In LKQ Corp. v. GM Global Tech. Operations LLC, the Federal Circuit, sitting en banc, overruled the longstanding Rosen-Durling test for assessing the obviousness of design patents. Case 21-2348 at 5 (Fed. Cir. 2024) (LKQ). The LKQ Court held that obviousness requires “a more flexible approach than the Rosen-Durling test,” which will likely strengthen obviousness challenges to claimed designs. Id.
The Rosen-Durling test
The Rosen-Durling test had two parts.
First, “one [had to] 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)). Without a primary reference that was “basically the same as the claimed design,” a challenger could not “invalidate a design patent on grounds of obviousness.” Id. at 103, 105.
Second, if the challenger found a primary reference that was “basically the same as the claimed design … other references [could] be used to modify it to create a design that has the same overall visual appearance as the claimed design.” Durling, 101 F.3d at 103. However, a challenger could only rely on secondary references that were “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.
The Federal Circuit overrules the Rosen-Durling test
Noting that “[d]esign patents, like utility patents, must meet the nonobviousness requirement of 35 U.S.C. § 103,” the LKQ Court held that both parts of the Rosen-Durling test “are improperly rigid” and “do[] not adequately align with” Supreme Court precedent that addressed § 103, including Graham and KSR. LKQ at 10 – 19.
For the first part of the Rosen-Durling test, the LKQ Court acknowledged the Supreme Court’s admonition that “both § 103 and Graham ‘set forth an expansive and flexible approach’ to obviousness” and “‘when a court transforms [a] general principle into a rigid rule that limits the obviousness inquiry, … it errs.’” LKQ at 16-17 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007)). The LKQ Court held that requiring a primary reference that is “basically the same” as the claimed design “does not fit all obviousness scenarios for designs” and thus improperly “imposes limitations absent from § 103’s broad and flexible standard.” Id.
For the second part of the Rosen-Durling test, the LKQ Court held that requiring secondary references 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” also “is at odds with the broad standard for obviousness set forth in § 103 and Supreme Court precedent.” LKQ at 17 – 19. Per the LKQ Court, § 103 does not require a secondary reference to “create[] its own motivation to combine the two prior art references” and such a “requirement is analogous to the rigid application of the teaching-suggestion-motivation test rejected by the Supreme Court in KSR.” Id.
The LKQ Court’s framework for assessing the obviousness of claimed designs
After overruling the Rosen-Durling test, the LKQ Court reaffirmed Federal Circuit precedent holding that the obviousness of claimed designs should be determined “on application of the Graham factors”:
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“the scope and content of the prior art”;
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“differences between the prior art and the claims at issue”;
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“the level of ordinary skill in the pertinent art”; and
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“[s]uch secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc.” that may be “indicia of obviousness or nonobviousness.”
Graham v. John Deere Co., 383 U.S. 1, 17 – 18 (1966); LKQ at 19 – 28 (quoting Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997)).
The LKQ Court further reaffirmed that the factual criteria for assessing the obviousness of design patents are “similar to those that have been developed as analytical tools for reviewing the validity of utility patents under § 103” but—being “mindful of the differences between design and utility patents”—left open the possibility that there may be differences in the application of the Graham factors to design patents. See LKQ at 19 – 28 (quotation omitted).
Graham factor one: a primary reference must be identified
For Graham factor one, the LKQ Court “reaffirm[ed] that an analogous art requirement applies for obviousness of design patents” and noted that while there may be overlap in the application of this requirement to design and utility patents, there also may be differences. LKQ at 19 – 24.
“For utility patents, [courts] use a two-part test to determine the scope of analogous art: (1) whether the art is from the same field of endeavor as the claimed invention; and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” LKQ at 22.
The LKQ Court held “that the first part of this two-part test applies to design patents in a straightforward manner,” as “analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design.” Id.
However, per the LKQ Court, “the second part of the two-part analogous art test for utility patents would not seem to apply to design patents in the same way” because “a design patent itself does not clearly or reliably indicate the particular problem with which the inventor is involved.” LKQ at 22 – 23 (quotation omitted, emphasis original). With “how to translate this part of the test into the design context [being] less apparent,” the LKQ Court left “it to future cases to further develop the application of this standard” and did “not foreclose that [art outside of the same field of endeavor] could also be analogous” in the design patent context. Id. (quotation omitted).
To provide some guidance, the LKQ Court held that “a primary reference must be identified” and, while it “need not be ‘basically the same’ as the claimed design,” it “will likely be the closest prior art, i.e., the prior art design that is most visually similar to the claimed design.” Id. at 23 – 24. And, per the LKQ Court, “[t]he more visually similar the primary reference design is to the claimed design, the better positioned the patent challenger will be to prove its § 103 case.” Id. at 24.
In holding that “a primary reference must be identified,” the LKQ Court arguably maintained a portion of the Rosen-Durling test that is a notable departure from the obviousness assessment used for utility patents. While obviousness grounds against utility claims often include “a primary reference,” the Federal Circuit has held that “where the relevant factual inquiries underlying an obviousness determination are otherwise clear, characterization … of prior art as ‘primary’ and ‘secondary’ is merely a matter of presentation with no legal significance,” although “there may be some cases in which relevant factual determinations inhere in such characterization of prior art references.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). The LKQ Court’s holding that “a primary reference must be identified” arguably means that all design patent cases involving obviousness are ones (as stated in Mouttet) “in which relevant factual determinations inhere such characterization of prior art references.” See LKQ at 23 – 24; Mouttet, 686 F.3d at 1333. Practitioners should thus be cognizant of which prior art reference is characterized as the “primary reference” when assessing the obviousness of a design claim.
Furthermore, while the LKQ Court declined to delineate the contours of where a prior art reference outside of the inventor’s field of endeavor may be analogous art, its reliance on In re Glavas to “support[] application of an analogous art requirement to design patents” provides insight. See LKQ at 21 – 23 (citing In re Glavas, 230 F.2d 447 (CCPA 1956)). As the LKQ Court explained, “Glavas [] created the ‘so related’ test” adopted in part two of the Rosen-Durling test “as a design-context proxy or replacement for the analogous art requirement of utility cases.” Id. When expounding on this analogous art proxy, the Glavas court explained that “if the problem is merely one of giving an attractive appearance to a surface, it is immaterial wh[at] the surface in question is” such that, for example, “the application to a tank of surface ornamentation previously applied to a microphone” would have been obvious. Glavas, 230 F.2d at 450. But “when the proposed combination of references involves material modifications of the basic form of one article in view of another, the nature of the articles involved is a definite factor in determining whether the proposed change involves invention” because while “the art from which a patent is drawn does not necessarily preclude its citation as a reference,” an ordinary designer “would look first to the similar devices of the prior art for ideas” and art taken from different fields “does reflect on the question of remoteness of suggestion between what it discloses and what the applicant discloses.” Id. at 450 – 51 (quotation omitted). Applying this test, the Glavas court assessed the obviousness of “the ornamental design for a float” over “a patent relating to a float in view of patents relating to a cushion and a pillow” and “patents relating to bottles, a razor blade sharpener, and a bar of soap.” LKQ at 21. The Glavas court accepted that “pillows may plausibly be related art to a float” because “pillows are sometimes adapted to serve as floats” but held that an ordinary designer “would not be likely to turn to bottles, soap or razor blade sharpeners for suggestions.” Id.; Glavas, 230 F.2d at 450 – 51. The LKQ Court did not specifically reject the Glavas court’s conclusion, but found that “[u]nfortunately, application of the Rosen-Durling test over time has become rigid to the point where we abandon it today” in favor of “a more flexible fact-based analysis.” LKQ at 21 – 22. This indicates that the analogous art requirement for design patents will involve at least the same level of flexibility exhibited in Glavas.
Graham factor two: differences in visual appearance
For Graham factor two, the LKQ Court discarded the “threshold ‘similarity’ requirement” from the Rosen-Durling test and held that decisionmakers should “determine[] the differences between the prior art designs and the design claim at issue” by “compar[ing] the visual appearance of the claimed design with prior art designs, albeit from the perspective of an ordinary designer in the field of the article of manufacture.” LKQ at 24 – 25.
In assessing the differences between the claimed design and the prior art, practitioners should remember that “a design may contain both functional and ornamental elements,” and “the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.” Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir. 2016). Determining the functional and non-functional aspects of a design may be important when assessing obviousness, as functional aspects missing in the prior art may nevertheless not be creditable differences in Graham factor two.
Graham factor three: ordinary designer
For Graham factor three, the LKQ Court reaffirmed “that obviousness of a design patent claim is assessed from the viewpoint of an ordinary designer in the field to which the claimed design pertains.” LKQ at 25 – 26. Thus, this aspect of the obviousness assessment for a claimed design remains unchanged.
Graham factor four: secondary considerations
For Graham factor four, the LKQ Court reaffirmed that “the obviousness inquiry for design patents still requires assessment of secondary considerations as indicia of obviousness or nonobviousness,” including “commercial success, industry praise, and copying.” LKQ at 27. However, the LKQ Court noted that “[i]t is unclear whether certain other factors such as long felt but unsolved needs and failure of others apply in the design patent context” and left “to future cases the determination of whether [those] considerations … will have significance to the obviousness inquiry in the design patent context.” LKQ at 27 – 28.
Assessing obviousness in view of the Graham factors: the motivation
The LKQ Court reaffirmed that the obviousness inquiry is “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,” which “focuses on the visual impression of the claimed design as a whole and not on selected individual features.” LKQ at 26 – 27 (quotations omitted).
With the second part of the Rosen-Durling test discarded, the LKQ Court held that “the motivation to combine [] references need not come from the references themselves,” but noted that “there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.” LKQ at 26 – 27.
The LKQ Court’s statement that the obviousness rationale must be “record-supported” re-emphasizes the importance of evidentiary support for a motivation to combine. For example, while in KSR the Supreme Court held that obviousness is a flexible analysis that may allow reliance on “common sense,” the Federal Circuit has elaborated that this “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” KSR, 550 U.S. at 421; Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). Thus, the motivation to combine should be supported by record evidence, including expert testimony, the prior art of the combination and/or additional objective documentary evidence. See LKQ at 26 – 27; Arendi, 832 F.3d at 1362.
The LKQ Court’s discussion of Smith v. Whitman Saddle Co. underscores the importance of evidentiary support for the motivation to combine. There, the Supreme Court assessed the obviousness of a “claimed design [that] was made up of the front half of one known saddle and the back half (or cantle) of another, with a further modification to one half.” LKQ at 13 – 14 (citing Smith v. Whitman Saddle Co., 148 U.S. 674, 680 (1893)). As the LKQ Court explained, “the record evidence showed” that “‘it was customary for saddlers to vary the shape and appearance of saddletrees [saddle frames] in numerous ways, according to the taste and fancy of the purchaser’” and that the combination of the two halves was not inventive because it was “‘the exercise of the ordinary skill of workmen of the trade, and in the way and manner ordinarily done.’” Id. at 13 – 14 (quoting Whitman Saddle, 148 U.S. at 680 – 81) (emphasis added). But the Supreme Court “withheld judgment on the validity of the overall design … without evidence that [the further modification to one half] was known in the prior art or similar to the existing prior art references.” Id. at 14 (citing Whitman Saddle, 148 U.S. at 681 – 82) (emphasis added). Thus, while the Supreme Court found that record-supported commonality established that the combination of certain features was not inventive, the absence of evidence regarding the obviousness of the further modification precluded invalidation. See id.
Although the LKQ Court emphasized that a reason to modify must be “record-supported” and made “without hindsight,” it provided limited guidance on the types of reasons that may support an obviousness finding against a claimed design. LKQ at 26 – 27. Notably, the LKQ Court posited that the assessment may sometimes involve different considerations for utility and design patents, noting that “[j]ust as with the analogous art inquiry, in the area of motivation to combine, the problem to be solved may have less relevance in the design patent context than in the utility patent context.” Id. at 27. But the LKQ Court did not elucidate further. For example, the “problem to be solved” by the claimed invention is typically of limited relevance even to the obviousness of utility claims because “the law does not require that the references be combined for the reasons contemplated by the inventor.” See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). And if the LKQ Court was referring to the “problem to be solved” by the prior art, it did not delineate the situations in which that problem has “less relevance” in the design patent context. See LKQ at 27. Conceivably, ornamental modifications of the prior art that would not have affected the prior art’s functionality would not implicate doctrines related to the prior art’s objectives—such as “teaching away,” changing a reference’s principle of operation, and rendering a reference unsuitable for its intended purpose—when those objectives are purely functional. At the same time, in at least some cases an “ordinary designer” conceivably could have recognized the objectives underlying the prior art’s choice of ornamental features, and in such cases ornamental modifications could potentially implicate those doctrines.
Likewise, the LKQ Court did not elucidate the extent to which a patent challenger can rely on purely functional reasons to support a modification of a prior art design. See LKQ at 26 – 27. The Federal Circuit has afforded patent challengers flexibility in formulating motivations in the utility patent context, holding that obviousness can be found “[a]s long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole.” Beattie, 974 F.2d at 1312. If the same holds for design patents, functional considerations could conceivably support an obviousness position against a claimed design, such as when replacing an element in a primary reference with an element in a secondary reference would have provided a technical benefit while also yielding “the same overall appearance as the claimed design.” See LKQ at 26 – 27.
Additionally, while the LKQ Court held 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,” it noted that “the more different the overall appearances of the primary reference versus the secondary reference(s), the more work a patent challenger will likely need to do to establish a motivation to alter the primary prior art design in light of the secondary one.” LKQ at 26 – 27. This indicates that an obviousness challenge based on a combination of prior art having similar appearances will be more likely to succeed. Id.
At bottom, the LKQ Court emphasized that the obviousness assessment is a “fact-based non-rigid test” and that while “there may be some degree of uncertainty for at least a brief period,” the assessment “should be amenable to a case-by-case development.” See LKQ at 26 – 29 (quotation omitted). Because the obviousness of a claimed design is assessed “[based] on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent,” the existing body of law concerning utility patents can provide a starting point for assessing reasons to modify a primary reference. See id. at 19. And while precedent can provide a guide, the particular factual context, including the knowledge of an “ordinary designer in the field” and teachings of the prior art, will govern what, if any, motivation can support an obviousness position against a claimed design. See id. at 25 – 29.
Conclusion and takeaways
In overruling the Rosen-Durling test, the Federal Circuit adopted a flexible approach to assess the obviousness of design patents. The flexible approach will likely strengthen obviousness challenges against claimed designs, making it more difficult to obtain design patents and defend their validity against patent challengers. While the particular contours of this flexible approach will be delineated on a case-by-case basis, the law concerning the obviousness of utility patents will provide a useful guide for doing so.
For patent challengers, this change expands the tools available to challenge the validity of a design claim and can thus put them in a stronger position to defend against allegations of design patent infringement.
For applicants and patent owners, the change emphasizes the importance of appropriately tailoring the scope of the claimed design. Applicants that wish to pursue a claim for a broad design—such as one that claims only a portion of an article—can benefit from continuation and divisional applications for narrower versions of the design that may be more resilient to obviousness challenges. Doing so can, as in the utility patent context, provide a fallback should a challenger invalidate the claim to the broader design.
