The Federal Circuit's en banc decision in LKQ v. GM redefined the obviousness test for design patents by applying the same standard used for utility patents. The decision has prompted attorneys to reassess their strategies and approaches in design patent litigation and prosecution.
After the ruling, some questioned whether the judges in district courts and the Patent Trial and Appeal Board (PTAB) would struggle with applying the utility patent test in the context of designs, however, a few decisions suggest that may not be the case.
For example, the PTAB denied three petitions challenging design patents, saying the petitioners did not meet the requirements for demonstrating obviousness under LKQ. The board has faulted challengers for not showing why there would be a motivation to combine earlier designs to arrive at the claimed design, or for making obviousness arguments that rely on hindsight.
Speaking to Law360, Beth Ferrill said those results are notable “because I think that some of the people that were arguing for a loosening of the test maybe thought that that wouldn’t be the result,” and that the board would institute design patent reviews more often after LKQ.
Each decision depends on its own facts, but the board’s decisions could be an early indication that “maybe the test didn’t change all that much,” she said.
Since courts are familiar with the obviousness standard for utility patents, which now must be used for design patents, "they understand the test better, so they're able to turn that on its head a little bit with the defendants and call out "hand-waving" arguments that patents are obvious because the test has been relaxed,” Beth said.
Read “Assessing the Design Patent Impact of LKQ, One Year Later”
