Federal Circuit Should Spurn Appeal to Scrap Design Patent Test

The full Federal Circuit should reject an ill-conceived request by major players in the repair parts industry after it hears arguments on Feb. 5 in a design patent case.

LKQ and Keystone Automotive Industries (collectively LKQ) have made an extraordinary request asking the full court to scrap the existing framework for assessing design patent obviousness, a framework that has served the public, courts, and the US Patent and Trademark Office very well for over 40 years. In its place, LKQ offers little other than vague and incomplete suggestions to import into design patent law unhelpful and inapplicable principles for assessing obviousness in the utility patent context—a fundamentally different inquiry.

The court should instead recognize the wisdom of the existing framework and maintain it for the benefit of the US design patent system at large.

Design patents protect aesthetic appearances, while utility patents are directed at utilitarian solutions. While all patent claims must be novel and non-obvious, given the fundamental differences between design and utility patents, the Federal Circuit understandably has developed different tests for determining compliance with these statutory requirements.

For example, for assessing utility patent novelty, the Federal Circuit uses the “all elements rule,” looking to see if every claim element is found in a single prior art reference. In contrast, for assessing design patent novelty, the Federal Circuit uses the “ordinary observer test,” which asks whether the overall appearance of a claimed design is substantially the same as the overall appearance of a single prior art reference in the eyes of an ordinary observer.

When it comes to the non-obviousness requirement of 35 USC § 103, the statute, which again applies equally to design patents and utility patents, asks whether the differences between the patent claim and the prior art would have been “obvious” to one of ordinary skill in the art at the time of effective filing date of the patent application.

The US Supreme Court delved deep into the criterion for assessing obviousness in the context of utility patents in 2007’s KSR v Teleflex. The justices pointed to utilitarian concepts such as the “problem to be solved,” “predictable results,” “reasonable expectations of success” and whether a functional solution was “obvious to try.” While these concepts make sense in the utility patent context, they have no meaningful or logical application to the design patent obviousness inquiry. The open-ended inquiry when creating aesthetic designs is fundamentally different than the targeted challenge of employing utilitarian principles to solve functional problems.

So how should the non-obviousness requirement be assessed in the context of design patents? The US Court of Customs and Patent Appeals arrived at a practical, reasonable, and reliable approach to the thorny issue in 1982’s In re Rosen. The approach calls for a predicate primary reference that’s “basically the same” in appearance as the claimed design. The primary reference framework, now known as the Rosen-Durling framework, guards against the temptation to argue that a claimed design was obvious by cobbling together bits and pieces from the prior art after seeing, and to arrive at, the claimed design.

A simple hypothetical shows the concern the primary reference framework addresses and why it should be maintained. Imagine one was going to design a lamp. At the time of creation, the designer would have had an endless array of possible aesthetic design choices for all aspects of the lamp design—curved or straight, convex or concave, long or short, narrow or wide, textured or smooth, and so on. To arrive at a given lamp design, it’s likely that the designer would make over one hundred aesthetic design choices, with each choice having almost endless possibilities.

While there are many design choices that can lead to myriad different lamp designs, few if any can be said to be obvious. Instead, the designer’s selection, coordination, arrangement, sizing, and styling of these aesthetic elements is the very act of design. It’s not until after one sees the claimed design that any of these choices become apparent.

By seeking a primary reference, the Rosen-Durling framework calls foul on after-the-fact contrived efforts to pick and choose pieces from the prior art to arrive at the claimed design. Instead, the Rosen-Durling framework wisely looks for a reasonable starting point—a single piece of prior art—where a fair amount of the many individual design choices in fact have been made. The framework recognizes that rarely is there an “obvious” motivation to make a design choice, let alone the slew of design choices needed to arrive at complete design. In the lamp hypothetical, an example of a reasonable starting point would be the prior art reference below on the left.

Here, enough of the design changes, in fact, have been made; as the Federal Circuit would say it’s “something in existence” that’s “basically the same.” How close a primary reference needs to be to the claimed design to provide a reasonable starting point depends on a multitude of factors taken from the perspective of one of ordinary skill in the art, including the type of article of manufacture, the nature and closeness of the prior art, and the scope of the claimed design. If such a reference exists, then it’s reasonable to consider arguments that the remaining design modifications—that is, the differences—would have been obvious to a designer of ordinary skill in the art. If there is no prior art reference providing this reasonable starting point, then such absence provides compelling, and in some circumstances dispositive, evidence that the claimed design isn’t obvious.

For over 40 years, the Rosen-Durling framework has provided the courts, the US Patent and Trademark Office, and the public a workable framework for assessing obviousness in the design patent context. This framework provides a reasonable and logical starting point for the obviousness analysis. The framework has been used with relative ease and predictability to assess the patentability of hundreds of thousands of design patents, many of which are active today.

Eliminating or modifying this framework would cause unnecessary uncertainty in an otherwise settled and well-functioning area of the law. For the sake of the US design patent system, let’s hope the majority of the en banc Federal Circuit agrees.

The case is LKQ Corp. v. GM Global Tech. Ops. LLC, Fed. Cir., 21-2348, oral argument 5/5/24.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

Christopher V. Carani is shareholder and partner at McAndrews, Held & Malloy and practices in all areas of intellectual property law, with an emphasis on design law.

Dunstan H. Barnes is partner at McAndrews, Held & Malloy and practices in all areas of intellectual property law with emphasis on protecting and analyzing design rights.

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