Design Patent Holders Rejoice, but Challengers Face an Uphill Battle
Design patent holders can rejoice, for now, as the Federal Circuit reinforces its stance on the invalidity of design patents based on obviousness. On January 20, 2023, the Federal Circuit upheld a decades old rule that governs design patents in LKQ Corp., Keystone Auto. Indus., Inc., v. GM Global Tech. Operations LLC.1 In the two opinions issued by the Court, the Federal Circuit held that LKQ failed to prove that GM’s patents are invalid as anticipated or obvious.2 LKQ hinged its argument on the Supreme Court’s 2007 decision in KSR v. Teleflex, where the high court overturned “rigid” tests for proving obviousness for utility patents.3 LKQ argued that the KSR standard implicitly applied to design patents, but the Federal Circuit rejected this argument, holding that the KSR opinion did not apply to design patents. The Federal Circuit held that “without a clear directive from the Supreme Court,” it could not overturn the design patents tests established in In re Rosen (1982) and Durlin v. Spectrum Furniture (1996).4 As the Federal Circuit explained, a challenge to design patents based on obviousness requires a two-test analysis:
whether a primary reference exists “with characteristics ‘basically the same’ as the claimed designed by discerning the visual impression of the design as a whole,” and
if a “satisfactory primary reference exists. . . whether an ordinary designer would have modified the primary reference to create a design with the same overall visual appearance as the claimed design.”5
The Federal Circuit explained that the two-part test created a safeguard against a challenger from cherry-picking features from multiple references to create an entirely new design—fundamentally changing the visual impression of the claimed patent.6
However, the opinion signaled some room for future challenges that should put design patent holders on notice. Notably, LKQ was decided by a panel of three judges who noted they lacked the authority to overturn Rosen and Durlin without the Supreme Court’s blessing. Essentially, this means that the Supreme Court itself or a full en banc Federal Circuit could overturn the test for design patents. Moreover, Judge Stark noted in his concurrence that there is “substantial tension between the Supreme Court’s holding in KSR and our Durlin test.”7 Judge Stark reasoned that the first step in the design patent test was the kind of limiting, rigid rule the Supreme Court faulted in KSR in that if a challenger fails to show that the patent and its reference are “basically the same,” then courts cannot consider a combination of prior art references.8 Judge Stark further explained that the first step may prevent a court from considering “other factors that often drive the analysis in utility patent obviousness cases.”9 Judge Stark’s opinion could open the door for future challenges to the obviousness of design patents.
Notwithstanding Judge Stark’s skepticism, the Federal Circuit’s ruling is a big win for design patent holders. A challenger still needs to clear the high standard set forth in Rosen and Durlin: the reference must be “basically the same” as the claimed patent. The Federal Circuit faulted LKQ for using images from a Chinese car design to invalidate GM’s patent dealing with a vehicle skid bar because the images failed to show all aspects of the design. Specifically, LKQ’s expert admitted that the references lacked the bottom and side perspectives that would enable an ordinary observer to conclude that the reference and the claimed design looked “basically the same.”10 The Federal Circuit held that the referenced image impeded a “comparison of the claimed design to the reference by any ordinary observer and is alone sufficient to support a finding of no anticipation.”11
Challengers would have to do more than show a simple prior art reference that may resemble the claimed design. Challengers may need to find a prior art reference that shows all perspectives and aspects of the design to invalidate the claimed design, making it harder to prove invalidity. For now, design patent holders can rejoice as challengers face an uphill battle to invalidate design patents based on obviousness.
1 Case Nos. 22-1253 and 21-2348 in the U.S. Court of Appeals for the Federal Circuit.
2 See generally, Case No. 22-1253 at 7-14; see also Case No. 21-2348 at 7-15.
3 See Case No. 21-2348 at 5.
4 Id. at 13.
5 Id. at 9-10.
6 See id. at 10.
7 Id. at 29.
8 See id. at 30.
10 See generally, Case No. 22-1253 at 8.