On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, (Federal Circuit) issued its landmark opinion in LKQ Corp. v. GM Global Tech (2021-2348), regarding the standard to be used for assessing the “non-obviousness” requirement for design patents. The Federal Circuit held that the existing “Rosen-Durling test” for assessing design patent non-obviousness (which had been in place for over 40 years) was too “rigid,” and in conflict with 35 U.S.C. § 103. In its place, the court reiterated that the basic 4-part framework for assessing obviousness for utility patents also applies to design patents, requiring analysis of the (i) the scope and content of the prior art, (ii) differences between the prior art and the claim at issue, (iii) the level of ordinary skill in the pertinent art, and (iv) secondary considerations of non-obviousness.

On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, (Federal Circuit ) issued its landmark opinion in LKQ Corp. v. GM Global Tech (2021-2348), regarding the standard to be used for assessing the “non-obviousness” requirement for design patents. The Federal Circuit held that the existing “Rosen-Durling test” for assessing design patent non-obviousness (which had been in place for over 40 years) was too “rigid,” and in conflict with 35 U.S.C. § 103 (the U.S. statutory provision requiring non-obviousness for both utility patents and design patents), KSR International Co. v. Teleflex Inc., 550 US 398 (2007), Graham v. John Deere Co., 383 U.S. 1 (1965) and Smith v. Whitman Saddle Co., 148 U.S. 674 (1893). In its place, the court reiterated that the basic 4-part framework from Graham for assessing obviousness for utility patents also applies to design patents, requiring analysis of the (i) the scope and content of the prior art, (ii) differences between the prior art and the claim at issue, (iii) the level of ordinary skill in the pertinent art, and (iv) secondary considerations of non-obviousness. Beyond this roadmap from Graham, the Federal Circuit offered the following details on the new framework for assessing design patent non-obviousness:

1. Primary Reference:

What’s Out: To establish design patent non-obviousness, the analysis no longer requires a starting point of a primary reference that is “basically the same” in overall appearance as the claimed design.

What’s In: The Federal Circuit retained the requirement that a design patent obviousness analysis begins with a “primary reference.” But the Federal Circuit was silent on how close the prior art reference needs to be in visual resemblance to the claimed design to be considered a “primary reference.” The court noted that the primary reference “will likely be the closest prior art, i.e. prior art design that is most visually similar to the claimed design.” (Slip Op. 23-24.) The court noted that “the more visually similar the primary reference design is to the claimed design, the better positioned the patent challenger will be to prove its § 103 case.” (Slip Op. 24.)

2. Modifications to Primary Reference with Secondary Reference(s)

What’s Out: Secondary references no longer need to be “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.” (Slip Op. 21) The author notes that the concept of combining references when assessing design validity is not permitted in many jurisdictions outside the U.S. However, in the U.S., the design and utility patent systems are closely related, where combining references (under appropriate circumstances) is permitted and is commonly done when assessing obviousness.

What’s In: Secondary references can still be combined with the primary reference to mount a challenge to the validity of a design right based on obviousness. (Slip Op. 24) Critically, the court emphasized that to make a modification based on a secondary reference “there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.” (Slip Op. 26.) (emphasis added). Other than to say that the motivation/reason need not come from the reference itself, the court was largely silent on what reasons and proof will be necessary to establish a motivation/reason to modify the primary reference. Presumably, this part of the analysis will be developed by the courts/USPTO in due time.  While it did not get into specifics, the Federal Circuit did indicate some factors to consider when determining whether a combination is appropriate including:

1. The ordinarily skilled designer’s experience and creativity,
2. What market demands and industry customs exist in the relevant field, and
3. Which ornamental features are commonplace in the relevant field.

Recognizing the high risk of hindsight reconstruction in the design context (where all lines, shapes, curves, surfaces are in the prior art), the Federal Circuit noted “it follows that the more different the overall appearances of the primary reference versus the secondary reference(s), the more work a patent challenger will likely need to do to establish a motivation to alter the primary prior art design in light of the secondary one and demonstrate obviousness without the aid of hindsight.” (Slip Op. 27.)

3. Analogous Art

The Federal Circuit made clear that both Primary and Secondary Reference(s) must be “analogous art” to the claimed design. (Slip Op. 19) (“an analogous art requirement applies to each reference.). The court noted that “the analogous art requirement reins in the scope of prior art and serves to guard against hindsight.” (Slip Op. 19) The Federal Circuit adopted the same two-part test to determine the scope of analogous art used in utility patent cases: (1) whether the art is from the same field of endeavor as the claimed invention; and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In crowded arts, this outer guardrail of analogous art requirement is not much of a safeguard as most design elements can be found within the field of endeavor. (See, e.g. GUI, furniture, footwear, etc.)  The key firewall to “mosaicking” (i.e. inappropriate mixing and matching design elements from the prior art) will be adherence to requirement that  “there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.”

4. Secondary Considerations

The Federal Circuit reconfirmed that, like in the utility patent context, secondary considerations of non-obviousness must be considered, including commercial success, industry praise and copying. (Slip Op. 27.) The en banc Federal Circuit did not decide whether other secondary factors (which seemingly have little application to design patents) apply to design patent obviousness analysis, including

1. long felt but unresolved needs
2. the failure of others

• skepticism by experts

1. teaching away by others
2. recognition of a problem

5. Concluding thoughts

The LKQ opinion marks a significant change in how non-obviousness is assessed for U.S. Design Patents and Applications. The opinion effects not only to-be-examined design patents, but also the 400,000+ extant design patents. As with any major change in law, there are countless questions abound in the aftermath. One of the initial testing grounds for this new approach to assessing obviousness will be at the USPTO as it examines design patent applications. For its part, on May 22, 2024, the USPTO issued a Memorandum entitled “Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corp. v. GM Global Technology Operations LLC.” While the USPTO should be applauded for the speed in which it issued the Memorandum, the Memorandum adds little of substance; it is largely a restatement of the LKQ opinion. Presumably, guidance will come in time.  It will be important to monitor on-going prosecution at the USPTO to see how the new law is being applied in practice. Another area to watch with interest will be the U.S. Patent Trial & Appeal Board’s review of the asserted GM design patent on remand. This will be one of the first cases where the new law is interpreted and applied in a litigation context. One particular thing to watch is how demanding the USPTO will be with respect to requiring a record-supported reason for modifying a primary reference. At this point, suffice it to say, the only thing that is certain is uncertainty. Stay tuned.