Early District Court Litigation Following LKQ: Not a New Standard After All?

Summer Associate Michael Nathanson also contributed to this article. 

In May, the Federal Circuit eliminated the long-standing test for design patent obviousness. In its place, the Federal Circuit emphasized a flexible approach to the design patent obviousness analysis, grounded in the Graham factors.¹ This is a big change in design patent law. So how is LKQ impacting ongoing cases so far?

Not much, as it turns out. In some of the first cases where it’s come up, two different courts have found it not to impact previous rulings on validity. A week after the LKQ decision, a Northern District of Illinois Judge granted preliminary injunction to Cozy Comfort, LLC based on alleged infringement of Patent No. D859,788. To support its decision, the court relied on a District of Arizona jury verdict that the ’788 patent is valid.² The verdict predated LKQ, and the Illinois court acknowledged LKQ “could have” impacted the verdict, but did not consider that possibility strong enough to prevent preliminary injunction.³

A month later, in a case involving the same patent, the Arizona court decided LKQ did not introduce a change warranting a new trial because it was not “so disruptive as to consider the jury instructions… a miscarriage of justice.”⁴ The court reasoned the jury instructions complied with LKQ because they included the Graham factors and did not limit the obviousness analysis to the Rosen-Durling test.⁵

These cases suggest that the impact of LKQ on prior determinations of validity may be muted. But future litigants may have more latitude to leverage the LKQ decision to  prospectively challenge validity, which could contribute to development of a new body of obviousness case law for designs.

[1] See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).

[2] Cozy Comfort Co. LLC v. Individuals, Corps. Ltd. Liab. Companies, Partnerships, & Unincorporated Associations Identified on Schedule A to Complaint, No. 23-CV-16563, 2024 WL 2722625, at *3 (N.D. Ill. May 28, 2024).

[3] Id.

[4] Top Brand LLC et al v. Cozy Comfort Company, LLC et al, Civ. No. 2:21-cv-00597, Dkt. No. 433 at *3-4,  (D. Ariz. June 28, 2024).

[5] Id.