LITIGATION TRENDS 2025 | 91 T O C E M P E S G A N T I I P C A P R O W C S P O R T C O N T A C T I N T A P P P A T C C L S E C patents and established a new approach. LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.45h 1280 (Fed. Cir. 2024) (en banc). The en banc court reheard an earlier Federal Circuit panel decision affirming a Patent Trial and Appeal Board (“Board”)finding that a design patent was not unpatentable as anticipated or obvious. The en banc court vacated the PTAB’s obviousness determination and remanded for further proceedings consistent with the new approach in the opinion. GM owns a design patent for an automobile fender. LKQ Corporation filed a petition for an inter partes review--an administrative procedure before the Patent Trial and Appeal Board for challenging the validity of patent claims. The Board, applying a long-established test (the Rosen-Durling test) for obviousness of design patents, rejected LKQ’s obviousness challenge. A three-judge panel of the Federal Circuit affirmed that decision, prior to the Federal Circuit granting en banc rehearing. The Rosen-Durling test for assessing obviousness of design patents is a twostep test. At step one, “a Rosen reference” is identified that has, in a single reference, design characteristics of the claimed design. Durling, 101 F.3d at 103; Rosen, 673 F.2d at 391. At step two, other references that are “so related…that the appearance of certain ornamental features in one would suggest the application of those features to the other” may then be used to modify the primary, Rosen reference “to create a design that has the same overall visual appearance as the claimed design.” Durling, 101 F.3d at 103. In sum, the Rosen-Durling test relies on identifying a single reference that discloses a very similar design followed by limited modifications from highly related references to arrive at the claimed design. On en banc rehearing, the court expressly reconsidered whether the Rosen-Durling test for determining the nonobviousness of design patents was still good law in light of Supreme Court decisions relating to obviousness, including the 2007 KSR International Co. v. Teleflex Inc. case, barring the use of rigid rules in the obviousness analysis for utility patents. The court determined that it was not and adopted an approach consistent with Congress’ statutory scheme under § 103, that applies the same conditions for patentability for design and utility patents. LKQ holds that obviousness of utility patents and design patents must be grounded on the same inquiry, which is by consideration of the Graham factors – “the scope and content of the prior art,” “differences between the prior art and the claims at issue,” and “the level of ordinary skill in the pertinent art,” as well as “secondary considerations” that may be relevant as “indicia of obviousness or nonobviousness.” The first factor, the “scope and content of the prior art” turns on whether references are analogous art that can be applied as prior art. While the court expressly declined to “delineate the full and precise test of the analogous art test for design patents,” it determined that “[p]rior art designs for the same field of endeavor as the article of manufacture will be analogous” and that whether a prior art design is analogous to the claimed design is a fact question to be addressed on a case-by-case basis. The en banc court left development of the application of this standard to future cases. LKQ, 102 F.4th at 1297-98. Looking forward, there is much for the lower courts to work out in applying the new test for design patent obviousness. Nonetheless, it is clear that fact-finders unconstrained by the rigid Rosen-Durling test will be more likely to find a design patent unpatentable or invalid. As such, design patent owners may wish to consider having the Patent Office reevaluate their design patents by seeking ex parte reexamination or reissue. Likewise, parties interested in invalidating design patents may also wish to consider seeking ex parte reexamination or inter partes review under the new test. P A T Patent Litigation 90 | Weil, Gotshal & Manges LLP
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