Overview
In a case concerning third-party after-market replacement parts for automobiles, the Federal Circuit recently overruled a longstanding standard for combining prior art references to determine obviousness of a claimed design in a U.S. design patent. LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) (en banc).
Before this decision, determining obviousness of a claimed design included a two-step process known as the Rosen-Durling test, in which the first step was identifying a primary reference “the design characteristics of which [were] basically the same as the claimed design.” In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982). Absent such a primary “Rosen” reference, the claimed design in the design patent would be found not obvious. Once a Rosen reference was identified, the second step was combining one or more secondary references with the Rosen reference, where the Rosen and secondary references “[were] so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” In re Rosen, 673 F.2d at 391. (internal citations and quotations omitted).
The LKQ case involved an inter partes review before the Patent Trials and Appeals Board (“PTAB”) of the United States Patent and Trademark Office brought by LKQ to challenge the validity of U.S. Design Patent No. D797,625 (the “D’625 Patent”) owned by GM Global Technology Operations LLC (“GM”) and directed to a vehicle’s front fender. LKQ asserted that the design claimed in the D’625 Patent was not novel and was obvious based on U.S. Design Patent No. D773,340 (“Lian”) and a promotional brochure depicting the design of the front fender on the 2010 Hyundai Tucson (“Tucson”).
The PTAB found that LKQ failed to establish that Lian anticipated the claim of the D’625 Patent and failed to establish that the “claim would have been obvious because LKQ failed to identify a Rosen reference.” LKQ v. GM, 102 F.4th at 1288–1289. In short, the PTAB found that Lian failed to meet the criteria of a Rosen reference in that it did not possess design characteristics that created basically the same visual impression as the claimed design in the D’625 Patent. LKQ appealed to the Federal Circuit and a panel at the Federal Circuit affirmed the PTAB decision. The Federal Circuit granted rehearing en banc and the en banc court vacated the panel’s opinion on obviousness.
Taking the Supreme Court’s approach in its KSR decision, the en banc court overruled the Rosen-Durling test in favor of a more flexible approach that “provides that the same conditions for patentability that apply to utility patents apply to design patents.” LKQ v. GM, 102 F.4th at 1287. (citing KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)). In place of the Rosen-Durling test, an obviousness analysis under 35 U.S.C. 103 for a design patent would entail applying the Graham factors: scope and content of the prior art, the difference between the prior art and the claimed design, the level of ordinary skill in the pertinent art, and the obviousness or non-obviousness of the claimed design. LKQ v. GM, No. 102 F.4th at 1296–1300 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966)). The en banc court expressly left the scope of analogous art as a “fact question to be addressed on a case-by-case basis and we ‘leave it to future cases to further develop the application of this standard.’” LKQ v. GM, 102 F.4th at 1297–1298 (internal citations and quotations omitted).
In the KSR decision, the Supreme Court overruled the Federal Circuit’s earlier “rigid” obviousness test for utility patent applications, known as the teaching, suggestion, and motivation (TSM) test for combining prior art references. KSR v. Teleflex, 550 U.S. at 415. In place of the TSM test, the Supreme Court applied the Graham factors and noted that what mattered was the objective reach of a patent claim and whether it extended to what was obvious, or an obvious solution to a known problem at the time of invention encompassed by the patent claim. KSR v. Teleflex, 550 U.S. at 419–420.
In the LKQ case, both the PTAB and the Federal Circuit panel found that the primary reference and the secondary reference failed to meet the Rosen test of creating “basically the same visual impression as the claimed design” of a front fender. These references each showed a front fender design but were found to have differing design elements that created different visual impressions. The en banc court found the Rosen test leading to this result at odds with the statutory standard for obviousness, KSR and other Supreme Court cases on design patents, particularly, Smith v. Whitman Saddle Co., 148 U.S. 674, 680 (1893). In the Whitman Saddle case, the Supreme Court considered a patented design of a saddle (U.S. Patent No. 10,844) that was a combination of the front of a known “Granger” saddle and the rear of another known “Jenifer” saddle. While the Whitman case mainly concerned infringement, the en banc court inferred that neither the “Granger” saddle nor the “Jenifer” saddle would have met the Rosen-Durling test. LKQ v. GM, 102 F.4th at 1294. The court noted that the rigid application of the Rosen-Durling test, therefore, could not have been reconciled with Supreme Court precedent in the Whitman case. Id.
Remanding the case to the PTAB, the en banc court vacated the finding of non-obviousness and further noted that for claim construction, a “tribunal is not ‘obligated to issue a detailed verbal description of the design’ as ‘a design is better represented by an illustration.’” LKQ v. GM, 102 F.4th at 1301 (citing Egyptian Goddess v. Swisa, 543 F.3d at 679).
LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024) (en banc).
In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982).
KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
Smith v. Whitman Saddle Co., 148 U.S. 674, 680 (1893).
Egyptian Goddess v. Swisa, 543 F.3d at 679.
Professionals
Dexter Chang
Counsel
