Federal Circuit Tables Scrutiny of Rosen under KSR

By John Evans and Jesse Wynn –

A recent post flagged LKQ v. GM as a potential watershed moment in design patent validity law, calling into question whether In re Rosen, long-standing obviousness precedent, comports with the Supreme Court’s decision in KSR.

Rosen survives, at least for now.  The Federal Circuit, in a non-precedential opinion, declined to revisit standing precedents (Rosen and Durling), holding that the Supreme Court’s decision in KSR did not implicitly overrule them.  The majority, writing per curiam, noted that “KSR did not involve or discuss design patents” and that the Federal Circuit had heard 50 design patent cases in the 15 years since KSR without disturbing Rosen or Durling. The panel thus declined to “overrule Rosen or Durling without a clear directive from the Supreme Court.”

Judge Lourie wrote a separate opinion with additional views.  He wrote that design and utility patents are “quite different” in terms of claims and claim construction, such that KSR could not easily read onto design patents. And while he recognized that 35 U.S.C. § 103 governs the obviousness analysis for both utility and design patents, he expressed concerns that the functional and objective utility patent analysis did not easily translate to design patents, where ornamentation analysis may be more “in the eye of the beholder.”  He concluded that Rosen, “right or wrong, or over-simplified,” was not overruled by KSR, which “did not address the basic concept of beginning an obviousness analysis in design patents.”

Judge Stark concurred on the merits, joining “most of” of the majority’s obviousness analysis, at least on its substance.  But he diverted from the majority’ on KSR, Rosen, and Durling.  Instead, he saw “substantial tension” between KSR and the Rosen/Durling test, stating that “[a] strong case can be made that the step one Rosen reference requirement is precisely the type of limiting, rigid rule KSR faulted . . . .”  In the end, he saw both sides’ arguments, but felt the case was the wrong vehicle for addressing them further.

Takeaways:  Like Judge Stark wrote, Rosen may be vulnerable to challenge under KSR.  But for the time being, Rosen remains intact.  Whether it survives further scrutiny, in future petitions for en banc or Supreme Court review, or in another appeal, remains to be seen.