Overview
Two years ago, the Federal Circuit upended decades of design patent law when it rejected the long-standing Rosen-Durling test for determining obviousness as “improperly rigid.”[1] In LKQ Corp. v. GM Global Tech. Operations LLC, the Federal Circuit held that Supreme Court precedent, including the KSR[2] decision on the obviousness of utility patents, requires a “more flexible approach” to obviousness for design patents.
For more than forty years, the Rosen-Durling framework had governed design patent obviousness under 35 U.S.C. § 103. Established by In re Rosen (1982)[3] and Durling v. Spectrum Furniture Co. (1996)[4], the test demanded a two-step analysis. First, examiners or courts identified a single primary reference, known as the Rosen reference, that was basically the same as the claimed design. If no such reference existed, the inquiry ended and the design was deemed nonobvious. Second, only if a suitable primary reference was found could secondary references be used to modify it, and even then, only if those references were “so related” that their ornamental features would naturally suggest incorporation into the primary design.
The LKQ decision replaced this rigid two-step formula with the flexible Graham framework, which had long applied to utility patents. Under LKQ, courts and examiners must consider:
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- The “scope and content of the prior art within the knowledge of an ordinary designer in the field of the design,”
- The “differences between the prior art designs and the design claim at issue,”
- The “level of ordinary skill in the pertinent art,” and
- Whether “an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design,” taking into account any secondary considerations of obviousness or nonobviousness.[5]
While LKQ clarified the governing framework, it left open the critical question of what constitutes a “motivation to combine.” The Federal Circuit provided only broad guidance, noting that (1) “the motivation to combine…need not come from the references themselves,” (2) there must be a record-supported, non-hindsight reason why an ordinary designer would have made the modification; and (3) the greater the visual differences between the references, the more persuasive evidence a challenger must provide to justify the combination.[6]
In the two years since LKQ, a handful of decisions from district courts and the Patent Trial and Appeal Board (PTAB) have begun to apply this new standard. Two cases—one from the Central District of California and one from the PTAB—illustrate how tribunals are grappling with the “motivation to combine” inquiry.
Diode Dynamics v. 5DLight (C.D. Cal. 2025)[7]
In Diode Dynamics, the Central District of California rejected a defendant’s theory of obviousness at summary judgment under the Graham framework. The court found that the proposed prior art references “differ[ed] substantially in both geometry and visual impression” from the patented design.[8] Because the asserted combination appeared “tailored to replicate the D’648 design itself, not to solve a known design problem or respond to a real-world aesthetic trend,” the court held that the defendant’s argument relied on hindsight.
Citing LKQ, the court emphasized that “the more different the overall appearances of the primary and secondary references, the more work a patent challenger will likely need to do” to show a motivation to alter the primary design and demonstrate obviousness. The court found that the defendant failed to provide any “factual basis or industry rationale to suggest that a designer [during the priority date] would have been motivated to modify [the asserted references].”[9] The expert testimony offered was deemed devoid of any “any functional constraint, market pressure, or trend that would have led a designer to [modify the asserted art]” or any “supporting references or design principles … suggesting] that such combinations were common or desirable at the time of invention,” echoing the Supreme Court’s warnings in KSR.[10] The court therefore found the obviousness theory legally insufficient.
A&A Global Imports v. Lerman Container (PTAB 2025)[11]
In A&A Global, the PTAB denied institution, holding that the petitioner had not demonstrated that an ordinary designer would have been motivated to modify the prior art to create a jar with the same overall visual appearance as the claimed design. The Board focused on two specific features of the patented design: (1) the neck height proportions of the jar and (2) the depth and shape of its interior compartment.[12]
The petitioner argued that a designer might have adjusted the neck height to achieve certain aesthetic or functional goals, such as showing more product or accommodating a cap design. But the Board found the argument unsupported, noting that the petitioner failed to explain “why the particular neck-to-base height proportion claimed” would have been obvious.[13] Expert testimony asserting that the difference was “minimal” was rejected because it was unsupported by “any objective evidence, such as pointing to prior art with similar base to neck height proportions.”[14] The Board emphasized that “expert testimony cannot take the place of disclosure from patents or printed publications.”[15]
Similarly, the Board dismissed the expert’s claim that variations in compartment shape and depth were “so minimal as to not affect the overall impression.”[16] The Board found that the expert failed to support his conclusions “with any objective evidence” or any explanation of “why a designer of ordinary skill in the art would have chosen to use the particular shape and depth claimed by [the patented design] as opposed to all other possible configurations.”[17] Thus, the petitioner’s obviousness arguments were deemed unsupported and conclusory.
Emerging Trends in the “Motivation to Combine” Analysis
These early decisions illustrate how courts and the PTAB are operationalizing LKQ’s mandate for a more flexible, evidence-based approach to design patent obviousness. The inquiry has shifted away from the rigid, side-by-side comparisons of “basically the same” designs that dominated under Rosen-Durling, toward a more holistic evaluation of why and how a designer would have been motivated to alter existing designs.
Today, a persuasive “motivation to combine” showing must do more than assert superficial similarity—it must be anchored in objective evidence reflecting concrete design principles, documented market trends, or identifiable industry practices that plausibly explain the proposed modification. In short, post-LKQ design patent obviousness turns on demonstrating not just that a combination could have been made, but that a skilled designer would have been motivated to make it for reasons that make sense in the real world of design.
[1] LKQ Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280, 1293 (Fed. Cir. 2024).
[2] KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007).
[3] In re Rosen, 673 F.2d 388, 390 (C.C.P.A. 1982).
[4] Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996).
[5] LKQ Corp., 102 F.4th at 1290–1301.
[6] Id. at 1300.
[7] Diode Dynamics, L.L.C v. 5Dlight, Inc., No. 5:23-CV-02238-WLH-JPR, 2025 WL 2827023 (C.D. Cal. Sept. 15, 2025), reconsideration denied sub nom. Diode Dynamics L.L.C. v. 5DLight Inc., No. 5:23-CV-02238-WLH-JPR, 2026 WL 638862 (C.D. Cal. Feb. 3, 2026).
[8] Id. at *6.
[9] Id.
[10] Id.
[11] A&A Glob. Imports, Inc. v. Lerman Container Corp., No. IPR2024-01138, 2025 WL 284651 (P.T.A.B. Jan. 22, 2025).
[12] Id. at 13.
[13] Id. at 11
[14] Id.
[15] Id.
[16] Id. at 12
[17] Id.
