The Court of Appeals of the Federal Circuit (CAFC) recently issued an en banc ruling regarding design patent obviousness in LKQ Corp. v. GM Global Tech. Operations LLC,1 its first en banc ruling in six years and only the second related to design patents (the first being Egyptian Goddess, Inc. v. Swisa Inc.2). A previous OBWB newsletter article presented details of the LKQ case. The LKQ decision established that the "Rosen-Durling" test, the standard assessment of obviousness in design patents since 1996, was "improperly rigid" and contradicted the precedent set by the Supreme Court in well-known cases such as Smith v. Whiman Saddle Co.,3 Graham v. John Deere Co.,4 and KSR International Co. v. Teleflex Inc..5 Instead of the Rosen-Durling test, the CAFC indicated that the obvious or non-obviousness of design patents should be considered based on the familiar Graham factors, as is currently done for utility patents.
The USPTO responded quickly to the en banc ruling with updated guidance for considering obviousness in newly-filed design patent applications. This article focuses on this guidance and how the decision by the CAFC closely unifies the law concerning obviousness in design patents and utility patents, despite introducing uncertainty in the short term.
Examination Procedure
The test for obviousness of a utility patent involves considering the claimed invention in view of the three "Graham" factors. The first factor relates to determining the scope and content of the prior art. Ascertaining the scope and content of the prior art for a design patent includes identifying a primary reference, which is likely the prior art that most closely resembles the claimed design. The only requirement of the primary reference is that it is at least analogous art. This guidance is essentially equivalent to the current practice of examining utility patents, where only references that are at least analogous art with respect to the claimed invention are proper to consider as a basis for obviousness.6 According to the CAFC, the requirement of identifying a primary reference is intended to protect against hindsight, where designs that are less visually similar will not be as strong for establishing obviousness. As next discussed, however, establishing prior art as analogous may not be straightforward in design patents.
The second Graham factor involves determining the differences between the prior art and the claims at issue. Although not explicitly stated in the guidance provided by the USPTO, the CAFC ruling makes clear that the claimed design and the prior art should be considered on the basis of their "overall visual appearance[s]" rather than on the exact similarity (or lack thereof) of individual elements. This recommendation also follows the current examination practice for utility patents in considering the differences between the prior art, where it is required that both the claimed invention and the prior art references are considered as a whole rather than according to isolated differences or improvements.7
The third Graham factor considers the level of ordinary skill in the pertinent art. The guidance of the USPTO echoes the CAFC en banc ruling and establishes that the proper vantage point for considering whether a design is obvious or not is from the perspective of "a designer of ordinary skill who designs articles of the type being examined." On the surface, this would appear to be in alignment with what is required in assessing obviousness in utility patents, where the perspective should be considered from a person "who is presumed to have known the relevant art at the relevant time."8 However, utility patents generally provide several avenues of inquiry for resolving the level of ordinary skill in the art that are not available in the examination of design patents, and this difference may impact the uniformity of the examination procedure across design and utility patents.
Design patent examiners are directed to evaluate the obviousness of a design patent application based on the outcome of investigating the three Graham factors. Similar to the practice of examining utility patents, multiple references may be included in the analysis of obviousness of a design while abiding by the requirement that each reference satisfies the criteria of being at least analogous art. Further, just as for utility patents, the motivation to combine the features of separate references need not be provided by the references themselves. However, the guidance states that, "there must be some record-supported reason (without impermissible hindsight)," which establishes a line of reasoning as to why a designer of ordinary skill in the art would be motivated to combine the references to achieve the claimed design. Examples of record-supported reasons provided by the CAFC ruling include, "ordinarily skilled designer's experience, creativity," among more vague examples, as well as "what market demands and industry customs exist" and "which ornamental features are commonplace." The required record-supported reason thus appears directed towards what the M.P.E.P. states is the "key to supporting any rejection under 35 U.S.C. 103," that is, "the clear articulation of the reason(s) why the claimed invention would have been obvious."9
Uncertainty
The en banc LKQ decision introduces a measure of uncertainty to both the validity of existing design patents and the difficulty in obtaining and enforcing future design patents. Perhaps the greatest uncertainty involves the first Graham factor, i.e., ascertaining the scope and content of the prior art. Specifically, there is a degree of uncertainty in defining what is and is not "analogous" art. In determining whether a reference is analogous art, the USPTO considers a two-part test for utility patents: (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. While it may not be difficult to apply the first part of this two-part test to design patents, the second part poses a unique challenge. In fact, the CAFC acknowledges this issue by pointing out in the en banc decision: "[u]nlike a utility patent, a design patent itself does not clearly or reliably indicate 'the particular problem with which the inventoris involved.'" Indeed, the M.P.E.P. explicitly states, "[a]ttention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by an applicant are of no concern in design cases, and are neither required nor even permitted. Function and structure fall under the realm of utility patent applications."10 Compounding the confusion, the CAFC explained that, "at oral argument, the parties disputed whether an ornamental design for an article of manufacture could be viewed as solving a problem." Consequently, it remains to be seen exactly how a prior art reference may be deemed analogous to a claimed design, if it is not in the same field of endeavor as that of the claimed design. The CAFC has intentionally left this question unanswered, allowing for future cases to "develop the standard of this application." Meanwhile, the USPTO has stated that a compilation of examples of analogous art will be built as time goes on in order to help guide design examiners.
The impact of the CAFC ruling regarding application of the third Graham factor in determining the obviousness of a design -- resolving the level of ordinary skill in the art -- is unclear for similar reasons. For utility patents, the M.P.E.P. sets forth several aspects of a given field of endeavor that may be investigated to determine the level of ordinary skill in the art, including, (A) "type of problems encountered in the art;" (B) "prior art solutions to those problems;" (C) "rapidity with which innovations are made;" (D) "sophistication of the technology; and" (E) "educational level of active workers in the field."11 None of these factors easily translate to aspects of design that may be investigated to resolve a level of skill, especially given that the functional and/or structural features of the design are explicitly not permitted to be considered as part of the patentable aspects of a design patent. Therefore, presumably, the standard of application of the third Graham factor must also be decided in future cases based on their particular facts.
Conclusion
The en banc LKQ decision has introduced a significant change to the substance and procedure at both the USPTO and in the courts for determining obviousness in design patents. Ultimately, the decision brings greater unity across the meaning of "obvious" in the context of examination and validity analysis for both design and utility patents. At the same time, discarding the decades-old Rosen-Durling test has introduced uncertainty over the validity of existing design patents and may add potential difficulties to obtaining future design patents. It is possible that the USPTO's updated guidance will increase the rate at which design patents are rejected under 35 U.S.C. § 103 and/or make such rejections more difficult to overcome.
Despite these concerns, the CAFC concluded its discussion with a strong statement intended to reduce concerns over these short-term uncertainties: "This test [involving consideration of the Graham factors] has proven workable for utility patents and we see no reason why it would not be similarly workable for design patents. As with any change, there may be some degree of uncertainty for at least a brief period, but our elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent." Accordingly, we must closely monitor future cases to determine the ultimate effect on design patent practice.
Footnotes
1. 102 F.4th 1280 (Fed. Cir. 2024).
2. 543 F.3d 665 (Fed. Cir. 2008).
3. 148 U.S. 674 (1893).
4. 383 U.S. 1 (1966).
5. 550 U.S. 398 (2007).
6. See Manual of Patent Examining Procedure (M.P.E.P.) § 2141.01.
7. M.P.E.P. § 2141.02.
8. M.P.E.P. § 2141.03.
9. M.P.E.P. § 2141 III.
10. M.P.E.P. § 1503 ¶ 15.41.
11. M.P.E.P. § 2141.03
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