JTIP Blog

I. INTRODUCTION

In May of 2024, the Federal Circuit overruled 40 years of precedent for assessing the obviousness of design patents in LKQ Corp. v. GM Global Technology Operations LLC. Already, commentators and practitioners have a wide array of opinions about the impacts of LKQ. If recent history is any guide, however, declarative statements about the impacts of LKQ are premature, and they create risks to businesses, practitioners, and courts alike. Rather, patent law observers should adopt a wait-and-see approach for the impacts of LKQ on design patent obviousness. 

II. THE LKQ DECISION 

In LKQ, the Federal Circuit addressed the standard for assessing design patent obviousness under 35 U.S.C. § 103. Before this decision, to find a claimed design unpatentable as obvious, the two-part Rosen–Durling test required a primary reference that was “basically the same” as the claimed design and secondary references “so related” to the primary reference that their features suggested combination with the primary reference. 

In this case, the Federal Circuit held that framework to be too rigid under the Patent Act. Instead, the court ruled that the obviousness of a claimed design is to be determined through the application of the familiar Graham four-part test used to assess the obviousness of utility patents. 

A.   EARLY OPINIONS ABOUT LKQ  

In the months since LKQ, opinions about the impacts of the decision have poured in from academics, practitioners, and commentators alike. Some predict a seismic shift, stating that the “far-” and “wide-reaching consequences” of LKQ will likely make design patents harder to obtain and easier to invalidate. Others predict little change at all, stating that the obviousness test “is largely the same as before” and that the expected changes from LKQ are primarily procedural. Still others seem to have landed on a middle ground, expecting “noticeable differences” in the law, with “examiners [having] more freedom to establish that the prior art is properly usable in an obviousness rejection.” 

B. PARALLELS WITH KSR 

LKQ is not the only recent decision dealing with obviousness that evoked immediate and wide-ranging reactions. In 2007, the Supreme Court issued KSR International Co. v. Teleflex Inc., a decision addressing the obviousness standard for patents. Notably, the Court rejected the Federal Circuit’s rigid application of its “teaching, suggestion, or motivation” test for obviousness to a utility patent in that case. 

In the immediate aftermath of that case, commentators and practitioners were “divided on whether the decision of the Supreme Court in KSR [was] (a) a radical departure from the Federal Circuit’s approach, or (b) unlikely to change much.” Even after the Federal Circuit began to issue decisions under KSR, some argued that the case had only a “modest impact” on the Federal Circuit, and others even questioned “whether the Supreme Court achieved anything in KSR other than giving the Federal Circuit a slap on the wrist.”

Experts were also divided on the likely business impacts of KSR in its immediate aftermath. In the summer after the decision came down, two distinguished patent law experts speaking on a panel were asked if KSR would drive up the cost of preparing and prosecuting a patent. One said yes, and the other said no. 

C. CAUTIONARY TALES FROM KSR 

As time went on, however, the impacts of KSR became clear. Empirical studies from years after the decision routinely proved that the impacts of KSR were anything but modest, contradicting “a commonly held belief that KSR did not change the law of obviousness significantly.” Various empirical studies revealed “strong evidence that KSR has indeed altered the outcomes of the Federal Circuit’s obviousness determinations,” “a remarkable shift in the Federal Circuit’s willingness to uphold findings of obvious below,” and that “the benefit of retrospection shows KSR did change the rate of obviousness findings.”

Thus, KSR should serve as a cautionary tale against jumping to conclusions about the impacts of obviousness decisions. In the months following KSR, any declarative statements about its impacts were mere speculation. Even after the Federal Circuit began issuing decisions under KSR, the sample size remained too small to draw conclusions. Only years after the decision could researchers illuminate the impacts of KSR through empirical studies and show which of those early opinions were right and wrong. 

III. THE WISDOM OF A WAIT-AND-SEE APPROACH FOR LKQ

Since the Federal Circuit only issued LKQ in May of 2024, we remain in the window where any declarative statements about its impacts are premature. Indeed, the Federal Circuit acknowledged that “there may be some degree of uncertainty for at least a brief period” in its LKQ opinion. While the urge to jump to conclusions is understandable, a wait-and-see approach offers many advantages. 

First, as KSR demonstrated, early predictions may be inaccurate and may influence practitioners to adopt misguided design patent prosecution strategies. Overstating the impacts of LQK may lead to overly cautious design patent applications, leaving intellectual property unprotected. A wait-and-see approach will allow prosecution strategies to develop based on reliable trends, reducing the risk of costly errors. 

Second, the Federal Circuit almost certainly has more to say about design patent obviousness than it included in its LKQ opinion. Faulty strategy changes based on an incomplete picture may later need to be undone at great expense. Waiting allows the courts to solidify the impacts of LKQ so that practitioners and businesses can adjust their approaches – if that is necessary – with greater certainty and lower risk. 

Third, overreacting to speculative predictions could cause companies to shift their design-around strategies, leading to unnecessary and wasteful changes in product lines. A wait-and-see approach allows companies to maintain their creative momentum and keep their design strategies consistent until the impacts of LKQ are better understood. 

Fourth, design patents have experienced a boom in recent years. Premature predictions about LKQ risk skewing the perceptions of business leaders and the public about the continued value in pursuing design patent protections. By waiting to confirm the impacts of LKQ, commentators avoid this risk. 

Fifth, predictions about LKQ could become self-fulfilling prophecies. Widespread speculation could unintentionally influence how courts evaluate obviousness in future cases. A wait-and-see approach allows courts to evaluate obviousness free from the noise of speculative predictions, focusing exclusively on the application of the law to the facts of each case. 

Lastly, practitioners face potential backlash from clients if they offer advice that turns out to be too aggressive or pessimistic. By advocating patience to their clients, practitioners can maintain client trust and offer more measured and thoughtful advice once the implications of LKQ become clear. 

IV. WHEN WILL WE KNOW? 

This all begs the question: when will we understand LKQ so that declarative statements about its impacts are appropriate? Again, we can turn to KSR for guidance. 

More than a year after KSR was handed down, some were still questioning if the decision had any impact at all. The first empirical studies of its impacts seemed to emerge about two to three years after the decision, uniformly finding that it altered the law of obviousness. Therefore, it seems safe to assume that empirical studies will illuminate the impacts of LKQ in 2026. Until then, patent law observers should wait and see. 

V. CONCLUSION

With the recent history of KSR as our guide, patent law observers should adopt a wait-and-see approach for the impacts of the Federal Circuit’s recent decision in LKQ. At this early stage, improper speculation and declarative statements about the impacts of the case creates risks for businesses, practitioners, and courts. Instead, a wait-and-see approach allows reliable trends to guide prosecution strategies and allows design patent momentum to continue. In due time, empirical studies will emerge and make the impacts of LKQ clear to all.