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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`LKQ Corporation and Keystone Automotive Industries, Inc.,
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`Petitioners,
`
`v.
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`GM Global Technology Operations LLC,
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`Patent Owner.
`
`_________________
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`U.S. Design Patent No. D797,625
`
`Filed: August 24, 2016
`
`Issued: September 19, 2017
`
`Title: Vehicle Front Fender
`
`__________________________
`
`Inter Partes Review No.: To Be Assigned
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`
`
`DECLARATION OF JAMES M. GANDY, IN SUPPORT OF LKQ
`CORPORATION’S AND KEYSTONE AUTOMOTIVE INDUSTRIES,
`INC.’S PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. D797,625
`
`1
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`LKQ - Ex. 1003 p. 1
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`
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`
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`I, James M. Gandy, submit this declaration in support of a Petition for Inter
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`Partes Review of U.S. Design Patent No. D797,625 (the ’625 Patent”). In
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`accordance with 28 U.S.C. § 1746, I declare under penalty of perjury that the
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`statements herein are true and correct to the best of my knowledge, belief,
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`recollection, and understanding. All statements made on information and belief are
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`believed to be true. I am over the age of eighteen, and, if asked to do so, I could
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`competently testify to the matters set forth herein.
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`I. 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 the
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`above-captioned proceeding. Based on my education and my experience in
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`transportation design, I have been asked to render an opinion regarding the
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`patentability of the sole claim of the ’625 Patent.
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`2.
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`As discussed in further detail in this Declaration and any supplemental
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`reports, testimony, or declarations that I may provide, it is my opinion that the sole
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`claim of the ’625 Patent is unpatentable based on the grounds set forth herein.
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`3.
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`The following is my report and it and the exhibits hereto contain my
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`opinions and the support therefore. In connection with rendering my opinion I
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`have reviewed and relied upon the following materials:
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`2
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`LKQ - Ex. 1003 p. 2
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`
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`
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`a.
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`U.S. Design Patent No. D797,625 (“the ’625 Patent”) (Ex.
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`1001);
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`b.
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`c.
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`d.
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`e.
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`File History for U.S. Design Patent No. D797,625 (Ex. 1002);
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`2018 Chevrolet Equinox Brochure, http://www.auto-
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`brochures.com/makes/Chevrolet/Equinox/Chevrolet_US%20Eq
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`uinox_2018.pdf (Ex. 1005);
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`U.S. Design Patent No. D773,340 (“Lian”) (Ex. 1006);
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`2010 Hyundai Tucson Brochure, http://www.auto-
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`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucso
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`n_2010.pdf, archived on April 2, 2014 by Internet Archive
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`organization’s “Wayback Machine” at
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`https://web.archive.org/web/20140402003154/http://www.auto-
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`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucso
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`n_2010.pdf (Ex. 1007);
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`f.
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`Exemplary images of the 2010 Hyundai Tucson Brochure,
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`http://www.auto-
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`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucso
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`n_2010.pdf, archived on April 2, 2014 by Internet Archive
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`organization’s “Wayback Machine” at
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`https://web.archive.org/web/20140402003154/http://www.auto-
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`3
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`LKQ - Ex. 1003 p. 3
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`
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`
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`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucso
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`n_2010.pdf (Ex. 1008);
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`g.
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`h.
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`File History of U.S. Design Patent No. D773,340 (Ex. 1009);
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`File History of U.S. Patent Application Serial No. 29/516,319
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`(Ex. 1010); and
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`i.
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`The documents and materials listed in my other declarations.
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`4.
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`In addition to the above-stated materials provided, I have also relied
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`on my own education, training, experience and knowledge in the field of
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`transportation or automotive design and design patents.
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`5.
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`It is worth noting that, in my experience, the best prior art is typically
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`found in non-patent publications, such as brochures and automotive magazines. A
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`frequently fertile source of prior art when examining vehicle designs is the
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`applicant’s own prior art publications disclosing past model years of the vehicle
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`embodying the design for which protection is sought and other vehicles from the
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`applicant automaker having a similar design aesthetic. General Motors—as is true
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`with all automobile manufacturers—would certainly be aware of the existence and
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`content of its own prior-published promotional brochures and popular trade
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`magazines featuring its vehicles. Notably, not a single non-patent publication was
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`cited on the face of the patent or in the file history, and none was disclosed by GM
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`to the examiner. Further, General Motors was certainly aware of its own
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`4
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`LKQ - Ex. 1003 p. 4
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`
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`embodying vehicle and the existence and content of published depictions of that
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`vehicle in its own promotional brochures. Reviewing other GM design patents and
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`file histories, it appears this type of disclosure deficiency is the norm for GM, not
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`the exception. It is difficult to explain the rationale behind General Motors’
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`decision to consistently and repeatedly omit from its prior art disclosure statements
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`the myriad prior art publications and references that are unmistakably in their
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`possession (e.g., their own marketing and promotional materials) and that are
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`undeniably relevant prior art (e.g., prior model years of the embodying vehicle).
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`6.
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`I may also consider additional documents and information that have
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`not yet been provided to or discovered by me should such documents and
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`information be brought to my attention after the date I submit this Declaration, and
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`I reserve the right to add to or amend my opinions in connection with the same.
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`7.
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`The analysis in this Declaration is exemplary. Additional reasons may
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`support my conclusions, but they do not form my current analysis. The fact that I
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`do not address a particular reason does not imply that I would agree or disagree
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`with such additional reason.
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`8.
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`I receive compensation at a rate of $350 per hour for my time spent on
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`this matter, except for any travel time, which is billed at one-half of my hourly
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`rate. I am also being reimbursed for reasonable and customary expenses associated
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`with my work on this matter. I have no financial interests in the patents involved
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`5
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`LKQ - Ex. 1003 p. 5
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`
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`in this proceeding, and my compensation is not dependent on the outcome of this
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`proceeding. The conclusions I present are based on my own judgment. I am not an
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`employee of LKQ Corporation, Irwin IP LLC, or any affiliated companies.
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`II. QUALIFICATIONS
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`9. My current curriculum vitae is Exhibit 1014 in the proceeding.
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`10.
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`I hold a Bachelor of Science in Architectural Design Technology from
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`Temple University in Philadelphia, Pennsylvania, where I graduated in 1972.
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`11. Upon graduation, I worked as a Design Patent Examiner in Art Unit
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`2911 for the United States Patent and Trademark Office (“USPTO”). While in Art
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`Unit 2911, I primarily worked in class D12 “Transportation.” My responsibilities
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`included examining design patent applications, examining reexamination and
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`reissue applications, issuing determinations on examined applications, initiating
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`interference proceedings, and preparing examiner’s answers for applications on
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`appeal to the Board of Patent Appeals and Interferences.
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`12.
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`In 1979, I was promoted to Primary Examiner and continued to work
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`as a Design Patent Examiner in Art Unit 2911 for the USPTO. With this
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`promotion, I gained full signatory authority and trained new examiners while
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`occasionally fulfilling supervisory patent examiner duties when the art unit
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`supervisor was absent.
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`6
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`LKQ - Ex. 1003 p. 6
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`13.
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`In my 24 years of work as a Design Patent Examiner at the USPTO, I
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`made patentability determinations
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`in approximately 10,000 design patent
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`applications that I examined. I have examined design patent applications in every
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`design class, and approximately three-quarters of my examinations related to Class
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`D12 (Land Transportation).
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`14.
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`In 1996, I became a Supervisory Patent Examiner for the USPTO and
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`transitioned to Art Unit 2913, which also reviews designs for Transportation
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`among other classes of art. As supervisor, I managed the work flow, quality, and
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`timeliness of examiners in my art unit. I also trained junior examiners and
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`provided additional training to primary examiners to maintain consistency in work
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`product. I evaluated the performance of all examiners in the art unit. Finally, I
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`also developed the Design Examiner Supplemental Training Guide and led the
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`program for uniformity of examination practice for the entire Design Patent
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`Technology Center.
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`15.
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`In 1998, I became the Design Patent Practice Specialist for
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`Technology Center 2900 at the USPTO. I continued to train all new examiners,
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`junior examiners when they joined the USPTO and trained all examiners at
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`Technology Center 2900 through continuing education programs. I was in charge
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`of updating the Design Examiner Supplemental Training Guide and Chapter 1500
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`Design Patents in the Manual of Patent Examining Procedure. I responded to
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`7
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`LKQ - Ex. 1003 p. 7
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`
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`inquiries from external customers about design patent practice and procedure on a
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`daily basis. I continuously reviewed cases, decisions, and reports coming from the
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`courts, the Board, and the Office of Patent Quality Review to train examiners and
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`update the previously mentioned documents. Finally, I also made presentations to
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`attorneys and inventor groups on behalf of the USPTO.
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`16. During my career at the USPTO, I received an outstanding rating
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`under performance appraisal plan for 32 consecutive years. I also received various
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`accolades including the Department of Commerce Bronze Medal Award in 1983;
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`the USPTO’s Distinguished Career Award in 2000 in recognition of consistent
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`superior performance in design patent application examination and in art unit
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`leadership; and the Norman P. Morgenstern Award in 2004 for the leadership and
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`innovation contributions made by Supervisory Patent Examiners.
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`17. Currently, and since my retirement from the USPTO in 2005, I have
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`occasionally counseled patent attorneys and agents who file design patents
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`applications.
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`18. Due to my approximately 33 years of design-patent-examination
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`experience with the USPTO in the field of transportation design, I consider myself
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`to be a designer of at least ordinary skill in the field of transportation design.
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`19.
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`In the past I have served as in expert in Complaint of Ford Global
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`Technologies, LLC under Section 337 of The Tariff Act of 1930, As Amended, on
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`8
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`LKQ - Ex. 1003 p. 8
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`
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`
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`behalf of Ford Global Technologies; Magnadyne Corp. vs. Best Buy Co., Inc., on
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`behalf of Magnadyne; Weber-Stephen Products LLC v. Sears Holdings
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`Corporation, on behalf of Sears; Trinity Manufacturing, L.L.C.; Campbell Soup
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`Company; and Campbell Sales Company v. Gamon Plus, Inc. on behalf of
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`Campbell Soup Company; Nite Glow Industries, Inc., I Did It, Inc., and Marni
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`Markell Hurwitz v. Central Garden & Pet Company and Four Paws Pet Company,
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`d/b/a Four Paws Products, LTD on behalf of Nite Glow and Marni Markell
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`Hurwitz.
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`20.
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`I am currently serving as an expert in each of the Petitions for Inter
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`Partes or Post Grant Review filed by LKQ against design patents owned by the
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`Patent Owner General Motors Global Corporation (“GM”). Those case numbers
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`are IPR2020-00062, IPR2020-00063, IPR2020-00064, IPR2020-00065, PGR2020-
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`00002, PGR2020-00003, PGR2020-00004, PGR2020-00005. I am also serving as
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`an expert for the concurrently filed Petitions for Inter Partes or Post Grant Review
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`to be filed along with this Petition.
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`III. MY UNDERSTANDING OF THE APPLICABLE LEGAL PRINCIPLES
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`21. As a design patent expert, I am not an attorney and, therefore, nothing
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`in this report should be construed as me offering any legal opinions. Rather, I am
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`offering design assessments and opinions. In rendering my analysis, I have been
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`9
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`LKQ - Ex. 1003 p. 9
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`
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`informed by counsel regarding the legal standards for determining patentability. I
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`have applied those standards in forming the opinions expressed in this report.
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`22. Based on my conversations with counsel for LKQ and my review of
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`administrative decisions and articles discussing design patent law principals, I have
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`the following understanding of patents generally, and design patents specifically. I
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`understand that a “utility patent” protects the way something works, but a “design
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`patent” protects the way something looks.
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`23.
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`It is my understanding that to be patentable, a design must be new and
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`original, and non-obvious. To be new (or have “novelty”), a design must differ
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`from all previous designs (known as the “prior art”). A design must also be
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`original, which means that it has to do more than simply imitate what already
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`exists. I further understand that a design patent does not cover “functional” aspects
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`of the design, that is to say, aspects that are present as part of the design because
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`they have to be there for the article to function.
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`24.
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`It is my understanding that, for design patents, there is only one claim
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`that identifies the patented design and that single claim is shown or described in
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`the “figures” of the patent.
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`25.
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`I understand that a design patent can be invalidated on the basis that
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`the claimed invention was “anticipated” (that is, that the claimed invention was not
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`novel) over a disclosure in the prior art. It is my understanding that a claimed
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`10
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`LKQ - Ex. 1003 p. 10
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`
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`design is anticipated if it substantially the same as a disclosure in the prior art. I
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`further understand that the claimed design is substantially the same as the prior art
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`design if, from the perspective of an ordinary observer, giving such attention as a
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`purchaser usually gives to the design, the resemblance between the designs is such
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`as to deceive the ordinary observer into purchasing one supposing it to be the
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`other. It is further my understanding that an ordinary observer would consider the
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`similarity between the designs as a whole rather than elements of the design in
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`isolation, and, as such, a design may be anticipated despite minor or trivial
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`differences for a prior art reference. However, I also understand that when the
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`claimed design is close to the prior art designs, small differences could appear
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`important to the ordinary observer.
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`26.
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`I understand that a design patent can also be invalidated on the basis
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`that the claimed invention was obvious. Regarding obviousness, I understand that
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`the ultimate question is whether the claimed design would have been obvious to an
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`ordinary designer who designs the type of articles involved. More specifically, the
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`inquiry is whether one of ordinary skill would have found it obvious to modify or
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`combine prior art designs to create the claimed design. It is also my understanding
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`that obviousness is based on the scope and content of the prior art, the differences
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`between the prior art and the claim, and the level of ordinary skill in the art. I
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`11
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`LKQ - Ex. 1003 p. 11
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`
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`further understand that one must not use hindsight to compare prior art to the
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`claimed design.
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`27.
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`I further understand that determining whether a design patent claim is
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`obvious involves a two-step process. First, for a claimed design to have been
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`obvious as of a certain date, a “primary reference” must have existed as of that
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`date, which is a single thing that, from the perspective of a designer having
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`ordinary skill in the art, had design characteristics that were basically the same as
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`the challenged design. I further understand that the determination of whether a
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`prior art design was “basically the same” as the claimed design is based upon
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`comparison of the overall visual impressions created as a whole by the prior art
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`design and the claimed design; further, a “primary reference” need not contain
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`every ornamental feature present in the claimed design for it to be “basically the
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`same” as the claimed design.
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`28. Second, I understand that there must be some suggestion or
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`motivation for that designer to modify the “primary reference” such as to arrive at
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`the claimed design—i.e., arrive at the same overall visual appearance as the
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`claimed design; certain other prior art designs having those design elements,
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`“secondary references,” might teach the requisite modifications. And in order to
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`teach such modifications, I understand that the “secondary references” must be so
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`related to the primary reference that the appearance of relevant ornamental features
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`12
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`LKQ - Ex. 1003 p. 12
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`
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`in the “secondary reference” would suggest the application of those features to the
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`“primary reference.” I also understand that a secondary reference is sometimes
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`unnecessary, and that the suggestion to modify the primary reference to arrive at
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`the claimed invention could come from the skill, knowledge, and creativity of an
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`ordinary designer.
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`29.
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`I understand that a designer of ordinary skill determines the
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`appropriate primary and secondary references for an obviousness analysis and that,
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`as explained above, the ultimate question is based on the perspective of a designer
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`of ordinary skill. However, I also understand that some courts have resolved
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`obviousness based on the perspective of the ordinary observer. I understand that in
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`such applications of the test, a hypothetical reference formed by the combination of
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`the design characteristics of the primary reference and any secondary references is
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`compared with the claimed design, and is deemed invalidating if they would have
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`been substantially the same from the perspective of an ordinary observer (i.e., that
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`giving such time as a purchaser normally gives the ordinary observer would have
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`been deceived by the similarity of the two designs into purchasing one design
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`believing it to be the other).
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`30.
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`I further understand that a design is obvious if it would have been
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`obvious to a designer of ordinary skill who designs articles of the type involved,
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`13
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`LKQ - Ex. 1003 p. 13
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`
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`
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`such as vehicle front fenders, here, and that de minimis changes are well within the
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`skill of an ordinary designer in the art.
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`IV. THE ’625 PATENT
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`31.
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`I understand that the ’625 Patent was filed on August 24, 2016 and
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`granted on September 19, 2017. I understand that the inventors of the ’625 Patent
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`was Jeffrey W. Perkins, who assigned it to GM Global Technology Operations
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`LLC (“GM”).
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`32.
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`I have reviewed the ’625 Patent and its file history. It has one claim
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`for the ornamental design for a vehicle front fender, as shown and described in the
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`four figures. I understand that in a design patent, only the solid lines are claimed,
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`not the dashed lines. The four figures of the ’625 Patent are reproduced below:
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`
`
`
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`“FIG. 1 is a perspective view of the
`vehicle front fender.” Id. at 1.
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`“FIG. 2 is a side view thereof.”
`Id. at 1.
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`14
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`LKQ - Ex. 1003 p. 14
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`“FIG. 3 is a front view thereof.”
`Id. at 1.
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`“FIG. 4 is a top view thereof.”
`Id. at 1.
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`33. My understanding is that the specification of the ’625 Patent disclaims
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`any broken lines in the figures. Id. at 1 (“In the drawings, the portions shown by
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`broken lines form no part of the claimed design.”).
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`34.
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`I understand that the embodiment of the ’625 Patent is the 2018
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`Chevrolet Equinox, depicted here:
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`
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`15
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`LKQ - Ex. 1003 p. 15
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`
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`Ex. 1005, at 3, 20 (cropped).
`EX. 1005, at 3, 20 (cropped).
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`16
`16
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`LKQ - Ex. 1003 p. 16
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`LKQ - Ex. 1003 p. 16
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`35. The solid lines of the ’625 Patent show a vehicle fender comprising:
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`•
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`A top protrusion extending rearwardly and upwardly from an upper portion
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`of the fender and having an intermittent u-shaped notch;
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`Ex. 1001, FIG. 2 (annotated);
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`
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`17
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`LKQ - Ex. 1003 p. 17
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`
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`
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`•
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`a first crease and a second crease extending forwards from a rear edge of the
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`fender, a concavity line disposed between the first crease and the second crease,
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`and an inflection line below the second crease; and
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`18
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`LKQ - Ex. 1003 p. 18
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`Id., FIG. 1 (annotated);
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`•
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`an angular front elevation profile.
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`Ex. 1001, FIG. 3.
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`
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`36. The claimed design is disclosed through several figures that show the
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`design from different perspectives. While I understand that a verbal description of
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`the design is required, a design is best represented by images rather than words and
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`it is impractical to attempt to verbally describe every element of the claimed
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`design. It is my opinion that the above description identifies all features of the
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`19
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`LKQ - Ex. 1003 p. 19
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`
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`claimed design that materially contribute to the overall visual impression it creates;
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`however, for the avoidance of doubt, my analysis below is based upon comparison
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`of the asserted prior art with the claimed design in its entirety as depicted in each
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`of the disclosed figures.
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`37. The concavity line is depicted on the claimed design using a
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`discontinuous line segment that neither contacts the rear edge of the fender, nor the
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`second crease. A designer of ordinary skill in the art would have understood from
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`this depiction that the concavity line is not a crease or other clearly demarcated
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`feature in and of itself, but rather a depiction of the line of inflection between the
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`surface extending downwards beneath the first crease and the surface approaching
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`the second crease, and thus is formed as a result of the interplay between those two
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`creases and the confluence of their respective sloping planes.
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`38. As to the third line depicted on the claimed design, identified above as
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`the “Inflection Line,” the virtually identical contour lines converging upon the
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`third line from both above and below the third line do not appear to denote any
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`particular difference or discontinuity in curvature at or around that line. Likewise,
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`this inflection line has no perceptible effect on the curvature of the rear edge of the
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`fender. This is evident from the below-reproduced figures:
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`20
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`LKQ - Ex. 1003 p. 20
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`
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`’625 PATENT
`
`
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`
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`Ex. 1001, FIG.1 (detail)
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`Ex. 1001, FIG. 2 (detail)
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`A designer of ordinary skill in the art would have expected a crease extending to
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`the rear of the fender panel (or any other feature perceptibly affecting the contour
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`or curvature of the fender and abutting an edge of the fender) to have some effect
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`on the contour of fender’s rear edge, as is evident in the ’625 Patent around both
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`the first crease and the second crease. A designer of ordinary skill in the art,
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`considering the disclosure set forth in the ’625 Patent, could only reasonably have
`
`understood this third line to denote the inflection point, that is, a local maximum of
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`21
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`LKQ - Ex. 1003 p. 21
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`the convex surface of the fender panel in its transition from sloping away from the
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`vehicle through the vertical plane to slope towards the vehicle.
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`V. ORDINARY OBSERVER
`
`39.
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`I have been informed that the identification of the ordinary observer is
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`made by focusing on the actual product that is presented for purchase and the
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`ordinary purchaser of the product.
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`40.
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`In this instance, I believe that an ordinary observer would be the retail
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`purchaser of an automobile because that is the individual who compares the
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`claimed design to other automobile designs and makes the decision to purchase a
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`vehicle comprising the embodying design; although there are other potential
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`observers of an automobile or its constituent parts during the lifetime of a vehicle
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`(e.g., a repair shop mechanic working on the owner’s vehicle, or an auto parts store
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`employee helping the owner to order replacements), all are consequent to and flow
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`from this original vehicle purchase and the actions of those other potential
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`observers depend exclusively on the views of and decisions made by the vehicle
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`purchaser and owner.
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`VI. DESIGNER OF ORDINARY SKILL IN THE ART
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`41.
`
`I have been informed that an “ordinary designer” or “designer of
`
`ordinary skill in the art” is one who designs articles of the type involved in the
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`relevant art of the ’625 Patent.
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`22
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`LKQ - Ex. 1003 p. 22
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`42.
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`In this instance, an ordinary designer or designer of ordinary skill in
`
`the art would be an individual who has at least an undergraduate degree in
`
`transportation or automotive design and has work experience in transportation or
`
`automotive design, or someone who has several years’ work experience in
`
`transportation or automotive design.
`
`43. From a design examination standpoint, the examiner would identify
`
`key elements that define the overall visual appearance of the design. Once that is
`
`established, the examiner identifies various secondary elements that may be
`
`relevant to the ornamentality of the claimed design.
`
`44. Examiners can and should consider many sources for already existing
`
`similar designs, especially in relation to the global automotive market. This would
`
`include already published patents and publications, such as coverage of auto shows
`
`from inside and outside the United States, concept cars, auto industry blogs, auto
`
`industry print and online publications such as Motor Trend or Car and Driver, cars
`
`that are currently on the market, prior model years of cars, Pinterest, google image
`
`search results, third party websites such as netcarshow.com, motorologist.com,
`
`after-market design trends, and others.
`
`45.
`
`I further understand that the ordinary designer is presumed to have
`
`knowledge of the prior art.
`
`23
`
`LKQ - Ex. 1003 p. 23
`
`
`
`
`
`VII. PRIOR ART REFERENCES
`
`46.
`
`In connection with this matter, I have searched for and located various
`
`pieces of prior art. I have also been provided certain pieces of prior art by counsel
`
`for LKQ.
`
`47.
`
`I have relied on the following pieces of prior art to inform my opinion
`
`as to the invalidity of the ’625 Patent in view of anticipation:
`
`Exhibit
`
`Description
`
`Filing Date
`
`1006
`
`U.S. Design Patent No.
`
`03/17/2016
`
`D773,340 (“Lian”)
`
`Eff. 07/30/2014
`
`Publication
`Date
`
`12/06/2016
`
`48.
`
`I have relied on the following pieces of prior art to inform my opinion
`
`as to the invalidity of the ’625 Patent in view of obviousness:
`
`Exhibit
`
`1006
`
`Primary/
`Secondary
`Primary
`
`Description
`
`Filing Date
`
`U.S. Design Patent
`
`03/17/2016
`
`Publication
`Date
`12/06/2016
`
`No. D773,340
`
`Eff. 07/30/2014
`
`(“Lian”)
`
`1007–
`
`Secondary
`
`2010 Hyundai
`
`N/A
`
`04/02/2014
`
`08
`
`Tucson
`
`24
`
`LKQ - Ex. 1003 p. 24
`
`
`
`
`
`A. U.S. Design Patent No. D773,340 (Primary Reference)
`
`49.
`
`I have relied upon U.S. Design Patent No. D773,340 (“Lian”) as prior
`
`art to the ’625 Patent to invalidate the claimed design as anticipated or obvious. I
`
`understand that this Patent names Yubo Lian, Jihan Fan, Bo Bi, and Yue Li as
`
`inventors and BYD Company Ltd. as its assignee. I understand that Lian was filed
`
`with the U.S. Patent Office on March 17, 2016, is a divisional of and claims
`
`priority to U.S. Pat. App. Ser. No. 29/516,319 (“the ’319 Application”), which was
`
`filed on January 30, 2015. I further understand that Lian claims priority to a
`
`foreign patent application, No. 2014 3 026395, filed with the Chinese Patent Office
`
`on July 30, 2014. As a Patent Examiner I would have relied upon this patent as
`
`prior art.
`
`B.
`
`2010 Hyundai Tucson (Secondary Reference)
`
`50.
`
`I have further relied upon certain images depicting the 2010 Hyundai
`
`Tucson (the “Hyundai Tucson”) as a printed publication which I understand was
`
`prior art to the ’625 Patent on the basis that the images were published together by
`
`Hyundai in a single brochure, a digital copy of which was made publicly available
`
`on auto-brochures.com, a website dedicated to compiling and making available for
`
`download automakers’ promotional brochures. I understand that this brochure, as
`
`it appeared on auto-brochures.com, was archived on April 2, 2014, which predates
`
`the priority date of the ’625 Patent by more than one year. Ex. 1007. This
`
`25
`
`LKQ - Ex. 1003 p. 25
`
`
`
`
`
`brochure and its included images are appropriate for consideration as a printed
`
`publication because a designer of ordinary skill, aware of this article on or after at
`
`least that date, would have understood all of the images to depict the same vehicle
`
`design, and because designers of ordinary skill in the art regularly consult the
`
`promotional materials, including brochures, of automakers in order to maintain
`
`awareness of developments and new vehicle designs in the automotive design
`
`industry, and to see how those designs are being presented and marketed by
`
`automakers. As such, this is a type of publication that a Patent Examiner would
`
`deem a designer of ordinary skill in the art to be familiar with and evaluate. The
`
`relied-upon depictions of the Hyundai Tucson are set forth below:
`
`
`
`26
`
`LKQ - Ex. 1003 p. 26
`
`
`
`
`
`
`
`
`
`
`
`27
`27
`
`LKQ - Ex. 1003 p. 27
`
`LKQ - Ex. 1003 p. 27
`
`
`
`
`
`
`
`
`
`
`
`Ex. 1007 at 1–3, 10, 12, 14, 19 (note: the image spanning pages 2 and 3 was
`
`merged to form a single complete image).
`
`28
`
`LKQ - Ex. 1003 p. 28
`
`
`
`
`
`51.
`
`I understand that a designer of ordinary skill in the art is presumed to
`
`have knowledge of the prior art.
`
`VIII. MY OPINIONS REGARDING THE ’625 PATENT
`
`A. The ’625 Patent is Anticipated by Lian.
`
`52.
`
`It is my opinion that the ’625 Patent is anticipated by Lian. The
`
`fender designs create substantially the same overall impression which would cause
`
`an ordinary observer to be deceived into purchasing one supposing it to be the
`
`other. Lian’s fender panel design is substantially the same from the point of view
`
`of an ordinary observer as the design of the ’625 Patent. The resemblance between
`
`Lian and the claimed design is such as to deceive the ordinary observer, deceiving
`
`him to purchase one supposing it to be the other.
`
`53.
`
`Images set forth in Lian are reproduced below:
`
`
`
`29
`
`LKQ - Ex. 1003 p. 29
`
`
`
`
`
`
`
`
`
`
`
`
`
`30
`30
`
`LKQ - Ex. 1003 p.30
`
`LKQ - Ex. 1003 p. 30
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`31
`31
`
`LKQ - Ex. 1003 p. 31
`
`LKQ - Ex. 1003 p. 31
`
`
`
`
`
`
`
`
`
`Ex. 1006, FIGS. 1–7.
`
`54. The similarity between the overall visual impression created by Lian
`
`and the ’625 Patent is apparent from the below visual comparison:
`
`32
`
`LKQ - Ex. 1003 p. 32
`
`
`
`
`
`’625 PATENT
`
`LIAN
`
`
`
`
`
`Ex. 1001, FIG. 1
`
`Ex. 1006, FIG. 6 (cropped, annotated)
`
`
`
`
`
`Ex. 1001, FIG. 2
`
`Ex. 1006, FIG. 4 (cropped, annotated)
`
`33
`
`LKQ - Ex. 1003 p. 33
`
`
`
`
`
`’625 PATENT
`
`LIAN
`
`
`
`
`
`Ex. 1001, FIG. 3
`
`Ex. 1006, FIG. 1 (cropped, annotated)
`
`
`
`
`
`Ex. 1001, FIG. 4
`
`Ex. 1006, FIG. 5 (cropped, annotated)
`
`55. Lian shares numerous specific design elements with the ’625 Patent,
`
`and these similarities further show that the front fender of Lian has an overall
`
`visual appearance that is substantially the same as the claimed design. First, the
`
`design of the ’625 Patent and Lian feature a top protrusion extending upwardly and
`
`rearwardly and having an intermittent u-shaped notch:
`
`34
`
`LKQ - Ex. 1003 p. 34
`
`
`
`
`
`’625 PATENT
`
`LIAN
`
`
`
`
`
`Ex. 1001, FIG. 2 (annotated)
`
`Ex. 1006, FIG. 4 (cropped)
`
`
`
`
`
`Ex. 1001, FIG. 4
`
`Ex. 1006, FIG. 5 (cropped, annotated)
`
`56. Second, both designs comprise two creases extending from a rear
`
`edge of the fender towards the front of the fender, with the first crease extending to
`
`a crescent-shaped opening at a front portion, the second crease approaching the top
`
`of the wheel arch of the fender, and the interplay between the contours formed by
`
`these creases creates a curved concavity line:
`
`35
`
`LKQ - Ex. 1003 p. 35
`
`
`
`
`
`’625 PATENT
`
`LIAN
`
`
`
`
`
`Ex. 1001, FIG. 2 (annotated)
`
`Ex. 1006, FIG. 4 (cropped)
`
`
`
`
`
`Ex. 1001, FIG.1 (annotated)
`
`Ex. 1006, FIG. 6 (cropped)
`
`36
`
`LKQ - Ex. 1003 p. 36
`
`
`
`
`
`57. Third, as to the remaining feature line on the ’625 Patent denoting the
`
`inflection of the curvature of the fender, Lian exhibits an identical inflection:
`
`’625 PATENT
`
`LIAN
`
`
`
`
`
`Ex. 1001, FIG. 2 (cropped, annotated) Ex. 1006, FIG. 4 (cropped, annotated)
`
`
`
`
`
`Ex. 1001, FIG. 2 (cropped, annotated) Ex. 1006, FIG. 4 (cropped, annotated)
`
`37
`
`LKQ - Ex. 1003 p. 37
`
`
`
`
`
`’625 PATENT
`
`LIAN
`
`
`
`
`
`Ex. 1001, FIG.1 (cropped, annotated)
`
`Ex. 1006, FIG. 6 (cropped, annotated)
`
`
`
`
`
`Ex. 1001, FIG.1 (cropped, annotated)
`
`Ex. 1006, FIG. 6 (cropped, annotated)
`
`38
`
`LKQ - Ex. 1003 p. 38
`
`
`
`
`
`58. As shown above, the design of the fender of Lian curves convexly to a
`
`maximum a
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