New Standards for Design Patent Obviousness with the LKQ Corp. v. GM ruling

Imagine someone submitted a design patent for a glass bottle with a contoured hourglass shape. The top was slightly narrower, and it fluted out at the bottom. But wait a second, you might wonder. Isn’t that the Coke bottle? Perhaps the design has one or two minor variations from the iconic Coca-Cola bottle, but it’s essentially the same idea. Everyone’s familiar with that shape, so the proposed design patent isn’t particularly innovative. That’s where patent obviousness comes in. 

Multiple tests exist for determining patent obviousness. For example, courts have evaluated design patent obviousness using the two-part Rosen-Durling Test. Under the first step of Rosen-Durling, the fact finder must discover a primary reference that is “basically the same” as the design patent. Next, they have to find secondary references “so related” to the design claim that the “appearance of features in one would suggest the application of those features in the other.” For decades, Rosen-Durling was central to patent obviousness assessments, but last week, the Federal Circuit in an en banc decision ruled to abandon the tes in LKQ Corp v. GM Global Technology Operations. 

LKQ Corp. involved a GM design patent for fenders that appeared similar to those of the Hyundai Tucson. Although the district court deemed the patent non-obvious under Rosen-Durling, LKQ appealed the verdict, arguing that the test should be abandoned. LKQ supported its argument by citing a 2007 Supreme Court decision, KSR International Co. v. Teleflex Inc, where the court rejected rigid tests for utility patent obviousness, finding them incompatible with §103 of the United States Code for patent law (Title 35). LKQ asserted that the KSR ruling should similarly apply to rigid design patent tests, and the Federal Circuit, delivering its first en banc decision in six years, concurred. Since Congress enacted §103 to cover both utility and design patents, the Federal Circuit reasoned that inflexible design patent tests were incompatible with Title 35.

Instead of the Rosen-Durling Test, the Federal Circuit asserted that the Graham framework offers “a more expansive and flexible approach” for determining design patent obviousness. Graham consists of four factors that impel the fact finder to: 

1. “Consider ‘the scope and content of prior art’ within the knowledge of an ordinary designer in the field of the design;”
2. “Determin[e] the differences between the prior art designs and the design claim at issue;”
3. Assess “the level of ordinary skill in the pertinent art;”
4. Weigh secondary factors of non-obviousness, such as commercial success and copying by infringers.

While the LKQ ruling has virtually no effect on Graham’s fourth factor, it has significant implications for the other criteria, most notably the first factor. Rather than the earlier requirement for a primary reference that was “basically the same” as the design patent, the first factor could now be met with more broadly analogous art in the field. In effect, the court’s ruling lowered the threshold for similarity when assessing design patent applications. 

Of course, since examiners now have increased flexibility in considering prior art, design patents will require more careful drafting initially. The USPTO may reject more applications for obviousness, and previously issued design patents could be invalidated for similarities to analogous art. In light of the LKQ decision, inventors and attorneys will have to carefully plan how to meet the more demanding standards of obviousness as they craft their design patent applications. Please reach out if you would like assistance securing legal protection for your design.