Update On The Obviousness Standard For Design Patents Post-LKQ Corp.

In 2024, the Federal Circuit's decision in LKQ Corp. v. GM Global Technology Operations LLC overturned the long-standing and rigid Rosen-Durling test for determining whether a design patent is obvious. In the decision, the court found that the Rosen-Durling standard conflicted with the Supreme Court's more flexible approach laid out in KSR International Co. v. Teleflex Inc., which uses the Graham factors and allows examiners to consider common sense and a wider range of prior art.

Since then, very few Federal Circuit and district court decisions applying the new LKQ standard for design-patent obviousness determinations have been rendered.

However, in late 2025, in Dynamite Marketing, Inc. v. The WowLine, Inc., the Federal Circuit confirmed the overlap between the former Rosen-Durling test and the current LKQ test. Specifically, under both the former and the new standards, an examiner must still identify a primary prior art reference and provide a record supported, non hindsight rationale explaining why an ordinary designer would have been motivated to modify that reference to arrive at the claimed design.

Thus, even though LKQ Corp. formally overturned the Rosen-Durling test for obviousness of design patents, elements of the old standard remain. Basis for an ordinary designer to have been motivated to modify the primary prior art reference to arrive at the claimed design (without hindsight) must still be articulated.

However, earlier this year, in a surprising decision in Top Glory Trading Group Inc. v. Cole Haan LLC, the Director instituted inter partes review (IPR) of a design patent that had issued more than a decade earlier, notwithstanding the patent owner’s “settled expectations” that the patent would remain valid. The Director concluded that IPR was warranted under the “change in law” factor, reasoning that the LKQ decision fundamentally altered the standard for determining design-patent obviousness and therefore justified revisiting the patent’s validity. The decision was notable because the PTAB has generally been reluctant to institute IPRs against long-issued patents, recognizing that patent owners may have developed substantial reliance interests over time. Although the ultimate outcome of the IPR remains uncertain, and it is not yet clear whether the new LKQ standard will affect the validity of the challenged patent, the proceeding will be one to watch.

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