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Not So Obvious

on Tuesday, 25 June 2024 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

Following its first patent related en banc decision since 2018, the Federal Circuit has overruled the longstanding obviousness standard used in assessing design patents, the Rosen-Durling test. At issue in the en banc hearing, appellants LKQ Corporation and Keystone Automotive Industries, Inc. (collectively “LKQ”) filed a petition asserting that U.S. Design Patent No. D797,625 owned by GM Global Technology LLC (“GM”) is unpatentable as obvious under 35 U.S.C. § 103. LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1287 (Fed. Cir. 2024). § 103 is as follows:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. See 35 U.S.C. § 103 (emphasis added).

For around 30 years, courts utilized the Rosen-Durling test to apply the above statutory language. Resulting in an assessment that requires that (1) the primary reference must be “basically the same” as the challenged design claim; and (2) that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. LKQ Corp., 102 F.4th at 1287. Ultimately, the Federal Circuit determined that the Rosen-Durling test was too rigid to capture the expansive and flexible approach for assessing obviousness set forth by § 103. Id at 1294.

After overruling the longstanding precedents set by the courts in Rosen (In re Rosen, 673 F.2d 388 (C.C.P.A. 1982)) and Durling (Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996)), the Federal Circuit had to replace this gap and implement a new framework. In Rosen-Durling’s place, the Court held that “[i]nvalidity based on 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 under § 103, that is, on application of the Graham factors.” Id. at 1295 citing Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997). The Graham factors address the following:

  1. Scope and content of the prior art;
  2. Differences between the prior art designs and the design claim at issue;
  3. The level of ordinary skill in the pertinent art; and
  4. Secondary considerations of as indicia of obviousness or nonobviousness.

Id. at 1295 – 1300.

With the Graham factors now in play for design patents, the Court remanded for further proceedings regarding the obviousness determination. Regardless of whether the Court finds for LKQ or GM, the opinion set forth will likely have a substantial impact on on-going design patent evaluations and applications filed in the future. With the Graham test taking the place of the Rosen-Durling test, the likely outcome will be that we see an uptick in obviousness rejections for design patent applications, but we will continue to monitor and provide updates on any significant developments.

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