In a recent landmark decision, the Court of Appeals for the Federal Circuit delivered a significant blow to the Rosen-Durling test, a long-standing method used to determine the obviousness of claimed designs in design patent applications and invalidity proceedings. The ruling in the case of LKQ Corp. v. GM Global Technology Operations LLC marks a seismic shift in the approach to evaluating the obviousness of design patents.

What is patent obviousness?

Under U.S. patent law, two (of many) ways to invalidate a patent include “anticipation” and “obviousness.” The rule of anticipation is governed by 35 U.S.C. § 102, which basically states that you can’t get a patent if someone else disclosed the invention before you did (unless you’re the inventor and you filed your invention within a year from the date of your disclosure). There are other exceptions, but that’s the core of the rule. A so called “102 reference” must have come before the effective filing date of your invention and it must satisfy every single element of a patent claim to invalidate it. 

In contrast to section 102, 35 U.S.C. § 103 will prevent you from getting a patent if your invention was merely “obvious” to “a person having ordinary skill in the art to which the claimed invention pertains.” Instead of meeting every single element like a 102 reference, a section 103 reference does not need to hit every element. To apply section 103, courts have developed various tests.

Abandoning the Rosen-Durling Test

For years, the Rosen-Durling test was the standard for assessing the obviousness of design patents. The old Rosen-Durling test required: (1) a primary reference that is “basically the same” as the challenged design; and (2) one-or-more “secondary references” that are “so related to the primary reference that features in one would suggest application of those features to the other.” In other words, this now-abolished test required the presence of an earlier design with a similar visual impression and an obvious modification process to arrive at the claimed design.

However, the Court of Appeals for the Federal Circuit recognized the limitations of this test and decided to abandon it in favor of a more flexible approach. Specifically, the court in LKQ held that Rosen-During was “too rigid” in light of Graham v. John DeereKSR v. Teleflex, and other Supreme Court precedent.

The court’s decision to move away from the Rosen-Durling test was heavily influenced by the test for utilitypatent obviousness. As outlined in the Supreme Court’s ruling in KSR v. Teleflex, the obviousness test for utility patents follows the so-called “Graham factors,” including:

“the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”

(quoting Graham v. John Deere Co. of Kansas City383 U. S. 1, 17-18 (1966). Writing en banc, the Federal Circuit aligned the obviousness standard for design patents with the approach used for utility patents.

A More Flexible Approach

The abandonment of the Rosen-Durling test reflects a paradigm shift in the interpretation of design patents. The court’s decision acknowledges the need for a more flexible and adaptable approach when assessing the obviousness of design patents. By aligning the standard for design patents with the approach used for utility patents, the court aims to promote fairness and consistency in patent law.

The new standard for obviousness introduces greater flexibility, allowing for a more comprehensive analysis of the visual impression and overall impact of a claimed design. This approach addresses the limitations of the Rosen-Durling test, which was criticized for its rigidity.

The Impact on Litigating and Filing Design Patent Cases

The Federal Circuit’s ruling has far-reaching implications for design patent cases, affecting both patent holders and challengers seeking to establish obviousness. Overall, this presents more opportunities for arguments on both sides because there is no longer a requirement to find a so-called “primary reference” or “secondary reference” to invalidate a patent on the basis of obviousness. Design patent applicants can expect a more flexible landscape, providing increased opportunities to protect their unique designs by arguing away different references on multiple bases. On the other hand, parties seeking to invalidate design patents will have a wider pool of references from which they can choose.

With the adoption of the Graham factors for assessing obviousness, the LKQ court emphasized the importance of considering a wide range of factors when determining the validity of a design patent. This comprehensive evaluation takes into account not only the visual similarity between the claimed design and the allegedly infringing design but also relevant industry knowledge, market success, and other “secondary considerations” as noted above. See LKQ, Slip. Op. 11.

Call an Experienced Patent Attorney Today

Patent law can change overnight. Given the complexity of design patents and the recent shift in the obviousness standard, it is crucial to seek professional legal assistance when dealing with design patent matters. Working with experienced intellectual property attorneys can ensure that your designs are adequately protected and help you navigate the nuances of the new standard.

The attorneys at TBillick Law specialize in technology and entertainment contracts, trademark prosecution, copyright protection, patent prosecution, and intellectual property dispute resolution. Their team of knowledgeable and experienced professionals can guide you through the complex landscape of design patents. Their attorneys are fully equipped to provide the guidance you need in protecting and challenging design patents nationwide.

For further assistance or to discuss your patent needs, contact TBillick Law at 206-494-0020.