En-Banc Federal Circuit Redefines Forty-Year-Old Design Patent Invalidity Standard

A May 2024 article1 in this publication discussed a pending en-banc session of the Federal Circuit Court of Appeal, which has plenary jurisdiction over all patent appeals, to consider continued viability of a four-decade standard for design patent invalidity based on obviousness. The appeal court has now issued its long awaited ruling (LKQ)2 and has overruled its forty-three-year precedent, replacing it with a more flexible standard in line with the 2007 Supreme Court decision in KSR,3 which was a utility patent case. The decision is expected to have wide-reaching consequences, including a new standard for examination of design patents by the U.S.

Patent and Trademark Office (USPTO), and how businesses and individual inventors will apply for them. This article reviews the background of the decision, the reasoning behind it, and its likely consequences. As detailed in the May article, the design patent obviousness standard at the time of the LKQ decision was still guided by two decades-old Federal Circuit decisions, Rosen4 and Durling.5 Under what became known as the “Rosen-Durling” standard, establishing invalidity based on obviousness of a design required identiffication of a single primary reference with features “essentially the same” as the claimed design (the “Rosen” reference) and one or more secondary references that could modify the primary reference to arrive at the challenged design. However, according to Durling, these secondary references would not qualify for consideration unless they were “sufficiently related” to the claimed design so that “an ordinary designer would have modified the primary reference to create a design with the same overall visual appearance as the claimed design.”6

That the divergence between the KSR standard, which, as noted above, concerned a utility patent, and the Rosen-Durling standard, which applied to design patents, survived for the better part of two decades is a testament to the inherent differences between the two types of patents and, therefore, the acceptance (or at least tolerance) of courts for the different standards of obviousness-based invalidity for the two patent types. Design patent protection applies to aesthetic and ornamental aspects of products.7 Utility patents, in contrast, cover the structure, operation, function, and use of products and processes.8 Moreover, while utility patent infringement and validity are viewed through the eyes of a person of ordinary skill in the art of the invention, design patent infringement is determined under the ordinary observer test, and design patent obviousness is viewed from the perspective of an ordinary designer in the field of the claimed design. Despite that significant distinction and their very different nature, the U.S. Patent Act does not make any distinction between the two in terms of validity laws. In other words, validity laws apply equally to both types of patents.9

More specifically, 35 U.S.C. § 103 of the Patent Act precludes a patent from being issued if, as of the effective filing date of the patent, the differences between the invention and the prior art would have been obvious. In 1966, the Supreme Court, interpreting the obviousness law, issued the Graham10 decision, which articulated a standard for applying and determining obviousness. According to Graham, obviousness of an invention in light of the prior art should be determined by reference to the following: (1) the scope and content of the prior art; (2) the differences between the prior art and the claim at issue; (3) the level of ordinary skill in the art of the invention; and (4) secondary considerations of non-obviousness.11 In the case of utility patents, obviousness is determined from the perspective of a person of ordinary skill in the field of the invention.12 For design patents, that determination is made by reference to an ordinary designer in the field of the design.13

An obviousness inquiry also requires a showing of a motivation to combine and/or modify the prior art references discussed above to arrive at the claimed design. To prevent a conclusion of obviousness based on hindsight, i.e., the inventive design itself, courts over time required that the motivation be shown based on a specific teaching, suggestion, or motivation (TSM) to combine various existing elements of the prior art to arrive at the claimed invention.14 This interpretation became more rigid with the requirement that the patent challenger point to a writing that specifically suggested modifying and/ or combining the prior art references. This standard was considered overly strict by many who believed that the person of ordinary skill or the ordinary designer should be credited with some degree of creativity and curiosity to make various prior art combinations and/ or modifications to a design without needing to point to a specific teaching, suggestion, or motivation for doing so.

KSR aimed to replace the TSM test with a more flexible and expansive approach whereby the person of ordinary skill in the art of the invention would be credited with sufficient creativity and curiosity to find a motivation to combine and/or modify prior art references in ways other than meeting the rigid TSM test. Under KSR, patent claims can be determined to be obvious based on such factors as, for example, design incentives and market forces to solve a particular problem.15 Although KSR ushered in a new era for evaluation and analysis of obviousness based patent invalidity, the standard was not extended to design patents, which continued to be analyzed for obviousness under the restrictive Rosen-Durling standard.

Design Patent Invalidity Standard

In reviewing the history of the standard for design patent obviousness, the LKQ court reached back to a late nineteenth century decision by the U.S. Supreme Court. In that case, the Court had in fact promulgated a standard for design patent obviousness that was very much in line with the KSR standard. The subject of Whitman Saddle16 was a patented design for a horse saddle, the validity of which had been challenged in view of two prior art saddles known as the Granger tree and the Jenifer tree (saddle frame).17 Back then, the Supreme Court noted that the patented design was a combination of the front half of one prior art saddle and the back half of another, with a modification to the back half. In concluding that the patent design was invalid based on obviousness, Whitman Saddle explained that “it was customary for saddlers to vary the shape and appearance of saddletrees in numerous ways according to the taste and fancy of the purchaser.”18

Addressing the combination of the Granger and Jenifer saddles, the high Court determined that “nothing more was done in this instance than to put the two halves of these saddles together in the exercise of the ordinary skill of workmen of the trade, and in the way and manner ordinarily done.” With respect to the modification of the combination, the decision added, “the addition of a known cantle (the raised curved part at the back of a horse’s saddle) to a known saddle, in view of the fact that such use of the cantle was common,” did not make the claimed saddle design inventive.19 The Supreme Court thus concluded that the patented design’s contribution of combining the two known saddle designs was an “exercise of the ordinary skill of workmen of the [saddle] trade.”20

This nineteenth century decision is indeed very much in line with KSR and inconsistent with the Rosen-Durling test for design patent obviousness.21 In particular, the LKQ court concluded that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design; and (2) that any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other to be undisguisable in practice from the TSM standard that KSR had discarded in favor of a more flexible and expansive test.22

New Standard for Design Patent Invalidity

Having decided to overrule23 the Rosen-Durling invalidity test in favor of a standard more in line with KSR, the en-banc LKQ appeal court, going through the Graham factors, held that the first Graham factor, “scope and content of the prior art,” needs to be an analogous art to that of the claimed design. Analogous art, in turn, is to be determined by reference to (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 area of design, whether it is reasonably related to the particular design with which the inventor is involved.24

The decision held that the second Graham factor, namely, the differences between the prior art and the challenged design, should be focused on “sameness of appearance” from the perspective of an ordinary designer in the field of the article of patented design. With respect to the third Graham factor, “the level of ordinary skill in the art,” the court held that this would be an ordinary designer in the field of the claimed design.25 Next, there needs to be a determination as to whether an ordinary designer would have had the motivation to combine and/or alter the prior art design(s) to create the same overall visual impression as the claimed design. The decision held that such inquiry should focus on the visual impression of the claimed design as a whole and not on selected individual features. The en-banc appeal court stated that if a primary reference alone does not render the claimed design obvious, other, secondary references may be used and combined with the primary reference so long as the challenger is able to articulate reason to show that an ordinary designer in the field would have modified the primary reference to create the claimed design.26

Finally, the so-called “secondary considerations” can be used to show non-obviousness. In particular, such factors can include commercial success, praise in the industry, copying, long felt but unsolved needs, or failure of others.27

Likely Impact of the Decision

The new standard set by the en-banc Federal Circuit will likely make it more difficult to obtain and easier to invalidate claimed designs. There is a level of uncertainty as to the exact standard since the decision left it to future courts to refine and develop a standard for identifying “non-analogous” art to qualify for consideration as potentially invalidating prior art reference and for finding the requisite motivation to combine prior art references.

ENDNOTES

(1) Dariush Adli, When Is a Design Patent Invalid for Being Obvious?, Orange County Lawyer, May 2024, 29-31.

(2) LKQ Corporation v. GM Global Technology Operations LLC,102 F.4th 1280 (Fed. Cir. 2024).

(3) KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).

(4) In re Rosen, 673 F.2d 388 (CCPA 1982).

(5) Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996).

(6) Id. at 103.

(7) 35 U.S.C. § 171(a).

(8) 35 U.S.C. § 101(a).

(9) LKQ, 102 F.4th at 1291.

(10) Graham v. John Deere Co., 383 U.S. 1 (1966).

(11) Id. at 17-18.

(12) 35 U.S.C. § 103.

(13) Apple, Inc. v. Samsung Elects., Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012).

(14) LKQ, 102 F.4th at 1291.

(15) KSR, 550 U.S. at 417, 421.

(16) Smith v. Whitman Saddle Co.,148 U.S. 674, 680. (1893).

(17) Id.

(18) Id. at 681.

(19) Id.

(20) LKQ 102 F.4th at 1292.

(21) Id. at 1293.

(22) Id. at 1294-95.

(23) Id. at 1295.

(24) Id. at 1297.

(25) Id. at 1298-1300.

(26) Id. at 1299.

(27) Id. at 1300.

Dr. Dariush G. Adli is the founder and President of ADLI Law Group, P.C. The firm specializes in Patent, Trademark and Copyright litigation and registration and Business Litigation.