En Banc Activity / Opinions

Late last month the Federal Circuit issued its opinion in LKQ Corporation v. GM Global Technology Operations LLC, a design patent case that attracted eighteen amicus briefs. In this case, the en banc court reviewed the continuing vitality of the so-called Rosen-Durling test to asses nonobviousness of design patents. In an opinion authored by Judge Stoll, the en banc court overruled the cases using that test and adopted in its place a new approach for assessing nonobviousness of design patents. Notably, Judge Lourie filed a concurring opinion. This is our opinion summary.

Judge Stoll began by highlighting the procedural and factual backround of the case:

GM Global Technology LLC (“GM”) owns U.S. Design Patent No. D797,625, which claims a design for a vehicle’s front fender. This design is used in GM’s 2018–2020 Chevrolet Equinox.

Appellants LKQ Corporation and Keystone Automotive Industries, Inc. (collectively “LKQ”) filed a petition to institute an inter partes review of GM’s D’625 patent, asserting that the challenged claim is unpatentable under 35 U.S.C. § 102 based on U.S. Design Patent No. D773,340 (“Lian”) or under 35 U.S.C. § 103 based on Lian alone or Lian as modified by a promotional brochure depicting the design of the front fender on the 2010 Hyundai Tucson (“Tucson”).

The Board held that LKQ had not established by a preponderance of evidence that Lian anticipates the claim of the D’625 patent. . . . The Board then applied the long-standing Rosen-Durling test to assess the nonobviousness of the claimed design. Under this two-part test, first, In re Rosen requires 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.’” . . . This primary reference is commonly referred to as the Rosen reference. As the Board explained, Rosen’s “basically the same” test requires consideration of the visual impression created by the patented design as a whole. . . . If no Rosen reference is found, the obviousness inquiry ends without consideration of step two. . . .

At step two, Durling requires that “[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” . . . But another threshold must be met. Specifically, any secondary references must 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.” . . .

In this case, the Board determined that LKQ failed to establish that the challenged claim would have been obvious because LKQ failed to identify a Rosen reference. . . .

LKQ appealed, and a panel of this court affirmed the Board decision. . . . The panel concluded that substantial evidence supports the Board’s finding that Lian and the claimed design “created different overall impressions” and, thus, Lian did not anticipate the D’625 patent. . . . The panel then addressed LKQ’s argument that the Supreme Court’s decision in KSR implicitly overruled the Rosen and Durling tests. The panel rejected GM’s assertion that LKQ forfeited this argument by not raising it before the Board, determining that LKQ’s petition to the Board was “sufficient to preserve the argument” and that “this challenge to Rosen and Durling is a pure question of law that undoubtedly presents a significant question of general impact, favoring the exercise of our discretion to hear and decide this issue.” . . . On the merits, the panel explained that it could not “overrule Rosen or Durling without a clear directive from the Supreme Court” and “it is not clear” that the Supreme Court had done so. . . . In applying Rosen and Durling, the majority affirmed the Board’s nonobviousness determination, concluding that substantial evidence supports the Board’s findings that “LKQ failed to identify ‘the correct visual impression created by the patented design as a whole,’” and that “LKQ failed to show that Lian creates ‘basically the same’ visual impression as the claimed design.” . . .

This court granted rehearing en banc and vacated the panel opinion. . . .

Judge Stoll began her opinion for the court by examining the relevant statutory language concerning nonobviousness and interpretations of that statute. She highlighted that “[t]he ultimate question is whether differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the pertinent art at the time of the invention.” She then went on to explain the “teaching, suggestion, or motivation” test, under which “a patent claim was only proved obvious if ‘some motivation or suggestion to combine the prior art teachings’ existed in ‘the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.'”

Judge Stoll acknowledged that the “Supreme Court rejected” the Federal Circuit’s “rigid application of the TSM test” in the context of ultility patents. The Supreme Court, by contrast, “set forth an expansive and flexible approach,” she explained.

Judge Stoll then went on to explain that the Rosen-Durling “test for design patent obviousness, in its present form, does not adequately align with KSR, Whitman Saddle, and other precedent, both in terms of its framework and threshold rigidity.” Specifically, she explained, “the Rosen-Durling test requirements—that (1) the primary reference be ‘basically the same’ as the challenged design claim; and (2) any secondary references be ‘so related’ to the primary reference that features in one would suggest application of those features to the other—are improperly rigid.”

With regard to Rosen‘s “basically the same” requirement, “in which an obviousness analysis fails absent a prior art design that is ‘basically the same’ as the claimed design,” Judge Stoll explained that “it is inconsistent with the Supreme Court’s general guidance in KSR.” Judge Stoll noted the court reached the same conclusion for step two of the test, under which “a fact finder may consider ornamental features missing in a primary reference but shown in secondary reference(s) only when the secondary reference(s) 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.’”

Judge Stoll then moved on to considering “what the framework for evaluating obviousness of design patent claims should be.” The en banc court came to the conclusion that “[i]nvalidity based on obviousness of a patented design is determined [based] on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent under § 103, that is, on application of the Graham factors.”

Judge Stoll went on to explain each Graham factor. “Applying Graham factor one,” for example, she said “the fact finder should consider the ‘scope and content of the prior art’ within the knowledge of an ordinary designer in the field of the design.” As for the second factor, it requires “determining the differences between the prior art designs and the design claim at issue.” regarding the third factor, Judge Stoll noted “‘the level of ordinary skill in the pertinent art [must be] resolved.’”

Judge Stoll then moved on to the fourth factor, the analysis of nonobviousness. She wrote that the court “previously described this inquiry as whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design ‘to create the same overall visual appearance as the claimed design.'” Judge Stoll explained that, when a primary reference alone does not render a design obvious, secondary references can be considered, and that “[t]he primary and secondary references need not be ‘so related’ such that features in one would suggest application of those features in the other but they must both be analogous art to the patented design.”

Judge Stoll then addressed concerns voiced in many of the amicus briefs over possible uncertainty this approach may cause. She explained that the court did not agree. As for why, the noted how the “Graham four-part obviousness test for utility patents has existed for a very long time and there is considerable precedent from which the PTO and the courts can draw when assessing obviousness in the design patent context.” In short, she emphasized, “[t]his test has proven workable for utility patents and we see no reason why it would not be similarly workable for design patents.”

The en banc court ultimately vacated and remanded the Patent Trail and Appeal Board’s determination of nonobviousness with instructions to apply “the framework for evaluating obviousness of design patent claims set forth in this opinion.” Before remanded, however, the court addressed the Patent Trial and Appeal Board’s alternative ground for finding nonobviousness in this case due to problems with LKQ’s claim construction. In this regard, the Federal Circuit reminded the Board that the Federal Circuit has “repeatedly held that tribunals ‘should not treat the process of claim construction [in design patent cases] as requiring a detailed verbal description of the claimed design, as would typically be true in the case of utility patents.’” The Board, the court explained, erred by rejecting LKQ’s asserted obviousness grounds on that basis.

As a result of the en banc court’s analysis, it reinstated “the portion of the panel opinion affirming the Board’s finding of no anticipation” but, as noted, vacated the Board’s nonobvious determination and remanded the case for further proceedings.

As mentioned, Judge Lourie filed a concurring opinion. He explaiend he concurred “in the court’s decision to vacate and remand the Board’s decision for it to reevaluate the validity of the claimed design in light of the majority opinion.” He wrote separately, however, because he did not think that the court needed to overrule In re Rosen. According to Judge Lourie, all the court needed to do in this case “was to make the Rosen and Durling precedents less rigid.” He indicated that simply replacing a few key words in the court’s analysis such as “must” and “only” with less rigid words such as “generally,” “usually,” or “typically” would have been enough to remedy the problem.