Lkq Corporation v. Gm Global Technology Operations LLC
U.S. Court of Appeals for the Federal Circuit
Lkq Corporation v. Gm Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024)
Lkq Corporation v. Gm Global Technology Operations LLC
Opinion
Case: 21-2348 Document: 227 Page: 1 Filed: 05/21/2024
United States Court of Appeals
for the Federal Circuit
______________________
LKQ CORPORATION, KEYSTONE AUTOMOTIVE
INDUSTRIES, INC.,
Appellants
v.
GM GLOBAL TECHNOLOGY OPERATIONS LLC,
Appellee
______________________
2021-2348
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00534.
______________________
Decided: May 21, 2024
______________________
MARK A. LEMLEY, Lex Lumina PLLC, New York, NY,
argued for appellants. Also represented by MARK P.
MCKENNA; ANDREW HIMEBAUGH, BARRY IRWIN, ARIEL H.
KATZ, IFTEKHAR ZAIM, Irwin IP LLP, Chicago, IL.
JOSEPH HERRIGES, JR., Fish & Richardson P.C., Minne-
apolis, MN, argued for appellee. Also represented by JOHN
A. DRAGSETH, SARAH JACK; NITIKA GUPTA FIORELLA, Wil-
mington, DE.
FARHEENA YASMEEN RASHEED, Office of the Solicitor,
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2 LKQ CORPORATION v.
GM GLOBAL TECHNOLOGY OPERATIONS LLC
United States Patent and Trademark Office, Alexandria,
VA, argued for amicus curiae United States. Also repre-
sented by THOMAS W. KRAUSE, WILLIAM LAMARCA, BRIAN
RACILLA; BRIAN JAMES SPRINGER, Civil Division, United
States Department of Justice, Washington, DC.
JAMES RICHARD FERGUSON, Mayer Brown, LLP, Chi-
cago, IL, for amici curiae Alliance for Automotive Innova-
tion, Rivian Automotive Inc. Also represented by RYAN T.
BABCOCK, BRIAN W. NOLAN, New York, NY.
CHRISTOPHER V. CARANI, McAndrews, Held & Malloy,
Ltd., Chicago, IL, for amicus curiae American Intellectual
Property Law Association. Also represented by DUNSTAN
BARNES; SALVATORE ANASTASI, Barley Snyder LLC, Mal-
vern, PA.
JOHN LOUIS CORDANI, Robinson & Cole LLP, Hartford,
CT, for amici curiae American Property Casualty Insur-
ance Association, Certified Automotive Parts Association,
National Association of Mutual Insurance Companies.
Also represented by BENJAMIN M. DANIELS; KYLE GLENDON
HEPNER, Washington, DC.
MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Wash-
ington, DC, for amici curiae Anthony Andre, Roger Belveal,
Peter Bressler, Gordon Bruce, Pieter den Heten, Michael
Derocher, Sridhar Dhulipala, Edward Dorsa, Valerie Fen-
ster, Timothy Fletcher, Esteban Fridman, Michael Garten,
Deborah George, Joellyn Gray, Jon Christopher Hacker,
David Hodge, Institute for Design Science and Public Pol-
icy, James Kaufman, Haig Khachatoorian, Carlton Lay,
Gustavo Lopes Jota, Theo Mandel, Charles Lee Mauro,
George McCain, Christopher Daniel Morley, Adrian
O'Heney, Nancy Perkins, Scott Peterson, Lloyd Philpott,
Jennifer Pierce, RitaSue Siegel, John Stram, Joyce
Thomas, Steven Visser, Angela Yeh, Sal Ziauddin. Also
represented by ROBERT JAMES SCHEFFEL; PERRY SAIDMAN,
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LKQ CORPORATION v. 3
GM GLOBAL TECHNOLOGY OPERATIONS LLC
Perry Saidman, LLC, Miami Beach, FL.
MARK D. SELWYN, Wilmer Cutler Pickering Hale and
Dorr LLP, Palo Alto, CA, for amicus curiae Apple Inc. Also
represented by SHARCHUN DENNIS WANG; BENJAMIN S.
FERNANDEZ, Denver, CO; MARK CHRISTOPHER FLEMING,
Boston, MA; LAURA E. POWELL, Washington, DC; TRACY-
GENE GRAVELINE DURKIN, Sterne Kessler Goldstein & Fox
PLLC, Washington, DC.
SETH DAVID GREENSTEIN, Constantine Cannon LLP,
Washington, DC, for amicus curiae Auto Care Association.
ROBERT GLENN OAKE, JR., Oake Law Office, Allen, TX,
for amicus curiae Automotive Body Parts Association.
PHILLIP R. MALONE, Juelsgaard Intellectual Property
and Innovation Clinic, Mills Legal Clinic, Stanford Law
School, Stanford, CA, for amici curiae Mark Bartholomew,
Digital Right to Repair Coalition, Shubha Ghosh, iFixit,
Aaron Perzanowski, Ana Santos Rutschman, Joshua D.
Sarnoff, Securepairs, Katherine J. Strandburg, United
States Public Interest Research Group, Inc.
ALEXANDER CHEN, InHouse Co Law Firm, Irvine, CA,
for amicus curiae Eagle Eyes Traffic Industrial Co., Ltd.
FRANK A. ANGILERI, Brooks Kushman PC, Royal Oak,
MI, for amicus curiae Ford Motor Company. Also repre-
sented by MARC LORELLI.
WILLIAM ADAMS, Quinn Emanuel Urquhart & Sullivan,
LLP, New York, NY, for amici curiae Hyundai Motor Com-
pany, Kia Corp. Also represented by DONGKWAN JAMES
PAK, Los Angeles, CA.
ROBERT S. KATZ, Banner & Witcoff, Ltd., for amicus cu-
riae Industrial Designers Society of America, Inc. Also
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4 LKQ CORPORATION v.
GM GLOBAL TECHNOLOGY OPERATIONS LLC
represented by SONIA MARY OKOLIE; ERIK S. MAURER, Chi-
cago, IL.
PAUL BERGHOFF, McDonnell Boehnen Hulbert &
Berghoff LLP, Chicago, IL, for amicus curiae Intellectual
Property Owners Association.
BRUCE EWING, Dorsey & Whitney LLP, New York, NY,
for amicus curiae International Trademark Association.
Also represented by MARTIN SCHWIMMER, Leason Ellis,
LLP, White Plains, NY.
CHARLES R. MACEDO, Amster Rothstein & Ebenstein
LLP, New York, NY, for amicus curiae New York Intellec-
tual Property Law Association. Also represented by DAVID
GOLDBERG; PAUL A. COLETTI, Johnson & Johnson, New
Brunswick, NJ; ROBERT J. RANDO, Greenspoon Marder
LLP, New York, NY; KSENIA TAKHISTOVA, E. Brunswick,
NJ.
ROBERT J. FIGA, Dean & Fulkerson, PC, Troy, MI, for
amicus curiae Taiwan Auto Body Parts Assoc.
______________________
Before MOORE, Chief Judge, LOURIE, DYK, PROST, REYNA,
TARANTO, CHEN, HUGHES, STOLL, and STARK,
Circuit Judges. 1
Opinion for the court filed by Circuit Judge STOLL, in
which Chief Judge MOORE and Circuit Judges DYK,
PROST, REYNA, TARANTO, CHEN, HUGHES, and STARK join.
1 Circuit Judge Newman and Circuit Judge Cun-
ningham did not participate. Circuit Judge Clevenger, who
was a member of the original panel, also did not partici-
pate.
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LKQ CORPORATION v. 5
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Opinion concurring in the judgment filed by
Circuit Judge LOURIE.
STOLL, Circuit Judge.
This case involves the standards for assessing nonobvi-
ousness of design patents under 35 U.S.C. § 103.
The principal question that this case presents is
whether Supreme Court precedent, including KSR Interna-
tional Co. v. Teleflex Inc., 550 U.S. 398 (2007), should cause
us to rethink the long-standing Rosen-Durling test used to
assess nonobviousness of design patents. We answer in the
affirmative and overrule the Rosen-Durling test require-
ments that the primary reference must be “basically the
same” as the challenged design claim and that any second-
ary references must be “so related” to the primary refer-
ence that features in one would suggest application of those
features to the other. We adopt an approach consistent
with Congress’s statutory scheme for design patents, which
provides that the same conditions for patentability that ap-
ply to utility patents apply to design patents, as well as Su-
preme Court precedent which suggests a more flexible
approach than the Rosen-Durling test for determining non-
obviousness.
BACKGROUND
GM Global Technology LLC (“GM”) owns U.S. Design
Patent No. D797,625, which claims a design for a vehicle’s
front fender. This design is used in GM’s 2018–2020 Chev-
rolet Equinox.
Appellants LKQ Corporation and Keystone Automo-
tive Industries, Inc. (collectively “LKQ”) filed a petition to
institute an inter partes review of GM’s D’625 patent, as-
serting that the challenged claim is unpatentable under
35 U.S.C. § 102based on U.S. Design Patent No. D773,340 (“Lian”) or under35 U.S.C. § 103
based on Lian alone or
Lian as modified by a promotional brochure depicting the
design of the front fender on the 2010 Hyundai Tucson
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6 LKQ CORPORATION v.
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(“Tucson”). LKQ presented the following comparisons be-
tween the D’625 patent, Lian, and Tucson:
Appellants’ Br. at 5–6. Figures 1–4 of the D’625 patent il-
lustrate the claimed front fender from a perspective view,
a side view, a front view, and a top view, respectively.
The Board held that LKQ had not established by a pre-
ponderance of evidence that Lian anticipates the claim of
the D’625 patent. LKQ Corp. v. GM Glob. Tech. Operations
Case: 21-2348 Document: 227 Page: 7 Filed: 05/21/2024
LKQ CORPORATION v. 7
GM GLOBAL TECHNOLOGY OPERATIONS LLC
LLC, IPR2020-00534, 2021 WL 3411458, at *16 (P.T.A.B. Aug. 4, 2021) (“Board Decision”). Specifically, the Board applied the ordinary observer test for anticipation of a de- sign patent set forth in Gorham Manufacturing Co. v. White,81 U.S. 511
(1871), which provides that “if, in the eye of an ordinary observer, giving such attention as a pur- chaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an ob- server, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Board Decision,2021 WL 3411458
, at *7 (quoting Gorham,81 U.S. at 528
) (alteration omitted). The Board found that while “there are certain articulable and visible similarities in the overall appearance of the claimed design and Lian that would be apparent to an ordinary observer,” differ- ences between the designs, including (1) the wheel arch shape and the terminus; (2) door cut line; (3) protrusion; (4) sculpting; (5) inflection line; (6) the first and second creases; and (7) the concavity line, affect the overall visual impression of each design such that they are not substan- tially the same.Id.
at *11–16.
The Board then applied the long-standing Rosen-Durl-
ing test to assess the nonobviousness of the claimed design.
Under this two-part test, first, In re Rosen requires that
“[b]efore one can begin to combine prior art designs . . . one
must find a single reference, ‘a something in existence, the
design characteristics of which are basically the same as
the claimed design.’” Durling v. Spectrum Furniture Co.,
Inc., 101 F.3d 100, 103(Fed. Cir. 1996) (quoting In re Rosen,673 F.2d 388, 391
(CCPA 1982)). This primary ref- erence is commonly referred to as the Rosen reference. As the Board explained, Rosen’s “basically the same” test re- quires consideration of the visual impression created by the patented design as a whole. Rosen,673 F.2d at 391
. If no
Rosen reference is found, the obviousness inquiry ends
without consideration of step two. Durling, 101 F.3d
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at 105 (“Without such a primary reference, it is improper
to invalidate a design patent on grounds of obviousness.”).
At step two, Durling requires that “[o]nce this primary
reference is found, other references may be used to modify
it to create a design that has the same overall visual ap-
pearance as the claimed design.” Id. at 103. But another
threshold must be met. Specifically, any secondary refer-
ences must be “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.” Id. (alteration in original) (quoting In re Borden,
90 F.3d 1570, 1575 (Fed. Cir. 1996)).
In this case, the Board determined that LKQ failed to
establish that the challenged claim would have been obvi-
ous because LKQ failed to identify a Rosen reference. LKQ
had proffered Lian as its Rosen reference. Identifying the
same differences it emphasized with regard to anticipation,
the Board found that Lian differs from the claimed design
in “the upper protrusion, the u-shaped notch, the door cut
line, a circular wheel arch, the lower rear terminus, . . .
first and second creases along with the concavity line, and
the inflection line.” Board Decision, 2021 WL 3411458, at *20. Considering these differences together, the Board found that Lian does not “create[] ‘basically the same’ vis- ual impression” as the patented design.Id.
(quoting Durl- ing,101 F.3d at 103
). Accordingly, the Board ended its
obviousness analysis without further consideration.
LKQ appealed, and a panel of this court affirmed the
Board decision. LKQ Corp. v. GM Global Tech. Operations
LLC, No. 2023-2348, 2023 WL 328228(Fed. Cir. Jan. 20, 2023) (“Panel Decision”). The panel concluded that sub- stantial evidence supports the Board’s finding that Lian and the claimed design “created different overall impres- sions” and, thus, Lian did not anticipate the D’625 patent.Id. at *4
. The panel then addressed LKQ’s argument that the Supreme Court’s decision in KSR, implicitly overruled Case: 21-2348 Document: 227 Page: 9 Filed: 05/21/2024 LKQ CORPORATION v. 9 GM GLOBAL TECHNOLOGY OPERATIONS LLC the Rosen and Durling tests. The panel rejected GM’s as- sertion that LKQ forfeited this argument by not raising it before the Board, determining that LKQ’s petition to the Board was “sufficient to preserve the argument” and that “this challenge to Rosen and Durling is a pure question of law that undoubtedly presents a significant question of general impact, favoring the exercise of our discretion to hear and decide this issue.”Id.
at *4–6. On the merits, the panel explained that it could not “overrule Rosen or Durl- ing without a clear directive from the Supreme Court” and “it is not clear” that the Supreme Court had done so.Id. at *6
. In applying Rosen and Durling, the majority af- firmed the Board’s nonobviousness determination, con- cluding that substantial evidence supports the Board’s findings that “LKQ failed to identify ‘the correct visual im- pression created by the patented design as a whole,’” and that “LKQ failed to show that Lian creates ‘basically the same’ visual impression as the claimed design.”Id.
at *6– 7 (first quoting Durling,101 F.3d at 103
; and then quoting
Rosen, 673 F.2d at 390–91).
Judge Stark wrote a concurrence-in-part, disagreeing
with the majority on the issue of forfeiture. He agreed,
however, that it is not clear whether KSR overruled Rosen
or Durling, but noted that there exists “at minimum, sub-
stantial tension between the Supreme Court’s holding in
KSR and our . . . test.” Id. at *13 (Stark, J., concurring-in-
part). The concurrence-in-part elaborated that the Rosen
reference requirement may be “precisely the type of limit-
ing, rigid rule KSR faulted,” as the obviousness analysis
stops without a Rosen reference, and, similarly, the “so re-
lated” requirement of Durling presents “[a]dditional rigid-
ity that might not be appropriate in a post-KSR world.” Id.
Judge Lourie presented additional views, disagreeing
with LKQ’s argument that KSR overruled Rosen because
“KSR did not involve design patents,” which are distinct
from utility patents. Id. at *8 (Lourie, J., additional views).
Judge Lourie further noted that “[w]hile 35 U.S.C.
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§ 103 . . . does not differentiate . . . [and] applies to all types
of patents, the considerations involved in determining ob-
viousness are different” for utility patents versus design
patents. Id. Specifically, for design patents, the consider-
ations include “the overall appearance, visual impressions,
artistry, and style of ornamental subject matter” while for
utility patents, we consider “unexpected properties, utility,
and function.” Id.
This court granted rehearing en banc and vacated the
panel opinion. See LKQ Corp. v. GM Glob. Tech. Opera-
tions LLC, 71 F.4th 1383, 1384(Fed. Cir. 2023). Among other questions, our order requested briefing on: (1) whether KSR overrules or abrogates the Rosen- Durling test; (2) if not, whether the court should nonethe- less eliminate or modify the Rosen-Durling test; and (3) if we answer either of these two questions affirmatively, what test should apply for evaluating design patent obvi- ousness challenges.Id.
at 1384–85. We reinstate the por-
tion of the panel opinion holding that substantial evidence
supports the Board’s finding of no anticipation. The panel
decision remains vacated in all other respects. We vacate
the final written decision of the Board as to the nonobvi-
ousness determination and remand for further proceedings
consistent with this opinion.
DISCUSSION
I
A design patent protects a “new, original and ornamen-
tal design for an article of manufacture.” 35 U.S.C.
§ 171(a). Under the Patent Act, the statutory provisions “relating to patents for inventions,” or utility patents, “shall apply to patents for designs, except as otherwise pro- vided.”Id.
§ 171(b). Our discussion of nonobviousness of a
design or utility patent claim should start with the statu-
tory language of § 103, which states in pertinent part:
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A patent for a claimed invention may not be ob-
tained, notwithstanding that the claimed invention
is not identically disclosed as set forth in section
102, if the differences between the claimed inven-
tion and the prior art are such that the claimed in-
vention as a whole would have been obvious before
the effective filing date of the claimed invention to
a person having ordinary skill in the art to which
the claimed invention pertains.
Id. § 103. The Supreme Court addressed the meaning of
the statute in Graham v. John Deere Co. of Kansas City,
which involved utility patents. 383 U.S. 1(1966). The Court in Graham explained that the ultimate question of obviousness is one of law based on “several basic factual inquiries.”Id. at 17
. The Court elaborated that under
§ 103, these factual inquiries include “the scope and con-
tent of the prior art”; “differences between the prior art and
the claims at issue”; and “the level of ordinary skill in the
pertinent art.” Id. In addition to these factors, “[s]uch sec-
ondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to
give light to the circumstances surrounding the origin of
the subject matter sought to be patented” and may be rele-
vant as “indicia of obviousness or nonobviousness.” Id.
at 17–18. The ultimate question is whether differences be-
tween the claimed invention and the prior art are such that
the claimed invention as a whole would have been obvious
to a person of ordinary skill in the pertinent art at the time
of the invention.
More recently, the Supreme Court again addressed the
standards for assessing nonobviousness in KSR. 550 U.S.
398. There, the district court had held Teleflex’s utility pa-
tent claim obvious based on its findings that (1) a first prior
art reference taught every limitation of the claim except
one; (2) this missing aspect was taught in two other prior
art references; and (3) a person of ordinary skill in the art
would have been motivated to modify the first prior art
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12 LKQ CORPORATION v.
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reference to include the missing aspect taught by the sec-
ondary prior art references. Id. at 413. The Supreme Court in KSR specifically addressed the “teaching, sugges- tion, or motivation” or “TSM” test recited in our precedent, under which a patent claim was only proved obvious if “some motivation or suggestion to combine the prior art teachings” existed in “the prior art, the nature of the prob- lem, or the knowledge of a person having ordinary skill in the art.”Id. at 407
. We had previously applied the TSM test to prevent factfinders from falling victim to hindsight bias in determining whether there was a reason to combine prior art references to arrive at the claimed invention.Id. at 421
.
The Supreme Court rejected our rigid application of the
TSM test in the case before it. The Court explained that
Graham “set forth an expansive and flexible approach in-
consistent with the way the Court of Appeals applied its
TSM test here.” Id. at 415. The Court reasoned that while
factfinders should guard against hindsight, “[r]igid preven-
tative rules that deny factfinders recourse to common
sense” are improper under § 103. Id. at 421. The Court
further explained that a person of ordinary skill in the art
could find a motivation to combine prior art references in
ways other than meeting the TSM test as rigidly applied.
The Court noted, for example, that design incentives and
market forces could be a reason to apply an invention from
one field into another, and that a patent claim might be
proved obvious with a showing that it would have been “ob-
vious to try” a “finite number of identified, predictable so-
lutions” to a problem where there is “a design need or
market pressure to solve.” Id. at 417, 421. The Court ex-
plained that while the TSM test might provide helpful in-
sight on the obviousness of an invention, such insights
“need not become rigid and mandatory formulas” as the
“obviousness analysis cannot be confined by a formalistic
conception.” Id. at 419.
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II
The Supreme Court has also addressed the validity of
design patent claims in view of combined prior art designs.
Most notably, in Smith v. Whitman Saddle Co., the Su-
preme Court considered whether a design patent claim di-
rected to an ornamental design for a saddle was patentable
in view of the combination of two prior art saddles, known
as the Granger tree and the Jenifer or Jenifer-McClellan
tree. 148 U.S. 674, 680 (1893). 2 Comparing the claimed
saddle design to the prior art, the Court explained that:
The saddle design described in the [patent] specifi-
cation differs from the Granger saddle in the sub-
stitution of the Jenifer cantle [raised rear part] for
the low, broad cantle of the Granger tree. In other
words, the front half of the Granger and the rear
half of the Jenifer, or Jenifer-McClellan, make up
the saddle in question, though it differs also from
the Granger saddle in that it has a nearly perpen-
dicular drop of some inches at the rear of the pom-
mel [upper front part], that is, distinctly more of a
drop than the Granger saddle had.
Id. In this way, the Supreme Court explained that the
claimed design was made up of the front half of one known
saddle and the back half (or cantle) of another, with a fur-
ther modification to one half. The Supreme Court ex-
plained that the record evidence showed that there were
several hundred types of saddles, “and that it was custom-
ary for saddlers to vary the shape and appearance of sad-
dletrees [saddle frames] in numerous ways, according to
2 At the time, patent law did not speak of obvious-
ness. The Whitman Saddle Court addressed the matter by
reference to “the inventive faculty.” 148 U.S. at 679. The
reasoning of Whitman Saddle carries over to the modern
§ 103 standard of obviousness.
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14 LKQ CORPORATION v.
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the taste and fancy of the purchaser.” Id. at 681. Address-
ing the combination of the Granger and Jenifer saddles, the
Court determined that “[n]othing more was done in this in-
stance (except as hereafter noted) than to put the two
halves of these saddles together in the exercise of the ordi-
nary skill of workmen of the trade, and in the way and
manner ordinarily done,” and that “the addition of a known
cantle to a known saddle, in view of the fact that such use
of the cantle was common,” did not make the claimed sad-
dle design inventive. Id.
The Court then turned to the primary “difference be-
tween the pommel of [the claimed] saddle [design] and the
pommel of the Granger saddle, namely, the drop at the rear
of the pommel.” Id. The Court withheld judgment on the
validity of the overall design given this secondary differ-
ence in design. Rather, the Court held that if this second-
ary difference was “what was new and to be material,” it
was not present in the potentially infringing saddle, and as
such, no infringement could occur. Id. at 682.
In short, the Court considered the prior art in the field
of the article of manufacture, the knowledge of an ordinary
saddler, and the differences between the prior art and the
claimed design, and concluded that combining the two
known saddle designs was nothing more than an “exercise
of the ordinary skill of workmen of the [saddle] trade.” Id.
at 681. The Court refrained from drawing the same con-
clusion for a secondary modification without evidence that
it was known in the prior art or similar to the existing prior
art references.
III
Our test for design patent obviousness, in its present
form, does not adequately align with KSR, Whitman Sad-
dle, and other precedent, both in terms of its framework
and threshold rigidity. Rosen-Durling is out of keeping
with the Supreme Court’s general articulation of the
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principles underlying obviousness, as well as its specific
treatment of validity of design patents.
LKQ urges us to conclude that KSR overruled or abro-
gated Rosen and Durling. LKQ made the same argument
to the panel, which rejected the argument. See Panel Deci-
sion, 2023 WL 328228, at *6 (“[I]t is not clear the Supreme Court has overruled Rosen or Durling.”). While a panel has the ability only in certain narrow circumstances to con- clude that this court’s own precedent “has been implicitly overruled as inconsistent with intervening Supreme Court authority,” Troy v. Samson Mfg. Corp.,758 F.3d 1322, 1326
(Fed. Cir. 2014), that demanding standard does not bind this court sitting en banc. See South Corp. v. United States,690 F.2d 1368
, 1370 n.2 (Fed. Cir. 1982); Deckers Corp. v. United States,752 F.3d 949, 959
(Fed. Cir. 2014).
We therefore have no need to decide whether that standard
is met here.
The en banc court has never considered the merits of
the Rosen-Durling test, and we now take this opportunity,
sitting en banc, to do so in light of § 103, Supreme Court
precedent, and our own precedent guiding the nonobvious-
ness inquiry for utility patents. We do so bearing in mind
the respect due to long-standing panel precedents even
when the en banc court is newly considering an issue. See
Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305,
1316–17 (Fed. Cir. 2013) (en banc).
We conclude that the Rosen-Durling test require-
ments—that (1) the primary reference be “basically the
same” as the challenged design claim; and (2) any second-
ary references be “so related” to the primary reference that
features in one would suggest application of those features
to the other—are improperly rigid. The statutory rubric
along with Supreme Court precedent including Whitman
Saddle, Graham, and KSR, all suggest a more flexible ap-
proach than the Rosen-Durling test when determining ob-
viousness.
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1
Design patents and utility patents are, of course, dif-
ferent. Nevertheless, “[d]esign patents, like utility patents,
must meet the nonobviousness requirement of 35 U.S.C.
§ 103.” Titan Tire Corp. v. Case New Holland, Inc.,566 F.3d 1372, 1380
, 1384–85 (Fed. Cir. 2009); see also35 U.S.C. § 171
(b) (“The provisions of this title relating to
patents for inventions shall apply to patents for designs,
except as otherwise provided.”).
The § 103 obviousness language sets forth an expan-
sive and flexible approach for assessing obviousness, in-
volving assessment of the “differences between the claimed
invention and the prior art” and whether those differences
are such that the invention as a whole would have been
obvious to a person of ordinary skill in the field to which
the claimed design pertains. Rosen’s rigid requirement
limiting a primary reference to designs that are “basically
the same” as the claimed design—and abruptly ending the
analysis in the absence of such a reference—imposes limi-
tations absent from § 103’s broad and flexible standard.
The Rosen “basically the same” requirement is also in-
consistent with the Supreme Court’s analysis in Whitman
Saddle. There, the Court did not ask whether the design
of the prior art Granger saddle was “basically the same” as
the claimed saddle design. Instead, the Supreme Court
acknowledged that the claimed design combined the front
half of Granger with the rear half of Jenifer, 148 U.S.
at 680, suggesting that neither Granger nor Jenifer would qualify as a Rosen reference. Moreover, even though nei- ther prior art saddle design was “basically the same” as the claimed design, the Supreme Court continued its analysis and held that combining the front half of the Granger sad- dle with the back half of the Jenifer saddle was not in- ventive because it was “customary for saddlers” to make such combinations.Id. at 681
. This analysis reflects the
reality that the one-size-fits all approach of Rosen—in
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which a single primary reference discloses nearly every as-
pect of the claimed design—does not fit all obviousness sce-
narios for designs and cannot be reconciled with Supreme
Court precedent.
Indeed, as the Supreme Court explained in KSR, “when
a court transforms [a] general principle into a rigid rule
that limits the obviousness inquiry, . . . it errs.” KSR,
550 U.S. at 419. The Court in KSR emphasized that both
§ 103 and Graham “set forth an expansive and flexible ap-
proach” to obviousness and reiterated “the need for caution
in granting a patent based on the combination of elements
found in the prior art.” Id. at 415. Continuing, the Court
explained, “[r]igid, preventative rules that deny factfinders
recourse to common sense, . . . are neither necessary under
our case law nor consistent with it.” Id. at 421. Because
the strict Rosen reference requirement—in which an obvi-
ousness analysis fails absent a prior art design that is “ba-
sically the same” as the claimed design—is such a rigid
rule, we conclude that it is inconsistent with the Supreme
Court’s general guidance in KSR.
2
We reach the same conclusion for step two of the Rosen-
Durling test. Under step two, a fact finder may consider
ornamental features missing in a primary reference but
shown in secondary reference(s) only when the secondary
reference(s) 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.” Durling, 101 F.3d at 103(alterations omitted) (quoting Borden,90 F.3d at 1575
). Like the Rosen refer-
ence requirement, this “so related” requirement is at odds
with the broad standard for obviousness set forth in § 103
and Supreme Court precedent.
First, § 103 requires consideration of the differences
between the claimed design and prior art designs and an
inquiry into whether those differences would have been
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obvious to a person of ordinary skill in the relevant field.
When the answer to this question is affirmative, the stat-
ute provides that a patent may not be obtained. The stat-
ute gives no indication that a secondary prior art reference
need be “so related” to the primary that—as the Durling
test is too readily understood to demand—it creates its own
motivation to combine the two prior art references.
We agree with LKQ that Durling’s inflexible “so re-
lated” requirement is analogous to the rigid application of
the teaching-suggestion-motivation test rejected by the Su-
preme Court in KSR. Just as the Supreme Court in KSR
explained that the TSM test had sometimes been applied
as if it had evolved from a useful insight to a rigid rule, the
Durling “so related” requirement has evolved into a rigid
rule that limits the broad standard set forth in § 103 and
“den[ies] factfinders recourse to common sense” when as-
sessing a motivation to combine prior art references. KSR,
550 U.S. at 421.
The Durling so-related test is also inconsistent with
the Supreme Court’s decision in Whitman Saddle. There,
in considering a claimed design that essentially combined
the front half of the Granger saddle with the rear half (spe-
cifically, the cantle) of the Jenifer saddle, the Supreme
Court did not ask whether the Granger and Jenifer refer-
ences were “so related” that the use of certain ornamental
features in one would suggest the application of those fea-
tures to the other. Whitman Saddle, 148 U.S. at 680–81.
Rather, in a manner consistent with the Graham frame-
work for assessing obviousness of utility patents, the Su-
preme Court explained that it was not inventive for a
saddler to combine the front half of Granger with the cantle
of Jenifer because record evidence established that “it was
customary for saddlers to vary the shape and appearance
of saddletrees in numerous ways, according to the taste
and fancy of the purchaser” and “the Jenifer cantle was
used upon a variety of saddles.” Id. at 681. The Court rea-
soned that, based on this evidence, “[n]othing more was
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done in this instance (except as hereafter noted) than to
put the two halves of these saddles together in the exercise
of the ordinary skill of workmen of the trade, and in the
way and manner ordinarily done.” Id. Continuing, the
Court explained the “addition of a known cantle to a known
saddle,” was not inventive “in view of the fact that such use
of the cantle was common.” Id. The Court thus relied on
the knowledge and practice of a saddler or ordinary work-
man of the trade instead of a “so related” requirement to
combine prior art references. Id.
IV
Having overruled Rosen and Durling, we consider what
the framework for evaluating obviousness of design patent
claims should be. We are guided by the language of § 103,
as well as the Supreme Court’s and our court’s precedent
on obviousness in both the design and utility patent con-
texts. We are also mindful of the differences between de-
sign and utility patents, as well as the policy concerns
emphasized by the parties and amici. Ultimately, we agree
with our precedent holding that “[i]nvalidity based on ob-
viousness of a patented design is determined [based] on fac-
tual criteria similar to those that have been developed as
analytical tools for reviewing the validity of a utility patent
under § 103, that is, on application of the Graham factors.”
Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462
(Fed. Cir. 1997).
1
Applying Graham factor one, the fact finder should
consider the “scope and content of the prior art” within the
knowledge of an ordinary designer in the field of the design.
See Graham, 383 U.S. at 17. In determining the scope of
the prior art, there is no threshold similarity or “basically
the same” requirement to qualify as prior art. Rather, an
analogous art requirement applies to each reference. The
analogous art requirement reins in the scope of prior art
and serves to guard against hindsight. We reaffirm that
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an analogous art requirement applies for obviousness of de-
sign patents. 3
We have stated that a “reference qualifies as prior art
for an obviousness determination only when it is analogous
to the claimed invention.” Airbus S.A.S. v. Firepass Corp.,
941 F.3d 1374, 1379(Fed. Cir. 2019) (citing In re Klein,647 F.3d 1343, 1348
(Fed. Cir. 2011)). The analogous art requirement is tied to the statutory language of § 103 in that it provides the perspective of the person of ordinary skill in the art by defining that person’s scope of knowledge. The rationale is that a person of ordinary skill “could not possibly be aware of every teaching in every art” and thus we limit the scope of the prior art to analogous arts. See Airbus, 941 F.3d at 1381–82 (quoting In re Wood,599 F.2d 1032, 1036
(CCPA 1979)). The analogous art requirement is also “meant to defend against hindsight.” See Netflix, Inc. v. DivX, LLC,80 F.4th 1352, 1358
(Fed. Cir. 2023) (quoting Kahn, 441 F.3d at 987); see also In re Oetiker,977 F.2d 1443, 1447
(Fed. Cir. 1992) (“The combination of
elements from non-analogous sources, in a manner that re-
constructs the applicant’s invention only with the benefit
3 Neither party has argued at any stage of this ap-
peal that an analogous art requirement should not apply
when determining obviousness of design patent claims.
See Oral Arg. at 0:30–0:57 (LKQ agreed that a design pa-
tent analogous arts test should exist); id.at 31:42–31:47 (United States agreed with the same); andid.
at 1:09:56– 1:10:11 (GM agreed regarding the potential scope of analo- gous art), https://oralarguments.cafc.uscourts.gov/de- fault.aspx?fl=21-2348_02052024.mp3. It is also well established that the analogous art requirement is part of the Graham analysis. See In re Kahn,441 F.3d 977
, 986
(Fed. Cir. 2006) (“[T]he ‘analogous art’ test . . . has long
been part of the primary Graham analysis articulated by
the Supreme Court.”).
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of hindsight, is insufficient to present a prima facie case of
obviousness.”).
An important precedent that preceded adoption of the
Rosen-Durling test, and introduced the “so related” phrase,
supports application of an analogous art requirement to de-
sign patents. In In re Glavas, 230 F.2d 447(CCPA 1956), the patent at issue related to the ornamental design for a float (e.g., a life preserver) and the Board affirmed a final rejection of the patent based on a patent relating to a float in view of patents relating to a cushion and a pillow. The Board added an additional ground for rejection based on other secondary references—patents relating to bottles, a razor blade sharpener, and a bar of soap. On appeal, the court grappled with whether the analogous art require- ment for utility patents applies to obviousness of design pa- tents. Ultimately, the court concluded that “[t]he principle of nonanalogous arts . . . cannot be applied to design cases in exactly the same manner as to mechanical cases,” be- cause design patent combinations rely on appearance ra- ther than use. Glavas,230 F.2d at 450
. In the very next sentence, the Glavas court then created the “so-related” re- quirement for design cases: “The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those fea- tures to the other.”Id.
In applying the “so related” test, the court addressed the analogous art issue by noting that while pillows may plausibly be related art to a float, a de- signer of a float would not likely turn to bottles, soap, or razor blade sharpeners for design inspiration.Id.
at 450–
51.
Glavas thus created the “so related” test as a design-
context proxy or replacement for the analogous art require-
ment of utility cases. Unfortunately, application of the
Rosen-Durling test over time has become rigid to the point
where we abandon it today. But there is no basis for
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22 LKQ CORPORATION v.
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abandoning the underlying analogous art requirement for
assessing nonobviousness of design patents and we return
to a more flexible fact-based analysis of whether the refer-
ences are analogous art in a manner similar to utility pa-
tents. This approach casts aside a threshold “so-related”
requirement but maintains the threshold analogous art re-
quirement.
For utility patents, we use a two-part test to determine
the scope of analogous art: (1) whether the art is from the
same field of endeavor as the claimed invention; and (2) if
the reference is not within the field of the inventor’s en-
deavor, whether the reference still is reasonably pertinent
to the particular problem with which the inventor is in-
volved. See Airbus S.A.S, 941 F.3d at 1379. This is a fact- dependent inquiry that requires a case-by-case determina- tion. Seeid.
(“Whether a reference qualifies as analogous
prior art is a question of fact . . . .”).
We conclude that the first part of this two-part test ap-
plies to design patents in a straightforward manner. In
other words, analogous art for a design patent includes art
from the same field of endeavor as the article of manufac-
ture of the claimed design. See 35 U.S.C. § 171(a) (“Who- ever invents any new, original and ornamental design for an article of manufacture may obtain a patent there- for . . . .” (emphasis added)). As we have previously held, “[t]he scope of the prior art is not the universe of abstract design and artistic creativity, but designs of the same arti- cle of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” Hupp,122 F.3d at 1462
.
On the other hand, the second part of the two-part
analogous art test for utility patents would not seem to ap-
ply to design patents in the same way, and how to translate
this part of the test into the design context is less apparent.
Unlike a utility patent, a design patent itself does not
clearly or reliably indicate “the particular problem with
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GM GLOBAL TECHNOLOGY OPERATIONS LLC
which the inventor is involved.” See Airbus S.A.S, 941 F.3d
at 1379(emphasis added). Indeed, design patents have no written description or written claims to define their scope; the invention is defined by the overall visual impression that the drawings convey. See Egyptian Goddess, Inc. v. Swisa Inc.,543 F.3d 665
, 679–80 (Fed. Cir. 2008) (en
banc) (a design claim is better represented by an illustra-
tion). Moreover, at oral argument, the parties disputed
whether an ornamental design for an article of manufac-
ture could be viewed as solving a problem. See Oral Arg.
at 2:08–3:11, 1:09:12–1:10:29, https://oralarguments.cafc.
uscourts.gov/default.aspx?fl=21-2348_02052024.mp3.
In this opinion, we do not delineate the full and precise
contours of the analogous art test for design patents. Prior
art designs for the same field of endeavor as the article of
manufacture will be analogous, and we do not foreclose
that other art could also be analogous. Whether a prior art
design is analogous to the claimed design for an article of
manufacture is a fact question to be addressed on a case-
by-case basis and we “leave it to future cases to further de-
velop the application of this standard.” Cf. Egyptian God-
dess, 543 F.3d at 679(quoting In re Seagate Tech., LLC,497 F.3d 1360
, 1371 (Fed. Cir. 2007) (en banc)).
In applying Graham factor one, the scope and content
of the prior art, a primary reference must be identified.
Identifying a primary reference protects against hindsight
because “almost every new design is made up of elements
which, individually, are old somewhere in the prior art.”
Glavas, 230 F.2d at 450. As noted above, this primary ref- erence need not be “basically the same” as the claimed de- sign. Rather, the primary reference need only be “something in existence—not . . . something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every indi- vidual feature.” In re Jennings,182 F.2d 207, 208
(CCPA
1950). The primary reference will likely be the closest prior
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24 LKQ CORPORATION v.
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art, i.e., the prior art design that is most visually similar to
the claimed design. The more visually similar the primary
reference design is to the claimed design, the better posi-
tioned the patent challenger will be to prove its § 103 case.
The primary reference will typically be in the same field of
endeavor as the claimed ornamental design’s article of
manufacture, but it need not be, so long as it is analogous
art. It is often the case that the primary reference alone
does not render the claimed design obvious, and design el-
ements from secondary prior art references may be consid-
ered as discussed below.
2
After considering the scope and content of the prior art,
we turn to Graham factor two: determining the differences
between the prior art designs and the design claim at issue.
Graham, 383 U.S. at 17. This approach casts aside a
threshold “similarity” requirement.
The Supreme Court has explained that design patents
protect the appearance of the design on an article of man-
ufacture, and thus, in the context of design patent infringe-
ment, we compare the visual appearance of the claimed
design with that of allegedly infringing design. See
Gorham, 81 U.S. at 526–27 (“[T]he true test of identity of
design . . . must be sameness of appearance”); see also
Egyptian Goddess, 543 F.3d at 676(focusing on the “over- all appearance of the design” when assessing infringe- ment). Likewise, in addressing the differences between the claimed design and prior art designs for validity purposes, we compare the visual appearance of the claimed design with prior art designs, albeit from the perspective of an or- dinary designer in the field of the article of manufacture. See Apple, Inc. v. Samsung Elects., Co.,678 F.3d 1314, 1329
(Fed. Cir. 2012) (characterizing obviousness as whether “one of ordinary skill would have combined teach- ings of the prior art to create the same overall visual ap- pearance as the claimed design”) (quoting Titan Tire, Case: 21-2348 Document: 227 Page: 25 Filed: 05/21/2024 LKQ CORPORATION v. 25 GM GLOBAL TECHNOLOGY OPERATIONS LLC566 F.3d at 1381
); Borden,90 F.3d at 1574, 1576
(affirm- ing the Board’s affirmance of an obviousness rejection where the examiner found “differences between the [prior art] and appellant’s design had little or no effect on the overall appearance of the design”); Dobson v. Dornan,118 U.S. 10, 15
(1886) (“Undoubtedly, the claim in this case
covers the design as a whole, and not any part of it as a
part, and it is to be tested as a whole as to novelty and in-
fringement.”).
3
Under Graham factor three, “the level of ordinary skill
in the pertinent art [must be] resolved.” Graham, 383 U.S.
at 17. This requirement comes directly from § 103, which provides that a claimed invention is unpatentable if it “would have been obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to which the claimed invention pertains.”35 U.S.C. § 103
.
In the design patent context, we have interpreted “a
person of ordinary skill in the art to which the invention
pertains” in § 103 as meaning that obviousness of a design
patent claim is assessed from the viewpoint of an ordinary
designer in the field to which the claimed design pertains.
In In re Nalbandian, our predecessor court explained that,
consistent with Graham, “[i]n design cases we will consider
the fictitious person identified in § 103 as ‘one of ordinary
skill in the art’ to be the designer of ordinary capability who
designs articles of the type presented in the application.”
661 F.2d 1214, 1216(CCPA 1981). In other words, for Gra- ham factor three, we consider the knowledge of “a designer of ordinary skill who designs articles of the type involved.” Borden,90 F.3d at 1574
(citation omitted); Hupp,122 F.3d at 1462
(“The determination of the ultimate question of ob- viousness is made from the viewpoint of a person of ordi- nary skill in the field of the patented design.”); Whitman Saddle,148 U.S. at 681
(determining patentability from
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26 LKQ CORPORATION v.
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the perspective of “the ordinary skill of workmen of the
trade” and an ordinary “saddler”).
4
After ascertaining the knowledge of an ordinary de-
signer in the relevant field, the scope and content of the
prior art, and the differences between the prior art and the
claimed design, the obviousness or nonobviousness of the
claimed design is evaluated. We have previously described
this inquiry as whether an ordinary designer in the field to
which the claimed design pertains would have been moti-
vated to modify the prior art design “to create the same
overall visual appearance as the claimed design.” Camp-
bell Soup, Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1275 (Fed. Cir. 2021) (citation and quotation marks omitted); see also Borden,90 F.3d at 1574
. We reaffirm that the “in- quiry focuses on the visual impression of the claimed de- sign as a whole and not on selected individual features.” Borden,90 F.3d at 1574
.
Where a primary reference alone does not render the
claimed design obvious, secondary references may be con-
sidered. The primary and secondary references need not
be “so related” such that features in one would suggest ap-
plication of those features in the other but they must both
be analogous art to the patented design. Consistent with
KSR, the motivation to combine these references need not
come from the references themselves. KSR, 550 U.S.
at 418–19 (rejecting a rigidly applied TSM test). But there
must be some record-supported reason (without hindsight)
that an ordinary designer in the field of the article of man-
ufacture would have modified the primary reference with
the feature(s) from the secondary reference(s) to create the
same overall appearance as the claimed design. See Camp-
bell Soup, 10 F.4th at 1275 (discussing the question of
whether “an ordinary designer would have modified the
primary reference to create a design that has the same
overall visual appearance as the claimed design”); see also
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Amicus United States Br. at 12–13 (describing factors to
consider including “ordinarily skilled designer’s experi-
ence, creativity,” as well as “what market demands and in-
dustry customs exist” in the relevant field and, “which
ornamental features are commonplace in the relevant
field”). Just as with the analogous art inquiry, in the area
of motivation to combine, the problem to be solved may
have less relevance in the design patent context than in the
utility patent context. Of course, it follows that the more
different the overall appearances of the primary reference
versus the secondary reference(s), the more work a patent
challenger will likely need to do to establish a motivation
to alter the primary prior art design in light of the second-
ary one and demonstrate obviousness without the aid of
hindsight.
5
Consistent with Graham, the obviousness inquiry for
design patents still requires assessment of secondary con-
siderations as indicia of obviousness or nonobviousness,
when evidence of such considerations is presented. Gra-
ham, 383 U.S. at 17–18 (“Such secondary considerations as
commercial success, long felt but unsolved needs, failure of
others, etc., might be utilized to give light to the circum-
stances surrounding the origin of the subject matter sought
to be patented.”). In prior cases involving design patents,
we have confirmed that commercial success, industry
praise, and copying may demonstrate nonobviousness of
design patents. Campbell Soup, 10 F.4th at 1276–79 (con-
sidering evidence of commercial success, industry praise,
and copying); MRC Innovations, Inc. v. Hunter Mfg., LLP,
747 F.3d 1326, 1335–36 (Fed. Cir. 2014) (same). We do not
disturb our existing precedent regarding the application of
secondary considerations such as commercial success, in-
dustry praise, and copying to the obviousness analysis in
design patents. It is unclear whether certain other factors
such as long felt but unsolved needs and failure of others
apply in the design patent context. We leave to future
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28 LKQ CORPORATION v.
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cases the determination of whether considerations such as
long felt but unsolved need and failure of others will have
significance to the obviousness inquiry in the design patent
context. 4
6
We recognize that GM and several amici have raised
concerns as to the uncertainty that may result from over-
ruling the Rosen-Durling test and applying a new test. GM
argues that eliminating the test will “revert to a rudderless
free-for-all [and] will increase confusion, disrupt settled ex-
pectations, and leave lower courts and factfinders without
the necessary guidelines to properly conduct the obvious-
ness analysis.” Appellee’s Br. at 13. Along the same lines,
amici argue that “[e]liminating this framework now carries
great risk, including exposing up to 400,000 U.S[.] design
patents to substantial uncertainty [and] upsetting settled
expectations for applicants before the USPTO and the pub-
lic at large.” Amicus Am. Intell. Prop. L. Ass’n Br. at 26;
see also Amicus Intell. Prop. Owners Ass’n Br. at 15 (“Elim-
ination would leave USPTO examiners and design patent
owners without any analytical framework for evaluating
obviousness tailored to design patents.”).
We do not agree. The Graham four-part obviousness
test for utility patents has existed for a very long time and
there is considerable precedent from which the PTO and
the courts can draw when assessing obviousness in the de-
sign patent context. As the Supreme Court acknowledged
in Graham, there may well be some difficulties with this
4 It is possible that the rigid requirements of Rosen-
Durling have, to date, prevented the development of a sub-
stantial body of caselaw considering the application of sec-
ondary considerations to obviousness analyses of design
patents.
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fact-based non-rigid test, but these difficulties are not un-
usual:
This is not to say, however, that there will not be
difficulties in applying the nonobviousness test.
What is obvious is not a question upon which there
is likely to be uniformity of thought in every given
factual context. The difficulties, however, are com-
parable to those encountered daily by the courts in
such frames of reference as negligence and scien-
ter, and should be amendable to a case-by-case de-
velopment.
Graham, 383 U.S. at 18. This test has proven workable for
utility patents and we see no reason why it would not be
similarly workable for design patents. As with any change,
there may be some degree of uncertainty for at least a brief
period, but our elimination of the rigid Rosen-Durling test
is compelled by both the statute and Supreme Court prec-
edent.
V
Turning to the merits of the specific case before us, we
vacate the Board’s determination of nonobviousness of the
D’625 patent. We remand for the Board to address in the
first instance whether the D’625 patent would have been
nonobvious under 35 U.S.C. § 103 based on Lian alone or
Lian as modified by Tucson, applying the framework for
evaluating obviousness of design patent claims set forth in
this opinion.
As an alternative ground for holding the D’625 patent
nonobvious, the Board held that LKQ’s failure to identify
“the correct visual impression created by the patented de-
sign as a whole” in its claim construction, “standing alone,
justifies [the Board’s] conclusion that LKQ fails also to
prove by a preponderance of the evidence that the chal-
lenged claim of the ’625 patent is unpatentable.” Board
Decision, 2021 WL 3411458, at *17 (quoting Durling,
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30 LKQ CORPORATION v.
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101 F.3d at 103). We have repeatedly held that tribunals “should not treat the process of claim construction [in de- sign patent cases] as requiring a detailed verbal descrip- tion of the claimed design, as would typically be true in the case of utility patents.” Egyptian Goddess,543 F.3d at 680
; see also Crocs, Inc. v. Int’l Trade Comm’n,598 F.3d 1294
, 1302–03 (Fed. Cir. 2010) (stating that for design patents, “claim construction must be adapted to a pictorial setting” and warning of “the dangers of reliance on a detailed verbal claim construction”). Rather, the tribunal is not “obligated to issue a detailed verbal description of the design” as “a design is better represented by an illustration.” Egyptian Goddess,543 F.3d at 679
. We reaffirm this principle and
hold that the Board erred in rejecting LKQ’s asserted obvi-
ousness grounds on this basis.
CONCLUSION
As explained above, we reinstate the portion of the
panel opinion affirming the Board’s finding of no anticipa-
tion. We also vacate the Board’s nonobviousness determi-
nation and remand for further proceedings consistent with
this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
Case: 21-2348 Document: 227 Page: 31 Filed: 05/21/2024
United States Court of Appeals
for the Federal Circuit
______________________
LKQ CORPORATION, KEYSTONE AUTOMOTIVE
INDUSTRIES, INC.,
Appellants
v.
GM GLOBAL TECHNOLOGY OPERATIONS LLC,
Appellee
______________________
2021-2348
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00534.
______________________
LOURIE, Circuit Judge, concurring in judgment.
I concur in the court’s decision to vacate and remand
the Board’s decision for it to reevaluate the validity of the
claimed design in light of the majority opinion.
I write separately because I do not agree that we need
to “overrule” In re Rosen, 673 F.2d 388(CCPA 1982) and Durling v. Spectrum Furniture Co.,101 F.3d 100
(Fed. Cir. 1996). To the extent that KSR International Co. v. Teleflex Inc.,550 U.S. 398
(2007) abjured what it called rigid tests
for evaluating patent issues, all we needed to do in this case
was to make the Rosen and Durling precedents less rigid.
Their use of “must” and “only” in their analyses are the only
signs of rigidity in those opinions. Replacing them with
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2 LKQ CORPORATION v.
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words such as “generally,” “usually,” or “typically” would
have sufficed. Otherwise, they were basically correct on
the law.
Rosen was decided by a Court of Customs and Patent
Appeals (“CCPA”) panel that consisted in part of Judges
Markey, Rich, and Nies, a group that one might say knew
a bit about patent law, including the analysis of obvious-
ness. And Durling, decided by an equally knowledgeable
panel of this court, merely cemented an already long-stand-
ing principle likewise established by the CCPA in In re Gla-
vas, 230 F.2d 447, 450 (CCPA 1956). The basics of the Rosen-Durling framework have therefore existed, and been consistently applied to design patent validity, for decades and long after Smith v. Whitman Saddle Co.,148 U.S. 674
(1893).
Perhaps, in the fullness of time and in light of KSR, it
can be seen that Rosen and Durling may have used overly
strong language. But, “overruled”? It only needed to be
modified. Overruling is destabilizing. Courts should, if
possible, rule in modest steps, not abrupt acts of overrul-
ing. Even post-KSR, we did not wholly abandon the re-
quirement that there be a motivation to combine simply
because the Supreme Court criticized one instance of its
application. And since KSR, we have continued to apply
tests and frameworks for validity. See, e.g., Graham v.
John Deere Co., 383 U.S. 1 (1965).
The majority walks away from Rosen and Durling as if
they violated basic tenets of patent law. In reality, all they
needed was a bit of tinkering. It is important to note that
the U.S. Patent and Trademark Office, which also knows a
good deal about evaluating design patents, basically en-
dorsed Rosen and Durling, but found their application
needed a little more flexibility. Oral Arg. at 32:25–48
(“We’re saying that the existing test is fine . . . . The Rosen-
Durling test is fine, but we do recommend some changes to
it.”).
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LKQ CORPORATION v. 3
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The substantial briefing by amici in this en banc appeal
was primarily dominated by entities with economic inter-
est in the outcome of the case—supporters of automotive
manufacturers, automotive part replacement companies,
and insurance companies, each advocating for results and
legal concepts supporting their economic interests. That is
fine, but we most benefit from entities without an economic
bias.
Broad-based organizations with a primary interest in
the stability and clarity of the law have told us that the
Rosen-Durling test is basically correct. They include the
American Intellectual Property Law Association, the Insti-
tute for Design Science and Public Policy, the International
Trademark Association, the Industrial Designers Society of
America, and others, all of whom supported this precedent,
which the court now “overrules.” Am. Intellectual Prop.
Ass’n Amicus Br., ECF 136 at 31 (“[T]he Rosen-Durling
framework . . . allows for an expansive and flexible ap-
proach consistent with the principles of KSR” and “elimi-
nating [it] would cause unnecessary uncertainty in an area
of design patent law that has worked reasonably well for
over 40 years.”); Inst. for Design Sci. and Pub. Policy et al.
Amicus Br., ECF 144 at 37 (“Eliminating the Rosen-Durl-
ing test will unnecessarily harm design innovation.”); In-
dus. Designers Soc’y of Am. Amicus Br., ECF 193 at 5 (“[I]t
is evident that this Court should uphold the existing Rosen-
Durling framework.”); Int’l Trademark Ass’n Amicus Br.,
ECF 201 at 12 (“The Rosen-Durling test sets the appropri-
ate balance for determining the obviousness of a design,
and the Court should not abandon it.”).
The essence of Rosen and Durling is that for obvious-
ness, which generally assumes that one reference does not
anticipate the claimed design, one ought to have a basic
starting reference with “basically the same” “design char-
acteristics” as the challenged design and a second one that
is “so related” as to result in a conclusion of obviousness.
Rosen, 673 F.2d at 391; Durling,101 F.3d at 103
(citation
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4 LKQ CORPORATION v.
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omitted). What the majority is doing here is confirming
these concepts while overruling their cases of origin, just to
make minor modifications in their language.
Presumably, such a basic starting reference, just as
with utility patents, should be the closest prior art. The
majority uses that phrase only once, Maj. Op. at 23–24, but
it ought to be central, as it is with utility patents. It does
state that “a primary reference must be identified” and it
“will likely be . . . the prior art design that is most visually
similar to the claimed design.” Id. But we did not need to
“overrule” a case with language that a reference’s “design
characteristics” must be “basically the same” to substitute
“most visually similar.” Those two phrases themselves are
basically the same or similar. 1 Maybe the word “must”
used in Rosen was excessive, but the thought expressed
was sound.
As the majority acknowledges, the primary reference
must fall within the range of what may be called analogous
art. Maj. Op. at 24 (“The primary reference will typically
be in the same field of endeavor as the claimed ornamental
design’s article of manufacture, but it need not be, so long
1 “Basically the same” did not mean that a reference
and the challenged design must be near-identical or even
substantially the same. Indeed, such an interpretation
would conflate anticipation and obviousness. See Gorham
Co. v. White, 81 U.S. 511, 528(1871) (explaining that in- fringement, which has the same test as anticipation, Int’l Seaway Trading Corp. v. Walgreens Corp.,589 F.3d 1233, 1240
(Fed. Cir. 2009), considers whether or not the “two designs are substantially the same”). Rather, “basically” meant “generally” or “roughly.” Moreover, Rosen did not require that the primary reference be “basically the same” as the claimed design, but only that the primary reference have “design characteristics of which are basically the same as the claimed design.”673 F.2d at 391
(emphasis added). Case: 21-2348 Document: 227 Page: 35 Filed: 05/21/2024 LKQ CORPORATION v. 5 GM GLOBAL TECHNOLOGY OPERATIONS LLC as it is analogous art.”). But the majority sets forth the test for analogous art as part of the obviousness inquiry. See Maj. Op. Sec. IV.1 (considering whether or not a reference is analogous art as part of its Graham factor one analysis). Properly understood, the analogous art test is not a test for obviousness. It is a gateway. Determining whether art is analogous is determining what may properly be considered in an obviousness inquiry, not part of the test for what would have been considered obvious. It is a threshold for qualifying art, not an indicator of obviousness. E.g., In re Klein,647 F.3d 1343, 1348
(Fed. Cir. 2011) (“A reference
qualifies as prior art for an obviousness determination un-
der § 103 only when it is analogous to the claimed inven-
tion.”). In my view, it should not be defined as a test for
considering obviousness. That misconstrues its role in the
analysis.
Moving to the second step of the Rosen-Durling test, an
examiner or challenger might find another reference that,
combined with the basic reference, might lead a skilled de-
signer to what is claimed. That is where the “so-related”
language in Durling comes in. The additional reference, or
references, in order to lead to obviousness, must be “so re-
lated” to the primary reference that “the appearance of cer-
tain ornamental features in one would suggest the
application of those features to the other.” Durling,
101 F.3d at 103(quoting In re Borden,90 F.3d 1570, 1575
(Fed. Cir. 1996) (quoting Glavas,230 F.2d at 450
)). Such a
reference or references would also be within the scope of
analogous art in order to be combinable with the basic ref-
erence. Again, perhaps the word “only” in Durling is exces-
sive. But it just needed to be fine-tuned, not “overruled.”
And that is essentially what the majority did, merely swap-
ping the “so related” language of Durling for “some record-
supported reason . . . that an ordinary designer . . . would
have modified the primary reference . . . .” Maj. Op. at 26.
Rosen and Durling therefore expressed the same con-
cepts now adopted by the majority, albeit with a couple of
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6 LKQ CORPORATION v.
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unnecessarily strong words. Such a basic analysis was
simply the way obviousness is examined and should be con-
sidered with design as well as with utility patents. Indeed,
the Rosen-Durling framework has already been long-re-
garded as the application of the relevant Graham factors
to design patents. See, e.g., Campbell Soup Co. v. Gamon
Plus, Inc., 10 F.4th 1268, 1275 (Fed. Cir. 2021); Hupp v. Siroflex of Am., Inc.,122 F.3d 1456, 1462
(Fed. Cir. 1997).
With those thoughts, Rosen and Durling should have
been allowed to stand, as modified, rather than been deci-
sively overruled.
With that being said, I agree that the Board’s decision
should be vacated and remanded.
Reference
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