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, examiners followed a predictable framework, and rights holders 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 in LKQ Corporation v GM Global Technology Operations, LLC, 102, F.4th 1280 (Fed. Cir. 2024) marked the most significant 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 during prosecution and in post-grant challenges.

While the intent of LKQ was clarity, it instead ushered in a period of legal and commercial uncertainty, raising difficult questions about the strength of existing 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 rigidity 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); factors for assessing utility patent obviousness as being the correct approach for evaluating design patent obviousness.

Using the Graham factors, decision-makers must consider:

• 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 relevant field; and
• secondary considerations such as commercial success, 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 patent 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 patent obviousness using the Graham framework rather than Rosen–Durling. Examination practice changed overnight.

Impacts for Georgia

For practitioners prosecuting design patents on behalf of Georgia-based companies, the shift has been palpable. Atlanta’s emergence as a national design and innovation hub has only heightened the importance of design-centric intellectual property protection. The state’s economy is anchored by industries in which product appearance is commercially decisive, including automotive manufacturing and aftermarket parts, consumer goods and packaging, logistics-driven retail, medical devices, and a fast-growing technology sector increasingly defined by user experience and interface design.

Obviousness rejections now frequently rely on multiple references combined under a broader rationale. Examiners are less constrained by the need to anchor their analysis to a single primary reference and more inclined to articulate reasoned combinations drawn from a wider visual field.

However, despite early predictions of a dramatic decline in design patent allowance rates, empirical data to date suggests that approvals remain relatively strong. What has changed, however, is predictability. Applicants and rights-holders increasingly recognise that the real impact of LKQ may emerge not at the examination stage, but in downstream validity challenges.

As the law evolves, Georgia-based companies and practitioners find themselves navigating a transitional moment – one in which design patents remain powerful assets but no longer enjoy the doctrinal insulation they once did.

Unsettled expectations and retroactive risk

If LKQ destabilised the future of design patent obviousness, subsequent developments have cast doubt on the security of the past.

Historically, courts and the Office have been reluctant to invalidate granted patents. Courts require that accused infringers provide “clear and convincing” evidence that the USPTO erroneously granted the patent by either failing to consider particular prior art references or by incorrectly analysing the prior art references that were considered. More recently, the USPTO has adopted a “settled expectations” doctrine to deny the institution of post-grant proceedings where significant time has passed since the grant of the patent. This restraint has weakened in the wake of LKQ.

For example, in Top Glory Trading Group Inc. v Cole Haan LLC, IPR2025-01395 (January 12, 2026), the USPTO Director instituted inter partes review proceedings against a design patent issued more than a decade earlier. The decision expressly cited LKQ as a sufficient intervening change in law to justify reconsidering whether the design patent at issue was obvious in view of the prior art. The decision signalled that design patents examined and granted under the Rosen–Durling framework may now be vulnerable to renewed challenge.

For Georgia companies with mature design portfolios – particularly in automotive, consumer goods, and manufacturing sectors – the implications are significant. Portfolio age is no longer a reliable proxy for safety. Older design patents may now face validity challenges based on expanded prior art combinations that previously would have been impermissible.

This prospect has prompted many rights-holders to reassess portfolio strength proactively. For example, design patent owners may review their most important design patents to identify potential vulnerabilities before they are tested in litigation or administrative proceedings.

Litigation implications in Georgia

Notably, LKQ did not alter the infringement analysis for design patents. Courts continue to apply the ordinary observer test, asking whether an ordinary observer familiar with the prior art would find the accused design substantially the same as the patented design.

Validity, however, has become the focal point of design patent disputes. Accused infringers now face a lower bar to show that an issued design patent is invalid due to obviousness. This lower bar makes it easier for an accused infringer to invalidate an asserted design patent. In industries where product design evolves incrementally through successive generations, prior product iterations or issued design patents may serve to invalidate design patents filed on subsequent versions 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 application 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 validity 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, damages 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 create 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 infringers 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 exterior 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 obviousness 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 framework – 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.