Law & Order

Federal Circuit Court Overturns Decades-Old Test, Paving the Way for Fair Competition in Vehicle Repair Parts

By David P. Goch

A Federal Circuit Court overruled a decades-old test used to assess whether design patents are obvious and thus invalid on May 24. In this case, the court ruled in favor of the plaintiff that a General Motors design patent for a front fender should not have received protection through the U.S. Patent & Trade Office, sending the case back to the Patent Trial and Appeal Board ("PTAB") to scrutinize the patent under a new standard. 

Prior to the May 24 ruling, the Rosen-Durling test had been applied to the advantage of OEMs since 1996. Replacement part manufacturers have criticized this test, maintaining it set an impossibly high bar and allowed automakers to patent parts that contained only incremental, noninnovative design changes over previous iterations. Under Rosen-Durling, a design patent could be invalidated or a design patent application rejected when an older design was "basically the same" and a secondary design reference was "so related" to the first that "the appearance of certain ornamental features in one would suggest the application of those features to the other."

According to those opposed to Rosen-Durling, it allowed OEMs to create anti-competitive outcomes for designs of repair parts that were only trivially different than what came before.

In striking down the old test, Judge Kara F. Stoll, writing for nine judges, concluded that Rosen-Durling could not exist in light of a 2007 U.S. Supreme Court ruling that made it easier for challengers to invalidate utility patents, which protect the functionality of an invention, such as a machine, process or software. Stoll wrote, "[W]e adopt an approach consistent with Congress's statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents, as well as Supreme Court precedent which suggests a more flexible approach than the Rosen-Durling test for determining nonobviousness."

The ruling obligates the PTAB to "consider the 'scope and content of the prior art' within the knowledge of an ordinary designer in the field of the design" in its reconsideration of the design in question and for future design cases.

The ruling (LKQ Corp. v. GM Global Tech. Ops. LLC, Fed. Cir., 21-2348, aff'd in part, vac'd in part 5/21/24) should be considered an important step in protecting a consumer's right to a range of options when making vehicle repairs.