Federal Circuit Overrules Decades of Design Patent Precedent: A Landmark Shift in LKQ v. GM

Introduction

The Federal Circuit’s May 21, 2024 en banc decision in LKQ Corporation v. GM Global Technology Operations LLC has dramatically changed the legal framework for evaluating the obviousness of design patents. By overturning the long-standing Rosen-Durling test, the court aligned the obviousness standard for design patents with the flexible approach established for utility patents in the Supreme Court’s KSR International Co. v. Teleflex Inc. decision.

This landmark ruling is expected to have significant implications for patent holders, challengers, and innovators across industries, introducing both opportunities and challenges for protecting design innovations.

Case Background: What Was at Stake?

The dispute centered on GM's design patent for the front fender of its Chevrolet Equinox (2018–2020 model years). LKQ Corporation filed for an inter partes review (IPR), arguing that the patent was invalid due to obviousness. The Federal Circuit took this opportunity to revisit the standard for design patent obviousness, scrutinizing the long-standing Rosen-Durling test, which had governed design patents for decades.

The Rosen-Durling Test: A Legacy Overturned

Previously, the Rosen-Durling test required a rigid, two-step process to determine obviousness:

• Identifying a Primary Reference: A design in the prior art must be “basically the same” as the claimed design.

• Combining References: If a primary reference existed, secondary references could be used to show obviousness, but only if they were “so related” to the primary reference that they would suggest the design.

Critics of this test argued that it imposed unnecessary hurdles, making it harder to invalidate design patents even when clear similarities existed in prior art. The Federal Circuit agreed, finding the Rosen-Durling framework “improperly rigid” and inconsistent with modern patent law principles established under 35 U.S.C. § 103.

The New Standard: Applying the Graham Factors

In its decision, the Federal Circuit directed courts to apply the Graham factors, traditionally used for utility patents, to assess design patent obviousness. These factors include:

• Scope and Content of Prior Art

  • Courts must evaluate prior designs, considering whether the prior art comes from the same field or addresses similar problems.

• Differences Between the Prior Art and Claimed Design

  • Courts will compare visual distinctions from the perspective of an ordinary designer, without the strict similarity requirement of Rosen-Durling.

• Level of Skill in the Art

  • The design must not be obvious to an ordinary designer with expertise in the relevant field.

• Secondary Considerations

  • Evidence such as commercial success, industry praise, or copying may demonstrate non-obviousness.

By introducing this flexible framework, the Federal Circuit aims to align design patent law with broader principles of obviousness while allowing courts greater discretion in case-by-case analysis.

What This Means for Design Patent Holders

1. Increased Challenges to Design Patents

The new standard may lower the threshold for obviousness, making it easier for challengers to invalidate design patents.

2. Greater Burden on Patent Applications

Applicants will need to present more robust arguments for non-obviousness, including detailed evidence of prior art distinctions and secondary considerations.

3. Industry-Specific Impacts

Industries reliant on design patents—such as automotive, fashion, consumer products, and technology—may face heightened scrutiny and increased litigation.

Navigating Uncertainty in Puerto Rico and the Federal Spectrum

For businesses in Puerto Rico, and other states in the US., this decision underscores the importance of proactive intellectual property strategies. MZLS assists businesses across sectors with securing and defending design patents, ensuring compliance with the evolving legal landscape.

How MZLS Can Help

At MZLS, we offer comprehensive legal support for businesses navigating the complexities of design and utility patent law. Our services include:

• Patent Application Preparation: Strengthening applications with robust prior art analysis and evidence of non-obviousness.

• Patent Litigation: Representing clients in disputes over patent validity and enforcement.

• Strategic Intellectual Property Management: Helping businesses protect and leverage design innovations in competitive markets.

Whether you’re filing a new design patent or defending an existing one, our experienced attorneys are equipped to guide you through this changing landscape.

Contact Us Today

The Federal Circuit’s decision in LKQ v. GM introduces significant challenges and opportunities for patent holders. Contact MZLS to schedule a consultation and learn how we can help safeguard your intellectual property while adapting to this evolving legal standard.