NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

LKQ CORPORATION, KEYSTONE AUTOMOTIVE 

INDUSTRIES, INC.,

Appellants

v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC,

Appellee

______________________ 

2022-1253

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. PGR2020-

00055.

______________________ 

Decided: January 20, 2023

______________________ 

MARK A. LEMLEY, Lex Lumina PLLC, New York, NY, 

argued for appellants. Also represented by MARK P.

MCKENNA; ANDREW HIMEBAUGH, BARRY IRWIN, IFTEKHAR 

ZAIM, Irwin IP LLC, Chicago, IL.

 JOSEPH HERRIGES, JR., Fish & Richardson P.C., Minneapolis, MN, argued for appellee. Also represented by JOHN 

A. DRAGSETH; NITIKA GUPTA FIORELLA, Wilmington, DE; 

LAURA E. POWELL, Washington, DC.

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______________________ 

Before LOURIE, CLEVENGER, and STARK, Circuit Judges. 

Opinion for the court filed PER CURIAM. 

Additional views filed by Circuit Judge LOURIE. 

Opinion concurring in part and concurring in judgment

filed by Circuit Judge STARK. 

PER CURIAM. 

LKQ Corp. and Keystone Automotive Industries, Inc. 

(collectively, “LKQ”) appeal from a final written decision of 

the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that LKQ failed to show

by a preponderance of the evidence that U.S. Patent 

D855,508 (the “’508 patent”) was anticipated or would have 

been obvious over the cited prior art before the effective filing date. See LKQ Corp. v. GM Glob. Tech. Operations 

LLC, PGR2020-00055, Paper 33 (P.T.A.B. Oct. 8, 2021) 

(“Decision”), J.A. 1–65. For the reasons provided below, we 

affirm.

BACKGROUND

GM Global Technology Operations LLC (“GM”) owns 

the ’508 patent, which is directed to an “ornamental design 

for the vehicle front skid bar” as shown below. 

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GM manufactures and sells automotive vehicles. LKQ 

sells automotive body repair parts for most mainstream vehicle models available, including front skid bars for vehicles manufactured by GM. GM and LKQ had previously 

been parties to a license agreement, under which LKQ was 

granted a license to many of GM’s design patents. The license agreement expired in February 2022 following a 

breakdown of renewal negotiations, after which GM sent 

letters to LKQ’s business partners alleging that the now 

unlicensed LKQ parts infringe its patents. 

LKQ petitioned for post-grant review of the ’508 patent, asserting that it was anticipated by the design of the 

2015 Changfeng Leopaard CS1020 (“Leopaard”) and would 

have been obvious over the Leopaard alone or in combination with the design of the 2012 Chevrolet Equinox (“Equinox”). The Board issued a final written decision concluding

that LKQ had not demonstrated by a preponderance of the 

evidence that the ’508 patent was anticipated or would 

have been obvious before the effective filing date. Decision, 

J.A. 1–65.

First, the Board determined that the ordinary observer 

would include both retail consumers who purchase replacement skid bars and commercial replacement part buyers. 

Decision, J.A. 14–16. In so doing, the Board emphasized 

that the “’508 design claims a ‘vehicle front skid bar,’ not a 

vehicle in total.” Decision, J.A. 15.

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Second, applying that understanding of the ordinary 

observer, the Board concluded that, although there were 

some similarities, the references produced depicting the 

Leopaard design did not show certain aspects of the 

claimed design (e.g., the bottom or the sides) and what was 

visible from the provided images created a different overall 

impression. Decision, J.A. 18, 42–61. Namely, the claimed 

features in the aggregate contributed to a “rugged, chiseled, three-dimensional overall appearance” that the 

Leopaard’s sloping design did not have. Decision, J.A. 57. 

The Board was ultimately not persuaded that an ordinary 

observer would be deceived into purchasing the Leopaard 

skid bar supposing it to be the claimed skid bar, finding no 

anticipation. 

Third, applying the tests established in Rosen and 

Durling, the Board found that LKQ failed to identify a sufficient primary reference, and therefore failed to prove obviousness by a preponderance of the evidence. Durling v. 

Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996); 

In re Rosen, 673 F.2d 388 (C.C.P.A. 1982); Decision, J.A. 

57–60. Because the Board found that the Leopaard did not 

qualify as a proper primary reference under Rosen, the 

Board did not turn to Durling step two and look beyond the 

Leopaard to the Equinox. Decision, J.A. 57–60. The Board 

further noted that even if the Leopaard could serve as a

sufficient primary reference, LKQ only proposed modifying 

the Leopaard skid bar “to have the vertical side edges” of 

the Equinox. As explained by the Board, because many 

other differences existed between the claimed design of the

’508 patent and the Leopaard, LKQ could not meet its burden to demonstrate obviousness of the claimed design. Decision, J.A. 57–60.

In summary, the Board concluded that LKQ had not 

demonstrated that the claimed design of the ’508 patent 

was anticipated or would have been obvious before the effective filing date. LKQ appealed. We have jurisdiction 

under 28 U.S.C. § 1295(a)(4)(A). 

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DISCUSSION

LKQ raises two main challenges on appeal. First, LKQ 

contends that the Board erred in finding that the ordinary 

observer would include only retail consumers who purchase replacement skid bars and commercial replacement 

part buyers, and, ultimately, in finding no anticipation. 

Second, LKQ contends that the Rosen and Durling tests on 

which the Board relied in its obviousness analysis have 

been implicitly overruled by the Supreme Court’s decision 

in KSR International Co. v. Telflex, Inc., 550 U.S. 398 

(2007). We address each argument in turn. 

We review the Board’s legal conclusions de novo and its 

factual findings for substantial evidence. Campbell Soup 

Co. v. Gamon Plus, Inc., 939 F.3d 1335, 1339 (Fed. Cir. 

2019). Anticipation is a question of fact reviewed for substantial evidence. Id.; Int’l Seaway Trading Corp. v. 

Walgreens Corp., 589 F.3d 1233, 1237 (Fed. Cir. 2009). The 

ultimate determination of obviousness is reviewed de novo, 

and any underlying factual findings are reviewed for substantial evidence. Campbell Soup Co. v. Gamon Plus, Inc., 

10 F.4th 1268, 1275 (Fed. Cir. 2021). Substantial evidence 

is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison 

Co. v. N.L.R.B., 305 U.S. 197, 229 (1938).

I 

We first consider LKQ’s challenge to the Board’s determination that LKQ failed to meet its burden to prove that 

the ’508 patent was anticipated by the Leopaard design. 

LKQ first argues that the Board erred in not finding that

original retail vehicle purchasers are the correct ordinary 

observer. LKQ notes that replacement parts are merely a 

downstream consequence of prior whole vehicle sales, that 

skid bars are not sold in the first instance as replacement 

products, and that replacement products make up a small 

subset of total skid bar sales. LKQ further asserts that 

that alleged error led the Board to place undue emphasis 

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on allegedly trivial differences between the claimed design 

of the ’508 patent and the Leopaard design that would not 

have mattered to the correct ordinary observer, and that 

the Board failed to properly compare the designs as a 

whole. 

GM responds that the Board correctly defined the ordinary observer. GM emphasizes that the ’508 patent is not 

directed to the design of a whole vehicle, but rather a design for a specific part of a vehicle. Therefore, GM argues 

that the ordinary observer must be the person who purchases that part or is otherwise sufficiently interested in 

that part, not necessarily the vehicle as a whole. GM further argues that, regardless of the ordinary observer, the 

Board’s holding that the claimed design of the ’508 patent 

is not anticipated by the Leopaard design was supported by 

substantial evidence. 

We agree with GM that the Board’s finding that the 

ordinary observer would include both retail consumers who 

purchase replacement skid bars and commercial replacement part buyers was supported by substantial evidence. 

Defining the ordinary observer is a fact-dependent inquiry. 

See Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 

501 F.3d 1314, 1323 (Fed. Cir. 2007) (abrogated on other 

grounds by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 

665 (Fed. Cir. 2008)). It is through the lens of the ordinary 

observer that the anticipation inquiry is viewed. Gorham 

Co. v. White, 81 U.S. 511, 528 (1871). The Board’s finding 

that the ordinary observer here includes repair professionals and vehicle owners purchasing replacement parts, and 

does not include retail vehicle purchasers, is well-grounded 

in the record. LKQ itself recognized that repair shop mechanics and auto parts store employees who order replacement parts may be ordinary observers of skid bars. J.A. 

195–96. And LKQ cannot disagree that there is a market 

for the claimed skid bar alone, given that its business is 

selling individual replacement parts. See Appellant Br. at 

1. That GM sells whole vehicles to retail consumers, rather 

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than skid bars to car manufacturers, is of no consequence. 

As the Board noted, the ordinary observer test requires 

consideration of the features visible in the “normal use” 

lifetime of the accused product, i.e., “from the completion of 

manufacture or assembly until the ultimate destruction, 

loss, or disappearance of the article.” Decision, J.A. 12 

(quoting Int’l Seaway, 589 F.3d at 1241). See also Contessa 

Food Prods. v. Conagra, Inc., 282 F.3d 1370, 1380 (Fed. Cir. 

2002) (“[T]he ‘ordinary observer’ analysis is not limited to 

those features visible during only one phase or portion of 

the normal use lifetime of an accused product.”). The “normal use” would thus include repair or replacement. 

Most notably, the claimed design of the ’508 patent is 

not the design of a whole vehicle, but rather a design of a 

specific part of a vehicle. J.A. 66–71. In Arminak and Keystone, we recognized that the ordinary observer can be the 

purchaser of a component part of a later-assembled product 

as opposed to the purchaser of the later-assembled product. 

Arminak, 501 F.3d at 1321–24; KeyStone Retaining Wall 

Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1451 (Fed. Cir. 

1993). The same is true here. In this case, substantial evidence supports the Board’s conclusion that the ordinary 

observer is a person who purchases that part or is otherwise sufficiently interested in that part, not the vehicle as 

a whole. See Egyptian Goddess, 543 F.3d at 665.

When determining whether a design patent is anticipated, we consider: 

[I]f, in the eye of an ordinary observer, giving such 

attention as a purchaser usually gives, two designs 

are substantially the same, if the resemblance is 

such as to deceive such an observer, inducing him 

to purchase one supposing it to be the other . . . . 

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Gorham, 81 U.S. at 528.1 Under this standard, substantial 

evidence supports the Board’s finding of no anticipation.

Most importantly, the references submitted by LKQ depicting the Leopaard design do not sufficiently show certain aspects of its design, e.g., the bottom or the sides, to 

enable comparison with the claimed design of the ’508 patent. As the Board found:

LKQ has not produced images of the Leopaard that 

would enable a persuasive comparison with corresponding views of the claimed invention. The evidence produced by LKQ related to the Leopaard 

simply fails to clearly show several claimed aspects 

of the design. . . . The exhibits do not show a sufficient bottom view to allow comparison and the exhibits also have obscured side views due to other 

trim features covering the outsides of the skid 

board.

Decision, J.A. 18. LKQ’s expert admits that these perspectives are obscured or not shown in the references they provided. J.A. 832 at 2:5, 13–17. This impedes a comparison 

of the claimed design to the reference by any ordinary observer and is alone sufficient to support a finding of no anticipation. It would be speculation to assume that the 

unshown features have certain characteristics that match 

the claimed invention. 

Additionally, given the evidence in the record, the 

Board concluded that the design claimed in the ’508 patent 

and the Leopaard design created different overall 

1 While the test articulated in Gorham was with regard to infringement, we have found “that the same tests 

must be applied to infringement and anticipation,” as to 

“prevent an inconsistency from developing between the infringement and anticipation analyses.” Int’l Seaway, 589 

F.3d at 1240.

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impressions. The Board pointed to several differences in 

the designs: (1) the front face, (2) the outwardly projecting 

top and side surfaces, (3) the size, shape, and positioning of 

the recesses, and (4) the curvature from side-to-side. Decision, J.A. 56–57. And LKQ’s claim that the Board failed to 

properly compare the designs as a whole is without merit. 

The Board clearly found the claimed design of the ’508 patent created a rugged, chiseled, durable, three-dimensional 

truck-like appearance, while the skid bar of the Leopaard 

had a softer, sloping appearance. Decision, J.A. 57. We 

agree and find the Board’s finding of no anticipation was

supported by substantial evidence. 

II

LKQ next argues that the Supreme Court’s decision in 

KSR implicitly overruled the long-standing Rosen and 

Durling tests for obviousness of design patents, and therefore the Board’s decision applying such tests must at least 

be vacated and remanded. For design patent obviousness, 

Durling outlines a two-step analysis. First, it must be determined whether a primary reference, also known as a 

Rosen reference, exists with characteristics “basically the 

same” as the claimed design by discerning the visual impression of the design as a whole. Durling, 101 F.3d at 103; 

Rosen, 673 F.2d at 390–91. Second, if a satisfactory primary reference exists, the court must consider whether an 

ordinary designer would have modified the primary reference to create a design with the same overall visual appearance as the claimed design. Id. This test safeguards 

against a challenger picking and choosing features from 

multiple references to create something entirely new, fundamentally changing the overall visual impression of the 

original designs. See In re Jennings, 182 F.2d 207, 208 

(C.C.P.A. 1950) (explaining that one must start with 

“something in existence -- not with something that might 

be brought into existence by selecting individual features 

from prior art and combining them”).

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While KSR does not address Rosen or Durling, LKQ argues that its holding implicates the test established in 

these cases. GM argues that LKQ has forfeited this argument by not raising it before the Board, and even if it were 

not forfeited, KSR does not overrule Rosen or Durling. 

A 

As a general proposition, a federal appellate court does 

not consider issues not raised before the lower tribunal. 

Singleton v. Wulff, 428 U.S. 106, 120 (1976). The exact 

phrasing of the argument need not have been used below 

“so long as it can be said that the tribunal was ‘fairly put 

on notice as to the substance of the issue.’” Nike Inc. v.

Adidas AG, 812 F.3d 1326, 1342 (Fed. Cir. 2016) (citing 

Consolidation Coal Co. v. United States, 351 F.3d 1374, 

1378 (Fed. Cir. 2003) (quoting Nelson v. Adams, 529 U.S. 

460, 469 (2000) (“But [issue preservation] does not demand 

the incantation of particular words; rather, it requires that 

the lower court be fairly put on notice as to the substance 

of the issue.”))).

But even if an issue was not presented below, there is 

no absolute bar to considering and deciding the issue on 

appeal, as forfeiture is a matter of discretion. Harris Corp. 

v. Ericsson Inc., 417 F.3d 1241, 1251 (Fed. Cir. 2005) (“An

appellate court retains case-by-case discretion over 

whether to apply waiver.”). In Icon Health and Fitness, 

Inc. v. Strava, Inc., we set forth some relevant considerations to guide the exercise of such discretion. 849 F.3d 

1034, 1040 (Fed. Cir. 2017) (citing Automated Merch. Sys., 

Inc. v. Lee, 783 F.3d 1376, 1379 (Fed. Cir. 2015)). These 

considerations include whether the issue involves a pure 

question of law and refusal to consider it would result in a 

miscarriage of justice, and whether the issue presents significant questions of general impact. Id. 

In this case, appellants argue that KSR, 550 U.S. 398, 

overrules this court’s long-standing precedents, Rosen, 673 

F.2d 388, and Durling, 101 F.2d 100, which outline the test 

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for determining design patent obviousness. In their petition to the Board, the appellants raised their KSR argument in the following manner:

As a final matter, the Federal Circuit has, to date, 

been silent regarding whether the Supreme Court’s 

opinion in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 

398 (2007), governs design patent obviousness, 

other than to say that it was “not obvious that the 

Supreme Court necessarily intended to exclude design patents from the reach of KSR.” Titan Tire 

Corp. v. Case New Holland, Inc., 566 F.3d 1372, 

1384–85 (Fed. Cir. 2009).2 In a design patent obviousness analysis, to modify a primary reference, a 

secondary reference must 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.” Titan 

Tire, 566 F.3d at 1381 (quoting Durling, 101 F.3d 

at 103). To the extent that the “so related” test operates to unduly limit the scope of design patent 

obviousness, such an overly restrictive view would 

run afoul of KSR’s proscription against rigid restrictions on the scope of an obviousness analysis. 

J.A. 186–87.

We consider that this assertion in the petition is sufficient to preserve the argument that LKQ seeks to make, 

that KSR overrules our current test for design patent 

2 In KSR, the Supreme Court rejected the “rigid, 

mandatory formula” embodied in the Federal Circuit’s 

then-prevailing “teaching suggestion motivation” requirement as improperly limiting the obviousness inquiry and, 

instead, prescribed a more flexible approach to obviousness 

and motivation to combine prior art teachings. KSR, 550 

U.S. at 420–22.

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obviousness. While not extensive, LKQ’s argument enunciates concern that the applied obviousness test was 

“overly restrictive” in light of KSR, which is the heart of its 

argument on appeal. To be sure, LKQ could have made its 

argument in depth. However, such arguments would have 

been to an unreceptive audience, as the Board already had 

heard and rejected the argument. See, e.g., Johns Manville 

Corp. v. Knauf Insulation, Inc., IPR2015-1453, 2017 Pat. 

App. LEXIS 3419 at *63-64 (P.T.A.B. Jan. 11, 2017) (concluding that there was no suggestion that KSR is “germane 

to an obviousness determination in design patents, or has 

any effect upon the relevance of the Durling analysis,” and 

that, regardless, the “basically the same test” is consistent 

with KSR). 

Further, this challenge to Rosen and Durling is a pure 

question of law that undoubtedly presents a significant 

question of general impact, favoring the exercise of our discretion to hear and decide this issue. See Icon Health, 849 

F.3d at 1040. Moreover, we may decide to apply the correct 

law even if the parties did not argue it, so long as the issue 

is properly before the court. Forshey v. Principi, 284 F.3d 

1335, 1356–57 (Fed. Cir. 2002) (en banc) (superseded by 

statute on other grounds, Flores v. Nicholson, 476 F.3d 

1379, 1381 (Fed. Cir. 2006)). Given the aforementioned 

considerations and in our discretion, we decline to find 

LKQ’s KSR argument forfeited. 

B 

Appellant argues that the Supreme Court, in reviewing 

Teleflex, Inc. v. KSR Int’l Co., 119 Fed. Appx. 282 (Fed. Cir. 

2005), overruled Rosen and Durling. The Court stated, 

“[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation . . . .” KSR, 550 U.S. at 419. The Court did note 

that the teaching, suggestion, and motivation test “captured a helpful insight,” but it found it overly “rigid.” Id. 

at 418. However, KSR did not involve or discuss design 

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patents, which is the type of patent we have here before us 

and that was addressed by Rosen and Durling. 

And we note that in the more than fifteen years since 

KSR was decided, this court has decided over fifty design 

patent appeals. In these appeals, this court has continually applied Rosen and Durling just as it had in the decades 

preceding. Notably, the correctness of our current law in 

light of KSR was raised in only two of those over fifty appeals, only tangentially, and not addressed in our decisions 

in those two cases. This challenge is therefore an outlier. 

We, as a panel, cannot overrule Rosen or Durling without a clear directive from the Supreme Court. Deckers 

Corp. v. United States, 752 F.3d 949, 965 (Fed. Cir. 2016) 

(explaining panels are “bound by prior panel decisions until 

they are overruled by the court en banc or the Supreme 

Court”). See also California Inst. Of Tech. v. Broadcom 

Ltd., 25 F.4th 976, 990–91 (Fed. Cir. 2022) (explaining the 

panel only had authority to overrule circuit precedent without en banc action given the Supreme Court’s reasoning 

undermining said circuit precedent). As explained above, it 

is not clear the Supreme Court has overruled Rosen or 

Durling. The panel is therefore bound to apply existing law 

to this appeal. 

C 

Finally, applying existing law, we affirm the Board’s 

non-obviousness determination, and conclude that its factual findings are supported by substantial evidence. 

Our above discussion of the differences between the 

Leopaard design and the claimed design of the ’508 patent 

applies equally here. Although the tests for anticipation 

and obviousness of design patents are viewed through different lenses—the ordinary observer and ordinary designer, respectively—we, like the Board, acknowledge the 

relevance of the findings of one to the other. See In re Nalbandian, 661 F.2d 1214, 1217 (C.C.P.A. 1981) (discussing 

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the “ordinary observer” and “ordinary designer” tests); Decision, J.A. 57–59 (citing LKQ Corp., PGR2020-00055, Ex. 

2004, ¶ 86).

In sum, LKQ failed to show that the Leopaard creates 

“basically the same” visual impression as the claimed design. Durling, 101 F.3d at 103; Rosen, 673 F.2d at 390–91. 

The Board found several differences between the claimed 

design and Leopaard, including (1) the front face, (2) the 

outwardly projecting top and side surfaces, (3) the size, 

shape, and positioning of the recesses, and (4) the curvature from side-to-side. Decision, J.A. 56–57. The Board 

found that these “differences in the aggregate create an 

overall ornamental design that is not basically the same 

between the claimed design of the ’508 patent and the 

Leopaard.” Id. at 58. For example, the “features of the 

claimed design that are missing from the Leopaard are significant in the aggregate, and contribute to its rugged, chiseled, three-dimensional overall appearance that contrasts 

with the Leopaard’s appearance dominated by a rearward 

sloping lower surface and relatively shallow recesses.” Id. 

at 57. In reaching these determinations, the Board credited the testimony of GM’s witnesses. Id. We cannot find 

that the Board erred in valuing certain testimony over others. In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002) 

(where “two different, inconsistent conclusions may reasonably be drawn from the evidence in record, an agency’s 

decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for 

substantial evidence”). The Board’s finding that Leopaard 

did not create “basically the same” visual impression as 

created by the claimed design is therefore supported by 

substantial evidence. 

Further, as discussed in Section I, the references provided by LKQ depicting the Leopaard did not show all the 

features necessary for comparison (e.g., the bottom or 

sides). Decision, J.A. 18, 58–60. As the Board noted, “There 

are simply too many aspects of the claimed design that are 

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not adequately disclosed by the images of the [Leopaard].” 

Id. at 60. This amounts to a failure of proof. We therefore 

affirm the Board’s conclusion that LKQ did not show that 

the ’508 patent would have been obvious over the cited references. 

CONCLUSION

We have considered LKQ’s remaining arguments but

find them unpersuasive. For the foregoing reasons, the decision of the Board is affirmed. 

AFFIRMED

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NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

LKQ CORPORATION, KEYSTONE AUTOMOTIVE 

INDUSTRIES, INC.,

Appellants

v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC,

Appellee

______________________ 

2022-1253

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. PGR2020-

00055.

______________________ 

LOURIE, Circuit Judge, additional views. 

The panel resolves this case by determining that substantial evidence supports the Board’s conclusion that the 

claims of the ’508 patent are not unpatentable as anticipated or obvious. I agree. I write separately to respond to 

the assertion by appellant that the Board improperly relied 

on our predecessor court’s Rosen decision for its rationale 

in deciding its case. Appellant argues that Rosen, whatever its validity at the time it was decided, is inconsistent 

with, and hence was implicitly overruled, by the Supreme 

Court in KSR. The panel resolves the case without having 

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to reach this issue, but I comment separately on the argument appellant raises, but which we do not reach. 

Rosen was decided by the Court of Customs and Patent 

Appeals in 1982, sitting with its usual en banc panel of 

Judges Markey, Rich, Baldwin, Miller, and Nies, hardly a 

group unversed in patent law. Rosen, in reversing the Patent Office’s Board of Appeals, stated that “there must be a 

reference, a something in existence, the design characteristics of which are basically the same as the claimed design 

in order to support a holding of obviousness.” In re Rosen, 

673 F.2d 388, 391 (C.C.P.A. 1982) (citing In re Jennings, 

182 F.2d 207, 208 (C.C.P.A. 1950)). 

Appellant argues that the Supreme Court in reviewing 

Teleflex, Inc. v. KSR Int’l Co., 119 Fed. Appx. 282 (Fed. Cir. 

2005), a non-precedential decision of ours that recited almost as boilerplate the longstanding requirement that, in 

evaluating a combination of references asserted to render 

a claimed invention obvious, there must be some teaching, 

suggestion, or motivation shown in the prior art to combine 

the references, overruled Rosen. The Court stated, “[t]he 

obviousness analysis cannot be confined by a formalistic 

conception of the words teaching, suggestion, and motivation . . . .” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 

(2007). The Court did note that the teaching, suggestion, 

and motivation test “captured a helpful insight,” but it 

found it overly “rigid.” Id. at 418. That essentially is the 

broad concept that appellant now asserts has overruled an 

almost forty-year-old design patent decision that this court 

has been bound to follow and has continued to follow in the 

decade since KSR was decided. 

I disagree. First, KSR did not involve design patents, 

which is the type of patent we have here before us. Utility 

patents and design patents are distinct types of patents. 

Utility patents protect processes, machines, manufactures, 

compositions of matter, and improvements thereof. But 

their inventions must be “useful.” 35 U.S.C. § 101. A design 

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patent protects ornamentation, the way an article looks, 35 

U.S.C. § 171. See M.P.E.P. § 1502.01. Claims and claim 

construction in design patents are thus quite different compared with utility patents. See Richardson v. Stanley 

Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010) (questioning how “a court could effectively construe design claims, 

where necessary, in a way other than by describing the features shown in the drawings.”); Egyptian Goddess, Inc. v. 

Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) 

(citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)) (finding 

that a design is better represented by an illustration than 

a description). 

While 35 U.S.C. § 103, which deals with obviousness, 

does not differentiate between types of inventions, and 

hence applies to all types of patents, the considerations involved in determining obviousness are different in design 

patents. Obviousness of utility patents requires considerations such as unexpected properties, utility, and function. 

Design patents, on the other hand, relate to considerations 

such as the overall appearance, visual impressions, artistry, and style of ornamental subject matter. Ornament is 

in the eyes of the beholder. Functional utility is objective. 

What is the utility or function of something that is ornamental? To be sure, it may also be functional and have 

use, as do the skid bars in the case before us, but that function is beside the point when considering whether its ornamental features would have been obvious. And what is an 

unexpected property in the context of design patents, for it 

must be related to ornament, as function is not to be considered in evaluating obviousness of a design? 

Obviousness of an ornamental design thus requires different considerations from those of a utility invention. 

KSR did not address any of these considerations, and it did 

not even mention design patents. Surely, it did not intend 

to speak to obviousness of designs, and what was said 

about a test long applied to utility inventions was not 

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indicated to apply to design patents. It cannot reasonably 

be held to have overruled a precedent of one of our predecessor courts involving a type of patent it never mentioned.

A comprehensive review of obviousness in design patents, Overcoming the “Impossible Issue” of Nonobviousness in Design Patents, supports the view that “KSR has 

very limited, if any, applicability to design patents.” Janice 

M. Mueller and Daniel Harris Brean, 99 KY. L. J., 419, 518 

(2011). It further states that, “[m]ost of the KSR Court’s 

discussion is completely irrelevant to what design patents 

protect.” Id. It notes that “[t]he subject matter of a design 

patent is fundamentally different from a utility patent, as 

evidenced by the separate statutory provisions that define 

the eligible subject matter of each type of patent.” Id. “Indeed, a patented design ‘need not have any practical utility,’ the antithesis of a utility invention.” Id. 

Second, while Rosen may have overstated its point in 

adding to the quoted Jennings language such as that the 

primary reference must have design characteristics that 

are “basically the same” as those of the claimed design, this 

statement hardly reflects the rigidity the Court was condemning in KSR. 673 F.2d at 391. 

And finally, Rosen was not essentially incorrect. In any 

obviousness analysis, the question is whether the claimed 

invention was obvious, but obvious over what. One has to 

start from somewhere. See K/S Himpp v. Hear-Wear 

Techs., 751 F.3d 1362, 1366 (Fed. Cir. 2014) (finding that 

an examiner may not rely on his common knowledge without a supporting prior art reference) (citing M.P.E.P. 

§ 2144.03). 

In any event, whether Rosen was right or wrong, or 

over-simplified, the Supreme Court, in KSR, reviewing a 

decision involving a utility patent, did not address the basic 

concept of beginning an obviousness analysis in design patents by looking for a “something in existence.” And, especially, it did not overrule Rosen. 

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NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

LKQ CORPORATION, KEYSTONE AUTOMOTIVE 

INDUSTRIES, INC.,

Appellants

v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC,

Appellee

______________________ 

2022-1253

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. PGR2020-

00055.

______________________ 

STARK, Circuit Judge, concurring in part and concurring in 

judgment.

I agree with the majority’s conclusion that the Board 

had substantial evidence to conclude LKQ failed to show 

that the ’508 patent was anticipated or would have been 

obvious. Accordingly, I join the majority’s anticipation 

analysis and most of its obviousness analysis. However, for 

the reasons I set forth fully in LKQ Corp., Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLC, No. 21-2348 (Fed. Cir. Jan. 20, 2022), I 

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respectfully decline to join parts II.A and II.B of the majority’s opinion.

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