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LKQ v. GM: Design Patent Obviousness, Reset

Federal Circuit, en banc, decided 21 May 2024. Read from the opinion; quotations verified against the court's text.

Holding

On May 21, 2024 the Federal Circuit, sitting en banc, overruled the Rosen-Durling test for design patent obviousness, discarding the requirements that a primary reference be "basically the same" as the challenged design and that secondary references be "so related" to the primary one, in favor of the more flexible approach the Supreme Court applies to utility patents.

For decades a design patent was hard to invalidate for obviousness, because a challenger first had to find a single prior design that was "basically the same" as the patented one. If no such reference existed, the analysis stopped there.

Sitting en banc, the Federal Circuit threw that requirement out, along with the companion rule limiting which secondary references could be combined, and applied the Graham factors used for utility patents.

A primary reference is still required and must still be analogous art. What changed is that visual similarity now sets how hard a challenge will be rather than whether it may proceed at all.

Judge Lourie concurred in the judgment and would have softened the old test rather than overruling it.

This cuts both ways, and our readers are on both sides. The headline is that design patents became easier to challenge. That is accurate and incomplete: your own design patents became easier to challenge by the same amount. A company that files design patents on its product and a company worried about a competitor's design patent are reading the same decision, and it moved the ground under both of them.

What This Case Is Not

It does not make anyone's design patent invalid. Obviousness is a fact-bound legal determination made on a record. This page describes what the replacement framework requires, not how it comes out on any particular design, including the one at issue in this case.
  • It does not hold that design patents are no longer worth obtaining.
  • It does not remove the primary-reference requirement, and the primary reference must still be analogous art.
  • It does not tell you whether a competitor's design patent is vulnerable, or whether yours is.

Educational, not legal advice. Consult a qualified patent attorney about a specific design patent, on either side of it.

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