By John Evans and Josh Gold-Quiros

Big changes to design patent invalidity law may be coming.  A pending IPR appeal challenges the Federal Circuit’s 40-year-old obviousness formula as inconsistent with the Supreme Court’s rejection of “a rigid rule that limits the obviousness inquiry” in KSR v. Teleflex, 550 U.S. 398, 419 (2007).  Should the appeals court agree, obviousness could be easier to establish.

Some background.  Design patent obviousness turns on whether a designer of ordinary skill (DOSA) would have found the claimed design obvious in light of the prior art.  In re Rosen supplies the controlling two-step legal framework: first, identify a “primary reference” that is “basically the same as the claimed design[,]” and then, decide whether a DOSA would have found it obvious to supply missing elements from so-called “secondary references.”  673 F.2d 388, 391 (C.C.P.A. 1982).

Obviousness attacks usually fail because an alleged “primary reference” isn’t “basically the same” and the analysis stops there.  And that’s what happened in Rosen.  Here are the claimed design and the alleged primary reference in Rosen:

Rosen claimed design

Rosen primary reference

Secondary references supposedly provided the missing design elements, like a transparent or circular tabletop and equally distributed table legs and V-shaped notches.  Id. at 389.  But the Rosen challenge failed because the primary reference lacked “the design characteristics of [the claimed design].”  Id. at 391.  Rather, it was “significantly different in concept” from the claimed design, so it wasn’t a proper primary reference, and the appeals court declined to take the next step of evaluating secondary references.  Id.

Back to the pending appeal.  In LKQ v. GM, the appellant attacks the PTAB’s one-step Rosen analysis rejecting an alleged primary reference, ending the analysis full stop.  Here are the claimed design and alleged primary reference that weren’t “basically the same” in the PTAB’s view:

LKQ claimed design

LKQ primary reference

LKQ v. GM, No. IPR2020-00534, 2021 WL 3411458, at *18-19 (P.T.A.B. Aug. 4, 2021).

The appellant challenges the two-step Rosen formula as overly rigid and inconsistent with KSR’s mandate for flexibility when determining obviousness under 35 U.S.C. § 103.  The appellee responds that Rosen isn’t inflexible, and that requiring a primary reference doesn’t necessarily constrain the analysis.  At oral argument, the Federal Circuit panel peppered the parties, questioning whether KSR applies to design patents at all, why the issue hadn’t been raised in the 15 years since KSR was decided, and whether LKQ should be heard en banc given its potentially significant impact.

The takeaway.  The Federal Circuit seems poised to answer big questions like whether KSR applies to design patents and if so, whether the Rosen two-step framework passes muster.  A decision for the appellant in this case could shake up design patent invalidity law by making obviousness analysis more flexible.  Should the appeals court agree with the appellee, these fundamental issues seem ripe for review by the en banc Federal Circuit or potentially the Supreme Court.  Stay tuned.

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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.