Design Flaw? The Federal Circuit Keeps The Separate Test For Obviousness Of Design Patents, For Now

• Published date: 08 June 2023
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Faruki
• Author: Mr Donald E. Burton

In a recent decision, LKQ Corp. v. GM Global Tech. Operations LLC, No. 2021-2348, 2023 U.S. App. LEXIS 1412 (Fed. Cir. Jan. 20, 2023), the Federal Circuit declined to change its test for obviousness of design patents, saying it was bound to apply "existing law." 2023 U.S. App. LEXIS 1412, at *16. The LKQ decision, though, if reviewed by the Supreme Court, could lead to a change in the law, since the Supreme Court has, on several occasions, struck down tests applied by the Federal Circuit where the tests were not tethered to statutory language, which is arguably true of the judicially-created test for the obviousness of design patents at issue in LKQ.

For a patent to issue, the claimed invention must meet the statutory requirement of non-obviousness. Pursuant to 35 U.S.C. ' 103, the court must consider three factors: the level of ordinary skill in the art of someone working in the field at the time the invention was made; the scope and content of the prior art; and the differences, if any, between the claimed invention and the prior art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court re-affirmed the Graham factors (id. at 427), but rejected the Federal Circuit's additional, so-called "teaching, suggesting, and motivation" test for obviousness, and admonished the lower courts that "[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents" (id. at 419). Similarly, the Court stated that "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418.

As to design patents, i.e., that special class of patents granted on an "ornamental design for an article of manufacture" (35 U.S.C. ' 171), the Federal Circuit has not followed KSR - which did not involve a design patent -- but rather has applied a narrower (and, thus, in theory, harder to meet), two-step test for obviousness, known as the Durling test:

"When assessing the potential obviousness of a design patent, a finder of fact employs two distinct steps: first, 'one must find a single reference, a something in existence, the design characteristics of which are basically the same as...