The Federal Circuit Holds the Supreme Court Precedent Governs Obviousness of Design Patents and Overrules the Longstanding Rosen-Durling Test

In LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024), an en banc Federal Circuit overturned the longstanding Rosen-Durling test for obviousness of a design patent and held Supreme Court precedent in Graham, KSR, and Whitman Saddle provide the proper analysis.

The two-part Rosen-Durling test begins by finding a primary reference with “design characteristics [] which are basically the same as the claimed design.” The inquiry ends if none is found. But “[o]nce this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” Any such secondary reference must 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.”  

In the proceedings below, General Motors sued LKQ for infringement of design patent D797,625, which covered the design for a car front fender, and LKQ filed an IPR. The Board applied the Rosen-Durling test to find LKQ failed to invalidate the patent. On appeal, a Federal Circuit panel affirmed the Board’s decision, with Judge Stark concurring in part but noting a tension between KSR and the Rosen-Durling test, while Judge Lourie presented additional views that KSR did not involve design patents, which are distinct from utility patents.

Here, on rehearing en banc, the Federal Circuit overruled the two-step Rosen-Durling test as improperly rigid. The court first reasoned that § 103 applied to utility and design patents alike, and Graham and KSR addressed the meaning of this statute. The court also looked to Smith v. Whitman Saddle Co., 148 U.S. 675, 680 (1893), which addressed validity of design patent claims in view of prior art combinations. The Federal Circuit noted the Supreme Court there “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.’” The Federal Circuit found the Rosen-Durling test inconsistent with these Supreme Court precedents.

The court found the first Rosen-Durling step adopted a “one-size-fits all approach” when requiring that a prior art design is “basically the same,” which cannot be reconciled with Supreme Court precedent. At the second step, the court held the test’s requirement that a secondary reference be “so related” to the primary reference is likewise too rigid because it limits the broad standard in the statute and does not allow for common sense factfinding. The court thus concluded the statute, Whitman Saddle, Graham, and KSR mandate a more flexible approach than the Rosen-Durling test.

The court then affirmed the Graham factors as the appropriate framework for evaluating obviousness of design patents. The court disagreed with amici’s concerns as to uncertainty resulting from an overruling of Rosen-Durling, reasoning that the longstanding Graham test provides ample precedent to guide future decisions in the design patent context. The court further provided guidance on each Graham factor:

1. Determining the scope and content of the prior art: Under the first Graham factor, each reference must be analogous art. As a measure of analogous art in the design context, the court adopted part of a test used for utility patents, which asks whether the art is from the same field of endeavor as the article of manufacture of the claimed design. But the court declined to “delineate the full and precise contours of the analogous art test for design patents,” leaving the question of whether designs outside the field of endeavor are analogous a factual inquiry to be decided on a case-by-case basis. The court noted the primary reference is likely to be the closest prior art, and the more visually similar to the claimed design, the stronger the invalidity challenge.
2. Differences between the prior art designs and the design claim at issue: The court found the second Graham factor requires visually comparing the appearance of the claimed design with prior art designs from the perspective of an ordinary designer in the field of the article of manufacture. The court explicitly rejected any threshold similarity requirement of Rosen-Durling.
3. Level of ordinary skill: For the third Graham factor, the court defined a person of ordinary skill in the art as “a designer of ordinary skill who designs articles of the type involved,” which leaves the definition unchanged from precedent.
4. Applying the Graham factors to assess nonobviousness: The court specified the claimed design must be evaluated by considering whether an ordinary designer in the field would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design. The court reaffirmed that obviousness focuses on the visual impression of the claimed design as a whole and not on selected individual features. When combining references, the court noted the motivation need not come from the primary reference, consistent with KSR, but the record must support the motivation—without hindsight—for an ordinary designer to modify the primary reference with the secondary reference’s features to create the same overall appearance as the claimed design. The court further commented that the problem to be solved may play a lesser role when combining design references than for utility patents, but that other factors such as designer’s experience and creativity, market demands, industry customs, and commonplace ornamental features in the relevant field may play a role.  
5. Secondary considerations of obviousness or nonobviousness: The court acknowledged the obviousness inquiry requires assessing secondary considerations under Graham. But the court noted that commercial success, industry praise, and copying may demonstrate nonobviousness, while other secondary considerations might not apply in the design patent context, such as long felt need or unsolved needs, but left this open for future courts to consider.

Judge Lourie concurred as to the decision to vacate the Board’s decision and remand to further evaluate validity, but he disagreed that the Rosen-Durling test need be abandoned. Judge Lourie argued making the test less rigid was the appropriate fix in light of KSR. He reasoned that, with this fix, the test essentially aligned with the majority’s guidance on the Graham factors.  He also criticized the majority’s inclusion of the analogous art test in the obviousness inquiry, stating it “is not a test for obviousness” because “[it] is a gateway.”