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![Opinion Opinion](https://www.lawweekcolorado.com/wp-content/uploads/2019/10/LWC_Opinion_Placeholder-scaled.jpg)
By Kevin Bell
Kilpatrick
For decades, design patent holders benefited from a rigid test that led to infrequent findings of obviousness in litigation. Such an outcome stands in contrast to utility patents, where findings of obviousness are commonplace. The rigid test provided, in practice, design patents with a level of deference on the question of validity that the patent statutes governing do not facially contemplate.
This has now changed. In a recent — and rare — en banc decision, the Federal Circuit overruled the existing rigid test for obviousness. This represents a sea change in the law, and affords defendants more chances to invalidate design patents.
In LKQ Corp. v. GM Global Tech. Operation LLC, the court overruled the Rosen-Durling test used to assess obviousness of U.S. design patents. This test had required (1) the identification of a primary reference that was “basically the same” as the claimed design and (2) that secondary references must be “so related” to the primary reference that features from one would suggest application to the other. The rigidness of this test primarily derived from that first requirement — identification of a “primary reference” that is “basically the same” as the claimed design. Under the Rosen-Durling framework, defendants in design patent cases facing this rigid standard were limited in their defenses, with obviousness effectively off the table in most cases.
The decision in LKQ eliminates both prongs of the prior test, replacing it with a new test analogous to the invalidity analysis for utility patents. Specifically, the court held that the Graham factors used to evaluate obviousness for utility patent should also be used for design patents, which further includes the flexible obviousness analysis allowed for under the Supreme Court’s seminal KSR decision.
Although Rosen-Durling is overruled, the court did maintain the requirement that a primary reference be identified, aligning utility and design patents under the overall Graham framework. The primary reference now may come from the broader and more attainable realm of “analogous art.” Similar to the test applied for utility patents, the “analogous art” for a design typically would be from — but not strictly limited to — the same field of endeavor as the claimed ornamental design’s article of manufacture. The court, however, did question whether the second factor typically applied for analogous art for utility patents, whether the reference is reasonably pertinent to the particular problem faced by the inventor, should also apply to design patents. In questioning whether the second factor applies, the court left the issue open for later determination.
Further applying the Graham framework to design patent, the court held that the visual appearance of the claimed design is then compared to the primary references from the perspective of the “ordinary designer in the field of the article of manufacture.” Should the primary reference alone not render the design obvious, secondary references — also from the field of analogous art — may be considered, along with evidence of the motivation to combine the primary and secondary refences by the ordinary designer. Again, this aligns the analysis for obviousness of design patents with utility patents, an alignment that further extends to the consideration of “secondary considerations” as indicia of nonobviousness of the claimed design. Those indicia include commercial success, industry praise and copying. The court did note, however, that some indicia commonly considered for utility patents, such as “long felt need” or “failure of others” may not be appropriate for design patents and left that question for another day.
As with most changes in law, time will tell how this alignment of design patent and utility patent obviousness analysis will play out. As noted above, the court has left a number of questions for later determination by both district courts and the Federal Circuit itself. Most importantly, the courts will need time to work out the scope of “analogous art” with respect to designs applied to articles of manufacture, for both the primary and secondary references.
One result appears to be certain: obviousness will take on a more significant role in litigation of U.S. design patents than it has in the past. Strategies for protecting designs and later enforcing design patents need to be updated. And defendants may be afforded more of a fighting chance to invalidate a design patent.
– Kevin Bell is an intellectual property litigator with Kilpatrick. He focuses his practice on patent litigation, trademark litigation and complex business litigation.