Federal Circuit Overrules Obviousness Test for Design Patents

In a client alert, the Morrison Foerster firm reports that the Court of Appeals for the Federal Circuit has overruled the longstanding obviousness test for design patents. It was the Court’s first en banc patent decision since 2018. 

The Court ruled that the obviousness test, called the Rosen-Durling test, is too rigid and inconsistent with Supreme Court opinions on the obviousness of utility patents. The case was LKQ Corp. v. GM Global Tech. Operations LLC.

GM owns a patent covering the design for the front fender used in its 2018-2020 Chevrolet Equinox. The appellants requested an inter partes review of the patent, alleging that it is unpatentable due to similarities to other patents including one shown in a promotional brochure for the 2010 Hyundai Tucson.

The Patent Trial and Appeal Board determined that the Appellants failed to establish that the challenged claim would have been obvious because the Appellants failed to identify a so-called Rosen reference – “something in existence, the design characteristics of which are basically the same as the claimed design.”  A panel of the Court affirmed the Board’s decision. The Court granted rehearing en banc.

The en banc Court overruled the Rosen-Durling test. It concluded that “the Rosen-Durling test requirements, that the primary reference be ‘basically the same’ as the challenged design claim, and any secondary references be “so related’ to the primary reference that features in one would suggest application of those features to the other,” are improperly rigid.” Instead, it held that invalidity based on the obviousness of a patented design is determined based on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent.

Morrison Foerster concludes that the decision means less certainty for litigants in the near term, and it will also have a noticeable impact on the examination of design patent applications, meaning longer examination periods and increased costs for applicants.