By John Evans, Vishal Khatri, and Jesse Wynn

In February, the Federal Circuit declined to modify or overrule its long-standing test for obviousness in design patents, the Rosen-Durling test, despite arguments that the Supreme Court overruled it in KSR v. Teleflex.  A series of recent posts outlined the LKQ v. GM case’s challenge to the RosenDurling standard.  One post suggested that the Rosen-Durling test may be questioned in future en banc review.

On June 30, the Federal Circuit granted en banc review of LKQ v. GM on petition by Appellants LKQ Corporation and Keystone Automotive Industries, Inc. (“LKQ”).  Four amici submitted briefs.  The court posed the following questions for review:

A. Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)?


B. Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and suggest the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR’s statements faulting “a rigid rule that limits the obviousness inquiry,”550 U.S. at 419, and adopting “an expansive and flexible approach,” id. at 415, should cause us to eliminate or modify: (a) Durling’s requirement 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,’” 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling’s requirement that secondary references “may only be used to modify the primary reference if they 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,’” id. at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).


C. If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?


D. Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.


E. Given the length of time in which the Rosen-Durling test has been applied, would eliminating or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?


F. To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?

These broad questions address the very foundations of design patent validity and how courts will determine it in the future.  The court’s framing of the questions suggests that Rosen-Durling will not survive in its current state—either the court will modify or abandon Rosen-Durling for better fit with KSR.  Future posts will cover pertinent briefing and updates.

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John is a trial lawyer having represented clients in many high-stakes and complex intellectual property matters throughout the country including Section 337 investigations in the U.S. International Trade Commission. He has represented clients in cases involving both utility and design patents, and has significant experience in litigation matters covering many fields, including pharmaceuticals, surgical implants, flash memory, computer peripherals, digital televisions, integrated circuits, and insurance, as well as vacuum cleaner, footwear, and lip balm design.