USA – GEORGIA Trends and Developments Contributed by: John L. Lyon, Thomas Horstemeyer, LLP
Design Patent Law After LKQ v GM: Unsettled Expectations and Strategic Consequences for Georgia From quiet certainty to doctrinal flux For decades, US design patent law was regarded as one of the more stable corners of intellectual property doctrine. Practitioners understood the rules, examin- ers followed a predictable framework, and rights hold- ers took comfort in a relatively high allowance rate and an even higher threshold for invalidation. However, that equilibrium has been disrupted by a 2024 case that continues to make waves today. The Federal Circuit’s 2024 en banc decision i n LKQ Corporation v GM Global Technology Operations , LLC , 102, F.4th 1280 (Fed. Cir. 2024) marked the most sig- nificant doctrinal shift in US design patent law in half a century. The decision abandoned the long-standing Rosen–Durling test for obviousness and replaced it with the Graham factors that are traditionally applied to utility patents. As a result, the court fundamentally altered how design patents are evaluated – both dur- ing prosecution and in post-grant challenges. While the intent of LKQ was clarity, it instead ush- ered in a period of legal and commercial uncertainty, raising difficult questions about the strength of exist- ing design patent portfolios, the durability of settled expectations, and how courts and the United States Patent and Trademark Office (USPTO) will apply the new standard in practice. The end of Rosen–Durling and a recalibrated obviousness standard For nearly fifty years, obviousness in design patent law was governed by the framework articulated in In re Rosen , 673 F.2d 388 (C.C.P.A. 1982) and refined in Durling v Spectrum Furniture , 101 F.3d 100 (Fed. Cir. 1996). Under that regime, a challenger was first required to identify a single prior art reference that was “basically the same” as the claimed design. Only if that threshold was met could additional references be consulted, and even then, only if they were “so related” that their features would naturally suggest combination. In practice, this test imposed a formidable barrier to invalidation. The conceptual distance between “the
same” and “basically the same” was narrow and accused infringers frequently lost invalidity arguments based on obviousness at the outset. The result was a design patent system known for high allowance rates and comparatively strong post grant resilience. In LKQ , the Federal Circuit concluded that this rigid- ity was incompatible with the text of 35 U.S.C. § 103 and Supreme Court precedent emphasising flexibility in the obviousness analysis. Sitting en banc, the court expressly overruled the Rosen–Durling framework and adopted the “Graham factors” laid out in Graham v John Deere Co . of Kansas City , 383 US 1 (1966); fac- tors for assessing utility patent obviousness as being the correct approach for evaluating design patent obviousness. Using the Graham factors, decision-makers must con- sider: • the scope and content of the prior art; • differences between the prior art and the claimed design; • the level of ordinary skill of a designer in the rel- evant field; and • secondary considerations such as commercial suc- cess, copying, and industry praise. The inquiry is holistic rather than sequential, and it allows for broader combinations of prior art to support an obviousness rejection when supported by sound reasoning. Importantly, the court did not hold that the design pat- ent at issue in LKQ was obvious. Instead, it remanded the case back to the Patent Trial and Appeal Board (PTAB) of the USPTO for further consideration under the new standard. The doctrinal shift, however, took immediate effect, applying not only to future design patent applications but also to granted patents whose validity is later contested. The USPTO responded to LKQ with unusual speed. Within a day of the decision, the Office issued updated guidance instructing examiners to assess design pat- ent obviousness using the Graham framework rather than Rosen–Durling. Examination practice changed overnight.
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