En Banc Activity
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Here is an update on recent en banc activity at the Federal Circuit. Last week, the court granted en banc rehearing in a patent case addressing the applicable test for non-obviousness of designs under design patent law. The court also filed an order holding another related patent case in abeyance pending the en banc review of the granted case. Here are the details.

En Banc Cases

Grant of Rehearing

Last week, the court granted rehearing in a patent case, LKQ Corporation v. GM Global Technology Operations LLC. The court requested additional briefing related to the following questions:

  1. “Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)?”
  2. “Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and suggest the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR’s statements faulting ‘a rigid rule that limits the obviousness inquiry,’ 550 U.S. at 419, and adopting ‘an expansive and flexible approach,’ id. at 415, should cause us to eliminate or modify: (a) Durling’s requirement that ‘[b]efore one can begin to combine prior art designs . . . one must find a single reference, “a something in existence, the design characteristics of which are basically the same as the claimed design,”‘ 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling’s requirement that secondary references ‘may only be used to modify the primary reference if they are “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,”‘ id. at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).”
  3. “If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?”
  4. “Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.”
  5. “Given the length of time in which the Rosen-Durling test has been applied, would eliminating or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?”
  6. “To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?”

For more information, see our breaking news post.

In another related case between the same parties, the Federal Circuit ordered the case to be held in abeyance pending the en banc review in this case.