Patent Lodge

Last Spring, we reported on a case before the U.S. Court Of Appeals for the Federal Circuit (Federal Circuit) relating to U.S. design patents, LKQ Corp. v. G. M. Global Technologies (Case number 21-2348). As we noted then, the Federal Circuit, in agreeing to take up the case, would be deciding whether change was needed for the long-standing, established test for invalidation of U.S. design patents.

That case has now been decided and the Federal Circuit ruled that the invalidity test, used for decades, is “improperly rigid,” opining that the standard used with utility patents, generally viewed as being a more flexible standard, should be followed.

Nine out of the 10 Federal Circuit judges ruled in favor of the decision.

For background, the longstanding test for obviousness — and in turn a finding of invalidity — for a design patent has been known as the Rosen-Durby test, and required a two-step analysis:

1. The primary reference had to be “basically the same” visually as the challenged design claim; and
2. Any secondary references used to modify the primary reference had to be “so related” to the primary reference that features in one would suggest application of those features in the other.

Under this test, the first step was often a significant hurdle for the challenger, as an earlier design could not be located that was “basically the same.” This resulted in many design infringement cases ending on summary judgement.

In its recent decision, the Federal Circuit faulted both steps of the Rosen-Durby test as being inconsistent with the flexible approach demanded by the Supreme Court in utility cases.

Instead, the Federal Circuit said the same four-factor test created in Grahm v. Deere for utility patents should be applied in design cases.

Rather than looking for an earlier design that is “basically the same” as the patented design, the Federal Circuit reasoned that one must look to “analogous art” with respect to the patented design. That would include art in the “same field of endeavor” as the patented design; however, the Federal Circuit did not deny “that other art could also be analogous.” Furthermore, the Federal Circuit explained that if one primary prior art reference does not render the claimed design obvious, other analogous art, i.e., a secondary reference, may be considered and it does not need to be “so related” as under the previous test. The Federal Circuit did indicate that there needs to be some record-supported reason (without hindsight) that an ordinary designer would modify the primary reference with features from the secondary reference.

In their ruling, the Federal Circuit pointed out that it did not delineate the full and precise contours of the analogous art test for design cases, and it remained a fact question to be addressed on a case-by-case basis in the future.

Moving forward, questions remain as to what can be deemed analogous art as well as what constitutes a motivation to combine earlier designs. The case has been remanded for reconsideration under the revised standard, and we will report back once a decision of the lower court is rendered.