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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`Case IPR2020-00065
`Patent No. D813,120
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
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`WITHDRAW AND DISMISS
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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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`Case IPR2020-00065
`Patent No. D813,120
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
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`WITHDRAW AND DISMISS
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
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`I.
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`INTRODUCTION
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`Fueled by frustration over stalled licensing negotiations, LKQ has singled
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`out GM’s design patent portfolio by filing 16 IPRs or PGRs to date, with the threat
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`of many more to come. If that harassment were not enough, LKQ now seeks to
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`drop two of those challenges, without prejudice to refile, shortly after GM spent
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`significant resources pointing out the flaws in LKQ’s petitions in its preliminary
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`responses. The Board should not allow this.
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`This motion is not about saving resources or creating efficiencies. Instead,
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`after having the benefit of GM’s preliminary response on the ’120 Patent, LKQ
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`learned the weaknesses of its petition and now seeks to avoid the consequences of
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`an institution denial or adverse judgment. In a classic case of road-mapping, LKQ
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`seeks to replace its flawed petition with a new request—this time an ex parte
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`reexam—using what it learned from GM’s preliminary response. Thus, not only
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`has LKQ already wasted GM’s resources in forcing a preliminary response (and
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`the Board’s in addressing this motion), but it still seeks to take up the Patent
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`Office’s resources in addressing an ex parte reexam, and potentially yet another
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`IPR on this same patent. This motion is about gamesmanship, not efficiency.
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`LKQ’s claim that its request is spurred by newly-discovered art is equally
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`meritless. The art LKQ now relies on as “new” is no closer to the claimed design
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`than the art LKQ already relied on in its petition in this case. Further, LKQ fails to
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`1
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
`explain why it only “recently” discovered this art—which have been publicly
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`available since February 18, 2014 (Kubota); December 27, 2016 (Kazama); and
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`May 23, 2017 (Wolff), when these references published—or when this discovery
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`actually took place. Given the number and breadth of petitions LKQ has already
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`filed, it is difficult to believe LKQ has not been aware of this art for months.
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`At bottom, granting LKQ’s motion would reward gamesmanship, unduly
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`prejudice GM, and result in no measurable efficiencies. No case supports this
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`result, and all of LKQ’s authority is readily distinguishable. To the extent that
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`termination is not coupled with an adverse judgment against LKQ, the Board
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`should deny the motion.
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`II. ARGUMENT
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`LKQ seeks to abandon this IPR without bearing the consequences of such
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`abandonment—intending to file an ex parte reexamination and not being precluded
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`from filing additional inter partes review petitions on the ’120 Patent. Paper 12 at
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`3. Permitting LKQ to do this with GM’s preliminary response as a roadmap would
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`serve only to enable LKQ’s harassing behavior and reward LKQ’s gamesmanship.
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`As such, if LKQ’s motion is granted, it should be coupled with entry of adverse
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`judgment against LKQ.
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`A. Granting LKQ’s Motion Would Cause GM Undue
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`Prejudice.
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`2
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
`GM would be unduly prejudiced by dismissal of the petition without entry of
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`adverse judgment. GM has already expended considerable resources analyzing
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`LKQ’s petition and preparing its preliminary response. This fact alone
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`distinguishes it from cases where the Board dismissed without entering adverse
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`judgment. In the NEC case LKQ cites, the Patent Owner had declined to file a
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`preliminary response. See NEC Corp., et al. v. Neptune Subsea IP Ltd., IPR2018-
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`01190, Paper 11 at 3 (PTAB Jan. 30, 2019). In HTC, not only had the Patent
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`Owner not filed a preliminary response, but the motion to terminate was
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`unopposed. See HTC Corp. v. Patentmarks Comm., LLC, IPR2014-00905, Paper 7
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`at 3 (PTAB Aug. 26, 2014).
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`Dismissing the petition without adverse judgment would also unfairly
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`prejudice GM by providing LKQ with a roadmap to improve its arguments in
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`future challenges, without having to face the consequences of its initial weak
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`efforts. Further, an adverse judgment against LKQ or denial of institution would
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`have value to GM, either estopping LKQ from challenging validity or providing
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`significant evidence of the patent’s validity in any subsequent litigation. See
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`Metaswitch Networks Ltd. v. Genband US LLC, No. 2:14-CV-744-JRG-RSP, 2016
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`WL 3618831, at *7–*8 (E.D. Tex. Mar. 1, 2016) (allowing evidence of a denial of
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`institution). The undue prejudice to GM compels denial of LKQ’s motion.
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`B.
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`LKQ’s Efficiency Arguments Are Overstated And
`Disingenuous.
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
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`LKQ’s efficiency arguments are also meritless because, unlike the cases it
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`relies on, it is not time barred from re-filing an IPR and has not otherwise
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`committed to dismiss its petition with prejudice. In the Samsung case LKQ cites,
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`for example, the Board granted Petitioner’s request to terminate, highlighting not
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`only the preliminary stage of the proceeding, but also the fact that Petitioner was
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`time-barred from filing addition petitions for the patents-at-issue. IPR2015-01270,
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`Paper 11 at 3–4 (PTAB Dec. 9, 2015) (“Petitioner is, therefore, barred from filing
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`another petition for inter partes review with respect to these petitions. Under these
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`circumstances and based on the record before us, we exercise our discretion and
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`dismiss[.]” (internal citations omitted)). This is not the case here. LKQ is not
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`time-barred from filing additional petitions; it offers only the hollow statement that
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`it “does not intend to do so.” Paper 12 at 3.
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`The harassing nature of LKQ’s approach to these IPRs and PGRs is further
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`common-sense evidence that this motion has nothing to do with efficiency. To
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`date, LKQ has filed 16 separate petitions for inter partes or post-grant review (see
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`Paper 12 at 5), and LKQ does not intend to stop there. Indeed, LKQ states in its
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`motion that it “anticipates filing numerous additional challenges” and that it seeks
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`to challenge the ’120 Patent through ex parte reexamination. Id. at 3, 5. If LKQ’s
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`motion were granted without adverse judgment, at a minimum, GM would be
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`forced to expend resources both here (as it has already done so in its preliminary
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
`response) and at the PTO (for an ex parte reexamination). Any and all of LKQ’s
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`future challenges of the ’120 Patent would unfairly benefit from review of GM’s
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`carefully-reasoned preliminary response.
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`Finally, because of LKQ’s unwillingness to dismiss with prejudice, the door
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`would be left open to LKQ filing yet another IPR against the ’120 Patent, and for
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`GM to be forced again to expend efforts filing a preliminary response to a second
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`IPR petition. If LKQ truly does not intend to refile an IPR against the ’120 Patent,
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`then it should agree to dismissal with prejudice. Its unwillingness to do so shows
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`the impropriety of its efficiency arguments.
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`C.
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`LKQ Has No Legitimate Basis For Dismissal.
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`LKQ’s claims that dismissal is necessitated by “a substantial new question
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`of patentability” (id. at 3) is equally disingenuous. LKQ cites U.S. Design Patents
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`US D774,951 (“Kazama”), US D787,389 (“Wolff”), and US D699,642 (“Kubota”)
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`as allegedly being “recently-discovered prior art.” However, Kubota was listed on
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`the front page of U.S. Design Patent US D746,740 to Wolff (“Wolff II”), which
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`LKQ cited as being one of the “Closest Prosecution History Cited Reference[s].”
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`Paper 12 at 4; Wolff II at cover page. Additionally, Wolff II and “recently-
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`discovered” Wolff share an inventor (Max Wolff) and have related applicants
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`(Ford entities). Compare Wolff at cover page, with Wolff II at cover page.
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`Moreover, as shown below, the “recently-discovered” art is no closer to the
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
`claimed design than the art LKQ already relied on in its petition. See Paper 2 at
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`45. Comparison of the ’120 Patent design, the “recently-discovered” art, and
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`previously-relied upon 2015 Chevrolet Traverse1 illustrates this point.
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`’120 Patent (EX. 1001 at FIG. 6)
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`Previously-relied-on 2014 Toyota Tundra
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`(EX. 1006 at 5, cropped, rotated)
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`Alleged “Recently-discovered Prior Art”
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`Kazama (FIG. 6, cropped)
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`Alleged “Recently-discovered Prior Art”
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`Kubota (FIG. 4)
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`1 LKQ relies on the “Chevrolet Traverse” as the primary reference in both grounds
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`of its Petition. Paper 2 at i.
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`Alleged “Recently-discovered Prior Art”
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`Wolff (FIG. 8)
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
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`LKQ fails to explain how its allegedly “recently-discovered” art is different
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`than previously cited art. Rather, LKQ merely compares “recently-discovered” art
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`to what it alleges as the “Closest Prosecution History Cited Reference[s]” with no
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`comparison to any of the art LKQ relied upon in its petition. Paper 12 at 3–4.
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`Given that the “recently-discovered” art is no closer to the claimed design than
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`LKQ’s previously-relied upon art, indications that LKQ knew or should have
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`known about the “recently-discovered” art, and LKQ’s failure to rely on “patents
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`or printed publications” in its Petition (explained in GM’s Response) (Paper 9 at 9–
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`13), the purported need for LKQ to dismiss this Petition falls flat. It is apparent
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`that LKQ reviewed GM’s preliminary response and determined it would be better
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`positioned to rework its arguments and shop for a better forum. Allowing parties
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`to do this would set a dangerous precedent, permitting petitioners to file weak or
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`incomplete petitions, elicit a preliminary response, and then use that preliminary
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`response as a roadmap for filing another PTO challenge based on similar art.
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`In analogous circumstances, the Board has consistently exercised its
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`discretion to deny institution of so-called “follow-on” petitions that attempt to use
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`a patent owner’s preliminary response or the Board’s institution decision as a
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`“roadmap” to gain institution in a later-filed case. See, e.g., Valve Corp. v.
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`Electronic Scripting Prods., Inc., IPR2019-00064, Paper 10 at 13, 18 (PTAB May
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`1, 2019) (precedential) (noting that petitioner “would have gained a substantial
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`advantage in waiting for the preliminary response and institution decision” before
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`preparing follow-on petitions and denying institution); General Plastic Industrial
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`Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 17–18 (PTAB
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`Sept. 6, 2017) (“The absence of any restrictions on follow-on petitions would
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`allow petitioners the opportunity to strategically stage their prior art and arguments
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`in multiple petitions, using our decisions as a roadmap, until a ground is found that
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`results in the grant of review. … [T]his is unfair to patent owners and is an
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`inefficient use of the inter partes review process and other post-grant review
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`processes.”). That same logic applies here, and should be used to deny LKQ’s
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`motion.
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`III. CONCLUSION
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`For the reasons set forth above, the Board should enter adverse judgment
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`against LKQ if the Board grants LKQ’s motion to withdraw. Otherwise, the Board
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`should deny the motion.
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
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`/Dorothy P. Whelan/
`Dorothy P. Whelan, Reg. No. 33,814
`Craig A. Deutsch, Reg. No. 69,264
`Grace J. Kim, Reg. No. 71,977
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`Date:March 20, 2020
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`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 335-5070
`Facsimile: (877) 769-7945
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`Case IPR2020-00065
`Attorney Docket: 45343-0015IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on March 20,
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`2020, a complete and entire copy of this Patent Owner’s Opposition To Petitioner’s
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`Motion To Withdraw and Dismiss was provided via email, to the Petitioner by
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`serving the email correspondence addresses of record as follows:
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`Barry F. Irwin, P.C.
`Reid Huefner
`Irwin IP LLC
`222 S. Riverside Plaza
`Suite 2350
`Chicago, IL 60606
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`Email:
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`birwin@irwinip.com; rhuefner@irwinip.com
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`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(650) 839-5092
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