In a current en banc determination, the Federal Circuit Courtroom of Appeals has overruled its prior take a look at for nonobviousness of design patent innovations, holding that design patents are topic to the identical take a look at as utility patents. LKQ Company v. GM World Know-how Operations (Federal Circuit, Might 21, 224).
The prior take a look at for nonobviousness of a design patent, known as the Rosen-Durling take a look at (primarily based on the 2 Federal Circuit choices), has been in impact because the Nineties. The Rosen-Durling take a look at is a two-part take a look at. In step one, a main reference (known as a Rosen reference), which has “principally the identical” traits because the claimed design, contemplating the design as a complete, have to be recognized. If a Rosen reference exists, then the second step is an evaluation of whether or not an bizarre designer would modify the Rosen reference to realize the claimed design. If no Rosen reference may be recognized, nonetheless, there isn’t a second step, and the claimed design is nonobvious. If there’s a Rosen reference, then step two is carried out. Step two requires the existence of a secondary reference which is used to change the first reference to create the claimed design. The secondary reference have to be “so associated” to the first reference that the options of 1 counsel the appliance of these options to the opposite.
In LKQ, the patent in subject was GM World Know-how’s design patent D797,625 for a car entrance fender. LKQ filed a petition for inter partes assessment of the ‘625 patent. The Patent Trial and Attraction Board discovered that LKQ had not glad step one of many Rosen-Durling take a look at as a result of its main reference was not “principally the identical” because the claimed design.
LKQ appealed to the Federal Circuit Courtroom of Appeals. LKQ argued that the Supreme Courtroom’s determination in KSR. Worldwide Co. v. Teleflex Inc., 550 U.S. 398 (2007) had implicitly overruled the Rosen-Durling take a look at, however the Federal Circuit panel discovered that it didn’t have clear route from the Supreme Courtroom as to the impact of KSR on design patents, as KSR concerned utility patents, and subsequently couldn’t overrule the Rosen-Durling take a look at. The panel of the court docket affirmed the PTAB’s determination.
LKQ requested a listening to en banc, which was granted. The complete court docket vacated the panel’s determination and remanded the case to the PTAB.
The Federal Circuit reviewed the related patent legal guidelines. A design patent covers “a brand new, authentic and decorative design for an article of manufacture.” 35 U.S.C. part 171(a). The patent legal guidelines pertaining to utility patents additionally apply to design patents. Part 171(b). Underneath part 103, an invention is clear “if the variations between the claimed invention and the prior artwork are such that the claimed invention as a complete would have been apparent ….. to an individual having bizarre talent within the artwork…” In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Courtroom held that the willpower of obviousness requires 4 units of factual findings: (1) the scope and content material of the prior artwork; (2) the variations between the prior artwork and the claims; (3) the extent of bizarre talent within the artwork; and (4) secondary concerns similar to industrial success, lengthy felt however unsolved wants, the failure of others, copying by others, and business reward. As soon as these elements have been recognized, then the query of whether or not the claimed invention is clear over the prior artwork may be analyzed. In KSR, the Supreme Courtroom dominated that the Graham elements must be utilized flexibly and that “inflexible preventative guidelines that deny factfinders recourse to frequent sense” are improper, and that the “obviousness evaluation can’t be confined by a formalistic conception.”
Primarily based on the Supereme Courtroom’s choices, the Federal Circuit overruled the Rosen and Durling instances. The court docket held that the Rosen-Durling take a look at “doesn’t adequately align with KSR …. and different precedent …. and is out of retaining with the Supreme Courtroom’s common articulation of the rules underlying obviousness, in addition to its particular remedy of validity of design patents.” The court docket discovered that the Rosen-Durling necessities — that the first reference be “principally the identical” because the claimed design and that the secondary reference be “so associated” to the first reference that the options of 1 counsel software to the opposite — “are improperly inflexible.” The court docket emphasised that KSR requires “a extra versatile method than the Rosen-Durling take a look at.”
The court docket additional held that the willpower of obviousness of a design patent have to be primarily based on the identical elements as an utilized to utility patents. In response to the court docket, the Graham evaluation must be used, though the court docket left it to “future instances to additional develop the appliance of this commonplace.”
GM and varied amici argued that overruling the Rosen-Durling take a look at would lead to uncertainty for all design patents. The federal circuit disagreed:
“The Graham four-part obviousness take a look at 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. …. This take a look at has confirmed, workable for utility patents and we see no purpose why it could not be equally workable for design patents. As with all change, there could also be some extent of uncertainty for a minimum of a short interval, however our elimination of the inflexible Rosen-Durling take a look at is compelled by each the statute and Supreme Courtroom precedent.”
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