June 2024 Newsletter

A New (?) Test for Obviousness of Designs

By Emily M. Chilson

The United States Court of Appeals for the Federal Circuit recently overruled a long-standing test for obviousness of design patents, contrary to the outcome urged by several third-party IP-related organizations of which both Andrus attorneys and our clients are active members, including the American Intellectual Property Law Association (AIPLA) and the International Trademark Association (INTA). In LKQ Corporation, Keystone Automotive Industries. Inc. v. GM Global Technology Operations LLC, the Federal Circuit overruled the Rosen-Durling test, which had been the law on design patent obviousness for decades.

A design patent is a patent for a “new, original and ornamental design for an article of manufacture.” See 35 U.S.C. § 171(a). That is, a design patent protects the ornamental appearance of a new and original product. Generally, laws applicable to utility patents also apply to design patents. This includes laws related to “obviousness,” a determination of whether it would have been routine to modify a first prior art reference (referred to as a “primary” reference) with the disclosure of a second prior art reference (the “secondary” reference). The Rosen-Durling test was used for determining the obviousness of a design patent and required that “one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’” Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)). Once a primary reference was identified, “other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” Id. at 103. However, the secondary reference needed 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.” Id. (alteration in original) (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)).

Under the Rosen-Durling test, if a primary reference was not found, that is, if there was not “something in existence, the design characteristics of which are basically the same as the claimed design,” the obviousness inquiry ended. For example, in the case of LKQ and GM, the Patent Trial and Appeal Board (PTAB) found that LKQ failed to find a primary reference that was “basically the same” as GM’s claimed design. Therefore, the PTAB held that GM’s design was not obvious in view of the prior art and the design patent was valid.

Upon appeal, the Federal Circuit overruled the PTAB’s holding and called the Rosen-Durling test “improperly rigid.” The Federal Circuit laid out a new test for design patent obviousness, citing as precedent (among other cases) KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the seminal case on utility patent obviousness that abrogated rigid, mandatory, or formalistic rules or formulas for determining obviousness. The Federal Circuit ruled that the test for design patent obviousness should instead be determined using the criteria laid out in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), commonly cited in cases involving utility patents. The Graham factors, used when determining obviousness, include the following: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations such as commercial success, long felt but unsolved needs, and failure of others.

As applied to design patents, the Federal Circuit outlined the following in LKQ Corp.:

(1) Regarding Graham factor one, the scope and content of the prior art:
a. Analogous art includes art from the same field of endeavor as the claimed design;
b. The primary reference does not need to be “basically the same” as the claimed design;
c. The primary reference only needs to be “something in existence—not something that might be brought into existence by selecting individual features from prior art and combining them.”
(2) As for Graham factor two, determining the differences between the prior art and the claimed design, one should approach the inquiry from the perspective of an ordinary designer in the field of the claimed design.
(3) As for Graham factor three, the level of ordinary skill is that of “a designer of ordinary skill who designs articles of the type involved.”
As for secondary references, the Federal Circuit noted that the 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.”

The Federal Circuit did not delve into Graham factor four in detail, but did note that in prior design patent cases, factors such as commercial success, industry praise, and copying may demonstrate nonobviousness.

In its amicus curiae brief, INTA argued that “[b]ecause the elimination or substantial modification of the Rosen-Durling test threatens not only to create uncertainty in this settled area of design patent law, but also to upset the carefully crafted, long-established balance between design patent and trade dress protection, to the detriment of both intellectual property owners and consumers alike, INTA respectfully submits that the [Federal Circuit] should retain the Rosen-Durling test without modification or, at a minimum, leave the test substantially intact.” In its amicus curiae brief, the AIPLA similarly argued, “Eliminating or modifying the [Rosen-Durling] framework would cause unnecessary uncertainty in an otherwise settled and reasonably well-functioning area of the law.” Addressing (or perhaps dismissing) these concerns, the Federal Circuit stated in LKQ Corp., “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.”

While specific application of this new standard has not yet been litigated, the U.S. Patent and Trademark Office has issued guidelines for patent examiners when considering design patent applications in light of the Federal Circuit’s LKQ Corp. decision. The guidance states that any primary reference the examiner may choose to apply “is analyzed in terms of its visual similarity to the claimed design, but this primary reference need not be ‘basically the same’ as the claimed design.” The upshot is that the pool of prior art available to examiners for any given design is substantially larger than previously was the case.

The title of this article suggests that the law on design patent obviousness may not in fact be “new.” As noted above, the “new” framework for reviewing design patents utilizes the Graham factors, which have been around since 1966. On the other hand, the scope of prior art from which both primary and secondary references can be drawn is now significantly broader than prior to the LKQ Corp. decision. Design patent applicants will be served well by considering prior designs that are visually similar to the design being considered for protection when determining if the new design may potentially be patentable. Third parties who wish to challenge a patent or rely on invalidity as a defense to design patent infringement can now also consider broadening the scope of prior art they may choose to apply for such purposes. Andrus attorneys are able to provide guidance related to both issues of patentability of our client’s products and validity of our client’s and competitors’ design patents.

Donald J. O’Brien joins Andrus

Andrus is pleased to welcome Donald J. O’Brien as a Senior Associate on June 24, 2024. Don focuses his practice on acquiring strong patent protection for innovative computer technologies through domestic and international patent prosecution. Don has experience with a wide range of software and other computer-related technologies. In addition to being a registered patent attorney, Don is a former professional software engineer with full life-cycle and project management experience on numerous software, hardware, and network implementations, experience he will capitalize upon while counseling clients in patent matters.

Dillon E. Durnford named as a non-equity partner in Andrus

Andrus is pleased to announce that as of July 1, 2024, Dillon E. Durnford will be named a non-equity partner in the firm. Since he joined the firm in July 2023, Dillon has been applying his expertise in electrical, software, and automation-related technologies to help Andrus’s clients obtain strong, meaningful patent protection for their innovations.

Andrus included in the guide entitled IAM Patent 1000 - The World's Leading Patent Practitioners 2024

Andrus was once again included in the guide entitled IAM Patent 1000, which is a standalone publication that identifies individual and firm expertise in all major areas of patent law and practice. Through an extensive research process by a team of highly qualified analysts, the publication identifies the top patent practitioners and law firms in 40 of the world’s most important jurisdictions and 20 U.S. states. In addition to firm-wide recognition, Edward R. Williams, Joseph D. Kuborn, Aaron T. Olejniczak, Peter T. Holsen, Christopher R. Liro, Benjamin R. Imhoff, Ryann H. Beck, and Emily M. Chilson were featured individually, based on positive feedback from clients and associates.

Andrus Ranked in Chambers USA 2024

Andrus was selected as a ranked law firm in Chambers USA 2024, identifying our firm as one of the best firms in Wisconsin in the field of intellectual property law. In addition to firm-wide recognition, Joseph D. Kuborn, Aaron T. Olejniczak, Peter T. Holsen, and Ryann H. Beck were featured individually. Chambers ranks lawyers and law firms based on the research of over 170 full-time editors and researchers at their head office in London. Researchers talk to lawyers and clients, conduct in-depth telephone interviews, and review submission forms provided by law firms.