A Detailed Analysis Of LKQ V. GM And Its Sweeping Impact On The Obviousness Standard For Design Patents, Replacing Rigid Frameworks With A Flexible Approach
“Explore how recent 2025 Federal Circuit decisions are reshaping design patent law, from infringement tests to prior art standards and Section 337 investigations”
The landscape of design patent law is undergoing a significant transformation, driven by recent decisions from the U.S. Court of Appeals for the Federal Circuit (CAFC). With five notable rulings already in 2025 and more anticipated the court has continued to refine critical areas including infringement standards, invalidity, estoppel, and prior art analysis. However, a recurring concern among stakeholders is the inconsistency of infringement outcomes, especially in cases where the comparative closeness of designs raises questions about predictability, valuation, and settlement strategy.
Key Design Patent Decisions in 2025
The year 2025 has brought several important decisions shaping the boundaries of design patent protection and enforcement:
Lashify, Inc. v. Int’l Trade Comm’n: The CAFC clarified that sales, marketing, warehousing, and other commercial activities may support a domestic industry finding under Section 337, even in the absence of U.S.-based manufacturing.
In re Floyd: The applicant’s own utility patent undermined the design patent’s priority claim by anticipating the disclosed design structure (5×6 grid), even though the utility patent described 6×6 and 6×4 grids.
Top Brand v. Cozy Comfort Co. LLC: The court overturned a jury’s finding of infringement, emphasizing that claim scope surrendered during prosecution cannot later be reclaimed in litigation.
North Star Tech Int’l Ltd. v. Latham Pool Prods: A motion for summary judgment of non-infringement was affirmed, based on a finding that the accused and patented designs were “plainly dissimilar,” with no need to consider prior art.
Dynamite Marketing, Inc. v. The WowLine, Inc.: The CAFC rejected an inventorship correction claim and upheld the jury’s verdict of no invalidity and finding of infringement, emphasizing insufficient evidence of obviousness and functionality.
Anticipated Cases and Potential Rehearing
Several cases pending or seeking rehearing could further influence the scope and clarity of design patent law:
Smartrend Mfg. v. Opti-Luxx Inc.: Focused on claim construction regarding a transparent versus translucent lens.
Range of Motion Products v. Armaid Co.: Challenges the district court’s use of the plainly dissimilar test.
North Star v. Latham (Rehearing Requested): A key case calling into question the subjective and unpredictable nature of the “sufficiently distinct” standard.
The Role and Relevance of Prior Art
Design patent infringement analysis is increasingly being shaped by the evolving role of prior art. In particular, courts have begun emphasizing the need to contextualize the claimed and accused designs against the backdrop of existing designs.
Dominant Features and Background Elements
In ABC Corp. I v. Schedule A, the CAFC reiterated that if a dominant feature of both the patented and accused design appears in the prior art, the infringement analysis must shift focus to the remaining ornamental features.
Prosecution History and Claim Scope Surrender
As seen in Top Brand v. Cozy Comfort, patentees are reminded that arguments made during prosecution can limit claim scope. This aligns with the guidance from Egyptian Goddess, emphasizing that courts should consider such representations in defining infringement boundaries.
Comparison Prior Art and Article of Manufacture
In Columbia Sportswear v. Seirus, the court reinforced that prior art used for comparison must relate to the same article of manufacture as claimed. This echoes the principle established in earlier decisions such as Samsung v. Apple and In re SurgiSil, all confirming that design patents are tied to the specific articles identified in their claims.
Plain Dissimilarity and the Need for Objective Standards
The CAFC’s application of the “plainly dissimilar” test has drawn criticism for lacking objectivity. In North Star, despite structural similarities between the designs, the court affirmed non-infringement without considering prior art. The plaintiff now seeks a rehearing, arguing that the current test lacks meaningful criteria and should be confined to “frivolous and near-frivolous” cases. Stakeholders argue that reliance on subjective impressions—without consumer confusion evidence or prior art context—leaves design patent enforcement vulnerable to unpredictable outcomes.
LKQ v. GM and the Shift in Obviousness Law
A landmark moment came with the Federal Circuit’s 2024 decision in LKQ v. GM, which dismantled the long-standing Rosen-Durling framework for obviousness as overly rigid. The court advocated a more flexible, fact-intensive approach based on Graham factors, aligning design patent law with utility patent standards. However, this shift also raises concerns: what was valid yesterday may now be invalid under the new, broader approach. As noted in The Kong Company v. Bounce Enterprises, this change could reopen questions of validity for previously issued patents—unless precluded by doctrines like assignor estoppel.
Why North Star Merits Rehearing
In light of LKQ, the “sufficiently distinct” standard used in North Star appears increasingly misaligned with the court’s evolving view of flexibility and factual nuance. North Star’s petition argues for confining the “plainly dissimilar” doctrine to truly exceptional cases, and urges the court to consider prior art more robustly in infringement evaluations. The consequences of failing to do so are not abstract: without objective criteria or consistent application, parties face growing uncertainty in litigation outcomes, complicating licensing, enforcement, and settlement negotiations.
Toward Greater Clarity and Consistency
The Federal Circuit stands at a pivotal point in design patent jurisprudence. While recent rulings have clarified and modernized certain doctrines—especially around obviousness—they have also exposed gaps, particularly in the framework for assessing infringement. A more structured approach to prior art consideration and a refined standard for assessing “plain dissimilarity” would better serve both patentees and accused infringers. Until then, stakeholders are left navigating a legal environment that remains highly nuanced—and often frustratingly unpredictable.