En Banc CAFC Overrules Design Patent Obviousness Test in Light of KSR

The total U.S. Court docket of Appeals for the Federal Circuit (CAFC)—minus Judges Newman and Cunningham—today overruled the so-called Rosen-Durling check for figuring out design patent obviousness, explaining that it has adopted “an strategy per Congress’s statutory scheme for design patents, which supplies that the identical situations for patentability that apply to utility patents apply to design patents.” The choice additionally mentioned the Supreme Court docket’s precedent in KSR v. Teleflex favors a extra versatile strategy than Rosen-Durling.

The case stems from a January, 2023, decision wherein the CAFC defined that, “making use of the checks established in Rosen and Durling, the [Patent Trial and Appeal] Board [PTAB] discovered that LKQ didn’t establish a ample main reference, and due to this fact didn’t show obviousness by a preponderance of the proof” of GM’s U.S. Patent D797,625, which covers an “decorative design for a car entrance fender.” The courtroom in the end mentioned that “[w]e, as a panel, can’t overrule Rosen or Durling with no clear directive from the Supreme Court docket.”

However in June 2023, the courtroom granted an more and more uncommon en banc assessment following a petition wherein LKQ argued that the CAFC and its predecessor courtroom have been making use of a “inflexible strategy” to figuring out obviousness of design patents for 40 years, and that the Supreme Court docket’s 2007 holding in KSR Worldwide v. Teleflex, Inc. expressly overruled such an strategy.

In oral arguments held in February of this 12 months, the CAFC judges appeared all in favour of tweaking the “Rosen-Durling” check however struggled with getting the events to obviously articulate a alternative strategy that wouldn’t be doubtlessly simply as unhealthy.

The so-called Rosen-Durling check for design patent obviousness requires that, first, beneath In re Rosen (C.C.P.A., 1982), courts establish a previous artwork reference “the design traits of that are mainly the identical because the claimed design.” Subsequent, beneath Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir., 1996)), if such a reference is recognized, the courtroom should take into account whether or not it may be modified based mostly on different references to give you “the identical general visible look because the claimed design.”

Rosen-Durling is Too Inflexible

As we speak’s precedential choice, authored by Decide Stoll, held that the courtroom’s “check for design patent obviousness, in its current kind, doesn’t adequately align with KSR, Whitman Saddle, and different precedent, each by way of its framework and threshold rigidity.”

Whereas the Supreme Court docket in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) rejected “inflexible and obligatory formulation” for patent obviousness, the Court docket was not contemplating design patents. The Court docket additionally addressed design patent claims in Smith v. Whitman Saddle, an 1893 choice that seemed on the validity of design patents in view of mixed prior artwork however didn’t explicitly deal with “obviousness” as a result of the time period didn’t but exist within the patent regulation.

However the CAFC concluded at this time that the 2 steps of the Rosen-Durling check “are improperly inflexible” in gentle of this precedent. As an alternative, design patents, like utility patents, must be assessed for obviousness based mostly on the Graham elements, that are derived from Graham v. John Deere Co. of Kansas Metropolis and are used to evaluate utility patent obviousness. The Court docket in KSR reaffirmed the Graham elements as the easiest way to research obviousness.

Making use of Graham to Designs

The 4 Graham elements train that when assessing obviousness one should take into account: 1) the scope and content material of the prior artwork; 2) the variations between the prior artwork and the claims at problem; 3) the extent of odd ability within the artwork; and 4) secondary concerns of nonobviousness.

With respect to Graham issue one, the CAFC defined that “there isn’t a threshold similarity or ‘mainly the identical’ requirement to qualify as prior artwork. Fairly, an identical artwork requirement applies to every reference. The analogous artwork requirement reins within the scope of prior artwork and serves to protect in opposition to hindsight.”

Throughout oral argument in LKQ, CAFC Chief Decide Moore lamented the truth that “I can solely discover one case of ours that talks about what the usual for analogous artwork is within the design patent context. Nary a short, regardless of the numerous briefs we received, educated this courtroom on what the alternative customary for analogous artwork must be.”

Within the utility patent context, a two-part check is used to find out the scope of analogous artwork: “(1) whether or not the artwork is from the identical subject of endeavor because the claimed invention; and (2) if the reference isn’t throughout the subject of the inventor’s endeavor, whether or not the reference nonetheless within reason pertinent to the actual drawback with which the inventor is concerned.”

The CAFC’s opinion mentioned the primary prong of this check applies in “a simple method” to design patents however that how the second prong applies to design patents “is much less obvious,” since “a design patent itself doesn’t clearly or reliably point out ‘the actual drawback with which the inventor is concerned.’” In gentle of this ambiguity, the courtroom appeared to decide on to go away it to future panels to flesh out:

“On this opinion, we don’t delineate the total and exact contours of the analogous artwork check for design patents. Prior artwork designs for a similar subject of endeavor because the article of manufacture can be analogous, and we don’t foreclose that different artwork may be analogous. Whether or not a previous artwork design is analogous to the claimed design for an article of manufacture is a truth query to be addressed on a case-by-case foundation and we ‘go away it to future instances to additional develop the applying of this customary.’”

A main reference nonetheless should be recognized, as a part of the primary Graham issue evaluation, however it “want solely be ‘one thing in existence—not . . . one thing that is perhaps introduced into existence by choosing particular person options from prior artwork and mixing them, notably the place combining them would require modification of each particular person characteristic,” mentioned the courtroom.

At issue two, the visible look of the claimed design should be in contrast with that of allegedly infringing design; at issue three the extent of odd ability within the artwork is assessed “from the perspective of an odd designer within the subject to which the claimed design pertains”; and at issue 4, secondary concerns are thought of. The courtroom didn’t disturb the latter evaluation.

Compelled by Precedent

The CAFC dismissed amici issues that overruling Rosen-Durling would create uncertainty, arguing that “[t]he Graham four-part obviousness check for utility patents has existed for a really very long time and there may be appreciable precedent from which the PTO and the courts can draw when assessing obviousness within the design patent context.”

Whereas the courtroom acknowledged there could also be some temporary preliminary upheaval, “our elimination of the inflexible Rosen-Durling check
is compelled by each the statute and Supreme Court docket precedent.”

In gentle of its ruling, the courtroom vacated the PTAB’s willpower of nonobviousness and remanded to the PTAB for evaluation based mostly on the brand new framework set forth in its opinion. It additionally reinstated the portion of the panel opinion holding that substantial proof helps the Board’s discovering of no anticipation.

Concurrence and Remark

In a concurring opinion, Decide Lourie mentioned he would have allowed the Rosen-Durling check to face and that it didn’t should be overruled however in the end concurred that the Board’s choice must be vacated and remanded “for reevaluation of the validity of the claimed design in gentle of the bulk opinion.”

Whereas Lourie conceded that the Rosen and Durling instances “might have used overly robust language,” he disagreed that it wanted to be completely overhauled: “‘[O]verruled’?” It solely wanted to be modified. Overruling is destabilizing.”

IPWatchdog Founder and CEO Gene Quinn had this to say about at this time’s choice:

“If I had the chance to determine what the regulation of obviousness must be there may be little doubt in my thoughts that I’d by no means give you the check introduced in KSR. Not solely does KSR make obviousness extra subjective, it’s ridiculous to fake that there are six completely different rationales along with instructing, suggestion and motivation. There is just one KSR rationale—fairly predictable—repeated six occasions utilizing barely completely different articulations. However be that as it could, as subjective as KSR is, that’s the regulation and well-established precedent treats all patents and purposes equally for functions of novelty and nonobviousness. Thus, whereas KSR makes little sense and lacks mental rigor, it’s hardly surprising that the Federal Circuit would rule that KSR applies to design patents as properly.

So far as the substance goes, this case additionally highlights the persevering with drawback with double requirements. Lian, the first reference, is nearly equivalent to the claimed design at problem, with essentially the most minor of variations. If KSR have been utilized evenly to all purposes, lots much less would problem in lots of expertise areas, and perhaps that’s what it’s going to take for widespread sense reform. Forcing everybody to take care of the arbitrary and capricious obviousness legal guidelines appears rather more honest than solely making use of KSR strictly to improvements of higher consequence.”