The Federal Circuit’s first en banc patent decision in over five years addressed whether the Supreme Court’s long-standing obviousness analysis applied to design patents.
LKQ was once a licensed repair part vendor for GM. But after renewal negotiations fell through, GM informed LKQ that the parts LKQ was selling were no longer licensed and therefore infringed GM’s design patent. In response, LKQ sought to invalidate GM’s auto fender design patent in an IPR as obvious. The U.S. Patent Trial and Appeal Board ruled in GM’s favor.
On appeal, LKQ argued that the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)—a case involving the obviousness of a utility patent—should apply to design patents. In particular, LKQ argued that the then-prevailing Rosen-Durling obviousness standard for design patents (which the Board applied in the LKQ IPR) is inappropriate. The original panel rejected LKQ’s argument and affirmed the Board’s finding. But the full Federal Circuit subsequently agreed to hear the case en banc.
The en banc court ruled that the Rosen-Durling test was too rigid and incompatible with KSR. In particular, the court rejected both the prior requirements that a primary reference be “basically the same” as the claimed design and that any secondary reference be “so related to the primary reference that the appearance of certain ornamental features in one would suggest application of those features to the other.” Instead, the court held that a flexible approach should be applied, akin to that used for utility patents. In particular, the court held that the four Graham factors should apply to the design patent obviousness analysis: 1) the scope and content of the prior art, 2) the differences between the prior art and the claimed invention, 3) the level of ordinary skill in the art, and 4) any secondary considerations of non-obviousness.
The court left the challenge of determining precisely how the utility patent test would apply to design patents to later cases. For instance, the en banc decision explicitly left open the question of what will constitute analogous art for design patents. The court stated that a prior art reference in the same field of endeavor as the claimed design would be analogous art (as it is for utility patents), but it did not “foreclose that other art could also be analogous.” The court did not define the test for this second, open-ended option, leaving it to be “addressed on a case-by-case basis.”
The decision also explicitly left open the question of what secondary considerations of non-obviousness will be possible for design patents. The court noted that secondary considerations, including “commercial success, industry praise, and copying” can demonstrate nonobviousness. It went on to state that it is “unclear whether certain other factors such as long felt but unsolved needs and failure of others apply in the design patent context.”
This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.
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