Federal Circuit Relaxes Standard For Design Patent Obviousness Challenges

On 21 May 2024, the Federal Circuit overturned the Rosen-Durling test used to assess non-obviousness of design patents. In LKQ Corporation v. GM Global Technology Operations LLC, the Court en banc ruled the same conditions for patentability that apply to utility patents apply to design patents, specifically holding the obviousness rationale articulated in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), will now apply to design patents. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, 2024 WL 2280728, at 1 (Fed. Cir. May 21, 2024) (en banc).

LKQ argued in an Inter Partes Review proceeding that GM's design patent was invalid under 35 U.S.C. § 103. The Patent Trial and Appeal Board (Board) applied the Rosen-Durling test, which states, "[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'" (a Rosen re