A Fender Sparks a Legal Debate
In a landmark decision with far-reaching implications for design patent law, the Federal Circuit Court of Appeals (CAFC or Federal Circuit) delivered a decisive ruling in the case of LKQ Corp. v. GM Global Technology Operations LLC. This case, centered around a seemingly simple vehicle fender, challenged the long-standing Rosen-Durling test for evaluating the “obviousness” of a design patent, ultimately leading to its replacement with a framework grounded in the familiar “Graham factors.”
The case began with U.S. Design Patent No. D797,625 (D’625) held by General Motors (GM) for a fender design used on their Chevrolet Equinox. LKQ Corporation, specializing in automotive parts, filed a petition challenging the patent’s validity. LKQ argued that the design was either anticipated by, or obvious in light of, prior art, including being anticipated by U.S. Design Patent D773,340 (the “Lian” design patent) and being obvious based on Lian alone or Lian as modified by a promotional brochure depicting the fender design of the 2010 Hyundai Tucson (“Tucson”).
The Rosen-Durling Test: A Longstanding Standard Faces Scrutiny
The Patent Trial and Appeal Board (PTAB), tasked with initially reviewing the case, sided with GM. They concluded that while the “Lian” design bore some resemblance to GM’s patented fender, it did not meet the threshold for anticipation. The PTAB utilized the “ordinary observer” test[1] for anticipation and pointed to key differences in the designs’ overall visual impressions, emphasizing distinctions in elements like the wheel arch shape, door cut line, protrusion, sculpting, inflection line, and crease lines.
To assess the obviousness of GM’s design, the PTAB relied on the two-part Rosen-Durling test, a cornerstone of design patent law for decades. This test, originating from the cases of In re Rosen (1982) and Durling v. Spectrum Furniture Co. (1996), had long served as the established framework for evaluating obviousness in design patent disputes.
- Part One: The “Basically the Same” Requirement: This part of the test, rooted in In re Rosen, mandates that a single prior art reference (commonly called a “Rosen reference”) be identified that is “basically the same” as the design patent in question. The analysis ends if no such reference is found.
- Part Two: The “So Related” Requirement: Only upon finding a “Rosen reference” does the court proceed to the second step established in Durling. This step allows for considering additional references that, when combined with the primary reference, might render the challenged design obvious. Crucially, these secondary references must be “so related” to the primary reference that their ornamental features would logically suggest incorporating those features into the primary reference.
Applying this test, the PTAB determined that LKQ’s Lian reference was not “basically the same” as GM’s design. This conclusion, based on perceived differences in the designs’ overall visual impressions, including features like the upper protrusion, door cut line, wheel arch shape, and crease lines, effectively halted the obviousness analysis at the first step of the Rosen-Durling test.
A Concurrence Raises Questions, Leading to an En Banc Rehearing
LKQ appealed the PTAB’s decision to the Federal Circuit. While the Federal Circuit initially upheld the PTAB’s findings on both grounds of anticipation and obviousness, Judge Stark, in his concurring opinion, expressed doubts about the Rosen-Durling test’s continued applicability in light of evolving patent law, particularly in view of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc. (2007). Judge Stark suggested that the rigid “basically the same” and “so related” requirements of the Rosen-Durling test might be at odds with the more flexible approach to obviousness advocated by the Supreme Court in KSR.
Acknowledging the significance of Judge Stark’s suggestions and signaling its readiness to revisit a fundamental legal standard, the Federal Circuit took the rare step of granting an en banc rehearing. This decision meant vacating the original Federal Circuit three-judge panel’s decision and agreeing to rehear the case with the participation of all active judges on the court.
A New Era for Design Patents: Embracing the Graham Factors
At the heart of the en banc rehearing was whether the decades-old Rosen-Durling test, with its “basically the same” and “so related” requirements, remained a suitable legal standard for assessing obviousness in design patent cases. The court ultimately decided to abandon the Rosen-Durling test. The court found its rigid requirements incompatible with the broader principles of obviousness articulated by the Supreme Court in multiple cases, notably Graham v. John Deere (1966), KSR, and even a case dating back to the late 19th century Smith v. Whitman Saddle Co. (1893).
Challenging “Basically the Same” Requirement: The En Banc Federal Circuit held that the “basically the same” requirement imposed an excessively strict limitation on the obviousness inquiry. This requirement, they argued, did not sufficiently account for the possibility that a design could be obvious even when drawn from elements found across multiple prior art references, with each being individually distinct from the patented design. The court referenced the Whitman Saddle case, where the Supreme Court found a saddle design to be obvious based on the combination of two prior art saddles, neither of which, on its own, was “basically the same” as the patented design.
Rejecting the Rigidity of “So Related” Requirement: The En Banc Federal Circuit similarly rejected the “so related” requirement, characterizing it as an overly narrow interpretation of the teaching-suggestion-motivation (TSM) test. The TSM test, already criticized for its rigidity in KSR, states that an obviousness finding requires identifying a teaching, suggestion, or motivation to combine elements from different prior art references. The court emphasized that the impetus for combining design elements isn’t always explicitly found within the references themselves. The En Banc Federal Circuit explained that designers are often motivated by factors such as market trends, consumer preferences, or established design practices in their field. Therefore, limiting the analysis to whether references are “so related” ignores these external influences on design choices.
In place of the Rosen-Durling test, the En Banc Federal Circuit decided to use the four-factor test established in Graham v. John Deere Co. for utility patents, adapting it to assess obviousness in design patent cases. These factors are:
- Scope and Content of the Prior Art: This factor involves identifying relevant prior art and understanding its teachings. A crucial aspect of this analysis is determining whether prior art references are “analogous art” – designs a skilled designer would reasonably consider when creating a new design. Whether a prior art reference is “analogous art” is a fact sensitive question that is determined on a case-by-case basis.
- Differences Between the Prior Art and the Claimed Design: This factor focuses on analyzing the visual differences between the design patent in question and the identified prior art from the perspective of “an ordinary designer in the field of the article of manufacture.”
- Level of Ordinary Skill in the Art: This factor centers on determining the knowledge and capabilities of a typical designer in the relevant field. In the context of design patents, this means considering the understanding and expertise of a designer who creates similar articles of manufacture.
- Obviousness in Light of the Graham Factors: This final step involves considering all the gathered information – the scope of prior art, the differences between the prior art and the claimed design, and the knowledge of an ordinary designer – to determine whether the claimed design would have been obvious to such a designer.
Addressing Concerns and Looking Ahead
This shift towards using the Graham factors signifies a considerable change in design patent law. The Federal Circuit’s decision aims to align the obviousness analysis for design patents more closely with the established framework for utility patents, thereby creating greater consistency and predictability within patent law with respect to determining “obviousness” under §103.
A Note of Caution: While concurring with the court’s decision to vacate and remand the PTAB’s ruling, Judge Lourie expressed reservations about entirely overturning the Rosen-Durling test. He suggested that modifying the language of the Rosen-Durling test to address concerns about its rigidity, rather than discarding it altogether, might have been a more prudent course of action. He highlighted that several organizations invested in the stability and clarity of patent law, including the American Intellectual Property Law Association and the International Trademark Association, supported retaining the Rosen-Durling framework.
The LKQ Corp. v. GM decision marks a new direction for design patent law. The Federal Circuit, by choosing to use the Graham factor framework, attempted to offer an approach that is both increasingly flexible and consistent with obviousness law as currently applied to utility patents.
The case leaves some questions unanswered, particularly how the Federal Circuit and the PTAB will apply this new framework in future cases and what this change means for the future of design patents. The interpretation of the analogous art requirement in design patent cases and how the Graham factors will be applied, given the unique aspects of design patents (for instance, the fact that design patents don’t always solve a clearly defined “problem” in the same way utility patents often do), remain areas that will likely be further defined in future litigation. Nonetheless, LKQ Corp. v. GM undoubtedly marks a turning point in patent law, shifting away from the rigidity of the Rosen-Durling era toward a more context-driven and nuanced approach to determining obviousness in design patents.
Footnote(s):
[1] The “ordinary observer” test for anticipation of a design patent states that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871).