’s requirement that it is “basically the same as the claimed design.”¹⁰

Following the newly applied Graham factors, the court determined that the differences between the prior art and the design at issue should be considered by looking at the visual appearance of the design “from the perspective of an ordinary designer in the field of the article of manufacture” and without referencing a threshold similarity requirement.¹¹ Moreover, the level of ordinary skill in the pertinent art was also taken into account, which the court found is determined by the “knowledge of ‘a designer of ordinary skill who designs articles of the type involved.’”¹²

The court further determined that secondary considerations such as “commercial success,” “industry praise,” and “copying” should also be weighed when analyzing design patents for obviousness, yet left the applicability of other secondary considerations, such as “long felt but unsolved need” and “failure of others” to future cases.¹³

The court was careful to reaffirm that the “[design patent obviousness] inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”¹⁴ It further emphasized that “the more different the overall appearances of the primary reference verses the secondary reference(s),” the less likely a patent will be found to be obvious.¹⁵

Why the Change?

The Federal Circuit pointed to three sources upon concluding that the Rosen–Durling test must be abandoned – namely, the language of § 103 itself, the Supreme Court’s opinion in Whitman Saddle, and the Supreme Court’s opinion in KSR.¹⁶ In terms of the language of § 103, the court concluded that not only did Rosen’s requirements impose a limitation absent from the statutory language, but that the same standard should apply to both design and utility patents.¹⁷ The court thus adopted the Graham factors used in utility patents.¹⁸

The court also looked to the 19^th century Supreme Court case Whitman Saddle. There, the Supreme Court determined that a saddle design that combined the front half of one design with the back half of another was obvious.¹⁹ The LKQ court analogized the Supreme Court’s approach there with the Graham approach, looking to the ordinary skill of those in the trade and the custom of combining elements of different designs – ultimately finding it inconsistent with Rosen’s requirement that at least one reference be “essentially the same” as the patented design.²⁰

Most crucially, the Federal Circuit looked to the Supreme Court’s guidance in KSR. There, the Supreme Court rejected a more rigid interpretation of the Graham factors, known as the TSM (i.e., teaching, suggestion, or motivation) test.²¹ The opinion emphasized, “[r]igid, preventative rules that deny factfinders recourse to common sense, . . . are neither necessary under our case law nor consistent with it.”²² The LKQ court determined that the Rosen–Durling standard was such a rule and thus inconsistent with KSR.²³

The facts of the case likely also solidified the court’s decision to overturn Rosen–Durling. Intuitively, the challenged design and the primary reference create “basically the same” visual impression as required by Rosen.²⁴ Instead, the board pointed to the same individual features to both find that the primary reference did not anticipate the patent and that the primary reference did not satisfy Rosen.²⁵ As such, the panel upheld this on substantial evidence.²⁶ In the end, the counterintuitive results of the test likely weighed against retaining Rosen–Durling.

Taft Takeaways

• The abandonment of the Rosen-Durling test will likely make design patent obviousness rejections by patent examiners more commonplace and more difficult to overcome. To this end, the USPTO issued new guidance immediately following the LKQ.²⁷
• Moreover, by adopting the Graham factors – the obviousness analysis historically reserved for utility patents – design patents may now be more susceptible to invalidation challenges in litigation after issuance.
• The presumed lower burden for invalidating design patents is likely to increase the use of inter partes review (IPR) and post grant review (PGR) proceedings at the USPTO as another means to escape liability for infringement.

Taft will continue to monitor these developments and advise its clients accordingly on the risks and rewards of design patent enforcement.

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Taft summer associate Kyle Nelson also contributed to this law bulletin. 

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¹ No. 2021-2348, 2024 WL 2280728 (Fed. Cir. May 21, 2024)
² In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982)
³ Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (alteration in original) (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996))
⁴ Durling, 101 F.3d at 103
⁵ See Rosen, 673 F.2d at 391 (citing In re Jennings, 182 F.2d 207, 208 (C.C.P.A. 1950))
⁶ See id. (citing In re Glavas, 230 F.2d 447, 450 (1956))
⁷ 2024 WL 2280728 at *7
⁸ Id. at *8
⁹ LKQ Corp., 2024 WL 2280728 at *8
¹⁰ Id.
¹¹ Id. at *10
¹² LKQ Corp., 2024 WL 2280728 at *10 (quoting In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996))
¹³ Id. at *11
¹⁴ LKQ Corp., 2024 WL 2280728 at *11 (quoting Borden, 90 F.3d at 1574)
¹⁵ LKQ Corp., 2024 WL 2280728 at *11
¹⁶ LKQ Corp., 2024 WL 2280728 at *5‑*6.
¹⁷ Id. at *5‑*7
¹⁸ Id. at *7 (citing Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997))
¹⁹ Smith v. Whitman Saddle Co., 148 U.S. 674, 681 (1893)
²⁰ LKQ Corp., 2024 WL 2280728 at *6-7
²¹ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007)
²² Id. at 421
²³ LKQ Corp., 2024 WL 2280728 at *6
²⁴ See id. at *1 (showing the patented design and primary “Lain” reference)
²⁵ Id. at *1‑*2
²⁶ Id. at *2
²⁷https://www.uspto.gov/sites/default/files/documents/updated_obviousness_determination_designs_22may2024.pdf