USA Trends and Developments Contributed by: Steven Lieberman and Nicole (Nikki) DeAbrantes, Rothwell, Figg, Ernst & Manbeck PC
that the test was inconsistent with the Supreme Court’s precedent in KSR International Co. v Teleflex Inc ., 550 U.S. 398 (2007), but the Fed- eral Circuit panel disagreed and affirmed the PTAB’s decision. Subsequently, the Federal Cir- cuit granted rehearing en banc and vacated the panel’s opinion. The “old” obviousness standard applied to design patents (commonly referred to as the “Rosen-Durling test”) was a two-step test. Before combining prior art designs, a patent challenger needed to identify a single primary reference with design characteristics that are “basically the same” as the challenged design claim. See In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982). If no reference was found, the patent was con- sidered nonobvious and the inquiry ended with - out moving to step two. If a primary reference was found, then at step two, other references could be used to modify the primary reference “to create a design that has the same overall visual appearance as the claimed design.” See LKQ Corp., 102 F.4th at 1289 (quoting Durling v Spectrum Furniture Co., Inc ., 101 F.3d 100, 103 (Fed. Cir. 1996)). To be obvious, the secondary references must be “‘so related’ to the primary reference that features in one would suggest application of those features to the other.” (Id. at 1287). In its en banc decision, the Federal Circuit deemed the Rosen-Durling test to be “improp- erly rigid” and overturned it in favour of a “more flexible approach” that better aligned with the “expansive” and “broad standard” applied by the Supreme Court in KSR, Graham v John Deere Co . of Kansas City, 383 U.S. 1 (1966), and Smith v Whitman Saddle Co ., 148 U.S. 674 (1893). Id. at 1293-94. The Federal Circuit concluded that the same obviousness standard should apply equally to both utility patents and design pat-
ents. See LKQ Corp., 102 F.4th at 1287. Conse- quently, the Federal Circuit adopted the same Graham factors, for evaluating obviousness of design patents, but with a few variations: • Scope and content of prior art - the fact finder should consider “the scope and content of the prior art within the knowledge of an ordi- nary designer in the field of the design.” Id. at 1295-96. In doing so, a primary reference must be identified but the reference need only be “something in existence—not... some- thing that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.” Id. at 1298 (quot- ing In re Jennings, 182 F.2d 207, 208 (CCPA 1950)). Each reference must be analogous to the claimed design which for design patents includes “art from the same field of endeavor as the article of manufacture of the claimed design”. Id. at 1297. • Differences between the claimed design and the prior art – when determining the differ- ences, a fact finder compares the “visual appearance of the claimed design with prior art designs” from the perspective of one of ordinary skill in the art. Id. • Level of ordinary skill in the art – the level of ordinary skill in the art looks to the “knowl- edge of a designer of ordinary skill who designs articles of the type involved.” Id. at 1299 (internal quotations omitted). • Secondary considerations – the fact finder assesses the secondary considerations of non-obviousness, such as commercial suc- cess, industry praise or copying. After considering the above factors, the fact finder determines “whether an ordinary designer in the field to which the claimed design pertains
591 CHAMBERS.COM
Powered by FlippingBook