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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LKQ Corporation and Keystone Automotive Industries, Inc.
`Petitioners
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`v.
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`GM Global Technology Operations LLC
`Patent Owner
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`Case IPR2020-00065
`Patent No. D813,120
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`PATENT OWNER’S
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`PRELIMINARY RESPONSE
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`Attorney Docket: 45343-0015IP1
`Case No. IPR2020-00065
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`TABLE OF CONTENTS
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`I.
`II.
`III.
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`IV.
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`Introduction ................................................................................................... 1
`Background ................................................................................................... 2
`Level of Ordinary Skill ................................................................................. 5
`The Ordinary Observer .......................................................................... 5
`The ordinary designer ............................................................................ 8
`LKQ Cannot Prevail on Any Challenged Claim ........................................... 9
`The Petition fails to comply with §§ 314(a) and 311(b) because the
`Grounds are not based on “patents or printed publications.” ................ 9
`LKQ fails to show that any of Exhibits 1008, 1009, or 1011 are prior
`art printed publications. ....................................................................... 10
`LKQ’s Proposed Claim Construction Ignores Features of the Claimed
`Design and Relies on General Design Concepts. ................................ 13
`1.
`LKQ improperly excludes the underside and structural plate from
`the claimed design. ...................................................................... 15
`LKQ has failed to demonstrate that the underside of the hood is
`not a “matter of concern to purchasers.” ..................................... 17
`LKQ’s proposed claim construction relies on general design
`concepts and ignores features of the claimed design. ................. 19
`LKQ fails to demonstrate that the 2014 and 2015 Chevrolet Traverse
`(“Prior Art Traverse”) anticipates the claimed design (Ground 1). .... 23
`1.
`LKQ’s anticipation theory impermissibly relies on multiple
`references. .................................................................................... 24
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`2.
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`3.
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`i
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`2.
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`3.
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`4.
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`5.
`6.
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`2.
`3.
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`V.
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`LKQ fails to analyze the overall smooth curved profile of the
`hood between the front perimeter edge to the rear perimeter edge.
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`LKQ fails to analyze the actual appearance of the perimeter
`shape of the hood and its contribution to the overall appearance
`of the design. ................................................................................ 27
`LKQ fails to analyze the ornamental appearance of the presence
`of a “hood latching hook.” ........................................................... 30
`LKQ fails to analyze the side view of the claimed design. ......... 32
`LKQ fails to analyze the differences between the proportions of
`the claimed design and the “Prior Art Traverse.” ....................... 33
`LKQ fails to demonstrate that the claimed design is obvious in view
`of the “Prior Art Traverse” and “Prior Art Sonic” (Ground 2). .......... 34
`1.
`LKQ’s obviousness theories fail to address the multiple, readily
`apparent differences between the claimed design and the “Prior
`Art Traverse.” .............................................................................. 35
`The Petition fails to identify a proper Rosen reference. .............. 37
`LKQ fails to demonstrate that the “Prior Art Sonic” can modify
`the “Prior Art Traverse” to create a design that has the same
`overall visual appearance as the claimed design. ........................ 40
`Conclusion ................................................................................................... 45
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`EXHIBIT LIST
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`Exhibit No.
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`Description
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`2001
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`2002
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`2003
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`Irwin Letter Re LKQ Petition No. 68 for Relief from Seizure and
`Forfeitures Notices, September 28, 2017
`General Motors Electronic Parts Catalog – 2017 Chevrolet Sonic
`Hood
`Declaration of Timothy P. Ketner
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`iii
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`I.
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`INTRODUCTION
` LKQ’s Petition is deficient in numerous ways, any one of which would
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`warrant denial; collectively, they compel it. See Deeper, UAB v. Vexilar, Inc.,
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`IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (denying petition where the
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`majority of challenged claims and grounds failed to meet the reasonable likelihood
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`of success standard).
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`The fundamental problem with LKQ’s Petition, which pervades the entirety
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`of its analysis, is that it simply fails to address the design’s claimed features. The
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`design claimed in the ’120 Patent includes nuanced surfaces and a smoothly curved
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`profile with a continuously sloping lead portion, and distinct corners/transitions
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`where distal ends of the front perimeter edge meet the side perimeter edges.
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`Rather than address the claimed features, and their differences from the purported
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`prior art—which LKQ fails to establish are all, in fact, prior art publications—
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`LKQ takes an overly-general approach that obscures the design without
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`meaningful analysis. LKQ’s overgeneralizations not only lead it to misstate the
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`scope of the claimed invention, they result in a petition that summarily refers to
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`differences as de minimis; ignores multiple, readily apparent differences between
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`the claimed invention and the purported prior art; and fails to conduct any
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`meaningful analysis showing that its proposed combination would be substantially
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`identical to the design claimed in the ’120 Patent. Moreover, the Petition
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`1
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`incorrectly disregards entire portions of the design as purportedly functional or not
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`a matter of concern to the consumer. The Board and the Federal Circuit have
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`repeatedly held that such a cursory approach is inappropriate, particularly in a
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`crowded field like the one at issue, and this Board should make the same
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`determination here.
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`For at least the reasons stated below, the Board should deny LKQ’s petition.
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`II. BACKGROUND
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`General Motors is an innovator in the areas of vehicle design and automotive
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`engineering. Its innovation has led to iconic vehicle designs such as the Chevrolet
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`Corvette, Chevrolet Suburban, and Cadillac Deville, as well as more recent designs
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`like the Cadillac Escalade, Chevrolet Cruz, and Chevrolet Equinox. One of GM’s
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`more recent innovations resulted in the Patent Office Issuing GM U.S. Design
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`Patent No. D813,120, directed to the ornamental appearance of a vehicle hood used
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`in the Chevrolet Sonic, and now at issue in these proceedings.1
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`The industry has also taken notice of GM’s innovative designs for decades,
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`with GM receiving numerous awards that reflect the quality and appeal of its
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`products. To name a few, GM’s investment in product design and development
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`has been recognized with numerous J.D. Power APEAL awards, J.D. Power Initial
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`1 GM Global Technology Operations LLC is the assignee of the ’120 Patent.
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`2
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`Quality Award, J.D. Power Dependability award, and J.D. Power Engineering
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`Award for Highest-Rated All-New Vehicle.
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`Petitioner LKQ is an aftermarket manufacturer in the collision repair
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`industry, selling things like replacement fenders, bumpers, and grilles. Unlike an
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`Original Equipment Manufacturer (“OEM”) like GM, however, LKQ does not
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`invest in designing the replacement parts it sells; rather, it copies GM’s design in
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`order to mimic that design, and then sells the copy-cat products at a lower price.
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`When a driver gets into an accident, for example, LKQ offers their hood
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`replacement product, which exactly copies the design of GM’s unique hood.
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`LKQ’s copying of the OEM’s design is a business imperative because
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`purchasers of replacement parts require that their vehicle be restored to its original
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`appearance. And a similar appearance is not good enough—details matter. For
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`example, a Corvette owner—and the repair shop repairing that vehicle—would not
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`be satisfied with just any replacement vehicle hood, but would demand the same
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`classic look and design in its replacement part that the original vehicle had.
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`Indeed, in other proceedings, LKQ has recognized the importance of its
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`aftermarket products mimicking the OEM’s designs. For example, in another case,
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`LKQ stated that, when choosing replacement parts, “Automobile owners seek to
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`repair their automobiles in a way that returns their automobile as closely as
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`possible to its original appearance and condition.” Ex. 2001 at 10 (“The purpose
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`of a replacement grille is to repair a vehicle to its original condition and
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`appearance; thus the appearance of replacement grilles is essential to the purpose
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`of replacement grilles.” (emphasis added)); id. at 14 (“If the grille were to look
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`different, or if the placeholder region of a grille were to be absent . . . consumers
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`would simply not purchase the replacement grille, as it would not return their
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`vehicle to its original appearance, nor would it be capable of doing so.”)
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`The requirement that LKQ’s aftermarket parts mimic GM’s designs is
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`particularly important for two reasons. First, because LKQ’s customers are
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`primarily professional auto body shops that are knowledgeable about the
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`automotive industry, and have a particularly discerning eye. Id. at 4 (“LKQ’s
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`customers for aftermarket automotive parts primarily consist of professional auto
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`body and mechanical repair shops who are knowledgeable about the automotive
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`industry.”); id. at 13 (“The primary purchasers of aftermarket parts are professional
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`automotive and repair shops, which typically repair cars and purchase parts at the
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`behest of insurance companies.”). And second, because the laws in many states
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`require that the replacement part mimic the appearance of the original vehicles.
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`See id. at 11 (“State insurance laws and insurer contracts require that insurance
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`companies cover the cost to repair vehicles to their original appearance and
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`condition. . . .”). Thus, design changes in the collision repair industry are not only
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`noticeable to the primary purchaser in the aftermarket space, they may not even be
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`legally permissible.
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`Because of the importance to LKQ of being able to copy GM’s designs, GM
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`and LKQ have historically had a confidential Design Patent License Agreement
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`under which LKQ had a license to many of GM’s design patents. Although GM
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`and LKQ recently attempted to renegotiate the terms of that license, those
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`negotiations broke down, which led to LKQ filing this IPR. In other words, LKQ
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`was historically content to acquiesce to the validity of GM’s innovative designs
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`and benefit from being the only aftermarket company able to copy them, but now
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`LKQ is claiming GM’s designs should not be eligible for these protections if LKQ
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`isn’t authorized to use them.
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`III. LEVEL OF ORDINARY SKILL
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` The Ordinary Observer
`The identity of the ordinary observer focuses on the “actual product that is
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`presented for purchase, and the ordinary purchaser of that product.” Goodyear
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`Tire & Rubber Co. v. Hercules Tire & Rubber, 162 F.3d 1113, 1117 (Fed. Cir.
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`1998). The ordinary observer is “a person who is either a purchaser of, or
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`sufficiently interested in, the item that displays the patented designs and who has
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`the capability of making a reasonably discerning decision when observing the
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`accused item’s design whether the accused item is substantially the same as the
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`item claimed in the design patent.” Arminak & Assocs., Inc. v. Saint-Gobain
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`Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007). Where the product is
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`purchased by a commercial buyer for delivery to an end consumer, the commercial
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`buyer—rather than the end consumer—may be the ordinary observer. Id. at 1322-
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`23 (“‘the ‘ordinary purchaser’ for the purpose of the block design patent is a
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`purchaser of the patented block,’ not a purchaser of an assembled wall.”) (citation
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`omitted).
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`The “ordinary observer is considered to be familiar with prior art designs.”
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`Columbia Sportswear N. Am., Inc. v. Seirus Innovative Access., Inc., 942 F.3d
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`1119, 1129 (Fed. Cir. 2019). “[W]hen the claimed design is close to the prior art
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`designs, small differences between the accused design and the claimed design are
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`likely to be important to the eye of the hypothetical ordinary observer.” Egyptian
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`Goddess v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008). In other words,
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`relevant questions in design patent cases are subject-matter specific: in a crowded
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`field, the ordinary observer is more likely to be attuned to small differences. See In
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`re Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993) (noting “the field of loud speaker
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`design is much less crowded than that of ornamental vase design,” and thus
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`similarity that may “preclude issuance of a design patent” of a loud speaker design
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`may not preclude issuance of a design patent to a vase design).
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`Here, the ordinary observer includes commercial buyers who purchase a
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`replacement bumper to repair a customer’s vehicle, such as repair shop
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`professionals. LKQ itself acknowledged that “replacement automobile body parts,
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`are typically purchased on behalf of vehicle owners by repair shops.” See Pet. at
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`21 (emphasis added); see also Ex. 2001 at 11 (“LKQ’s customers for aftermarket
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`automotive parts primarily consist of professional auto body and mechanical
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`repair shops who are knowledgeable about the automotive industry.” (emphasis
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`added)). Because a repair shop buyer reviews and analyzes various products as
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`part of his or her job duties, that buyer is particularly discerning. Moreover, the
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`repair shop buyer would be aware of prior art designs that would inform his or her
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`discernment of slight differences between designs. See Egyptian Goddess, 543
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`F.3d at 681.
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`LKQ suggests that the ordinary observer “would be the retail consumer of
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`vehicle [hoods],” Pet. at 42, but does not explain why the repair shop buyer would
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`not be the ordinary observer. Not only is LKQ’s definition unsupported, but it is at
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`odds with its statement that the relevant replacement body parts are “typically
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`purchased on behalf of vehicle owners by repair shops.” Pet. at 21 (emphasis
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`added); Ex. 2001 at 11.2
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`The ordinary designer
`In determining prima facie obviousness of a design claim, “the proper
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`standard is whether the design would have been obvious to a designer of ordinary
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`skill with the claimed type of article.” MPEP 1504.03 (II). A designer of ordinary
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`skill in the art relevant to the ’120 Patent would have at least an undergraduate
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`degree in automotive design, or other related industrial design field, with at least
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`two years of relevant practical experience in designing automotive body parts. An
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`increase in experience could compensate for less education, and an increase in
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`education could likewise compensate for less experience.
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`2 Even if the end “retail consumer” were considered the ordinary observer,
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`the information presented in the Petition is still insufficient to satisfy the
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`reasonable likelihood of success standard. See infra 8-39.
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`IV. LKQ CANNOT PREVAIL ON ANY CHALLENGED CLAIM
` The Petition fails to comply with §§ 314(a) and 311(b) because the
`Grounds are not based on “patents or printed publications.”
`All Grounds fail because they are based on physical vehicles—the “2014
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`and 2015 Chevrolet Traverse” (also referred to collectively by LKQ as the “Prior
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`Art Traverse”) and “2012 and 2013 Chevrolet Sonic” (also referred to collectively
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`by Petitioner as the “Prior Art Sonic”)—not “patents or printed publications.” Pet.
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`at 22-24. Inter partes review may be requested “only on the basis of prior art
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`consisting of patents or printed publications.” 35 U.S.C. §311(b); §314(a).
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`Grounds 1-2 are thus not eligible for inter partes review.
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`In the Petition, LKQ plainly states that the Grounds rely on the “design of
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`the Prior Art Traverse, as depicted in the photographs contained within Exhibits
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`1006-1009 and 1012.” Pet. at 44 (emphasis added). Indeed, LKQ describes its
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`“prior art” as the “Prior Art Traverse,” and cites to Exhibits 1006-1009, and 1012
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`collectively as depicting the purported prior art vehicle. Id. at 22. Moreover, the
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`“Prior Art Traverse” includes multiple vehicle years—the “2014 and 2015
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`Chevrolet Traverse.” Pet. at 42; see also id. at 43 (“Traverse/14 [sic] and Traverse
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`2015.”). LKQ’s declarations confirm its reliance on vehicles as the purported prior
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`art of Grounds 1 and 2. EX1003, ¶60 (“The sole reference necessary to invalidate
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`the ’120 Patent is the model years 2014 and 2015 Chevrolet Traverse (‘the Prior
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`Art Traverse’)”); EX1004, ¶63 (“The model years 2014 and 2015 Chevrolet
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`Traverse (‘the Prior Art Traverse’) constitute prior art to the ’120 Patent.”).
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`Additionally, in Ground 2, LKQ describes its prior art as the “Prior Art
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`Sonic,” and cites to Exhibits 1011 and 1013 collectively as depicting the purported
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`prior art vehicle. Id.; see also Pet. at 54 (“Prior Art Sonic (EXS. 1011, 1013)”); id.
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`at 58.
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`LKQ also asserts a single earliest prior art date for the “Prior Art
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`Traverse”—April 3, 2014—further highlighting that LKQ relies on the “Prior Art
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`Traverse” vehicle as prior art—as opposed to a statutorily permissible printed
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`publication. See Pet. at 42-44 (“At least as early as April 3, 2014, the design of the
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`Prior Art Traverse was made publicly available online.”). LKQ asserts this date
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`based on the purported publication of Exhibit 1006, even though LKQ asserts
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`different dates and sources of Exhibits 1007, 1008, 1009, and 1012, which are then
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`cited as depictions of the Prior Art Traverse. Critically, the use of multiple,
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`distinct exhibits in an anticipation ground (Ground 1)—each having different
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`sources and purported publication dates—further confirms LKQ’s impermissible
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`reliance on the “Prior Art Traverse” vehicle as purported prior art.
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`LKQ fails to show that any of Exhibits 1008, 1009, or 1011 are
`prior art printed publications.
`Grounds 1-2 all rely on the “Prior Art Traverse,” citing Exhibits 1008 and
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`1009. Ground 2 additionally relies on the “Prior Art Sonic,” citing Exhibit 1011.
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`Each of these grounds fail, at least because LKQ has not met its burden to prove
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`Exhibits 1008, 1009, or 1011 were publically available. See Hulu, LLC v. Sound
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`View Innovations, LLC, IPR2018-01039, Paper 12 at 9 (PTAB Dec. 3, 2018)
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`(precedential).
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`“To qualify as a printed publication, a reference ‘must have been sufficiently
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`accessible to the public interested in the art.’” Blue Calypso, LLC v. Groupon,
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`Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quotation omitted). A reference is
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`publicly accessible if it was “disseminated or otherwise made available to the
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`extent that persons interested and ordinarily skilled in the subject matter or art,
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`exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision
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`Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). Some way to search for the
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`reference based on the reference’s subject matter must exist in order for a reference
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`to be considered “publicly accessible.” See In re Lister, 583 F.3d 1307, 1315-16
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`(Fed. Cir. 2009).
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`Where the reference being relied upon is a website, the Federal Circuit has
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`confirmed the importance of indexing: “[j]ust as indexing plays a significant role
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`in evaluating whether a reference in a library is publicly accessible, . . . indexing,
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`‘[w]hether . . . through search engines or otherwise,’ is also an important question
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`for determining if a reference stored on a given webpage in cyberspace is publicly
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`accessible.” Blue Calypso, 815 F.3d at 1349 (quotation omitted)). For example, in
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`SRI, the court held that a document on an FTP server was not publicly available, in
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`part because “the FTP server did not contain an index or catalogue or other tools
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`for customary and meaningful research.” SRI International, Inc. v. Internet
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`Security Systems, Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008).
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`LKQ fails to show that Exhibits 1008, 1009, or 1011 were publically
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`available before the critical date. LKQ assumes the publication date of Exhibit
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`1008 is “March 24, 2014,” without sufficient explanation. Pet. at 23. LKQ merely
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`states that the video was “Published on YouTube on March 24, 2014,” without any
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`evidence if and when this video was made available to the public. This is
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`insufficient to meet its burden, particularly given that the content is a YouTube
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`video, which can be posted to the site by the author subject to restrictions that
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`affirmatively prevent access by the general public, for example.
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`Moreover, as the Federal Circuit noted in Cronyn, some way to search for
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`the reference based on the reference’s subject matter must exist in order for
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`indexing to be persuasive evidence of public accessibility. In re Cronyn, 890 F.2d
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`1158, 1161 (Fed. Cir. 1989). LKQ does not present any evidence showing that a
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`person of ordinary skill visiting YouTube could have searched for and found
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`Exhibits 1008, 1009, or 1011—LKQ does not present evidence the video was
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`posted with settings that allowed access to other YouTube users as of the critical
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`date at all.
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`Here, LKQ fails to provide any evidence from someone with relevant
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`personal knowledge of the accessibility of Exhibits 1008, 1009, or 1011. See
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`Standard Innovation Corp. v. Lelo, Inc., IPR2014-00148, Paper 41 at 10 (PTAB
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`April 23, 2015) (“[T]o authenticate printouts from a website, the party proffering
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`the evidence must produce some statement or affidavit from someone with
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`knowledge of the website . . . for example a web master or someone else with
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`personal knowledge would be sufficient.”). The Declaration of Margaret A.
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`Herrmann—one of Petitioner’s lawyers, not a skilled artisan—does nothing to
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`remedy this deficiency, as it does not address whether a skilled artisan could have
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`searched for and found Exhibits 1008, 1009, and 1011 before the critical date
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`without already having the appropriate URL (or even with a specific URL).
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`For at least these reasons, LKQ fails to satisfy its burden to show that
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`Exhibits 1008, 1009, or 1011 are prior art printed publications.
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` LKQ’s Proposed Claim Construction Ignores Features of the
`Claimed Design and Relies on General Design Concepts.
`When determining design patentability, the overall appearance of the
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`claimed design must be taken into consideration, and a verbal description of the
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`claimed design is helpful in analyzing the overall appearance. In re Rosen, 673
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`F.2d 388, 390 (CCPA 1982); see also High Point Design LLC v. Buyers Direct,
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`Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to district court, in part,
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`for a “verbal description of the claimed design to evoke a visual image consonant
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`with that design”). Here, LKQ’s claim description is based on both factual and
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`legal errors. LKQ acknowledges that the “drawings of the ’120 patent do not
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`comprise any broken lines, and the specification comprises no indication that any
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`portion of the drawings is excluded from the claimed design.” Pet. at 20. Yet,
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`LKQ improperly concludes that “the underside of the hood panel, its particular
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`features, and especially its recessed central portion” are “functional” or “not a
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`matter of concern to purchasers” and thus “should be excluded from the scope of
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`the claimed design of the ’120 patent.” Pet. at 20-21. LKQ’s conclusion is based
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`on a faulty premise that ignores that the underside of the hood is not concealed
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`during the entire life of the hood, and LKQ’s attempt to wholly exclude these
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`features from the design is legal error.
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`Moreover, LKQ’s description of other features of the claimed design is
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`insufficient because it focuses on design “concepts,” rather than addressing the
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`specific features of the claimed design. As described in more detail below, see §§
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`IV.D-E, these errors infect each of LKQ’s grounds, and therefore compel denial of
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`the Petition. See Skechers U.S.A., Inc. v. Nike, Inc., IPR2017-00617, Paper 13 at
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`13 (July 6, 2017) (“We do not find Petitioner’s arguments persuasive because
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`Petitioner focuses on design concepts rather than actual appearances and specific
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`design characteristics.”); Macsports, Inc., v. Idea Nuevo, Inc., IPR2018-01006,
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`Paper 6 at 12 (Nov. 13, 2018) (“In satisfying the requirements of 37 C.F.R. §
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`14
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`
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`42.104(b), a challenger of a design patent cannot simply ignore the differences in
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`Attorney Docket: 45343-0015IP1
`Case No. IPR2020-00065
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`designs without discussing how those differences would impact the ordinary
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`observer analysis, if at all.”).
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`1.
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`LKQ improperly excludes the underside and structural
`plate from the claimed design.
`The claimed design includes the underside of the claimed vehicle hood,
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`including complex surfaces with multiple contoured edges and openings, and a
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`central recessed portion having a pattern of cut-outs and brace sections. LKQ
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`assumes that features of the underside “serve purely functional purposes,” and “are
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`not relevant to determinations of the novelty or obviousness of the claimed
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`design,” Pet. at 20, but that assumption lacks sufficient evidence. Moreover, even
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`if such features were considered purely functional, LKQ’s proposal that the
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`features of the underside be wholly disregarded is legally erroneous.
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`A feature of a design patent is not eliminated from the scope of the claim
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`just because the feature may serve a functional purpose. The Federal Circuit has
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`made this clear—“in no case did we entirely eliminate a structural element from
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`the claimed ornamental design, even though that element also served a functional
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`purpose.” Sport Dimension Inc. v. Coleman Co., 820 F.3d 1316, 1321 (2016)
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`(rejecting district court’s claim construction that excluded claimed features of a
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`design). Indeed, whether elements provide functionality does “not preclude those
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`elements from having protectable ornamentation.” Id. (“the particular ornamental
`15
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`designs of those underlying elements”); Dorman Products, Inc. v. Paccar, Inc.,
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`Attorney Docket: 45343-0015IP1
`Case No. IPR2020-00065
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`IPR2014-00542, Paper 10, 5 (PTAB September 5, 2014) (denying institution) (“the
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`allegedly functional elements identified by Petitioner (Pet. 12) must be considered
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`in an obviousness analysis of the visual impression created by the patented design
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`as a whole.”).
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`Here, LKQ separates the design into individual components, attempting to
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`exclude features it deems functional. But by doing so, LKQ engages in the
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`prohibited analysis—eliminating structural elements from the claim—that the
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`Federal Circuit has warned against. Sport Dimension, 820 F.3d at 1322 (“The
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`district court eliminated the armbands and side torso tapering from the claim
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`entirely, so its construction runs contrary to our law.”) (emphasis added).
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`Even if features of the underside of the hood were considered functional
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`(which LKQ has failed to demonstrate), a proper analysis requires “focus on what
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`these elements contribute to the design’s overall ornamentation.” Sport
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`Dimension, 820 F.3d at 1321. LKQ’s wholesale dismissal of the elements ignores
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`what they contribute to the design’s overall appearance. For example, LKQ fails to
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`address the ornamentality of the features of the underside, such as the appearance
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`of the perimeter shape of the rectangular recessed portion that tracks the
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`proportions of the outer perimeter of the hood, and the overall appearance provided
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`by the features of the underside.
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`16
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`LKQ’s assumption that particular features are functional, and its attempt to
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`Attorney Docket: 45343-0015IP1
`Case No. IPR2020-00065
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`entirely exclude these features from the claimed design, fails to properly analyze
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`the appearance of the claimed underside of the hood and what the features of the
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`underside contribute to the overall appearance of the claimed design. Because this
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`error applies to both grounds, the Board should deny institution.
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`2.
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`LKQ has failed to demonstrate that the underside of the
`hood is not a “matter of concern to purchasers.”
`LKQ’s attempt to exclude the underside of the hood because it is
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`purportedly “hidden from purchasers,” Pet. at 21, is also wrong as a factual matter
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`and contrary to Federal Circuit law. The argument is particularly deficient because
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`the hood is commonly sold without the insulating shroud that LKQ relies on.
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`The Federal Circuit’s decision in In re Webb is directly on point here: “In
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`each case, the inquiry must extend to whether at some point in the life of the
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`article an occasion (or occasions) arises when the appearance of the article
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`becomes a ‘matter of concern.’” In re Webb, 916 F.2d 1553, 1557 (Fed. Cir.
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`1990). The Court confirmed that “the nature of [an article’s] visibility at some
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`point between its manufacture or assembly and its ultimate use” can demonstrate
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`that an article’s design is a “matter of concern.” Id. at 1558.
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`
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`Here, LKQ’s assertion that the “recessed central portion” is not a “matter of
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`concern” fails for multiple reasons. First, LKQ does not address whether at “some
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`point in the life of the article an occasion (or occasions) arises when the
`17
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`Attorney Docket: 45343-0015IP1
`Case No. IPR2020-00065
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`appearance of the article becomes a ‘matter of concern.’” Webb, 916 F.2d at 1557.
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`LKQ does not address when the underside of the hood is first covered, how long it
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`remains covered, whether the covering is removed during use (e.g., for repair or
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`replacement), or whether the covering is installed after the hood is purchased
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`and/or separately from the covering (e.g., by repair shops or parts distributors).
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`This failure to address the relevant question under Webb is reason enough to reject
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`this argument.
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`Additionally, LKQ’s theory fails because the “central recessed portion” is
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`commonly uncovered and visible during initial sale of the hood and displayed in
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`product materials. EX2002, p. 1; EX2003. Indeed, the hood is offered for sale to
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`repair shops separate from the “insulating pad” (having its own part number
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`independent of the “insulating pad”). Id. (listing part no. 42334844 for the hood,
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`separate from part no. 96872981 for the “insulator”). Likewise, the hood is
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`displayed in the service information catalog independent of the “insulating pad”
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`such that the “recessed central portion” and its features are exhibited. Id.
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`Like the components at issue in Webb, the features of the “central recessed
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`portion” are visible to the consumer both on the physical hood they receive, and in
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`service information materials used in sales and marketing of the hood. Webb, 916
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`F.2d at 1558 (“Here, for example, there was ample evidence that the features of the
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`device were displayed in advertisements and in displays at trade shows.”). LKQ
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`18
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`fails to demonstrate such features are not a “matter of concern” to the ordinary
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`Attorney Docket: 45343-0015IP1
`Case No. IP
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