`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`LKQ Corporation and Keystone Automotive Industries, Inc.,
`Petitioners,
`v.
`GM Global Technology Operations LLC,
`Patent Owner.
`_________________
`
`U.S. Design Patent No. D797,625
`
`Filed: August 24, 2016
`
`Issued: September 19, 2017
`
`Title: Vehicle Front Fender
`
`__________________________
`
`Inter Partes Review No.: To Be Assigned
`
`
`
`DECLARATION OF JASON C. HILL, IN SUPPORT OF
`
`LKQ CORPORATION’S AND
`
`KEYSTONE AUTOMOTIVE INDUSTRIES, INC.’S PETITION FOR
`
`INTER PARTES REVIEW OF U.S. DESIGN PATENT NO. D797,625
`
`LKQ - Ex. 1004 p. 1
`
`
`
`
`
`I, Jason C. Hill, submit this declaration in support of a Petition for Inter Partes
`
`Review of U.S. Design Patent No. D797,625 (“the ’625 Patent”). In accordance
`
`with 28 U.S.C. § 1746, I declare under penalty of perjury that the statements herein
`
`are true and correct to the best of my knowledge, belief, recollection, and
`
`understanding. All statements made on information and belief are believed to be
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`true. I am over the age of eighteen, and, if asked to do so, I could competently testify
`
`to the matters set forth herein.
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by LKQ Corporation and Keystone Automotive
`
`Industries, Inc. (together “LKQ” or “Petitioner”), as an expert witness in the above-
`
`captioned proceeding. Based on my education and my experience in transportation
`
`design, I have been asked to render an opinion regarding the patentability of the sole
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`claim of the ’625 Patent.
`
`2.
`
`As discussed in further detail in this Declaration and any supplemental
`
`reports, testimony, or declarations that I may provide, it is my opinion that the sole
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`claim of the ’625 Patent is unpatentable based on the grounds set forth herein.
`
`3.
`
`The following is my report, and it and the exhibits hereto contain my
`
`opinions and the support therefore. In connection with rendering my opinion I have
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`reviewed and relied upon the following materials:
`
`•
`
`U.S. Design Patent No. D797,625 (“the ’625 Patent”) (Ex. 1001);
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`Page 2 of 64
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`LKQ - Ex. 1004 p. 2
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`
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`•
`
`•
`
`•
`
`•
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`File History for U.S. Design Patent No. D797,625 (Ex. 1002);
`
`2018
`
`Chevrolet
`
`Equinox
`
`Brochure,
`
`http://www.auto-
`
`brochures.com/makes/Chevrolet/Equinox/Chevrolet_US%20Equinox
`
`_2018.pdf (Ex. 1005);
`
`U.S. Design Patent No. D773,340 (“Lian”) (Ex. 1006);
`
`2010
`
`Hyundai
`
`Tucson
`
`Brochure,
`
`http://www.auto-
`
`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucson_201
`
`0.pdf, archived on April 2, 2014 by Internet Archive organization’s
`
`“Wayback
`
`Machine”
`
`at
`
`https://web.archive.org/web/20140402003154/http://www.auto-
`
`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucson_201
`
`0.pdf (Ex. 1007);
`
`•
`
`Exemplary
`
`images of
`
`the 2010 Hyundai Tucson Brochure,
`
`http://www.auto-
`
`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucson_201
`
`0.pdf, archived on April 2, 2014 by Internet Archive organization’s
`
`“Wayback
`
`Machine”
`
`at
`
`https://web.archive.org/web/20140402003154/http://www.auto-
`
`brochures.com/makes/Hyundai/Tucson/Hyundai_US%20Tucson_201
`
`0.pdf (Ex. 1008); and
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`Page 3 of 64
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`LKQ - Ex. 1004 p. 3
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`
`
`•
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`•
`
`•
`
`4.
`
`File History of U.S. Design Patent No. D773,340 (Ex. 1009);
`
`File History of U.S. Patent Application Serial No. 29/516,319 (Ex.
`
`1010); and
`
`The documents and materials listed in my other declarations.
`
`In addition to the above-stated materials provided, I have also relied on
`
`my own education, training, experience, and knowledge in the field of transportation
`
`or automotive design and design patents.
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`5.
`
`I may also consider additional documents and information that have not
`
`yet been provided to or discovered by me should such documents and information
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`be brought to my attention after the date I submit this Declaration, and I reserve the
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`right to add to or amend my opinions in connection with the same.
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`6.
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`The analysis in this Declaration is exemplary. Additional reasons may
`
`support my conclusions, but they do not form my current analysis. The fact that I
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`do not address a particular reason does not imply that I would agree or disagree with
`
`such additional reason.
`
`7.
`
`I receive compensation at a rate of $375 per hour for my time spent on
`
`this matter, except for any travel time, which is billed at one-half of my hourly rate.
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`I am also being reimbursed for reasonable and customary expenses associated with
`
`my work on this matter. I have no financial interests in the patents involved in this
`
`proceeding, and my compensation is not dependent on the outcome of this
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`Page 4 of 64
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`LKQ - Ex. 1004 p. 4
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`
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`proceeding. The conclusions I present are based on my own judgment. I am not an
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`employee of LKQ Corporation, Keystone Automotive Industries, Inc., Irwin IP
`
`LLC, or any affiliated companies.
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`II. QUALIFICATIONS
`
`8. My current curriculum vitae is Exhibit 1015 in this proceeding.
`
`9.
`
`I hold a Bachelor of Science in Transportation Design from the Art
`
`Center College of Design in Pasadena, California, where I graduated with honors in
`
`1990.
`
`10.
`
`Immediately upon graduation, I went to work with Mercedes-Benz in
`
`their newly-created North American design studio—the first design studio outside
`
`of Mercedes-Benz German headquarters in Sindelfingen, Germany. I worked as an
`
`automotive designer for Mercedes-Benz until 1997. While there for almost 7 years,
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`my design experience ranged from advanced concept cars to near production cars,
`
`including the MCC concept which formed the basis for the SMART car and brand,
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`as well as the W-203, which became the production C-Class vehicle.
`
`11.
`
`In 1997, I was hired by Samsung Motors, where I worked on
`
`automotive designs to help establish the automotive division for the primarily
`
`electronics company.
`
`12. After approximately two years with Samsung, I was hired by Porsche
`
`Engineering Services Styling Studio as their first designer when they opened an
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`Page 5 of 64
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`LKQ - Ex. 1004 p. 5
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`American-based design studio. Among other responsibilities, I worked on the
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`exterior design for the Porsche Carrera GT show car (Paris 2000). After that—
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`through 2005, while still at Porsche—I did vehicle design work for global OEMs
`
`through the company’s consulting arm.
`
`13.
`
`In 2005, I left Porsche and opened my own business, Eleven LLC, a
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`design studio with a focus on design-driven vehicular design, design consulting, and
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`product portfolio consultation. At Eleven, my clients have included international
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`auto manufacturers, start-up vehicle companies, major after-market accessory
`
`suppliers, as well as power-sports companies and mobility solution companies.
`
`14. Currently, and since approximately 2004, I have also been an Associate
`
`Professor at the Art Center College of Design, teaching automotive design to both
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`high level and foundation level students.
`
`15.
`
`I am listed as an inventor on a patent for the ornamental design of a
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`sunroof, namely, U.S. Design Patent No. D693,759.
`
`16.
`
`In my approximately 30 years of work in the field of transportation
`
`design, I estimate that I have been involved with or responsible for the exterior
`
`and/or interior design of more than 18 vehicles. I consider myself to be a designer
`
`of at least ordinary skill in the field of transportation design.
`
`17.
`
`I am serving as an expert in Mahindra & Mahindra Ltd. and Mahindra
`
`Automotive North America, Inc. v. FCA US, LLC, Case No. 2:18-cv-12645 (E.D.
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`Page 6 of 64
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`LKQ - Ex. 1004 p. 6
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`
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`Mich.) on behalf of Mahindra & Mahindra Ltd. and Mahindra Automotive North
`
`America, Inc. I am also serving as an expert in U.S. International Trade Commission
`
`Investigation No. 33T1132, Certain Motorized Vehicles and Components Thereof,
`
`on behalf of Mahindra & Mahindra Ltd. and Mahindra Automotive North America,
`
`Inc.
`
`18.
`
`I am currently serving as an expert in each of the Petitions for Inter
`
`Partes or Post Grant Review filed by LKQ against design patents owned by the
`
`Patent Owner General Motors Global Corporation (“GM”). Those case numbers are
`
`IPR2020-00062, IPR2020-00063, IPR2020-00064, IPR2020-00065, PGR2020-
`
`00002, PGR2020-00003, PGR2020-00004, PGR2020-00005. I am also serving as
`
`an expert for the concurrently filed Petitions for Inter Partes or Post Grant Review
`
`to be filed along with this Petition.
`
`III. MY UNDERSTANDING OF THE APPLICABLE LEGAL
`PRINCIPLES
`
`19. As a design expert, I am not an attorney and, therefore, nothing in this
`
`report should be construed as me offering any legal opinions. Rather, I am offering
`
`design assessments and opinions. In rendering my analysis, I have been informed
`
`by counsel regarding the legal standards for determining patentability. I have
`
`applied those standards in forming the opinions expressed in this report.
`
`20. Based on my conversations with counsel for LKQ and my review of
`
`administrative decisions and articles discussing design patent law principals, I have
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`Page 7 of 64
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`LKQ - Ex. 1004 p. 7
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`the following understanding of patents generally, and design patents specifically. I
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`understand that a “utility patent” protects the way something works, but a “design
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`patent” protects the way something looks.
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`21.
`
`It is my understanding that to be patentable, a design must be new and
`
`original, and non-obvious. To be new (or have “novelty”), a design must differ from
`
`all previous designs (known as the “prior art”). A design must also be original,
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`which means that it has to do more than simply imitate what already exists. I further
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`understand that a design patent does not cover “functional” aspects of the design,
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`that is to say, aspects that are present as part of the design because they have to be
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`there for the article to function.
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`22.
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`It is my understanding that, for design patents, there is only one claim
`
`that identifies the patented design and that single claim is shown or described in the
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`“figures” of the patent.
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`23.
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`I understand that a design patent can be invalidated on the basis that the
`
`claimed invention was “anticipated” (that is, that the claimed invention was not
`
`novel) over a disclosure in the prior art. It is my understanding that a claimed design
`
`is anticipated if it substantially the same as a disclosure in the prior art. I further
`
`understand that the claimed design is substantially the same as the prior art design
`
`if, from the perspective of an ordinary observer, giving such attention as a purchaser
`
`usually gives to the design, the resemblance between the designs is such as to deceive
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`Page 8 of 64
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`LKQ - Ex. 1004 p. 8
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`the ordinary observer into purchasing one supposing it to be the other. It is further
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`my understanding that an ordinary observer would consider the similarity between
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`the designs as a whole rather than elements of the design in isolation, and, as such,
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`a design may be anticipated despite minor or trivial differences for a prior art
`
`reference. However, I also understand that when the claimed design is close to the
`
`prior art designs, small differences could appear important to the ordinary observer.
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`24.
`
`I understand that a design patent can also be invalidated on the basis
`
`that the claimed invention was obvious. Regarding obviousness, I understand that
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`the ultimate question is whether the claimed design would have been obvious to an
`
`ordinary designer who designs the type of articles involved. More specifically, the
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`inquiry is whether one of ordinary skill would have found it obvious to modify or
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`combine prior art designs to create the claimed design. It is also my understanding
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`that obviousness is based on the scope and content of the prior art, the differences
`
`between the prior art and the claim, and the level of ordinary skill in the art. I further
`
`understand that one must not use hindsight to compare prior art to the claimed
`
`design.
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`25.
`
`I further understand that determining whether a design patent claim is
`
`obvious involves a two-step process. First, for a claimed design to have been
`
`obvious as of a certain date, a “primary reference” must have existed as of that date,
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`which is a single thing that, from the perspective of a designer having ordinary skill
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`Page 9 of 64
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`LKQ - Ex. 1004 p. 9
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`in the art, had design characteristics that were basically the same as the challenged
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`design. I further understand that the determination of whether a prior art design was
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`“basically the same” as the claimed design is based upon comparison of the overall
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`visual impressions created as a whole by the prior art design and the claimed design;
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`further, a “primary reference” need not contain every ornamental feature present in
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`the claimed design for it to be “basically the same” as the claimed design.
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`26. Second, I understand that there must be some suggestion or motivation
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`for that designer to modify the “primary reference” such as to arrive at the claimed
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`design—i.e., arrive at the same overall visual appearance as the claimed design;
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`certain other prior art designs having those design elements, “secondary references,”
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`might teach the requisite modifications. And in order to teach such modifications, I
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`understand that the “secondary references” must be so related to the primary
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`reference that the appearance of relevant ornamental features in the “secondary
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`reference” would suggest the application of those features to the “primary
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`reference.” I also understand that a secondary reference is sometimes unnecessary,
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`and that the suggestion to modify the primary reference to arrive at the claimed
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`invention could come from the skill, knowledge, and creativity of an ordinary
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`designer.
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`27.
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`I understand that a designer of ordinary skill determines the appropriate
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`primary and secondary references for an obviousness analysis and that, as explained
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`above, the ultimate question is based on the perspective of a designer of ordinary
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`skill. However, I also understand that some courts have resolved obviousness based
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`on the perspective of the ordinary observer. I understand that in such applications
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`of the test, a hypothetical reference formed by the combination of the design
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`characteristics of the primary reference and any secondary references is compared
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`with the claimed design, and is deemed invalidating if they would have been
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`substantially the same from the perspective of an ordinary observer (i.e., that giving
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`such time as a purchaser normally gives the ordinary observer would have been
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`deceived by the similarity of the two designs into purchasing one design believing it
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`to be the other).
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`28.
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`I further understand that a design is obvious if it would have been
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`obvious to a designer of ordinary skill who designs articles of the type involved,
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`such as vehicle front fenders, here, and that de minimis changes are well within the
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`skill of an ordinary designer in the art.
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`IV. THE ’625 PATENT
`
`29.
`
`I understand that the ’625 Patent was filed on August 24, 2016 and
`
`granted on September 19, 2017.
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`30.
`
`I have reviewed the ’625 Patent and its file history. The ’625 Patent
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`has one claim for the ornamental design for a vehicle front fender, as shown and
`
`described in its four figures. I understand that in a design patent, only the solid lines
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`Page 11 of 64
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`LKQ - Ex. 1004 p. 11
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`
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`are claimed, not the dashed lines. The four figures and descriptions of the ’625
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`Patent are reproduced below:
`
`“FIG. 1 is a perspective view of the vehicle front fender[.]” Ex. 1001, at 1.
`
`Id., FIG. 1.
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`
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`Page 12 of 64
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`LKQ - Ex. 1004 p. 12
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`
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`“FIG. 2 is a side view thereof[.]” Id. at 1.
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`Id., FIG. 2.
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`“FIG. 3 is a front view thereof[.]” Id. at 1.
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`
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`Id., FIG. 3.
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`Page 13 of 64
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`LKQ - Ex. 1004 p. 13
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`“FIG. 4 is a top view thereof.” Id. at 1.
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`
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`Id., FIG. 4.
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`31. The overall visual impression created by the claimed design may be
`
`more clearly appreciated by viewing all four of the referenced figures together, as is
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`set forth together with each figures’ corresponding description in the below table:
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`Page 14 of 64
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`LKQ - Ex. 1004 p. 14
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`’625 PATENT FIGURES AND DESCRIPTIONS
`
`
`
`
`
`“FIG. 1 is a perspective view of the
`vehicle front fender.” Id. at 1.
`
`“FIG. 2 is a side view thereof.”
`Id. at 1.
`
`
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`“FIG. 3 is a front view thereof.”
`Id. at 1.
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`“FIG. 4 is a top view thereof.”
`Id. at 1.
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`Page 15 of 64
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`LKQ - Ex. 1004 p. 15
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`32. The 2018 Chevrolet Equinox embodies the claimed invention, shown
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`below:
`
`
`
`
`
`Ex. 1005, at 3, 20 (cropped).
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`V. ORDINARY OBSERVER
`
`33.
`
`I have been informed that the identification of the ordinary observer is
`
`made by focusing on the actual product that is presented for purchase and the
`
`ordinary purchaser of the product. Although a designer of ordinary skill in the art
`
`would notice extraordinary differences on a microscale, such differences would not
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`LKQ - Ex. 1004 p. 16
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`be noticeable to an ordinary observer. Designers routinely make this distinction
`
`during the design process.
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`34.
`
`In this instance, I believe that an ordinary observer would be the retail
`
`purchaser of an automobile because that is the individual who compares the claimed
`
`design to other automobile designs and makes the decision to purchase a vehicle
`
`comprising the embodying design; although there are other potential observers of an
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`automobile or its constituent parts during the lifetime of a vehicle (e.g., a repair shop
`
`mechanic working on the owner’s vehicle, or an auto parts store employee helping
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`the owner to order replacements), all are consequent to and flow from this original
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`vehicle purchase and the actions of those other potential observers depend
`
`exclusively on the views of and decisions made by the vehicle purchaser and owner.
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`VI. DESIGNER OF ORDINARY SKILL IN THE ART
`
`35.
`
`I have been informed that an “ordinary designer” or “designer of
`
`ordinary skill in the art” is one who designs articles of the type involved in the
`
`relevant art of the ’625 Patent.
`
`36.
`
`In this instance, an ordinary designer, i.e. a designer of ordinary skill in
`
`the art, would be an individual who has at least an undergraduate degree in
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`transportation or automotive design and has work experience in transportation or
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`automotive design, or someone who has several years’ work experience in
`
`transportation or automotive design.
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`Page 17 of 64
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`37. From a design process standpoint, the process used by a vehicle
`
`designer is one of inspiration combined with creative ideation in order to arrive at a
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`visually pleasing result while respecting any engineering and manufacturing
`
`constraints. Generally, the process starts by understanding what the theme of the
`
`design may be, such as “expressive front end design” or “dynamic side sculpture
`
`design.” From there, the designer would identify key elements that make up the
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`theme such as “large hexagonal shaped grille opening.” Once the primary theme is
`
`established, the designer tries various secondary themes for the supporting areas
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`such as lights, intakes, etc. In further example, a rear end may demonstrate a theme
`
`of rugged expression with mechanical visual strength instead of a soft sculpted look,
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`which is most often seen in utility and truck designs. The overall look is a first
`
`impression called a down the road graphic or DRG for shorthand. Designers use the
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`first impression, DRG, as a key tool to establish the look and feel of the overall
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`appearance. The tertiary elements of design and detailing, such as patterning,
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`branding, color, and finish are also the work of the designer or design team, but play
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`a secondary supporting role after the initial design is developed.
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`38. Designers can and do look to many sources for inspiration for design,
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`especially in the global automotive market. Sources would include auto shows, from
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`inside and outside the United States; concept cars; auto industry blogs; auto industry
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`print and online publications, such as Motor Trend or Car and Driver; cars that are
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`Page 18 of 64
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`currently on the market; prior model years of cars; Pinterest; Google image search
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`results; third party websites, such as netcarshow.com and motorologist.com; after-
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`market design trends; and others. It is common during the design process to keep
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`images, both of automotive origin and other items, at the ready for a reminder of
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`what the style of the final product could be. Designers will also look at after-market
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`design trends for customization features. Those parts often sit on top of OEM parts
`
`and present a larger expression of sculpture. Designers look at the overdone style of
`
`these items and sometimes use them as a gauge for future trends.
`
`39.
`
`In other words, designers often look at show cars and concept cars—
`
`not just cars in production—because such cars portend the future. This is especially
`
`important to understand as a designer because, in general, each vehicle concept will
`
`foreshadow a trend, detail, or style that is quite often seen in a broader production
`
`fashion, from various manufacturers, in a very short time frame meaning next
`
`generation production vehicles.
`
`40. Design for production vehicles begins three to five years before a
`
`vehicle is put into production. As designers, we are constantly looking even beyond
`
`that time frame in order to manifest a style into a product. Thus, it is normal for the
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`designer, and the design team, to be very aware of trends and how they could evolve
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`and be applied to a single product or the broader range of vehicles.
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`LKQ - Ex. 1004 p. 19
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`41. Relatedly, I am aware that automakers traditionally release new
`
`vehicles in the final months of the preceding calendar year. And I understand that
`
`under Environmental Protection Agency rules, automakers can introduce a next-
`
`model-year vehicle for public sale as early as January 2 of the preceding calendar
`
`year. This means, for example, that a 2019-model-year vehicle might possibly have
`
`been out for sale starting as early as January 2, 2018.
`
`42. Design can be, and often is, driven by marketing goals and brand
`
`positioning, and the designer must be able to bring current and future trends to the
`
`product or product line. Although it is possible to design automobiles that look
`
`vastly different from the current models on the road, auto manufactures generally do
`
`not venture too far from what the “fashion” of the day or next day is likely to be.
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`This means the designers job is to notice and understand what is generally on trend
`
`and give it a compelling look on a particular product.
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`43. Regarding hood design trends over the past few years, the trend has
`
`been one of designing new-model front hoods, using characteristics of hoods in
`
`previous year-models, to establish a continuity of visual appearance and aesthetic as
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`new models are manufactured. Further, it is common for designers to adapt older
`
`designs through slight alterations in the size and proportion of vehicle components.
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`44.
`
`I further understand that the ordinary designer is presumed to have
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`knowledge of the prior art.
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`VII. CLAIM CONSTRUCTION
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`45. The specification of the ’625 Patent does not claim any portion of the
`
`depicted design shown in broken lines, and I have ignored those portions of the ’625
`
`Patent’s figures for purposes of developing my opinion.
`
`46. Briefly stated and as shown in the below annotated versions of Figure 1
`
`of the ’625 Patent, the claimed design shows a vehicle front fender comprising:
`
` 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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`
`
`Ex. 1001, FIG. 2 (annotated)
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` a first crease and a second crease extending forwards from a rear edge of the
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`fender, a concavity line disposed between the first crease and the second
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`crease, and an inflection line below the second crease; and
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`
`
`
`
`Page 22 of 64
`
`LKQ - Ex. 1004 p. 22
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`
`
`
`
`Ex. 1001, FIGS. 1–2 (annotated);
`
` an angular front elevation profile.
`
`Ex. 1001, FIG. 3.
`
`
`
`47. The claimed design is disclosed through several figures that show the
`
`design from different perspectives. While I understand that a verbal description of
`
`the design is required, a design is best represented by images rather than words and
`
`it is impractical to attempt to verbally describe every element of the claimed design.
`
`It is my opinion that the above description identifies all features of the claimed
`
`design that materially contribute to the overall visual impression it creates; however,
`
`Page 23 of 64
`
`LKQ - Ex. 1004 p. 23
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`
`
`
`
`for the avoidance of doubt, my analysis below is based upon comparison of the
`
`asserted prior art with the claimed design in its entirety as depicted in each of the
`
`disclosed figures.
`
`48. The concavity line is depicted on the claimed design using a
`
`discontinuous line segment that neither contacts the rear edge of the fender, nor the
`
`second crease. A designer of ordinary skill in the art would have understood from
`
`this depiction that the concavity line is not a crease or other clearly demarcated
`
`feature in and of itself, but rather a depiction of the line of inflection between the
`
`surface extending downwards beneath the first crease and the surface approaching
`
`the second crease, and thus is formed as a result of the interplay between those two
`
`creases and the confluence of their respective sloping planes.
`
`49. As to the third line depicted on the claimed design, identified above as
`
`the “Inflection Line,” the virtually identical contour lines converging upon the third
`
`line from both above and below the third line do not appear to denote any particular
`
`difference or discontinuity in curvature at or around that line. Likewise, this
`
`inflection line has no perceptible effect on the curvature of the rear edge of the
`
`fender. This is evident from the below-reproduced figures:
`
`Page 24 of 64
`
`LKQ - Ex. 1004 p. 24
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`
`
`
`
`’625 PATENT
`
`
`
`
`
`Ex. 1001, FIG.1 (detail)
`
`Ex. 1001, FIG. 2 (detail)
`
`50. A designer of ordinary skill in the art would have expected a crease
`
`extending to the rear of the fender panel (or any other feature perceptibly affecting
`
`the contour or curvature of the fender and abutting an edge of the fender) to have
`
`some effect on the contour of fender’s rear edge, as is evident in the ’625 Patent
`
`around both the first crease and the second crease. A designer of ordinary skill in
`
`the art, considering the disclosure set forth in the ’625 Patent, could only reasonably
`
`have understood this third line to denote the inflection point, that is, a local
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`Page 25 of 64
`
`LKQ - Ex. 1004 p. 25
`
`
`
`
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`maximum of the convex surface of the fender panel in its transition from sloping
`
`away from the vehicle through the vertical plane to slope towards the vehicle.
`
`VIII. THE PRIOR ART
`
`51.
`
`In connection with this matter, I have searched for and located various
`
`pieces of prior art. I have also been provided certain pieces of prior art by counsel
`
`for LKQ.
`
`52.
`
`I have relied on the following piece of prior art to inform my opinion
`
`as to the invalidity of the ’625 Patent in view of anticipation.
`
`Exhibit
`
`Description
`
`Filing Date
`
`1006
`
`U.S. Design Patent No.
`
`03/17/2016
`
`D773,340 “Lian”
`
`Eff. 07/30/2014
`
`Publication
`Date
`
`12/06/2016
`
`53.
`
`I have relied on the following pieces of prior art to inform my opinion
`
`as to the invalidity of the ’625 Patent in view of obviousness:
`
`Exhibit
`
`Primary/
`Secondary
`
`1006
`
`Primary
`
`Description
`
`Filing Date
`
`U.S. Design Patent
`
`03/17/2016
`
`No. D773,340 “Lian”
`
`Eff. 07/30/2014
`
`Publication
`Date
`
`12/06/2016
`
`1007–
`
`08
`
`Secondary
`
`2010 Hyundai
`
`Tucson
`
`N/A
`
`04/02/2014
`
`Page 26 of 64
`
`LKQ - Ex. 1004 p. 26
`
`
`
`
`
`A. U.S. Design Patent No. D773,340 (Primary Reference)
`
`54.
`
`I have relied upon U.S. Design Patent No. D773,340 (“Lian”) as prior
`
`art to the ’625 Patent to invalidate the claimed design as anticipated or obvious. I
`
`understand that this Patent names Yubo Lian, Jihan Fan, Bo Bi, and Yue Li as
`
`inventors and BYD Company Ltd. as its assignee. I understand that Lian was filed
`
`with the U.S. Patent Office on March 17, 2016, is a divisional of and claims priority
`
`to U.S. Pat. App. Ser. No. 29/516,319 (“the ’319 Application”), which was filed on
`
`January 30, 2015. I further understand that Lian claims priority to a foreign patent
`
`application, No. 2014 3 026395, filed with the Chinese Patent Office on July 30,
`
`2014.
`
`B.
`
`2010 Hyundai Tucson (Secondary Reference)
`
`55.
`
`I have further relied upon certain images depicting the 2010 Hyundai
`
`Tucson (the “Hyundai Tucson”) as a printed publication that was prior art to the ’625
`
`Patent on the basis that the images were published together by Hyundai in a single
`
`brochure, a digital copy of which was made publicly available on auto-
`
`brochures.com, a website dedicated to compiling and making available for download
`
`automakers’ promotional brochures. I understand that this brochure, as it appeared
`
`on auto-brochures.com, was archived on April 2, 2014, which predates the priority
`
`date of the ’625 Patent by more than one year. Ex. 1007. This brochure and its
`
`included images are appropriate for consideration as a printed publication because a
`
`Page 27 of 64
`
`LKQ - Ex. 1004 p. 27
`
`
`
`
`
`designer of ordinary skill, aware of this publication on or after at least that date,
`
`would have understood all of the images to depict the same vehicle design, and
`
`because designers of ordinary skill in the art regularly consult the promotional
`
`materials, including brochures, of automakers in order to maintain awareness of
`
`developments and new vehicle designs in the automotive design industry, and to see
`
`how those designs are being presented and marketed by automakers. The relied-
`
`upon depictions of the Hyundai Tucson are set forth below:
`
`
`
`Page 28 of 64
`
`LKQ - Ex. 1004 p. 28
`
`
`
`
`
`
`
`
`
`Page 29 of 64
`Page 29 of 64
`
`LKQ - Ex. 1004 p. 29
`
`LKQ - Ex. 1004 p. 29
`
`
`
`
`
`
`
`
`
`
`
`Ex. 1007 at 1–3, 10, 12, 14, 19 (note: the image spanning pages 2 and 3 was merged
`
`to form a single complete image).
`
`Page 30 of 64
`
`LKQ - Ex. 1004 p. 30
`
`
`
`
`
`56.
`
`I understand that a designer of ordinary skill in the art is presumed to
`
`have knowledge of the prior art.
`
`IX. THE ’625 PATENT IS OBVIOUS OVER THE PRIOR ART
`
`A. The ’625 Patent is Anticipated by Lian.
`
`57.
`
`It is my opinion that the ’625 Patent is anticipated by Lian because the
`
`fender panel designs create substantially the same overall impression such that an
`
`ordinary observer would be deceived into purchasing one supposing it to be the
`
`other. The single claim of the ’625 Patent is unpatentable as anticipated by Lian.
`
`Lian’s fender panel design is substantially the same from the point of view of an
`
`ordinary observer as the claimed design. The resemblance between Lian and the
`
`claimed design is such as to deceive the ordinary observer, deceiving her to purchase
`
`one supposing it to be the other.
`
`Page 31 of 64
`
`LKQ - Ex. 1004 p. 31
`
`
`
`
`
`58.
`
`Images set forth in Lian are reproduced below:
`
`
`
`
`
`Page 32 of 64
`
`LKQ - Ex. 1004 p. 32
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 33 of 64
`Page 33 of 64
`
`LKQ - Ex. 1004 p. 33
`
`LKQ - Ex. 1004 p. 33
`
`
`
`
`
`
`
`
`
`Page 34 of 64
`Page 34 of 64
`
`LKQ - Ex. 1004 p. 34
`
`LKQ - Ex. 1004 p. 34
`
`
`
`
`
`
`
`
`
`Ex. 1006, FIGS. 1–7.
`
`59. The similarity between the overall visual impression created by Lian
`
`and the ’625 Patent is apparent from the below visual comparison:
`
`Page 35 of 64
`
`LKQ - Ex. 1004 p. 35
`
`
`
`
`
`’625 PATENT
`
`LIAN
`
`
`
`
`
`Ex. 1001, FIG. 1
`
`Ex. 1006, FIG. 6 (cropped, annotated)
`
`
`
`
`
`Ex. 1001, FIG. 2
`
`Ex. 1006, FIG. 4 (cropped, annotated)
`
`Page 36 of 64
`
`LKQ - Ex. 1004 p. 36
`
`
`
`
`
`’625 PATENT
`
`LIAN
`
`
`
`
`
`Ex. 1001, FIG. 3
`
`Ex. 1006, FIG. 1 (cropped, annotated)
`
`
`
`
`
`Ex. 1001, FIG. 4
`
`Ex. 1006, FIG. 5 (cropped, annotated)
`
`60. Lian shares numerous specific design elements with the ’625 Patent,
`
`and these similarities further show that the front fender of Lian has an overall visual
`
`appearance that is substantially the same as the claimed design. First
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