LKQ Corp. v. GM Glob. Tech. Operations LLC

Authored by: Jeremy J. Gustrowsky

In a major shift for design patent law, the Federal Circuit has thrown out the long-standing Rosen-Durling test, which made it difficult to challenge the validity of design patents based on obviousness. The dispute centered on a design patent for a Chevrolet Equinox front fender (U.S. Design Patent No. D797,625), with LKQ Corporation arguing that General Motors’ patent should be invalidated because it was obvious in light of earlier designs. The court’s decision means that it will now be easier to challenge design patents using a more flexible, common-sense approach.

Previously, the Rosen-Durling test required challengers to find a “primary reference” that was “basically the same” as the patented design, and any secondary references had to be “so related” that their features would naturally be combined. This rigid framework often made it nearly impossible to prove that a design patent was obvious, even when similar designs already existed. The Federal Circuit found that this approach was too restrictive and inconsistent with Supreme Court guidance, which favors a broader, more flexible analysis.

Going forward, the court will use a test similar to the one used for utility patents, focusing on whether the differences between the patented design and prior art would have been obvious to an ordinary designer in the field. The analysis will consider the scope of prior art, differences between the prior art and the claimed design, the level of ordinary skill in the art, and any secondary factors like commercial success or industry praise. Importantly, prior art must still be “analogous”—meaning it comes from the same field or is relevant to the design problem—but there is no longer a need for near-identical references.

This change is expected to have a significant impact on design patent litigation and prosecution, making it easier to challenge weak design patents and potentially affecting thousands of existing patents. The court acknowledged concerns about uncertainty but emphasized that a flexible, fact-based approach is more consistent with the law and Supreme Court precedent.