Federal Circuit Rules on Obviousness for Design Patents

The Federal Circuit has upheld a finding by the Patent Trial and Appeal Board (PTAB) that a fender design patent was not obvious.

The case is LKQ Corporation v. GM Global Technology Operations.

GM owns US patent D797,625, for an "ornamental design for a vehicle front fender."

LKQ sells automotive body repair parts for most vehicle models, including front fenders for vehicles made by GM.

As the court noted,

GM and LKQ had previously been parties to a license agreement, under which LKQ was granted a license to many of GM's design patents. The license agreement expired in February 2022 following a breakdown of renewal negotiations, after which GM sent letters to LKQ's business partners alleging that the now unlicensed LKQ parts infringe its patents.

LKQ petitioned for inter partes review of the GM patent, asserting that it was anticipated by U.S. Patent D773,340 ("Lian") and would have been obvious over Lian alone or in combination with the fender design of the 2010 Hyundai Tucson.

The PTAB concluded that LKQ hadn’t demonstrated by a preponderance of the evidence that the '625 patent was anticipated or would have been obvious before the effective filing date.

Under 35 U.S.C. 103,

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

“Obviousness” applies to design patents just as it does to utility patents.

The case of Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996) sets forth a test for obviousness for design patents. As the court discussed:

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. … 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 PTAB determined that an “ordinary observer” would include both retail consumers who purchase replacement fenders and commercial replacement part buyers.

The PTAB concluded that although there were some similarities between the GM design and the Lian reference, there were also key differences, including:

(1) the wheel arch shape and terminus,
(2) the door cut line,
(3) the protrusion,
(4) the sculpting,
(5) the first and second creases,
(6) the inflection line (i.e., third crease), and
(7) the concavity line.

The PTAB found that these differences contributed to different overall appearances in the design -- the GM fender’s “smooth, curved overall appearance” as opposed to the Lian fender’s “substantially linear, angled lines.”

The PTAB concluded that an ordinary observer wouldn’t be deceived into purchasing the Lian fender, thinking it was the GM fender.

Thus, the court affirmed the PTAB's conclusion that LKQ didn’t show that the GM fender patent would have been obvious over the cited references.