It’s Over, Durling: Federal Circuit Rejects Rosen-Durling Test for Assessing Obviousness In Design Patents

In a much-anticipated decision, a full bench of the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness in design patents. LKQ Corp. v. GM Global Technology Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). For some time, design patents have followed the Rosen-Durling test, which has a two-part requirement that (1) the primary reference must be “basically the same” as the claimed design; and (2) any secondary references must be “so related” to the primary reference that features from one would suggest application to the other. On the other hand, utility patents follow a more flexible standard of obviousness. The stricter standard for proving obviousness in design patents made it harder to prove obviousness in design patent disputes, and consequently easier to defend such patents against claims of infringement.

Earlier, in January 2023, a three-judge panel of the Federal Circuit in LKQ Corp had found no compelling reason to have a single standard for obviousness between utility and design patents. See my previous article: Protecting Inventions by Design.

A petition was filed for en banc review. The full bench of the Federal Circuit found that the Rosen-Durling test requirements were too rigid and “impose limitations absent from §103’s broad and flexible standard.” Instead of the Rosen-Durling test, the Federal Circuit adopted the analytical framework for design patent obviousness that was spelled out for utility patents in Graham v. John Deere Co., 383 U.S. 1 (1966), commonly referred to as “Graham factors,” and further supplemented by the Supreme Court’s decision in 2007 in KSR International Co. v. Telflex, Inc.

To support their approach, the Federal Circuit cited the 1893 decision of the Supreme Court in Whitman Saddle regarding obviousness in design patents. The Whitman Saddle Court had focused on whether an ordinary artisan would have combined the references cited in the case based on customary industry practice, without requiring that the prior art saddles be “so related” that features from one would suggest incorporation into the other.

Subsequently, on May 22, the United States Patent Office issued guidance to its staff, stating that while the Federal Circuit did not define how to determine whether the prior art design is analogous, “the design examiner should consider the degree to which an ordinarily skilled designer would be motivated to consider other fields” when making this determination.

The USPTO also reminded its examiners that “there must be some record-supported reason (without impermissible 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.”

 In conclusion, while LKQ Corp (en banc) provides some guidance as to how the Graham factors and KSR International Co. should be applied to design patents, exactly how this will be implemented in practice is not fully clear. For example, the court in LKQ Corp (en banc) stated that the first factor of the two-part analogous art inquiry (whether the art is from the same field of endeavor as the claimed invention) should apply to design patents. However, whether the second factor (whether the reference is reasonably pertinent to the particular problem faced by the inventor) would also apply to design patents has been left open for future cases.