In a current en banc resolution, the Federal Circuit Court docket of Appeals has overruled its prior take a look at for nonobviousness of design patent innovations, holding that design patents are topic to the identical take a look at as utility patents. LKQ Company v. GM International Know-how Operations (Federal Circuit, Might 21, 224).
The prior take a look at for nonobviousness of a design patent, known as the Rosen-Durling take a look at (primarily based on the 2 Federal Circuit selections), has been in impact for the reason that Nineties. The Rosen-Durling take a look at is a two-part take a look at. In step one, a major reference (known as a Rosen reference), which has “principally the identical” traits because the claimed design, contemplating the design as a complete, have to be recognized. If a Rosen reference exists, then the second step is an evaluation of whether or not an unusual designer would modify the Rosen reference to realize the claimed design. If no Rosen reference will be recognized, nevertheless, there is no such thing as a second step, and the claimed design is nonobvious. If there’s a Rosen reference, then step two is carried out. Step two requires the existence of a secondary reference which is used to switch the first reference to create the claimed design. The secondary reference have to be “so associated” to the first reference that the options of 1 recommend the appliance of these options to the opposite.
In LKQ, the patent in subject was GM International Know-how’s design patent D797,625 for a automobile entrance fender. LKQ filed a petition for inter partes evaluate of the ‘625 patent. The Patent Trial and Enchantment Board discovered that LKQ had not happy step one of many Rosen-Durling take a look at as a result of its major reference was not “principally the identical” because the claimed design.
LKQ appealed to the Federal Circuit Court docket of Appeals. LKQ argued that the Supreme Court docket’s resolution in KSR. Worldwide Co. v. Teleflex Inc., 550 U.S. 398 (2007) had implicitly overruled the Rosen-Durling take a look at, however the Federal Circuit panel discovered that it didn’t have clear course from the Supreme Court docket as to the impact of KSR on design patents, as KSR concerned utility patents, and subsequently couldn’t overrule the Rosen-Durling take a look at. The panel of the courtroom affirmed the PTAB’s resolution.
LKQ requested a listening to en banc, which was granted. The total courtroom vacated the panel’s resolution and remanded the case to the PTAB.
The Federal Circuit reviewed the related patent legal guidelines. A design patent covers “a brand new, unique and decorative design for an article of manufacture.” 35 U.S.C. part 171(a). The patent legal guidelines pertaining to utility patents additionally apply to design patents. Part 171(b). Below part 103, an invention is clear “if the variations between the claimed invention and the prior artwork are such that the claimed invention as a complete would have been apparent ….. to an individual having unusual talent within the artwork…” In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court docket held that the dedication of obviousness requires 4 units of factual findings: (1) the scope and content material of the prior artwork; (2) the variations between the prior artwork and the claims; (3) the extent of unusual talent within the artwork; and (4) secondary concerns akin to business success, lengthy felt however unsolved wants, the failure of others, copying by others, and trade reward. As soon as these elements have been recognized, then the query of whether or not the claimed invention is clear over the prior artwork will be analyzed. In KSR, the Supreme Court docket dominated that the Graham elements ought to be utilized flexibly and that “inflexible preventative guidelines that deny factfinders recourse to frequent sense” are improper, and that the “obviousness evaluation can’t be confined by a formalistic conception.”
Based mostly on the Supereme Court docket’s selections, the Federal Circuit overruled the Rosen and Durling instances. The courtroom held that the Rosen-Durling take a look at “doesn’t adequately align with KSR …. and different precedent …. and is out of protecting with the Supreme Court docket’s normal articulation of the ideas underlying obviousness, in addition to its particular remedy of validity of design patents.” The courtroom discovered that the Rosen-Durling necessities — that the first reference be “principally the identical” because the claimed design and that the secondary reference be “so associated” to the first reference that the options of 1 recommend utility to the opposite — “are improperly inflexible.” The courtroom emphasised that KSR requires “a extra versatile strategy than the Rosen-Durling take a look at.”
The courtroom additional held that the dedication of obviousness of a design patent have to be primarily based on the identical elements as an utilized to utility patents. In line with the courtroom, the Graham evaluation ought to be used, though the courtroom left it to “future instances to additional develop the appliance of this commonplace.”
GM and numerous amici argued that overruling the Rosen-Durling take a look at would lead to uncertainty for all design patents. The federal circuit disagreed:
“The Graham four-part obviousness take a look at for utility patents has existed for a really very long time and there may be appreciable precedent from which the PTO and the courts can draw when assessing obviousness within the design patent context. …. This take a look at has confirmed, workable for utility patents and we see no motive why it might not be equally workable for design patents. As with every change, there could also be a point of uncertainty for not less than a short interval, however our elimination of the inflexible Rosen-Durling take a look at is compelled by each the statute and Supreme Court docket precedent.”
