Patent Lodge

The Federal Circuit has agreed to an en banc hearing of a design patent case that may change the landscape of design patent invalidation in the U.S. The case is LKQ Corp. et al. v. G.M. Global Technology Operations LLC, case number 21-2348. This is the Federal Circuit’s first en banc review of a patent case since 2018.

The challenger, LKQ Corp., is urging the Federal Circuit to change its decades old test of determining obviousness of a design patent.

Currently the test, established decades ago, requires a challenger to first find an earlier design that has “basically the same” visual impression as the patented design and then, second, show that it would have been obvious for a designer to modify the earlier design using other designs (i.e., secondary references) to create the design found in the patent. Under the current test, the first step often proves to be a hurdle for a challenger because allegations that a design patent is obvious can be quickly rejected if the courts find that no earlier design is “basically the same.”

The challenger, LKQ Corp., argues the existing test is “just the sort of rigid, mandatory formula that the Supreme Court rejected in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007),” In this case, the Supreme Court rejected what it called the “rigid approach” in an earlier Federal Circuit test for determining if utility patents are invalid as obvious, and it said obviousness requires an “expansive and flexible approach.”  

There are several ways the Federal Circuit could rule:

• leave the current test in place;
• overrule the current test completely;
• modify the current test; or
• craft an entirely new test.

Some commentators believe that one of the key issues and obstacles for challengers is the starting point for a design patent obviousness analysis. Under the current test, allegations that a design patent is obvious can be quickly rejected if the court finds that no earlier design is “basically the same.” Rather, some argue the determination of obviousness should be based on what a designer would find obvious. Others argue that “the same” language from the Federal Circuit’s earlier case law is being read too literally and that “the same” does not actually mean the same but includes some differences and those differences can be filled in with secondary references.

Depending on how the Federal Circuit rules, a significant shift in the law may be on the horizon for the invalidation of design patents. We will keep you apprised when the Federal Circuit issues its decision.