Under the new LKQ test, determining the scope of analogous art for design patents is a “more flexible [and] fact-based analysis,” similar to that of utility patents. LKQ Corp., 102 F.4th at 1297. For many years, a two-part test has used to determine whether prior art is analogous to a utility patent:
- Whether the art is from the same field of endeavor as the claimed invention, and
- If the reference is not within the field of the inventor’s endeavor, whether the reference is still reasonably pertinent to the particular problem with which the inventor is involved.
Id. (quoting Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019)).
Applied to design patents, the “same field of endeavor” test transfers easily. Id. However, the “particular problem” test is difficult to apply because the design patents lack claims that describe the particular problem or function the patent addresses. Id. The LKQ Corp. court chose to “not delineate the full and precise contours of the analogous art test for design patents.” Id. But the court noted that “the primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.” Id. While this language provides some guidance, the court’s rejection of the Rosen-Durling threshold test also removes the boundaries on the scope of prior art. Such an expansive view of analogous art makes it easier for challengers to establish primary and secondary references.
The LKQ Corp. Decision Makes for an Uncertain Future
The court acknowledged the potential “difficulties with this fact based non-rigid test,” but also noted the uncertain future does not make the new test unworkable because the test as applied to utility patents incurred the same difficulties. Id. at 1300–01. The court explicitly rejected the argument that the elimination of the Rosen-Durling test will return obviousness challenges to a “rudderless free-for-all,” as the new fact-based test for design patents relies on guidance from the Graham jurisprudence as applied in the utility patent context. See id. at 1300.
With a more expansive scope of prior art, designers should conduct thorough prior art searches before attempting to obtain a design patent. However, even the most thorough prior art search might still result in an obviousness challenge because the “flexible” standard allows litigants to make arguments for what does and does not constitute analogous art. As a means of clarifying the standard, courts should expect a high volume of litigation over obviousness, and due to the changing conditions, designers may be wise to wait and see how the standard will change before applying for a design patent.
While amici argued that “up to 400,000 U.S. design patents” are at risk of invalidation, Id. at 1300 (quoting Brief of Amicus Am. Intell. Prop. L. Ass’n., LKQ Corp. v. GM Glob. Tecnh. Operations, 102 F.4th 1280 (Fed. Cir. 2024)), the LKQ Corp. court is dismissive that these patents are in jeopardy. Id. at 1300. Although the court’s perspective may be true in theory, patent litigators would be wise to consider including bolder invalidity challenges in their litigation strategies. With an expansive view of prior art under LKQ Corp., invalidity challenges may become difficult to defend against, so litigators can achieve their desired result through an invalidity challenge in ways that were not available in the days of Rosen-Durling. All design patents face at least some increased risk of invalidation.
Will This Impact the Columbia Sportswear Case?
It is possible that the holding in LKQ Corp. will impact the scope of Columbia Sportswear North America, Inc. v. Serius Innovative Accessories, Inc, which was decided just last year. Columbia Sportswear N. Am., Inc. v. Serius Innovative Access., Inc., 80 F.4th 1363, 1377 (Fed. Cir. 2023). There, in the context of design patent infringement, the Court of Appeals for the Federal Circuit held that “comparison prior art”—that is, prior art that an “ordinary observer” is presumed to be familiar with when comparing the patent against the accused design—is limited to “the article of manufacture identified in the claim.” Id. at 1378 (explaining that an “ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art,” and “when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.”)
Although one case deals with invalidity and the other with infringement, both cases were concerned with the scope of applicable prior art—Columbia Sportswear narrowed while LKQ Corp. broadened. “Comparison art” is used in a design patent infringement analysis to compare a claimed and an accused design, Id. at 1369, and “analogous art” refers to prior art comparisons for obviousness inquiries. See LKQ Corp., 102 F.4th at 1296. However, Columbia Sportswear limits the scope of comparison prior art to the same article of manufacture that was recited in the claim of the asserted design patent—effectively narrowing the pool of comparison prior art.
In contrast, under LKQ Corp., the court abandoned the use of “rigid” tests and effectively broadened the pool of prior art for use in invalidity challenges. The Columbia Sportswear “same article of manufacture” limitation seems to cut against the more flexible approach that the court now endorses. This stated preference for flexibility may provide litigators the opportunity to push back against the narrowing effect of the Columbia Sportswear precedent—the applicability of Columbia Sportswear after LKQ may depend on whether or not “comparison art” and “analogous art” should have the same scope.
For now, it seems that obviousness challenges and infringement actions follow separate lines of cases, and therefore, the tests remain distinct. However, as courts attempt to resolve the scope of analogous art for obviousness challenges, they may look to the Columbia Sportswear holding to limit analogous art to only specific articles of manufacture.
