UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`LKQ Corporation and Keystone Automotive Industries, Inc.,
`
`Petitioners,
`
`v.
`
`GM Global Technology Operations LLC,
`
`Patent Owner.
`
`_________________
`
`IPR2020-00534
`U.S. Design Patent No. D797,625
`__________________________
`
`
`DECLARATION OF JASON C. HILL, IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Ex. 1043, LKQ v. GM
`IPR2020-00534
`
`
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`LKQ Corporation and Keystone Automotive Industries, Inc.,
`
`Petitioners,
`
`v.
`
`GM Global Technology Operations LLC,
`
`Patent Owner.
`
`_________________
`
`IPR2020-00534
`U.S. Design Patent No. D797,625
`__________________________
`
`
`DECLARATION OF JASON C. HILL, IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Ex. 1043, LKQ v. GM
`IPR2020-00534
`
`
`
`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`
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`I, Jason C. Hill, submit this declaration in support of Petitioners LKQ
`
`Corporation and Keystone Automotive Industries, Inc.’s Reply to Patent Owner’s
`
`Response in this Inter Partes Review proceeding of U.S. Design Patent No.
`
`D797,625 (the ’625 Patent”). In accordance with 28 U.S.C. § 1746, I declare under
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`penalty of perjury that the statements herein are true and correct to the best of my
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`knowledge, belief, recollection, and understanding. All statements made on
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`information and belief are believed to be true. I am over the age of eighteen, and, if
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`asked to do so, I could competently testify to the matters set forth herein.
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by LKQ Corporation and Keystone Automotive
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`Industries, Inc. (together “LKQ” or “Petitioner”), as an expert witness in this
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`proceeding. I previously submitted a declaration in support of LKQ’s Petition in
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`this proceeding, which was filed as Exhibit 1004. I am submitting this second
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`declaration in support of LKQ’s Reply to Patent Owner GM’s Response. This
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`declaration is based on my personal knowledge unless otherwise specified.
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`2.
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`It remains my opinion that the ’625 Patent is invalid as anticipated by
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`the fender design disclosed in U.S. Patent No. D773,340 (“Lian”) (Ex. 1006),
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`obvious in view of Lian, and further obvious in view of Lian in further view of the
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`teachings and suggestions of the closely related fender design disclosed in the “2010
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`Hyundai_Tucson” brochure submitted as Ex. 1007 (“Tucson”).
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`3.
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`In addition to the materials listed in my first declaration, Patent
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`Owner’s Response (Paper 17), and Patent Owner’s Exhibits 2002–2007, I have also
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`reviewed and relied upon the following materials:
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`• Exhibits 1017–1040, which consisted of the prior art exhibits cited by
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`Mr. Peters in his Declaration (Ex. 2004) in support of GM’s “crowded
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`field” theory;
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`• Exhibits 1041 and 1042, which I understand to comprise collages of
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`the side elevation views from each of Exhibits 1017–1040, as well as
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`the side elevation views of the ’625 Patent (Ex. 1001) and Lian (Ex.
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`1006); and
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`• Exhibit 1044, which is a transcript of the deposition of GM’s
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`declarant Mr. Thomas V. Peters.
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`4.
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`In addition to the above-stated materials provided, I have also relied on
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`my own education, training, experience and knowledge in the field of transportation
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`or automotive design and design patents.
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`5.
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`I may also consider additional documents and information that have not
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`yet been provided to or discovered by me should such documents and information
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`be brought to my attention after the date I submit this Declaration, and I reserve the
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`right to add to or amend my opinions in connection with the same.
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`6.
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`As before, the analysis in this Declaration is exemplary. Additional
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`reasons may support my conclusions, but they do not form my current analysis. The
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`fact that I do not address a particular reason does not imply that I would agree or
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`disagree with such additional reason.
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`7.
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`Also as before, I receive compensation at a rate of $375 per hour for
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`my time spent on this matter, except for any travel time, which is billed at one-half
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`of my hourly rate. I am also being reimbursed for reasonable and customary
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`expenses associated with my work on this matter. I have no financial interests in the
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`patents involved in this proceeding, and my compensation is not dependent on the
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`outcome of this proceeding. The conclusions I present are based on my own
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`judgment. I am not an employee of LKQ Corporation, Keystone Automotive
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`Industries, Inc., Irwin IP LLC, or any affiliated companies.
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`II. THE ORDINARY OBSERVER SHOULD BE CONSIDERED THE
`BUYER OF AN AUTOMOBILE BECAUSE A FENDER IS NOT
`DESIGNED OR ORNAMENTED FOR ANY VIEWING CONTEXT
`EXCEPT ON AN AUTOMOBILE.
`
`8.
`
`As an automotive designer, it makes little sense to consider the ordinary
`
`observer to view the fender in any context other than mounted on a vehicle because
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`vehicle fenders like that of the ’625 Patent are not designed to be viewed on their
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`own. A fender is not individually designed, and on its own only constitutes a
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`fragment of the design of an entire automobile. Further, the primary context for
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`which an automotive designer would design a vehicle is to be marketed and sold as
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`a vehicle. Not piecemeal as individual parts, as it might appear at a repair shop.
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`From a designer’s perspective, the only rational ordinary observer is the prospective
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`purchaser of a new vehicle, as that is the only purchaser for whose viewing the fender
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`is ornamented. Indeed, automobile buyers do not look at or buy a fender design
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`alone; from a design perspective, they purchase the flow and harmony of design
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`expressed on the product as a whole (i.e., the vehicle).
`
`9.
`
`However, I agree with the Board’s assessment that in the case of Lian
`
`and the ’625 Patent, the designs’ similarity is so striking that either ordinary observer
`
`considered here would find the designs substantially the same.
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`III. PATENT OWNER UNDERSTATES THE SKILL AND CAPABILITY
`OF THE DESIGNER OF ORDINARY SKILL IN THE ART BY
`FAILING TO ACKNOWLEDGE THE CONTEXT IN WHICH SUCH
`A DESIGNER WORKS.
`
`10.
`
`I understand that the Board has adopted LKQ’s definition of the
`
`designer of ordinary skill in the art (“DOSA”): an individual who has at least an
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`undergraduate degree in transportation or automotive design and work experience in
`
`the field of transportation or automotive design, or someone who has several years’
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`work experience in transportation or automotive design. I continue to believe this is
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`an appropriate characterization of the DOSA’s qualifications.
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
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`11.
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`I further understand that the law considers the DOSA to be a designer
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`who designs articles of the type involved. For the fender design ’625 Patent, this
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`DOSA would be an automobile designer.
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`12. Although Patent Owner’s proposed definition of the DOSA’s
`
`qualifications did not seem substantially different than that advanced in my prior
`
`declaration, its positions in its Response, as well as Mr. Peters’ testimony, suggest
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`that, just as it did in the earlier IPR2020-00064 proceeding, Patent Owner has not
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`accorded the DOSA an appropriate degree of skill and capability. From their
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`positions in this proceeding, GM and Mr. Peters view the “ordinary designer” as a
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`mere automaton, incapable of imagination. The ordinary designer is still a skilled
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`design professional, with the creativity that would be expected of such a professional
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`and the capability to envision solutions to at least routine problems encountered in
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`the field of automotive design.
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`13. For example, I find unrealistic Patent Owner’s and Mr. Peters’ assertion
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`that an ordinary designer would not have thought it obvious modify the features of
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`Lian based on the suggestions of the Tucson even though the designs are directed to
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`similar-appearing fenders on similar-appearing vehicles of identical class.
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`Designers routinely analyze other automobile designs on the market as part of the
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`vehicle design process, and it would have been particularly obvious for a designer
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`considering modifying the design of Lian to look to vehicles as similar as the Tucson.
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`14. When considering the knowledge, skill, and capabilities of the ordinary
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`designer who is designing automobile exteriors, it is important to bear in mind that
`
`this person would ordinarily work at an automobile company. The ordinary
`
`designer’s skill and abilities cannot be properly gauged without considering the
`
`studio environment in which they perform their design work.
`
`15. Designers having the ordinary designer’s skill and qualifications,
`
`essentially, junior automobile designers, ordinarily and typically work within an
`
`extensive organizational structure, and develop their designs using a sophisticated
`
`and highly iterative design process. Such a junior designer would receive input,
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`guidance, and direction from a variety of sources, including but not limited to senior
`
`and more experienced designers, to whom they would typically report, design and
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`business executives, and marketing professionals.
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`16. More senior supervising designers or executives are often responsible
`
`for a multitude of vehicle models or brands, and it is typical for such senior personnel
`
`to provide guidance and direction to junior designers, such as the ordinary designer,
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`in order to align the designer’s work with the brand’s existing designs and themes.
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`I understand that Mr. Peters performed precisely such a role at GM, and this is typical
`
`and common in the automotive industry. The ordinary designer also has the benefit
`
`of supporting professionals, such as digital artists and modelers, and clay sculptors
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`D797,625 S
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`who help the designer realize, analyze, and iterate on their design ideas and realize
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`their design concepts.
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`17. This supporting business infrastructure further provides the designer
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`with resources, guidance, insights, and direction regarding design trends and
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`consumer preferences and business- and manufacturing-related considerations.
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`18. The ordinary designer works in the context of a larger organizational
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`framework and support structure. The ordinary designer cannot be separated from
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`the design studio in which they operate if one is to realistically understand their
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`capabilities.
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`19. Although I disagree with Patent Owner’s understatement of the degree
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`of skill and capability a designer of ordinary skill in the art would possess and believe
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`the ordinary designer should be considered integrally with the studio environment
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`in which such a designer would work, this issue is not decisive of the obviousness
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`of the ’625 Patent. The claimed design would have been obvious to a DOSA even
`
`assuming the DOSA were working alone and without the benefit of the supporting
`
`infrastructure or resources to which such a designer would realistically have access.
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`IV. LIAN ALONE ANTICIPATES AND RENDERS OBVIOUS THE ’625
`PATENT.
`
`A. A myriad of visual similarities connect the ’625 Patent and Lian,
`giving them substantially the same overall visual appearance.
`
`20. An ordinary observer (to the extent they perceived the design in a
`
`sufficient level of detail) or designer considering the drawings of each of the ’625
`
`Patent and Lian would have concluded that the following features of each were either
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`identical or near-identical:
`
`A.
`
`The shape, outline, and contouring of the protrusion, including:
`
`i.
`
`ii.
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`the curvature of its top edge when viewed in side elevation,
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`a substantially right-angular joint with its trailing edge,
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`iii.
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`the length and angle of its trailing edge,
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`iv.
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`its contouring when viewed in front elevation including an
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`upwardly and inwardly angled face that inflects further inwards
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`as it approaches the top, and
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`v.
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`the contouring of its actual top edge portions (i.e. the narrow
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`inwardly-folded strip near the windshield);
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`B.
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`shape, angle, and position of U-shaped notches, including that each
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`comprises a curve that tightens towards its center, similar
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`dimensions of the U-shaped notch in length and height, and a similar
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`radius of its internal arc relative to the rest of the fender;
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`C.
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`shape and contour of their upper perimeters as they extend from
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`protrusion to headlamp aperture and interface with the hood cut line,
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`including:
`
`i.
`
`the downwardly sloping, upwardly curved segment flowing
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`forwards from the front of the protrusion, and
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`ii.
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`the middle section having a subtle downward slope and curvature
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`when viewed from the side;
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`D.
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`the s-curving transition from the hood cut line to the headlamp
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`aperture that curves and slants laterally outwards, then turns
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`downwards at the front terminus of the first crease to slope
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`downwards and forwards into the headlamp aperture;
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`E.
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`the headlamp aperture, which consists of two subtly defined
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`segments: a shorter segment that slopes more steeply downwards
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`and forwards, and then rounds into a longer segment that slopes
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`downwards and forwards at a shallower angle towards a pointed
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`front end of the fender;
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`F.
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`the acute intersection angle of the headlamp aperture with the
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`slanted cut at the lower-front edge of the fender, forming a front
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`terminus having a virtually identical appearance;
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`G.
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`laterally convex sculpture towards front, creating a full surface that,
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`when viewed from the front, expresses itself as substantially flat and
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`three-dimensionally angled inwards at the top and front in the same
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`manner;
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`H.
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`slanted cuts oriented at similar angles, forming similar angles with
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`each of the headlamp aperture, wheel arch flat, and wheel arch, and
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`having similar length and proportions versus both the size of the
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`fender and the width of the wheel arch flat;
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`I.
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`a nearly identical obtuse intersection angle between the slanted cuts
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`and the point formed at the front lower corner of each fender
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`design’s respective wheel arch and wheel arch flat;
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`J.
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`wheel arch flats having nearly identical width, contour, and inwards
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`bevel angle;
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`K.
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`lower rear termini that, at the location on Lian corresponding to the
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`point where the claimed design terminates and in terms of width,
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`shape, and contouring up to the point at which the wheel arch flats
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`terminate;
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`L.
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`curved door-cut lines that accelerate rearwards as they progress
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`upwards;
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`D797,625 S
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`M.
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`first creases having a nearly identical appearance both in terms of
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`shape, location, length, and contouring;
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`N.
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`inward folds above first creases running the full length of the first
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`crease and folding material towards the horizontal to interface with
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`the hood;
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`O.
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`first creases starting lower at the front than their rear termination,
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`with gentle downward curvature and undercuts beneath;
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`P.
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`convex sculpting above the wheel arch flats and extending upwards
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`towards the first creases;
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`Q.
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`second creases having a nearly identical appearance in terms of
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`shape, location, angle, length, curvature, and contouring, including
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`an undercut beneath the second crease;
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`R.
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`a zone of concavity between first and second creases inflecting
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`between the rear edge of the fender at a point beneath the first crease
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`and extending forwards and downwards;
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`S.
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`a wide-line oriented laterally and sloping downwardly, located
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`beneath the respective second creases and situated vertically slightly
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`less than halfway between the second crease and the rocker panel;
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`T.
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`nearly identical front elevation profiles and outlines, including in
`
`terms of contouring, sculpting, shape, and the appearance of all of
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`the respective fenders’ perimeter edges, including the angle of the
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`wheel arch versus the vertical, and the change of angle at the top of
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`the wheel arch as the fender flows upwards and inwards towards the
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`protrusion; and
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`U.
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`nearly identical top view profiles and outlines, including in terms of
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`contouring, sculpting, and the appearance of all of the respective
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`fenders’ perimeter edges, including in tapering from rear to front, a
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`wide-line along the wheel arch, and first and second creases that
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`were visible from the top.
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`’625 PATENT
`CLAIMED DESIGN
`
`LIAN (EX. 1006)
`PRIOR ART
`
`
`
`
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`Ex. 1001 FIG. 4 (annotated)
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`Ex. 1006 FIG. 4 (annotated)
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
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`’625 PATENT
`CLAIMED DESIGN
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`LIAN (EX. 1006)
`PRIOR ART
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`
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`
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`Ex. 1001 FIG. 1 (annotated)
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`Ex. 1006 FIG. 1 (annotated)
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`Ex. 1001 FIG. 5 (annotated)
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`Ex. 1006 FIG. 5 (annotated)
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`
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`Ex. 1001 FIG. 1 (annotated)
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`Ex. 1006 FIG. 7 (annotated)
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`21. Faced with such a strikingly similar fender design, an ordinary observer
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`would more likely than not have perceived the fenders to be substantially the same.
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`The fenders are alike in all of the most graphically influential respects, including in
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`their headlamp cut-outs and the S-curved transitions leading to them, the distinctive
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`look formed by the interface of the S-curved transition with the fenders’ respective
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`first creases, their patterns of contouring from the top edge interfacing with the hood
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`into a set of two downwardly sloped and downwardly curving creases, and the
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`shapes and sculpting of their respective protrusions.
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`22. Likewise, a designer of ordinary skill in the art would, at the very least,
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`have found the designs basically the same based upon all of those similarities. Such
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`a designer, whom I understand to be aware of the prior art, would have recognized
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`that the ’625 Patent is unusually and strikingly similar to Lian. Further, while Lian
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`is not identical to the claimed design in the shape of its wheel arch and lower rear
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`terminus, it differs only in routine respects. As further explained in my prior
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`declaration and below, a DOSA would have found it obvious to modify Lian to
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`incorporate a circular wheel arch and a rear lower rear terminus at the rocker panel
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`based on such a designer’s ordinary knowledge and skill alone, as a circular wheel
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`arch is one of the most prolific and obvious wheel arch designs. Further, there are
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`only a finite number of ways to resolve the lower rear end of the fender (terminate
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`at the rocker panel, as the claimed design does; proceed straight to the bottom of the
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`vehicle; or hook back towards the rocker panel, as Lian does). As previously
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`explained, a DOSA, and especially one looking to adapt Lian for the United States
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`market, would have found it obvious to cause Lian’s fender to terminate above the
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`rocker panel to enable the use of a darker colored rocker, creating the illusion of
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`greater height and ground clearance.
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`B. GM’s “Crowded Field” References are far more different from
`the ’625 Patent than Lian.
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`23. Having reviewed the references Patent Owner and Mr. Peters identified
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`in support of their “crowded field” theory, Exs. 1017–1040, it is my opinion that
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`none are as similar in overall visual appearance to the ’625 Patent as Lian.
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`24. Several of these “crowded field” references either lack features of the
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`’625 Patent altogether or present those features in a different visual appearance than
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`the claimed design does. Further, not a single one of these “crowded field”
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`references presents the constellation of all of the ’625 Patent’s features on a single
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`design, much less all with the degree of similarity of visual appearance evident in
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`Lian. This is evident in the below collage comparing GM’s six selected “crowded
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`field” references against the ’625 Patent and Lian:
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` Ex. 1032. Lian discloses a more identical (1) slanted cut; (2) headlamp aperture;
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`(3) upper edge of the fender; (4) first crease; (5) second crease; (6) concavity line;
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`(7) wheel arch flat; and (8) surface contour pattern than any of the “crowding”
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`references, and (9) only one, the ’798 Patent, discloses a protrusion that is arguably
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`as similar as Lian’s. I agree with Mr. Peters in his description of the respects in
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`Declaration of Jason C. Hill in Support of Petitioner’s Reply
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`which each of these “crowding” references differed from Lian, as set forth on pages
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`140-153 of his deposition, Ex. 1044, and further agree with Mr. Peters that none of
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`GM’s additional 18 cited “crowding” references are closer in overall visual
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`appearance than Lian to the ’625 Patent. Further, even if a crowded field would
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`attune an ordinary observer aware of the prior art or a DOSA to differences, there is
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`no reason that observer would pay particular attention to the specific, nuanced
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`distinctions GM mentioned in its Response; if anything, it would render the striking
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`similarity of the two fenders even more remarkable.
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`C. A “Crowded Field” Makes More Designs Obvious; Not Less.
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`25.
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`I understand Patent Owner to have previously argued that in what
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`Patent Owner terms a “crowded field,” which I understand to mean a situation where
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`there are a vast number of prior art designs in a field, an ordinary designer will be
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`more attuned to recognizing minor and nuanced differences between designs, and
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`that because of these nuanced distinctions, such an ordinary designer would find
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`even designs with similar elements not to create the same overall visual impression.
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`26.
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`I am not an attorney and express no opinion regarding the legal aspects
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`of Patent Owner’s argument. However, as a professional designer, it is my opinion
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`that Patent Owner’s theory arrives at the wrong conclusion, and one inconsistent
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`with how I would understand the term “obvious.”
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`27. Although I agree that ordinary designers of articles such as the fender
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`design at issue here do notice nuanced design elements and differences that lay
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`observers might miss, that designer would have the knowledge and the judgment to
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`differentiate between distinctions that have a meaningful impact on the overall visual
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`appearance of a design and those that do not. This is regardless of the number of
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`similar prior art references known to that designer. The capacity to parse through
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`the multitude of elements and details making up the design to understand the visual
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`appearance the design creates as a whole is an essential skill for all designers, and
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`especially automobile exterior designers.
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`28. Further, it is my opinion that if an ordinary designer is aware of a
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`greater number of similar prior art designs, that could only enhance the designs and
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`modifications to designs that the designer can envision. A designer in a more
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`“crowded field” has a larger pool of ideas and inspiration to draw upon when
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`considering how to revise or modify an existing design, and thus should find a
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`greater swathe of designs to be “obvious” than a designer without the benefit of that
`
`knowledge.
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`29. Finally and regardless, even if the “crowded field” were assumed to
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`attune a DOSA to differences, that would still be irrelevant to the test for obviousness
`
`since a DOSA can notice differences, yet still conclude that two designs are basically
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`the same or even convey the same overall visual impression regardless of those
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`differences, as is the case here.
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`D. None of Patent Owner’s Purported Distinctions Avoid
`Anticipation or Obviousness.
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`30. Neither Patent Owner’s Response, nor Mr. Peters’ declaration
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`compares the overall visual impressions created by the ’625 Patent and Lian.
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`Instead, both focus exclusively upon small, often illusory differences, ignoring the
`
`clear similarities between the two designs, such as those noted in Paragraph 20,
`
`above.
`
`1.
`
`None of Lian’s door-cut line, protrusion, inflection line, or
`pattern of creases and sculpture meaningfully differ from
`the ’625 Patent.
`
`31. First, as to the door cut line, contrary to GM’s assertions, Lian’s door
`
`cut line is not angular; but arcuate with the arch at the top accelerating. The ’625
`
`Patent’s door cut line is not uniformly arcuate either and exhibits rearwards
`
`acceleration at the top. As shown below, these door-cut lines are substantially
`
`similar:
`
`20
`
`
`
`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
`
`’625 PATENT
`CLAIMED DESIGN
`
`LIAN (EX. 1006)
`PRIOR ART
`
`
`
`
`
`
`
`
`
`Ex. 1001, FIG. 4
`
`Ex. 1001, FIG. 1
`
`Ex. 1006, FIG. 4 Ex. 1006, FIG. 7
`
`
`
`
`
`Ex. 1001, FIG. 5
`
`Ex. 1006, FIG. 5
`
`
`
`
`
`32. The respective tops of the door cut lines are extremely similar, with
`
`Lian exhibiting slightly greater rearwards acceleration and a slightly more sheer
`
`upper segment than the ’625 Patent. However, this is not the type of difference that
`
`I would expect an ordinary observer to notice as the upper parts of each design’s
`
`door cut line is exhibiting the same behavior; just not to exactly the same extent. For
`
`that same reason, an ordinary designer would still have found the fenders basically
`
`the same despite such a difference of degree, since such a DOSA would have
`
`recognized that the fenders were exhibiting extremely similar features. Both door
`
`cut lines then flow to an arcuate segment as they cross their respective second
`
`21
`
`
`
`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
`
`
`creases, another similarity that would have occluded any difference to the ordinary
`
`observer, and that would have reinforced the designs’ similarity to an ordinary
`
`designer. Finally, both designs arc back in an almost identical manner as they flow
`
`downwards until the ’625 Patent’s fender terminates at its rocker panel, and Lian’s
`
`fender flows into its rearward hook at the level of the rocker panel.
`
`33. The difference between the two designs’ door-cut lines is so minor that
`
`an ordinary observer is unlikely to even notice it. Further, even if the ordinary
`
`observer could observe the difference when focusing on the door-cut line in
`
`isolation, it would still have no impact on such an observer’s overall visual
`
`impression of the fender design when considering the design as a whole, given such
`
`time as an ordinary purchaser would give. Likewise, a DOSA would find the door-
`
`cut lines basically the same even in isolation, despite the minor difference in
`
`rearward acceleration, and considering the fender designs as a whole, would not find
`
`the difference to distinguish the overall visual impression created by each design.
`
`Miniscule differences in detail, such as the depth to which the door cut line advances
`
`beyond the U-shaped notch or the height at which its apex manifests in the side
`
`elevation view would not be noticeable to an ordinary observer. Further, they would
`
`not have caused an ordinary designer to find the designs different because such a
`
`designer would have recognized that the fenders were nonetheless exhibiting nearly
`
`identical features. These conclusions are reinforced by the identicality of the rear
`
`22
`
`
`
`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
`
`
`edge when viewed in perspective view and substantial similarity when viewed from
`
`above.
`
`34.
`
`Indeed, designers do not focus extensively on the specific shape of
`
`door-cut lines because they are mainly functional parting lines that carry little visual
`
`significance and are intended to disappear rather than stand out in the design of the
`
`vehicle. Because they are vertically oriented elements, they are often glossed over
`
`by observers. This is intentional, as vehicle designs typically cause the viewer’s
`
`gaze to flow along the vehicle’s length. This places greater visual emphasis on
`
`horizontal rather than vertical design elements, and observers tend to discard vertical
`
`elements that would interrupt that intended flow. Thus, DOSAs would be aware that
`
`the specific shape of the door-cut part line is often dictated by engineering
`
`considerations, such as the placement locations of door pivot points along the
`
`vehicle’s frame, throw, and the resultant angle of the door (as it would affect weight
`
`balance).
`
`35. Second, contrary to Patent Owner’s assertions in its Response, the top
`
`surface of Lian’s protrusion does not distinguish the designs either from the
`
`perspective of an ordinary observer or a DOSA. Preliminarily, Patent Owner
`
`exaggerates the extent of this purported difference by incorrectly annotating part of
`
`the side face of Lian’s protrusion as though it were the top edge:
`
`23
`
`
`
`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
`
`
`
`
`
`Paper 17, at 27. As Lian’s Figure 5 makes apparent, the design already has a defined
`
`top edge. Patent Owner had previously taken note of and even separately annotated
`
`precisely that top surface of the protrusion in its Preliminary Response (see yellow
`
`below, but note that the bottom green box line is actually fabricated):
`
`Paper 9, Patent Owner’s Preliminary Response, at 23 (V labeling added). As Patent
`
`Owner’s own annotation shows, the top surface of Lian’s protrusion looks extremely
`
`
`
`24
`
`
`
`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
`
`
`similar to that of the ’625 Patent’s protrusion. The protrusions of Lian and the ’625
`
`Patent are nearly identical. Considered from all views, the similarity of the
`
`protrusions is apparent:
`
`’625 PATENT
`CLAIMED DESIGN
`
`LIAN (EX. 1006)
`PRIOR ART
`
`Ex. 1001 FIG. 4
`
`Ex. 1001 FIG. 1
`
`
`
`
`
`
`
`Ex. 1006 FIG. 4
`
`Ex. 1006 FIG. 1
`
`
`
`
`
`
`
`Ex. 1001 FIG. 5
`
`Ex. 1006 FIG. 5
`
`25
`
`
`
`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
`
`’625 PATENT
`CLAIMED DESIGN
`
`LIAN (EX. 1006)
`PRIOR ART
`
`
`
`
`
`Ex. 1001 FIG. 1
`
`Ex. 1006 FIG. 7
`
`
`
`
`
`36. These conclusions are reinforced by the identicality of the rear edge
`
`when viewed in perspective view and substantial similarity when viewed from
`
`above. Both designs’ protrusions feature arcing top edges of substantially consistent
`
`thickness (V) and formed via an upwardly curved crease, although upon very close
`
`inspection, Lian’s appears to slightly taper as it progresses rearwards. However,
`
`even considering this surface in isolation, it is unlikely that an ordinary observer
`
`would identify a difference between the two designs, and moreover, even if they did,
`
`they would still find the protrusions to be substantially the same, and any difference
`
`would have no effect on the overall visual impression created by the fender as a
`
`whole due to how small a portion of the design is affected, its location, and the
`
`similarities between the protrusion top surfaces notwithstanding any minor
`
`differences. Likewise, a DOSA would have found even the tops of the protrusions
`
`basically the same, and would not have found any difference between the top
`
`26
`
`
`
`Declaration of Jason C. Hill in Support of Petitioner’s Reply
`D797,625 S
`
`
`surfaces to distinguish the overall visual appearances of even the protrusions in
`
`isolation, much less the designs as a whole.
`
`37. The intermittent crease that Patent Owner relies upon to manufacture
`
`what it now argues to be the top edge of Lian’s protrusion does not create a new
`
`surface; it merely causes an inflection across part of the protrusion’s surface before
`
`fading halfway down the protrusion. Both the area of the protrusion face above and
`
`below that crease should be considered to be a single surface.
`
`38.
`
` Further, the intermittent crease does not impact the observer’s gaze.
`
`As a viewer’s gaze tracks rearwards along the fender, it would be drawn upwards
`
`along Lian’s A-pillar just as it would up the claimed design’s embodiment’s A-pillar
`
`(to the extent this can
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