Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness – USPTO Follows Quickly with Guidance

June 3, 2024

Reading Time : 3 min

By: Megan R. Mahoney, Michael P. Kahn, Daniel L. Moffett, Kayla Flanders (Law Clerk)

In a highly anticipated decision, the en banc Federal Circuit overruled the longstanding Rosen-Durling test for assessing obviousness of design patents.  The challenged framework, derived from two cases, In re Rosen, 673 F.2d 388 (CCPA 1982) and Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir 1996), required (1) a primary reference to be “basically the same” as the challenged design, and (2) any secondary reference to be “so related” to the primary reference that features in one would suggest application of those features to the other.  That test was deemed “improperly rigid” and was overruled in favor of KSR’s application of the more flexible Graham factors to utility patents.

The dispute arose when LKQ Corporation and Keystone Automotive Industries, Inc. (“LKQ”) filed a petition for inter partes review of GM Global Technology LLC’s (“GM”) design patent for a vehicle’s front fender.  LKQ argued that GM’s design is unpatentable as obvious under 35 U.S.C. § 103.  The Patent Trial and Appeal Board applied the Rosen-Durling test and determined that LKQ failed to identify a reference that created “basically the same” visual impression as the patented design.  On appeal, a three-judge panel of the Federal Circuit affirmed the Board’s decision and declined to overrule Rosen or Durling without a “clear directive from the Supreme Court.”

In support of its petition for en banc review, LKQ argued that the Rosen-Durling test adopts a strict rule that is inconsistent with the Supreme Court’s decision in KSR.  LKQ further argued that the test should be replaced by the factual Graham inquiry.  GM argued that LKQ had forfeited this argument by not raising it before the Board and, even if it were not forfeited, KSR does not overrule Rosen or Durling.

The court did not find forfeiture and determined that the petition was sufficient to preserve LKQ’s argument, which was a pure question of law presenting a “question of significant impact.”  On the merits, the en banc court held that 35 U.S.C. § 103 obviousness conditions apply to design and utility patents alike and, on that basis, adopted the Graham approach.

Under the Graham analysis, the fact finder considers the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of design.  While there is no “basically the same” requirement to qualify as prior art, an analogous art requirement applies to each reference.  The court maintained that the continued requirement of a primary reference will help prevent undue confusion while avoiding “rigid preventative rules that deny factfinders recourse to common sense.”

For utility patents, a two-prong analysis is applied when considering whether a reference qualifies as analogous art.  The Federal Circuit declined to “delineate the full and precise contours” of the analogous art requirement when applied to design patents.  The court held the “same field of endeavor” first prong can be applied to design patents but left open the question as to whether the “pertinent to the particular problem” second prong applies to design patents.  The majority recommended a case-by-case approach.

The day after the en banc decision, on May 22, 2024, the United States Patent and Trademark Office issued a memorandum “to provide updated guidance and examination instructions, effective immediately, on evaluating obviousness in design patent applications and design patents.”  Director Vidal explained that USPTO personnel “must apply a flexible approach to obviousness similar to that applied in utility applications.”  This approach involves factual inquiries into (1) the scope and content of the prior art, (2) the differences between the prior art and the design as claimed at issue, (3) the level of ordinary skill in the art, and (4) secondary considerations. Director Vidal provided detailed instructions concerning each factual inquiry and promised to issue further guidance, examples, and training consistent with LKQ.

Practice Tip: Upending over 40 years of precedent, this decision is expected to have a significant impact on the landscape of obtaining and enforcing design patents.  Design patent owners and challengers alike should follow post-LKQ decisions and the relevant USPTO guidance closely to understand how this more-flexible obviousness analysis will impact design patent invalidity and patentability determinations moving forward.

LKQ Corp., Keystone Auto. Indus., Inc., v. GM Global Tech. Operations LLC, Case No. 2021-2348 (Fed. Cir. 2024) (Stoll, J.).

Share This Insight

Previous Entries

IP Newsflash

May 13, 2025

The Federal Circuit recently affirmed a district court’s holding that patent term extension (PTE) for a reissued patent was properly based on the issue date of the original patent and not that of the reissued patent. The Federal Circuit concluded that, where both the original and reissued patents claimed a drug product under regulatory review, using the issue date of the original patent to calculate PTE comports with both the purpose of the Hatch-Waxman Act and the related statutory context.

...

Read More

IP Newsflash

May 12, 2025

The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not persuaded by petitioner’s arguments that a second petition was needed due to alleged claim construction issues or the number, length or scope differences of the challenged claims.

...

Read More

IP Newsflash

May 9, 2025

The USPTO Director vacated the board’s decision to institute inter partes review based on an erroneous application of the Fintiv factors. Specifically, the Director found that the board placed too much emphasis on Petitioner’s Sotera stipulation, and not enough emphasis on the investment in the parallel litigation. Weighing the factors as a whole, the Director determined that institution should be denied.

...

Read More

IP Newsflash

May 9, 2025

In an institution decision following the USPTO’s withdrawal of its Fintiv Memo, the board addressed discretionary denial of an IPR under Fintiv in view of a parallel ITC investigation. The board noted it would not consider the now-rescinded June 2022 memo from then-director Vidal which instructed that the PTAB would not deny institution of an IPR or PGR under Fintiv when the request is based on a parallel ITC investigation. The board conducted a Fintiv analysis in view of the ITC investigation, but ultimately determined that discretionary denial was not warranted in this particular situation.

...

Read More

IP Newsflash

April 23, 2025

The Federal Circuit recently refused to apply collateral estoppel to claims of a patent asserted in district court litigation based on a Patent Trial and Appeal Board (PTAB) decision finding similar claims from the same patent unpatentable because the PTAB applied a lower burden of proof than what is required to invalidate claims in district court.

...

Read More

IP Newsflash

April 7, 2025

The Central District of California denied a defendant’s motion to dismiss or transfer plaintiff’s first-filed declaratory judgment action based on defendant’s later-filed patent infringement suit in Wisconsin.  Though suit was seemingly imminent when defendant advised plaintiff it might be infringing defendant’s patents, plaintiff responded by requesting a licensing agreement in lieu of litigation. The court found that plaintiff’s action was not anticipatory forum-shopping litigation because plaintiff only filed suit after defendant neglected to respond to its licensing offer.

...

Read More

IP Newsflash

April 1, 2025

The District of Delaware recently denied in part a motion to compel production of documents and testimony between a patentee and potential investors, valuation firms and an international bank based on the common interest exception. In so doing, the court reaffirmed that disclosure of privileged information to third parties will generally waive privilege unless it can be shown that the parties’ interests are identical and the communications are legal, not solely commercial.

...

Read More

IP Newsflash

March 24, 2025

The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is conducted in private. According to the Federal Circuit, a sale must disclose the relevant aspects of the invention to the public to qualify for the prior art exception of Section 102(b)(2)(B).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.