Redesigning Design Patent Validity: the Federal Circuit changes the obviousness test

The Federal Circuit has just changed a decades old test for deciding if a design patent is invalid as obvious.  Let’s see what’s going on here.

 Design patents

There was a time when design patents seemed to be the second-class citizens of patents.  They covered the way things looked and not how they worked.  And they weren’t making the headlines with big jury verdicts the way utility patents were. 

But design patents started to ascend, at least in my observation, with the Apple v. Samsung cases.  In one case, a Northern California jury awarded Apple hundreds of millions of dollars based on infringement of Apple’s design patents.  The patents included those on a black rectangular front face with rounded corners and a grid with 16 colorful icons on a black screen. 

 Eventually, in 2016, the Supreme Court limited the amount for damages available for infringement of design patents.  Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (2016).   The Supreme Court said the damages would be based on sales of the components covered by the patents and not on the sale of the whole phone.  That would likely reduce available damages considerably.  The case was remanded, and the parties later settled.  But design patents were definitely on the map.   

They are on the map again.  The Court of Appeals for the Federal Circuit, which hears appeals from patent decisions by federal courts around the county, recently revised the test for the validity of design patents.  It will now be easier to attack them. 

 Patent Validity 101

 First, some background, starting with utility patents. A utility patent covers how things work and not how they look. To be valid, the claimed invention must be new, or “novel” in patent parlance.  Otherwise, it’s not an invention.  If the person applying for the patent is not the first inventor, he or she is not entitled to a patent. 

 The easiest way to show someone is not the inventor is to find evidence of the claimed invention being made by others.   If its exactly the same, that’s fairly easy.  But what if it is almost the same, but is an obvious change to known art?  If it is something that someone skilled in the art could readily figure out, the claimed invention is invalid as “obvious.”  It is not entitled to a patent.

 You can imagine that creative lawyers could find all kinds of arguments as to what exactly a person “skilled in the art” would find obvious, what qualified as a prior invention in the field, and so forth. Over time, the test for finding obviousness became more and more formalized and, as a result, often harder to meet.

 KSR and obviousness

 Then along came the Supreme Court’s decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). There the Court decided the test for obviousness had become too rigid.  It noted that the Federal Circuit had adopted the “teaching, suggestion, or motivation” test (TSM test).  Under that test, “a patent claim is only proved obvious if some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.”  This rigid test, the Supreme Court. said, was contrary to the patent statutes and the Supreme Court’s earlier precedents.

The Court said the test should remain to be its long-established test from Graham v. John Deere Co. of Kansas City, 383 U.S. 1(1966),  Under that test, the courts are to determine as a matter of fact: 1) The scope and content of the prior art, 2) the differences between the claimed invention and the prior art, and 3) the level of the skill in the art.  In addition, the court may also look to “secondary considerations” that may serve as evidence a claimed invention was not obvious.  This can include: 1) commercial success, 2) long felt but unresolved needs, 3) failure of others, and 4) unexpected results. 

 Applying the additional factors of the TSM test went too far. Rather, courts are to recognize that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton."  The case before it involved the design of a sensor used in automobile accelerator pedals.  Thus, the correct question was whether “a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading [a prior art patent] with a sensor.”  That test was a lot easier to meet than the TSM test.

 In light of KSR, defendants have had a much better chance of invalidating utility patents asserted against them as obvious.

 Design patents had the Rosen/Durling test 

Until a couple of months ago, design patents had their own test for obviousness.  The long-existing test, known as the Rosen/Durling test, had two parts.  First, “[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.2388, 391 (CCPA 1982)).  This is often known as the Rosen reference.  Only if the Rosen reference is found, can one move on to part two.   

Part two allows consideration of secondary references that may be used to modify the Rosen reference to create a design that has the same overall visual effect.  But the secondary references must be “so related [to the Rosen reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” 

That’s a pretty tough test.   

The old test is new again

 In LKQ Corporation v. GM Global Technology Operations LLC, 2021-2348 (Fed. Cir. May 21, 2024), the Federal Circuit did for design patents what KSR did for utility patents.  It brought consideration of obviousness back to the Graham test.  

The Court decided that “Rosen-Durling is out of keeping with the Supreme Court’s general articulation of the principles underlying obviousness, as well as its specific treatment of validity of design patents.”  Requiring a primary prior art reference that is “basically the same,” is too rigid. 

The Court noted that in Smith v. Whitman Saddle Co., 148 U.S. 674, 680 (1893), the Supreme Court did not require a primary reference before moving on to consider other references.  Instead, in considering whether a saddle design was obvious, it noted that the front half one known saddle design was combined with the back half of another known saddle design.  This, it found, represented an obvious combination of known designs.  Sklled workers in the saddle trade often made such combinations.  It reserved judgment on other modifications.

While recognizing that design patents are different than utility patents, the LKQ court still applied the Graham factors it applies to utility patents.  The overall approach is to recognize, as did KSR, that the court is not to apply a rigid formula but rather consider the evidence using the Graham factors.  

The Court rejected the argument that overruling the Rosen-Durling test would result in a “rudderless free for all,” leaving the validity of thousands of design patents uncertain and providing the courts little guidance.  While recognizing that “there may well be some difficulties with this fact-based non-rigid test,” the Court noted that applying the Graham test “has proven workable for utility patents.”  It said it saw no reason why it would not be similarly workable for design patents. 

What’s next? 

In light of the LKQ decision, the game has changed.  Attacks on the validity of design patents may now be made using the less rigid Graham factors. More evidence can be brought to bear on the question of whether a design patent is merely an obvious variation of other analogous designs.   

Counsel will want to carefully study the LKQ court’s opinion, which provides some guidance on translating the Graham factors from utility patents to design patents.  But the Court recognized that underlying issues will need to be sorted out in future cases.  So, the status of any given design patent is now more uncertain.  But, as the Federal Circuit noted, over time the Graham test has proven workable for utility patents.  Hopefully, it will be just as workable for design patents.