Obviousness for Designs is Now the Same as Inventions/Utility Patents

In LKQ Corp. et al. v. GM Global Technology Operations LLC, the Federal Circuit held, on rehearing en banc, that obviousness of a patented design is determined based on the four-part obviousness test used for utility patents. The court overruled the rigid rule of finding a primary reference that was basically the same as the claimed design and a secondary reference that must be so related to suggest the modification of features to arrive at the claimed design.

GM Global Technology LLC (GM) owned , which claimed a vehicle fender design. This design was used in GM’s 2018–2020 Chevrolet Equinox. LKQ Corporation filed a petition for Inter Partes Review of GM’s D’625 patent, alleging it was obvious based on alone or as modified by a promotional brochure depicting the design of the front fender on the 2010 Hyundai Tucson (Tucson).

The Patent Trial and Appeal Board (Board) decided there were differences from the prior art, including “(1) the wheel arch shape and the terminus; (2) door cut line; (3) protrusion; (4) sculpting; (5) inflection line; (6) the first and second creases; and (7) the concavity line,” which “affect the overall visual impression of each design such that they are not substantially the same." The Board then utilized the established - test to determine whether the claimed design would have been obvious. Under the test, first, requires that, “[b]efore one can begin to combine prior art designs . . . one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’” In addition, under , any secondary references 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.” The Board then determined that, in view of the differences, Lian did not produce the same visual impression as the patented design.

The Federal Circuit granted rehearing en banc to consider the proper test for obviousness of a claimed design and vacated the final written decision of the Board as to the nonobviousness decision and remanded. The en banc court observed that a design patent protects a “new, original and ornamental design for an article of manufacture.” Under the Patent Act, the statutory conditions relating to patents for utility inventions apply to design patents unless indicated otherwise. The statutory language of 35 U.S.C. for obviousness states:

“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed . . . , if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”

The Supreme Court described the meaning of the obviousness statute in , for utility patents. There, the Court explained that, under § 103, these factual queries include “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.” In addition to these queries, secondary considerations, such as commercial success, long felt but unsolved needs and failure of others, may be important factors showing nonobviousness.

The court also pointed out that the Supreme Court dealt with nonobviousness standards in KSR International Co. v. Teleflex Inc., where the Court rejected a rigid application of the test for obviousness and explained that the Graham decision outlined a flexible approach to determining obviousness. 

Based on a review of a variety of considerations, the en banc court reasoned that the current test used for design patent obviousness did not adequately line up with precedent, in connection with both its framework and stringency. Accordingly, the en banc court held that the Rosen-Durling test was too rigid because it required a primary prior art reference to be basically the same as the claimed design, and any secondary prior art reference be “so related” to the primary reference. The court reasoned that the requirement—that a secondary reference be “so related” to the primary reference—contradicted the more flexible standard for obviousness set forth in § 103 and Supreme Court precedent.

Having overruled the Rosen and Durling test, the court held that obviousness of a design should be determined using criteria similar to those used for determining obviousness of a utility patent under 35 U.S.C. § 103 and application of the Graham factors. Applying the first Graham factor, the scope and content of the prior art is considered in view of the knowledge of an ordinary designer in the field of the relevant design. In addition, the court confirmed that the analogous prior art requirement should be employed when determining the obviousness of a claimed design. Similar to the definition of analogous art in the context of utility patents, analogous art for a design patent, the court explained, embraces art from the same field of endeavor as the design article of manufacture.

The court acknowledged that it was not outlining the full and precise contours of the analogous art test for design patents. For example, prior art designs in the same field of endeavor as the design article of manufacture will be considered analogous. In addition, “the primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.”

With respect to the second Graham factor of assessing the differences between the prior art and the claimed design, the court explained that the visual appearance of the claimed design is compared with prior art designs from the view of an ordinary designer in the same field. It also explained that, for design patents, a person of ordinary skill in the art is defined as an ordinary designer in the field of the claimed design. The third Graham factor, then, considers the knowledge of a designer of ordinary skill in the field of the relevant articles of manufacture.

Having determined the skill of an ordinary designer, the scope and content of the prior art and the differences between the prior art and the claimed design, the obviousness of the claimed design is assessed. The question is whether an ordinary designer in the field of the claimed design would have been motivated to alter the prior art design to produce the same general visual look as the claimed design. The court also reaffirmed that the focus of the inquiry is, on the whole, visual impression of the claimed design and not on selected individual features. According to the court:

“Where a primary reference alone does not render the claimed design obvious, secondary references may be considered. The primary and secondary references . . . must both be analogous art to the patented design. But there must be some record-supported reason (without hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.”

The court confirmed that, in step with Graham, obviousness for design inventions/patents nevertheless needs analysis of secondary considerations when evidence is submitted. According to the court:

“We do not disturb our existing precedent regarding the application of secondary considerations such as commercial success, industry praise, and copying to the obviousness analysis in design patents. It is unclear whether certain other factors such as long felt but unsolved needs and failure of others apply in the design patent context. We leave to future cases the determination of whether considerations such as long felt but unsolved need and failure of others will have significance to the obviousness inquiry in the design patent context.”

Because the court created a new test for determining obviousness of a claimed design, it vacated the Board’s prior holding of nonobviousness of the D’625 patent, and remanded back to the Board, applying the new framework for evaluating obviousness of a claimed design invention.

Judge concurred in the en banc court’s decision to vacate and remand the Board’s decision for it to reevaluate the validity of the claimed design. However, Judge Lourie disagreed with overruling In re Rosen, and , and indicated, to the extent that the Court’s shunned a rigid test, all that was needed was to make less rigid the Rosen and Durling tests.

Moving Forward

The Federal Circuit decision leaves many unanswered questions for design patent applicants or owners, opponents and litigants, as well as the federal courts, practitioners and even the U.S. Patent and Trademark Office.

For example, what is analogous art? The court held that analogous art for a claimed design is prior art in the same field of endeavor but did not foreclose that other art could also be analogous, presumably even from different fields of endeavor. It provided no guidance on how to determine legitimate prior art in other fields nor any guidance of how to determine the field of endeavor for a design invention.

Next, what is an acceptable motivation combine? The court provides no specific guidance with respect to motivation to combine except that there must be a record-supported reason why an ordinary designer in the field of the article of manufacture would have modified the primary prior art design with the feature from the secondary design to create the same overall appearance as the claimed design. Similar to obviousness for utility patents, the court made it a point to exclude hindsight from determining whether a claimed design would have been obvious. However, it fails to provide any structure for determining whether a motivation may be sufficient or how to identify when hindsight reasoning might be used. 

Finally, what are appropriate secondary considerations? The court observed that secondary considerations can include commercial success, industry praise and copying to show nonobviousness. However, it acknowledged that it was uncertain whether factors, such as long felt but unsolved needs and failure of others, apply in the design patent context.

What’s the net effect of the LKQ decision? Uncertainty for everyone, resulting in a requirement for every issue to be dealt with on a case-by-case basis by the courts and Patent Office. On the one hand, determining obviousness for design patents/applications has become more flexible, presumably weakening design patents. On the other hand, without clear guidance on what is analogous art, motivation to combine and secondary considerations, there are plenty of arguments to be made in response to assertions of obviousness.

Stay tuned . . .

is a partner in Manatt, Phelps and Phillip’s Intellectual Property Protection and Enforcement practice and is the author of Patent Prosecution: Law, Practice, and Procedure, 2024 Edition, and Constructing and Deconstructing Patents (2d Edition 2016).

LKQ Corp. et al. v. GM Global Technology Operations LLC, 102 F.4th 1280, 2024 USPQ.2d 926, 2024 WL 2280728 (Fed. Cir. 2024) (En Banc).

Id., 102 F.4th at 1288.

Id., 102 F.4th at 1289.

Id., 102 F.4 at 1289 (quoting Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)).

Id., 102 F.4 at 1289 (quoting Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996).

Id., 102 F.4th at 1291 (quoting 35 U.S.C. § 171(a)).

Id., 102 F.4th at 1291 (quoting 35 U.S.C. § 103).

Id., 102 F.4th at 1291 (quoting Graham v. John Deere Co. of Kansas City, for utility patents. 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

Id., 102 F.4th at 1291 (citing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007)),

Id., 102 F.4th at 1295.

Id., 102 F.4th at 1296.

Id., 102 F.4th at 1298.

Id., 102 F.4th at 1299.

Id., 102 F.4th at 1300.