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
`__________________________
`
`
`PETITIONERS’ REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`__________________________
`
`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
`__________________________
`
`
`PETITIONERS’ REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`IPR2020-00534
`D797,625 S
`
`TABLE OF CONTENTS
`
`LEGAL BACKGROUND ............................................................................. 3
`
`I.
`
`A. Anticipation .......................................................................................... 3
`
`B. Obviousness .......................................................................................... 3
`
`II. ARGUMENT .................................................................................................. 5
`
`A.
`
`The Ordinary Observer Would Have Found Lian’s Disclosed
`Fender Design Substantially the Same as the Claimed Design, and
`a DOSA Would Have Found Lian Alone Obviates the Claimed
`Design.................................................................................................... 5
`
`1.
`
`2.
`
`Neither GM, nor its declarant, addressed the overall visual
`similarity of Lian and the ’625 Patent or weighed those
`similarities against the differences. ............................................. 5
`
`GM’s purported differences fail to distinguish Lian from the ’625
`Patent for either anticipation or obviousness. ...........................10
`
`3.
`
`GM’s “crowded field” theory lacks support in fact and law. ...23
`
`In the Alternative, the Tucson Suggests Changes that Would
`Render Lian Virtually Identical to the Claimed Design in Every
`Respect. ...............................................................................................27
`
`LKQ’s Expert Declarant Testimony is Well-Supported, Whereas
`GM’s was Conclusory and Entitled No Weight. ............................31
`
`1.
`
`2.
`
`LKQ’s experts declarations were appropriately prepared, and
`accurately reflect the experts’ opinions. ...................................31
`
`LKQ’s experts’ declarations are not conclusory or “ipse dixit”
`declarations, but GM’s expert’s declaration is. ........................32
`
`B.
`
`C.
`
`
`
`
`
`
`
`i
`
`
`
`IPR2020-00534
`D797,625 S
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Arminak & Assocs. v. Saint-Gobain Calmar,
`424 F. Supp. 2d. 1188 (S.D. Cal. 2006) ................................................................. 5
`
`Crocs v. International Trade Comm'n,
`598 F.3d 1294 (Fed. Cir. 2010) .............................................................................. 7
`
`Durling v. Spectrum Furniture Co.,
`101 F.3d 100 (Fed. Cir. 1996) ................................................................................ 4
`
`Egyptian Goddess, Inc. v. Swisa, Inc.,
`543 F.3d 665 (Fed. Cir. 2008) (en banc) ................................................ 20, 23, 24
`
`Gorham v. White,
`81 U.S. 511 (1871) .............................................................................................3, 6
`
`Gruber ex rel. Gruber v. Sec. of Health and Human Services,
`91 Fed. Cl. 773 (2010) .........................................................................................31
`
`In re Harvey,
`12 F.3d 1061 (Fed. Cir. 1993) ....................................................................... 20, 24
`
`In re Nalbandian,
`661 F.2d 1214, 1217-18 (C.C.P.A. 1981) ........................................................4, 13
`
`In re Rosen,
`673 F.2d 388 (CCPA 1982) ................................................................................... 4
`
`Int’l Seaway v. Walgreens,
`589 F.3d 1233 (Fed. Cir. 2008) .............................................................................. 3
`
`Jore Corp. v. Kouvato, Inc.,
`117 Fed.Appx. 761 (Fed. Cir. 2005) ................................................................4, 13
`
`L.A. Gear, Inc. v. Thom McAn Shoe Co.,
`988 F.2d 1117 (Fed. Cir. 1993) ............................................................................27
`
`MRC Innovations v. Hunter Mfg., LLP,
`747 F.3d 1326 (Fed. Cir. 2014) ................................................................. 4, 13, 27
`
`ii
`
`
`
`IPR2020-00534
`D797,625 S
`
`Pac. Coast Marine Windshields v. Malibu Boats,
`739 F.3d 694 (Fed. Cir. 2014) ................................................................................ 3
`
`Premier Gem Corp. v. Wing Yee Gems & Jewelry Limited,
`IPR2016-00434, Paper 9 (PTAB Jul. 5, 2016) ....................................................27
`
`Smith v. Whitman Saddle Co.,
`148 U.S. 674 (1893) ............................................................................................... 3
`
`Titan Tire Corp. v. Case New Holland, Inc.,
`566 F.3d 1372 (Fed. Cir. 2009) .............................................................................. 4
`
`TQ Delta v. Cisco Systems,
`942 F.3d 1352 (Fed. Cir. 2019) ............................................................................26
`
`
`
`RULES
`
`FED. R. CIV. P. 26(a)(2)(B) ......................................................................................31
`
`
`
`
`
`
`
`iii
`
`
`
`IPR2020-00534
`D797,625 S
`
`
`
`
`
`Exhibit
`No.
`
`TABLE OF PETITIONER’S EXHIBITS
`
`Description
`
`1001
`
`U.S. Patent No. D797,625 (“the ’625 Patent”).
`
`1002
`
`File History for U.S. Patent No. D797,625.
`
`1004
`
`Declaration of James M. Gandy, dated February 7, 2020.
`
`1004
`
`Declaration of Jason C. Hill, dated February 7, 2020.
`
`1005
`
`2018 Chevrolet Equinox Brochure, http://www.auto-
`brochures.com/makes/Chevrolet/Equinox/Chevrolet_US%20Equinox
`_2018.pdf.
`
`1006
`
`U.S. Design Patent No. D773,340 “Lian.”
`
`1007
`
`1008
`
`2010 Hyundai Tucson Brochure, http://www.auto-
`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucson_201
`0.pdf, archived on April 2, 2014 by Internet Archive organization’s
`“Wayback Machine” at
`https://web.archive.org/web/20140402003154/http://www.auto-
`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucson_201
`0.pdf.
`
`Exemplary images of the 2010 Hyundai Tucson Brochure,
`http://www.auto-
`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucson_201
`0.pdf, archived on April 2, 2014 by Internet Archive organization’s
`“Wayback Machine” at
`https://web.archive.org/web/20140402003154/http://www.auto-
`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucson_201
`0.pdf.
`
`1009
`
`File History of U.S. Patent No. D773,340 “Lian”
`
`iv
`
`
`
`IPR2020-00534
`D797,625 S
`
`Exhibit
`No.
`
`1010
`
`1011
`
`1012
`
`Description
`
`File History of U.S. Pat. App. Ser. No. 29/516,319 (“the ’319
`Application”)
`
`Source code of Auto-brochures.com, http://www.auto-
`brochures.com/, archived on March 13, 2014 by Internet Archive
`organization’s “Wayback Machine” at
`https://web.archive.org/web/20140313222453/http://www.auto-
`brochures.com/.
`
`Source code of Auto-brochures.com, http://www.auto-
`brochures.com/, archived on May 17, 2014 by Internet Archive
`organization’s “Wayback Machine” at
`https://web.archive.org/web/20140517005107/http://www.auto-
`brochures.com/.
`
`1013
`
`Declaration of Margaret Herrmann, dated February 6, 2020.
`
`1014
`
`Curriculum Vitae of James M. Gandy.
`
`1015
`
`Curriculum Vitae of Jason C. Hill
`
`1016
`
`Declaration of Iftekhar A. Zaim in support of Petitioner’s Unopposed
`Motion for Admission Pro Hac Vice under 37 C.F.R. § 42.10
`
`1017
`
`U.S. Design Patent No. D766,149
`
`1018
`
`U.S. Design Patent No. D704,607
`
`1019
`
`U.S. Design Patent No. D763,753
`
`1020
`
`U.S. Design Patent No. D686,536
`
`1021
`
`U.S. Design Patent No. D692,798
`
`1022
`
`U.S. Design Patent No. D762,151
`
`1023
`
`U.S. Design Patent No. D713,298
`
`1024
`
`U.S. Design Patent No. D764,362
`
`v
`
`
`
`IPR2020-00534
`D797,625 S
`
`Exhibit
`No.
`
`Description
`
`1025
`
`U.S. Design Patent No. D785,521
`
`1026
`
`U.S. Design Patent No. D739,306
`
`1027
`
`U.S. Design Patent No. D722,282
`
`1028
`
`U.S. Design Patent No. D784,857
`
`1029
`
`U.S. Design Patent No. D613,645
`
`1030
`
`U.S. Design Patent No. D611,387
`
`1031
`
`U.S. Design Patent No. D704,103
`
`1032
`
`U.S. Design Patent No. D717,696
`
`1033
`
`U.S. Design Patent No. D692,798
`
`1034
`
`U.S. Design Patent No. D680,909
`
`1035
`
`U.S. Design Patent No. D615,458
`
`1036
`
`U.S. Design Patent No. D699,629
`
`1037
`
`U.S. Design Patent No. D781,180
`
`1038
`
`U.S. Design Patent No. D635,488
`
`1039
`
`U.S. Design Patent No. D773,361
`
`1040
`
`U.S. Design Patent No. D699,649
`
`1041
`
`Collage #1 of GM “Crowded Field” Art
`
`1042
`
`Collage #2 of GM “Crowded Field” Art
`
`1043
`
`Declaration of Jason C. Hill in Support of Petitioners’ Reply to Patent
`Owner’s Response
`
`1044
`
`Transcript of Deposition of Thomas V. Peters in IPR2020-000534
`
`vi
`
`
`
`IPR2020-00534
`D797,625 S
`
`Exhibit
`No.
`
`1045
`
`Description
`
`Declaration of Barry F. Irwin, P.C., in Support of Petitioners’ Reply
`to Patent Owner’s Response
`
`vii
`
`
`
`IPR2020-00534
`D797,625 S
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`Reading GM’s Response, one would presume the claimed fender and the
`
`primary reference, U.S. Design Patent No. D773,340 (“Lian”), are nothing alike.
`
`However, GM’s overstatements cannot supersede what is plainly visible to the eye—
`
`the designs are nearly identical:
`
`’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
`
`1
`
`
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`IPR2020-00534
`D797,625 S
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`’625 PATENT
`CLAIMED DESIGN
`
`LIAN (EX. 1006)
`PRIOR ART
`
`
`
`
`
`Ex. 1001 FIG. 1
`
`Ex. 1006 FIG. 7
`
`
`
`To an ordinary observer, the designs create substantially the same overall
`
`visual impression: their overwhelming similarities obscure any minor differences.
`
`GM’s efforts to magnify these differences via its “crowded field” theory have no
`
`basis in law or fact. Likewise, on obviousness, GM’s Response applies the wrong
`
`test, never once comparing the designs as a whole, and ignores the obviousness to a
`
`designer of ordinary skill in the art (“DOSA”) to reshape Lian’s wheel arch as a
`
`simple arc and to terminate the fender at a rocker panel rather than extending it to
`
`the bottom, as both design choices are routine.
`
`
`
`Finally, GM’s desperate attacks on LKQ’s witnesses, asserting that their
`
`reports do not represent their opinions and insinuating that the reports are somehow
`
`plagiarized, are meritless.
`
`2
`
`
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`IPR2020-00534
`D797,625 S
`
`I.
`
`LEGAL BACKGROUND
`
`A. Anticipation
`
`The ordinary observer test, “the sole test for anticipation,” finds a design
`
`anticipated by another if they are substantially the same from “the eye of an ordinary
`
`observer[.]” Int’l Seaway v. Walgreens, 589 F.3d 1233, 1239–40 (Fed. Cir. 2008)
`
`(quoting Gorham v. White, 81 U.S. 511, 528 (1871)); accord Smith v. Whitman
`
`Saddle Co., 148 U.S. 674 (1893) (“the test is the eye of an ordinary observer, the
`
`eyes of men generally, of observers of ordinary acuteness, bringing to the
`
`examination of the article upon which the design has been placed that degree of
`
`observation which men of ordinary intelligence give.”). The ordinary observer is
`
`not a prospective purchaser of a replacement fender, much less an intermediate
`
`purchaser (i.e. commercial buyer), but the prospective purchaser of a vehicle.
`
`Vehicles (including their fenders) are designed to be viewed by prospective
`
`automobile purchasers. Ex. 1044 (Transcript of Deposition of Thomas V. Peters)
`
`(“Peters”) at 35-36, 97; Pac. Coast Marine Windshields v. Malibu Boats, 739 F.3d
`
`694, 701-702 (Fed. Cir. 2014); Ex. 1043 (Declaration of Jason C. Hill in Support of
`
`Petitioners’ Reply) (“Hill”) ¶¶8-9.
`
`B. Obviousness
`
`The “ultimate inquiry under section 103 is whether the claimed design would
`
`have been obvious to a designer of ordinary skill who designs articles of the type
`
`3
`
`
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`IPR2020-00534
`D797,625 S
`
`involved.” MRC Innovations v. Hunter Mfg., 747 F.3d 1326, 1331 (Fed. Cir. 2014).
`
`Obviousness may be found based upon the disclosures, teachings, or suggestions of
`
`a single prior art reference and the ordinary skill and knowledge of a designer having
`
`ordinary skill in the art. See In re Nalbandian, 661 F.2d 1214 (C.C.P.A. 1981); Jore
`
`Corp. v. Kouvato, Inc., 117 Fed.Appx. 761 (Fed. Cir. 2005).
`
`Multi-reference obviousness turns upon “whether one of ordinary skill would
`
`have combined teachings of the prior art to create the same overall visual appearance
`
`as the claimed design.” MRC, 747 F.3d at 1331 (quoting Titan Tire v. Case New
`
`Holland, 566 F.3d 1372, 1380–81 (Fed. Cir. 2009); Durling v. Spectrum Furniture,
`
`101 F.3d 100, 103 (Fed. Cir. 1996)). “First, the court must identify a single
`
`reference, a something in existence the design characteristics of which are basically
`
`the same as the claimed design.” Id. (quoting In re Rosen, 673 F.2d 388, 391 (CCPA
`
`1982)). Once a primary reference is found, “other ‘secondary’ references may be
`
`used to modify it to create a design that has the same overall visual appearance as
`
`the claimed design” if the secondary references are “so related [to the primary
`
`reference] that the appearance of certain ornamental features in one would suggest
`
`the application of those features to the other.” Id. The existence of slight differences
`
`between the claimed design and the prior art does not preclude a finding of
`
`obviousness. Id. at 1333-35.
`
`4
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`
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`IPR2020-00534
`D797,625 S
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`II. ARGUMENT
`
`A. The Ordinary Observer Would Have Found Lian’s Disclosed
`Fender Design Substantially the Same as the Claimed Design, and
`a DOSA Would Have Found Lian Alone Obviates the Claimed
`Design.
`
`1.
`
`Neither GM, nor its declarant, addressed the overall visual
`similarity of Lian and the ’625 Patent or weighed those
`similarities against the differences.
`
`To distract from the self-evident overwhelming similarity between Lian and
`
`the claimed design, GM ignores their similarities and magnifies extreme minutiae it
`
`identifies as differences. However, the mere existence of perceptible differences
`
`does not foreclose even anticipation; Courts have repeatedly found designs
`
`substantially the same notwithstanding noticeable differences. As the Board
`
`observed, “‘[c]omplete similarity is not required to find infringement, and minor
`
`changes in a design are often readily made without changing its overall appearance.”
`
`Paper 10, at 23 (quoting Arminak & Assocs. v. Saint-Gobain Calmar, 424 F. Supp.
`
`2d. 1188, 1193 (S.D. Cal. 2006)). For example, in Gorham v. White, the Supreme
`
`Court found flatware designs substantially the same despite featuring different
`
`patterns:
`
`5
`
`
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`IPR2020-00534
`D797,625 S
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`81 U.S. at 521 (annotated); Hill ¶¶63-64.
`
`
`
`Even assuming the minute differences GM alleges exist (not all do), neither
`
`GM, nor its expert, Peters, even considered whether they impact the design’s overall
`
`visual impression. Peters at 63-65. If one considers minute differences then the
`
`analysis must be considered in the context of the similarities to assess whether the
`
`designs as a whole are substantially similar to an ordinary observer or basically the
`
`same to a DOSA, but Peters admitted repeatedly that he never did, and only “focused
`
`on the differences.” Id. Peters further selected his “crowded field” references
`
`6
`
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`IPR2020-00534
`D797,625 S
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`“based on specific elements, not necessarily overall appearance.” Peters at 152-53.
`
`This myopic focus on minutiae in microcosms plagues GM’s and Peters’ entire
`
`analysis. As the Board noted, the ordinary observer test must be applied “to the
`
`patented design in its entirety, as it is claimed.” Paper 10, at 23 (citing Crocs, Inc.
`
`v. International Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010)), yet GM once
`
`again refused to do so.
`
`Tellingly, only when cross-examined did Peters admit to the design’s myriad
`
`similarities. Peters, 66-96. As illustrated below, these similarities include the:
`
`a. Protrusion shape, outline, and contouring, including of its top portion
`
`(i.e., the narrow inwardly-folded strip near the windshield) (Peters at
`
`73, 89-90);
`
`b. shape, angle, and position of U-shaped notch (Peters at 89-90);
`
`c. shape and contour of upper perimeter as it extends from protrusion to
`
`headlamp aperture and interfaces with the hood cut line (Peters at 83-
`
`84);
`
`d. s-curve transition from hood cut line to headlamp aperture (Peters at
`
`84-85);
`
`e. angle, length, and curvature of headlamp aperture (Peters at 84-85);
`
`f. intersection angle of headlamp aperture to slanted cut (Peters at 84-
`
`85);
`
`7
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`
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`IPR2020-00534
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`g. laterally convex sculpture towards front;
`
`h. slanted cut length and proportion to wheel arch flats (Peters at 85-86);
`
`i. slanted cut’s angle of intersection to wheel arch and wheel arch flat
`
`(Peters at 85-86);
`
`j. wheel arch flat width, flat contour, and inwards bevel angle (Peters at
`
`90-91);
`
`k. lower rear terminus in width, shape, and contouring up to the point at
`
`which the wheel arch flats terminate (Peters at 91-92);
`
`l. curved door-cut line that accelerates rearwards as it progresses
`
`upwards (Peters at 136);
`
`m. first crease’s shape, position, and appearance (Peters at 86-88);
`
`n. inward fold above first crease (Peters at 88);
`
`o. first crease starting lower at the front than at its rear termination, with
`
`gentle downward curvature (Peters at 88-89);
`
`p. convexity above wheel arch flat and extending towards first crease;
`
`q. second crease’s positioning, angle, length, curvature, and contouring,
`
`including an undercut (Peters at 92-94)
`
`r. concavity between first and second creases (Peters at 77, 95);
`
`s. a wide-line beneath second creases;
`
`t. nearly identical profile in front elevation (Peters at 79-81, 95-96); and
`
`8
`
`
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`IPR2020-00534
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`u. nearly identical profile in top view.
`
`
`
`’625 PATENT
`CLAIMED DESIGN
`
`LIAN (EX. 1006)
`PRIOR ART
`
`
`
`Ex. 1001 FIG. 4 (annotated)
`
`Ex. 1006 FIG. 4 (annotated)
`
`
`
`
`
`Ex. 1001 FIG. 1 (annotated)
`
`Ex. 1006 FIG. 1 (annotated)
`
`
`
`Ex. 1001 FIG. 5 (annotated)
`
`Ex. 1006 FIG. 5 (annotated)
`
`9
`
`
`
`
`
`
`
`IPR2020-00534
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`’625 PATENT
`CLAIMED DESIGN
`
`LIAN (EX. 1006)
`PRIOR ART
`
`
`
`
`
`Ex. 1001 FIG. 1 (annotated)
`
`Ex. 1006 FIG. 7 (annotated)
`
`
`Ex. 1043 (“Hill”) ¶20.
`
`
`
`Peters further admitted that both Lian and the ’625 Patent disclosed fender
`
`designs for vehicles of identical class. Peters at 82-83. By Peters’ admission, GM
`
`failed to consider any of these similarities, and thus provided no analysis or evidence
`
`actually comparing the overall visual appearances of the two designs. Peters at 63-
`
`66. Considering the designs as a whole, as Petitioners’ uncontested analysis did,
`
`Lian discloses to an ordinary observer a fender design substantially the same as that
`
`claimed and at least basically the same to a DOSA. Hill ¶¶21-22; 65-71.
`
`2.
`
`GM’s purported differences fail to distinguish Lian from the
`’625 Patent for either anticipation or obviousness.
`
`Dissecting the designs in excruciating detail and magnifying every imaginable
`
`difference, GM identifies six. These deal with (a) the shape of the designs’ door cut
`
`10
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`
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`IPR2020-00534
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`
`lines; (b) the top of the protrusion; (c) an alleged “third crease” (d) the precise
`
`contouring between creases; (e) the wheel arch shapes; and (f) the lower rear termini.
`
`However, the first four of these differences do not even appear real, all six are at best
`
`greatly exaggerated, and all are overwhelmed by the myriad of similarities between
`
`the designs. None avoid substantial similarity for anticipation or basic similarity for
`
`obviousness.
`
`a.
`
`None of Lian’s door-cut line, protrusion, inflection
`line, or pattern of creases and sculpture are
`meaningfully dissimilar from the claimed design.
`
`First, GM asserted that the rear edge of Lian’s fender, where it adjoins the
`
`door, describes an angular line, whereas the ’625 Patent comprises a smooth,
`
`uniform arc. Both assertions are false. Lian’s door cut line is not angular, but
`
`arcuate, with the arc at the top accelerating. Hill ¶31. The ’625 Patent’s door cut
`
`line is not uniformly arcuate, either; Peters admitted that it has a “more sheer”
`
`segment at the top. Id.; Peters at 136-37. The door cut line of Lian and the claimed
`
`design are substantial similar:
`
`11
`
`
`
`IPR2020-00534
`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
`
`
`Hill ¶32-34
`
`Any difference between the door cut lines, such as the “depth” to which the
`
`door advances beyond the U-shaped notch or the height of its apex, is likely too
`
`minor for an ordinary observer to even notice and does not undermine the substantial
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`or basic similarities of the door cut lines, much less the designs as a whole given
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`their overwhelming similarities among more prominent design elements. Id.
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`Further, a DOSA would have known that modifications to the door cut line to have
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`12
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`smooth curvatures with and without upper and lower acceleration are well known
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`and routine changes.1 Id. at ¶¶10-19, 32-34; Peters at 99, 133-38.
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`Second, GM improperly divides and differently annotates the top protrusions
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`of the ’625 Patent and Lian and analyzes the designs only from certain views to
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`manufacture the appearance of a minor difference. Observing the designs as a
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`whole, from all provided views, it is clear that their protrusions are nearly identical:
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`1 GM’s argument that a change cannot be deemed routine or obvious based on
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`the ordinary skill or knowledge of a DOSA is contrary to precedent. In Jore v.
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`Kouvato, the Federal Circuit found a drill bit with a smooth cylindrical shaft, as a
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`sole reference, obviated one featuring a hexagonal, grooved shaft. 117 Fed.Appx.
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`at 763. Likewise, in Nalbandian, the Federal Circuit held an illuminable tweezer
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`design ornamented with lateral fluting on its handle and straight pincers alone
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`obviated one with longitudinal fluting, inwardly curved pincers, and differently
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`shaped finger-grips. 661 F.2d at 1217-18. Similarly, in MRC Innovations, the
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`Federal Circuit held a dog jersey design obvious even though no prior art reference
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`disclosed surge stitching down the back seams as such a modification was suggested
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`to a DOSA by the prior art’s disclosure of the seams and teaching of surge stitching
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`on other seams. 747 F.3d 1326, 1332-33 (Fed. Cir. 2014). Further, these same cases
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`establish Lian is an appropriate primary reference.
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`’625 PATENT
`CLAIMED DESIGN
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`LIAN (EX. 1006)
`PRIOR ART
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`Ex. 1001 FIG. 4
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`Ex. 1001 FIG. 1
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`Ex. 1006 FIG. 4
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`Ex. 1006 FIG. 1
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`
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`Ex. 1001 FIG. 5
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`Ex. 1006 FIG. 5
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`Ex. 1001 FIG. 1
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`Ex. 1006 FIG. 7
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`Hill ¶35. Both designs’ protrusions feature arcing top edges of substantially
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`consistent thickness (V) and formed via an upwardly curved crease. Hill ¶36.
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`Further, from side elevation and perspective views the protrusions appear almost
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`identical. Id. While there is an intermittent detail on Lian’s protrusion, it does not
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`extend entirely across as GM suggests. Hill ¶¶37-38. Contrary to GM’s assertion,
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`it would not impact the observer’s gaze, which would still flow up the A-pillar
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`because the detail is actually just a foldover of that portion of the protrusion and has
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`no impact at all on the viewer’s gaze. Id. An ordinary observer would likely not
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`even notice the foldover, and it does not negate the substantial or basic similarities
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`in the protrusion, much less the designs as a whole. Hill ¶¶38-40.
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`Third, GM’s arguments that a “third crease” distinguishes Lian from the
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`claimed design, and that LKQ “fabricated” such a crease on Lian strain credulity and
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`are unsupported by its own declarant. The Petition never asserted Lian has a “third
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`crease;” it showed that both the ’625 Patent and Lian featured identical inflection
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`lines at the apexes of their contoured sides.
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`A crease requires a change in contour or curvature, and even Peters conceded
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`no such feature appears on any part along the claimed design’s inflection line; only
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`an apex (i.e. a maximum) on the arc of the curve of its rear edge. Peters, at 121,
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`123-25. This means, the third line is exactly as LKQ explained: an inflection line
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`where the contoured fender face smoothly transitions from progressing outwards to
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`inwards. Hill ¶¶41-42.
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`Lacking a third crease on the patent drawings, GM improperly relies upon
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`photographs of the Chevrolet Equinox to fabricate one. However, Peters admitted
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`even those do not depict a crease on the fender but rather a crease on the door. Peters
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`at 116-20, 183-87; Hill ¶43.
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`Indisputably, Lian discloses an identical inflection line as that claimed. Peters
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`at 160-62; Hill ¶20, 41-43. Alternatively, even if there were a slight crease in the
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`claimed design at the location of Lian’s inflection line, adding a slight crease along
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`an inflection line does not have change the substantial similarity or basic similarity
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`analysis for that portion of the fenders, much less the fenders as a whole, and
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`applying a crease to such an inflection would have been routine to a DOSA. Hill
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`¶44.
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`Fourth, LKQ agrees that the location, orientation, character, and contouring
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`of the first and second creases are key to the overall visual appearance of the ’625
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`Patent. Lian’s creases, sculpting, and lighting are almost identical:
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`16
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`IPR2020-00534
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`’625 PATENT
`CLAIMED DESIGN
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`LIAN (EX. 1006)
`PRIOR ART
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`Ex. 1001 FIG. 4
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`
`
`Ex. 1001 FIG. 1
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`
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`
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`Ex. 1006 FIG. 4
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`
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`Ex. 1006 FIG. 1
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`
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`Ex. 1001 FIG. 5
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`Ex. 1006 FIG. 5
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`Ex. 1001 FIG. 1
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`Ex. 1006 FIG. 7
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`Hill ¶45.
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`17
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`Peters admitted that, contrary to GM’s misleading annotation, the first and
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`second creases of Lian’s fender both exhibit smooth, gentle downward curvature
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`exactly like those claimed. Peters at 88-89; Hill ¶46. The similarities only continue
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`from there, including that: the curvature of Lian’s second crease is more subtle than
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`that of the first; each of Lian’s creases start at a lower point at the front than at the
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`rear (Peters at 88-89); Lian’s first crease arcs down to flow beneath the daylight
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`opening at the door cut line; Lian’s second crease’s location, length, and angle; and
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`the divergency between Lian’s first crease and the top of its (nearly identical)
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`protrusion (Peters at 107-108). Hill ¶46-47. GM magnifies a perceived difference
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`in contouring between the first and second creases, but the overall visual
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`appearances created by the designs’ creases and contours would have been
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`indistinguishable to an ordinary observer. Hill ¶48-49. An ordinary observer and
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`DOSA would have found these features almost exactly the same, and certainly
`
`basically the same even upon analyzing those specific features in minute detail,
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`much less the designs as a whole. Id. Further, minor modifications in sculpting to
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`accommodate different wheel arch shapes are well known and routine changes. Hill
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`¶¶47-48.
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`As shown, even if these minor purported differences exist, they do not change
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`the substantial similarity or basic similarity of the discrete features impacted, much
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`less the designs as a whole. Hill ¶49. Even if noticed by an ordinary observer, the
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`18
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`observer would still have found the overall designs substantially the same based on
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`the designs’ extensive and prominent similarities identified above. Id. Likewise, a
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`DOSA would have understood the two designs to create basically the same overall
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`visual appearance notwithstanding such minor differences. Id.
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`b. GM exaggerates the difference in Lian’s wheel arch.
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`GM repeatedly exaggerates the visual significance of Lian’s “squared” wheel
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`arch. Initially, Lian’s wheel arch is not “squared;” it is predominantly arcuate with
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`somewhat flattened top and trailing edges. Hill ¶50. Further, an ordinary observer
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`likely would not have noticed this difference because the wheel arches are
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`surrounded by more prominent, graphic elements that would have caused the designs
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`to appear similar. Id. For example, the observer’s eye would focus on the visual
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`character of the surrounding wheel arch flat, which comprises a prominent sheer
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`surface circumscribed by a bright, convex crease, rather than the dark zone of
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`shadow surrounding the wheel. Hill ¶51. The wheel arch flats of both designs are
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`also strikingly similar in terms of placement, width, contour, and visual character.
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`Id. As such, even if the difference in shape was noticed, an ordinary observer would
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`still find the wheel arches substantially similar and would have still found the overall
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`fender designs substantially the same. Hill ¶52. Likewise, this wheel arch difference
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`would not change a DOSA’s perception that the designs as a whole are basically the
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`same, particularly since modifications to the wheel arch are well known and routine
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`changes. Peters at 103; Hill ¶53.2
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`GM makes no attempt to show why, even if this difference were noticeable, it
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`should distinguish the overall visual appearances of the designs. Indeed, GM makes
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`no effort to make this showing for any of its alleged differences. GM cites Egyptian
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`Goddess, In re Harvey, and Vitro Packaging to suggest its differences preclude
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`anticipation, but none are analogous as each involved prior art or accused infringing
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`designs that differed substantially from the claimed design in prominent ways.
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`Further, GM submits no evidence or reasoning justifying why the “conventionality”
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`of a round wheel arch would make the shape of Lian’s wheel arch more glaring to
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`an ordinary observer. Whereas LKQ’s reasoning (which GM ignored) was
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`thoroughly stated and supported, GM’s contra-arguments are conclusory.
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`2 See n.1. A circular wheel arch centered on the axle is the most obvious and
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`conventional shape for a wheel arch because wheels are circular. Hill ¶53. A DOSA
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`would have been aware of myriad fenders with circular wheel arches, including the
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`2015 Hyundai Tucson. Id. Further, Peters admitted that a DOSA would recognize
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`and have the ability to modify, change, or evolve any element of a fender, including
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`a wheel arch, and in general would have found it obvious to do so. Peters at 99-107.
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`c.
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`The lower rear terminus of Lian neither distinguishes
`the claimed design, nor avoids obviousness.
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`The Petition articulated why an ordinary observer would find Lian’s fender
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`design substantially the same as that claimed notwithstanding the different approach
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`used for its rear terminus. Specifically, the fenders have extensive similarities and
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`are designed to attract the viewer’s attention to the center of its face, sculpture, and
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`other graphic elements; recede as the viewer’s gaze flows down past the inflection
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`line; and the rearward tab of Lian’s lower rear terminus is extremely small compared
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`to the rest of the fender. Hill ¶54-56. Thus, an ordinary observer would likely not
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`notice the rearward hook of Lian even if viewing the fender in isolation and would
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`not perceive it at all in the context presented by Lian: on a vehicle. Hill ¶57.
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`LKQ did not exclude the feature from consideration; it showed that the
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`difference would neither distinguish the two designs from the perspective of an
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`ordinary observer, and nor would a DOSA understand it to disrupt the basic
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`similarity of the designs because the seam, located at the very bottom of the fender
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`in the shadow of the panel’s contour, would have only minimal visual impact. Hill
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`¶55-56. Further, a DOSA would have known the lower cut line of a fender is often
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`dictated by engineering or manufacturing considerations and outside a designer’s
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`control. Hill ¶57; Peters, at 104-107. The visual insignificance of this feature is
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`self-evident:
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`21
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`IPR2020-00534
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`’625 PATENT
`CLAIMED DESIGN
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`LIAN (EX. 1006)
`PRIOR ART
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`Ex. 1001 FIG. 4
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`Ex. 1006 FIG. 4
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`Ex. 1001 FIG. 1
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`Ex. 1006 FIG. 7
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`Further, terminating the fender above a rocker panel rather than carrying down
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`to the bottom of the vehicle, with or without a tab, is a routine design choice for a
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`DOSA. Hill ¶57. GM does not dispute that relocating the cut-line
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