In addition to protecting aesthetics, design patents offer unique protection in industries where OEMs provide replacement parts (e.g., automotive) or supplies (e.g., ink-jet cartridges). LKQ Corporation challenged the validity of a design patent held by GM Global Technology Operations LLC, specifically targeting a patent that claimed an ornamental design for a vehicle component — in this instance, a front fender used in Chevrolet Equinox models from 2018 to 2020.
In the Federal Circuit’s decision last month on “LKQ Corporation v. GM Global Technology Operations LLC,” a significant shift in the evaluation of design patent obviousness. The court effectively discarded the rigid “Rosen-Durling test,” which had required a primary reference in prior art to be “basically the same” as the claimed design, and secondary references to be closely related to suggest combining features. This decision aligns with the broader and more flexible approach encouraged by the Supreme Court in the “KSR International Co. v. Teleflex Inc.” case (2007), emphasizing a holistic view of prior art and a rejection of stringent formulas in determining obviousness.
The ruling emphasizes that the obviousness of a design patent should be evaluated under a framework similar to that applied to utility patents, using the Graham factors. This involves considering the scope and content of the prior art, differences between the prior art and the claimed design, the level of ordinary skill in the art, and potentially secondary considerations such as commercial success and copying.
LQK will have an immediate impact in the OEM parts space, but it certainly will give competitors to design-innovators like Apple more leeway to make products of greater similarity in appearance. Some companies may refocus IP investments back to utility patent protection.
