Design Patents Post-LKQ v. GM: Navigating New Obviousness Test for Design Patents

Mr. Carani is a Shareholder at McAndrews and has been at the firm since 1995. He practices in all areas of intellectual property law with a particular emphasis on design law, which regards the protection and enforcement of rights in the appearance of consumer products. Mr. Carani has extensive experience litigating design patent cases, including representations before U.S. district courts, the Federal Circuit, the U.S. Supreme Court, and the International Trade Commission. In each year since 2019, he has been named to the IAM Strategy 300: The World’s Leading IP Strategists list, with IAM magazine noting that he is “one of the world’s leading design patent strategists,” one of the U.S.’s “pre-eminent design law experts,” and “widely regarded as one of the country’s premier design patent lawyers.” In 2023, in Columbia Sportswear v. Seirus, Mr. Carani successfully argued a case of first impression before the Federal Circuit Court of Appeals, creating new law on the issue of the proper scope of comparison prior art used in the design patent infringement analysis. He has extensive experience in creating valuable design right portfolios. He represents some of the world’s most design-centric companies, including the top filer of U.S. design patents. Mr. Carani has procured thousands of strategic design rights, both in the U.S. and in over 70 countries around the world. He counsels a wide range of clients (big and small) on design protection and enforcement issues and is often called upon to render infringement, validity, and design-around opinions.

Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining and enforcing IP rights, she has a deep understanding of utility and design patents, trademarks, and copyrights. Ms. Durkin has been an Adjunct Professor at George Mason University Law School and has spoken internationally on topics such as the interplay between design patents and trade dress, and protection of user interface and the user experience. She is currently a Vice Chair of the Industrial Designs Committee of IP Section of the ABA.

Both nationally and internationally, Mr. Katz is considered one of the premier practitioners in the field of industrial designs, leading the way in the procurement and enforcement of design patents. On behalf of the firm’s clients, he has helped procure more than 10,000 design patents in the U.S. and more than 30,000 design patents/registrations outside the U.S. and has helped to successfully enforce over 100 design patents. Leaders from foreign design patent offices have consulted with him regarding industrial design policies, and he has served as an expert in design patent litigations. Mr. Katz holds leadership positions in several professional organizations, including ABA, AIPLA, FICPI and INTA. He is the past Chair of INTA’s Designs Committee and Vice President of FICPI’s U.S. Section. For the ABA Section of Intellectual Property Law, he currently serves as Liaison to FICPI. He also serves as a member of the Industrial Designs working group of the AIPLA Special Committee on Legislation. Mr. Katz is a former Chair of the Industrial Design Section for both FICPI and AIPLA, and also a member of IDSA and IPO.