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 SUR-REPLY TO PETITIONER’S REPLY TO
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`PATENT OWNER’S RESPONSE
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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 SUR-REPLY TO PETITIONER’S REPLY TO
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`PATENT OWNER’S RESPONSE
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`Attorney Docket: 45343-0031IP1
`Case No. IPR2020-00534
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`TABLE OF CONTENTS
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`Introduction ................................................................................................... 1
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`I.
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`II.
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`The Reply Does Not Cure Petitioner’s Unsupported Assertion That Readily
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`Visible Differences Do Not Matter To The Overall Appearance Of The
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`Design ............................................................................................................ 3
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`III.
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`The Reply Does Not Cure The Petitioner’s Failure To Show That Lian
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`Anticipates ..................................................................................................... 8
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`IV.
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`The Reply Does not Cure The Petitioner’s Deficiencies In Grounds 2 And
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`3 ................................................................................................................... 21
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`V.
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`Conclusion ................................................................................................... 26
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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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`2008
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`Transcript of Deposition of Mr. Hill (February 25, 2021)
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`ii
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`I.
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`INTRODUCTION
`The sculpting and curvature of a fender is critical to both an ordinary
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`observer and skilled designer’s perception of a fender design. As LKQ itself
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`concedes in Reply, “the location, orientation, character, and contouring of the first
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`and second creases are key to the overall visual appearance of the ’625 Patent.”
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`See Reply, 16. Similarly, LKQ’s declarant agreed that the sculpted exterior will
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`draw an ordinary observer’s attention. See Ex. 2008, 29:7-12 (“Q. Would you
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`agree with me that the sculpted exterior is something that’s going to draw an
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`ordinary observer’s attention? . . . A. Yes.”). GM’s literature regarding the
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`physical embodiment of the ’625 Patent—which is, of course, directed to the
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`ordinary observer—echoes this point, emphasizing the “stunning statement” made
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`by the “sculpted exterior,” and the “striking sense of motion” created by that
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`design. See Ex. 1005, 2 (“sculpted exterior makes a stunning statement from any
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`angle”); 5 (“sculpted shape” and “striking sense of motion”). Simply put,
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`distinctions in sculpting are significant to the overall appearance of a fender.
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`The differences between the design in the ’625 Patent and the asserted prior
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`art are significant, and create a distinct overall appearance. As suggested by the
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`claimed design’s contemporaneous product literature, the unique features create a
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`sculpted appearance and a smooth, flowing sense of motion. This stands in sharp
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`contrast to the Lian patent, which has sharper features that create an angled and
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`1
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`aggressive overall appearance. In many instances, LKQ’s Petition failed to address
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`these differences (and their impact on the overall appearance) at all. LKQ’s Reply
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`does no better, either improperly raising new arguments or ignoring the plain
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`differences that contribute to the distinct overall appearance of the two designs.
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`For many of the same reasons, LKQ’s obviousness grounds also fail. While
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`LKQ’s Petition proposed only two modifications in its obviousness combination, it
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`now relies on the expanded and amorphous argument that incorporating the Tucson
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`into Lian “would render Lian identical” to the claimed design. Reply, 31. The
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`Board should reject such new, conclusory arguments.
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`Finally, these deficiencies remain compounded by the unreliability of LKQ’s
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`declarants. While LKQ cries foul at GM pointing out the glaring deficiencies in
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`LKQ’s copy-and-pasted declarations, the most it is able to substantively muster in
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`response is the conclusion that experts are not required to write “every (or any)
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`part of their declarations.” Reply, 31. While this conclusion is specious, at best, it
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`cannot be reasonably disputed that declarations prepared by attorneys, and copied
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`for use by multiple experts, without the experts’ knowledge, should be given little
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`weight. That is what happened here, and neither LKQ nor its declarants offer any
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`credible explanation for this conduct.
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`GM respectfully requests that the Board reject LKQ’s arguments, and find
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`the claimed design patentable.
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`2
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`II. THE REPLY DOES NOT CURE PETITIONER’S UNSUPPORTED
`ASSERTION THAT READILY VISIBLE DIFFERENCES DO NOT
`MATTER TO THE OVERALL APPEARANCE OF THE DESIGN
`Vehicle design is a field in which details have a significant impact on the
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`overall appearance of a vehicle. Ex. 2004, ¶10. This is true regardless of whether
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`the field of vehicle fenders is crowded, and regardless of the legal import that has.
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`Mr. Peters testified to the importance of details to a skilled designer based on
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`nearly 40 years of experience, and his testimony remains largely uncontroverted.
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`First, the Reply never disputes Mr. Peters’ testimony explaining the
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`significance of observable details. The evidence confirms why the aesthetic match
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`of a vehicle fender with interfacing components is significant to the ordinary
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`observer and designer. Ex. 1004, 54; Response, III.B; Automotive Body Parts
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`Ass’n v. Ford Global Techs, LLC, 930 F.3d 1314, 1319 (2019) (identifying a
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`“consumer preference for a particular design to match other parts of a whole” in
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`the context of vehicle replacement parts.). Mr. Peters explained why this is true for
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`“the perimeter shape, dimensions, and relative proportions of the design, as well as
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`the shape of the protrusion interfacing between the hood, A-Pillar, side mirror,
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`and/or door,” for example. Ex. 2004, ¶54. Namely, because if “any of these
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`features are misaligned, missing, or slightly different, the mismatch is readily
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`apparent to the ordinary observer.” Id. LKQ ignores this, failing to address the
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`3
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`incongruity that would have been readily recognizable to the ordinary observer or
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`skilled designer when a mismatched part is installed on a vehicle.1
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`Second, the Reply never addresses LKQ’s own prior statements that explain
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`the significance of observable differences to consumers. Ex. 2004, 55-56;
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`Response, III.C; Ex. 2003 at 10, 14 (“[a]utomobile owners seek to repair their
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`automobiles in a way that returns their automobile as closely as possible to its
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`original appearance and condition,” and if the look of the part is different
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`“consumers would simply not purchase the replacement.” (emphasis added)); Ex.
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`2005, 3-4. Instead, LKQ directly contradicts itself in the Reply, summarily
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`dismissing differences as “likely too minor for an ordinary observer to even
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`notice,” even though those differences are immediately observable in the images of
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`the Petition. Here again, LKQ fails to address this straightforward evidence that
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`confirms the impact of observable differences on the overall appearance of the
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`’625 Patent’s design.
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`1 LKQ’s failure to address this aspect of the ordinary observer’s impression
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`is particularly problematic given LKQ’s focus is almost exclusively on the
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`appearance of the fender when installed.
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`4
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`Third, LKQ’s analysis of the crowded field of vehicle fenders ignores the
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`relevant authority on this point. The Federal Circuit has repeatedly made clear that
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`the field of a design plays an important role in assessing the significance of a
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`design’s ornamental features and how those features impact a viewer’s perception.
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`See Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1344 (Fed. Cir. 2020)
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`(“[W]e have never questioned the importance of considering the patented design
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`and the accused design in the context of the prior art.”); Egyptian Goddess v.
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`Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008) (“when the claimed design is close
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`to the prior art designs, small differences between the accused design and the
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`claimed design are likely to be important to the eye of the hypothetical ordinary
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`observer.”); Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1243,
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`(Fed. Cir. 2009) (“in the eyes of the ordinary observer armed with the knowledge
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`of the prior art.” (emphasis added)).
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`While the importance of the design’s field is often brought up in the context
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`of infringement, as in Lanard and Egyptian Goddess, it is equally critical in the
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`context of validity, including obviousness. The In re Harvey case shows that. See
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`In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993). There, the Federal Circuit was
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`directly addressing the obviousness standard for design patents, including the
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`correct standard for determining a Rosen reference, and found that the Board
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`misapplied the obviousness standard. Id. at 1063-64. In doing so, the Federal
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`5
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`Circuit expressly noted the crowded nature of the art as a basis for distinguishing
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`the case from prior cases where designs had been found unpatentable in less
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`crowded fields. Id. at 1064; see also In re Certain Automotive Parts, USITC Pub.
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`No. 4012, 2008 WL 2570086, at *69 (USITC, June 2008) (“In addition . . . the
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`field of vehicle headlamps is in a crowded field and that does weigh in favor of the
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`patentee in determining whether a claimed design is obvious.”).
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`LKQ’s assertion that “GM improperly injects a limitation on infringement
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`into the anticipation analysis” directly contradicts Egyptian Goddess and
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`subsequent Federal Circuit decisions that confirm the same ordinary observer test
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`applies to both infringement and anticipation. Int’l Seaway, 589 F.3d at 1239-40
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`(“[T]he ordinary observer test must logically be the sole test for anticipation as
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`well,” and “it has been well established for over a century that the same test must
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`be used for both infringement and anticipation” (emphasis added)); see also
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`Curver Lux., SARL v. Home Expressions Inc., 938 F.3d 1334, 1342-43 (Fed. Cir.
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`2019) (“we use the same test for determining infringement and anticipation”)
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`(emphasis added)). Contrary to LKQ’s assertion, the case law is clear that in both
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`contexts, the same ordinary observer perspective is required and the nature of the
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`field at issue is critical to the ultimate determination of sameness.
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`The crowded nature of art also applies in the context of obviousness,
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`because the knowledge of a skilled designer will similarly be informed by his or
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`her background knowledge of the prior art. See Hill Dec., Ex. 1043, ¶27
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`(“ordinary designers of articles such as the fender design at issue here do notice
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`nuanced design elements and differences. . . .”). In other words, armed with this
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`knowledge of the prior art, two designs with visible differences would have been
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`recognized by the ordinary designer as not having the “same overall visual
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`appearance.” High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1311
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`(Fed. Cir. 2013); Harvey, 12 F.3d at 1064. LKQ’s argument that more art makes a
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`design more obvious to a skilled designer is contrary to this commonsense
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`proposition and finds no support in the law.
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`Finally, LKQ’s attacks on the nature of the crowded field in this case miss
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`the mark entirely. It cannot be reasonably disputed that the field of automotive
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`components—and, particularly, fenders—is crowded. The fact that the exemplary
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`prior art GM cited in its Response may have different characteristics than the ’625
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`Patent proves nothing for LKQ—rather, it proves GM’s point. The point is not
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`whether the prior art is closer to disclosing the claimed characteristics than Lian;
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`the point is that the prior art shares many of the same general characteristics as
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`Lian, so a skilled designer would be more focused on the details of the claimed
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`design, and where the prior art exhibits differences, when assessing sameness. See
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`Ex. 2004, ¶¶15-16, 44, 51-58; Ex. 2007, 5 (“[Designers] find the smallest details
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`and give them [the] highest level of attention.”). The fact that Mr. Peters explained
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`there were differences between the prior art and the ’625 Patent simply illustrates
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`this point.
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`Ultimately, there are significant differences between the overall appearance
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`of the ’625 Patent and the prior art, when viewed through the lens of the ordinary
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`observer and designer of ordinary skill. LKQ still has failed to address many of
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`the facts as to why visible differences matter to the overall appearance in the field
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`of vehicle fenders, including the importance of match with interfacing parts and its
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`own statements in other proceedings regarding the importance of identical
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`appearance to consumers.
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`III. THE REPLY DOES NOT CURE THE PETITION’S FAILURE TO
`SHOW THAT LIAN ANTICIPATES
` LKQ’s Petition was premised on the faulty assumption of “only” two
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`differences between the claimed design and Lian—the “specific shape of the wheel
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`arch, and the lower rearward terminus of the fender.” Pet. at 55 (emphasis added);
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`id. at 62. While these identified differences contribute to a claimed design that has
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`a different overall appearance than Lian, LKQ’s Petition failed to address any of
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`the numerous remaining differences, or otherwise explain in its Petition why the
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`’625 Patent had the same overall appearance as the prior art despite these
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`differences.
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`Even now, after GM pointed out the Petition’s deficiencies in its Response,
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`LKQ has still not meaningfully addressed readily apparent differences between the
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`’625 Patent and Lian, and continues to support its argument with broad-stroke
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`similarities and unsupported conclusions that the differences do not impact the
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`overall visual appearance.2 The Board should reject LKQ’s argument.
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`The distinct overall appearance of the ’625 Patent’s design flows from a
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`unique and cohesive set of features, all of which contribute to a flowing sense of
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`motion in the claimed design that is much different from the angular design of the
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`Lian patent. Mr. Peters discussed these features at length, explaining how and why
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`2 Mr. Hill’s conclusions on these points are entitled to little or no weight
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`because they are not based on the proper ordinary observer perspective. Rather
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`than consider the perspective of the “retail consumer of an automobile” as alleged
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`in the Petition, or “repair shop professionals,” Mr. Hill appears to base his analysis
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`on retail consumers generally. Ex. 2008, 116:20-118:7 (“Q. Okay. So yes, you
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`believe that it is the same ordinary -- the same ordinary observer would apply in
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`this case with respect to the ’625 Patent as with respect to the cases you mention in
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`your declaration starting at paragraph 64? A. If it’s a retail product, then it’s the
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`same hypothetical ordinary observer.” (emphasis added)); Ex. 1043, 45 (“I
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`understand this to be the same standard as that which must be considered in
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`assessing whether Lian anticipates the claimed design.”).
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`they contribute to the overall appearance of the ’625 Patent, and the absence of
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`these features from Lian. Ex. 2004, ¶¶30-47, 57-99. As described in more detail
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`below, LKQ ignored many of these differences in its Petition, and even in Reply
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`does not rebut the evidence showing why they impact the overall appearance in the
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`eyes of the ordinary observer.3
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`First, consistent with its overall flowing sense of motion, the claimed design
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`has a rounded “door cut line” that visibly distinguishes the overall appearance of
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`the ’625 Patent’s design from Lian. Mr. Peters explained specific design features
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`of the “door cut line” that have a magnified impact to overall appearance because
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`3 LKQ falsely states that “neither GM, nor its expert, Peters, even considered
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`whether [these differences] impact the overall visual impression.” Reply at 6. To
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`the contrary, the Response and Mr. Peters repeatedly discuss how these features
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`create a unique and cohesive overall impression. See, e.g. Response, 20
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`(“particularly impactful to the overall appearance . . . because these differences
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`directly affect the match and compatibility.”); 22 (“complements the gentle
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`curvature of other lines of the ’625 Patent’s design); 25 (same); 29 (same); 32
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`(same).
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`“the door cut line must closely match the perimeter edge of the corresponding door
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`in order to provide a consistent visual impression.” Ex. 2004, ¶¶59-67 (describing
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`a smooth and consistent curvature, a relatively shallow shape, and an apex located
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`near a middle of the fender substantially lower/offset from the “inflection line” and
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`“second crease.”).
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`Ex. 2004, ¶63 (Ex. 1001, FIG. 2 (annotated); Ex. 1006, FIG. 4 (partial, annotated)).
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`The Reply never disputes Mr. Peters’ testimony on this point. See Reply,
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`12. Instead, Mr. Hill reiterates the importance of continuity and harmony between
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`body panels. Ex. 2008, 21:13-22:2 (“the primary goal is to have that harmony”);
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`26:11-15 (“Okay. But it’s certainly a factor that an ordinary observer is going to
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`consider when observing the vehicle is there continuity amongst the different
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`panels? A. Yeah, could be. Yes.”). The differences between the ‘625 Design and
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`Lian are significant because they result in a glaring incongruity and disharmony
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`between the aesthetic of the fender and the door. LKQ’s attempt to dismiss these
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`differences in the door cut line as “likely too minor for an ordinary observer to
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`even notice” are belied by the uncontroverted testimony of Mr. Peters, Mr. Hill,
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`and the fender designs themselves, which show plainly visible differences at this
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`important interfacing point.
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`Second, Lian lacks an overall appearance similar to the ’625 Patent’s design
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`due to the readily visible differences of its upper protrusion. Ex. 2004, ¶¶70-75
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`(“The impact to the overall appearance would have been glaring to the ordinary
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`observer, who is attentive to the match of the fender.”). While the upper portion of
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`the protrusion on the claimed design has a substantially consistent thickness,
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`Lian’s upper portion has a distinct increase in width, with the front side of the
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`upper portion having a width less than half the width of the back side:
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`Ex. 2004, ¶70.
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`12
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`This distinction is significant. As Mr. Peters explained, the “ordinary
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`observer would have been particularly attuned to the match between the protrusion
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`and the hood, A-pillar, and door, and corresponding surface features and sculpting
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`of these components.” Ex. 2004, ¶74.
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`LKQ’s argument to the contrary is based on an analysis of the wrong part of
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`the fender. While LKQ accuses GM of incorrectly annotating the top edge of the
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`protrusion, it is LKQ that focuses on the wrong part of the fender, resulting in an
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`irrelevant comparison of two distinct vehicle segments. LKQ’s Reply annotates,
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`for the first time, a purported top edge, labeled “V,” of Lian. Reply, 14-15.
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`Because the actual upper portion of the protrusion in Lian does not have a
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`substantially consistent thickness, LKQ appears to be claiming that this different
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`feature, V, corresponds to the upper portion of the claimed design. Id. But the
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`surface in Lian that LKQ claims is the “top edge” (V) does not correspond to the
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`top edge of the ’625 Patent’s design; instead, at best, it corresponds to the inner
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`edge of the ’625 Patent annotated red below.
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`Reply, 14 (annotated red). LKQ’s declarant confirmed this:
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`Q:
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`. . . .The surface annotated on page 24 in red of the ’625 Patent is a
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`different surface than the V annotation on page 25 of your declaration
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`of Lian?
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`A. Yes.
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`Ex. 2008, 80:1-6 (objection omitted). When looking at the correct feature, the
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`distinction between the two designs is clear, and the Board should reject LKQ’s
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`argument.
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`Third, the ’625 Patent’s design includes a “third crease” that contributes to
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`its cohesive overall appearance by providing a “visual feature line” or “anchor”
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`that other features of the fender “relate to.” Ex. 2004, ¶¶76-80 (“overall
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`appearance of athleticism and movement to the ordinary observer.”).
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`14
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`The Reply is premised on the false assertion that “Peters conceded” that no
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`change in contour or curvature appears “on any part along the claimed design’s
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`inflection line; only an apex (i.e. a maximum) on the arc of the curve of its rear
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`edge.” Reply, 15. In fact, the testimony LKQ cites, covering pages 121 and 123-
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`125 of Mr. Peters’ deposition, explained the opposite—that the shade lines above
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`and below the third crease have a change in direction. Ex. 1044, 122-123. This is
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`consistent with Mr. Peters’ direct testimony. Ex. 2004, ¶76 (“distinct angle change
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`that defines the crease,” and “not merely an inflection line.”); ¶80.
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`LKQ similarly mischaracterizes Mr. Peters’ testimony regarding images of
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`the commercial embodiment. LKQ falsely states that “Peters admitted even those
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`do not depict a crease on the fender but rather a crease on the door.” Reply, 16.
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`Rather, Mr. Peters plainly stated “I see the crease in the door that continues and it –
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`transitions into the fender,” and “it continues through the door into the fender.”
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`Ex. 1044, 117-119 (“I see that third crease . . . in the fender.”).
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`Aside from this strained reliance on Mr. Peters’ testimony, LKQ fails to
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`provide substantive rebuttal to the presence of a third crease in the ’625 Patent’s
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`design, and its impact on overall appearance flowing from its relationship to other
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`features of the claimed design. Not only does Lian lack the appearance provided
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`by the third crease itself, (see, e.g. Ex. 2004, ¶77), but also lacks the distinct
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`change between light and dark surface shading associated with the third crease. Id.
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`Mr. Hill admitted this in his deposition, conceding that there is no change in
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`shading where LKQ wrongly claims the third crease to be. Ex. 2008, 93:22-94:1.
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`Fourth, Lian lacks the ’625 Patent’s overall appearance stemming from the
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`’625 Patent’s unique sculpting. As Mr. Peters explained, the sculpture of the ’625
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`Patent is defined by smooth, arcing lines and contours that yields a cohesive
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`overall appearance that differs substantially from Lian’s slanted lines extending
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`along a substantially linear trajectory. Ex. 2004, ¶¶81-89. The cohesive overall
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`appearance flowing from the ’625 Patent’s sculpture—and its significance to the
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`ordinary observer—is highlighted by contemporaneous literature describing the
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`commercial embodiment as providing a “scuplted exterior” creating a “striking
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`sense of motion.” See Ex. 1005, 2 (“sculpted exterior makes a stunning statement
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`from any angle”); 5 (“sculpted shape” and “striking sense of motion”).
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`This “striking sense of motion” created by the claimed design, in contrast to the
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`prior art, is visible in the figures below:
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`16
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`Ex. 2004, ¶87 (Ex. 1005, 10 (annotated); Ex. 1006, FIG. 4 (partial, annotated).
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`Rather than directly taking these differences on, LKQ here again overplays
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`Mr. Peters testimony. LKQ’s analysis at pages 16-18 is based on an incorrect
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`assertion that “Peters admitted” the first and second creases of Lian’s fender both
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`exhibit smooth, gentle downward curvature “exactly like those claimed.” Reply,
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`18 (citing Ex. 1044, 88-89). Mr. Peters acknowledged a “general – gentle
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`downward curvature of the first crease,” but not that it had an appearance “exactly
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`like” the ’625 Patent. Ex. 1044, 88-89. Even if the first and second crease did
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`exhibit smooth, gentle downward curvature “exactly like those claimed,” LKQ
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`does not address the different overall appearance stemming from visible
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`differences between the designs. LKQ’s allegeations of general similarties do not
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`address the different overall appearances stemming from the clear differences
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`17
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`between the two designs on this undisputedly critical aspect of the vehicle’s
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`design.
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`Fifth, the ’625 Patent includes a smooth, continous lower profile that
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`definess a circular wheel arch. The wheel arch shape accentuates the smooth,
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`curving lines that characterize the ’625 Patent’s overall appearance, and relates to
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`other curved lines of the design, such as the door cut line and the first and second
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`creases. Lian, in contrast, has a “more squared” 4 wheel arch that yields an overall
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`appearance that lacks the smooth, arcing overall appearance of the ’625 Patent’s
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`design.
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`
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`
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`
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`4 LKQ asserts in the Reply that “Lian’s wheel arch is not ‘squared,’” but this
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`is a term LKQ used in the Petition to describe Lian. Pet., 63 (“Lian’s more squared
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`wheel arch”).
`
`18
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`
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`Ex. 2004, 96 (Ex. 1001, FIG. 2 (annotated); Ex. 1006, FIG. 5.
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`While conceding that the “more squared” shape of Lian’s wheel arch differs
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`from the ’625 Patent, LKQ alleges that “an ordinary observer likely would not
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`have noticed this difference,” or if noticed “would still find the wheel arches
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`substantially similar.” Reply, 19. Critically, however, the Reply never addresses
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`Mr. Peters’ testimony regarding the relationship between the respective wheel arch
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`shapes and how they play into the distinct overall appearances of the ’625 Patent
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`and Lian. Reply, 19-20. While Lian’s “more squared” wheel arch is distinct from
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`the ’625 Patent’s circular wheel arch, the shape of Lian’s wheel arch fits with the
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`linear, segmented overall appearance of Lian’s fender. Ex. 2004, ¶93. The Reply
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`likewise never specifically disputes Mr. Peters’ testimony of the “forward leaning
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`appearance of Lian’s wheel arch,” that “coordinates with design elements”
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`throughout Lian’s fender and vehicle. Ex. 2004, ¶¶94-95.
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`
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`LKQ attempts to improperly shift the burden to GM by alleging that “GM
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`makes no attempt to show why, even if this difference were noticeable, it should
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`distinguish the overall visual appearances of the designs.” Reply at 20. But it is
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`LKQ’s burden to demonstrate why the ordinary observer would have considered
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`the overall appearances to be substantially the same despite these visible
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`differences. Mr. Peters explained why these differences result in a different overall
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`appearance in the eyes of the ordinary observer. Ex. 2004, ¶¶93-95. The Reply
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`19
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`
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`never specifically addressed this testimony, and fails to cure the Petition’s
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`deficiencies.
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`
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`Sixth, the smooth, continous curvature of the door cut line in the claimed
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`design contributes to the smooth, arcuate overall appearance that differs from the
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`overall appearance of Lian’s fender, which includes a rearward extending
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`terminus. LKQ concedes that this difference exists, but its assertion that the
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`“ordinary observer would likely not notice the rearward hook” (Reply, 21) ignores
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`the evidence. LKQ never specifically addresses Mr. Peters testimony explaining
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`the reasons the lower shape would have been significant to the overall appearance.
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`Ex. 2004, ¶¶97-99 (“must closely match the perimeter edge of the corresponding
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`door in order to provide a consistent visual impression.”). Here again, LKQ’s
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`conclusory assertions fail to remedy the deficiencies of the Petition, and fail to
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`satisfy its burden to demonstrate the designs are substantially similar despite this
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`readily visible difference.
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`
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`In sum, all of the ’625 Patent’s features described above contribute to an
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`overall appearance that is “smooth, arcuate, consistent, and athletic,” and that
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`conveys an impression of movement, and balance. Ex. 2004, ¶¶30, 80. These
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`features, and the resulting overall appearance, stand in stark contrast to Lian. Id. at
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`¶58. Where the ’625 design includes smooth, arcuate lines, Lian includes
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`segmented, linear features. The presence of general similarities, many of which
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`20
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`are common design elements of vehicle fenders, does not address the significance
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`of undisputed differences between the two designs.5 The design features described
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`above are not isolated or “minute,” as LKQ wrongly argues, but consistently
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`contribute to divergent themes between the two designs, giving them each a
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`distinct overall visual impression to the ordinary observer. LKQ’s surface-level
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`analysis fails to satisfy its burden of showing that the ’625 Patent and Lian are
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`substiantially the same, and the Board should reject it.
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`IV. THE REPLY DOES NOT CURE THE PETITION’S
`DEFICIENCIESIN GROUNDS 2 AND 3
`The fundamental problem with LKQ’s analysis of Grounds 2 and 3 is that
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`the Petition did not address many significant differences that contribute to the
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`overall appearance of the ’625 Patent’s design. Now, LKQ has gone from
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`identifying only two differences in its Petition, to asserting multiple further
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`modifications raised for the first time in Reply. LKQ’s new obviousness theories
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`propose modifications to Lian to change “the door cut line to have smooth
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`
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`5 LKQ overstates Mr. Peters’ as admitting to the similarity of a list of
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`features. The cited testimony, however, simply describes visible features, notes
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`differences (which LKQ ignores), or does not even involve comparison of the
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`designs. As to some features, LKQ does not cite testimony at all.
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`21
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`
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`curvatures with and without upper and lower acceleration” (Pet., 12-13), change
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`Case No. IPR2020-00534
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`the “sculpting to accommodate different wheel arch shapes” (Pet., 18), “smooth the
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`sculpting directly beneath Lian’s first crease,” (Pet., 31), incorporate “the top edge
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`of the Tucson’s protrusion” (id.), and introduce “more arcuate elements.” Id.
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`These new modifications introduced for the first time in the Reply provide
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`independent reasons that compel rejection of LKQ’s obviousness analysis—the
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`Petition is deficient on its face and LKQ cannot now rely on new arguments
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`outside the scope of its Petition. Federal Circuit precedent shows why such new
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`theories, particularly at this late stage, should be disregarded. See, e.g., Henny
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`Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330-1331 (Fed. Cir. 2019); In r
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