What you say to get your design patent can (and will) be used against you

In a landmark decision issued earlier this month, the U.S. Court of Appeals for the Federal Circuit reversed a $15.4 million jury verdict against Top Brand LLC and related entities, holding that Cozy Comfort Company was not entitled to an earlier finding of infringement of its U.S. Design Patent due to “prosecution history disclaimer” – arguments its prosecution counsel made during examination to get the patent issued. This is the first major decision addressing prosecution history estoppel in design patents since the Federal Circuit’s pivotal LKQ v. GM ruling in May 2024, which fundamentally altered the design patent landscape by subjecting design claims to the same obviousness scrutiny applied to utility patents.

With LKQ now requiring design patents to withstand obviousness challenges under the Graham v. John Deere framework, applicants are under increased pressure to distinguish their designs during prosecution. The Top Brand decision underscores the risk: arguments made to overcome prior art can later restrict enforceable claim scope—potentially eliminating infringement remedies altogether. For design-centric businesses, this dual threat of heightened invalidity risk and post-grant estoppel requires a disciplined and forward-looking prosecution strategy. In this case, during examination, Cozy Comfort argued visual distinctions over a prior art reference. Although these visual distinctions may have had little to do with the market appeal of Cozy Comfort’s products, the arguments effectively laid out a ‘safe zone’ for Top Brand to use those elements while avoiding infringement.

In this new environment, entrepreneurs need market-focused patent practitioners who can focus on the unique value proposition of your design while navigating the stricter obviousness standard, rather than merely arguing technical distinctions that may have no real impact for your customers. A practitioner who understands the business value of your product can help avoid unnecessary disclaimers and preserve the full scope of protection. Despite their traditionally narrower scope, design patents remain powerful tools—offering cost-effective protection, faster issuance, and access to remedies like disgorgement of infringer profits, as the initial award in this case demonstrates.

To learn how to implement an effective design patent strategy to protect the unique aesthetics of your products in light of LKQ and Top Brand, contact Timothy Snowden at Synchrony IP.

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