Fed Circ vetoes key design patent test after rare en-banc review
US Court of Appeals overrules Rosen-Durling validity test in LKQ v GM Global in controversial precedential opinion | Amici curiae speaking out against the move included INTA and other major organisations | Verdict marks loss for GM in vehicle fender dispute.
The US Court of Appeals for the Federal Circuit has overruled an established design patent test used to assess the nonobviousness of design patents, delivering a precedential decision that is set to kick up dust.
The en banc court issued its precedential opinion yesterday, Tuesday, May 21, in LKQ Corporation v GM Global Technology Operations, throwing out the longstanding Rosen-Durling test and applying “the same conditions for patentability that apply to utility patents”.
The 1982 Rosen-Durling test—which arose from two pieces of case law, In re Rosen and Durling v Spectrum Furniture—comprises two steps for challenging the validity of a claimed design.
The first step is to determine whether a primary prior art reference design is “basically the same” as the patent design considered as a whole.
If not, the challenger must proceed with further art to account for any differences between the reference design and the patented design using additional prior art “so related” to the primary reference.
The case on which this test was disputed centres on a dispute between auto parts firm LKQ Corporation and automotive manufacturer GM Global Technology Operations (the R&D subsidiary of General Motors) over the design of a front vehicle fender (wing).
Essentially, LKQ argued that GM Global infringed one of its designs used in GM’s 2018–2020 Chevrolet Equinox.
But this is one of those cases where the significance of the outcome overtakes the original dispute, with its potential impact on not only design patents, but also counterfeits, being mooted.
In a January 2023 decision, the appeals court explained that by applying the tests established in Rosen-Durling, the Patent Trial and Appeal Board (PTAB) found that LKQ “failed to identify a sufficient primary reference, and therefore failed to prove obviousness by a preponderance of the evidence” of GM’s patent.
In its verdict yesterday, a full panel of judges overturned the 2023 decision after being granted a rare en banc review in June that year.
The panel concluded that Rosen-Durling is “improperly rigid” and “out of keeping with the Supreme Court’s general articulation of the principles underlying obviousness, as well as its specific treatment of validity of design patents.”
A rethink of Rosen-Durling
The principal question presented was whether Supreme Court precedent, including KSR International v Teleflex (2007), should prompt the court to rethink the Rosen-Durling test used to assess nonobviousness of design patents.
“We answer in the affirmative,” wrote Circuit Judge Kara Farnandez Stoll, “and overrule the Rosen-Durling test requirements that the primary reference must be ‘basically the same’ as the challenged design claim and that any secondary references must be ‘so related’ to the primary reference that features in one would suggest application of those features to the other.
“We adopt an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents, as well as Supreme Court precedent which suggests a more flexible approach than the Rosen-Durling test for determining nonobviousness.”
But there were dissenting opinions. For example, in a separate concurring opinion, Circuit Judge Alan Lourie questioned whether overruling the test was really necessary.
“Perhaps, in the fullness of time and in light of KSR, it can be seen that Rosen and Durling may have used overly strong language,” he wrote. “But, ‘overruled’? It only needed to be modified. Overruling is destabilising.
“Courts should, if possible, rule in modest steps, not abrupt acts of overruling.”
Uncertainty concerns
LKQ originally petitioned for inter partes review (IPR) of a patent held by GM Global (US number D797,625), directed to an “ornamental design for a vehicle front fender”, which GM Global supplied to LKQ.
The Patent Trial and Appeal Board (PTAB) decided that LKQ had not demonstrated obviousness, at which point LKQ appealed to the Federal Circuit along with co-appellee Keystone Automotive Industries, distributor and marketer of automotive equipment and accessories.
The IPR attracted 17 amici curiae briefs, including from the International Trademark Association (INTA), which voiced its concerns over the IPR in its brief filed in October 2023 urging the appeals court to maintain the Rosen-Durling test.
Other organisations sharing that view included the Hyundai Motor Company and Kia Corporation; the Alliance For Automotive Innovation and Rivian Automotive; Apple; the Industrial Designers Society of America; and Ford Motor Company.
The panel acknowledged such concerns in its decision, but ultimately disagreed, referencing Graham v John Deere (1965).
“We recognise that GM and several amici have raised concerns as to the uncertainty that may result from overruling the Rosen-Durling test and applying a new test,” wrote Judge Stoll.
“GM argues that eliminating the test will ‘revert to a rudderless free-for-all [and] will increase confusion, disrupt settled expectations, and leave lower courts and factfinders without the necessary guidelines to properly conduct the obviousness analysis.’
“We do not agree. The Grahamfour-part obviousness test for utility patents has existed for a very long time and there is considerable precedent from which the PTO and the courts can draw when assessing obviousness in the design patent context.”
In a footnote, the court added that “it is possible that the rigid requirements of Rosen-Durling have, to date, prevented the development of a substantial body of case law considering the application of secondary considerations to obviousness analyses of design patents.”
Representing LKQ was Mark Lemley of Lex Lumina; and representing GM Global was: Joseph Herriges of Fish & Richardson.
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