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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LKQ Corporation and Keystone Automotive Industries, Inc.
`Petitioners
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`v.
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`GM Global Technology Operations LLC
`Patent Owner
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`Case IPR2020-00534
`Patent No. D797,625
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`PATENT OWNER’S RESPONSE
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`I.
`II.
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`III.
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`IV.
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`V.
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`VI.
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`Attorney Docket: 45343-0031IP1
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`TABLE OF CONTENTS
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`B.
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`C.
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`INTRODUCTION ......................................................................................... 1
`THE ’625 PATENT CLAIMS A UNIQUE, COHESIVE DESIGN FOR A
`FRONT FENDER ......................................................................................... 3
`IN THE FIELD OF VEHICLE FENDER DESIGN, NUANCED
`FEATURES ARE SIGNIFICANT TO OVERALL APPEARANCE ........ 12
`A.
`The ’625 Patent’s specific design elements are significant in view of
`the crowded field of vehicle fenders. .................................................. 12
`The match of a vehicle fender with other vehicle components is
`central to the ordinary observer’s overall impression. ........................ 15
`Petitioner touts the similar appearance of its parts, affirming that
`observable differences matter to the ordinary observer. ..................... 16
`THE BOARD SHOULD GIVE NO WEIGHT TO LKQ’s DECLARANTS .
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`THE ’625 PATENT IS NOT ANTICIPATED BY LIAN (GROUND 1) .. 20
`A.
`Lian lacks the ’625 Patent’s door cut line. .......................................... 21
`B.
`Lian does not disclose the ’625 Patent’s “top protrusion.” ................. 24
`C.
`Lian lacks the third crease of the ’625 Patent’s design. ...................... 30
`D.
`Lian lacks the overall appearance provided by the ’625 Patent’s
`sculpting. ............................................................................................. 32
`Lian lacks the overall appearance provided by a smooth, continuously
`curved wheel arch. ............................................................................... 37
`Lian lacks the lower, rear shape of the claimed design. ..................... 41
`F.
`THE ’625 PATENT IS NOT OBVIOUS BASED ON LIAN OR LIAN IN
`VIEW OF THE 2010 HYUNDAI TUSCON (GROUNDS 2 AND 3) ....... 44
`i
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`E.
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`A.
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`B.
`C.
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`D.
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`LKQ’s obviousness theories fail to address the multiple, readily
`apparent differences between the claimed design and Lian that are
`significant to the ordinary designer. .................................................... 45
`Lian is not a proper Rosen reference. .................................................. 46
`It would not have been obvious to modify the shape of Lian’s wheel
`arch based on Lian alone (Ground 2). ................................................. 47
`It would not have been obvious to modify the shape of Lian’s rear
`lower portion based on Lian alone (Ground 2). .................................. 50
`It would not have been obvious to include an additional crease on
`Lian’s fender (Grounds 2 and 3). ........................................................ 52
`Lian, in combination with the 2010 Hyundai, does not render the
`design obvious(Ground 3). .................................................................. 53
`1.
`LKQ selectively incorporates only particular features from the
`2010 Hyundai Tucson. ................................................................. 54
`LKQ fails to show the resulting fender would have “the same
`overall visual appearance” as the ’625 Patent’s design. .............. 57
`VII. CONCLUSION ........................................................................................... 57
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`E.
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`F.
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`2.
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`Attorney Docket: 45343-0031IP1
`Case No. IPR2020-00534
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`EXHIBIT LIST
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`Exhibit
`No.
`2001 Declaration of Joseph A. Herriges
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`Description
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`2002 Ken Kuchling, How Many Car Models Are Out There?, LinkedIn
`(October 2, 2017), https://www.linkedin.com/pulse/how-many-car-
`models-out-ken-kuchling/.
`Irwin Letter Re LKQ Petition No. 68 for Relief from Seizure and
`Forfeitures Notices, September 28, 2017
`2004 Declaration of Tom Peters
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`2003
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`2005 REPLACE Brand Vehicle Front Fender,
`https://www.carid.com/replace/front-driver-side-fender-mpn-
`gm1240402c.html, retrieved October 2, 2020
`Transcript of Deposition of Mr. Hill (October 19, 2020)
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`2006
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`2007
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`Transcript of Deposition of Mr. Gandy (October 22, 2020)
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`iii
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`I.
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`INTRODUCTION
`LKQ’s Petition is premised on a superficial and overly simplistic analysis
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`that ignores all but two differences between the ’625 Patent’s design and the
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`primary reference, Lian. The reason for this flawed approach is plain: there are
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`numerous features that contribute to the ’625 Patent’s overall appearance nowhere
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`to be found in the prior art, so LKQ glosses over them or summarily refers to the
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`differences as “de minimis.” This is far from sufficient for LKQ to meet its
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`burden, and the Board should reject LKQ’s arguments in their entirety.
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`With rare exception, every car on the road has a front fender, and many of
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`those fenders share generic concepts mentioned in the Petition. What makes the
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`design claimed in the ’625 Patent unique is not the presence or absence of common
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`features, but the details in the claimed design that stand out in the crowded field—
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`features that an ordinary observer would believe are significant and contribute to
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`the overall design. These features include a unique perimeter shape; an upper
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`“protrusion” having a distinct three-dimensional shape with a consistently-
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`proportioned top surface; and coordinated sculpting of the surfaces that includes
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`smooth, arcing shapes. Ex. 2004, ¶¶10-17, 28-47. The detail of this design
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`provides a distinct and cohesive overall appearance to the ordinary observer, which
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`is nowhere to be found in the prior art, and which (in many cases) LKQ fails to
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`address at all.
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`Further compounding the deficiencies in LKQ’s analysis are the deficiencies
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`in the two declarations that form the backbone of LKQ’s arguments. Although
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`both experts testified they did not see the others’ declaration prior to submission
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`and have never talked to each other, their declarations contain large portions that
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`are word-for-word identical. Further, despite agreeing that the reports were
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`identical in many respects, one of LKQ’s experts, Mr. Hill, could not explain this
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`copying, apparently learning about it for the first time at his deposition. Ex. 2006,
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`Hill Tr. at 30:23-31:13. Following this revelation, Mr. Hill was so unsure of the
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`reliability of his declaration that he would not confirm whether it complied with his
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`own employer’s plagiarism policy:
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`Q. And so my question, again, is, does your report comply with the
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`letter of the plagiarism requirement for your university?
`A. Yeah, I don’t believe I can answer that with a specific yes or
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`no.
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`Id. at 58:23-59:4 (objections omitted).
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`LKQ’s other expert, Mr. Gandy, fared no better. He admitted that he did not
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`write his declaration, did not find the prior art his declaration cites, and did not
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`have any relevant experience in vehicle design. Ex. 2007, Gandy Tr. at 31:16-17
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`(“I didn’t specifically write what is in the final version of this declaration.”); id. at
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`11:3-12:20.) Instead, given his lack of relevant experience in vehicle design, he
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`testified that he approached his declaration from the perspective of a patent
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`examiner. Id. at 33:6-14 (“I approached this the way I would have approached it as
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`an examiner.”)
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`The implication from all of this is clear: LKQ’s declarants are not the
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`authors of their own declarations; LKQ’s lawyers are. The contents of LKQ’s
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`declarations are attorney argument, plain and simple, and the Board should give
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`them no weight.
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`Particularly after disposing of LKQ’s attorney-written declarations, LKQ’s
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`superficial analysis cannot meet its burden. Rather than assessing the designs from
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`the surface-level perspective that LKQ advocates, the Board should assess the
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`specific features of the claimed design that would have been apparent to the
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`ordinary observer, and which define its uniqueness within the crowded field of
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`vehicle fenders. That analysis shows that the ’625 Patent’s many differences
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`contribute to an overall appearance that is not found in or suggested by either Lian
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`or the 2010 Hyundai Tucson.
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`II. THE ’625 PATENT CLAIMS A UNIQUE, COHESIVE DESIGN FOR
`A FRONT FENDER
`The ’625 Patent depicts a vehicle fender with a coordinated set of features
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`that contribute to a unique overall appearance. The design includes a smooth,
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`consistent, lateral edge extending between the “protrusion” and a bottom perimeter
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`edge; a smooth, consistent curved lower edge that defines a circular wheel well; an
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`upper “protrusion” having a distinct three-dimensional shape with a consistently
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`proportioned top perimeter surface; and coordinated sculpting of its surfaces. Ex.
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`2004, ¶¶28-47. Perimeter edges and sculpting of the fender are designed to
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`interface with corresponding edges and sculpting of adjacent components when
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`installed on a vehicle. Id. Each of these specific features, and the relationships of
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`these features, contribute to the overall appearance of the ’625 Patent’s design. Id.
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`It is these aspects that should be the focus of the Board’s attention. See, e.g.,
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`Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1343 (Fed. Cir. 2020)
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`(“Under the ‘ordinary observer’ test, a court must consider the ornamental features
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`and analyze how they impact the overall design.”); Aristocrat Techs., Inc. v. IGT,
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`IPR2016-00767, Paper 8 at 1, 11 (PTAB Sept. 14, 2016); see also Institution
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`Decision at 5 (“LKQ’s construction offers an overly simplified interpretation of the
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`’625 design.”).
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`First, the claimed design includes distinct lateral and lower perimeter
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`shapes. The lateral edge (i.e., “door cut line”) has a smooth and consistent
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`curvature between the bottom of the fender and the “protrusion” at the top of the
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`fender. Ex. 2004, ¶¶35-38. The lower edge has a circular shape that defines the
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`wheel arch. Id. These features complement each other—both have smooth,
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`arcuate shapes that echo the smooth and consistent curvature of the “first” and
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`“second” creases and other sculpting of the fender.
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`Ex. 2004, ¶37 (Ex. 1001, FIG. 2 (annotated)). As an interfacing feature that must
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`match with the door panel, the appearance of the door cut line would have been
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`particularly prominent to the ordinary observer. Id., ¶54; Infra, Section III.B.
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`Second, the claimed design includes a “protrusion” having a particular three-
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`dimensional shape. The “protrusion” includes an upper surface (green) with a
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`substantially consistent thickness between left and right ends. The upper surface
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`(green) has a thickness and consistent width that mirrors the inside surface of the
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`“u-shaped notch,” furthering the cohesive overall appearance of the fender. Ex.
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`2004, ¶¶39-40. This unique protrusion shape is clear from a three-dimensional
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`perspective, considering perspective, side, front, and top views.
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`Ex. 2004, ¶39 (EX1001, FIGS. 1-4 (partial, annotated)).
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`These features would have been important to the ordinary observer because
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`the protrusion must interface between multiple other components of the vehicle
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`during normal use of the fender. Ex. 2004, ¶40; Infra, Section III.B. For example,
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`the protrusion interfaces with the vehicle hood (e.g., to the left in the view of FIG.
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`4) and with the vehicle A-pillar (e.g., to the right in the view of FIG. 4). The
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`crease extends entirely from side-to-side, signaling that it interfaces with creases of
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`the hood and A-Pillar. Similarly, the “u-shaped notch” includes a thickness meant
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`to interface with a door/side-view mirror assembly, for example. As Mr. Peters
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`explained, the “appearance of the specific features of the protrusion would have
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`been particularly notable to the ordinary observer’s impression of the overall
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`appearance of the fender because of the requirement that these features match with
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`other components of the vehicle.” Ex. 2004, ¶ 40.
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`Third, the claimed design includes lines and surfaces having smooth, arcing
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`shapes that provide a distinctive sculpting. Ex. 2004, ¶¶41-42. For example, the
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`“first” and “second” creases gently curve between respective ends. Likewise, the
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`“concavity” line and third crease slightly arch from end-to-end. These lines
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`cooperate with the smooth, arching lines of the fender perimeter, and the contoured
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`surfaces between these lines, to provide an overall appearance of smooth, curving
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`shapes. Id. Each of the lines generally starts at a relatively lower position towards
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`the front of the fender (e.g., left side in the perspective of FIG. 2) and terminates at
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`a relatively higher position.
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`Ex. 2004, ¶41 (Ex. 1001, FIG. 2 (annotated)).
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`The upwardly arcing “concavity line” extends from a left end of the “second
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`crease” and nearly to the right end of the “first crease.” In addition to providing a
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`unique, curving shape, these aspects impact the overall appearance by providing a
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`distinctive surface lighting/shadow. The contoured sculpting depicted by these
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`lines catches light to provide relatively lighter and darker surfaces readily apparent
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`to the ordinary observer. This aspect of the design is highlighted by the
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`commercial embodiment identified by Petitioner.
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`Ex. 2004, ¶42 (Ex. 1005, 10 (annotated); Ex. 1001, FIG. 2 (annotated)).
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`Moreover, as annotated below, the upper edge of the “protrusion” and the
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`“first crease” extend in opposing directions. The upper edge of the “protrusion”
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`curves upward while the purported “first crease” (blue, below) curves downward
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`below the U-shaped notch. The upper edge draws the observer’s eye upwardly,
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`while the first crease draws the observer’s eye downwardly and rearwardly toward
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`the door cut line and corresponding crease of the door panel. Ex. 2004, ¶43.
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`Id. (Ex. 1001, FIG. 2 (annotated)).
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`Importantly, the “first crease” (blue) serves as a “character line,” the position
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`and direction of which is critical to the overall appearance in the eyes of the
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`ordinary observer. Ex. 2004, ¶44. As Mr. Peters explains, the curvature and
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`relative positioning of the “first crease” helps set a tone for the proportions and
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`body shape of the fender, as well as other parts to which the fender connects, such
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`as the bumper, head lights, side panels, and rear portions of the vehicle. Id. The
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`shape, location, and relationship with other features of the design are central to the
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`visual impression the fender creates.
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`Fourth, the claimed design includes a horizontal crease near the lower
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`portion of the fender that extends between the wheel arch and the lateral edge. Ex.
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`2004, ¶45. This feature contributes to the overall sculpted appearance of the front
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`fender, and adds a focal location extending to the right of the wheel arch. The
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`focal location created by this crease divides the lower portion near the wheel arch
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`from the upper portion of the panel and is highlighted by shade lines above and
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`below the crease.
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`Ex. 2004, ¶45 (EX1001, FIGS. 1 and 2 (annotated)).
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`Fifth, the claimed design defines a wheel arch having a circular perimeter.
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`The perimeter has a smooth, continuous curvature that extends between the front
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`corner and rear bottom corner of the fender. Here again, the circular perimeter of
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`the cutout echoes the smooth, arcing lines of the other perimeter edges, the
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`protrusion, first and second creases, and other sculpting of the fender, contributing
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`to the cohesive overall appearance of the fender.
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`Ex. 2004, ¶46 (FIG. 2, (annotated)). The design has a relatively short height
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`between the top of the protrusion and the bottom of the lateral edge, and is
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`noticeably free from any discrete rearward extensions at the lower edge. Id. The
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`lateral edge terminates above a radial center of the wheel arch such that the wheel
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`arch defines a relatively small circular segment having a substantially symmetrical
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`shape.
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`III.
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`IN THE FIELD OF VEHICLE FENDER DESIGN, NUANCED
`FEATURES ARE SIGNIFICANT TO OVERALL APPEARANCE
`LKQ’s Petition is premised on the incorrect assumptions that there are only
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`two differences between Lian and the claimed design, and that these differences
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`are insignificant or de minimis. These assertions overlook the way in which an
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`ordinary observer would view the design, and are contrary to the law. Ex. 2004,
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`¶¶48-56. Details are particularly important in this case because (1) the art is
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`crowded; (2) the fender at issue must interface with other aspects of a vehicle,
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`which puts increased focus on incongruities; and (3) fender replacement part
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`marketing materials tout the importance of details and parts being “identical” in
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`this field.
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`A. The ’625 Patent’s specific design elements are significant in view of
`the crowded field of vehicle fenders.
`The Federal Circuit and the PTAB have consistently emphasized that the
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`validity of design patents are dependent on the field of which they are a part.
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`“[W]hen the claimed design is close to the prior art designs, small differences
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`between the accused design and the claimed design are likely to be important to the
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`eye of the hypothetical ordinary observer.” Egyptian Goddess v. Swisa, Inc., 543
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`F.3d 665, 681 (Fed. Cir. 2008); Lanard Toys, 958 F.3d at 1341-43 (“the attention
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`of the ordinary observer ‘will be drawn to those aspects of the claimed design that
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`differ from the prior art’ . . . which would cause ‘the distinctions between the
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`patented and accused designs [to be] readily apparent.”). Relevant questions in
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`design patent cases are thus subject-matter specific: in a crowded field, the
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`ordinary observer is more likely to notice details. Id.; In re Harvey, 12 F.3d 1061,
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`1064 (Fed. Cir. 1993).
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`The field of front fenders is crowded. Ex. 2004, ¶¶49-53. For example,
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`U.S. Pat. Nos. D766149, D704607, D763753, D686536, D692798, and D762151
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`depict vehicle fender designs and reflect common design concepts like those
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`recited in Petitioner’s proposed construction for the ’625 Patent.
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`Dozens more examples that depict vehicle front fenders were cited and considered
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`by the examiner. See, e.g., D713298, D764362, D785521, D739306, D722282,
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`D784857, D613645, D611387, D704103, D717696, D692798, D680909,
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`D615458, D699629, D781180, D635488, D773361, D699649. These designs
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`show similar features typical of the field of vehicle fender designs, including
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`arcuate wheel arches, top protrusions that interface between the vehicle hood and
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`A-pillar, lateral edges that interface with a door panel, contoured surface sculpting
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`that includes multiple creases. Yet, the specific designs of these features differ,
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`and such differences serve to distinguish the vehicle fenders in the eyes of the
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`ordinary observer.
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`Here, the ordinary observer was plainly “attuned” to the types of specific
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`design differences that distinguish between different fenders. Ex. 2004, ¶¶52-53;
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`Ex. 2002, 2; Egyptian Goddess, 543 F.3d at 681; Columbia Sportswear, 942 F.3d
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`at 1129. As Mr. Peters explains:
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`The ordinary observer would have been attuned to nuanced differences
`between fender designs, and these nuanced differences would have
`had a substantial impact on the overall appearance of fender designs
`to the ordinary observer. This is because fender designs are prolific,
`and because so many fender designs share common design concepts.
`Ex. 2004, ¶52 (emphasis added).
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`Ultimately, in the field of vehicle fenders, the ordinary observer’s overall
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`impression is not limited to generic commonalities, but recognizes nuanced
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`differences. The Petition ignores these differences, and the prior art does not teach
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`them.
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`B. The match of a vehicle fender with other vehicle components is
`central to the ordinary observer’s overall impression.
`The Petition also overlooks the fact that, in the context of vehicle parts, the
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`part must fit with other vehicle components. Ex. 2004, ¶54. The Federal Circuit
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`has noted the importance of this continuity, identifying the “consumer preference
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`for a particular design to match other parts of a whole” in the context of vehicle
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`replacement parts. Automotive Body Parts Ass’n v. Ford Global Techs, LLC, 930
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`F.3d 1314, 1319 (2019).
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`What this means here is that the overall appearance inquiry extends to the
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`entire normal and intended use of the vehicle fender. Int’l Seaway Trading Corp.
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`v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) (“The ordinary observer
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`test requires the fact finder to consider all of the ornamental features illustrated in
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`the figures that are visible at any time in the ‘normal use’ lifetime of the accused
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`product, i.e., ‘from the completion of manufacture or assembly until the ultimate
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`destruction, loss, or disappearance of the article.’”); see also Contessa Food Prods.
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`v. Conagra, Inc., 282 F.3d 1370, 1379 (Fed. Cir. 2002). The ordinary observer’s
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`impression of the overall appearance thus encompasses both observation of the
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`fender in isolation and when installed on the vehicle—its “normal and intended
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`use.”
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`In both circumstances, the ordinary observer would have been especially
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`attuned to interfacing aspects of the design because they directly impact the
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`match/fit with other parts of the vehicle. Ex. 2004, ¶54. For example, the
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`“protrusion” interfaces with the hood, A-pillar, side mirror, and/or door. A
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`mismatch between the protrusion and these other surfaces—even if slight—would
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`result in a visible incongruity. Id. The difference is particularly glaring when
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`there are fundamental differences in design characteristics, such as between a
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`design having an overall appearance defined by smooth, curving lines versus a
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`design defined by segmented, angular lines. Id.
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`C. Petitioner touts the similar appearance of its parts, affirming that
`observable differences matter to the ordinary observer.
`LKQ’s own statements in other cases further drive home the importance of
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`details in vehicle design. For example, in another case, LKQ stated that, when
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`choosing replacement parts, “[a]utomobile owners seek to repair their automobiles
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`in a way that returns their automobile as closely as possible to its original
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`appearance and condition.” Ex. 2003 at 10 (emphasis added). LKQ has also
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`affirmed that if the look of the part is different “consumers would simply not
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`purchase the replacement.” Id. at 14 (emphasis added); see also Ex. 2004, ¶55.
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`Marketing materials for replacement products further affirm the impact of
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`details of a design to the consumer’s impression of overall appearance. For
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`example, a replacement vehicle fender for the 2018 Chevrolet Equinox under the
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`REPLACE brand is described as “identical” to the original part in “fit, form, and
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`function” such that it makes a vehicle “look new.” Ex. 2005, 3-4 (“identical in
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`specifications to your vehicle’s factory fenders – they ensure the same fit, form,
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`and function” and “Replace sells only parts that have [original equipment] fit,
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`functions, and appearance” (emphasis added)). LKQ and its distributors tout the
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`“identical” look of replacement parts because consumers demand an “identical”
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`overall appearance—details are readily noticed by the ordinary observer. Ex.
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`2004, ¶56.
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`Simply put, details matter to the ordinary observer’s impression of overall
`
`appearance in the context of vehicle fenders. The ordinary observer’s overall
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`impression would have been defined by a multitude of readily apparent features of
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`the ’625 Patent’s design that differ from Lian.
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`IV. THE BOARD SHOULD GIVE NO WEIGHT TO LKQ’S
`DECLARANTS
`Institution of this proceeding was premised largely on the testimony of two
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`declarations cited by LKQ. (Institution Decision at 28.) In large part, however,
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`these declarations, from Mr. Hill and Mr. Gandy, are word-for-word the same as
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`each other and the Petition. This is the case despite both Mr. Hill and Mr. Gandy
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`testifying that they did not see the others’ declarations prior to submission and
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`have never talked to each other. Ex. 2006, Hill Tr. at 25:15-17, 26:5-27:1; Ex.
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`2007, Gandy Tr. at 7:22-8:15. The implication is plain. The declarations are
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`attorney argument—not legitimate expert testimony.
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`17
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`Case No. IPR2020-00534
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`The Federal Circuit has explained that an “ipse dixit declaration,” such as the
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`declarations from Messrs. Hill and Gandy, is insufficient and entitled to no weight.
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`TQ Delta, LLC v. Cisco Sys., 942 F.3d 1352, 1362-64 (Fed. Cir. 2019) (refusing to
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`give weight to petitioner’s “ipse dixit declaration”); see also In re Am. Acad. of Sci.
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`Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“the Board is entitled to weigh
`
`the declarations and conclude that the lack of factual corroboration warrants
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`discounting the opinions expressed in the declarations”). Likewise, the Board has
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`repeatedly found unsupported statements, including from an expert, are entitled to
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`little or no weight. Tate & Lyle Americas LLC v. Cargill, Inc., IPR2014-00084,
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`Paper 12 at 17-18 (PTAB April 1, 2014); Kamada, ITD. V. Grigols Therapeutics
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`Inc., IPR2014-00899, Paper 43 at 10 (PTAB December 15, 2015) (“Under our
`
`rules, unsupported expert testimony may be given little to no weight.”).
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`Here, large sections of the Hill and Gandy declarations parrot the Petition
`
`without any additional underlying facts or data, and numerous paragraphs of the
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`Gandy and Hill Declarations are copied nearly verbatim from each other.
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`Compare Ex. 1004, Hill Report, ¶¶ 19-28, 46, 47-49, 51-56, 58-59, 62-64 with Ex.
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`1003, Gandy Report at, 21-30, 35-38, 46-51, 53-54, 57-59, 67; Pet., 15, 16-17, 21-
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`24, 44-47, 48-55. When Mr. Hill was asked why large sections of his declaration
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`were identical to Mr. Gandy’s, despite neither seeing Mr. Gandy’s report or talking
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`to him, Mr. Hill was unable to provide an explanation:
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`18
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`Attorney Docket: 45343-0031IP1
`Case No. IPR2020-00534
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`Q. Yeah. I guess my question is, you have no idea why there are
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`large sections of your report that are copied and pasted between
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`your report and Mr. Gandy’s report, right? You have no
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`explanation for that?
`A.
`I have no -- explanation beyond pure speculation.
`Ex. 2006, Hill Tr. at 41:9-16 (objection omitted).
`
`
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`The fact that Mr. Hill’s declaration is identical in many respects to Mr.
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`Gandy’s is particularly problematic because Mr. Gandy has none of the relevant
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`experience necessary to offer an opinion from the perspective of an ordinary
`
`observer or skilled designer. Mr. Gandy testified that he has no experience in
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`vehicle design: his education did not involve vehicle design; he has never worked
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`for a vehicle design firm; he has never worked for a vehicle company of any kind;
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`he has never designed a vehicle; he has never supervised design of a vehicle; and
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`has never consulted in work involving vehicle design. Ex. 2007, Gandy Tr. at
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`8:17-9:23. Given has lack of experience, Mr. Gandy testified that he did not write
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`any of the paragraphs dealing with claim construction in his report, (Ex. 2007,
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`Gandy Tr. at 27:2-22); that he didn’t write Section VIII of his report, dealing with
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`the description of the prior art and invalidity, (id. at 29:2-4); that he “didn’t
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`specifically write what is in the final version of this declaration,” (id. at 31:16-17);
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`and that he approached the report “the way [he] would have approached it as an
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`19
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`
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`examiner,” rather than an independent expert offering a technical opinion, (id. at
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`Case No. IPR2020-00534
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`33:6-14).
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`While Mr. Hill was unable to explain why his report was copied from Mr.
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`Gandy’s, the reason is clear: the attorneys wrote the substance, copied the
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`substance into two separate documents, and presented those documents for Mr.
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`Hill and Mr. Gandy to sign. Copy-and-pasted text provided by attorneys is not a
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`substitute for actual testimony, and is insufficient to establish designs as
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`substantially similar or obvious. See TQ Delta, 942 F.3d at 1362-63. The Gandy
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`and Hill declarations are attorney argument, masquerading as expert testimony,
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`and the Board should give them no weight.
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`V. THE ’625 PATENT IS NOT ANTICIPATED BY LIAN (GROUND 1)
`The Lian reference does not anticipate the ’625 Patent. Numerous aspects of
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`the claimed design that make up its overall appearance are absent from Lian,
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`including the claimed design’s unique perimeter, the “protrusion” having a distinct
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`three-dimensional shape with a consistently-proportioned top surface, and nuanced
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`sculpting, having a specific shape, positioning, and relationship of smooth, arcing
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`lines. Ex. 2004, ¶¶57-58. The Petition’s anticipation theory assumes “only” two
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`differences exist between the claimed design and Lian, failing to even
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`acknowledge multiple other differences—all of which contribute to the
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`20
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`
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`significantly different overall appearance of the claimed design. See, e.g., Pet. at
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`Case No. IPR2020-00534
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`13.
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`A. Lian lacks the ’625 Patent’s door cut line.
`Lian does not disclose the claimed design’s perimeter shape that defines the
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`“door cut line.” Ex. 2004, ¶¶59-67. This aspect of the claimed design has at least
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`three distinct features: (1) a smooth and consistent curvature as the edge gently
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`arcs between the bottom of the fender and the “protrusion,” (2) a relatively shallow
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`shape such that the edge is located entirely below the “u-shaped notch,” and (3) an
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`apex located near a middle of the fender, substantially lower/offset from the
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`“inflection line” and “second crease.” Id. As Mr. Peters explains, the ordinary
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`observer would have been closely attuned to even slight differences in the
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`perimeter shape of the door cut line, because minor differences impact the match
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`with a vehicle that has even a slightly different door shape. Ex. 2004, ¶67; see also
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`supra, Section III.B. In other words, these differences are particularly impactful to
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`the overall appearance, whether the fender is viewed alone or installed on a
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`vehicle, because these differences directly affect the match and compatibility of the
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`fender during its normal use. Ex. 2004, ¶67. Lian has none of these features of
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`this critical interfacing component.
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`First, the door cut line of the claimed design has a smooth, continuous,
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`arcuate shape, which forms a gently curving line defining a substantial length of
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`21
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`the fender’s perimeter. Its profile complements the smooth, continuous curvature
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`Attorney Docket: 45343-0031IP1
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`of the wheel arch, the smooth, consistent curvature of the “first” and “second”
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`creases, and other sculpting of the fender.
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`Ex. 2004, ¶60 (Ex. 1001, FIG. 2 (annotated); Ex. 1006, FIG. 4 (pa
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