By Jack Passero
On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit reheard LKQ Corporation, Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLC [hereinafter LKQ v. GM] while sitting en banc to determine the role of precedent in assessing the obviousness of design patents under 35 U.S.C. § 103. LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024). 35 U.S.C. § 103 requires that “[a] patent for a claimed invention not be obtained . . . if the differences between the claimed invention and the prior art are . . . obvious before the effective filing date . . . to a person having ordinary skill in the art.”
LKQ v. GM stems from the U.S. Design Patent 797,625 (D’625) that GM owns and uses on the Chevrolet Equinox automobile. LKQ claims that the patent should be invalid for being obvious by relying on the prior U.S. Design Patent D773,340 (referred to as the “Lian” patent by the Court) as well as a promotional brochure for the 2010 Hyundai Tucson automobile. All evidence in question relates to the driver-side front fender of the vehicle. The images as provided in the Federal Circuit Court Opinion can be accessed here or at the bottom of this article.
To determine the nature of obviousness of a design patent, courts have historically relied on a test combined from the cases of In re Rosen and Durling v. Spectrum Furniture Company, Inc. 101 F.3d 100 (1996); 673 F.2d 388 (1982).
In Rosen, the Federal Circuit Court of Appeals concluded that two glass coffee tables were "significantly different in concept" because the primary reference "does not give the same visual impression of lightness and suspension in space conveyed by appellant's table." 673 F.2d at 391. In Durling, a sectional sofa design patent rejected the denial of a design patent for lack of a “secondary reference . . . 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.” 101 F.3d at 103.
In combination, the Rosen-Durling test requires two steps: (1) the claimed design cannot be challenged for obviousness unless a single reference (“Rosen reference”) is shown with “basically the same” characteristics as the claimed design, and (2) any secondary references found after the Rosen reference 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.” Id.; 673 F.2d at 391.
Since 1996, the Federal Circuit has applied the Rosen-Durling test, but LKQ asserted in the case at present that the Rosen-Durling test should be overruled with regard to a 2007 decision by the U.S. Supreme Court. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). In KSR International, the Supreme Court rejected the prior test of obviousness for utility patents known as the Teaching, Suggestion, Motivation (TSM) test. Under the TSM test, a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art of teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. Id. at 407. A claim of obviousness under the TSM test required documentary evidence of motivation that would make a person having ordinary skill in the art create the seemingly obvious product. The Court in KSR International designed a “flexible-TSM test” that made secondary considerations like market pressure or commercial success viable options for motivation instead of documented evidence of prior art. See id. at 415.
The flexible-TSM test under KSR International applies directly to utility patent obviousness, but the court in LKQ extended this flexibility to design patent obviousness as well. Rather than adopt the flexible-TSM test under KSR International, however, the current court adopted the four factor test for obviousness under Graham v. John Deere Co. of Kansas City: (1) Discern what would be required to establish the knowledge required of an ordinary observer, (2) Scope and content of prior art under the knowledge of an ordinary observer, (3) Differences between prior art and claimed design, (4) motivating factors as proposed in KSR International. See generally 383 U.S. 1 (1966).
In adopting the Graham test, the PTAB overruled the Rosen-Durling test and applied what they thought would be a simpler test to determine obviousness. The present Graham test has yet to be used in a case since the very recent ruling in LKQ v. GM, and it remains to be seen whether the change in ruling will have a substantial effect on the determination of obviousness in future design patent claims.
Judge Lourie concurred in the judgment, highlighting that Rosen-Durling requires a primary reference that is "basically the same," while the Graham test requires one that is the most visually similar to the claimed design. He then addresses the Durling factor of the Rosen-Durling test, noting that the majority effectively replaced the "so related" language of Durling with "some record supported reason . . . that an ordinary designer . . . would have modified the primary reference." Lourie suggests that Rosen-Durling only needed refinement, not a complete overhaul.
