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In LKQ Corp. et al. v. GM Global Technology Operations LLC, (Nos 2021-2348 and 2022-1253, decided January 20, 2023 –) - the U.S. Court of Appeals for the Federal Circuit affirmed two Inter Partes review decisions from USPTO holding that two design patents owned by GM that covered car body replacement parts (US Pat. Nos. D797,625 and D855,508) were not invalid over the prior art.

LKQ asserted before the Federal Circuit that the Rosen test on which the PTAB relied in its obviousness analysis had been implicitly overruled by the Supreme Court’s KSR case of 2007. For many years, the design patent test for obviousness has been as stated in the seminal In re Rosen case (673 F.2d 388 (CCPA 1982)) as follows:

“[T]here must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. Such a reference is necessary whether the holding is based on the basic reference alone or on the basic reference in view of modifications suggested by secondary references.”

The Rosen case was followed by Durling v. Spectrum Furniture, 101 F.3d 100 (Fed. Cir. 1996) which added the condition of whether you could combine secondary references with a proper primary reference, stating:

“[S]econdary references may only be used to modify the primary reference if they are “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.”

Among other things, the Board took a fairly narrow view on what constituted the “ordinary observer.” Since the design patents related to replacement parts for automobiles, the Board determined that the ordinary observer would include both retail consumers who purchase replacement fenders and commercial replacement part buyers. Decision, J.A. 20–23. In so doing, the Board emphasized that the “’625 design claims a ‘vehicle front fender,’ not a vehicle in total.” Decision, J.A. 21.

The Board also found that LKQ failed to identify a sufficient primary reference, and therefore failed to prove obviousness by a preponderance of the evidence. LKQ contended on appeal that the Rosen and Durling tests on which the Board relied in its obviousness analysis had been implicitly overruled by the Supreme Court’s decision in KSR International Co. v. Telflex, Inc., 550 U.S. 98 (2007).

For design patent obviousness, Durling outlines a two-step analysis. First, it must be determined whether a primary reference, also known as a Rosen reference, exists with characteristics “basically the same” as the claimed design by discerning the visual impression of the design as a whole. Second, if a satisfactory primary reference exists, the court must consider whether an ordinary designer would have modified the primary reference to create a design with the same overall visual appearance as the claimed design. Id. This test safeguards against a challenger picking and choosing features from multiple references to create something entirely new, fundamentally changing the overall visual impression of the original designs.

The Court of Appeals held that it could not overrule Rosen or Durling without a clear directive from the Supreme Court. Accordingly, the tests set forth in Rosen and Durling should still be considered good law. However, it is interesting to note that the decisions by the Court of Appeals were indicated as “nonprecedential.” According to the Court of Appeals, if a panel of judges determines that its decision will add significantly to a body of law, it issues a precedential opinion. Decisions that are determined to not add significantly to the body of law are issued as nonprecedential. The court may refer to a nonprecedential disposition in an opinion or order and may look to a nonprecedential disposition for guidance or persuasive reasoning, but will not give one of its own nonprecedential dispositions the effect of binding precedent.