USA – GEORGIA Trends and Developments Contributed by: John L. Lyon, Thomas Horstemeyer, LLP
to invalidate design patents filed on subsequent ver- sions of the product. Georgia’s federal courts, including the Northern District of Georgia, increasingly hear sophisticated intellectual property disputes involving national and international parties. Judges in these courts are now applying LKQ in real time, often in cases filed before the Federal Circuit issued its decision. Outcomes will depend heavily on expert testimony, disciplined appli- cation of the Graham factors, and persuasive visual evidence contextualising the claimed design within the prior art landscape. For litigators, early case assessment and evidentiary strategy have taken on renewed importance, as valid- ity questions may determine outcomes long before infringement is fully adjudicated. Damages and the enduring power of design patents Despite doctrinal upheaval in the validity arena, dam- ages law remains unchanged. Design patent owners may still seek recovery of an infringer’s total profit under 35 U.S.C. § 289, a remedy unavailable in utility patent cases. This statutory feature continues to give design patents outsized leverage, particularly in disputes involving high-volume consumer products. For Georgia-based manufacturers and retailers, the risk profile remains asymmetric: even a narrow design patent can cre- ate substantial exposure if infringement is found. Likewise, even a narrow design patent can provide outsized protection for Georgia-based companies, which may make them more attractive to small and medium-sized businesses compared to utility patents.
As a result, damages strategy now proceeds hand in hand with validity defence, with accused infring- ers seeking to narrow the scope of the “article of manufacture” and limit profit attribution, while rights- holders emphasise the commercial centrality of the claimed design. Industry-specific consequences for Georgia Georgia’s automotive and mobility sectors face heightened scrutiny of design patents covering exte- rior components and replacement parts – an area historically rife with dispute. Consumer brands and retailers headquartered in the state must co-ordinate design patent protection with trade mark and trade dress strategies to hedge against increased obvious- ness challenges. Meanwhile, Atlanta’s technology ecosystem continues to invest heavily in user interface and user experience design. GUI-centric design patents remain viable, but incremental visual distinctions may receive closer scrutiny under the Graham framework, reinforcing the need for careful claiming and layered IP protection. Looking ahead LKQ v GM did not render design patents less valuable, but it did end an era of relative certainty. In its place is a more flexible, and less predictable, analytical frame- work – one that rewards careful drafting, thoughtful portfolio architecture, and litigation-ready analysis. For Georgia innovators and practitioners, success in this new landscape will belong to those who adapt quickly, audit existing portfolios critically, and treat design patents not as easy wins, but as sophisticated legal assets requiring strategic care.
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