LKQ Corp. v. GM Global Technology Operations LLC

LKQ Corp. v. GM Global Technology Operations LLC, decided May 21st, 2024. The Federal Circuit, sitting en banc on review of an inter partes review decision, in an opinion by Judge Stoll, unanimous in the judgment, overruled its forty-year-old Rosen-Durling test and held that design-patent obviousness is governed by the flexible Graham framework. Here's the brief.

GM owns U.S. Design Patent D797,625, claiming the design of a vehicle's front fender — the fender used on the 2018 to 2020 Chevrolet Equinox. LKQ Corporation and Keystone Automotive Industries, sellers of aftermarket repair parts, petitioned for inter partes review. They argued the claim was anticipated by an earlier design patent issued to Lian, or was obvious over Lian alone or combined with a brochure showing the front fender of the 2010 Hyundai Tucson.

The Board upheld the patent. On anticipation, it applied the ordinary observer test of Gorham v. White and found the designs not substantially the same. On obviousness, it applied Rosen-Durling and stopped at step one: Lian did not create basically the same visual impression as the claimed design, so there was no qualifying primary reference, and the analysis ended there.

A panel of the Federal Circuit affirmed, explaining that it could not overrule Rosen or Durling "without a clear directive from the Supreme Court." The full court then granted rehearing en banc, vacated the panel opinion, and ordered briefing on whether KSR v. Teleflex overrules or abrogates the Rosen-Durling test.

The question presented: does the Rosen-Durling test survive section 103 and Supreme Court precedent — and if not, what takes its place?

The test had two steps. Under In re Rosen, a 1982 decision of the Federal Circuit's predecessor court, a challenger first had to identify a single primary reference with design characteristics basically the same as the claimed design; without one, the inquiry ended. Under Durling v. Spectrum Furniture, decided in 1996, secondary references could be used only if they were so related to the primary reference that features in one would suggest applying them to the other. But the statute draws no such lines. Section 103 states one obviousness standard, and section 171(b) applies the utility-patent provisions to designs. And in KSR, in 2007, the Supreme Court had condemned rigid, mandatory obviousness formulas.

The en banc court overruled both requirements.

The reasoning tracked KSR: when a court transforms a general principle into a rigid rule limiting the obviousness inquiry, it errs — and Rosen ends the analysis whenever no single close reference exists, a limitation found nowhere in section 103. The court also found the test inconsistent with Smith v. Whitman Saddle, the Supreme Court's 1893 design case, which treated combining halves of two known saddles as ordinary skill of the trade, demanding no threshold similarity.

In its place, the court adopted the Graham factors, translated to designs.

Factor one, the scope and content of the prior art: analogous art, and a primary reference must still be identified to guard against hindsight — but it need not be basically the same as the claimed design. Factor two, the differences between the prior art and the claim, compared as overall visual appearance. Factor three, the level of ordinary skill: an ordinary designer who designs articles of the type involved. The ultimate inquiry is whether an ordinary designer would have been motivated to modify the primary reference to create the same overall visual appearance as the claimed design.

The motivation need not come from the references themselves, but it must rest on the record, not hindsight. Secondary considerations — commercial success, industry praise, copying — remain part of the analysis.

Judge Lourie concurred in the judgment only. He would have modified Rosen and Durling rather than overruled them — "overruling is destabilizing," he wrote. The court reinstated the panel's no-anticipation holding, vacated the Board's nonobviousness determination, and remanded.

LKQ is the Federal Circuit's first en banc design-patent decision since Egyptian Goddess v. Swisa in 2008, and it discarded a threshold test that had stood for four decades. It unifies obviousness doctrine: design and utility patents alike are now judged under Graham and KSR, from the perspective of an ordinary designer. Within days, the Patent and Trademark Office issued examination guidance applying the new framework. The case stands for this rule: design-patent obviousness is measured by the flexible Graham factors, not by rigid threshold requirements.

LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280, Federal Circuit, en banc, decided May 21st, 2024. I'm John Goodhue. Thanks for watching.