By Sarah Burstein, Professor of Law at Suffolk University Law School

LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348 (submitted but not decided) (oral argument recording available here)

On December 5, 2022, the Federal Circuit heard oral arguments in two cases between LKQ and GM. In one of them, LKQ asked the court to rule that the current primary reference requirement for design patent obviousness, as stated in In re Rosen and Durling v. Spectrum Furniture is inconsistent with the Supreme Court’s decision in KSR v. Teleflex.

The panel did not seem convinced that it had the authority to overrule those prior panel decisions and at least one judge expressed doubt that KSR even applies to designs. But the issue is an important one and well worth discussing, even if the panel declines to address the issue in this case.

As I’ve explained previously:

Under Federal Circuit case law, “the ultimate inquiry under section 103 is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” To this end, the Federal Circuit has created a two-part test. First, the court must identify a primary reference—“a something in existence, the design characteristics of which are basically the same as the claimed design.” If there is a proper primary reference, then “other ‘secondary’ references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” To qualify as a proper secondary reference, a design must be “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.”

The primary reference requirement comes from the CCPA case In re Rosen. These references are, therefore, sometimes referred to as “Rosen references.” Durling is perhaps the clearest statement of the Federal Circuit’s current § 103 test for designs, which incorporates the Rosen requirement.

There is certainly much to criticize about the Federal Circuit’s approach to § 103 and designs. For example, the “so related” language has a long pedigree but its meaning has never been particularly clear. And these days, it seems like the Federal Circuit hardly ever reaches step 2 of the Durling test because it has applied such a high standard of visual similarity for the first step that it sometimes seems hard to see any blue sky between a design that looks “basically the same” (and is, therefore, a proper Rosen reference) and one that is “the same” (and thus anticipates the claimed design).

As currently applied, the Durling test—and in particular the Rosen reference requirement—seems to be just as rigid, if not more so, as the TSM approach the Supreme Court rejected in KSR. But does that mean the Rosen requirement is the problem? Or is the problem the way it is being applied?

As I wrote in my very first design patent article, “[t]he primary reference requirement performs the valuable function of focusing the nonobviousness inquiry on the design ‘as a whole.’ If a new design is so different from other products of its type that no primary reference can be found, that would generally be strong evidence of nonobviousness.” I continue to believe that, properly and flexibly applied, this general approach makes sense for designs and is consistent with KSR. (If you’d like to read more, you can find those arguments here.)

Unmooring the § 103 inquiry from this primary reference requirement would allow challengers to pick and choose visual elements from the prior art to combine into “Frankenart.” The Frankenart approach would devolve the § 103 inquiry into whether a designer technically could have created the claimed design based on the prior art, as opposed to (the more proper question of) whether it would have been visually obvious to do so.

Yes, it’s true that challengers can effectively use a Frankenart approach in most utility patent cases. But a design patent covers a different type of invention that is claimed in a different way. It makes perfect sense to apply the general command of § 103 in a different way when it comes to designs.

It’s also worth noting that while the primary reference requirement looks different from how we do § 103 in most utility patent cases, it’s not totally without cognates. It is at least reasonably analogous to the “lead compound” approach used in some chemical cases.

To be clear, this is not to say that the Federal Circuit’s current § 103 case law is great. It’s not. The cases apply the proper primary reference requirement too strictly. And it’s not at all clear how Durling step two does or should work. But that doesn’t mean we should abandon the primary reference framework entirely.