By Ashley Nicholls
Sitting en banc for the first time in a patent case since 2018, on May 21, 2024, the Federal Circuit overruled the longstanding Rosen-Durling test for assessing obviousness of design patents and adopted a new test in line with the obviousness analysis conducted for utility patents. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc).
Under the previous two-part Rosen-Durling test, a design patent application could be rejected by the Patent Office or a design patent could be invalidated by a court only when: 1) the primary reference (older design) was “basically the same” as the claimed design, and 2) any secondary references were “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.” In LKQ Corp v. GM Global Tech., LKQ Corp., a maker of aftermarket car-parts, argued that this test set an almost impossibly high bar to prove obviousness in design patents, and allowed automakers to patent and charge above-market prices for car parts, which contained only incremental, non-innovative design changes over previous iterations of the parts.
The Federal Circuit agreed, concluding that the Rosen-Durling test was no longer valid in light of a 2007 US Supreme Court decision that lowered the bar for invalidating utility patents based on obviousness. In its decision, the Federal Circuit explained that “[w]e adopt an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents, as well as Supreme Court precedent which suggests a more flexible approach than the Rosen-Durling test for determining obviousness.” In LKQ Corp v. GM Global Tech., slip op. at 5.
In this approach, the Federal Circuit further explained that a design analysis “should consider the ‘scope and content of the prior art’ within the knowledge of an ordinary designer in the field of the design.” Id. at slip op. at 19. Accordingly, under the newly adopted test, to determine what types of older designs can be used to reject or invalidate a new design, “analogous art” should be looked at, which “will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture.” Id. at slip op. at 24.
With the lowering of the standard for establishing obviousness, it is expected that the Federal Circuit’s decision will generally make design patents harder to obtain and easier to invalidate.
