Looks can be deceiving: the first denial of a design patent IPR petition since LKQ

This August saw the first denial of an inter partes review petition for a design patent at the Patent Trial and Appeal Board (PTAB) since the Federal Circuit’s en banc decision in LKQ Corporation v. GM Global Technology Operations LLC.

In Next Step Group, Inc. v. Deckers Outdoor Corporation (IPR2024-00525), the PTAB denied the petitioner’s request for an inter partes review of US Patent No. D927,161, which claims the ornamental design for a footwear upper. This denial highlighted two significant issues:

1. The importance of addressing all differences in the overall visual appearance of a claimed design and prior art under LKQ
2. The need to provide sufficient evidence to show that the content of an online web page was publicly available when qualifying the web page as a printed publication. 

The Federal Circuit’s decision in LKQ overturned the long-standing Rosen-Durling obviousness test for design patents — that a primary reference be “basically the same” and that any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other — as improperly rigid. After LKQ, the analysis for design patent obviousness more closely follows the Graham factors used for utility patent obviousness. The first factor ­— scope and content of the prior art — requires the identification of a primary reference already in existence. As long as this reference is analogous art, it does not need to be “basically the same” as the claimed design. The second factor, which the PTAB primarily focused on in IPR2024-00525, requires identifying and comparing differences between the visual appearances of the claimed design and primary reference. This comparison must be done from the perspective of an ordinary designer in the field of the claimed design determined in the third factor. Lastly, under the fourth factor, any secondary considerations may be considered if presented.

In its petition, the petitioner identified three primary references and asserted eight grounds of unpatentability under 35 USC § 103. The petitioner acknowledged that there were some differences in size and proportion between the claimed design and each respective primary reference. However, the PTAB found the petitioner failed to sufficiently compare the overall visual appearance of the claimed design with the prior art designs from the perspective of an ordinary designer. The PTAB noted the petitioner did not address various differences—including the size ratio of different features on the footwear and the angle and curvature of features on the footwear. The PTAB ultimately concluded the failure to address these differences was a failure to sufficiently compare the overall visual appearance of the claimed design and the prior art under LKQ.

Separately, the PTAB found that copies of multiple online web pages selling footwear cited as the petitioner’s prior art did not qualify as printed publications for the purposes of an inter partes review. To qualify as a printed publication a reference must be made accessible to the public before the patent’s filing date. For art found on a web page, a petitioner must provide sufficient evidence that the content (e.g., images) on the web page was available before the patent’s filing date. The mere presence of a date on the web page (e.g., a date that a product was allegedly “first available” on the web page) is likely not enough. In its decision, the PTAB discussed that selling or showing products online is dynamic, with web pages often being updated or changed. This makes proof, such as an internet archive capture, which conclusively shows exactly what was available on the web page before the patent’s filing date necessary to qualify the content of the web page as a printed publication.  

As the PTAB and other judges continue to grapple with the aftermath of LKQ, it is important to follow how the Graham factors are analyzed and applied to design patents. The PTAB’s decision in IPR2024-00525 highlights the importance of addressing all differences between the overall appearance of a claimed design and prior art references under an LKQ obviousness challenge. Further, as internet prior art (e.g., online storefront web pages) becomes increasingly available as potential prior art, this decision highlights the importance of properly qualifying the content of an online web page as a printed publication available before a patent’s filing date.

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