Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

by Dennis Crouch
In a highly anticipated en banc decision, the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. LKQ Corp. v. GM Global Tech. Operations LLC , No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). The court held that the two-part test’s requirements that 1) the primary reference must be “basically the same” as the claimed design, and 2) any secondary references must be “so related” to the primary reference that features from one would suggest application to the other, “impose[] limitations absent from § 103’s broad and flexible standard” and are “inconsistent with Supreme Court precedent” of both KSR (2007) and Whitman Saddle (1893). Rejecting the argument that KSR did not implicate design patent obviousness, the court reasoned that 35 U.S.C. § 103 “applies to all types of patents” and the text does not “differentiate” between design and utility patents.  Therefore, the same obviousness principles should govern.  This decision will generally make design patents harder to obtain and easier to invalidate.  However, design patents will likely continue to play an important role in protecting product design.

LKQ Decision .

In place of Rosen-Durling , the court adopted the analytical framework for design patent obviousness already outlined for utility patents by Graham v. John Deere Co. , 383 U.S. 1 (1966) and supplemented in KSR .   Judge Lourie’s additional views acknowledged that design patents obviousness involves distinct considerations (compared with utility patents), including the overall appearance, visual impressions, artistry, and style of ornamental subject matter.  It remains to be seen whether those traditional design patent considerations will continue.
As a reinterpretation of the law, the case will have immediate effect — applying to all pending design patent applications as well as those already issued.

Key Analogous Art Requirement
A key limiting feature of the obviousness analysis is that the doctrine only considers “analogous” prior art.  In utility patents, the test for analogous arts has two prongs, with the reference qualifying as prior art if either prong is met:

Whether the prior art is from the same field of endeavor as the claimed invention, regardless of the problem addressed by the reference.
If the reference is not within the field of the inventor’s endeavor, whether the reference is still reasonably pertinent to the particular problem with which the inventor is involved.

The general rational for limiting prior art here is that a person of ordinary skill would only look to certain areas and not consider every teaching in every art — and that allowing a broader lookback would too easily open the door to hindsight bias.  These same hindsight bias concerns exist for design patents.  With utility patents, it generally takes some amount of engineering to combine together two disparate teachings, but for designs it is often a very simple endeavor to combine portions of two designs.
In this its en banc decision, the majority held that for design patents, the analogous art certainly includes prong 1 – “art from the same field of endeavor as the article of manufacture of the claimed design.”  However, the majority declined to fully delineate how problem-focused prong 2 translates to designs, leaving that for future cases.  While utility patents can generally be seen as solving a problem, design patents often do not address a “particular problem” in the same way. Further, unlike utility patents, design patents do not have written claims or descriptions that clearly define the problem being addressed. As the court noted, “a design patent itself does not clearly or reliably indicate ‘the particular problem with which the inventor is involved.'” Without this clear framing of the problem, it is more difficult to assess whether a prior art reference is “reasonably pertinent” to that unstated problem.  In the briefing and oral arguments, there were even further arguments about whether ornamental designs for articles of manufacture could even be viewed as solving a “problem” at all – certainly not in a way that is directly translatable from utility invention law.   But, by declining to set forth precise contours for applying the “reasonably pertinent” prong to designs, the court left room for future cases to further develop the analogous art test as it relates to the unique nature of design patents on a “case-by-case basis.
Identifying a Primary Reference
While rejecting Rosen ‘s “basically the same” test for the primary reference, the decision still indicated that the obviousness analysis will ordinarily begin with a primary reference that is “the closest prior art, i.e., the prior art design that is most visually similar to the claimed design.” In re Jennings , 182 F.2d 207 (CCPA 1950).  The result then is that we have a shift, albeit controlled, in the obviousness inquiry to a more holistic assessment based on the perspective of the ordinary designer, without requiring an extremely high threshold of similarity between the primary reference and the claimed design. Secondary references need not be “so related” to the primary reference, but must still be analogous art.  In addition, there must be some reason for an ordinary designer to combine the references to create “the same overall visual appearance as the claimed design.” Of course, as with utility patents common sense can serve as the reasons.
Whitman Saddle and Flexibility
The court found support for its new fairly flexible approach in the Supreme Court’s 19th Century design patent obviousness analysis in Whitman Saddle . There, the Court held it was obvious to combine design aspects of two known saddle references to arrive at the claimed saddle design. Importantly, the Whitman Saddle Court did not require either prior art saddle to be “basically the same” as the claimed design, nor did it ask if they were “so related” that features from one suggested incorporation into the other. Rather, the Supreme Court focused on whether an ordinary artisan—a “saddler” or skilled workman in that field—would have combined the references based on the “customary” industry practice.
Rejecting Bright-Line Rules
More broadly, the majority opinion reflects the Supreme Court’s oft-stated aversion in KSR   to bright-line rules that constrain the obviousness analysis. “Rigid preventative rules that deny factfinders recourse to common sense” when assessing obviousness are improper under § 103.  The court explicitly rejected the government’s argument that eliminating Rosen-Durling would create a “rudderless free-for-all” or undue “confusion.” And here, the continued requirement of a primary reference will certainly help stay the course.
Concurrence Favoring Modification over Overruling
In a concurring opinion, Judge Lourie agreed that the Board’s decision should be vacated, but wrote separately to disagree with overruling Rosen and Durling outright. While acknowledging that the “must” and “only” language in those cases could be seen as overly rigid post- KSR , Judge Lourie advocated simply modifying the Rosen-Durling framework by replacing rigid terms like “must” with more flexible ones like “generally” or “typically.”  Judge Lourie emphasized that Rosen and Durling originated from highly experienced judges well-versed in patent law obviousness principles. He argued the majority went too far in decisively overruling these “basically correct” precedents when a lighter touch of modification would have sufficed.
Secondary Considerations Unaffected
The court did not disturb existing precedent on consideration of objective indicia of non-obviousness, like commercial success and copying, in the design patent context.  Commercial success, industry praise, and copying may demonstrate non-obviousness, but the continued relevance of factors like long-felt need was left for future cases. Similar to Prong 2 of the analogous arts test, the majority wrote that “It is unclear whether certain other factors such as long felt but unsolved needs and failure of others apply in the design patent context.”
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In this case, LKQ Corporation and Keystone Automotive Industries, Inc. (collectively “LKQ”) filed a petition for inter partes review (IPR) challenging the validity of GM Global Technology Operations LLC’s (“GM”) U.S. Design Patent No. D797,625, which claims a design for a vehicle front fender used in the 2018-2020 Chevrolet Equinox. LKQ wanted to make replacement parts without obtaining a patent license and argued the claimed design was unpatentable as anticipated under 35 U.S.C. § 102 based on the Lian reference alone or as obvious under 35 U.S.C. § 103 based on Lian alone or Lian in view of a Hyundai Tucson reference.
The PTAB sided with the patentee and held that LKQ failed to establish by a preponderance of the evidence that Lian anticipated the claimed design under § 102. On obviousness, the PTAB applied the long-standing Rosen-Durling test. Under step one, the PTAB found Lian did not create “basically the same” visual impression as the claimed design, ending the analysis without reaching step two. LKQ appealed to the Federal Circuit, arguing that KSR overruled or abrogated the Rosen-Durling test. The original Federal Circuit panel affirmed the PTAB decision, holding it was bound by Rosen-Durling absent clear direction from the Supreme Court. The panel also affirmed the PTAB’s anticipation finding. The full Federal Circuit then granted en banc rehearing.  On rehearing, the en banc Federal Circuit has affirmed the PTAB’s anticipation ruling but vacated and remanded back to the PTAB for a new obviousness determination.