No More Rosen-Durling: The Federal Circuit Moves to Graham and KSR for Nonobviousness of Design Patents
Patents come in two flavors: utility patents and design patents. Section 103 of the Patent Act, which addresses the nonobviousness requirement for patentability, does not differentiate between design patents and utility patents. It applies to all types of patents. Nevertheless, the tests for nonobviousness of utility patents and nonobviousness of design patents have diverged over the years.
Yesterday, the Federal Circuit, sitting en banc, addressed this divergence in LKQ Corp. v. GM Global Technology Operations (decision available here), ultimately overruling the Rosen-Durling test for design patents and attempting to align the obviousness analysis for design patents with the Graham and KSR analyses of utility patents.
The Rosen–Durling Test
Historically, nonobviousness of design patents has been governed by the Federal Circuit’s long-standing Rosen-Durling test. The Rosen-Durling test for nonobviousness of a design patent claim is a two-step test. Step one requires that a single primary reference–referred to as a Rosen reference–that has design characteristics that are “basically the same” as the claimed design must be identified. If no Rosen reference is identified, the obviousness inquiry ends without going to step two. If a Rosen reference is identified, then step two of the Rosen-Durling test requires that other references used to modify the Rosen reference to create a design that has the same overall visual appearance as the claimed design must be “so related” to the Rosen reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.
Background
The Federal Circuit addressed the principal question of whether the Supreme Court’s KSR precedent—which applies to nonobviousness of utility patents—should cause a rethinking of the Rosen-Durling test for nonobviousness of design patents. After a lengthy analysis, the Federal Circuit overruled the Rosen-Durling test’s requirements that the primary reference must be “basically the same” as the challenged design claim and that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. According to the Federal Circuit, Supreme Court precedent suggests a more flexible approach than the Rosen-Durling test for determining nonobviousness.
In this case, the Patent Trial and Appeals Board had used the Rosen-Durling test to determine that the patent challenger had failed to establish that the challenged claim would have been obvious because the challenger had failed to identify a Rosen reference. In particular, the Board found that the reference identified by the challenger did not create “basically the same” visual impression as the patented design and therefore did not qualify as a Rosen reference. Because of the lack of a Rosen reference, the Board’s inquiry into nonobviousness ended there. A panel of the Federal Circuit had previously affirmed the Board’s decision; however, in the panel decision, two judges separately addressed the tension between the Supreme Court’s holding in KSR and the then-operative Rosen-Durling test.
Given this tension, the Federal Circuit reheard the case en banc. The questions presented on rehearing were:
(1) Does KSR overrule or abrogate the Rosen-Durling test?
(2) If not, should the Federal Circuit nonetheless eliminate or modify the Rosen-Durling test?
(3) If the answer to either of the previous two questions is yes, what test should apply for evaluating design patent obviousness challenges?
The Supreme Court Precedent
The Supreme Court addressed nonobviousness under Section 103 in Graham v. John Deere, which involved utility patents. This decision provided the well-known Graham factors for determining obviousness, with the ultimate question being whether differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the pertinent art at the time of the invention.
The Supreme Court again addressed Section 103 in KSR v. Teleflex, ultimately rejecting the Federal Circuit’s rigid application of the “teaching, suggestion, or motivation” (TSM) test for obviousness.
The Supreme Court has also addressed the validity of design patent claims in view of combined prior art designs in the Whitman Saddle case. There, the Supreme Court considered the prior art in the field of the article of manufacture, the knowledge of an ordinary saddler, and the differences between the prior art and the claimed design, and concluded that combining the two known saddle designs was nothing more than an exercise of the ordinary skill of workmen of the saddle trade. Notably, in Whitman Saddle, neither of the two references was “basically the same” as the claimed design, yet the Supreme Court still held that combining the two references was not inventive because such combination was customary for saddlers.
The Federal Circuit’s Holding
Given this backdrop of the Supreme Court’s rejection of rigid tests in both KSR (for utility patents) and Whitman Saddle (for design patents), the Federal Circuit held that “Rosen-Durling is out of keeping with the Supreme Court’s general articulation of the principles underlying obviousness, as well as its specific treatment of validity of design patents.” Specifically, the Federal Circuit concluded that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. According to the Federal Circuit, the statutory rubric along with the Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.
How to Evaluate Obviousness of Design Patent Claims
With the Rosen-Durling test overruled, the Federal Circuit turned to what the framework for evaluating obviousness of design patent claims should be, finding that “invalidity based on obviousness of a patented design is determined based on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent under § 103, that is, on application of the Graham factors.”
First Graham Factor
Regarding the first Graham factor (the scope and content of the prior art), the Federal Circuit held that there is no threshold similarity or “basically the same” requirement to qualify as prior art. Instead, the Federal Circuit reaffirmed that an analogous art requirement applies to each reference for obviousness of design patents. This analogous art requirement limits the scope of prior art and guards against hindsight.
For utility patents, a two-part test determines 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. The Federal Circuit held that the first part of this two-part test applies to design patents in a straightforward manner, such that analogous art for a design patent includes art from the same field of endeavor as the article of manufacture of the claimed design. The second part of this two-part test, however, does not translate to design patents because, unlike a utility patent, a design patent does not clearly or reliably indicate the particular problem with which the inventor is involved. Accordingly, the Federal Circuit elected not to delineate the full and precise contours of the analogous art test for design patents.
Second Graham Factor
Regarding the second Graham factor (the differences between the prior art designs and the design claim at issue), there is no threshold “similarity” requirement. The Federal Circuit held that, in the context of design patent validity, the visual appearance of the claimed design should be compared to the prior art designs from the perspective of an ordinary designer in the field of the article of manufacture.
Third Graham Factor
Regarding the third Graham factor (the level of ordinary skill in the pertinent art), in the design patent context, obviousness of a design patent claim is assessed from the viewpoint of an ordinary designer in the field to which the claimed design pertains.
Putting It All Together
With these Graham factors in mind, the Federal Circuit explained that the question 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,” with the inquiry focusing on the visual impression of the claimed design as a whole and not on selected individual features. If a primary reference alone does not render the claimed design obvious, then secondary reference may be considered. Although the primary and secondary references need not be “so related” such that features in one would suggest application of those features in the other, they nevertheless must both be analogous art to the patented design. The motivation to combine these references need not come from the references themselves, but there must be a reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference using the secondary references to create the same overall appearance as the claimed design.
Secondary Considerations
Finally, the Federal Circuit noted that, consistent with Graham, the obviousness inquiry for design patents still requires assessment of secondary considerations as indicia of obviousness or nonobviousness, when evidence of such considerations is presented.
This LKQ decision represents a fairly significant departure from the long-standing method of analyzing obviousness of design patent claims under the more rigid Rosen-Durling test. While, in the long run, it will likely prove beneficial to use harmonized obviousness analyses for design patents and utility patents, this decision nevertheless has caused some concern among design patent holders because of the perceived uncertainty it will create in the short term. This seems like a fair criticism; however, as the Federal Circuit pointed out, there is a significant body of existing law in the context of utility patents that patent holders and courts alike can draw from.
The en banc decision can be found here.