In the recent case of LKQ Corporation v. GM Global Technology Operations LLC, the en banc (for the first time in five years) Federal Circuit overruled the long-established Rosen-Durling test used for evaluating the obviousness standard of design patents. In doing so the Federal Circuit fundamentally changed the validity test applied to design patents. Specifically, the landmark decision aligns the obviousness standard for design patents with the more flexible approach applied to utility patents, as dictated by Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966).

Background and the Rosen-Durling test

The Rosen-Durling test required a two-step process to determine the obviousness of design patents:  First, a single primary reference must be identified with design characteristics that are “basically the same” as the claimed design. See In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982).  Second, additional references could be used to supplement the primary reference—provided they were “so related” to the primary reference that the application of certain ornamental features from one to the other would be obvious. See Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996).
This rigid framework often made it difficult to invalidate design patents, as challengers had to find a primary reference that was nearly identical to the patented design.

LKQ Corp. and the Shift to Graham Factors

The central dispute of the case arose when LKQ Corporation and Keystone Automotive Industries, Inc. petitioned for inter partes review of GM Global Technology LLC’s design patent for a vehicle’s front fender. The PTAB upheld the patent—citing the Rosen-Durling test and ruling that LKQ failed to provide a reference creating “basically the same” visual impression. On appeal, LKQ argued that the test was inconsistent with the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., which stood for a more expansive and flexible approach to determining obviousness of utility patents.

The en banc Federal Circuit agreed with LKQ—finding the Rosen-Durling test “improperly rigid.” The court held that the non-obviousness requirement under 35 U.S.C. § 103 applies equally to design and utility patents. Consequently, the court adopted the utility-test Graham factors for evaluating design-patent obviousness:

  1. Scope and Content of the Prior Art: Evaluate the relevant prior art within the knowledge of an ordinary designer in the relevant field.
  2. Differences Between the Prior Art and the Claimed Design: Assess the differences from the perspective of an ordinary designer in the relevant field.
  3. Level of Ordinary Skill in the Art: Consider the skill level of an ordinary designer who designs the type of articles in question.
  4. Secondary Considerations: Include commercial success, industry praise, and copying as indicators of non-obviousness.

Implications for Design Patents

The overhaul of the Rosen-Durling test is expected to have a substantial impact on the prosecution and enforcement of design patents:

  1. Increased Scrutiny: The adoption of the more flexible Graham factors will likely simplify the process for courts to determine design patent obviousness. This simplification will also likely result in heightened scrutiny of design patent applications— making it more challenging to secure and protect such patents.
  2. Broader Scope of Prior Art: The requirement that a primary reference be “basically the same” is eliminated. Instead, the focus will be on whether prior art is analogous— expanding the range of references that can be considered.
  3. Flexible Obviousness Analysis: The new approach encourages a more nuanced, fact-based analysis—allowing for greater consideration of common sense and the knowledge of an ordinary designer.

PTO Guidance and Future Developments

Following the Federal Circuit’s decision, the PTO promptly issued updated guidance for examining design patent applications. This guidance emphasizes the application of a flexible approach to obviousness, in line with the approach for utility patents. The PTO has outlined detailed instructions for evaluating each of the Graham factors and has promised further examples and training to ensure consistent application of the new standard.

The transition to the Graham framework introduces a period of adjustment for both design patent applicants and examiners. Patent practitioners will need to keep abreast of ongoing developments as the effects of this decision unfold through subsequent case law and PTO practice.

Conclusion

The Federal Circuit’s decision to overrule the Rosen-Durling test marks a pivotal shift in design patent law. By aligning the obviousness standard for design patents with the flexible approach used for utility patents, the Federal Circuit has opened the door for a more comprehensive and sensible evaluation of the validity of design patent claims. This change is expected to influence patent prosecution strategies and the enforcement of design patents—necessitating close monitoring and adaptation by design patentees.  We recommend consulting with patent professionals during both the application and pre-litigation stages to assess the strength of claimed designs in view of the more rigorous validity test that now controls.  

Chris Nyberg, Summer Associate in our Atlanta office, also contributed to this alert.