By Taylor Brown, a first year J.D. candidate at the Sandra Day O’Connor College of Law. Before law school she completed her B.S. in Biological Sciences. While in law school she serves as a Research Fellow for the McCarthy Institute, and is a Center Scholar for the Center for Law, Science, and Innovation.
LKQ Corporation v. GM Global Technology Operations LLC was decided by the United State Court of Appeals for the Fourth Circuit in 2024 and impacted the tests used to determine the obviousness of a design patent.[1] GM Global Technology Operations LLC (“GM”) owns U.S. Design Patent No. D797,625 for the design of a vehicle’s front fender.[2] LKQ Corporation (“LKQ”) and Keystone Automotive Industries (“Keystone”) filed a petition with the Patent Trial and Appeal Board (“PTAB”), asserting that GM’s design was unpatentable.[3] The PTAB decided that the design was patentable using the Rosen-Durling non-obvious test, a long-standing test that assesses the obviousness of a design, reasoning that LKQ failed to establish a Rosen reference which would have provided evidence that the design was obvious.[4] A design is said to be obvious if an ordinary observer cannot tell the difference between two designs, making him think he is purchasing the same product.[5] LKQ appealed the decision and a PTAB panel affirmed, reasoning that the claimed design “created different overall impressions” and did not anticipate the patent.[6]
The PTAB then granted an en banc hearing of the case and attempted to answer the following questions: “(1) whether the decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) overrules the Rosen-Durling test; (2) if it does not, whether the court should modify or eliminate the Rosen-Durling test; and (3) if either of the previous questions [is] answered with a yes, what test the court should apply in evaluating a design patent’s obviousness challenges.”[7]
The obviousness test in question, the Rosen-Durling test, requires the satisfaction of two parts.[8] First, Rosen requires that “before one can begin to combine prior art designs…one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’”[9] If no Rosen reference is found, then the obviousness inquiry ends without consideration of step two.[10] For step two, Durling requires that “once this primary reference is found, other references may be used to modify it or create a design that has the same overall visual appearance as the claimed design.”[11]Specifically, any secondary references must be “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.”[12]
The court spells out the two requirements of the Rosen-Durling test: “(1 “Rosen”)the primary reference be ‘basically the same’ as the challenged design claim[,] and (2 “Durling”) 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.”[13] In its analysis, the court first explains why the Rosen portion of the Rosen-Durling test is invalid.[14] It states that the language in 35 U.S.C. § 103 “sets forth an expansive and flexible approach for assessing obviousness” by only requiring the comparison of differences between the claimed invention and prior art.[15] Conversely, the Rosen portion of the test limits the comparison of differences to designs that are “basically the same,” which, according to this court, imposes limitations which are not found in the flexible statutory standard.[16]Additionally, the court reasons that the decision and analysis used in Whitman Saddle are inconsistent with Rosen’s one-size-fits-all approach, noting that “requiring a single primary reference that discloses nearly every aspect of the claimed design does not fit all obviousness scenarios for designs and cannot be reconciled with Supreme Court precedent.”[17] Finally, the court referenced the Supreme Court’s finding in KSR, deciding that a court errs if it transforms a general principle into a rigid rule that limits the inquiry of obviousness.[18] The Rosen requirement of “basically the same” is deemed such a rigid rule, and the court therefore concludes that it is inconsistent with the Supreme Court’s ruling in KSR.[19]
Second, the court reasons that the Durling portion of the Rosen-Durling test is invalid for the same rigidity that invalidated the first part.[20] Specifically, for the reason that the Durling test’s “so related” requirement is at odds with the broad standard in the language of 35 U.S.C. § 103 and Supreme Court precedent.[21]
From its analysis, the court decided to overrule both Rosen and Durling and recommend a new framework for evaluating design and utility patent obviousness better aligned with Supreme Court precedent and 35 U.S.C. § 103 while remaining mindful of the differences between design and utility patents.[22] The court adopts the factor test from Graham: (1) the scope and content of the prior art; (2) the differences between the prior art designs and the design claim at issue; and (3) the level of ordinary skill in the pertinent art.[23] The court also emphasizes that this framework may still require consideration of other factors such as commercial success, failure of other designs, and so on when such evidence is presented in an obviousness patent inquiry.[24]
Finally, the court addresses concerns about abandoning the Rosen-Durling test.[25] It acknowledges that many worry about increased uncertainty around what will be deemed obvious or not, potentially creating a “free-for-all” and confusion in the lower courts.[26] Additionally, there are fears about exposing thousands of patent designs to substantial uncertainty around whether their patents will be at risk due to the confusion surrounding this new test.[27] However, the court dismisses these concerns, noting that the Graham test has existed for a long period of time, meaning courts and parties can draw on established precedent.[28] The court does acknowledge that there will be difficulties with such a fact-based and non-rigid test, while noting that such difficulties are not uncommon in patent law.[29]
In its final decision, the court affirms the portion of the panel decision that found no anticipation, but it vacates the panel’s non-obviousness determination and remands for further proceedings consistent with the Graham test framework.[30] This decision represents one of the most significant changes in recent history for design patent law, and it will fundamentally alter how obviousness is evaluated in courts. Its implications range from the creation of a new obviousness test to the adoption of courts using the Graham test as mentioned in this opinion. Finally, the holding may also increase patent petitions filed and create uncertainty for patents which have existed for years and for new patent approval.
[1] LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1287, 1288 (2024).
[2] Id. at 1287.
[3] Id. at 1288.
[4] Id. at 1289.
[5] Id.
[6] Id. at 1290.
[7] LKQ Corp., 102 F.4th at 1290.
[8] Id. at 1289.
[9] Id.
[10] Id.
[11] Id.
[12] Id.
[13] Id. at 1293.
[14] Id. at 1294.
[15] Id.
[16] LKQ Corp., 102 F.4th at 1294.
[17] Id.
[18] Id.
[19] Id.
[20] Id.
[21] Id.
[22] Id. at 1295.
[23] LKQ Corp., 102 F.4th at 1295-1300.
[24] Id. at 1300.
[25] Id.
[26] Id.
[27] Id.
[28] Id.
[29] Id. at 1300-01.
[30] Id. at 1301.