by Elias Aidun, Associate Member, University of Cincinnati Law Review Vol. 93
I. Introduction
“To promote the progress of science and useful arts” in the United States, the founding fathers created intellectual property rights within the Constitution.[1] Intellectual property rights are granted by the government to inventors or owners in the form of patents, copyrights, or trademarks.[2] Three different types of patents exist: utility, design, and plant.[3] Utility patents are granted for inventing a new or improved and useful process, machine, article of manufacture, or composition of matter.[4] Design patents are granted for inventing a new, original, and ornamental design for an article of manufacture.[5] A plant patent is granted for inventing or discovering and asexually reproducing any distinct and new variety of plant.[6]
If a patent is granted, the patent gives the inventor the right to exclude others from making, using, offering for sale, or selling an invention or importing it into the U.S.[7] In other words, a patent does not give the right to make, use, offer for sale, sell or import the invention, but it does give the right to stop others from doing so.[8] Therefore, if an individual or entity does make, use, offer for sale, sell or import a patented item, then the patent holder may initiate legal action in the form of patent infringement.[9]
To obtain a patent, it must be non-obvious to a person having ordinary skill in the art to which the claimed invention pertains.[10] While “obviousness” can be ambiguous and subjective from varying perspectives, design patents in the United States have been consistently reviewed and evaluated under the Rosen-Durling test to determine non-obviousness for roughly the past 50 years.[11] However, in an en banc decision in LKQ Corporation v. GM Global Technology Operations, LLC, the Federal Circuit Court of Appeals overturned the Rosen-Durling test and adopted the Graham factors as the new standard.[12]
This article explores the impact that LKQ may have on the future of design patents, particularly in design patent application and litigation. Part II provides background on design patents and the Rosen-Durling test, in addition to the new standard post-LKQ for non-obviousness. Part III discusses how the new standard could make it more challenging to obtain a design patent and how existing design patents may become more vulnerable to invalidity challenges. Finally, Part IV offers a brief conclusion on how the LKQ decision will shape the future of design patents moving forward.
II. Background
When the word “patent” comes to mind, some might think of new innovative technology such as, a Virtual Reality (“VR”) headset or the latest Apple product. The majority of inventions one would commonly think of are the subject of a utility patent; which as mentioned above, cover any new or improved useful process, machine, article of manufacture, or composition of matter.[13] However, a design patent protects the artistic expression or “decorative arts” of an object.[14] Compared to a utility patent, a design patent protects the non-functional aspects of the invention.[15] Specifically, design patents are granted to new, original, and ornamental designs, as they are embodied in manufactured objects.[16] The protected design can be the physical shape and configuration of the object, or the surface pattern. However, a design patent must still be associated with a particular utilitarian object.[17]
A. Rosen-Durling Test for Design Patents
When determining obviousness under 35 U.S.C § 103, design patents have historically been assessed under the Rosen-Durling test.[18] Under the two-part standard, In re Rosen, the case in which the Rosen Durling test is derived, requires that “…there must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness.”[19] This primary reference is typically described as the Rosen reference and is the first step of the obviousness analysis.[20]
Essentially, in this first step, the standard requires finding a primary reference that is “basically the same” as the challenged design claim, when considering the visual impression of the patented design as a whole.[21] If no primary reference can be found then the analysis comes to an end, as it would be improper to invalidate a design patent on the grounds of obviousness without such primary reference.[22] However, if a primary reference can be identified, then the analysis moves on to part two.
Within part two of the analysis, Durling v. Spectrum Furniture Co. requires that once a primary reference is found, a secondary reference may be used to modify the primary reference to create a design that has the same overall visual appearance as the claimed design.[23] However, the secondary references may only be used to modify the primary reference if they are “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.”[24]
The second part of the Rosen-Durling analysis allows a court to use secondary references to modify the primary reference to create a design that has the same overall visual appearance as the claimed design.[25] The Rosen-Durling test has typically been a very high standard to meet, as the difference between “the same” and “basically the same” is very minimal. Due to the high standard of the Rosen-Durling test, design patents have typically been rather easy to obtain, compared to utility patents.[26]
B. A New Standard: the Graham Factors
To understand how the Federal Circuit Court of Appeals reached its decision in LKQ, we first must review KSR Int’l Co. v. Teleflex Inc. In KSR, the Supreme Court tried to address whether a claimed invention could be held obvious, and thus unpatentable under 35 U.S.C. § 103 in the absence of some proven teaching, suggestion, or motivation (“TSM”) by a person of ordinary skill in the art.[27] At the time of the case in 2007, the standard applied to determine obviousness for utility patents was the Graham factors analyzed through the lens of the TSM test.[28]
1. Teleflex Precedent
The Graham factors originated in 1966 when the Supreme Court set out a framework for applying the statutory language of 35 U.S.C. § 103 and determined three factors to consider: (1) the scope and content of the prior art are to be determined, (2) differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the pertinent art.[29] Additionally, secondary factors can also be considered, such as commercial success, long felt but unsolved needs, and the failure of others to achieve a solution.[30] These secondary factors might also be utilized to shed light on the circumstances surrounding the origin of the subject matter sought to be patented.[31]
However, a finding of obviousness must also be supported by the Federal Circuit’s self-created TSM standard, which requires a court to make specific findings demonstrating a teaching, suggestion, or motivation to combine prior art teachings in the particular manner claimed.[32] So, although the Graham factors offered courts a flexible and broad approach to determining obviousness under 35 U.S.C § 103, the TSM test also required the court to satisfy this rigid requirement.
In KSR, decided in 2007, the Supreme Court unanimously held that a court may find a patent invalid as obvious, absent a specific finding that some TSM existed.[33] In other words, a court does not need to inquire about whether an inventor had some teaching, suggestion, or motivation to combine elements of prior art in the same way as the challenged patent.[34] The Court explained that the proper inquiry focuses on the objective reach of the claim, not the “particular motivation nor the avowed purpose of the patentee.”[35]
The TSM test required courts to analyze the issue of obviousness narrowly and rigidly, and the “obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation.”[36] Thus, the standard for determining obviousness after KSR was a flexible and expansive consideration of the Graham factors. However, since the patent that was at issue in KSR was a utility patent, the Rosen-Durling test remained in effect for design patents.[37]
2. The LKQ Decision: A New Standard for Design Patents
In August 2020, LKQ Corporation and Keystone Automotive Industries filed a petition to institute an inter partes review of General Motors D’625 patent for a vehicle’s front fender.[38] LKQ asserted the claim that General Motors’ D’625 patent was unpatentable under 35 U.S.C. § 103 based on Patent No. D773,340 (“Lian”) alone or Lian as modified by a promotional brochure depicting the design of the front fender on the 2010 Hyundai Tucson.[39] When the United States Patent and Trademark Office (“USPTO”) Board (“Board”) applied the Rosen-Durling test to assess the obviousness of the claimed design, the Board determined the LKQ failed to identify a reference from Rosen.[40] Thus, the Board ended its obviousness analysis without further consideration.[41]
On appeal, the United States Court of Appeals for the Fourth Circuit affirmed the Board’s final decision on LKQ’s petition, but the judges were divided on whether the Supreme Court’s decision in KSR implicitly overruled the Rosen-Durling test for being too rigid of an analysis.[42] While the Fourth Circuit explained that it could not “overrule Rosen or Durling without a clear directive from the Supreme Court and it is not clear that the Supreme Court had done so,” the Fourth Circuit granted an en banc rehearing of LKQ’s argument to determine whether KSR overruled the Rosen-Durling test.[43] Upon rehearing, the Fourth Circuit held that the Rosen-Durling test was improperly rigid, similar to the TSM test and that the Rosen-Durling test did not adequately align with KSR both in terms of its framework and threshold rigidity.[44]
After overruling the Rosen-Durling test, the Fourth Circuit followed the Supreme Court’s precedent in KSR and held that invalidity based on the obviousness of a patented design is determined based on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent – a flexible and expansive application of the Graham factors.[45]
III. Discussion
The overturning of the Rosen-Durling test for design patents may present a significant shift in design patent law moving forward. Specifically, we may see an increased difficulty in obtaining design patents. Additionally, existing design patents may become more vulnerable to invalidity challenges under the new standard. However, the shift away from a well-established standard may also create some uncertainty in the near future, as patent practitioners and examiners adjust to the new framework.
A. Difficulty in Obtaining a Design Patent
The aftermath of LKQ will have an immediate effect on the design patent industry and will be most likely visible in design patent rejections. Since the standard for determining obviousness for design patents is the application of the Graham factors, courts no longer need to satisfy the first step of the Rosen-Durling test – that a primary reference be “basically the same” as the claimed design.[46] The removal of the Rosen-Durling test, specifically the primary reference requirement, will allow examiners to consider a wider range of available art when determining obviousness. Therefore, this new approach to design patents will likely result in the USPTO rejecting more design patents for obviousness, making it more difficult to obtain a design patent.
B. Invalidity Claims to Existing Design Patents
The effect of LKQ is not only limited to future and pending design patents, but also puts existing design patents at risk. As mentioned above, the new standard for design patents will allow for a broader consideration of prior art, which could be used to invalidate already-issued design patents through post-issuance review petitions. Post-issuance review petitions can be an expensive and time-consuming process, as the Board can take up to 18 months to deliver a final determination.[47] However, these challenges to invalidity may be a double-edged sword for design patent holders. From one angle, a design patent holder could attempt to invalidate other design patents asserted against them more easily. Contrarily, the challenges might make it harder for a design patent holder to assert any of their design patents against potential infringers.[48]
IV. Conclusion
With the Federal Circuit Court of Appeals overruling the Rosen-Durling test for design patents, the framework in Graham has become the standard for determining obviousness for both utility and design patents alike. With the adoption of the Graham factors, this standard allows for a broader consideration of prior art and a more adjustable analysis compared to the Rosen-Durling standard. This shift in design patent law could potentially make design patents more challenging to acquire, enforce, and defend.[49] However, as the framework in Graham advances a more comprehensive analysis of obviousness, it may eventually lead to more secure patents in the future.[50]
[1] U.S. Const. art I, § 8, cl. 8.
[2] Patents: Patent Basics, Iowa Univ. Libr. (Aug. 16, 2024), https://guides.lib.uiowa.edu/c.php?g=132153&p=862809.
[3] Patent essentials, U.S. Pat. and Trademark Office, https://www.uspto.gov/patents/basics/essentials#questions (last visited Sept. 24, 2024).
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] 35 U.S.C. § 103.
[11] Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996); In re Rosen, 673 F.2d 388 (C.C.P.A. 1982).
[12] LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024).
[13] Patent essentials, supra note 3.
[14] Avia Group Int’l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1563 (Fed. Cir. 1988).
[15] Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1312 (Fed. Cir. 2001).
[16] 35 U.S.C § 171(a).
[17] Id.
[18] LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1289 (Fed. Cir. 2024).
[19] In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982).
[20] LKQ Corp., 102 F.4th at 1289.
[21] Id.
[22] Durling v. Spectrum Furniture Co., 101 F.3d 100, 105 (Fed. Cir. 1996).
[23] Id. at 103.
[24] In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996).
[25] See In re Harvey, 12 F.3d 1061, 1063 (Fed. Cir. 1993).
[26] Mikaela Stone, Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness, King & Spalding (May 23, 2024), https://www.kslaw.com/news-and-insights/federal-circuit-overrules-rosen-durling-test-for-design-patent-obviousness.
[27] Petition for Writ of Certiorari, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (No. 04-1350), 2005 WL 835463.
[28] Id. at 406-7
[29] Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
[30] Id. at 17-18
[31] Id.
[32] Teleflex v KSR, 119 F. App’x 282, 283 (Fed. Cir. 2005).
[33] KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 419.
[34] Id.
[35] Id. at 419.
[36] Id.
[37] Id. at 405-6.
[38] LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1288 (Fed. Cir. 2024).
[39] Id.
[40] Id. at 1289.
[41] Id.
[42] Id. at 1290.
[43] Id.
[44] Id. at 1293.
[45] Id. at 1295.
[46] In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982).
[47] Patent essentials, supra note 3.
[48] John Lyon, A potentially Dramatic Shift In Design Patens – LKQ V. GM, Thomas Horstemeyer (June 11, 2024), https://thip.law/a-potential-shift-in-design-patents-lkq-v-gm/.
[49] Id.
[50] Ryan Schermerhorn & Matt Nealson, Federal Circuit Abandons Rosen-Durling Test for Design Patent Obviousness, Marshall Gerstein (July 9, 2024) https://www.ptabwatch.com/2024/07/federal-circuit-abandons-rosen-durling-test-for-design-patent-obviousness/#:~:text=The%20Rosen%2DDurling%20test%2C%20established,as%20the%20challenged%20design%20claim.
Cover Photo by Med Badr Chemmaoui on Unspash.
