Federal Circuit To Decide Whether KSR Applies To Design Patents

• Published date: 25 August 2023
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Marshall, Gerstein & Borun LLP
• Author: Mr Ryan Schermerhorn and Matthew Nealon

On June 30^th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC.¹ LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM's design patent for a front fender design,² arguing it was anticipated by a prior art reference (Lain) and obvious over Lian alone or in combination with a brochure for the 2010 Hyundai Tucson. The PTAB ultimately affirmed the patentability of GM's claimed design, prompting LKQ to appeal to the Federal Circuit. On appeal, LKQ argued that the PTAB's obviousness analysis utilized tests overruled by the Supreme Court's decision in KSR, and, as such, the obviousness standard for design patents should mirror the standard for utility patents set forth in KSR. However, a three-judge panel of the Federal Circuit disagreed, noting in relevant part that "it is not clear the Supreme Court has overruled" the tests for obviousness applied by the PTAB.

Presently, the obviousness analysis for design patents involves a two-step test adapted from Rosen³ and Durling.⁴ First, a primary reference (otherwise known as a Rosen reference) is identified. A Rosen reference must have characteristics that are "basically the same as the claimed design."⁵ This Rosen reference can be modified by secondary references so long as they are "so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other."⁶

LKQ argued in its en banc rehearing petition that the Rosen-Durling standard is inconsistent with KSR.⁷ In KSR, the Supreme Court overruled the Federal Circuit's rigid rule for obviousness (the teaching, suggestion, motivation test) in favor of a more flexible test that considered what would have been obvious to a person of ordinary skill in the art at the time the invention was made. Most practitioners agree that KSR made it more difficult to obtain utility patents and easier to invalidate granted utility patents.

"The decision by the Federal Circuit to hear this case en banc is noteworthy. Should the Court extend the KSR analysis to design patents, it would make it harder to obtain them and easier to invalidate them. This could represent the most significant overhaul of obviousness standards since the KSR ruling over 16 years ago."

In granting LKQ's en banc petition for rehearing, the Federal Circuit asked the parties to address, among other things, the following questions:

(A)...