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In a recent precedential en banc opinion, the Court of Appeals for the Federal Circuit (CAFC) overruled the existing framework for analyzing obviousness in design patents. See, LKQ Corporation, Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir., May 21, 2024). The CAFC reasoned that the current framework for evaluating design patents (patents which protect nonfunctional, ornamental aspects of a product) is inconsistent with U.S. Supreme Court precedent for evaluating utility patents (patents which protect the functional aspects of a product or process). This ruling will, at least in the short term, add uncertainty to how prior art may be applied against a design patent. However, more importantly, it also now opens the door to creative strategies for both prosecuting and litigating design patents.

When patents are examined or challenged in view of prior art, the two major considerations are novelty and obviousness, which are governed by two different statutes, 35 U.S.C. § 102 and 35 U.S.C. § 103, respectively. A design is not novel (and therefore unpatentable) when a prior art reference teaches substantially the same design as the claimed design. Obviousness tends to be less clear-cut, and comes into play when no single prior art reference substantially teaches the claimed design. Typically, obviousness challenges involve combining elements of two or more prior art designs to arrive at the claimed design. The LKQ Corporation decision deals squarely with the obviousness analysis, and not novelty.

The long-standing obviousness framework for evaluating design patents which the CAFC has now overruled is the two-step Rosen-Durling test. This test requires identifying 1) a threshold primary prior art design which is “basically the same” as the claimed design and 2) one or more secondary prior art designs “so related” that they would suggest application of their design features to the primary design. Under the threshold first step, if a prior art design which is “basically the same” as the claimed design is not identified, then the inquiry ends and the claimed design is deemed patentable.

The CAFC took issue with both the rigid threshold first step of the Rosen-Durling test, and the “so related” requirement of the second step. In formulating its decision, the CAFC recognized Supreme Court precedents which had established a more flexible approach for determining obviousness of utility patents. These precedents include Graham v. John Deere Co., 383 U.S. 1 (1966) and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), which have not been explicitly followed in evaluating design patents, but which have long been the basis for evaluating obviousness of utility patents. Under Graham, four factual inquiries are made to determine whether a claimed invention as a whole would have been obvious to a person of ordinary skill in the art, namely 1) the scope and content of the prior art; 2) the differences between the prior art and the claims at issue; 3) the level of ordinary skill in the pertinent art; and 4) secondary considerations such as commercial success, long-felt need, failure of others, and unexpected results, among others. While considering these Graham inquiries, the Supreme Court further established in KSR a flexible approach for determining when prior art teachings either motivate their combination or provide a sufficient degree of predictability such that it would have been obvious for a person of skill in the art to combine the prior art teachings in an exercise “not of innovation, but of ordinary skill and common sense.”

With the Rosen-Durling obviousness framework now overturned for design patents, the question is – how will both courts and the Patent Office grapple with applying the flexible Graham/KSR utility patent standards to design patents? The CAFC gave some guidance, but left much to be clarified down the road.

For one, the CAFC retained the requirement that a prior art reference must be analogous, meaning that the prior art reference must be in the same field of endeavor as the claimed design. Utility patents also include this category of analogous art, but further include a second category of analogous art which is reasonably pertinent to the problem faced by the inventor. The CAFC acknowledged that design patent applicants do not face a particular problem being solved, at least on the merits of patentability, and did not extend this second category to designs. In view of the overruling of the Rosen-Durling test, arguments which assert that a design is non-analogous and thus may not be relied upon as prior art may now carry significantly more weight in design patent proceedings.

Where the CAFC leaves uncertainty is in the seemingly basic, but complex, question of how close to the claimed design must a prior art design be to reject or invalidate the claimed design as obvious? For example, the CAFC cited a late 1800’s case Whitman Saddle where the claimed saddle was determined to be an obvious combination of the front and rear halves of two different saddles found in the prior art. However, most designs will not be a simple combination of two halves; rather, according to the CAFC, an examiner or challenger will need to establish a motivation to alter a primary or closest prior art design with one or more secondary references to arrive at the claimed design. Unlike the overruled Rosen-Durling framework, there is no longer a requirement to identify a primary design having a certain degree of visual closeness.

Prior art designs may now be flexibly combined so long as an ordinary designer would have created the claimed design. According to the CAFC, certain characteristics of the ordinary designer may be considered, including experience, creativity, market demands, and industry customs in the relevant field. In response to an obviousness challenge, these characteristics, along with the Graham factual inquiries and the motivations faced by the ordinary designer, may be disputed by the patentee or applicant. Additionally, the applicant or patentee may present extrinsic evidence of secondary considerations per Graham to rebut an obviousness rejection. The CAFC acknowledged that secondary considerations of commercial success, industry praise, and copying may be relied upon to demonstrate non-obviousness of the claimed design. However, the court refused to acknowledge whether other secondary factors such as long felt but unsolved needs and failure of others may be applied in the design patent context. This uncertainty regarding secondary considerations may provide an opportunity for new design patent prosecution strategies.

While design patents are limited to ornamental appearance and do not solve a technical problem per se, the court’s heightened reliance on motivations faced by the ordinary designer may invite arguments more traditionally reserved for problem-solving utility inventions. For example, consider designs in the field of ergonomics where the design is inherently linked to utility. Here, an applicant could potentially argue and present evidence to establish that an unsolved need has been met by their design. Further, consider the scenario of a design for an improved structural component where other earlier components have failed in the field. An applicant might argue that their design overcomes the failures in the field and support this with comparative evidence of field and market performance. It remains to be seen how patent examiners and courts will react to such evidentiary arguments for patentability.

While the CAFC has abolished the rigid Rosen-Durling framework for analyzing obviousness questions in design patents, practitioners are already attuned to the more flexible Graham/KSR framework, which has been applied in the utility patent space for decades. Design stakeholders should be aware that these changes primarily affect the substantive arguments made during prosecution or in a patent validity challenge, but are not expected to significantly alter the scope of patentable designs. Certain exceptions may be in cases where no prior art designs which are “basically the same” could be located, nevertheless an argument could be made to combine elements of other prior art designs. Even so, practitioners may now be able to craft more creative arguments because of this more flexible obviousness standard established by the CAFC.