Suppose you have a design for an ornamental appearance of an article and start producing the article. Subsequently, you receive notice from an owner of a design patent that you are infringing their patent. You conduct a prior art search and find some references related to the design. Can you invalidate the design patent through an inter-parties review in the United States Patent and Trademark Office or a court proceeding based on these prior art references? The answer is YES if the prior art references either anticipate or render obvious the claimed design of the design patent.
For a design patent, 35 U.S.C. § 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 U.S.P.Q. 988 (C.C.P.A. 1980). The subject matter that is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916).
To anticipate a claimed design of a design patent with a single prior art reference under 35 U.S.C. § 102, the ordinary observer test set forth in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) is applied, which provides that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham, 81 U.S. at 528. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc) (making the “ordinary observer” test in Gorham the sole test for determining design patent infringement).
What if the single prior art reference does not anticipate the claimed design because of differences between the designs in the single prior art reference and the design patent? Can you invalidate the design patent because the prior art references render the claimed design obvious? If so, how does one go about proving obviousness for a design patent?
In a recent case, LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348, (Fed. Cir. May 21, 2024), GM Global Technology LLC (“GM”) asserted U.S. Design Patent No. D797,625 (‘625 patent), which claimed an ornamental design for a vehicle front fender, against LKQ Corporation and Keystone Automotive Industries, Inc. (collectively “LKQ”). LKQ filed a petition to institute an inter-parties review of the ‘625 patent with the United States Patent and Trademark Office (“USPTO”) for anticipation under 35 U.S.C. § 102 based on U.S. Design Patent No. D773,340 (“Lian”) and for obviousness under 35 U.S.C. § 103 based on Lian and a promotion brochure to Hyundai that showed the design of a vehicle front fender. Under the ordinary observer test for anticipation, the USPTO found differences between the designs such that there was no anticipation. Under the long-standing Rosen-Durling test for obviousness, which is a two-part test, the USPTO found that LKQ failed to identify a Rosen reference, which is a single reference that has the design characteristics that are the same as the claimed design. Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)). LKQ Corporation at 7. LKQ appealed and a panel of the Court of Appeals for the Federal Circuit (CAFC) affirmed.
Subsequently, the CAFC, en banc, considered the issue of whether the Rosen-Durling test should be used to determine the obviousness of design patents. The CAFC overruled Rosen and Durling and agreed with their precedent holding 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.” Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997). LKQ Corporation at 19.
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Supreme Court interpreted the meaning of 35 U.S.C. § 103 and determined the Graham factors as three factual inquiries that include “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; and “the level of ordinary skill in the pertinent art.” Id. Further, the Supreme Court held that secondary considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented” and may be relevant as “indicia of obviousness or nonobviousness.” Id. at 17–18.
To evaluate the obviousness or nonobviousness of a claimed design, the Graham factors are applied. The first factual inquiry (“Graham factor one”) is directed to the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of design. See Graham, 383 U.S. at 17. In applying Graham factor one, a primary reference must be identified. Next, the second factual inquiry (“Graham factor two”) is directed to determining the differences between the prior art designs and the design claim at issue. Graham, 383 U.S. at 17. In applying Graham factor two, the visual appearance of the claimed design is compared with prior art designs from the perspective of an ordinary designer in the field of the article of manufacture. See Apple, Inc. v. Samsung Elects., Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012). Then, the third factual inquiry (“Graham factor three”) is directed to “the level of ordinary skill in the pertinent art [must be] resolved.” Graham, 383 U.S. at 17. In applying Graham factor three, “a person of ordinary skill in the art to which the invention pertains” is assessed from the viewpoint of an ordinary designer in the field to which the claimed design pertains. Based on applying the Graham factors, it is determined whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design “to create the same overall visual appearance as the claimed design.” Campbell Soup, Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1275 (Fed. Cir. 2021) (citation and quotation marks omitted). The CAFC held that the obviousness inquiry for design patents still requires the assessment of secondary considerations as indicia of obviousness or nonobviousness when evidence of such considerations is presented. Graham, 383 U.S. at 17–18 (“Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”).
As to practice tips, the next time you receive notice from an owner of a design patent that you are infringing their patent, you should conduct a prior art search and consider invalidating the design patent based on anticipation and obviousness. To invalidate a design patent based on anticipation, you should use the ordinary observer test to evaluate whether the two designs between the prior art reference and the design patent are substantially the same. If there are differences, you should attempt to invalidate the design patent based on obviousness using the Graham factors and any secondary considerations. Therefore, using these tests, you may be able to invalidate a design patent either through an inter-parties review in the USPTO or in a court proceeding.