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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`LKQ Corporation and Keystone Automotive Industries, Inc.,
`Petitioners,
`v.
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`GM Global Technology Operations LLC,
`Patent Owner.
`_________________
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`IPR2020-00534
`U.S. Design Patent No. D797,625
`__________________________
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`PETITIONERS’ NOTICE OF APPEAL
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`Via E2E
`Patent Trial and Appeal Board
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`via USPS Priority Mail Express
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Via CM/ECF
`United States Court of Appeals for the Federal Circuit
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`D797,625 S
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. §§ 90.2 and 90.3, Petitioners LKQ
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`Corporation and Keystone Automotive Industries, Inc. (“Petitioners”) hereby
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`provide notice that they appeal to the United States Court of Appeals for the Federal
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`Circuit from the Patent Trial and Appeal Board’s Final Written Decision in Case No.
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`IPR2020-00534 entered on August 4, 2021 (Paper 28), and from all underlying
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`orders, decisions, rulings, and opinions called up by that final ruling which adversely
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`affected Petitioners.
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`This notice is timely per 37 C.F.R. § 90.3, having been filed within 63 days
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`after the date of the Final Written Decision. A copy of the Final Written Decision is
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`attached as Exhibit A.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioners anticipate that the
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`issues on appeal include at least:
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`(i)
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`The Board’s determination that the claim is not unpatentable as
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`anticipated over U.S. Design Pat. No. D773,340 (“Lian”);
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`(ii) The Board’s determination that the claim is not unpatentable as obvious
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`over Lian or over Lian in view of the 2010 Hyundai Tucson;
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`(iii) The Board’s claim construction;
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`(iv) The Board’s application of its claim construction to Lian and
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`consequent conclusion that Lian is not a proper primary reference for
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`the obviousness inquiry;
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`(v) The Board’s legal error in applying “crowded field” legal principles and
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`evidence
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`finding of validity as
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`to anticipation and
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`nonobviousness;
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`(vi) The Board’s legal error in incorrectly defining the ordinary observer,
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`including in finding that the ordinary observer includes a repair part
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`purchaser or repair shop specifically seeking to restore a vehicle to its
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`original condition;
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`(vii) The Board’s legal error in applying obviousness and anticipation
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`standards that do not consider the prior art and claimed designs as a
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`whole and instead focus on isolated design features;
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`(viii) The Board’s failure to consider evidence of record offered by petitioner
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`and failure to provide rationale for ignoring such evidence;
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`(ix) The Board’s factual errors in considering differences between the claim
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`and prior art;
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`(x) The Board’s inadequate explanation of and failure to provide rationale
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`for its analysis; and
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`(xi) any findings or determinations supporting or related to the above-
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`mentioned issues.
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`Petitioners’ further review of the relevant law and record could reveal
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`additional issues to be raised on appeal resulting from the adverse rulings set forth
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`above.
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), Petitioner is
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`simultaneously filing copies of this notice with each of the Patent Trial and Appeal
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`Board and the Director of the United States Patent and Trademark Office. In
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`addition, pursuant to Fed. Cir. R. 15(a)(1), a copy of this notice along with the
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`required docketing fees are being filed with Clerk of the United States Court of
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`Appeals for the Federal Circuit via CM/ECF.
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`Dated: September 23, 2021
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`Respectfully submitted,
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`/Barry F. Irwin, P.C./
`Barry F. Irwin, P.C.
`Registration No. 36,557
`180 N. Wacker Drive, Suite 400
`Chicago, IL 60606
`312.667.6081
`birwin@irwinip.com
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), a true copy of Petitioner’s Notice of Appeal
`was served on this September 23, 2021, by e-mail upon the following:
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`LEAD COUNSEL
`Dorothy P. Whelan, Reg. No. 33,814
`3200 RBC Plaza
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`60 South Sixth Street
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`Minneapolis, MN 55402
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`Tel: 612-335-5070/Fax 877-769-7945
`IPR45343-0018IP1@fr.com
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`BACK-UP COUNSEL
`Craig A. Deutsch, Reg. No. 69,264
`Grace J. Kim, Reg. No. 71,977
`Jennifer J. Huang, Reg. No. 64,297
`Joseph A. Herriges, Pro Hac Vice
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070/Fax 877-769-7945
`PTABInbound@fr.com
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`Additional electronic service to: whelan@fr.com; deutsch@fr.com; gkim@fr.com;
`jhuang@fr.com; and herriges@fr.com. Patent Owner has consented to service by
`electronic means. Further, a true copy has been deposited for delivery via USPS
`Priority Mail Express to Dorothy P. Whelan at the address listed above.
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`Further, pursuant to 37 C.F.R. § 90.2, a true copy of Petitioner’s Notice of
`Appeal was deposited on September 23, 2021, for delivery via USPS Priority Mail
`Express to the Director of the USPTO at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`Dated: September 23, 2021
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`/Barry F. Irwin, P.C./
`Barry F. Irwin, P.C.
`Registration No. 36,557
`Irwin IP LLC
`180 North Wacker Drive, Suite 400
`Chicago, IL 60606
`Phone: 312.667.6081
`birwin@irwinip.com
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`Exhibit A
`Exhibit A
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`Trials@uspto.gov
`571-272-7822
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` Paper No. 28
` Entered: August 4, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`LKQ CORPORATION and
`KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
`Petitioner
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`v.
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`GM GLOBAL TECHNOLOGY OPERATIONS LLC,
`Patent Owner.
`____________
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`IPR2020-00534
`Patent D797,625 S
`____________
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`Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
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`DANIELS, Administrative Patent Judge.
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`JUDGMENT
`Final Written Decision
`Determining No Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
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`Patent D797,625 S
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`I. INTRODUCTION
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`A. Background
`LKQ Corporation and Keystone Automotive Industries, Inc.,
`(collectively “LKQ”) filed a Petition to institute an inter partes review of the
`claim for a “Vehicle Front Fender” in U.S. Patent No. D797,625 S (Ex.
`1001, “the ’625 patent”). Paper 2 (“Pet.”). GM Global Technology
`Operations, Inc., (“GM”) filed a Preliminary Response. Paper 9 (“Prelim.
`Resp.”). On August 11, 2020, we entered a Decision instituting an inter
`partes review of the challenged claim in this proceeding. Paper 10 (“Inst.
`Dec.”).
`Following our Institution Decision, GM timely filed a Response.
`Paper 17 (“PO Resp.”). LKQ filed a Reply. Paper 21 (“Pet. Reply”). GM
`subsequently filed a Sur-Reply. Paper 23 (“PO Sur-Reply”). We heard oral
`argument on April 27, 2021. A transcript of the argument has been entered
`into the record. Paper 27 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). Having reviewed the
`arguments of the parties and the supporting evidence, we find that Petitioner
`has not demonstrated by a preponderance of the evidence that the sole claim
`of the ’625 patent is unpatentable.
`B. Additional Proceedings
`The parties identify various other inter partes and post-grant review
`proceedings that Petitioner has filed challenging different patents owned by
`GM. The parties do not state that these other proceedings affect, or would
`be affected by, the outcome of this proceeding. Pet. 5–6; Paper 5, 2.
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`C. The ’625 Patent and Claim
`The ’625 patent (Ex. 1001) is a design patent that issued September
`19, 2017, and lists GM as the assignee. Ex. 1001, codes (45), (73). The
`title, “Vehicle Front Fender,” refers to an outer surface of a vehicle front
`fender, which the figures of the patent illustrate in solid lines, but with
`certain portions shown in dashed lines, such as the inner surface, that would
`not be observable when the fender is attached to a vehicle. See 37 C.F.R.
`§ 1.152; see also MPEP 1503.02, subsection III (“Unclaimed subject matter
`may be shown in broken lines for the purpose of illustrating the environment
`in which the article embodying the design is used. Unclaimed subject matter
`must be described as forming no part of the claimed design or of a specified
`embodiment thereof.”).
`The ’625 design includes Figures 1–4, reproduced below, illustrating
`the claimed front fender as set forth below.1
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`1 We refer to the claim, i.e., the vehicle front fender shown in Figures 1–4,
`also as “the ’625 design.”
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`Ex. 1001. Figures 1–4 above depict, respectively, the following views of the
`claimed vehicle front fender design: a perspective view, a side view, a front
`view, and a top view. Id. at code (57).
`D. Claim Construction
`In an inter partes review based on a petition filed after November 13,
`2018, the claims are construed
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. [§] 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005) (en banc) (setting forth claim construction standard in civil
`actions).
`With respect to design patents, it is well settled that a design is
`represented better by an illustration than a description. Egyptian Goddess,
`Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing
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`Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although preferably a design
`patent claim is not construed by providing a detailed verbal description, it
`may be “helpful to point out . . . various features of the claimed design as
`they relate to the . . . prior art.” Id. at 679–80; cf. High Point Design LLC v.
`Buyers Direct, Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to
`district court, in part, for a “verbal description of the claimed design to
`evoke a visual image consonant with that design”).
`1. LKQ’s Proposed Claim Construction
`LKQ relies on the Declarations of Jason M. Gandy (Ex. 1003) and
`Jason C. Hill (Ex. 1004; Ex. 1043) in support of its claim construction and
`arguments. GM relies on the Declaration of Thomas V. Peters (Ex. 2004).
`LKQ contends that the claim of the ’625 patent, as shown by the solid
`lines in the drawings, can be textually described as:
`[a] vehicle fender comprising:
`a top protrusion extending rearwardly and upwardly from an
`upper portion of the fender and having an intermittent u-shaped
`notch;
`a first crease and a second crease extending forwards from a rear
`edge of the fender, a concavity line disposed between the first
`crease and the second crease, and an inflection line below the
`second crease; and
`an angular front elevation profile.
`Pet. 13–15 (emphasis omitted). LKQ provides the following annotated
`Figure 1 from the ’625 patent, emphasizing certain claim elements.
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`In annotated Figure 1, above, LKQ illustrates a front perspective view of the
`claimed vehicle fender pointing to a “first crease,” a “concavity line,” a
`“second crease,” and an “inflection line.” Id. at 14.
`2. GM’s Proposed Claim Construction
`GM’s position is that LKQ’s construction is too general and
`simplistic. See PO Resp. 1 (GM arguing that it “is not the presence or
`absence of common features, but the details in the claimed design that stand
`out”). GM describes the claimed design as “a coordinated set of features
`that contribute to a unique overall appearance.” Id. at 3. Summarized
`below, GM asserts that there are five specific ornamental aspects of the
`design that contribute to its uniqueness. Id. at 4–11.
`(a) “[f]irst, the claimed design includes distinct lateral and
`lower perimeter shapes”
`GM argues that the right hand lateral edge, i.e., “door cut line,” and
`the circular edge of the wheel arch “complement each other—both have
`smooth, arcuate shapes that echo the smooth and consistent curvature of the
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`‘first’ and ‘second’ creases and other sculpting of the fender.” Id. at 4.
`Reproduced below is GM’s annotated version of Figure 2 of the ’625 design.
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`GM’s annotated version of Figure 2 of the ’625 design is shown above with
`the door cut line and wheel arch highlighted in red. Id. at 5.
`(b) “[s]econd, the claimed design includes a ‘protrusion’
`having a particular three-dimensional shape”
`GM argues that the shape of the protrusion is unique, specifically
`drawing our attention to the consistent width of the upper surface of the
`protrusion, shown highlighted in green in Patent Owner’s annotated Figure 1
`reproduced below.
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`GM’s annotated version of Figure 1 of the ’625 design is shown above with
`the upper surface of the protrusion highlighted in green. Id. at 6. Patent
`Owner argues that “[t]he upper surface (green) has a thickness and
`consistent width that mirrors the inside surface of the ‘u-shaped notch,’
`furthering the cohesive overall appearance of the fender.” Id. at 5 (citing Ex.
`2004 ¶¶ 39–40).
`(c) “[t]hird, the claimed design includes lines and surfaces
`having smooth, arcing shapes that provide a distinctive
`sculpting”
`According to GM, the claimed design has first and second creases that
`“gently curve between respective ends.” Id. at 7. GM contends that the
`“concavity line” is similarly curved and that “[t]hese lines cooperate with the
`smooth, arching lines of the fender perimeter, and the contoured surfaces
`between these lines, to provide an overall appearance of smooth, curving
`shapes.” Id. Figure 2 of the ’625 patent as annotated by Patent Owner is
`reproduced below.
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`GM’s annotated version of Figure 2 of the ’625 design is shown above with
`the first and second creases, and concavity line, highlighted in red. Id. at 5.
`Patent Owner refers to the first crease as a “character line.” Id. at 9.
`According to GM’s declarant, Mr. Peters, “the curvature and relative
`positioning of the ‘first crease’ helps set a tone for the proportions and body
`shape of the fender.” Ex. 2004 ¶ 44.
`(d) “[f]ourth, the claimed design includes a horizontal
`crease near the lower portion of the fender that extends
`between the wheel arch and the lateral edge”
`GM argues that the horizontal crease located adjacent to the wheel
`arch “contributes to the overall sculpted appearance of the front fender, and
`adds a focal location extending to the right of the wheel arch.” PO Resp. 10.
`We note LKQ refers to this feature as an “inflection line.” Pet. 14. Patent
`Owner’s annotated Figure 1 is reproduced below.
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`GM’s annotated version of Figure 1 of the ’625 design is shown above with
`the horizontal crease highlighted in red. PO Resp. 10.
`(e) “[f]ifth, the claimed design defines a wheel arch having
`a circular perimeter. The perimeter has a smooth,
`continuous curvature that extends between the front
`corner and rear bottom corner of the fender”
`GM contends also that the wheel arch contributes to the overall
`appearance of the claimed design because “the circular perimeter of the
`cutout echoes the smooth, arcing lines of the other perimeter edges, the
`protrusion, first and second creases, and other sculpting of the fender.” Id. at
`11. Figure 2, as annotated by GM, is reproduced below.
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`GM’s annotated Figure 2, above, illustrates the perimeter of the wheel arch
`highlighted in red. Id.
`3. The Claim Construction Analysis
`In addition to its claim construction the specific design elements
`discussed above, GM makes several arguments to support its overarching
`contention that, “in the field of vehicle fender design, nuanced features are
`significant to overall appearance.” Id. at 12 (citing Ex. 2004 ¶¶ 48–56). GM
`argues that an ordinary observer would consider the overall appearance of
`the claimed design and that details are important “because (1) the art is
`crowded; (2) the fender at issue must interface with other aspects of a
`vehicle, which puts increased focus on incongruities; and (3) fender
`replacement part marketing materials tout the importance of details and parts
`being ‘identical’ in this field.” Id. We address these three arguments in
`turn.
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`(a) Whether Vehicle Fender Design is a Crowded Art
`GM argues that vehicle fenders are in a crowded field. Id. at 13. GM
`argues that during prosecution of the application thatthat became the ’625
`patent, the Examiner cited and considered “dozens” of vehicle front fenders.
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`Id. GM cites several cases, including In re Harvey, 12 F.3d 1061, 1064
`(Fed. Cir. 1993), where the Federal Circuit discusses crowded art. In
`Harvey, the Federal Circuit distinguished the facts from a prior case, In re
`Hopkins, explaining that the loud speaker designs at issue in Hopkins were
`in a field “much less crowded than that of ornamental vase design,” which
`was the focus of Harvey. Harvey, 12 F.3d at 1064.
`We appreciate that a recognition that the vehicle fender field is
`considered to be in a “crowded art” would be helpful for GM insofar as
`small or “nuanced” differences between the claimed design and the prior art
`will then become even more important. However, the “crowded art” concept
`is highly fact dependent. GM has presented evidence of other design patents
`for vehicle fenders. See PO Resp. 15; see also Ex. 1001, code (56) (listing
`dozens of references). GM’s declarant, Mr. Peters, points out 24 design
`patents relating to vehicle fender design and, out of those, specifically
`addresses six “vehicle fender designs that reflect common design concepts
`like those recited in Petitioner’s proposed construction for the ’625 Patent.”
`Ex. 2004 ¶ 50. Mr. Peters explains that, due to the necessity to interface
`with other vehicle components and body parts, commonalities between
`fender designs can “include arcuate wheel arches, protrusions that interface
`between the vehicle hood and A-pillar, door cut lines that interface with a
`door panel, and contoured surface sculpting that includes multiple creases.”
`Ex. 2004 ¶ 51. Also, Mr. Peters references “an article from October 2017
`estimating that over 1,700 different car models were on the road.” Id. ¶ 53
`(citing Ex. 2002, 2).
`We are not persuaded that the field is crowded based merely on the
`evidence of the number of vehicle models that include front fenders. GM
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`has not defined clearly the field of art that is allegedly crowded. For
`example, it is unclear whether the field of art should include all vehicles as
`recited in the title, or be limited to sedans, as opposed to trucks or sports cars
`which could arguably be significantly different in appearance. GM’s
`analysis of six other fender designs, advanced to show that the field of
`fender design is crowded, is helpful to show certain commonalities among
`related fender designs, but it is not as persuasive that fender design is
`specifically a crowded art. Moreover, to the extent In re Harvey is
`applicable here, we find that vehicle fenders are more fairly akin to loud
`speakers, as compared to vases, which have been made for thousands of
`years. See Un-Making Sense of Alleged Abkhaz-Adyghean Inscriptions on
`Ancient Greek Pottery, Alexei Kassian, Copyright: Koninklijke Brill NV,
`Leiden, 2016 (last viewed Aug. 4, 2021 at https://www.researchgate.net/
`publication/311802093_Un_Making_Sense_of_Alleged_Abkhaz
`Adyghean_Inscriptions_on_Ancient_Greek_Pottery) (explaining that “[a]
`large number of Ancient Greek vases, starting from the late 8th to the early
`4th centuries BC, bear short inscriptions”).
`We acknowledge that there are many different front fender designs,
`and we find that this fact helps illustrate both commonalities and differences
`among the designs. See, e.g., PO Resp. 13 (GM providing a collage of
`fender designs to illustrate common features). We are not persuaded, on the
`record before us, that GM has provided sufficient facts or evidence for the
`Board to determine that vehicle fender design is a relatively crowded art.
`(b) Interfacing with Other Vehicle Components and the
`Similar Appearance of Replacement Parts
`GM argues that “the ordinary observer would have been especially
`attuned to interfacing aspects of the design because they directly impact the
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`match/fit with other parts of the vehicle.” PO Resp. 15–16 (citing Ex. 2004
`¶ 54; Auto. Body Parts Ass’n v. Ford Glob. Techs., LLC, 930 F.3d 1314,
`1319 (Fed. Cir. 2019)). In this case, extending our claim construction
`inquiry beyond the metes and bounds of the claim to address “fit with other
`vehicle components” is not necessary. PO Resp. 15–16 (citing Ex. 2004
`¶ 54). For one thing, the claim in the ’625 patent does not include any other
`body parts or vehicle components. Ex. 1001, code (57), Figs. 1–4; see also
`OddzOn Prod., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)
`(“A design patent only protects the novel, ornamental features of the
`patented design.”). However, we do find persuasive GM’s evidence that,
`when repairing a vehicle, consumer preference is to choose identical
`replacement parts, for the reason that identical parts best return the vehicle to
`its original appearance. Pet. 16 (citing Ex. 2003, 10, 14; Ex. 2004 ¶¶ 55–56;
`Ex. 2005, 3–4). This evidence helps support GM’s position that “[t]he
`ordinary observer’s overall impression would have been defined by a
`multitude of readily apparent features of the ’625 Patent’s design.” PO
`Resp. 17.
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`(c) How the Claim is Construed
`We are persuaded by the parties’ arguments and the evidence in this
`case that vehicle fender designs include unique ornamentation as shown in
`the drawings of the ’625 patent. We are further persuaded that we should
`consider and describe, in more detail than the description LKQ proffers, the
`elements and ornamentation as part of the overall appearance of the claimed
`design. See Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed.
`Cir. 2010) (The Federal Circuit questioning how “a court could effectively
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`construe design claims, where necessary, in a way other than by describing
`the features shown in the drawings.”).
`Therefore, in addition to the commonalities between fenders described
`by LKQ and its declarant, Mr. Hill, we find persuasive Mr. Peters’ testimony
`that “[t]he ordinary observer would have been attuned to nuanced
`differences between fender designs,” and “readily recognized differences
`that distinguish vehicle fender designs.” Ex. 2004 ¶¶ 52–53. Mr. Peters
`testifies, for example, that “[t]he sculpture of vehicle front fenders
`significantly impacts the character and visual impression of the fender in the
`eyes of the ordinary observer.” Ex. 2004 ¶ 81. Likewise, LKQ’s declarant,
`Mr. Hill, testified in his deposition that an ordinary designer would consider
`various features, including sculpting, on vehicle fenders:
`Q. Right. What about the sculpting on the face of the fender,
`would you agree with me that those are features, the sculpting
`on the side of a vehicle including on a fender, that are going
`to be meaningful to an ordinary observer?
`. . . .
`A. Yes.
`Ex. 2008, 20:6–15.
`In our Decision on Institution, we determined that no express verbal
`description was necessary. Inst. Dec. 5–6. We explained that “the best
`description of the ornamental features of the ’625 design comes from the
`drawings themselves.” Id. at 6. Now, on the full record before us, we still
`find that the best evaluation of the claimed design occurs by observing and
`considering the overall appearance of the claimed design as shown explicitly
`in Figures 1–4 of the drawings. See In re Jennings, 182 F.2d 207, 208
`(CCPA 1950) (“In considering patentability of a proposed design the
`
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`
`appearance of the design must be viewed as a whole, as shown by the
`drawing, or drawings.”).
`However, based on the competing analyses by the parties and
`considering the relationship of the prior art to the claimed design, we find it
`helpful to describe verbally certain elements of the claim for purposes of our
`analysis in this Final Decision. See Egyptian Goddess, 543 F.3d at 680; see
`also Durling v. Spectrum Furniture Co., 101 F.3d 100, 104 (Fed. Cir. 1996)
`(“A proper interpretation of [the] claimed design focuses on the visual
`impression it creates.”).
`Considering the overall appearance of the ’625 design, we determine
`that LKQ’s proposed construction is incomplete. In addition to LKQ’s
`construction, we find certain other elements of the claimed fender, some of
`which are described by GM, are readily observable and relevant to the
`overall appearance of the claimed design.
`1) As best observed in Figures 1–4 of the ’625 patent, on the right
`side, the claimed design illustrates a door cut line having a slight
`but consistent curvature extending from the u-shaped notch
`downwards to a lower terminus of the fender, and a circular wheel
`arch extending from the lower terminus to an angular forward edge
`of the distal portion. See PO Resp. 4–5 (citing Ex. 2004 ¶¶ 35–38).
`2) A consistent width lower rearward terminus shape defined between
`the wheel arch and door cut line. See Ex. 1001, Figs. 1–2.
`3) A protrusion where the upper surface of the protrusion (shown
`highlighted green in GM’s annotated Figure 1, above) has a
`thickness and consistent width that mirrors the inside surface of the
`u-shaped notch. PO Resp. 7 (citing Ex. 2004 ¶¶ 41–42).
`
`16
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`Patent D797,625 S
`
`
`4) A gently curving first and second crease extending forwards from
`the door cut line and defining a concavity line there between. The
`first and second crease and concavity lines providing a sculpted
`appearance to the fender body below the protrusion, as best shown
`in the perspective view of Figure 1. Id. at 10; Pet. 14–15 (citing
`Ex. 1004 ¶ 46).
`5) As best seen in Figure 1 of the ’625 patent, below the first and
`second creases, the claimed design illustrates an inflection line
`defined by opposing shade lines, the inflection line extending
`between the wheel arch and door cut line. PO Resp. 10, Ex. 1001,
`Fig. 1.
`Considering Figures 1–4 and keeping these visually apparent
`characteristics of the claimed design in mind, we turn below to the
`anticipation and obviousness challenges that Petitioner has raised in this
`proceeding.
`E. Instituted Grounds
`LKQ contends that the challenged claim is unpatentable under
`35 U.S.C. §§102, 103 based on U.S. Design Patent No. D773,340 S
`(Ex. 1006, “Lian”), which is assigned to BYD Company Ltd. and issued
`December 6, 2016. Pet. 18. LKQ also argues that the challenged claim is
`unpatentable under 35 U.S.C. §103 based on Lian combined with images of
`the 2010 Hyundai Tucson (Ex. 1007) as disclosed in a promotional brochure.
`Id.
`
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`
`Claims Challenged 35 U.S.C. § References/Basis
`Claim 1
`102
`Lian2
`Claim 1
`103
`Lian
`Claim 1
`103
`Lian and 2010 Hyundai Tucson3
`
`
`
`II. ANALYSIS
`
`A. Principles of Law
`1. Anticipation
`The “ordinary observer” test for anticipation of a design patent is the
`same as that used for infringement, except that for anticipation, the patented
`design is compared with the alleged anticipatory reference rather than an
`accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d
`1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design
`patent infringement was first enunciated by the Supreme Court in Gorham
`Co. v. White, 81 U.S. 511 (1871), as follows:
`[I]f, in the eye of an ordinary observer, giving such attention as
`a purchaser usually gives, two designs are substantially the same,
`if the resemblance is such as to deceive such an observer,
`inducing him to purchase one supposing it to be the other, the
`first one patented is infringed by the other.
`Id. at 528. The ordinary observer test requires the fact finder to consider all
`of the ornamental features illustrated in the figures that are visible at any
`time in the “normal use” lifetime of the accused product, i.e., “from the
`completion of manufacture or assembly until the ultimate destruction, loss,
`or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. In other
`
`
`2 Ex. 1006, U.S. Design Pat. No. D773,340 S (December 6, 2016).
`3 Ex. 1007, 2010 Hyundai Tucson Brochure, copyright 2009,
`http://www.auto-brochures.com/makes/Hyundai/Tucson/Hyundai US
`Tucson 2010.pdf.
`
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`words, the ordinary observer test requires consideration of the design as a
`whole. See id. at 1243; Egyptian Goddess, 543 F.3d at 677. In applying the
`ordinary observer test, we must “determine whether ‘the deception that
`arises is a result of the similarities in the overall design, not of similarities in
`ornamental features in isolation.’” See Richardson, 597 F.3d at 1295.
`Additionally, while the ordinary observer test requires consideration
`of the overall prior art and claimed designs,
`[t]he mandated overall comparison is a comparison taking into
`account significant differences between the two designs, not
`minor or trivial differences that necessarily exist between any
`two designs that are not exact copies of one another. Just as
`“minor differences between a patented design and an accused
`article’s design cannot, and shall not, prevent a finding of
`infringement” . . . so too minor differences cannot prevent a
`finding of anticipation.
`Int’l Seaway, 589 F.3d at 1243 (citation omitted) (quoting Litton Sys., Inc. v.
`Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
`2.
`Obviousness
`“In addressing a claim of obviousness in a design patent, the ultimate
`inquiry . . . is whether the claimed design would have been obvious to a
`designer of ordinary skill who designs articles of the type involved.” Apple,
`Inc. v. Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal
`quotation and citations omitted); see also High Point Design, 730 F.3d at
`1313 (“The use of an ‘ordinary observer’ standard to assess the potential
`obviousness of a design patent runs contrary to the precedent of this court
`and our predecessor court, under which the obviousness of a design patent
`must, instead, be assessed from the viewpoint of an ordinary designer.”).
`Often referred to as the Durling test, the obviousness analysis
`generally involves two steps: first, “one must find a single reference, a
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`something in existence, the design characteristics of which are basically the
`same as the claimed design”; second, “[o]nce this primary reference is
`found, other references may be used to modify it to create a design that has
`the same overall visual appearance as the claimed design.” Durling, 101
`F.3d at 103 (internal quotation and citations omitted).
`The first step has two parts; we must “(1) discern the correct visual
`impression created by the patented design as a whole; and (2) determine
`whether there is a single reference that creates ‘basically the same’ visual
`impression.” Id. In the second step, the primary reference may be modified
`by secondary references “to create a design that has the s
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