Design patent law moved quickly in 2025. Courts worked through the implications of the Federal Circuit's landmark LKQ decision, the PTAB's institutional procedures were overhauled in ways that favor patent owners, and the Federal Circuit added important new doctrine on prosecution history estoppel and priority claims. Here is what mattered.
LKQ v. General Motors (N.D. Ill. 2025)
Why it mattersEarly post-LKQ decisions indicate that design patent obviousness challenges still require disciplined proof on analogous art, motivation to combine, and objective indicia.
The 2024 Federal Circuit en banc decision in LKQ v. GM scrapped the long-standing Rosen-Durling test for design patent obviousness, replacing it with the Graham factors long used for utility patents. The 2025 district court decision in the same case was one of the first to actually work through what that means in practice: how to identify analogous prior art for a design, how to articulate a motivation to combine references, and how to weigh secondary considerations like commercial success and copying.
The decision matters because it illustrates how courts are beginning to apply the Federal Circuit's new LKQ framework in practice. It also shows that simply identifying design elements somewhere in the prior art is not enough — challengers must articulate a record-supported reason to combine references under the Graham framework. The early post-LKQ decisions suggest that, although Rosen-Durling is gone, design patent obviousness still requires disciplined proof on analogous art, motivation to combine, and objective indicia.
Top Brand v. Cozy Comfort (Fed. Cir., July 2025)
Why it mattersStatements made during design patent prosecution can narrow the enforceable scope of a design just as amendments can.
The Federal Circuit confirmed for the first time that argument-based prosecution history estoppel applies to design patents, not just amendment-based estoppel. During prosecution of its oversized sweatshirt design, Cozy Comfort distinguished prior art by pointing to specific differences in the pocket shape and location. The court held that those arguments surrendered claim scope covering designs closer to the prior art — meaning Top Brand's product, which more closely resembled the prior art, did not infringe.
The practical consequence is significant: what you say during prosecution now constrains enforcement just as much as what you draw. Applicants should be careful to tailor prosecution arguments narrowly, addressing only what is necessary to overcome a rejection rather than making broad sweeping distinctions. The safest approach is to avoid substantive remarks about specific design features whenever possible.
In re Floyd (Fed. Cir., April 2025)
Why it mattersPriority from a utility application to a later design patent requires clear disclosure of the specific claimed design configuration.
The Federal Circuit held that a utility patent application must explicitly disclose the specific design being claimed before it can serve as a valid priority document for a later-filed design application. The applicant's utility application included drawings of 6×6 and 6×4 layouts of heated compartments in a cooling blanket, but the design patent claimed a 6×5 layout. The court found that broad language in the utility application referring to 'any size' or 'variations' was insufficient — the specific design must 'necessarily flow' from the prior disclosure, not merely 'possibly' follow from it.
The decision has two important consequences. First, design practitioners who routinely claim priority to utility applications need to audit whether the utility drawings actually support the specific design configuration being claimed. Second, even where the utility application cannot support priority, it may still qualify as prior art against the design application — a double problem if the timing is tight.
North Star v. Latham Pool Products (Fed. Cir., April 2025)
Why it mattersCourts may grant summary judgment where the overall visual impression of the accused design is plainly dissimilar to the patented design.
The Federal Circuit affirmed summary judgment of non-infringement, finding that the accused swimming pool design was 'plainly dissimilar' from the patented design. The court focused exclusively on the ornamental aspects of the patent, disregarding features it deemed 'ubiquitous' to rectangular swimming pools — steps, benches, and tanning ledges. Only the angular shape qualified as protectable ornamental content, and the accused pool's angular shape was sufficiently different to warrant summary dismissal.
The case raises ongoing questions about the 'sufficiently distinct' test and when it applies. North Star has petitioned for rehearing, arguing the court provided no criteria for identifying which features are 'ubiquitous' and therefore excludable from the infringement analysis. The outcome of that petition is worth watching — if the standard is not clarified, it creates unpredictability for design patent owners in crowded fields like consumer products and automotive.
Diode Dynamics v. 5DLight (C.D. Cal. 2025)
Why it mattersPost-LKQ obviousness challenges must identify a concrete, record-supported rationale for combining design references.
One of the first district court decisions to apply the Graham factors to a design patent obviousness defense, Diode Dynamics involved an aftermarket automotive LED lamp bezel. The defendant argued the design was obvious in view of a Chinese design patent, but failed to articulate a sufficient 'record-supported reason' to combine the references. The court granted summary judgment for the patent owner, finding that merely identifying a design element in prior art does not establish a motivation to combine.
The decision is significant because it shows how the post-LKQ framework actually plays out at the summary judgment stage — and it favors patentees. The burden on the challenger to articulate a specific, record-supported rationale for combining prior art references is real and demanding. It also confirms that the 'analogous art' requirement, while still being defined, does meaningful work to narrow the universe of references available to challengers.
PTAB Procedural Overhaul
Why it mattersChanges to PTAB institution practice may make administrative challenges to design patents more difficult.
Acting USPTO Director Coke Morgan Stewart overhauled PTAB practice early in 2025, rescinding Biden-era guidance that had limited discretionary denials and implementing a new bifurcated institution regime. Under the new framework, the Director resolves discretionary factors first — before any PTAB panel considers the merits. Patent owners received a dedicated brief to press for denial; petitioners must now overcome a higher discretionary threshold before reaching a merits analysis. New Director John Squires later tightened the regime further, consolidating institution decisions in the Director's office and proposing rules that could require petitioners to forfeit certain §§ 102/103 defenses elsewhere as the price of IPR access.
The practical effect for design patent owners is significant. Design patents have historically experienced lower PTAB institution rates than utility patents. Early commentary suggests that the new framework may further reduce institution rates in certain cases, meaning challengers must evaluate carefully whether an IPR is worth pursuing. For brand owners holding design patent portfolios, this may represent a meaningful shift in the enforcement landscape.
Nowak IP Group counsels brand owners on design patent strategy, enforcement and defense. If you have questions about protecting or enforcing your designs, we welcome the conversation.