On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit released its first en banc opinion in six years.  In LKQ Corp. et al. v. GM Global Technology Operations LLC, the full Court ruled on the long-standing obviousness test for invalidating a design patent in a dispute over automobile fenders.  Since In re Rosen in 1982, the Court’s test for design patent obviousness was to (1) find a single reference that is “basically the same” as the claimed design (referred to as a Rosen reference), and (2) modify the Rosen reference with other references to create the “same overall visual appearance” as the claim. 

The Court scrapped the “rigid and mandatory” framework of Rosen, finding that the Supreme Court’s KSR International Co. v. Teleflex Inc. (2007) framework requires a more flexible approach for design patent obviousness analysis.  Now, design patent obviousness is guided by the same factors outlined in the Supreme Court’s Graham v. John Deere Co. of Kansas City (1966) case: (1) the scope and content of prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the concerned art, and (4) any objective indicators of nonobviousness, such as commercial success or unexpected results.

While the Court noted that there may be some challenges in applying all aspects of this test to design patents (for example, weighing the applicability of references from another field in ascertaining the scope and content of the prior art), it reserved resolution of such issues until another day, stating that there is considerable precedent analyzing Graham and any challenges within these factors are best left to a case that more squarely presents them.