Federal Circuit Sets Forth a More “Flexible” Approach to Obviousness of Design Patents in Two Key Ways

In a dispute over the validity of design patents covering the fenders of GM’s 2018-2020 Chevrolet Equinox, the Federal Circuit overturned its own long-standing Rosen-Durling “rigid” standard for assessing obviousness of design patents, returning to a “flexible” standard that will make it easier for parties to challenge the validity of design patents on obviousness grounds. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024).

The Federal Circuit’s new obviousness standard for design patents relaxes the prior Rosen-Durling approach in two important ways:

1. Abolishing “Basically the Same” Requirement for the Primary Reference: The long-standing two-part approach to obviousness required a patent challenger to identify a “single reference” that contained “basically the same” design characteristics as the claimed design. The Federal Circuit abolished this threshold requirement, relaxing the standard for identifying a primary reference. Now, a primary reference need only be “something in existence” and analogous to the claimed design. The court determined that “[p]rior art designs for the same field of endeavor as the article of manufacture will be analogous” but otherwise left open the possibility “that other art could also be analogous.”
2. Removing “So Related” Requirement for Secondary References: The Federal Circuit also abolished the requirement that secondary references be “so related” to the primary reference that an ordinary designer would apply ornamental features from the secondary reference(s) to the primary reference. Each reference used must be “analogous” to the claimed design—designs for “the same field of endeavor” will be analogous but left open the possibility that “other art could also be analogous.” A patent challenger now has more freedom to argue that there would be other motivations for an ordinary designer to combine the references.

The Federal Circuit’s upheaval of the long-standing obviousness approach will likely make it easier to invalidate design patents on obviousness grounds. LKQ Corp.’s new “flexible” standard frees a patent challenger from the need to locate a single reference that is “basically the same” as the claimed design and leaves more room to argue that an ordinary designer would have motivations to combine multiple prior art references. The Federal Circuit’s decision creates uncertainty regarding how future courts will apply the new “flexible” standard and fill in the gaps that the court left open, including room to define the scope of “analogous art,” but the Federal Circuit emphasized that there is a substantial body of case law when applying an analogous standard to utility patents.

Orrick will continue to track the development and application of this new standard and monitor any appeal to the Supreme Court.