Design patents can be valuable tools for companies that sell physical products. They can protect the ornamental appearance of a product, including shapes, contours, configurations, and visual design features that help distinguish the product in the marketplace.
For product companies, hardware companies, consumer goods brands, and manufacturers, design patents can be especially useful when competitors copy the look of a product without necessarily copying its internal mechanics.
But the law of design patent obviousness changed significantly after the Federal Circuit’s en banc decision in LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024).
What Was the LKQ Case About?
The case involved U.S. Design Patent No. D797,625, owned by GM, which claimed a vehicle front fender design used in the 2018–2020 Chevrolet Equinox.
LKQ challenged the design patent in an inter partes review, arguing that the claimed design was invalid based on prior art. LKQ relied on U.S. Design Patent No. D773,340, known as the Lian reference, and a 2010 Hyundai Tucson promotional brochure.
The Patent Trial and Appeal Board found that Lian did not anticipate GM’s design and also rejected LKQ’s obviousness challenge under the then-existing Rosen-Durling framework. The Federal Circuit panel affirmed, but noted tension between that framework and the Supreme Court’s more flexible approach to obviousness in KSR International Co. v. Teleflex Inc.
The full Federal Circuit then took the case en banc.
The Federal Circuit Changed the Obviousness Test for Design Patents
Before LKQ, design patent obviousness was governed by the Rosen-Durling test. Under that test, a challenger generally had to identify a primary prior art reference that was “basically the same” as the claimed design. Secondary references also had to be “so related” to the primary reference that features from one would suggest application to the other.
The en banc Federal Circuit rejected that rigid approach.
The court held that the “basically the same” and “so related” requirements were too strict and inconsistent with the flexible obviousness standard under 35 U.S.C. § 103. The court explained that design patent obviousness should instead be analyzed under the more flexible Graham v. John Deere framework, consistent with the Supreme Court’s rejection of rigid obviousness tests in KSR.
That does not mean every design patent is now easy to invalidate. But it does mean challengers no longer need to satisfy the same rigid threshold requirements that previously made design patent obviousness harder to prove.
What Changed Practically?
After LKQ, prior art no longer needs to be “basically the same” as the claimed design before it can be considered as a primary reference. Similarly, secondary references are no longer excluded simply because they are not “so related” under the old test.
Instead, the analysis is more flexible. The factfinder may consider whether the prior art is analogous, what an ordinary designer would have understood, and whether there would have been a reason to modify or combine prior art designs.
In the LKQ case itself, the Federal Circuit remanded the obviousness issue to the PTAB. The Board was instructed to apply the new Graham-based framework and consider whether GM’s fender design would have been obvious based on the Lian design alone or based on Lian in combination with the Hyundai Tucson brochure.
Why This Matters for Product Companies
For companies that rely on product design, LKQ is important for both patent protection and competitive risk.
On the protection side, companies should be more thoughtful when filing design patent applications. A strong design patent strategy may include multiple design filings that cover different product views, embodiments, and commercially important variations. If the obviousness analysis is now more flexible, then it may be even more important to capture the distinctive visual features that make the product design stand out.
On the enforcement side, design patent owners should expect accused infringers to rely more heavily on obviousness arguments. A competitor may argue that the claimed design is only a predictable variation or combination of prior designs. That does not mean the competitor will win, but the argument may be easier to make after LKQ than it was under the old Rosen-Durling framework.
On the clearance side, product companies should also take prior art more seriously before launching a new design. A company developing a physical product should consider whether similar designs already exist, whether the visual differences are meaningful, and whether a competitor may have enforceable design patent rights.
Design Patents Are Still Valuable
The LKQ decision should not be read as eliminating the value of design patents. Design patents can still be powerful, especially when they protect visually distinctive product features that matter to consumers.
But the decision does change the risk analysis.
Design patents should be drafted and filed with care. Companies should think about which design features are truly ornamental, which features distinguish the product from prior designs, and whether multiple design applications may provide stronger coverage than a single filing.
For many product companies, design patents remain an important part of a broader intellectual property strategy that may also include utility patents, trademarks, trade dress, copyrights, and trade secrets.
Practical Takeaway
After LKQ v. GM, design patent obviousness is more flexible and less dependent on rigid prior-art thresholds. That creates new opportunities for challengers, but it also gives product companies a clearer reason to build stronger design patent portfolios from the start.
If the look of a product matters to customers, the company should consider protecting that design early, documenting the design process, reviewing prior designs, and filing design patent applications that focus on the features that make the product visually distinctive.
Design patents are still alive. But after LKQ, product companies should treat design patent strategy as more than a simple filing exercise.
