Federal Circuit Abandons Decades-Old Obviousness Test For Design Patents

In its first en banc decision in six years, the Federal Circuit in LKQ Corp. v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024) overruled the prevailing obviousness test for design patents; abandoning the decades-old standard known as the Rosen-Durling test, and embracing a less rigid approach to assessing obviousness for design patents.  As explained below, the decision creates uncertainty as to how the obviousness of design patents should be assessed in the future.  

Under the Rosen-Durling test, the obviousness of a claimed design was assessed using a two-step analysis.  First, a single primary prior art reference needed to be identified that had “basically the same” design characteristics as the claimed design.  Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996).  Second, the fact finder determined whether it would have been obvious for a designer to arrive at the claimed design by modifying the primary reference using secondary references “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.”  Id. 

Overruling the Rosen-During test, the Federal Circuit found that the test was too rigid as applied, rendering it inconsistent with Supreme Court precedent that had rejected such rigid tests in favor of more flexible approaches.  See generally, KSR Int’l Co. v. Teleflex Inc. 550 U.S. 398 (2007).  As examples of the test’s rigidity, the Federal Circuit cited the need under step one for the primary reference to be “basically the same” as the challenged design, and the requirement under step two that secondary references be “so related” to the primary reference that a designer would be motivated to apply the features of one to the other. 

Rather than modify these rigid aspects of the Rosen-Durling test to increase flexibility, the Federal Circuit abandoned it outright, and directed practitioners to instead rely upon the obviousness test used for utility patents, along with its associated body of caselaw.  Now, assessing the obviousness of design patents will include determining: (1) the scope and content of the prior art; (2) differences between the prior art designs and the claimed design at issue; (3) the level of ordinary skill in the pertinent art; and (4) whether any secondary considerations of non-obviousness apply.  No longer restricted to references that are “basically the same” as the challenged design or “so related” to the primary reference, practitioners can now rely upon any prior art reference from the same field of endeavor or analogous art as the claimed design.  Further, consistent with KSR, the motivation to modify the primary reference with features of the secondary references does not need to come from the references themselves, so long as there is still some record-supported reason for the modifications. 

Design patents are, of course, distinct from utility patents, with different considerations involved in determining obviousness between the two.  For example, assessing the obviousness of design patents involves considering the overall appearance, visual impressions, artistry, and style of ornamental subject matter, while assessing the obviousness of a utility patent focuses on unexpected properties, the problem being solved, general utility, and function.  Although the Federal Circuit’s decision acknowledges these differences, the Court’s opinion does not dwell on them or discuss potential problems that may arise from subjecting design patents to a test previously developed and used exclusively in the realm of utility patents.  Instead, the Court has left such questions for future cases to resolve, conceding that practitioners may have to deal with at least a brief period of uncertainty in the interim. 

In the wake of the Federal Circuit’s decision, the USPTO issued updated guidance and examination instructions for making a determination of obviousness in designs, but the updated guidance did not offer much substance beyond what was already included in the Federal Circuit’s order.  With many lingering questions and much uncertainty surrounding how the USPTO or the district courts will apply the Federal Circuit’s ruling in LKQ Corp. v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024), parties would be advised to proceed with caution and engage attorneys who are knowledgeable and experienced in design patents, as future applicants, litigants, examiners, and the courts all attempt to navigate these new waters.   

Crowell’s Patents Group includes attorneys who specialize in design patent protection and enforcement, and who will continue to monitor developments in this area and advise clients on the best practices for their design patent programs in this changing landscape.