Design patents in the United States have operated under a distinct, more forgiving obviousness standard than utility patents for four decades. LKQ Corp. v. GM Global Technology Operations LLC, decided en banc by the Federal Circuit, brought that separate treatment to an end.
A Dispute Over Replacement Auto Parts
LKQ had acted as a licensed vendor of replacement parts compatible with GM vehicles. After licence renewal negotiations broke down in early 2022, GM told LKQ and its business partners that the parts LKQ continued selling were no longer licensed, and infringed GM's design patents, including one covering a vehicle front skid bar. LKQ challenged that patent's validity, arguing the design was obvious, which set up a direct test of the standard used to invalidate design patents.
The Old Two-Step Test
Under the Rosen-Durling test, a challenger first had to identify a single primary prior art reference with characteristics "basically the same" as the claimed design, then show that any gap between that reference and the claimed design could be bridged using secondary references. That first step alone eliminated a wide swath of prior art from consideration, since no primary reference sufficiently close to the claimed design meant the obviousness challenge failed before secondary evidence was even considered.
Aligning Design Patents With Utility Patent Obviousness
The en banc Federal Circuit rejected the rigid Rosen-Durling framework, replacing it with the more flexible obviousness analysis under the Graham factors, the same framework used for utility patents and rooted in the Supreme Court's KSR International Co. v. Teleflex Inc. decision. The practical effect is a broader universe of prior art that can now be combined to challenge a design patent's validity, since a challenger is no longer confined to finding one reference that is nearly identical to the claimed design before other art can be brought to bear.
Why Canadian Design Owners Should Care
Canadian businesses frequently pursue parallel design protection: a Canadian industrial design registration alongside a corresponding US design patent, often through the Hague System or direct US filing. A materially easier path to invalidating US design patents changes the risk calculus for that parallel strategy, particularly for designs in competitive, aftermarket-heavy sectors like automotive parts, where design patents are a primary enforcement tool against copyists.
We advise Canadian clients pursuing coordinated Canadian and US design protection on how developments like this one affect enforcement strategy on the US side of a design portfolio.