Protecting Inventions by Design

How a Federal Court’s Ruling on the Standard for Obviousness May Affect an Inventor’s Rights

By: Nayyer Siddiqi

A three-judge panel in the United States Court of Appeals for the Federal Circuit made an interesting decision recently related to an inventor’s ability to protect their innovations. More specifically, the decision pertains to the different standards for “obviousness” between utility patents and design patents. Why this may be relevant to inventors is something we counsel our clients in the process of patent protection work.

As background, there are two basic types of patents: a utility patent and a design patent. In simple terms, a utility patent protects the way an article is used and works, while a design patent protects the way it looks. In other words, a utility patent would apply to how a stapler works, for example, while a design patent would apply to how that stapler looks.

In order to qualify for a patent, certain standards must be met, such as novelty and non-obviousness. Currently, it is relatively more difficult to invalidate design patents compared to utility patents because of the standard of “obviousness” that is applied in each category.

The standard of “obviousness” was spelled out in the Supreme Court’s decision in KSR International Co. v. Telflex, Inc., in 2007. Essentially, what was decided in this landmark case for inventors was the application of a standard of “obviousness” when an inventor combines two or more “prior art” references to create and patent a new innovation. For example, if a rubber eraser is patent-protected, and so is a graphite pencil, can an inventor apply the rubber eraser to the end of a graphite pencil, then secure patent protection for a graphite pencil with a rubber eraser on its end?

Not so, according to the Supreme Court’s ruling, because of the standard of obviousness. In other words, it would be obvious to anyone in the industry of pencil manufacturing that such a combination could be made and is therefore not protectible by a patent. Specifically, it ruled that “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” But this decision applied to the application of utility patents, ruling on behalf of KSR that Teleflex had infringed on its patent-protected breaking system by simply combining two references of prior art in seeking a patent that a person of ordinary skill would find obvious. Should the same standard apply to design patents in a similar dispute?

The Standard for Obviousness Left Unchanged for Design Patents, For Now

 In January of 2023, the Federal Circuit was asked to apply this same standard for obviousness in a design patent litigation dispute, LKQ Corp. v. GM Global Technology Operations LLC.

In this case, attorneys for LKQ Corp. argued that “In KSR, the Supreme Court rejected the ‘rigid, mandatory formula’ embodied in the Federal Circuit’s then-prevailing ‘teaching suggestion motivation’ requirement as improperly limiting the obviousness inquiry and, instead, prescribed a more flexible approach to obviousness and motivation to combine prior art teachings.’” In doing so, attorneys argued, the Supreme Court essentially overturned an earlier Federal Circuit Court ruling that applied a rigorous definition of the standard for obviousness in design patents (Rosen and Durling), and that the standard for obviousness should be consistent between utility patents and design patents.

Not so, ruled the three-judge panel of the Federal Circuit. While the Supreme Court, in its KSR ruling, essentially made it a lot easier to find obviousness in the realm of utility patent cases, the Federal Circuit here found no compelling reason to have a single standard for obviousness between utility and design patents.

The stricter standard for proving obviousness that currently exists for design patents makes it harder to prove obviousness in design patent disputes, and consequently easier to defend such patents against claims of infringement. Whether it’s right for you and your particular innovation, is an appropriate subject of conversation between you and an experienced intellectual property attorney. 

As with many things in life, this decision may not stand. The original panel in LKQ Corp. v. GM Global Technology Operations LLC was composed of three judges. Upon petition, on June 30th, 2023, the Federal Circuit has granted a rehearing en banc (i.e., before all the judges of the court) in this matter. Stay tuned for further updates!

Photo Credit: Collin Lloyd