Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness – USPTO Follows Quickly with Guidance

June 3, 2024

Reading Time : 3 min

By: Megan R. Mahoney, Michael P. Kahn, Daniel L. Moffett, Kayla Flanders (Law Clerk)

In a highly anticipated decision, the en banc Federal Circuit overruled the longstanding Rosen-Durling test for assessing obviousness of design patents.  The challenged framework, derived from two cases, In re Rosen, 673 F.2d 388 (CCPA 1982) and Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir 1996), required (1) a primary reference to be “basically the same” as the challenged design, and (2) any secondary reference to be “so related” to the primary reference that features in one would suggest application of those features to the other.  That test was deemed “improperly rigid” and was overruled in favor of KSR’s application of the more flexible Graham factors to utility patents.

The dispute arose when LKQ Corporation and Keystone Automotive Industries, Inc. (“LKQ”) filed a petition for inter partes review of GM Global Technology LLC’s (“GM”) design patent for a vehicle’s front fender.  LKQ argued that GM’s design is unpatentable as obvious under 35 U.S.C. § 103.  The Patent Trial and Appeal Board applied the Rosen-Durling test and determined that LKQ failed to identify a reference that created “basically the same” visual impression as the patented design.  On appeal, a three-judge panel of the Federal Circuit affirmed the Board’s decision and declined to overrule Rosen or Durling without a “clear directive from the Supreme Court.”

In support of its petition for en banc review, LKQ argued that the Rosen-Durling test adopts a strict rule that is inconsistent with the Supreme Court’s decision in KSR.  LKQ further argued that the test should be replaced by the factual Graham inquiry.  GM argued that LKQ had forfeited this argument by not raising it before the Board and, even if it were not forfeited, KSR does not overrule Rosen or Durling.

The court did not find forfeiture and determined that the petition was sufficient to preserve LKQ’s argument, which was a pure question of law presenting a “question of significant impact.”  On the merits, the en banc court held that 35 U.S.C. § 103 obviousness conditions apply to design and utility patents alike and, on that basis, adopted the Graham approach.

Under the Graham analysis, the fact finder considers the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of design.  While there is no “basically the same” requirement to qualify as prior art, an analogous art requirement applies to each reference.  The court maintained that the continued requirement of a primary reference will help prevent undue confusion while avoiding “rigid preventative rules that deny factfinders recourse to common sense.”

For utility patents, a two-prong analysis is applied when considering whether a reference qualifies as analogous art.  The Federal Circuit declined to “delineate the full and precise contours” of the analogous art requirement when applied to design patents.  The court held the “same field of endeavor” first prong can be applied to design patents but left open the question as to whether the “pertinent to the particular problem” second prong applies to design patents.  The majority recommended a case-by-case approach.

The day after the en banc decision, on May 22, 2024, the United States Patent and Trademark Office issued a memorandum “to provide updated guidance and examination instructions, effective immediately, on evaluating obviousness in design patent applications and design patents.”  Director Vidal explained that USPTO personnel “must apply a flexible approach to obviousness similar to that applied in utility applications.”  This approach involves factual inquiries into (1) the scope and content of the prior art, (2) the differences between the prior art and the design as claimed at issue, (3) the level of ordinary skill in the art, and (4) secondary considerations. Director Vidal provided detailed instructions concerning each factual inquiry and promised to issue further guidance, examples, and training consistent with LKQ.

Practice Tip: Upending over 40 years of precedent, this decision is expected to have a significant impact on the landscape of obtaining and enforcing design patents.  Design patent owners and challengers alike should follow post-LKQ decisions and the relevant USPTO guidance closely to understand how this more-flexible obviousness analysis will impact design patent invalidity and patentability determinations moving forward.

LKQ Corp., Keystone Auto. Indus., Inc., v. GM Global Tech. Operations LLC, Case No. 2021-2348 (Fed. Cir. 2024) (Stoll, J.).

Share This Insight

Previous Entries

IP Newsflash

November 1, 2024

The Federal Circuit’s decision in Kyocera Senco Industrial Tools Inc. v. International Trade Commission articulated a bright-line test for patent expert admissibility: to testify from the perspective of a “person of ordinary skill in the art” (POSITA), the expert must at least meet the definition of a POSITA for the patents-in-suit. Absent that level of skill, Kyocera holds that the witness’s testimony is not sufficiently reliable or relevant enough to be relied on by a fact-finder.

...

Read More

IP Newsflash

October 29, 2024

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent owner had not taken inconsistent positions but warned patent owner that it had an ongoing duty to produce any information inconsistent with arguments made during the present IPR, even if that information related to arguments patent owner had dropped at the ITC.

...

Read More

IP Newsflash

October 11, 2024

The Central District of California ruled that the heightened pleading standard of Federal Rule of Civil Procedure 9(b) applies to all three prongs of a false patent marking claim, including the third prong, competitive injury. In doing so, took a clear stand on an issue with a nationwide split among district courts.

...

Read More

IP Newsflash

October 3, 2024

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously declared unpatentable in inter partes review (IPR) proceedings. However, the court clarified that the regulation applies only to new claims or amended claims, not previously issued claims.

...

Read More

IP Newsflash

September 27, 2024

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine on infringement, among other issues. This new bright-line test and the underlying rationale, however, raised several new questions regarding expert admissibility. SeeFederal Circuit: Narrow Definition of Skill in the Art Dooms Expert’s Testimony” and “Grappling With A Bright-Line Patent Expert Admissibility Test.” The Federal Circuit recently addressed one of those questions, namely whether an expert must have acquired the requisite level of skill as of the time of the invention or whether it is sufficient for an expert to acquire that knowledge at a later date.

...

Read More

IP Newsflash

September 23, 2024

The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings. The PTAB cancelled all of patentee’s claims, including those not unpatentable on the merits, after finding that patentee deliberately withheld data relevant to the patentability of the claims at issue. In her review, the Director addressed which regulations are implicated upon a party’s misconduct during AIA proceedings and addressed whether entry of judgment in the trial was an appropriate sanction.

...

Read More

IP Newsflash

September 18, 2024

The Western District of Texas granted a motion to stay a patent infringement lawsuit pending inter partes review not only because doing so would simplify the issues in the still-early litigation and reduce the burden on the parties, but also because the non-moving party failed to diligently file its lawsuit despite a protracted negotiations period.

...

Read More

IP Newsflash

September 16, 2024

The Federal Circuit dismissed an appeal from an inter partes review (“IPR”) final written decision for lack of standing where it found the appellant failed to provide evidence sufficient to show it suffered an injury in fact.

...

Read More

© 2024 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.