En Banc Activity / Featured / Opinions

Today the Federal Circuit issued an en banc opinion in LKQ Corporation v. GM Global Technology Operations LLC, a design patent case. In the opinion, the en banc court overruled the long-standing Rosen-Durling test used to assess the nonobviousness of design patents. The court decided to apply “the same conditions for patentability that apply to utility patents.” Notably, Judge Lourie concurred in the judgment, suggesting it was unnecessary to overrule Rosen and Durling. Here is the introduction to the majority opinion. We will post an opinion summary later this week.

LKQ Corporation v. GM Global Technology Operations LLC

The principal question that this case presents is whether Supreme Court precedent, including KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), should cause us to rethink the long-standing Rosen-Durling test used to assess nonobviousness of design patents. We answer in the affirmative and overrule the Rosen-Durling test requirements that the primary reference must be “basically the same” as the challenged design claim and that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. We adopt an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents, as well as Supreme Court precedent which suggests a more flexible approach than the Rosen-Durling test for determining nonobviousness.