2024 Year-in-Review: Design Patent Law

Year in Review 2024 Design Patents

The Federal Circuit upended the forty-year old design patent nonobviousness test (and case law) earlier this year in its landmark decision in LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024).  Shaking design patent law to its core, LKQ calls into question the validity of issued design patents and the ability to obtain new ones.  With many questions left open and application of the new obviousness test subject to interpretation, the full impact of LKQ is unknown and will be unfolding for years to come.  This Year-In-Review takes a look back at the LKQ decision and how the USPTO examiners, the Patent Trial and Appeal Board, and federal district courts have begun to apply LKQ.

 

The “Flexible Approach” of Supreme Court Precedent And The Graham Factors
Replace the Decades-old Rosen-Durling Test For Determining Design Patent Nonobviousness

 

Sitting en banc, the U.S. Court of Appeals for the Federal Circuit in LKQ overturned the “rigid” Rosen-Durling test for assessing nonobviousness of design patents and in its place, held that a “more flexible approach” in line with Supreme Court precedent, including the teachings in KSR Int’l Co. v. Teleflex, 550 U.S. 398 (2007) and Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966), should be applied.

 

The Rosen-Durling test used to assess design patent obviousness required: (i) identifying a “primary reference” that is “‘basically the same’ as the challenged design claim;” and (ii) any secondary references must be “‘so related’ to the primary reference that features in one would suggest application of those features to the other,”  LKQ, 102 F.4th at 1293 (“the Rosen‑Durling test”).

 

Analyzing the Rosen-Durling test against the background of 35 U.S.C. § 103 and Supreme Court precedent, the Federal Circuit overruled the “improperly rigid” Rosen-Durling test.  The Federal Circuit reasoned that Supreme Court precedent established a “flexible approach” to assessing nonobviousness.  It found the “basically the same” requirement of prong (i) of the Rosen-Durling test to impose a “strict” requirement “in which an obviousness analysis fails absent a prior art design that is ‘basically the same’ as the claimed design.”  LKQ, 102 F.4th at 1294.  Similarly, the Federal Circuit found the “so related” requirement of prong (ii) of the Rosen-Durling test to be “inflexible” and one that evolved into a “rigid rule” that denies factfinders the ability to use “common sense.”  Id.  The Federal Circuit concluded that these requirements were inconsistent with the “broad standard for obviousness” set forth in the statutory framework of 35 U.S.C. § 103 and Supreme Court precedent, including KSR and GrahamId.

 

Overruling the Rosen-Durling test, the Federal Circuit then laid out the framework for evaluating obviousness of design patent claims.  It held that a design patent obviousness analysis should be determined based on the Graham factors, which had previously only been applied to an obviousness determination for utility patents.  The Graham factors require a fact finder to determine:

 

1. The scope and content of analogous prior art. The Federal Circuit reiterated that a primary reference must be identified.  The primary reference no longer needs to be “basically the same” as the claimed design, as in the overruled Rosen-Durling test, but it will be the closest prior art to the claimed design, “i.e., the prior art design that is most visually similar to the claimed design.”  LKQ, 102 F.4th at 1298.  The Federal Circuit also indicated that the prior art must be from the same field of endeavor as the claimed design, but need only be analogous art.  It did not, however, “delineate the full and precise contours of the test for design patents.”

 

2. Differences between the claimed design and the prior art design. The Federal Circuit reiterated that the visual appearance of the claimed design must be compared to the visual appearance of the prior art design from the perspective of an ordinary designer in the field of the claimed design (i.e., the article of manufacture).

 

3. The level of skill of an ordinary designer in the field in which the claimed design pertains. The Federal Circuit noted that this well‑established Graham factor assesses the level of skill from the viewpoint of an ordinary designer that designs articles or products like the claimed design.

 

4. The obviousness or non-obviousness of the claimed design:  whether an ordinary designer would have a motivation to modify the prior art design to create the same overall visual appearance as the claimed design, while also considering any secondary references. The Federal Circuit affirmed that the primary and secondary references no longer need to be “so related” such that features in one suggest the application of those feature in the other (as formerly required by the overruled Rosen‑Durling test).  However, while the motivation to combine does not have to come directly from the references, the record must still support a reason why there is a motivation to combine the references, and without the benefit of hindsight.  Common factors often considered include the ordinary designer’s experience, the demands of the market, industry customs, and what ornamental are commonplace. 
 

The Court also held that secondary consideration of obviousness or nonobviousness are equally applicable to design patents and should be taking into consideration.
 

The LKQ decision still leaves many open questions and great uncertainty for practitioners, the courts, and the USPTO.  Although the Federal Circuit established the new obviousness framework under the Graham factors, it did not apply the factors to the facts of the case, and remanded the case to the Board for further consideration in view of the new obviousness framework.  Without further guidance, LKQ’s flexible approach is expected to lead to increased rejections for obviousness during prosecution, which will make it difficult to assess the likelihood of obtaining a design patent.  Furthermore, LKQ calls into question the validity of existing design patents, which can now be more readily challenged post-grant before the USPTO and in an infringement lawsuit.

 

The District Court Acknowledges The “Extraordinary” Impact of LKQ

 

Recognizing LKQ as an “extraordinary” decision, the United States District Court for the Southern District of California made its own extraordinary decision when it granted a defendant’s motion to reopen the question of validity of the design patent-in-suit, despite a prior stipulated judgement of validity.  In Columbia Sportswear N. Am. Inc. v. Seirus Innovative Accessories Inc., No. 3:17-cv-01781, 2024 U.S. Dist. LEXIS 198489 (S.D. Cal. Oct. 30, 2024),  Plaintiff Columbia and Defendant Seirus had been embroiled in a years-long patent infringement suit over Seirus's HeatWave products, which Columbia alleged infringed its design patent illustrating a wave-pattern for "Heat Reflective Material."  Seirus argued that Columbia’s D’093 Patent was invalid during the initial stages of the case, but in 2016, Seirus made the strategic decision to stipulate to the validity of the D’093 Patent.  The stipulation foreclosed Seirus from raising invalidity as a defense throughout the remainder of the proceedings. 

 

Seirus moved the district court for relief from the Stipulated Judgment of Validity, arguing that Seirus should be permitted to pursue its invalidity/obviousness defense “under the new, less‑rigid approach to design patent obviousness outlined in LKQ.”  Columbia opposed Seirus’s motion for relief, arguing that Seirus should be held to its eight-year-old stipulation and that the LKQ decision represented a “mere change in the law,” not an “extraordinary circumstance justifying relief.”  Columbia Sportswear, 2024 U.S. Dist. LEXIS 198489, at *3.  The district court disagreed.  Although the stipulated judgment was a “knowingly calculated risk,” id., the district court found that the “en banc decision in LKQ was extraordinary, overturning decades-old and improperly-rigid precedent.”  Id. at *4.  Moreover, the case was ongoing, and a final judgment had not been entered.  Given the “unique procedural posture” of the case, the district court granted the motion for relief and determined that Seirus should be permitted to pursue its obviousness defense.

 

Columbia may be the first of many cases to challenge and/or reopen an already-settled question of obviousness in a lawsuit or administrative proceeding based upon the new obviousness framework set out in LKQ

 

The USPTO Issues Examination Guidelines For Establishing Obviousness In View of LKQ 

 

The USPTO swiftly responded to LKQ and within one-day of the decision, issued a memorandum that provided Examiners and the Patent Trial and Appeal Board (“Board”) with guidance for making an obviousness determination in light of LKQ.  The memorandum largely echoed the holdings of LKQ, confirming that the Rosen-Durling test was no longer applicable.  To resolve the question of design patent obviousness, the USPTO instructed the Examiners and the Board to apply a “flexible approach” to obviousness and to apply the Graham factors (outlined above), which had long been applied only in the context of utility patents.

 

The USPTO provided further guidance regarding each of the four Graham factors.  Of note, it clarified that when selecting a primary reference, it no longer needs to be “basically the same” as the claimed design.   Following the language of LKQ, the USPTO advised that “[t]he ‘more visually similar the primary reference is to the claimed design, the better positioned’ a design examiner will be able to establish prima facie case of obviousness.”  (Katherine K. Vidal, “Updated Guidance and Examination Instructions for Making a Determination of Obviousness in Designs in Light of LKQ Corp. v. GM Global Technology Operations LLC,” (May 22, 2024), at 2.)

 

When combining references, the USPTO advised that although the primary and secondary references need to be analogous to the patented design, the references no longer need to be “so related,” such that features in one would suggest application of those features in the other. It further highlighted that “the more different the overall appearances of the primary reference versus the secondary reference(s), the more difficult it will be to establish a motivation to alter the primary prior art design in light of the secondary one and set forth a prima facie case of obviousness.”  The primary reference only needed to be visually similar. (Vidal, at 3.)

 

As cases unfold and further shape the obviousness inquiry, we expect the USPTO to provide supplemental guidance.

 

PTAB Adopts LKQ And The Graham Factors
 

In its first post-LKQ written decision addressing obviousness, the USPTO Patent Trial and Appeal Board (“the Board”) denied an inter partes review petition, based, in part, upon its analysis and application of the Graham Factors.  In Next Step Grp., Inc. v. Deckers Outdoor Corp., IPR2024-00525, Paper 16, 2024 Pat. App. LEXIS 2897 (Aug. 6, 2024), Petitioner, Next Step Group Inc. (“Petitioner”) filed an inter partes review petition seeking to invalidate U.S. Patent No. D927,161 (“the D’161 Patent”), which covers an upper for a boot, including Respondent Deckers Outdoor Corporation’s well-known Ugg Boot.   

 

Petitioner raised ten grounds of invalidity of the D’161 Patent.  Among others, Petitioner asserted that the claimed D’161 Patent was obvious over numerous prior art references.  Petitioner compared D’161 to the relevant prior art references.  Each of these references slightly differed from the design of the D’161 and when addressing any differences between the prior art design and D’161, Petitioner generally argued that any differences were obvious.  For example, Petitioner argued that differences in “overall height and proportions” are obvious because they are either “purely functional” (and not subject to design protection) and/or a modification that a skilled designer could easily make to accommodate different requirements, such as the length of a user’s foot, an easily removed slipper, and the like. 

 

The Board disagreed and found that the Petitioner’s arguments did not support a finding of obviousness under the new LKQ standard.  It held that Petitioner’s allegations were unpersuasive because they failed to adequately take into consideration all of the differences between the claimed design and prior art as viewed by ordinary observers.  For example, with regard to a comparison between D’161 and the prior art CN’897, Petitioner made no comparisons between the profile of the back of the D‘161 Patent, which was generally vertical, and the profile of the back of the CN ‘897 Reference, which jutted backward and created an angled profile.  The Board also identified several other differences between CN ‘897 and D’161 that were not addressed by Petitioner.  Similar deficiencies plagued the remainder of Petitioner’s prior art analysis used to support its allegations of obviousness. 


The Board also interestingly addressed whether various webpages showing prior art boots  qualified as prior art under 35 U.S.C. § 311(b).  Under this provision, a  request to cancel a claim as unpatentable in an inter partes review may be based only on prior art consisting of patents or printed publications.  The Board identified the key inquiry as being whether the references were made sufficiently accessible to the public interested in the art before the effective filing date.  The Board reasoned that a petitioner has the burden to provide evidence sufficient to establish a reasonable likelihood that the asserted references qualify as printed publications.  Although the webpages submitted by the Petitioner included images and arguably dates prior to the critical or effective filing date of the D’161 Patent, the Board recognized that the printouts themselves were printed in 2024.  The Board determined that “webpages are dynamic; product listings may be updated; and photographs of the products on the website may change over time.  As such, a printout of a webpage from 2024 does not provide sufficient evidence of what was publicly available on the website years earlier prior to the critical date.”  (Next Step, at *16)  Thus, the Board held that Petitioner has not sufficiently shown that the webpages in question were publicly accessible before the critical date. 

 

Lastly, Petitioner proposed two alternative claim constructions for a pull tab feature extending outwardly from a top rear of the boot shown in the 161’ Patent.  Petitioner asserted that the pull tab should be construed as a non-functional element and not part of the claimed ornamental design.  In response, the Board reasoned that while the pull tab serves a useful purpose as it can be used to pull the footwear onto a foot, the pull tab is not primarily functional as alternative pull tabs are available.  Additionally, the Board reasoned that the design is not entirely functional and Petitioner’s argument that any alternative design would cost more, be more uncomfortable, fall apart, and would not be commercially viable is not persuasive as it does not adequately address currently existing alternative designs.

 

As such, due to the lack of persuasive evidence provided, the Board found that Petitioner did not show a reasonable likelihood that it would prevail with respect to 161’ Patent and the petition was denied.

 

The Deckers decision is a cautionary tale for Petitioners to carefully address all aspects of the prior art and ensure that all differences between the claimed design and the prior art being relied upon to invalidate the subject patent have been identified.  With the “more flexible” LKQ test providing greater latitude for Petitioners to both identify prior art and combine prior art, Petitioners cannot simply cite numerous prior art and leave it to the Board to conduct the full analysis. Rather, Petitioners must set out for the Board a comprehensive analysis that compares each and every differences between the claimed design and the prior art, along with any proposed modifications that may be relied upon from the prior art.