Federal Circuit IP
LKQ Corp. v. GM Global Technology Operations LLC
By: Aikaterina (Katina) Assimacopulous
Fed. Cir. No. 2021-2349 ( May 21, 2024)
(en banc)
Issue: Does Supreme Court precedent overrule the Rosen-Durling test for design patent obviousness?
Holding: Yes. Obviousness requires neither (1) the primary reference be “basically the same” as the claimed design; nor (2) any secondary reference be “so related” to the primary that features in one suggest application to the other.
Background:
- Asserted Patent: GM’s Patent ‘625 directed to a design for a vehicle’s front fender.
- Primary, “Lian” Reference: distinguished from the ‘625 patent by its wheel arch, door cut, inflection, concavity, protrusion, sculpting, and creases (“Primary Differences”).
- Secondary, “Tucson” Reference: a brochure depicting the Tucson fender design.
- IPR: LKQ asserts the ‘625 patent is unpatentable as: (1) anticipated by Lian; or as (2) obvious over Lian, with or without modification by Tucson.
- The Board found the Primary Differences sufficiently distinguished the ‘625 patent and Lian both for the purpose of anticipation (because they were not “substantially the same” under the ordinary observer test) and for the purpose of obviousness (because they did not create “basically the same” visual impression under Rosen-Durling step 1).
- Fed. Cir. Panel: Affirmed the Board’s findings.
Federal Circuit (en banc): Affirmed the Board’s non-anticipation determination and vacated and remanded its nonobviousness determination.
- Rosen-Durling is inconsistent with § 103 standards and S. Ct. precedent.
- Graham as applied in KSR, illustrates § 103’s flexible approach and rejection of rigidity.
- In Whitman Saddle, the S. Ct. found a saddle design obvious which was not “basically the same” as either reference to which it was compared. Rather than end the inquiry (per Rosen step 1), the S. Ct. considered whether it was inventive to combine the references, considering the practice of an ordinary workman of the trade (not whether the references were “so related” per Rosen step 2).
- KSR and Graham’s four-part factual inquiry applies in the design-patent context:
- Factor 1: considers the “scope and content” of the prior art. Though Graham still requires a primary reference “in existence”, the reference need only be “analogous.” Analogous art includes, but is not limited to, designs from the claim’s field of endeavor. What qualifies as analogous outside the claim’s field remains a question of fact to address case-by-case.
- Factor 2: considers the differences between the prior art and the claim, which, in the design-patent context, is from the perspective of an ordinary designer in the field of the article of manufacture.
- Factor 3: resolves “the level of ordinary skill in the pertinent art”, which, in the design-patent context, is the knowledge of “a designer of ordinary skill who designs articles of the type involved.”
- Secondary considerations: including commercial success, industry praise, and copying can be considered, but it is unclear whether other secondary considerations apply in the design-patent context.
- Test: The overall question is whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art “to create the same overall visual appearance as the claimed design”, focusing on the visual impression of the claimed design “as a whole and not on selected individual features.”
J. Lourie’s Concurrence: Rosen-Durling need only be loosened, noting the economic incentives behind the amici briefs filed by automotive replacement and insurance companies.
Takeaways: This case affects the design-patent obviousness inquiry by: (1) expanding the universe of primary references; (2) expanding the universe of secondary references; (3) possibly requiring something akin to a creativity standard for non-obviousness.
- The PTO will likely reject more design-patent claims as obvious under § 103 and future cases will likely form rules surrounding what constitutes a sufficient motivation to alter.
- Will heightening the standard for what constitutes a patent-worthy design advancement broaden that which the design is found to claim in the context of infringement?