Trials@uspto.gov
`571-272-7822
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`
`
`
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` Paper 10
` Entered: August 11, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LKQ CORPORATION and
`KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
`Petitioner,
`
`v.
`
`GM GLOBAL TECHNOLOGY OPERATIONS LLC,
`Patent Owner.
`____________
`
`IPR2020-00534
`Patent D797,625 S
`____________
`
`
`Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. §314
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 10
` Entered: August 11, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LKQ CORPORATION and
`KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
`Petitioner,
`
`v.
`
`GM GLOBAL TECHNOLOGY OPERATIONS LLC,
`Patent Owner.
`____________
`
`IPR2020-00534
`Patent D797,625 S
`____________
`
`
`Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. §314
`
`
`
`IPR2020-00534
`Patent D797,625 S
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`I.
`
`INTRODUCTION
`
`A. Background
`
`LKQ Corporation and Keystone Automotive Industries, Inc.,
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`(collectively “LKQ”) filed a Petition to institute an inter partes review of the
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`claim for a “Vehicle Front Fender” in U.S. Patent No. D797,625 S (Ex.
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`1001, “the ’625 patent”). Paper 2 (“Pet.”). GM Global Technology
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`Operations, Inc., (“GM”) filed a Preliminary Response. Paper 9 (“Prelim.
`
`Resp.”).
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`We have authority to determine whether to institute an inter partes
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`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
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`of the Petition and the Preliminary Response, we determine that LKQ has
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`established a reasonable likelihood of prevailing on the sole design claim
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`challenged in the Petition. For the reasons expressed below, we institute an
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`inter partes review of the claim of the ’625 patent.
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`B. Additional Proceedings
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`The parties identify various other inter partes and post grant review
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`proceedings that Petitioner has filed challenging different patents owned by
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`GM. The parties do not state that these other proceedings affect, or would
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`be affected by, this proceeding involving the ’625 patent. Pet. 5–6; Paper 5,
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`2.
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`C. The ’625 Patent and Claim
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`The ’625 patent (Ex. 1001) issued September 19, 2017, and lists GM
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`as the assignee. Ex. 1001, codes (45), (73). The title, “Vehicle Front
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`Fender,” refers to an outer surface of a vehicle front fender illustrated in
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`solid lines but with certain portions, apparently the inner surface, shown in
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`dashed lines. See 37 C.F.R. § 1.152, see also MPEP 1503.02, subsection III
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`(“Unclaimed subject matter may be shown in broken lines for the purpose of
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`illustrating the environment in which the article embodying the design is
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`used. Unclaimed subject matter must be described as forming no part of the
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`claimed design or of a specified embodiment thereof.”).
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`The ’625 design includes Figures 1–4, reproduced below, illustrating
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`the claimed front fender as set forth below.1
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`
`
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`1 We refer to the claim, i.e., the vehicle front fender shown in Figures 1–4,
`also as “the ’625 design.”
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`Ex. 1001. Figures 1–4 above depict, respectively, the following views of the
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`claimed vehicle rear bumper design: a perspective view, a side view, a front
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`view, and a top view. Id., code (57).
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`D. Claim Construction
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`LKQ describes the claim as
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`[a] vehicle fender comprising:
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`a top protrusion extending rearwardly and upwardly from an
`upper portion of the fender and having an intermittent u-shaped
`notch;
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`a first crease and a second crease extending forwards from a rear
`edge of the fender, a concavity line disposed between the first
`crease and the second crease, and an inflection line below the
`second crease; and
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`an angular front elevation profile.
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`Pet. 13–15. LKQ provides the following annotated Figure 2, illustrating
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`some notable claim elements.
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`
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`4
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`In annotated Figure 2, above, LKQ illustrates a front perspective view of the
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`claimed vehicle fender pointing to elements such as “first crease,”
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`“concavity line,” “second crease,” and “inflection line.”
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`GM argues inter alia that “LKQ impermissibly ignores the overall
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`shape of the claimed design.” Prelim. Resp. 13 (citing Aristocrat
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`Technologies, Inc. v IGT, IPR2016-00767, Paper 8 at 1, 11 (PTAB Sept. 14,
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`2016). GM does not provide an alternative construction but argues that
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`LKQ has overlooked aspects of the claimed vehicle fender which contribute
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`to the overall appearance, including that
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`[t]he design includes a smooth, consistent, lateral edge extending
`between the “protrusion” and a bottom perimeter edge, a smooth,
`consistent curved lower edge that defines a wheel well, an upper
`“protrusion” having a distinct three-dimensional shape including
`a consistently proportioned top perimeter surface, and nuanced
`sculpting of its surfaces that include a top “crease” having an
`arcuate shape that diverges from the oppositely curving
`protrusion.
`
`Id. at 14.
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`We agree with GM that LKQ’s construction offers an overly
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`simplified interpretation of the ’625 design. For example, LKQ’s
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`construction fails to include any description of the wheel arch, which is
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`clearly evident in the figures as a consistent semi-circular curvature defined
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`by a similarly consistently curved substantially planar edge portion.
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`Ex. 1001, Fig. 2.
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`Our observation of the ’625 design is that no verbal description is
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`necessary. “As the Supreme Court has recognized, a design is better
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`represented by an illustration ‘than it could be by any description and a
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`description would probably not be intelligible without the illustration.’”
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`Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008)
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`(quoting Dobson v. Dornan, 118 U.S. 10, 14, (1886). The overall visual
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`appearance of a “vehicle front fender” shown in Figures 1–4 of the ’625
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`design is clearly exemplified in the drawings. On the record at this stage of
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`the proceeding, the best description of the ornamental features of the ’625
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`design comes from the drawings themselves. Nonetheless, we have taken
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`into account Petitioner’s verbal description of the design in our analysis, but
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`agree with Patent Owner’s contention that Petitioner’s verbal description is
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`an incomplete description of the actual design.
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`Although we do not articulate a specific claim construction, we
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`acknowledge in our following analysis the relevant design characteristics of
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`the ’625 design, including key similarities and distinctions in comparison to
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`the prior art. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d
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`1326, 1332 (Fed. Cir. 2014) (Affirming that a verbal claim construction was
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`unnecessary, the Federal Circuit explained that “the district court did not err
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`by failing to provide an express verbal description of the claimed design;
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`rather, it described the claimed design in the context of comparing it to the
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`prior art.”).
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`E. The Alleged Grounds of Unpatentability
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`LKQ contends that the challenged claim is unpatentable under
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`35 U.S.C. §§102, 103 based on U.S. Design Patent No. D773,340 S
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`(Ex. 1006), “Lian,” a design assigned to BYD Company Ltd., issued
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`December 6, 2016. Pet. 18. LKQ also argues that the challenged claim is
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`unpatentable under 35 U.S.C. §103 based on Lian combined with images of
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`the 2010 Hyundai Tucson (Ex. 1007) as disclosed in a promotional
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`brochure.2 Id.
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`Claims Challenged 35 U.S.C. § References/Basis
`Lian,3
`Claim 1
`102
`Claim 1
`103
`Lian
`Lian and 2010 Hyundai Tucson4
`Claim 1
`103
`
`
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`LKQ also relies on the Declarations of Jason M. Gandy (Ex. 1003)
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`and Jason C. Hill (Ex. 1004) in support of its arguments.
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`II. ANALYSIS
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`A. Principles of Law
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`1. Anticipation
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`The “ordinary observer” test for anticipation of a design patent is the
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`same as that used for infringement, except that for anticipation, the patented
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`design is compared with the alleged anticipatory reference rather than an
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`accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d
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`1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design
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`patent infringement was first enunciated by the Supreme Court in Gorham
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`Co. v. White, 81 U.S. 511 (1871), as follows:
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`[I]f, in the eye of an ordinary observer, giving such attention as
`a purchaser usually gives, two designs are substantially the same,
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`
`2 We make no determinations regarding LKQ’s evidentiary arguments and
`we do not address, at this time, Petitioner’s request for the Board to “take
`official notice of the facts reflected in the screenshots of the archived
`webpages.” Id. at 22–23 n.3. We will resolve those issues based on the full
`trial record only if necessary to reach a final decision.
`3 Ex. 1006, U.S. Design Pat. No. D773,340 S, (December 6, 2016) (“Lian”).
`4 Ex. 1007, 2010 Hyundai Tucson Brochure, copyright 2009,
`http://www.auto-brochures.com/makes/Hyundai/Tucson/Hyundai US
`Tucson 2010.pdf.
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`if the resemblance is such as to deceive such an observer,
`inducing him to purchase one supposing it to be the other, the
`first one patented is infringed by the other.
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`Id. at 528. The ordinary observer test requires the fact finder to consider all
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`of the ornamental features illustrated in the figures that are visible at any
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`time in the “normal use” lifetime of the accused product, i.e., “from the
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`completion of manufacture or assembly until the ultimate destruction, loss,
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`or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. In other
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`words, the ordinary observer test requires consideration of the design as a
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`whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian
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`Goddess Inc. v. Swissa Inc., 543 F.3d 665, 677 (Fed. Cir. 2008). In
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`applying the ordinary observer test we must “determine whether the
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`deception that arises is a result of the similarities in the overall design not of
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`similarities in ornamental features in isolation.” See Richardson v. Stanley
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`Works Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010).
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`Additionally, while the ordinary observer test requires consideration
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`of the overall prior art and claimed designs,
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`[t]he mandated overall comparison is a comparison taking into
`account significant differences between the two designs, not
`minor or trivial differences that necessarily exist between any
`two designs that are not exact copies of one another. Just as
`“minor differences between a patented design and an accused
`article’s design cannot, and shall not, prevent a finding of
`infringement” . . . so too minor differences cannot prevent a
`finding of anticipation.
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`Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp.,
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`728 F.2d 1423, 1444 (Fed. Cir. 1984)).
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`2. Obviousness
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`“In addressing a claim of obviousness in a design patent, the ultimate
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`inquiry . . . is whether the claimed design would have been obvious to a
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`designer of ordinary skill who designs articles of the type involved.” Apple,
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`Inc. v. Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal
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`quotation and citations omitted); see also High Point Design, 730 F.3d at
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`1313 (“The use of an ‘ordinary observer’ standard to assess the potential
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`obviousness of a design patent runs contrary to the precedent of this court
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`and our predecessor court, under which the obviousness of a design patent
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`must, instead, be assessed from the viewpoint of an ordinary designer.”).
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`This obviousness analysis generally involves two steps: first, “one must find
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`a single reference, a something in existence, the design characteristics of
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`which are basically the same as the claimed design”; second, “once this
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`primary reference is found, other references may be used to modify it to
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`create a design that has the same overall visual appearance as the claimed
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`design.” High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301,
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`1311 (Fed. Cir. 2013) (internal quotation and citations omitted).
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`The first step has two parts, we must “(1) discern the correct visual
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`impression created by the patented design as a whole; and (2) determine
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`whether there is a single reference that creates basically the same visual
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`impression.” Id. at 1312 (internal quotation and citations omitted). In the
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`second step, the primary reference may be modified by secondary references
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`“to create a design that has the same overall visual appearance as the
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`claimed design.” Id. at 1311 (internal quotation and citations omitted).
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`However, the “secondary references may only be used to modify the primary
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`reference if they are ‘so related [to the primary reference] that the
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`appearance of certain ornamental features in one would suggest the
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`application of those features to the other.’” Durling v. Spectrum Furniture
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`Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Borden, 90 F.3d
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`1570, 1575 (Fed. Cir. 1996)).
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`Also, when evaluating prior art references for purposes of determining
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`patentability of ornamental designs, the focus must be on actual appearances
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`and specific design characteristics rather than design concepts. In re
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`Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993); see also Apple, Inc. v.
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`Samsung Elec. Co., 678 F.3d at 1332 (“Rather than looking to the ‘general
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`concept’ of a tablet, the district court should have focused on the distinctive
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`‘visual appearances’ of the reference and the claimed design.”).
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`B. The Ordinary Observer
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`The parties offer different definitions for the ordinary observer. LKQ
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`contends “the ordinary observer should be the retail consumer of an
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`automobile.” Pet. 40 (citing Ex. 1003 ¶ 40; Ex. 1004 ¶ 34). LKQ argues
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`that other persons, such as mechanics and auto parts store employees, may
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`assist a retail consumer in determining a replacement body part for the
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`vehicle, however “all are consequent to and flow from this original vehicle
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`purchase and the actions of those other potential observers depend
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`exclusively on the perspective of and decisions made by the vehicle
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`purchaser and owner.” Id. at 41.
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`GM argues that “the ordinary observer includes commercial buyers
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`who purchase replacement vehicle front fenders to repair a customer’s
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`vehicle, such as repair shop professionals.” Prelim. Resp. 7. GM notes that
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`Petitioner has acknowledged in a related proceeding (IPR2020-00065) that
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`“replacement automobile body parts, are typically purchased on behalf of
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`vehicle owners by repair shops.” Id. (quoting IPR2020-00065, Paper 2, 21)
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`(emphasis omitted). According to GM, LKQ has also advocated in the past
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`for commercial buyers, such as repair shop professionals, as typical
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`customers for their products. Id. at 7 (citing Ex. 2003, 4 which is a letter
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`from LKQ’s counsel to a U.S. Customs and Border Protection official
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`stating that “LKQ’s customers for aftermarket automotive parts primarily
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`consist of professional auto body and mechanical repair shops who are
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`knowledgeable about the automotive industry.”).5
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`The case law is consistent that where a patented article is sold and
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`then incorporated into another product, “the ‘ordinary observer’ is the
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`consumer or the upstream purchaser of the patented item.” See Arminak and
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`Associates, Inc. v. St.-Gobain Calmar, Inc., 501 F.3d 1314, 1324 (Fed. Cir.
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`2007) (holding that “the ordinary observer of the trigger sprayer shrouds in
`
`this case is . . . the contract or industrial buyer for companies that purchase
`
`the stand-alone trigger sprayer devices, not the retail purchasers of the
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`finished product”), abrogated on other grounds by Egyptian Goddess, 543
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`F.3d at 665. Somewhat similar to an automotive repair situation, in
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`Keystone, the Federal Circuit explained that “the patented design is of an
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`individual block, not an assembled wall, and the ‘ordinary observer’ for the
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`purpose of the block design patent is a purchaser of the patented block, not
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`of the unpatented wall.” KeyStone Retaining Wall Sys., Inc. v. Westrock,
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`Inc., 997 F.2d 1444, 1451 (Fed. Cir. 1993). In this case, one purchaser who
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`is in danger of being misled includes, as GM asserts, “commercial buyers
`
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`5 We reference the original page numbers of the letter that is Exhibit 2003
`not the page numbers that appear in the header.
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`who purchase a replacement front fender to repair a customer’s vehicle.”
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`Prelim. Resp. 7.
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`We find support in the evidence and case law presented by GM that
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`the ordinary observer includes a commercial buyer of replacement vehicle
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`parts and a retail consumer of an automobile. Id. (citing Egyptian Goddess,
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`543 F.3d at 681). That is to say, as discussed in detail below, the evidence
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`on the record before us demonstrates that the designs at issue have such
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`distinct and similar characteristics that either ordinary observer (the retail
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`consumer or the repair shop professional who would be aware of prior art
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`designs) would confuse the prior art designs for the design claimed by the
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`’625 patent.
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`C. The Designer of Ordinary Skill
`
`LKQ contends that:
`
`a designer of ordinary skill would be an individual who has at
`least an undergraduate degree in transportation or automotive
`design and work experience in the field of transportation design,
`or someone who has several years’ work experience in the field
`of transportation or automotive design.
`
`Pet. 38 (citing Ex. 1003 ¶ 42; Ex. 1004 ¶ 36). GM argues that:
`
`[a] designer of ordinary skill in the art relevant to the ’625 patent
`would have at least an undergraduate degree in automotive
`design, or other related industrial design field, with at least two
`years of relevant practical experience in designing automotive
`body parts. An increase in experience could compensate for less
`education, and an
`increase in education could
`likewise
`compensate for less experience.
`
`Prelim. Resp. 9. We do not discern a significant difference in these
`
`definitions proposed by the parties for an ordinary designer. Both
`
`definitions allow for an undergraduate professional degree, or alternatively a
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`reasonable period of time and work experience in the field of transportation
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`and automotive design field. For purposes of this decision and on the record
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`currently before us we adopt LKQ’s proposed definition of the ordinary
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`designer because it is supported by testimony from LKQ’s witnesses. We
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`emphasize that adopting GM’s definition would not alter the outcome of this
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`Decision.
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`D. Anticipation of the ’625 design based on Lian
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`Lian includes seven drawings of a “Vehicle.” Ex. 1006, code (54).
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`We reproduce Lian’s Figures 1, 4, and 6 below.
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`Figure 1 of Lian is a front elevation view of a vehicle. Ex. 1006, 2.
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`Figure 4 of Lian is a left side elevation view of the vehicle. Id. at 3.
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`Figure 6 of Lian is a front perspective view of the vehicle. Id. at 5. We
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`selected these figures from among Liam’s seven drawings because they
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`show best Lian’s left front fender for comparison with the claimed design.
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`Because we find it helpful, we reproduce below LKQ’s chart from the
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`Petition comparing cropped and annotated views of Lian’s figures side-by-
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`side with Figures 1–4 of the ’625 design. Pet. 46–47.
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`EL 1005, FIG. {5 (cropped, annotated]
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`E1 IUD], FIG. 1
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`E1 10D],FIG_ 2
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`E1 mm, FIG. 4 (cropped, annotated]
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`16
`16
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`LKQ provides on the left side of the claim chart reproduced above, each of
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`Figures 1–4 of the claimed front fender compared with a similar cropped
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`view of the front fender from Lian on the right side of the claim chart.
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`LKQ provides additional claim charts showing certain similarities
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`between specific portions of the ’625 design and Lian. Id. at 48–54. For
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`example, with respect to the “top protrusion,” LKQ compares cropped
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`portions of the ’625 design and Lian, asserting that the similarities of the top
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`protrusions are “an overall visual appearance that is substantially the same as
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`the claimed design.” Id. at 47 (citing Ex. 1003 ¶ 55; Ex. 1004 ¶ 60). We
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`17
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`reproduce below LKQ’s claim chart comparing the relevant portions of the
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`top protrusion
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`
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`Id. at 48. LKQ provides on the left side of the claim chart, above, cropped
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`and highlighted portions of Figures 2 and 4 of the claimed front left fender
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`compared with the same referential cropped and highlighted view of the
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`front left fender of Lian on the right side of the claim chart. LKQ argues
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`that “both feature a top protrusion extending rearwardly and upwardly and
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`having an intermittent u-shaped notch.” Id. (citing Ex. 1003 ¶ 55; Ex. 1004
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`¶ 60).
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`Using another claim chart, below, LKQ also points out some
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`differences, such as the “wheel arch,” between the ’625 design and Lian. Id.
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`at 55.
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`
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`LKQ provides on the left side of the claim chart, above, cropped and
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`highlighted portions of Figure 2 of the claimed front fender compared with
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`the same referential cropped and highlighted view of the front fender of Lian
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`shown on the right side of the claim chart. LKQ argues that the different
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`curvature of the wheel arch and lower terminus of the fenders “are, at most,
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`minor distinctions and neither diminishes the overall visual similarity
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`between the designs.” Id. at 56 (citing Ex. 1003 ¶ 62; Ex. 1004 ¶ 67). Mr.
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`Gandy testifies with respect to the wheel arch, that “[t]he minor difference in
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`shape would not be apparent to an ordinary observer and would be
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`overwhelmed by the many other common features, especially the similarities
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`in the more prominent features and particularly in view of the virtual
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`identicality [sic] in the width, proportion, and general appearance of the
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`wheel arch flats of the two designs.” Ex. 1003 ¶ 63.
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`GM takes issue with most, if not all, of LKQ and its declarants’
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`anticipation analyses. Prelim. Resp. 19–32. GM argues specifically that
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`LKQ has failed to sufficiently “consider the readily apparent features of the
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`design that differ from Lian.” Id. at 19 (citing Pet. 55). By way of example,
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`annotating a cropped portion of Lian’s Figure 6, reproduced below, GM
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`points out for the top protrusion, “Lian depicts an upper surface (green) that
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`curls in multiple planes as it rotates to different degrees, and the width
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`expands significantly, along the length of this surface from the left to right
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`edges.” Id. at 22.
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`The figure above is a cropped and annotated portion of Liam’s Figure 6,
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`which GM argues is “much different” from the ’625 design. Id. GM asserts
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`that LKQ did not address this difference and refers us to an annotated
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`cropped portion from Fig, 1 of the ’625 design, reproduced below, where
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`“[t]he claimed design includes an upper surface (green) having a
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`substantially consistent thickness, and traversing a smooth curvature,
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`between left and right ends.” Id.
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`The figure above is a cropped and highlighted portion of Figure 1 of the
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`’625 patent illustrating mainly the top protrusion.
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`With respect to the wheel arch curvature, GM argues that LKQ
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`ignores the requirement that an ordinary observer is deemed to be aware of
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`the prior art. Id. at 31. And, GM argues, that where there is a significant
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`amount of prior art, “small differences between the accused design and the
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`claimed design are likely to be important to the eye of the hypothetical
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`ordinary observer.” Id. (citing Egyptian Goddess, 543 F.3d at 676). GM
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`asserts, notably without evidence, that “review of prior art front fender
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`designs confirms that a differently-shaped wheel arch . . . [is] the very type[]
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`of difference[] that distinguish front fender designs in the eye of the ordinary
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`observer.” Id.
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`We agree to some extent with GM that LKQ does not address every
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`single element of the claimed design in respect to similarities and differences
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`with Lian. See Prelim. Resp. 32 (GM arguing that “[u]ltimately, LKQ fails
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`21
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`Patent D797,625 S
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`to address multiple, readily apparent features of the claimed design, and thus
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`fails to demonstrate that Lian anticipates the claimed design.”). But LKQ
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`has assessed in comparison to Lian, in detail and with analysis, many of the
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`visually prominent elements that contribute to the overall appearance of the
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`claimed design, including inter alia, the top protrusion, u-shaped notch,
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`wheel arch, first and second creases, inflection line and concavity line. Pet.
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`47–58 (citing Ex. 1003 ¶¶ 54–65; Ex. 1004 ¶¶ 59–70). Although we
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`recognize that LKQ has not assessed all the differences identified by GM
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`between the claimed design and Lian, we determine that the significance of
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`those alleged differences in contributing to the overall visual appearance is a
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`question for development at trial and not a sufficient reason to find the
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`Petition facially inadequate at this preliminary stage.
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`In addition, GM asserts that the ordinary observer must consider
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`vehicle replacement designs in the context of a crowded field, and that we
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`should consider smaller details that potentially increase differences between
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`designs. See Prelim. Resp. 31 (GM arguing that LKQ is “ignoring the
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`ordinary observer’s awareness of prior art that informs whether otherwise
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`small differences impact the overall appearance of the design.”). We agree
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`that the ordinary observer will have experience with the prior art. See Crocs,
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`Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (“When
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`the differences between the claimed and accused designs are viewed in light
`
`of the prior art, the attention of the hypothetical ordinary observer may be
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`drawn to those aspects of the claimed design that differ from the prior art.”).
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`For now, because GM has not introduced evidence of the relatedness of prior
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`art or of a crowded field , we leave this issue for further development at trial,
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`and invite GM to address that issue in a timely filed Response.
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`22
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`Also, anticipation does not require that the design characteristics be
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`identical to the claimed design. See Arminak, 424 F. Supp. 2d at 1193
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`(“Complete similarity is not required to find infringement, and “minor
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`changes in a design are often readily made without changing its overall
`
`appearance.”). We must apply the ordinary observer test considering not
`
`only specific elements of the design, but considering the overall appearance
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`of the design. See Crocs, 598 F.3d at 1303 (“The ordinary observer test
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`applies to the patented design in its entirety, as it is claimed.”).
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`LKQ identifies a substantial number of similarities and some
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`differences between the ’625 design and Lian and supports its arguments
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`with citations to Mr. Gandy and Mr. Hill. Pet. 45–58 (citing Ex. 1003 ¶¶
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`54–65; Ex. 1004 ¶¶ 61–70). Although LKQ’s declarants’ testimony is based
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`on the premise that the ordinary observer is a vehicle owner or purchaser, on
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`the record before us it is not clear that such a person is necessarily excluded
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`from being an ordinary observer. LKQ’s testimonial evidence before us at
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`this point in the proceeding is that an ordinary observer “would have
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`believed that the front fender design of Lian had an overall visual
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`appearance that was substantially the same as that of the ’625 Patent, and the
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`resemblance between the designs was such as to deceive an observer into
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`purchasing one supposing it to be the other.” Ex. 1003 ¶ 65; Ex. 1004 ¶ 70.
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`Our comparison of the ’625 design and Lian is consistent with LKQ’s
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`claim charts and analysis as supported by Mr. Gandy and Mr. Hill. Pet. 47–
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`58; ¶¶ 54–65; Ex. 1004 ¶¶ 61–70). Comparing each of Figures 1–4 with the
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`appropriate figure in Lian we find a keen, but not exact, resemblance
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`between each of the figures and views, i.e., perspective, side elevation, front
`
`23
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`IPR2020-00534
`Patent D797,625 S
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`and top views. Below, by way of example, is a comparison of the side
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`elevation views of the ’625 design and Lian.
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`Above, on the right is Figure 2 from the ’625 design depicting a side
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`
`
`
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`elevation view of the claimed front fender, and on the right is the coinciding
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`side elevation view of the front fender from Lian’s Figure 4. Considering
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`the outer profile of each design in these figures, we observe substantial
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`similarity in the angles and edges adjacent the headlight cutouts, the edge
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`adjacent the front hood and upper most crease, (LKQ’s “first crease”). We
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`also observe that the upper protrusion is similarly arranged and in basically
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`the same proportions. Lian’s upper protrusion appears substantially more
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`similar than different when compared to the ’625 design. This is apparent
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`even when considering the upper surface of the upper protrusion in Lian,
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`which appears slightly arcuate and, as GM contends, is somewhat
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`proportionally larger compared to the ’625 design. See Prelim. Resp. 15–16
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`(comparing cropped annotated version of Ex. 1001, Fig. 1, with cropped
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`annotated version of Lian’s Figure 6). We observe that the wheel arch is a
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`consistent curvature in the ’625 design whereas Lian has a slight
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`squarishness to the wheel arch. In determining whether this difference is
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`important to the ordinary observer, we have only the testimony of LKQ’s
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`24
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`declarants at this point. See, e.g., Ex. 1003 (Mr. Gandy testifying that
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`“these differences have only a minimal impact on the overall visual
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`impressions created by Lian and the ’625 patent.”).
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`Our observations of these designs persuade us, at this stage of the
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`proceeding, that the surface contours between the designs appear
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`substantially similar. Both designs have a first crease or fold extending from
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`the headlight cutouts to the right hand door edge. The arcuate and concavity
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`crease lines in both Lian and the ’625 design similarly extend inwardly from
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`the right hand edge towards the wheel arch and are close in proportion.
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`The ’625 design includes a line extending from the right edge to the wheel
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`arch, which GM refers to as a “feature,” and LKQ calls an “inflection line.”
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`Prelim. Resp. 28; Pet. 13. It is not entirely clear from the parties’
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`descriptions and Figures 1–4 of the ’625 design as to what this “feature” or
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`“inflection line” is intended to represent. Ex. 1001, Fig. 2. Based on our
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`review of the perspective view in Figure 1, the shading lines above and
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`below the line appear to show a surface boundary or transition. Id., Fig. 1.
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`At this stage, the only evidence before us explaining how the ordinary
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`observer would perceive this feature/inflection line is from Mr. Gandy and
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`Mr. Hill, who testify that this line represents “a local maximum of the
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`convex surface of the fender panel in its transition from sloping away from
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`the vehicle through the vertical plane to slope towards the vehicle.” Ex.
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`1003 ¶ 38; Ex. 1004 ¶ 50. LKQ’s declarants state that a similar inflection
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`line occurs in Lian’s design, where “the fender of Lian curves convexly to a
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`maximum at approximately the same location on the fender panel as the
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`inflection line of the ’625 Patent.” Ex. 1003 ¶ 58; Ex. 1004 ¶ 63.
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`25
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`Although there are differences, considering the designs as a whole, we
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`find, based on the present record, there is a substantial similarity in the
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`overall appearance of the two designs such that an ordinary observer would
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`consider these designs to be substantially the same “such as to decieve such
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`an observer inducing him to purchase one supposing it to be the other.”
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`Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir.
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`2015). Accordingly, LKQ has shown a reasonable likelihood of prevailing
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`in showing that Lian anticipates the ’625 design.
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`E. Obviousness of the ’625 design based on Lian
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`LKQ argues that the ’625 design wo
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