Recent Change in the Law of Design Patent Obviousness

In the Federal Circuit’s noteworthy 2024 en banc patent decision (LKQ Corporation v. GM Global Technology Operations LLC, Appeal No. 2021-2348), the Court boldly ditched the decades-old analysis for assessing the obviousness of design patents under § 103. On appeal to the Federal Circuit, LKQ maintained that the Supreme Court’s long-standing test for utility patent obviousness under KSR International Co. v. Teleflex Inc., should mutually apply to design patents. Previously, the prevailing test for design patent obviousness, coined “the Rosen-Durling test,” embodied a two-prong analysis which first required the identification of a single primary reference embodying a design that is “basically the same” as the challenged patent’s design, and second considered supplemental references which were “so related” to the primary reference such that the appearance of certain ornamental design features in one reference would suggest the application of those features to another.

The en banc Federal Circuit agreed with LKQ and decisively overhauled the rigid Rosen-Durling framework, endeavoring to establish a more flexible approach reflective of the Supreme Court’s obviousness analysis for utility patents established in KSR. That is, the Federal Circuit confirmed that a design patent’s obviousness would be determined by applying four factors and requiring the court to: (1) consider the scope and content of analogous prior art; (2) determine the differences between the claimed design and the prior art; (3) ascertain the level of an ordinary designer in the pertinent field to which the design pertains; and (4) determine whether there would be a motivation to modify the prior art design to create a design with the same overall visual appearance as that of the claimed design. Consistent with the fourth factor, the court must contemplate the holistic, visual impression of the claimed design in its entirety, rather than individual design features, by considering secondary considerations. The Federal Circuit further clarified that the secondary indicia of nonobviousness evaluated in the utility patent context (e.g., commercial success, copying by competitors, industry praise, etc.) remain applicable to the analysis of design patents.

Despite its landmark ruling, the Federal Circuit left many questions to be answered post-LKQ. Namely, because the Court did not actually apply the utility patent obviousness model to GM’s automobile front fender design patent at issue in the case, several ambiguities remained to be fleshed out. Specifically, patent practitioners and companies in the automotive industry, in particular, faced uncertainty regarding how to ascertain the analogous art of a claimed design and whether the courts would evaluate other secondary considerations of nonobviousness other than those relevant to utility patents.

Immediate Impact on New Cases and Design Patent Prosecution

The revamped design patent obviousness analysis post-LKQ is likely to have an imminent impact on design patent prosecution as demonstrated by an increase in rejections of design patent applications under § 103. It appears that the threshold requirement for patentability has been elevated thereby making design patents more difficult to obtain. Of particular importance is the USPTO’s updated guidance and examination instructions, issued on May 22, 2024, which explains what is needed to establish a prima facie case of obviousness, cautioning examiners that the “more different the overall appearances of the primary reference versus the secondary reference(s), the more difficult it will be to establish a motivation to alter the prior art design in light of the secondary one.”

Considering the raised bar for obtaining a design patent, it is likewise expected that a large number of already-issued patents will become invalidated under the new, expansive, and flexible approach to assessing design patent obviousness. To that end, the rate of post-issuance invalidity challenges of design patents through a USPTO proceeding or in district court litigation is projected to increase as a direct consequence of the recent LKQ decision.

In light of the prevailing uncertainty and practical quandaries underlying the current landscape of design patent law, it certainly won’t be long until the Federal Circuit has an opportunity to revisit this topic and apply the fact-intensive, KSR analysis in the context of design patents for itself.