In a landmark en banc decision, the U.S. Court of Appeals for the Federal Circuit vacated its prior panel ruling in LKQ Corporation and Keystone Automotive Industries v. GM Global Technology Operations, LLC (Case No. 22-1253), fundamentally dismantling the long-standing Rosen-Durling test for design patent obviousness. Filed on December 13, 2021 and closed on August 23, 2024 after 984 days of proceedings, the case centered on design patent USD855508S — covering a vehicle front skid bar — and challenged the Patent Trial and Appeal Board’s finding that LKQ had failed to prove the patent obvious. The Federal Circuit vacated the Board’s non-obviousness determination while affirming its finding of no anticipation, and remanded the case for reconsideration under a newly articulated obviousness standard consistent with the en banc ruling.

This decision carries profound implications for design patent strategy across the automotive aftermarket, consumer goods, and industrial design sectors. By rejecting the rigid two-step Rosen-Durling framework in favor of a more flexible standard aligned with KSR International Co. v. Teleflex Inc., the Federal Circuit has lowered barriers to design patent invalidity challenges and expanded the universe of prior art that can be combined to establish obviousness. IP professionals, patent prosecutors, and R&D teams working in any design-patent-intensive industry must urgently reassess portfolio strength, prosecution strategies, and freedom-to-operate analyses in light of this recalibrated legal landscape.

Aperçu du dossier

Les parties

Le brevet en cause

U.S. Design Patent USD855508S (Application No. 29/645,849) protects the ornamental appearance of a vehicle front skid bar — the protective styling element mounted beneath the front bumper of a motor vehicle. Design patents cover the unique visual and aesthetic characteristics of a product rather than its functional mechanics, meaning this patent claims the specific look and shape of the skid bar as it would be perceived by an ordinary observer. In the automotive aftermarket context, this type of design protection gives OEMs like GM the ability to restrict competing suppliers from manufacturing visually similar replacement parts.

• • USD0855508S

Représentation juridique

Plaintiff Counsel: Irwin IP LLP; Lex Lumina PLLC; Thompson Hine LLP (lead: Andrew Himebaugh)
Defendant Counsel: Fish & Richardson LLP (lead: John A. Dragseth)

Chronologie du litige et historique de la procédure

This case originated as an inter partes review (IPR) petition filed before the Patent Trial and Appeal Board (PTAB), with the appellate phase docketed at the Court of Appeals for the Federal Circuit — the exclusive appellate forum for U.S. patent matters. The Federal Circuit’s involvement signals that foundational patent law questions were at stake, going beyond the specific facts of the dispute to implicate how design patent validity is evaluated across all U.S. patent proceedings. The case was categorized as a patentability/invalidity action, placing it squarely in the domain of PTAB trial practice and post-grant patent challenges.

Spanning 984 days from filing on December 13, 2021 to closure on August 23, 2024, the case reflects the extended timeline typical of en banc Federal Circuit proceedings, which require full-court deliberation and carry heightened precedential weight. The case was resolved not by a final judgment on the merits but by a remand order: the en banc court vacated the panel’s prior affirmance of the Board’s non-obviousness holding under the Rosen-Durling test, affirmed the Board’s no-anticipation finding, and returned the matter to PTAB for reconsideration under the newly established obviousness standard. The pending en banc rehearing request (Dkt. 50) was denied as moot following the en banc decision.

Le verdict et l'analyse juridique

Résultat

The Federal Circuit’s en banc court issued a split order granting the parties’ joint motion to vacate in part and remand. The panel decision affirming PTAB’s finding of non-obviousness under the Rosen-Durling test was vacated, while the Board’s finding of no anticipation was affirmed. No damages or injunctive relief were awarded at this stage; the case was remanded to the Board for further proceedings consistent with the en banc decision abandoning Rosen-Durling in favor of a more flexible obviousness standard.

Analyse des causes du verdict

The Federal Circuit’s en banc ruling turned on a fundamental reassessment of how design patent obviousness should be evaluated under 35 U.S.C. § 103.

• The court rejected the Rosen-Durling test’s requirement that a primary reference be ‘basically the same’ as the claimed design, finding this standard inconsistent with the Supreme Court’s flexible KSR obviousness framework and the statutory text of 35 U.S.C. § 103.
• The Federal Circuit held that design patent obviousness must be evaluated under the same general framework applicable to utility patents, allowing a broader combination of prior art references without the rigid threshold requirement for a single primary reference.
• The Board’s finding of no anticipation was affirmed, meaning the court found no single prior art reference that disclosed every element of the claimed design — the obviousness question alone was reopened on remand.
• The joint motion to vacate in part and remand, filed by both parties, reflected a negotiated procedural resolution enabling the case to return to PTAB for a merits re-examination under the new legal standard rather than proceeding to a full Federal Circuit final judgment.

Signification juridique

1. This en banc decision represents the most significant shift in design patent obviousness doctrine in decades, overruling the two-part Rosen-Durling test that had governed design patent validity challenges since 1996 and replacing it with a more flexible standard that aligns design and utility patent obviousness analysis.
2. The ruling expands the scope of prior art available in design patent IPR proceedings, making it easier for petitioners to combine disparate prior art references to build an obviousness case without first identifying a single primary reference that is ‘basically the same’ as the challenged design.
3. Pending PTAB proceedings and Federal Circuit appeals involving design patent invalidity will need to be re-evaluated under the new standard, and patent owners with design patents that survived Rosen-Durling scrutiny may now face renewed vulnerability to inter partes review petitions filed under the relaxed framework.

Points stratégiques à retenir

Pour les avocats spécialisés en brevets :

• Re-evaluate all pending design patent IPR petitions that were drafted under the Rosen-Durling framework; prior art combinations previously considered legally insufficient may now support a viable obviousness argument under the more flexible KSR-aligned standard.
• For design patent prosecution, counsel should anticipate tougher examiner scrutiny on obviousness grounds and consider building a stronger prosecution history by distinguishing the claimed design from a broader range of prior art references, not just the single closest reference.
• Design patent litigators defending OEM or brand clients should conduct immediate portfolio audits to identify issued design patents most at risk of re-examination or IPR challenge under the new standard, prioritizing high-value commercial designs in competitive aftermarket sectors.

Pour les professionnels de la propriété intellectuelle :

• In-house IP teams in automotive, consumer electronics, and industrial design should commission a vulnerability assessment of their design patent portfolios against the expanded obviousness standard, focusing on patents previously deemed safe under Rosen-Durling that could now be challenged using combinations of prior art.
• Licensing and enforcement strategies built around design patents should be revisited: the weakened validity presumption under the new standard may affect royalty negotiations, litigation leverage, and the cost-benefit calculus of asserting design patents against aftermarket competitors.

Pour les équipes de R&D :

• Product designers and engineers in automotive and adjacent sectors should work with IP counsel to conduct updated freedom-to-operate analyses for new components, as the broadened obviousness standard may invalidate competitor design patents that previously created barriers to entry in replacement-part markets.
• R&D teams should document design development processes more rigorously, capturing the creative choices and non-obvious aesthetic decisions made during product development — this contemporaneous record can serve as evidence of non-obviousness if a design patent faces a post-grant challenge.