Appealing Designs: Federal Circuit Goes Back to School on Design Patents

Recent cases involving design patents on appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) highlight significant developments and issues. There have been five decisions in 2025 and several more are anticipated. They address infringement, invalidity, estoppel, priority and Section 337’s Domestic Industry requirement. There is also developing jurisprudence on prior art for design patent infringement, as well as questions such as when are two designs plainly dissimilar, making their way through the courts.

The CAFC was busy with design patents in 2024, deciding LKQ v. GM on rehearing, abandoning its longstanding Rosen-Durling obviousness jurisprudence as overly rigid. But in 2025, the court went back to school, and is poised to decide several more cases, including evaluating the sign design patent illustrated above in Smartrend Mfg. v. Optilux and whether to grant another request for rehearing, this time on infringement and the importance of the prior art as a frame of reference. By comparison, in 2004 the court issued three decisions: PS Prods. Inc. v. Panther Trading Co. Inc., 2023-1665 (Dec. 6, 2024); In re Samuels, 22-1121 (March 6, 2024); LKQ v. GM, 21-2348 (May 21, 2024). No decisions in 2024 or 2025 were issued under Rule 36 without opinion.

2025 Decisions Recap

• Lashify, Inc. v. Int’l Trade Comm’n, 130 F.4^th 948 (March 5, 2025)
  • To support domestic industry in a Section 337 infringing import investigation, there is no exclusion from labor when the human activity employed is for sales, marketing, warehousing, quality control, or distribution, which are common aspects of providing goods or services; there is no requirement that a “stock of accumulated goods” be manufactured domestically;
• In re Floyd (April 22, 2025)
  • Applicant’s own utility patent disclosure of 6×6 and 6×4 grids anticipated claimed design’s 5 x 6 grid yet does not support a design priority claim;
• Top Brand v. Cozy Comfort Co. LLC, 143 F.4th 1349 (July 17, 2025)
  • Granted judgment as a matter of law after a jury found infringement because the accused design was within the scope of the subject matter surrendered during prosecution;
• North Star Tech Int’l Ltd. v. Latham Pool Prods. (April 24, 2025)
  • Affirmed grant of motion for summary judgment of non-infringement finding accused design “plainly dissimilar” from patented design without considering prior art.
• Dynamite Marketing, Inc. v. The WowLine, Inc., 24-1523
  • Affirmed dismissal as to correction of inventorship where appellant had not joined the related litigation and where asserted co-inventor did not appeal; affirmed despite obviousness challenge for failure to place into evidence a prior art primary reference and where expert’s general hindsight-based conclusion of obviousness failed to provide clear and convincing record-supported reasons motivating why to combine specific design features from identified prior art references to produce the overall appearance of the patented design; finding substantial evidence supporting the jury’s verdict that the design patent is not invalidity for functionality and in support of the jury’s infringement verdict. 

Decisions Anticipated

• Smartrend Manufacturing Group (SMG), Inc. v. Opti-Luxx Inc., 24-1616
  • Appellant-Defendant arguing the district court erred in construing the patented design as claiming both a transparent and a translucent lens, warranting a new trial;
• Range of Motion Products v. Armaid Co., 23-2427, submitted after argument 2/4/2025
• North Star Tech Int’l Ltd. v. Latham Pool Prods., request for rehearing.

Range of Motion and North Star present challenges to district court determinations of non-infringement under the plainly dissimilar test, and argue that when properly construed, the patented and accused designs are similar enough to withstand disposal on a motion for summary judgment without considering the prior art.

In 2012, in Revision Military, Inc. v. Balboa Mfg. Co., the CAFC reversed and remanded where a district court neither utilized the correct infringement standard nor considered the prior art – although individual features may indeed serve in assessing the impact on the overall appearance, it noted, “in determining whether apparently minor differences between specific features would be recognized as distinguishing the designs, it is often helpful to refer to any prior art with which the ordinary observer would reasonably be familiar.”

Yet district courts have frequently continued to analyze design patent infringement on motions to dismiss and motions for summary judgment without reference to the prior art by finding designs plainly dissimilar.

In LKQ v. GM, the Federal Circuit reset design patent obviousness law from overly rigid threshold requirements for primary and secondary references to take a more flexible approach but also focused the analysis by requiring prior art references to be analogous. For design patent anticipation, and its reverse, infringement, should the Court now add reasonably objective guardrails to a test without an articulable standard?

Developing Jurisprudence on Prior Art for Design Patent Infringement

Dominant Feature from the Prior Art

In August, the Federal Circuit decided ABC Corp. I v. Schedule A, confirming its 2022 related case instruction that “where a dominant feature of the patented design and the accused products appears in the prior art, the focus of infringement will be on other features of the design” and “[f]urther, ‘[t]he shared dominant feature from the prior art will be no more than a background feature of the designs.’” The court concluded that the district court had appropriately examined how the details of each design contributed to the overall visual similarity and concluded “these differently designed features combine to create an overall effect that is not substantially similar to any of the three patents-in-suit when discounting the dominant hourglass shape.

Arguing Around Prior Art and Surrendering Claim Scope

The court also recognized the importance of prior art in the prior month July, in Top Brand v. Cozy Comfort Company, where it confirmed that a patentee may surrender claim scope by its representations to the patent office during prosecution. It concluded that this approach is supported by its decision in Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665 (Fed. Circ. 2008 (en banc) where it recognized that “a trial court can usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim,” including “assessing and describing the effect of any representations that may have been made in the course of the prosecution history.” The court found that in distinguishing a cited prior art reference during the examination process, the patentee had surrendered its ability to rely on the surrendered claim scope in arguing for infringement. In other words, in aspects where the accused design appears more similar to the cited prior art from which the patentee has distinguished itself, there cannot be infringement.

Comparison Prior Art

In Columbia Sportswear N.A. Inc. v. Seirus Innovative Accessories, Inc., the CAFC addressed the importance of comparison prior art in design patent infringement analysis, holding that to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim. In design patent infringement analysis, the purpose of comparison prior art is to help inform an ordinary observer’s comparison between the claimed and accused designs. The court explained that in Egyptian Goddess, “we retained a role for prior art in cases where ‘the claimed design and accused designs are not plainly dissimilar.’” Id., quoting Egyptian Goddess, 543 F.3d at 678; accord Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1337 (Fed. Cir. 2015).

This decision is also one which extends the courts’ jurisprudence on the significance of the article of manufacture for design patents. Earlier relevant decisions on this issue include Samsung v. Apple – 2016 (the term “article of manufacture,” as used in §289, encompasses both a product sold to a consumer and a component of that product); Curver Luxembourg v. Home Expressions – 2019 (where the title/claim is only place the article of manufacture is identified, it limits the claim); In re SurgiSil – 2021 (a design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract – the claim is limited to lip implants and does not cover other articles of manufacture.) Moreover, in LKQ v. GM, the court held that obviousness references must be analogous.

Plain Dissimilarity / Sufficiently Distinct

In North Star Tech Int’l Ltd. v. Latham Pool Prods, the district court granted Latham’s motion for summary judgment of non-infringement, reasoning that Latham’s pool is plainly dissimilar to North Star’s design patent, and on appeal, the Federal Circuit found no reversible error. It argued that although the designs share structural similarities, “design patents only protect the original, nonfunctional aspects of an ornamental design as shown in the patent and stated North Star cannot monopolize common ornamental pool features or functional pool features by registering a combi- nation of those features as a design patent.”

North Star disagrees and has requested rehearing, arguing that the “sufficiently distinct” analysis has no objective guidance to meaningfully assess summary judgment.

The Federal Circuit may well have seen a disconnect between its decision in LKQ v. GM, abolishing a framework it found too rigid, and the plainly dissimilar analysis, on the other hand, which has no objective criteria, and invited Latham to respond.

North Star’s request sets forth a proposal for the plainly dissimilar test:

“This Court should revisit the ‘sufficiently distinct’ test and either discard the test or cabin it to the rarest of circumstances when the differences are immediately apparent, for example, when (a) the designs do not share any ornamental features and (b) there is no evidence of a consumer mistaking one design for the other. It should be reserved for frivolous and near-frivolous infringement claims.”

Although evidence of copying or consumer confusion is not typical for design patent infringement, it could reasonably indicate enough similarity to survive dismissal or summary judgment. See Columbia v. Seirus, 80 F.4th 1363 at 1382 (Fed. Cir. 2023). What frequently frustrates design patentees about a district court’s failure to review the prior art is that when the prior art is considered, it tends to paint the infringement picture, revealing the defendant’s design as a knock-off which is often the reality, notwithstanding liability for infringement. What frustrates design patent stakeholders more broadly is attempting to reconcile widely divergent infringement outcomes between cases of differing closeness, making it more difficult to judge infringement and value and negotiate case settlement.

For its part, Latham disagrees that the outcome of noninfringement is incorrect, pointing out that the district court had noted existing features in the prior art. Two amicus briefs filed in support of rehearing argue that the patented and accused designs sharing “common conspicuous feature” and “common combination” are factors which could favor prior art review, and that the test was not meant to be a stand-alone infringement test, rather it merely clarified that, in clear-cut cases, non-infringement can be found without consideration of the prior art; in the context of summary judgment, this means that (a) the differences are so substantial that there could be no infringement even if the claimed design and the prior art are not close in overall appearance and (b) the differences are so substantial that no reasonable juror could find infringement.

We Need a Rehearing in North Star

In its LKQ v. GM decision, the Federal Circuit reasoned that Rosen’s rigid requirement limiting a primary reference to designs that are “basically the same” as the claimed design—and abruptly ending the analysis in the absence of such a reference—imposes limitations absent from Section 103’s broad and flexible standard and that Durling’s inflexible “so related” requirement is analogous to the rigid application of the teaching-suggestion-motivation test rejected by the Supreme Court in KSR. “Ultimately,” it concluded, “we agree with our precedent holding that “[i]nvalidity based on obviousness of a patented design is determined [based] on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent under § 103, that is, on application of the Graham factors.” Considering this more “expansive and flexible” approach to assessing obviousness, it is now possible that “what was valid before is invalid today.” See The Kong Company, LLC v. Bounce Enterprises, LLC where a district court recently ordered that assignor estoppel bars the defendants from asserting invalidity defenses except for obviousness.

With this scary proposition in mind, design patent stakeholders should hope the court grants rehearing in the North Star case so that the design patents which do remain valid can have their full day.