How Graham Factor One Applies to Design Patents in a Post-LKQ World

LKQ Corp. v. GM Global Tech. shook up the world of design patents, as the Federal Circuit, sitting en banc, overruled the longstanding Rosen-Durling test for determining design patent obviousness. 102 F.4th 1280, 1293 (Fed. Cir. 2024). In the wake of such seismic precedential activity, the LKQ court left only the Graham factors, broad guidance on how they apply to design patents, and a flood of questions from patent practitioners. See id. at 1295-1300. This article, while briefly walking through the background of Rosen-Durling, focuses on one of those questions: how does Graham factor one apply to design patents?

Over-ruling Rosen-Durling

Before LKQ, to establish obviousness of a design patent claim under § 103, a party had to provide prior art in the form of a primary reference and a secondary reference, and those references had to satisfy the two-part Rosen-Durling test. See id.; see also MRC Innovations, Inc. v. Hunter Mfg., LLP., 747 F.3d 1326, 1331-1332, 1334 (Fed. Cir. 2014) (applying the Rosen-Durling test). The primary reference, referred to as the “Rosen reference,” comprises step one of the Rosen-Durling test. LKQ, 102 F.4th at 1289. That is, the primary reference had to be “basically the same” as the challenged design claim—leaving little wiggle room for prior art references that differed, even if only slightly. In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982). If this first step of the test was not satisfied, the obviousness analysis proceeded no further. See LKQ, 102 F.4th at 1289. The second step of Rosen-Durling focused on a secondary reference (or references). There, one or more secondary references might serve as a source for ornamental features missing from the primary reference, but only if each secondary reference was “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.” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). This “so related” requirement further limited the availability of viable prior art references. Id.

Given the “rigidity” of the Rosen-Durling test, the court was quick to replace it with a more “flexible” approach. See LKQ, 102 F.4th at 1293. In doing so, the court based its reasoning in the statutory language of § 103, and the Supreme Court precedents of Graham, KSR, and Whitman Saddle (a nineteenth-century horse saddle case that invalidated a design patent under § 103 by flexibly combining two prior art references). See id.; Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007); Smith v. Whitman Saddle Co., 148 U.S. 674, 680–682 (1893). To summarize this transition to flexibility in design patent obviousness, the LKQ court quoted KSR: an “obviousness analysis cannot be confined by a formalistic conception.” KSR, 550 U.S. at 419. Unsurprisingly, then, the LKQ court did not fall victim to a “formalistic conception” in replacing the previous Rosen-Durling regime for determining design patent obviousness. Id.

Out with Rosen-Durling, in with Graham

The Federal Circuit explained that, despite the differences between design and utility patents, “design patents, like utility patents, must meet the nonobviousness requirement of 35 U.S.C. § 103.” LKQ 102 F.4th at 1293 (citing Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1380, 1384–85 (Fed. Cir. 2009)). As such, the court reaffirmed its precedent that “[i]nvalidity based on obviousness of a patented design is determined [based] on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent under § 103, that is, on application of the Graham factors.” LKQ, 102 F.4th at 1295 (quoting Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997)). And just like that, goodbye Rosen-Durling, hello Graham. But how, exactly, do the Graham factors apply to design patents? The court walked through each factor, describing such application with varying levels of specificity. LKQ, 102 F.4th at 1295–1301. This article, however, is primarily concerned with the first Graham factor—the “scope and content of prior art.” Graham, 383 U.S. at 17.

Graham Factor One and the Primary Reference

While the en banc LKQ court abandoned the need for a Rosen reference, it made clear that, when applying Graham factor one to determine the “scope and content of the prior art,” a “primary reference must be identified.” LKQ, 102 F.4th at 1298. Maintaining this primary reference requirement is necessary to prevent hindsight bias, as the court noted, because “almost every new design is made up of elements which, individually, are old somewhere in the prior art.” Id. (quoting In re Glavas, 230 F.2d 447, 450 (C.C.P.A. 1956)). Unlike the Rosen reference, though, a primary reference “need not be ‘basically the same’ as the claimed design.” LKQ, 102 F.4th at 1298. Instead, as stated in In re Jennings and quoted by the court, the primary reference must be “something in existence—not … something 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.” 182 F.2d 207, 208 (C.C.P.A. 1950); see also LKQ, 102 F.4th at 1298. In other words, a primary reference must be considered, and exist, “as a whole,” Jennings, 182 F.2d at 208, and cannot merely be a conglomeration of various designs to meet the features of the claimed design, LKQ, 102 F.4th at 1298.

To determine a proper primary reference, Jennings does little more than establish that the reference must exist, so the LKQ court provided a bit more guidance. See id. Specifically, the court states,

[t]he primary reference will likely be the closest prior art, i.e., the prior art design that is most visually similar to the claimed design. The more visually similar the primary reference design is to the claimed design, the better positioned the patent challenger will be to prove its § 103 case.

LKQ, 102 F.4th at 1298. Thus, instead of needing to clear the “basically the same” bar, a primary reference can exist on a spectrum of “visual similarity.” Id. And the court keeps it simple: the more a primary reference looks like a claimed design, the more likely the claim will not survive the obviousness analysis. See LKQ, 102 F.4th at 1298.

Importantly, the court provides one last piece of advice regarding the primary reference requirement: “The primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.” Id. (emphasis added). Put differently, the primary reference may or may not be in the same field of endeavor as the claimed design (though it usually will), but it must be analogous art. Id. This holding begs the inevitable question: what constitutes analogous art for design patents?

Institution of the Design Patent Analogous Art Requirement

At the outset of its discussion of Graham factor one, the LKQ court held that “an analogous prior art requirement applies for obviousness of design patents”—not just utility patents. LKQ, 102 F.4th at 1296. The court then outlined this requirement, quoting Federal Circuit precedent: “a reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention.” Id. (quoting Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019)). It also laid out the rationale behind such a requirement: to fall in line with the language of § 103 (tying the scope of prior art to the knowledge and understanding of the hypothetical person of ordinary skill in the art), and to “defend against hindsight.” LKQ, 102 F.4th at 1296 (citing Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1358 (Fed. Cir. 2023)).

Finally—to further solidify the correctness of its analogousness holding—the LKQ court walked through In re Glavas, a case that paved the way for the Rosen-Durling test. See LKQ, 102 F.4th at 1296–1297. There, the then-C.C.P.A. instituted an analogous art requirement for design patents but held that it could not be applied in the same way it applied to utility patents. See Glavas, 230 F.2d at 450. As such, the court made the following rule: “The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” (emphasis added). Id. With that, the “so-related” prong of Rosen-Durling was born, only to become more rigid with time.

In overruling the Rosen-Durling test, the en banc LKQ court effectively overruled the Glavas analogous art rule. However, the court found “no basis for abandoning the underlying analogous art requirement for assessing nonobviousness of design patents” that was established in Glavas. LKQ, 102 F.4th at 1296. Instead, the court wrote of a “return to a more flexible fact-based analysis of whether the references are analogous art in a manner similar to utility patents”; an approach that “casts aside a threshold ‘so-related’ requirement but maintains the threshold analogous art requirement.” Id.

Application of the Design Patent Analogous Art Requirement

Currently, it seems that the court succeeded in creating a flexible approach to the threshold analogous art requirement. Whereas utility patents depend on a two part test to determine the scope of analogous art—(1) whether the art is from the same field of endeavor as the claimed invention; and (2) if not within the same field of endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved—the test is now much more open-ended for design patents. See id.

That is, speaking to the first part of the analogous art test, “prior art designs for the same field of endeavor as the article of manufacture will be analogous,” but the court does “not foreclose that other art could also be analogous.” Id. at 1297. Thus, the court wrote, “[w]hether a prior art design is analogous to the claimed design for an article of manufacture is a fact question to be addressed on a case-by-case basis.” Id. at 1297–1298. Put differently, the first prong of the analogous art test applies to design patents, but that a reference fails to directly satisfy that prong does not preclude it from being considered analogous prior art. See id.

Regarding the second part of the analogous art test, because it deals with the solving of a problem—not the appearance of a design—the court noted that “the second part of the two-part analogous art test for utility patents would not seem to apply to design patents in the same way, and how to translate this part of the test into the design context is less apparent.” Id. at 1297. The court further discussed the difficulties of applying the second part of the test to design patents, but conspicuously avoided an outright rule stating that it would never apply to design patents. See id.

Importantly, to cover its bases on analogous prior art as a whole, the court wrote the following: “In this opinion, we do not delineate the full and precise contours of the analogous art test for design patents,” adding, “[we] leave it to future cases to further develop the application of this standard.” Id. at 1297–1298. The bottom line: an analogous art requirement has been instituted for design patents—not dissimilar to that of the requirement for utility patents—and a prior art reference is analogous if it is from the same field of endeavor as the claimed design, though it doesn’t have to be. See id. Rigidity be gone; the analogous art requirement for design patents apparently knows no bounds (yet).  

 A Summary of LKQ’s Application of Graham Factor One and a Bit of Advice

Following LKQ, the Graham factors now apply to obviousness analyses for design patents. See id. at 1295. To satisfy the first Graham factor, a patent challenger must provide a primary reference. See id. at 1298. The primary reference must be considered, and exist, as a whole. See id. And, at the very least, the primary reference must be analogous art. Id. at 1297. Secondary references, if needed, must also be analogous art (and do not need to be “so related” to the primary reference). Id. at 1299. A prior art reference is analogous if it is from the same field of endeavor as the claimed design; however, depending on the facts, a reference may still be analogous if it falls outside of that field. See id. at 1297–1298. Thus, if a potential main or secondary reference exists, whether it will be deemed analogous cannot easily be predicted. Evidently, LKQ intentionally left an enormous amount of space for arguments to be crafted, and caselaw to be made, regarding design patent obviousness. See id. So, perhaps the best piece of advice in this post-LKQ world is this: take a page out of the Federal Circuit’s book and use a flexible approach when dealing with obviousness for design patents—particularly as it pertains to applying Graham factor one.

R. Parrish Freeman is a Partner at Maschoff Brennan.  Parrish is an experienced litigator whose practice is focused primarily on patent, trademark, and other intellectual property and complex commercial matters.  Whether it’s dealing with allegations of infringement, coordinating a large-scale enforcement effort, or negotiating a license, Parrish is adept at helping his clients navigate the complex intellectual property issues they encounter daily. Parrish has litigated patent cases across a wide spectrum of technologies, from very complicated chemical, electrical, and software matters to relatively simple mechanical cases.

 Matthew Petersen is a Summer Clerk at Maschoff Brennan.  He is currently securing his J.D. at University of Utah's S.J. Quinney College of Law.

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