Federal Circuit Overrules 'Improperly Rigid' Obviousness Test

Rejecting concerns that the decision would lead to uncertainty, the court found that design patent obviousness should be assessed under the same flexible approach used in the utility patent context. Because a claimed design must be nonobvious under 35 U.S.C. §103 for a design patent to issue, some believe that replacing the Rosen-Durling test with a more liberal standard will make it more difficult to obtain design patents and defend them against invalidity attacks in litigation. But whether the "new" standard will prove significantly less stringent in practice is just one of many open questions that practitioners and companies with design patent portfolios may have moving forward.

The 'LKQ' Decision

The LKQ decision followed a petition for inter partes review (IPR) challenging the validity of a design patent, in which a panel of the USPTO's Patent Trial and Appeal Board (Board) found the petitioner had not carried its burden of demonstrating that the claimed design for a vehicle's fender was obvious under the Rosen-Durling test. Under part one of that test, there must be a primary prior art reference (or Rosen reference) having design characteristics that are "basically the same as the claimed design." Durling v. Spectrum Furniture, 101 F.3d 100, 103 (Fed. Cir. 1996). If no Rosen reference is found, the inquiry ends, and the claimed design satisfies the non-obviousness requirement. If a Rosen reference exists, its design may be modified based upon design features of one or more secondary references to arrive at (and render obvious) the claimed design, but only if the secondary references are "so related [to the Rosen reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other." Id.