When Is A Design Patent Invalid For Being Obvious?

The Federal Circuit Court of Appeal has granted a request for an en banc hearing to determine the proper standard for invalidity of design patents based on obviousness under 35 U.S.C. 103. The expected en banc decision, in LKQ Corp. v. GM Global Technology Operations (LKQ, will be the first en banc decision by the Federal Circuit in a patent case since 2018.

The focus of the rare en banc proceeding will be to clarify an apparent discrepancy between the current standard applied to design patent obviousness and the landmark U.S. Supreme Court decision in 2007, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

Prior to KSR invalidating a patent based on obviousness, it was required to identify one or more “prior art” references and the presence of a specific teaching, suggestion, or motivation (TSM) for modifying the prior art to arrive at the claimed invention. In other words, the TSM standard required that the motivation for combining prior art references be based on an existing teaching or suggestion, rather than the creativity of the person of ordinary skill in the art. In addition, the TSM standard limited prior art that could be considered in an obviousness analysis to art that was analogous to the field of the invention, and not beyond.

KSR discarded what it characterized as the ”rigid” TSM test in favor of a more “flexible and expansive” standard that did not limit the inquiry of the person of ordinary skill to the field of the invention or require a specific teaching or suggestion for the motivation for combining prior art references. Rather, KSR promulgated a broad and flexible standard for evaluating and analyzing obviousness, according to which “a combination of familiar elements made according to known techniques that yield familiar results,” regardless of the source of the prior art references or the availability of a written source of motivation, could be enough, absent contrary evidence, to render the subject patent claim obvious. In the decade and a half since KSR, courts have widely applied the KSR standard to utility patent cases but not to design patents. This has been the case even though KSR was not specifically limited to utility patents.

Rather, the design patent obviousness standard is still guided by two decades-old Federal Circuit decisions, In re Rosen, 673 F2d 388 (C.C.PA. 1982), and Durling v.Spectrum Furniture Co., Inc., 101 E3d 100 (Fed. Cir. 1996). Under what has become known as the “Rosen-Durling” standard, establishing invalidity for obviousness of a design patent requires a single primary reference with features essentially the same as the claimed design (the “Rosen” reference) and one or more secondary references that can modify the primary reference to arrive at the patented design. However, under Durling, these secondary references only qualify for consideration if they are sufficiently related to the patented 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.” Id. at 103.

It is therefore not surprising that many consider the Rosen-Durling standard —namely, its requirement for a primary reference that is nearly identical to the patented design, and secondary references in fields that are closely related to the field of the invention–as close to the TSM standard and in tension with KSR, which does not restrict the prior art to the field of the invention or require an identifiable TSM to provide the requisite motivation to combine the prior art references.

Courts’ reluctance to apply the KSR standard to design patents reflects the challenge of evaluating obviousness for design patents.

Over four decades ago, the Court of Custom and Appeals, the predecessor court to the Federal Circuit Court of Appeals, characterized determining obviousness of design patents as “not so easy,” and an “impossible issue.” In re Nalbandian, 661 F2d 1214, 1216 (C.C.P.A. 1981).

The question of whether and how KSR should replace or modify Rosen-Durling requires a consideration of some of the inherent differences between utility and design patents.

A key distinction between the two patent types is in the area of written description. A utility patent includes a description of the invention, which identifies the prior art, discusses the problems with the prior art in relation to the problem the invention seeks to solve, and provides details as to how the invention proposes to solve those problems.

Design patents, on the other hand, do not contain a written description and are limited to drawings or pictures of the inventive design depicted from different angles that identify the ornamental aspects of the design as part of the overall product.

In addition to the written description distinction, utility and design patents have different legal standards for reaching a conclusion of obviousness. In the case of utility patents, the “all elements” rule requires that each element of the patent claim be literally or equivalently present in the prior art combination. See TIP Sys., LLC v. Phillips Ớ Brooks/Gladwin, Inc., 529 E.3d 1364, 1379 (Fed. Cir. 2008) (explaining that under the “all elements” rule, to find patent infringement of a utility patent, the accused device must contain each limitation of the claim). With respects to design patents, on the other hand, it is the overall impression of the product, rather than the individual patent protected ornamental aspects of the design, that is compared with the prior art combination to determine obviousness. See, Durling, 101 F.3d at 103 (stating that in a design patent obviousness analysis, the inquiry is whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design).

Therefore, in contrast to utility patents, the “primary design” standard must be focused on the obviousness of the overall appearance of the claimed design, rather than presence of individual aspects, which, under the all elements rule, would be the focus of  inquiry for utility patents.

Proponents of maintaining the current design patent obviousness standard point to the details of Rosen and Durling as evidence that it is flexible and expansive enough so as not to be inconsistent with the mandate of KSR. In Rosen the issue was obviousness of patentees table design with the prior art applied by the PTO to evaluate obviousness of the design being a coffee table. The appeal court found that the patent office had improperly combined various features from all the references in hindsight, i.e., in the light of appellant’s disclosure, and not because of suggestions from the references.

Nevertheless, Rosen did not limit the realm of knowledge of the “ordinary designer” to table designs, but rather conceded the ordinary designer’s knowledge includes all contemporary furniture. They also note that Durling allows sufficient creativity and flexibility for the ordinary designer to modify the primary reference based on secondary references that are sufficiently related to the primary reference design so long as the appearance of certain ornamental features in the secondary references would suggest the application of those features to the primary reference.

These proponents additionally argue that the KSR standard, while suitable for utility patents, is not practical or applicable for design patents, which are based on aesthetic rather than utilitarian considerations. In that regard, they point out that while the presence of a written description in utility patents focuses the obviousness inquiry on the problem in the prior art and the proposed solution of the invention, design patents contain no such discussion and there is thus no guide to the ordinary designer on an identifiable guide or path to solving a problem. Rather, the realm of inquiry of the designer is only limited by the designer’s imagination. Therefore, allowing the ordinary designer to combine various references from unrelated fields would render most design patents obvious since there is no guide or direction, other than the subjective creativity of the ordinary designer, to combine references.

The tension between the two points of view is evident in the LKQ decision itself, where two of the three panel judges wrote concurring opinions that reflected sharply divergent views on whether KSR is in tension with Rosen-Durling when it comes to the obviousness standard for design patents. In his “additional views,” Judge Lourie wrote to announce his disagreement with advocates of extending the KSR standard to design patents.

According to the opinion, utility patents and design patents are distinct types of patents with utility patents protecting useful inventions that concern processes, machines, manufactures, and compositions of matter, while design patents protect ornamentation and appearances. He explained that the considerations involved in determining obviousness are different in design and utility patents, with utility patent considerations including unexpected properties, utility, and function, while design patent considerations focus on overall appearance, visual impressions, artistry, and style of ornamental subject matter. He notes that while ornament is in the eyes of the beholder, functional utility is an objective criteria.

In Judge Lourie’s view, while Rosen may have overemphasized the requirement that the primary reference have design characteristics that are “basically the same” as those of the claimed design, this standard is justified in that an obviousness analysis necessarily requires a comparison between the patented design and a prior art reference. Judge Lourie concludes that, regardless of any infirmity in the Rosen-Durling standard, KSR, which dealt with utility patents, did not address concepts unique to design patents and did not intend to overrule Rosen-Durling. See LKQ Corp. u GM Global Tech. Ops. LLC, Fed. Cir. (2023), WL 328228, 8-9.

Judge Stark, another judge on the LKQ appeal panel, took a different view, emphasizing significant points of tension between the Rosen-Durling and KSR standards, with the most glaring being the requirement of Rosen-Durling to identify a single reference that is substantially identical to the patented design and that failure to identify such a reference would preclude a finding of obviousness. This, according to Judge Stark, conflicts with the KSR instruction for taking a broader view that includes “interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.”

Another point of contention between the two standards noted by Judge Stark is in step two of the Durling test, which requires the secondary references to be “so related” to the identified Rosen reference that “the appearance of certain ornamental features in one would suggest the application of those features to the other.” This, according to Judge Stark, is inconsistent with the KSR mandate that “Rigid, preventative rules that deny factfinders recourse to common sense.” Id. at 7-14.

In conclusion, the coming en banc decision of the Federal Circuit holds the promise of clearing up the existing uncertainty and ambiguity regarding disparate treatment of utility and design patents concerning the obviousness standard. At the same time, it has caused anxiety among design patent holders, patent practitioners, and investors who are concerned that extending the KSR standard to design patents will make many existing patents vulnerable to invalidity challenges and thus reduce the value of design patents.

Dr. Dariush G. Adli is the founder and President of ADLI Law Group, P.C. He specializes in Patent, Trademark, and Copyright litigation and transactions. He can be reached at [email protected]