Obviousness Test for Design Patents Unchanged
Published: February 2, 2023
Design patents and utility patents are two different things. Design patents protect ornamental designs, such as the shape of a perfume bottle or the design on flatware. Utility patents protect four categories of functional inventions: machines, articles of manufacture, compositions of matter, and processes (methods).
To be patentable, however, both designs and functional inventions must satisfy two requirements. First, they must be novel (i.e., unique and different). Second, they must be nonobvious over the prior art (similar inventions that existed before the patent application was filed and are known to the public).
Recently, in LKQ Corp. v. GM Global Technology Operations LLC (Jan. 20, 2023), the Federal Circuit Court of Appeals clarified that a key Supreme Court case decided in 2007, KSR International Co. v. Telflex, Inc., 550 U.S. 398, does not alter the existing test for obviousness of a design. In KSR, the Supreme Court addressed the then-existing test for obviousness of utility inventions. That test, referred to as the TSM test, required teaching, suggestion, or motivation to combine prior art references to find the invention obvious. The KSR court held that the TSM test was too rigid and that courts should be more flexible in determining obviousness.
The LKQ case involves a challenge by LKQ to the validity of a design patent owned by GM. The patent covered a design for a vehicle front fender. LKQ had licensed the patent from GM, but when the license was not renewed, GM accused LKQ of patent infringement. LKQ filed a petition for inter partes review in the Patent Trial and Appeal Board, arguing that GM’s patent was invalid on the grounds that it was not novel and was obvious.
The Board ruled against LKQ, finding that GM’s design was both novel and nonobvious. The Board found that the design was novel as it was different in appearance from the prior art patent that LKQ had relied upon, such that an ordinary observer would not purchase one product thinking it was the other. The Board held that LKQ failed to show obviousness because the patent it had relied upon was not a proper primary reference as required by the Federal Circuit’s test for obviousness of a design.
On appeal, the Federal Circuit affirmed the Board’s decision. The appellate court held that GM’s patent was novel because the ordinary observer would not view GM’s design and the prior art design as substantially the same. The court held that GM’s patent was nonobvious under a longstanding two-part test based on two Federal Circuit cases, Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (1996) and In re Rosen, 673 F.2d 388 (1982). In the first step, a primary reference (referred to as a Rosen reference), which has “basically the same” characteristics as the claimed design, considering the design as a whole, must be identified. If a primary reference exists, then the second step is an analysis of whether an ordinary designer would modify the primary reference to achieve the claimed design. If no primary reference can be identified, however, there is no second step, and the claimed design is nonobvious. The court held that the prior art patent cited by LKQ was not a proper primary reference because it was not “basically the same” as GM’s design, and, therefore, GM’s patent was nonobvious.
LKQ also argued that KSR had implicitly overruled the two-part test of Durling and Rosen. The appellate court stated that it had no authority to overrule Durling or Rosen, that KSR did not address design patents at all, and that the Federal Circuit had decided over 50 appeals since KSR, relying on Durling and Rosen.
In a separate part of the opinion, one of the Federal Circuit judges further addressed LKQ’s argument that Durling and Rosen had been overruled by KSR. Judge Lourie emphasized that utility and design patents are very different; they protect different things, and their claims are construed differently. The determination of obviousness for a design patent involves different factors that are considered in a utility patent. The Supreme Court did not even mention design patents, and KSR has a little relevance to design patents. Judge Lourie concluded:
“….the Supreme Court, in KSR, reviewing a decision involving a utility patent, did not address the basic concept of beginning an obviousness analysis in design patents by looking for a ‘something in existence.’ And, especially, it did not overrule Rosen.”