Adams & Reese Patent Counsel Discusses Impact of LKQ v. GM, One Year Later

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Adams & Reese Patent Counsel John Scott was interviewed by Law360 about the one-year anniversary of the Federal Circuit’s LKQ v. GM decision. On May 21, 2024, the appeals court handed down its first en banc decision in a patent case in six years, holding that the obviousness analysis for design patents that had been used for decades was “improperly rigid,” and that the test for utility patents must be used instead.

In the year since, there have been a handful of decisions in courts, the Patent Trial and Appeal Board, and the U.S. Patent and Trademark Office addressing LKQ, but few final decisions on whether patents are invalid have applied the new standard. As a result, the full impact of the case may not be felt until there is a larger body of case law, but attorneys have applied various strategies given the LKQ ruling.

Scott said he has recommended that design patent applicants focus their arguments on the ways the primary reference (the earlier design that is most visually similar to the claimed design) is still distinct from what the applicant has created. That makes it more challenging for examiners to demonstrate obviousness, he said, since under LKQ, explaining each difference requires identifying other secondary design references and the reasons why an examiner would be motivated to combine them to arrive at the claimed design.

“The more distinctions that you point out, the more secondary references they're likely going to have to rely on to show those differences,” Scott said.

At Adams & Reese, Scott is a U.S. Patent Attorney with more than a decade of experience preparing and prosecuting patent applications both domestically and internationally for clients ranging from startup ventures to Fortune 50 companies. He is recognized to practice in patent matters before the U.S. Patent and Trademark Office, and is also licensed in the states of Georgia, Missouri, Ohio, and Washington.

Scott’s representative technologies have included the likes of manufacturing automation, database management, e-commerce, quantum hardware, search engine optimization, video streaming, automated driving control, machine learning and AI applications, just to name a few. John previously provided pre-litigation support for a Fortune 20 company through invalidity and non-infringement positions for asserted patents relating to light-emitting diode drivers.