Client Resources One Year of LKQ v. GM: How Much Has Really Changed?

One year ago today, the en banc Federal Circuit decided LKQ Corporation v. GM Global Technology Operations LLC, where it overturned the decades-old Rosen-Durling test for obviousness of a design patent for being “improperly rigid.”¹ Now, instead of requiring a primary reference to “be ‘basically the same’ as the challenged design claim” and any secondary references to “be ‘so related’ to the primary reference that features in one would suggest application of those features to the other,” courts and examiners apply “a more flexible approach” in line with KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) and Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1996).² Some feared that the effects of LKQ would be significant.³ But how much has the design patent landscape really changed?

Design Allowance Rate
According to the USPTO’s data that is current through April 2025, the allowance rate for design patent applications has remained in the low to mid-eighties.⁴

PTAB Institution Rate
During the few years leading up to the LKQ decision, the institution rate for design patents was collectively over 50%.⁵ But since the LKQ decision, the PTAB has not instituted any post-grant proceedings for design patents, as all three petitions have been denied.⁶ That being said, given the small sample size, it remains to be seen whether LKQ will have an effect on the difficulty of invalidating design patents post-grant.

District Court Decisions
Similarly, there have not been any district court decisions within the last year invalidating a design patent for being obvious. To the contrary, the United States District Court for the Southern District of Indiana has granted a motion for summary judgment of non-invalidity of design patents despite the defendant arguing that the patents were obvious.⁷ And the United States District Court for the Northern District of Illinois has found that a defendant did not raise a “substantial question” as to the validity of a design patent in an analysis of whether to grant a preliminary injunction because the defendant did not present evidence or argument as to all of the Graham factors.⁸ But again, data is limited.

Some courts have signaled that the difference between the Rosen-Durling test and the new obviousness standard is not significant.  For example, the United States District Court for the District of Arizona denied a motion for a new trial when the LKQ decision came out shortly after an $18 million verdict, reasoning that LKQ was not “so disruptive as to consider the jury instructions in this case a miscarriage of justice.”⁹ On the other hand, other courts have made decisions based on the differences between the old and new tests. For example, the United States District Court for the District of Colorado denied in part a plaintiff’s motion for summary judgment on assignor estoppel and found that “the defendants [we]re not estopped from asserting an obviousness defense” because “[i]n light of the new, more ‘expansive and flexible’ approach to assessing obviousness announced in LKQ, it is now possible that ‘what was valid before is invalid today.’”¹⁰

Takeaways
Data from the first year post-LKQ suggests that there may not be significant changes to the allowance rate of design patent applications or the likelihood of the PTAB or district courts invalidating design patents. However, since there are not nearly as many design cases as utility cases, it may be a few more years before some impacts are seen.

¹ 102 F.4th 1280, 1293 (Fed. Cir.  2024).

² Id.

³ See, e.g., Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:17-cv-01781, 2024 WL 4643096, at *2 (S.D. Cal. Oct. 30, 2024) (granting the defendant’s motion for relief from a stipulated judgment of validity in part because “[t]he en banc decision in LKQ was extraordinary, overturning decades-old and improperly-rigid precedent”); Randall Rader, Rader’s Ruminations: LKQ, An Utterly Failed En Banc ‘Clarification’, IPWatchdog, June 26, 2024, https://ipwatchdog.com/2024/06/26/raders-ruminations-lkq-utterly-failed-en-banc-clarification/id=178313/ (“On one thing all commentaries agree: this ruling will make it more difficult to protect designs.”); John L. Lyon, A Potentially Dramatic Shift in Design Patents – LKQ v. GM, Thomas Horstemeyer, June 11, 2024, https://thip.law/a-potential-shift-in-design-patents-lkq-v-gm/.

⁴ Design Data April 2025, USPTO, https://www.uspto.gov/dashboard/patents/design.html.

⁵ PTAB Trial Statistics FY21 End of Year Outcome Roundup: IPR, PGR, CBM, USPTO, at 9, https://www.uspto.gov/sites/default/files/documents/ptab_aia_fy2021__roundup.pdf (reporting 80% (4 of 5) institution rate for Oct. 1, 2020 to Sept. 30, 2021); PTAB Trial Statistics FY22 End of Year Outcome Roundup: IPR, PGR, USPTO, at 9, https://www.uspto.gov/sites/default/files/documents/ptab__aia_fy2022_roundup.pdf (reporting 33% (1 of 3) institution rate for Oct. 1, 2021 to Sept. 30, 2022); PTAB Trial Statistics FY23 End of Year Outcome Roundup: IPR, PGR, USPTO, at 8, https://www.uspto.gov/sites/default/files/documents/ptab_aia_fy2023__roundup.pdf (reporting 50% (4 of 8) institution rate for Oct. 1, 2022 to Sept. 30, 2023).

⁶ Next Step Grp., Inc. v. Deckers Outdoor Corp., IPR2024-00525, Paper 16 (PTAB Aug. 6, 2024); A&A Glob. Imports, Inc. v. Lerman Container Corp., IPR2024-01138, Paper 7 (PTAB Jan. 22, 2025); Arashi Vision (U.S.) LLC v. GoPro, Inc., IPR2024-01434, Paper 9 (PTAB Mar. 31, 2025); see also PTAB Trial Statistics FY24 End of Year Outcome Roundup: IPR, PGR, USPTO, at 8, https://www.uspto.gov/sites/default/files/documents/ptab_aia_fy2024__roundup.pdf (reporting 0% (0 of 2) institution rate for Oct. 1, 2023 to Sept. 30, 2024); PTAB Trial Statistics FY 25 Q2 Outcome Roundup: IPR, PGR, USPTO, at 8, https://www.uspto.gov/sites/default/files/documents/ptab_aia_fy2025_q2_roundup.pdf (reporting 0% (0 of 2) institution rate for Oct. 1, 2024 to Mar. 31, 2025).

⁷ Gema USA, Inc. v. First in Finishing Inc., No. 1-22-cv-02053, D.I. 129 at 5-10, 14-15 (S.D. Ind. Mar. 27, 2025).

⁸ Gong v. The P’ships and Unincorporated Ass’ns Identified in Schedule A, Defendants, No. 24 CV 2985, 2024 WL 5679176, at *3 (N.D. Ill. Nov. 26, 2024) (noting that the defendant did “not identify the pertinent art or provide the Court with information about knowledge from the ordinary designer in that field at the time of the invention—despite the fact that such information is relevant to the obviousness inquiry”). 

⁹ Top Brand, LLC v. Cozy Comfort Co., LLC, No. 2-21-cv-00597, D.I. 426 at 3-4 (D. Ariz. June 28, 2024) (also noting that the jury “was instructed to consider seven different factors which included and mirror the four [Graham] factors”); see also Cozy Comfort Co. LLC v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified in Schedule A to Complaint, No. 1-23-cv-16563, 2024 WL 2722625, at *3 & n.4 (N.D. Ill. May 28, 2024) (relying on the Top Brand jury verdict to show likelihood of success on validity even though the law on obviousness changed after the verdict).

¹⁰ The Kong Co., LLC v. Bounce Enters., LLC, No. 1-22-cv-02001, D.I. 114 at 16-17 (D. Colo. Mar. 27, 2025) (internal citations omitted) (quoting Minerva Surgical, Inc. v. Hologic, Inc., 594 U.S. 559, 576 (2021)); see also Columbia Sportswear, 2024 WL 4643096, at *2.