Client Alerts | 05/21/2024

Redrawing the Obviousness Standard: Graham Factors Overrule Rosen-Durling for Design Patents


Brooks Kushman serves as design patent counsel for Ford Motor Company and has closely followed this case. Attorneys Frank Angileri and Marc Lorelli from Brooks Kushman filed an amicus brief on Ford’s behalf in the en banc proceedings.

LKQ Corporation and Keystone Automotive Industries, Inc. (collectively “LKQ”) filed a petition for inter partes review (IPR) to challenge the validity of GM Global Technology Operations LLC’s (“GM”) U.S. Design Patent No. D797,625. The ‘625 patent covers the design of a vehicle front fender used in the 2018-2020 Chevrolet Equinox. LKQ wanted to produce replacement parts without obtaining a patent license and argued that the claimed design was unpatentable, either being anticipated under 35 U.S.C. § 102 or as obvious under 35 U.S.C. § 103.

The PTAB ruled in favor of GM, finding that LKQ had not demonstrated by a preponderance of the evidence that the cited reference anticipated the claimed design under § 102[1]. For the obviousness analysis, the PTAB applied the Rosen-Durling test2. At step one, the PTAB determined that LKQ’s cited reference did not create “basically the same” visual impression as the claimed design, thus concluding the analysis without proceeding to step two. LKQ appealed this decision to the Federal Circuit, asserting that the KSR[3] decision overruled or abrogated the Rosen-Durling test. The initial Federal Circuit panel affirmed the PTAB’s decision[4], stating it was bound by Rosen-Durling in the absence of a clear directive from the Supreme Court. The panel also upheld the PTAB’s finding on anticipation. However, the full Federal Circuit granted an en banc rehearing. On rehearing, the en banc Federal Circuit upheld the PTAB’s anticipation ruling but vacated and remanded the case for a new determination on obviousness.

In the en banc decision, the Federal Circuit overruled the Rosen-Durling test for assessing the obviousness of design patents.[5] Instead, it adopted the framework established in Graham[6] and supplemented by KSR. The court concluded that the Rosen-Durling test imposed limitations inconsistent with the broad and flexible standard of § 103 and Supreme Court precedents in Graham, KSR, and Whitman Saddle[7].

How the Graham Factors Apply to Design Patents:

Scope and Content of Prior Art:

The scope and content of prior art must be considered based on the knowledge of an ordinary designer in the field. This includes prior art from the same field of endeavor as the claimed design. The analogous art requirement limits the scope of prior art to prevent hindsight bias, ensuring that only relevant prior art is considered. For design patents, the prior art should be related to the design of the same type of article or sufficiently similar articles.

Differences Between Prior Art and Claimed Design:

The differences between the prior art designs and the claimed design must be evaluated by comparing their overall visual appearances. The analysis should focus on whether the claimed design, as a whole, is visually distinct from the prior art, rather than on individual features. This approach rejects the threshold “basically the same” similarity requirement from the Rosen-Durling test.

Level of Ordinary Skill in the Pertinent Art:

The level of ordinary skill in the pertinent art must be assessed, considering the viewpoint of an ordinary designer who designs articles of the type involved in the patent. This factor helps determine what would have been obvious to someone skilled in that particular field of design.

Motivation to Combine:

After evaluating the prior art and the differences, the next step is to assess whether an ordinary designer would have been motivated to modify the primary reference with features from secondary references to create the same overall visual appearance as the claimed design. Both primary and secondary references must be analogous art, but they do not need to be “so related” as previously required. There must be a record-supported reason for combining the references without hindsight.

Secondary Considerations:

The obviousness inquiry for design patents still requires the assessment of secondary considerations as indicia of obviousness or nonobviousness when such evidence is presented. These secondary considerations include factors like commercial success, long-felt but unsolved needs, and failure of others, which may shed light on the circumstances surrounding the origin of the subject matter sought to be patented.

By applying these factors, the Federal Circuit aims to provide a more flexible framework for evaluating the obviousness of design patents, consistent with Supreme Court precedents and the statutory language of § 103.

[1] IPR2020-00534, 2021 WL 3411458.

[2] In re Rosen (C.C.P.A., 1982).

[3] KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).

[4] LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 22-1253, (Fed. Cir. Jan. 20, 2023).

[5] LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 21-2348, slip op. (Fed. Cir. May 21, 2024).

[6] Graham v. John Deere Co., 383 U.S. 1 (1966).

[7] Smith v. Whitman Saddle Company, 148 U.S. 674 (1893).

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