“Don’t you remember the day that you went away and left me?” Wasted Days and Wasted Nights, written by Huey Meaux, performed by Freddie Fender

For years, design patent owners had it pretty, pretty good. Design patents—patents that cover ornamental designs for useful objects—were easier to get and harder to lose than their cousins, utility patents (which cover useful inventions like new drugs, computers, machinery, and the like). Utility patents typically undergo heavy scrutiny by examiners at the Patent Office and can expect robust validity challenges at the Patent Board of Interference and in federal court. But design patents have traditionally sailed through the Patent Office and have rarely been declared invalid due to similarity with prior designs, called “prior art.” That’s largely because until just last month, a party hoping to invalidate a design patent for “obviousness” based on similarity to the prior art faced several hurdles.

First, the challenger had to identify a prior “primary prior art reference” that was “basically the same” as the patented design. Many obviousness arguments foundered on that “primary reference” requirement, with the Patent Office and courts interpreting “basically the same” as almost indistinguishable.

If the challenger managed to clear the first hurdle, it still needed to identify “secondary references” that could modify the “primary reference” to create “a design that has the same overall visual appearance as the [patented] design.” What’s more, the “secondary references” had to be “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.” In other words, the test for design patent invalidity was rigid, cumbersome, and difficult to satisfy.

That state of play was ideal for the automobile industry. Car makers such as Ford and General Motors harnessed design patents as part of a clever strategy to maintain a stranglehold on “crash parts,” that is, fenders, bumpers, hoods, doors, headlights, taillights, and other components likely to crumple in collisions and need to be swapped out for a replacement part. Automakers realized that they could fend off competition for replacement fenders and bumpers, etc., by obtaining separate

design patents on all the individual parts of their various vehicles. That has been part of the car maker’s playbook for decades. Challenges to this “slice, dice, and design patent” strategy have largely failed.

Until now. On May 21, 2024, the full Federal Circuit, sitting en banc in a case involving a design patent for an automobile fender, tossed out the old test for design patent obviousness, calling it “improperly rigid.” The Federal Circuit noted that the Supreme Court had previously jettisoned a rigid test for utility patent obviousness, finding it at odds with the “broad standard” in the Patent Act’s Section 103, the section settling forth the non-obviousness requirement for patents. The Federal Circuit also looked back to an 1893 Supreme Court case involving saddles, in which the Court used a wholistic approach to assessing design patent validity.

So out with the old design patent obviousness test, in with the new. The new test, however, is rooted in precedent. It harkens back not just to the 1896 saddle case with its more flexible approach, but also to the Supreme Court’s seminal 1966 decision on utility patent obviousness, Graham v. John Deere. There, the Court elaborated that the ultimate test of obviousness is based on “several basic factual inquiries,” including “the scope and content of the prior art,” “differences between the prior art and the [patent] claims at issue” and “the level of ordinary skill in the pertinent art.” In addition, under Graham, secondary considerations such as commercial success, long-felt need, and failure of others can inform the obviousness analysis. The Federal Circuit concluded that the test for obviousness should not depend on the type of patent at issue. Section 103 of the Patent Act applies equally to both utility and design patents, and so should the test for obviousness.

Going forward, the Federal Circuit instructs that identifying analogous art for design patents should be “straightforward,” based on designs for the same “field of endeavor as the article of manufacture of the claimed design.” The Court also noted that, unlike utility patents, design patents have no written description, written claims, or other verbal content that defines the scope of the design invention or describes the “particular problem” the designer was trying to address. After all, a design “invention” is “defined by the overall impression that the drawings [shown in the design patent] convey.” A picture is worth a thousand words. Therefore, the Federal Circuit explained that it would “not delineate the full and precise contours of the analogous art test for design patents,” leaving it “to future cases to further develop the application of this standard.” Flexibility now trumps rigidity.

As for the “primary reference” on which the obviousness determination should turn, the Federal Circuit said it “need only be something in existence,” likely the “closest prior art” to the patented design. . . the more visually similar [ ] to the claimed design, the better positioned the challenger will be to prove [obviousness.]”

Once the scope of the prior art is determined and the closest prior art found, the next step in the analysis is to compare the visual appearance of the patented design to the primary reference, focusing on the perspective of an ordinary designer in the field of the article of manufacture in question, e.g., the perspective of a cell phone designer governs comparisons between cell phone designs.

The analysis looks to whether the primary reference, either alone or combined with secondary references, makes the patented design obvious to the hypothetical ordinary designer. If secondary references are considered, “record-supported reasons” must suggest, without hindsight, using the secondary references to modify the primary reference “to create a design that has the same overall visual appearance as the claimed design.”

As for the case in question about the fender design, the Federal Circuit vacated the determination of non-obviousness and remanded to the Patent Office with instructions to reconsider the evidence under the new flexible standards, the one derived from historical precedents. To paraphrase The Who: “meet the new test, same as the old test?

This decision, which seeks to align design patent obviousness with the law for utility patents, raises as many questions as it answers. Perhaps the most interesting question is this: did the Federal Circuit appreciate the irony of reaching back to a Nineteenth Century case about horse saddles to decide a twenty-first-century case about a fender for a horseless carriage?

Quote of the day: “Design is not just what it looks like and feels like. Design is how it works.”  — Steve Jobs

¹ LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc)