UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`LKQ Corporation and Keystone Automotive Industries, Inc.,
`
`Petitioners,
`
`v.
`
`GM Global Technology Operations LLC,
`
`Patent Owner.
`
`_________________
`
`U.S. Design Patent No. D813,120
`
`Filed: September 19, 2016
`
`Issued: March 20, 2018
`
`Title: Hood Panel of Car
`
`__________________________
`
`Inter Partes Review No.: To Be Assigned
`
`
`
`DECLARATION OF JAMES M. GANDY, IN SUPPORT OF
`LKQ CORPORATION’S AND
`KEYSTONE AUTOMOTIVE INDUSTRIES, INC.’S PETITION FOR
`INTER PARTES REVIEW OF U.S. DESIGN PATENT NO. D813,120
`
`
`
`
`
`LKQ - Ex. 1003 p. 1
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`
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`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`LKQ Corporation and Keystone Automotive Industries, Inc.,
`
`Petitioners,
`
`v.
`
`GM Global Technology Operations LLC,
`
`Patent Owner.
`
`_________________
`
`U.S. Design Patent No. D813,120
`
`Filed: September 19, 2016
`
`Issued: March 20, 2018
`
`Title: Hood Panel of Car
`
`__________________________
`
`Inter Partes Review No.: To Be Assigned
`
`
`
`DECLARATION OF JAMES M. GANDY, IN SUPPORT OF
`LKQ CORPORATION’S AND
`KEYSTONE AUTOMOTIVE INDUSTRIES, INC.’S PETITION FOR
`INTER PARTES REVIEW OF U.S. DESIGN PATENT NO. D813,120
`
`
`
`
`
`LKQ - Ex. 1003 p. 1
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`
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`
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`I, James M. Gandy, submit this declaration in support of a Petition for Inter
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`Partes Review of U.S. Design Patent No. D813,120 (“the ’120 Patent”). In
`
`accordance with 28 U.S.C. § 1746, I declare under penalty of perjury that the
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`statements herein are true and correct to the best of my knowledge, belief,
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`recollection, and understanding. All statements made on information and belief are
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`believed to be true. I am over the age of eighteen, and, if asked to do so, I could
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`competently testify to the matters set forth herein.
`
`I.
`
`INTRODUCTION
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`1.
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`I have been retained by LKQ Corporation and Keystone Automotive
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`Industries, Inc. (together “LKQ” or “Petitioner”), as an expert witness in the above-
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`captioned proceeding. Based on my education and my experience in transportation
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`design, I have been asked to render an opinion regarding the patentability of the sole
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`claim of the ’120 Patent.
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`2.
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`As discussed in further detail in this Declaration and any supplemental
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`reports, testimony, or declarations that I may provide, it is my opinion that the sole
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`claim of the ’120 Patent is unpatentable based on the grounds set forth herein.
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`3.
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`The following is my report and it and the exhibits hereto contain my
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`opinions and the support therefore. In connection with rendering my opinion I have
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`reviewed and relied upon the following materials:
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`•
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`U.S. Design Patent No. D813,120 (“the ’120 Patent”) (Ex. 1001);
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`Page 2 of 58
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`LKQ - Ex. 1003 p. 2
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`•
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`•
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`•
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`File History for U.S. Design Patent No. D813,120 (Ex. 1002);
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`Sonic 2017, General Motors, July 2016 (Ex. 1005) (“Sonic 2017”);
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`Traverse 2015, General Motors, July 2014, archived on December 12,
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`2014, by the Internet Archive organization’s “Wayback Machine” at
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`https://web.archive.org/web/20141212044203/http://www.auto-
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`brochures.com/makes/Chevrolet/Traverse/Chevrolet_US%20Traverse
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`_2015.pdf. (“Traverse 2015”) (Ex. 1006);
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`•
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`Traverse/14, General Motors, July 2013, archived on April 3, 2014, by
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`the Internet Archive organization’s “Wayback Machine” at
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`https://web.archive.org/web/20140403110028/http://www.auto-
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`brochures.com/makes/Chevrolet/Traverse/Chevrolet_US%20Traverse
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`_2014.pdf_2014.pdf (“Traverse/14”) (Ex. 1007);
`
`•
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`Screenshot of 2014 Chevrolet Traverse LS, extracted from “2014
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`Chevy Traverse LS Review Walkaround – Used Cars for Sale in
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`Columbus Ohio” (timestamp: 4m34s), published on YouTube on
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`March 24, 2014 by Chesrown Autos, accessible at
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`https://www.youtube.com/watch?v=5jZ_LYGZJnU (Ex. 1008);
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`•
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`Screenshot of 2014 Chevrolet Traverse LS, extracted from “New 2014
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`Chevrolet Traverse LS Review | 140377” (timestamp 0:06), published
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`on YouTube on April 25, 2014, by Michael Boyer Chevrolet Cadillac
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`Page 3 of 58
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`LKQ - Ex. 1003 p. 3
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`Buick GMC Ltd., accessible at
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`https://www.youtube.com/watch?v=uCF77dLIbJ4 (Ex. 1009);
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`•
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`Screenshot of 2017 Chevrolet Sonic LS Sedan, extracted from “2017
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`Chevy Sonic LS Sedan: First Person In Depth Look” (timestamp
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`03:33), published on YouTube on January 21, 2017, by N&T Auto
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`Reviews, accessible at
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`https://www.youtube.com/watch?v=yNdO0zmU5Qc (Ex. 1010);
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`•
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`Screenshot of 2012 Chevrolet Sonic LTZ, extracted from “Chevrolet
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`Sonic LTZ 2012 Test Drive & Car Review with Ross Rapoport by
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`RoadflyTV” (timestamp 00:58), published on May 8, 2012, by
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`RoadflyTV, accessible at
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`https://www.youtube.com/watch?v=W0tk7sJSD6Q (Ex. 1011);
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`•
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`Photograph of 2015 Chevrolet Traverse, www.chevrolet.com,
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`archived on June 9, 2014, by the Internet Archive organization’s
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`“Wayback Machine” at
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`https://web.archive.org/web/20140609161008/http://www.chevrolet.c
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`om/content/dam/Chevrolet/northamerica/usa/nscwebsite/en/Home/Ve
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`hicles/SUVs%20and%20Crossovers/2015_Traverse/Model_Overview
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`/01_images/2015-chevrolet-traverse-crossover-suv-mo-exterior-
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`1480x551-04.jpg (Ex. 1012);
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`Page 4 of 58
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`LKQ - Ex. 1003 p. 4
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`•
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`2013 Sonic, General Motors, August 2012, archived on April 3, 2014,
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`by the Internet Archive organization’s “Wayback Machine” at
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`https://web.archive.org/web/20140403104909/http://www.auto-
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`brochures.com/makes/Chevrolet/Sonic/Chevrolet_US%20Sonic_2013
`
`.pdf (Ex. 1013); and
`
`•
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`4.
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`The documents and materials listed in my other declarations.
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`In addition to the above-stated materials provided, I have also relied on
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`my own education, training, experience, and knowledge in the field of transportation
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`or automotive design and design patents.
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`5.
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`Based on my review of the ’120 Patent and its file history, the Patent
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`Owner never disclosed the above prior art Chevrolet Traverse references to the
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`examiner. Even more notably, not a single non-patent publication was cited on the
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`face of the patent or in the file history, and none was disclosed by GM to the
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`examiner. However, in my experience, the most relevant prior art was typically
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`found in such publications. Further, General Motors was certainly aware of the
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`existence and content of published depictions of that vehicle in its own promotional
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`brochures. Reviewing other GM design patents and file histories, it appears this type
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`of disclosure deficiency is the norm for GM, not the exception. It is difficult to
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`explain the rationale behind General Motors’ apparent belief that its, or its
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`competitors’, past vehicle models and associated prior art publications do not
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`Page 5 of 58
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`LKQ - Ex. 1003 p. 5
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`constitute relevant prior art, or its decision to consistently and repeatedly omit from
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`its prior art disclosure statements the myriad prior art publications and references
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`that are unmistakably in their possession (e.g., their own marketing and promotional
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`materials) and that are undeniably relevant prior art (e.g., prior GM vehicles bearing
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`nearly identical, if not identical designs).
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`6.
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`I may also consider additional documents and information that have not
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`yet been provided to or discovered by me should such documents and information
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`be brought to my attention after the date I submit this Declaration, and I reserve the
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`right to add to or amend my opinions in connection with the same.
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`7.
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`The analysis in this Declaration is exemplary. Additional reasons may
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`support my conclusions, but they do not form my current analysis. The fact that I
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`do not address a particular reason does not imply that I would agree or disagree with
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`such additional reason.
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`8.
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`I receive compensation at a rate of $350 per hour for my time spent on
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`this matter, except for any travel time, which is billed at one-half of my hourly rate.
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`I am also being reimbursed for reasonable and customary expenses associated with
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`my work on this matter. I have no financial interests in the patents involved in this
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`proceeding, and my compensation is not dependent on the outcome of this
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`proceeding. The conclusions I present are based on my own judgment. I am not an
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`Page 6 of 58
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`LKQ - Ex. 1003 p. 6
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`employee of LKQ Corporation, Keystone Automotive Industries, Inc., Irwin IP
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`LLC, or any affiliated companies.
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`II. QUALIFICATIONS
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`9. My current curriculum vitae is Exhibit 1014 in this proceeding.
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`10.
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`I hold a Bachelor of Science in Architectural Design Technology from
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`Temple University in Philadelphia, Pennsylvania, where I graduated in 1972.
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`11. Upon graduation, I worked as a Design Patent Examiner in Art Unit
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`2911 for the United States Patent and Trademark Office (“USPTO”). While in Art
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`Unit 2911, I primarily worked in class D12 “Transportation.” My responsibilities
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`included examining design patent applications, examining reexamination and
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`reissue applications, issuing determinations on examined applications, initiating
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`interference proceedings, and preparing examiner’s answers for applications on
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`appeal to the Board of Patent Appeals and Interferences.
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`12.
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`In 1979, I was promoted to Primary Examiner and continued to work
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`as a Design Patent Examiner in Art Unit 2911 for the USPTO. With this promotion,
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`I gained full signatory authority and trained new examiners while occasionally
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`fulfilling supervisory patent examiner duties when the art unit supervisor was absent.
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`13.
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`In my 24 years of work as a Design Patent Examiner at the USPTO, I
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`made patentability determinations
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`in approximately 10,000 design patent
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`applications that I examined. I have examined design patent applications in every
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`Page 7 of 58
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`LKQ - Ex. 1003 p. 7
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`design class, and approximately three-quarters of my examinations related to Class
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`D12 (Land Transportation).
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`14.
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`In 1996, I became a Supervisory Patent Examiner for the USPTO and
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`transitioned to Art Unit 2913, which also reviews designs for Transportation among
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`other classes of art. As supervisor, I managed the work flow, quality, and timeliness
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`of examiners in my art unit. I also trained junior examiners and provided additional
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`training to primary examiners to maintain consistency in work product. I evaluated
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`the performance of all examiners in the art unit. Finally, I also developed the Design
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`Examiner Supplemental Training Guide and led the program for uniformity of
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`examination practice for the entire Design Patent Technology Center.
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`15.
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`In 1998, I became the Design Patent Practice Specialist for Technology
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`Center 2900 at the USPTO. I continued to train all new examiners, junior examiners
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`when they joined the USPTO and trained all examiners at Technology Center 2900
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`through continuing education programs. I was in charge of updating the Design
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`Examiner Supplemental Training Guide and Chapter 1500 Design Patents in the
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`Manual of Patent Examining Procedure. I responded to inquiries from external
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`customers about design patent practice and procedure on a daily basis. I
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`continuously reviewed cases, decisions, and reports coming from the courts, the
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`Board, and the Office of Patent Quality Review to train examiners and update the
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`Page 8 of 58
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`LKQ - Ex. 1003 p. 8
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`previously mentioned documents. Finally, I also made presentations to attorneys
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`and inventor groups on behalf of the USPTO.
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`16. During my career at the USPTO, I received an outstanding rating under
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`the performance appraisal plan for 32 consecutive years. I also received various
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`accolades including the Department of Commerce Bronze Medal Award in 1983;
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`the USPTO’s Distinguished Career Award in 2000 in recognition of consistent
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`superior performance in design patent application examination and in art unit
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`leadership; and the Norman P. Morgenstern Award in 2004 for the leadership and
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`innovation contributions made by Supervisory Patent Examiners.
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`17. Currently, and since my retirement from the USPTO in 2005, I have
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`occasionally counseled patent attorneys and agents who file design patents
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`applications.
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`18. Due to my approximately 33 years of design-patent-examination
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`experience with the USPTO in the field of transportation design, I consider myself
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`to be a designer of at least ordinary skill in the field of transportation design.
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`19.
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`In the past I have served as in expert in Complaint of Ford Global
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`Technologies, LLC under Section 337 of The Tariff Act of 1930, As Amended, on
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`behalf of Ford Global Technologies; Magnadyne Corp. vs. Best Buy Co., Inc., on
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`behalf of Magnadyne; Weber-Stephen Products LLC v. Sears Holdings Corporation,
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`on behalf of Sears; Trinity Manufacturing, L.L.C.; Campbell Soup Company; and
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`Page 9 of 58
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`LKQ - Ex. 1003 p. 9
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`Campbell Sales Company v. Gamon Plus, Inc. on behalf of Campbell Soup
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`Company; Nite Glow Industries, Inc., I Did It, Inc., and Marni Markell Hurwitz v.
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`Central Garden & Pet Company and Four Paws Pet Company, d/b/a Four Paws
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`Products, LTD on behalf of Nite Glow and Marni Markell Hurwitz.
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`III. MY UNDERSTANDING OF THE APPLICABLE LEGAL
`PRINCIPLES
`
`20. As a design patent expert, I am not an attorney and, therefore, nothing
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`in this report should be construed as me offering any legal opinions. Rather, I am
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`offering design assessments and opinions. In rendering my analysis, I have been
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`informed by counsel regarding the legal standards for determining patentability. I
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`have applied those standards in forming the opinions expressed in this report.
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`21. Based on my conversations with counsel for LKQ and my review of
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`administrative decisions and articles discussing design patent law principles, I have
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`the following understanding of patents generally, and design patents specifically. I
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`understand that a “utility patent” protects the way something works, but a “design
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`patent” protects the way something looks.
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`22.
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`It is my understanding that to be patentable, a design must be new and
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`original, and non-obvious. To be new (or have “novelty”), a design must differ from
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`all previous designs (known as the “prior art”). A design must also be original,
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`which means that it has to do more than simply imitate what already exists. I further
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`understand that a design patent does not cover functional aspects of the design, that
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`Page 10 of 58
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`LKQ - Ex. 1003 p. 10
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`is to say, aspects that are present as part of the design because they have to be there
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`for the article to function.
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`23.
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`It is my understanding that, for design patents, there is only one claim
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`that identifies the patented design and that single claim is shown or described in the
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`“figures” of the patent.
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`24.
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`I understand that a design patent can be invalidated on the basis that the
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`claimed invention was “anticipated” (that is, that the claimed invention was not
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`novel) over a disclosure in the prior art. It is my understanding that a claimed
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`invention is anticipated if it is identical in all material respects to a disclosure in the
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`prior art, and that the claimed design and the prior art design must be substantially
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`the same. It is further my understanding that the claimed design is substantially the
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`same as the prior art design if, from the perspective of the ordinary observer (and
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`not through that of a designer of ordinary skill who designs articles of the type
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`involved) giving such attention as a purchaser usually gives to the design, the
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`resemblance between the designs is such as to deceive the ordinary observer,
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`inducing the ordinary observer to purchase one supposing it to be the other. It is
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`further my understanding that this assessment considers similarity between the
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`designs as a whole rather than elements of the design in isolation, and that the
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`comparison should consider significant differences between the designs and not
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`minor or trivial differences. However, I also understand that when the claimed
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`Page 11 of 58
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`LKQ - Ex. 1003 p. 11
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`design is close to the prior art designs, small differences could appear important to
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`the ordinary observer.
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`25.
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`I understand that when considering whether a design is invalid as
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`anticipated by the prior art, those design elements that are functional, as well as those
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`that are not ornamental, should not be considered to establish novelty over the prior
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`art. I understand that a design or element may not be ornamental if its appearance is
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`not a matter of concern in the article’s normal and intended use, such as if it is
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`completely hidden or obscured throughout its normal and intended use. I further
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`understand that the period of normal and intended use of an article excludes the time
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`during which the article is manufactured or assembled, but otherwise generally
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`extends to the end of the article’s life, and that factual considerations particular to
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`that article’s design govern whether its design is or is not ornamental. I further
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`understand that, even though an article may be visible during its normal and intended
`
`use, its appearance may nonetheless not be a matter of concern to purchasers.
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`26. Regarding obviousness, I understand that the ultimate question is
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`whether the claimed design would have been obvious to an ordinary designer who
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`designs the type of articles involved. More specifically, the inquiry is whether one
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`of ordinary skill would have combined teachings of the prior art to create the same
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`overall visual appearance as the claimed design. It is also my understanding that
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`obviousness is based on the scope and content of the prior art, the differences
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`Page 12 of 58
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`LKQ - Ex. 1003 p. 12
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`between the prior art and the claim, and the level of ordinary skill in the art. I further
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`understand that one must not use hindsight to compare prior art to the claimed
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`design.
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`27.
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`I further understand that to determine whether a design patent claim is
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`obvious, there is a two-step process. First, there needs to be a single prior art
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`reference in existence, the design characteristics of which are basically the same as
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`the challenged design, but that such a “primary reference” need not contain each and
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`every ornamental feature present in the challenged design to be basically the same.
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`In other words, the “basically the same” test requires consideration of the visual
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`impression created by the patented design as a whole.
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`28. Second, there can be other references, “secondary references,” that may
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`be used to modify the primary reference to create a design having the same overall
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`visual appearance or impression as the challenged design. I understand that, in order
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`to modify the primary reference, the secondary references must be so related that the
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`appearance of certain ornamental features in one would suggest the application of
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`those features to the other. I also understand that a secondary reference is sometimes
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`unnecessary. I further understand that obviousness requires a designer to be
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`motivated to combine the existing prior art references to create the new design.
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`29.
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`I also understand that the features of the primary reference and the
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`secondary reference or references are then combined to create a “hypothetical” third
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`Page 13 of 58
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`LKQ - Ex. 1003 p. 13
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`reference and if the hypothetical reference has the same overall visual appearance or
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`impression as the challenged design, then the challenged design is obvious. The
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`similarity of the overall designs is what is important, de minimis differences or slight
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`variations between the challenged design and the hypothetical reference are not
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`relevant.
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`IV. THE ’120 PATENT
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`30.
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`I understand that the ’120 Patent was filed on September 19, 2016, and
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`granted on March 20, 2018.
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`31.
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`I have reviewed the ’120 Patent and its file history. The ’120 Patent
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`has one claim for the ornamental design for a hood panel of a car, as shown and
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`described in its seven figures. I understand that in a design patent, only the solid
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`lines are claimed, not the dashed lines. The seven figures and descriptions of the
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`’120 Patent are reproduced below:
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`Page 14 of 58
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`LKQ - Ex. 1003 p. 14
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`“FIG. 1 is a perspective view of new design [sic] for a hood panel of car [sic]
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`as shown in the drawings[.]” Ex. 1001, at 1.
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`
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`
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`Id. at FIG. 1.
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`“FIG. 2 is a front elevation view thereof[.]” Id. at 1.
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`Id. at FIG. 2.
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`Page 15 of 58
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`LKQ - Ex. 1003 p. 15
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`“FIG. 3 is a rear elevation view thereof[.]” Id. at 1.
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`Id. at FIG. 3.
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`“FIG. 4 is a left side elevation view thereof[.]” Id. at 1.
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`Id. at FIG. 4.
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`“FIG. 5 is a right side elevation view thereof[.]” Id. at 1.
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`Id. at FIG. 5.
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`Page 16 of 58
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`LKQ - Ex. 1003 p. 16
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`“FIG. 6 is a top plan view thereof[.]” Id. at 1.
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`Id. at FIG. 6.
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`“FIG. 7 is a bottom plan view thereof.” Id. at 1.
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`Id. at FIG. 7.
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`Page 17 of 58
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`LKQ - Ex. 1003 p. 17
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`32. The 2017 Chevrolet Sonic embodies the claimed invention. Images of
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`that vehicle from General Motors’ “Sonic 2017” promotional brochure are included
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`below:
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`Ex. 1004, at 7, 9 (cropped and/or rotated).
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`Page 18 of 58
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`LKQ - Ex. 1003 p. 18
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`V. ORDINARY OBSERVER
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`33.
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`I have been informed that the identification of the ordinary observer is
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`made by focusing on the actual product that is presented for purchase and the
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`ordinary purchaser of the product.
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`34.
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`In this instance, I believe that an ordinary observer would be the retail
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`consumer of vehicle hoods.
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`VI. DESIGNER OF ORDINARY SKILL IN THE ART
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`35.
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`I have been informed that an “ordinary designer” or “designer of
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`ordinary skill in the art” is one who designs articles of the type involved in the
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`relevant art of the ’120 Patent.
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`36.
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`In this context, and as of the priority date of the ’120 Patent (March 18,
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`2016), an ordinary designer or designer of ordinary skill in the art would be an
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`individual who has at least an undergraduate degree in transportation or automotive
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`design and has work experience in the field of transportation or automotive design,
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`or someone who has several years’ work experience in transportation and
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`automotive design.
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`37. From a design examination standpoint, the examiner would identify key
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`elements that define the overall visual appearance of the design. Once that is
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`established, the examiner identifies various secondary elements that may be relevant
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`to the ornamentality of the claimed design.
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`Page 19 of 58
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`LKQ - Ex. 1003 p. 19
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`38. Examiners can and should consider many sources for already existing
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`similar designs, especially in relation to the global automotive market. This would
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`include already published patents and publications, such as coverage of auto shows
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`from inside and outside the United States, concept cars, auto industry blogs, auto
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`industry print and online publications such as Motor Trend or Car and Driver, cars
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`that are currently on the market, prior model years of cars, Pinterest, google image
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`search results, third party websites such as netcarshow.com, motorologist.com, after-
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`market design trends, and others.
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`39.
`
`I further understand that the ordinary designer is presumed to have
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`knowledge of the prior art.
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`VII. CLAIM CONSTRUCTION AND FUNCTIONALITY
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`40. My understanding is that the specification of the ’120 Patent does not
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`claim any broken lines in the figures. Further, neither the claim, nor the description
`
`makes any reference to the existence of broken lines on the drawing.
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`41. Briefly stated and as shown in the below diagram, the claimed design
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`shows a vehicle hood panel comprising:
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`• a center peak;
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`• a sloped U-shaped beveled edge (orange highlight);
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`• a pair of substantially triangular flanges (purple highlights);
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`• a raised middle portion of the hood panel (green highlight);
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`Page 20 of 58
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`LKQ - Ex. 1003 p. 20
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`• a pair of sloping planes (blue highlights);
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`• a pair of accent beveled edges comprising a bend (yellow highlights); and
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`• an underside of the hood panel further comprising a structural plate.
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`Ex. 1001, FIG 1 (annotated). Each of the above-identified elements is discussed and
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`illustrated in greater detail below.
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`A. Center Peak
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`42. The claimed design comprises a peak (identified in the below with a red
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`arrow) that runs longitudinally along the center of the hood, as identified on the
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`below figure:
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`Page 21 of 58
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`LKQ - Ex. 1003 p. 21
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`Id. at FIG 1 (annotated).
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`B.
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`Sloped U-Shaped Beveled Edge.
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`43. The claimed design of the ’120 Patent comprises a sloped, substantially
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`U-shaped beveled edge, highlighted in orange in the below annotated figures:
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`Id. at FIG. 1 (annotated)
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`Id. at FIG. 6 (annotated)
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`Id. at FIG. 2, (annotated)
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`Page 22 of 58
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`LKQ - Ex. 1003 p. 22
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`C.
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`Substantially Triangular Flanges
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`44. Outboard of the U-shaped beveled edge, the claimed design further
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`comprises a pair of substantially triangular flanges, highlighted in purple in the
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`below figures:
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`Id. at FIG. 1 (annotated)
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`Id. at FIG. 6 (annotated)
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`Id. at FIG. 2 (annotated)
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`D. Raised Middle Portion
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`45. The claimed design of the ’120 Patent further comprises a raised middle
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`portion, highlighted in green in the below figures:
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`Page 23 of 58
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`LKQ - Ex. 1003 p. 23
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`Id. at FIG. 1 (annotated)
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`Id. at FIG. 2 (annotated)
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`E.
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`Sloping Planes
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`46. Also inboard of the U-shaped beveled edge and on either side of the
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`raised middle portion, the claimed design further includes a pair of sloping planes,
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`highlighted in blue in the below figures:
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`Page 24 of 58
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`LKQ - Ex. 1003 p. 24
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`Id. at FIG. 1 (annotated)
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`Id. at FIG. 6 (annotated)
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`Id. at FIG. 2 (annotated)
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`F. Accent Beveled Edges
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`47. The claimed design further comprises a further pair of accent beveled
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`edges, highlighted in yellow in the below figures, those accent beveled edges each
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`further comprising a bend:
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`Id. at FIG. 1 (annotated)
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`Id. at FIG. 6 (annotated)
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`Page 25 of 58
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`LKQ - Ex. 1003 p. 25
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`Id. at FIG. 2 (annotated)
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`G. Underside and Structural Plate
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`48. The ’120 Patent further depicts an underside of the hood panel, as
`
`shown below:
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`
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`Id. at FIG. 7.
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`49. The underside of the hood comprises a structural plate to which the
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`upper sheet is shown to be affixed. This lower structural plate comprises a recessed
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`channel along the front of the hood panel, a set of sockets on either side of the panel
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`Page 26 of 58
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`LKQ - Ex. 1003 p. 26
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`(presumably for mating with extrusions or vibration dampening mounts that the
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`hood panel would interface with when closed), and various holes and openings for
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`accommodating or mounting vehicle components such as the hood hinge assemblies,
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`a support strut for propping the hood open, and a slot for accommodating a hook
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`(also depicted in FIG. 7) for interfacing with the vehicle’s hood latch.
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`50. These slots, holes, recesses, and extrusions have little to no ornamental
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`value. They serve the exclusively functional purposes of ensuring appropriate
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`structural rigidity and crumple properties, and of accommodating the mounting of
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`various mechanical and other components to the hood panel and accommodating
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`components comprising the engine bay and chassis, which may include engine
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`components, engine covers, line and wire run paths, and dampening mounts for
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`minimizing vibration and securing proper alignment of the hood when it is closed.
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`Such vibration dampening mounts are evident, for example, in the below photograph
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`of the 2015 Chevrolet Traverse, and serve the functional purposes of preventing
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`vibration, and maintaining alignment of the hood panel when it is closed:
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`Page 27 of 58
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`LKQ - Ex. 1003 p. 27
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`Vibration
`Dampening Mounts
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`Ex. 1008 (cropped, annotated)
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`
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`51. The same is true of the embodying 2017 Chevrolet Sonic, as shown
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`below:
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`Page 28 of 58
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`LKQ - Ex. 1003 p. 28
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`Ex. 1010 (cropped).
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`52. The structural plate further comprises a recessed central portion with a
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`number of cutouts, where portions of the remaining material forms mounting points
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`for affixing the lower structural plate to the upper sheet, and other portions of the
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`remaining material is shown to be formed into an arrangement of semi-tubular
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`braces. The recessed central portion further comprises numerous bolt holes and
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`slots, presumably as fastening points for an insulating pad.
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`53. The underside of the hood is concealed during the vast majority of the
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`time during which an embodying article would be in operation (i.e., while the hood
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`panel is closed). Further, even during those times when the hood is open, the
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`appearance of the underside of the claimed hood panel would not be a matter of
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`concern for purchasers.
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`Page 29 of 58
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`LKQ - Ex. 1003 p. 29
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`54. The appearance of the elements depicted in the central recessed portion
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`of the structural plate is not a matter of concern for purchasers of the claimed parts.
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`When sold, the hood panel of the embodying vehicle comprises an opaque hood
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`insulating pad that is affixed to the underside of the hood and that entirely conceals
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`the area within the recessed portion of the structural plate. This hood insulating pad
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`is evident in videos of each of the embodying and below-identified prior art vehicles
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`published to YouTube more than one year before the priority date of the ’120 Patent.
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`See Exhibits 1008. 1010, 1011. For example, a screenshot from such a video
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`depicting the underside of the hood panel of the embodying 2017 Chevrolet Sonic is
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`set forth below:
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`
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`Ex. 1010 (cropped).
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`55. The fact that the recessed portion of the structural plate is entirely
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`concealed behind an insulating pad when an embodying hood panel would be in
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`normal use and operation (i.e., when installed in a model year 2017-up Chevrolet
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`Sonic) renders it concealed, or at least obscure, during normal use. Although it is
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`Page 30 of 58
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`LKQ - Ex. 1003 p. 30
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`conceivable that the recessed portion of the structural plate on the underside of the
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`hood panel may be visible at some times during the life of an embodying hood panel,
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`such as prior to the installation or during replacement of the hood insulating pad,
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`that is no different than features of other designs that were deemed improper subjects
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`for design patents on the basis that the designs were not directed towards an
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`ornamental design. I understand that designs that were previously denied patent
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`protection on that bases included designs directed towards horseshoe calks (i.e.,
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`protrusions on the underside of horseshoes) and vacuum cleaner brushes, each of
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`which would be visible to users if the ground-contacting face of the horseshoe or
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`vacuum cleaner were lifted off the ground. Yet, the appearance of neither the
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`challenged horseshoe calk, nor the challenged vacuum cleaner brush was found to
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`be a matter of concern due to consumers’ and purchasers’ attitudes towards the
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`appearances of those articles.
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`56. Further, it is my understanding that products embodying the claimed
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`design would either be sold as original equipment on an embodying Chevrolet
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`Traverse, in which case the hood insulating pad would already be in place, or would
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`be sold as an Original Equipment Manufacturer (“OEM”) replacement part or an
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`aftermarket replacement part, in which case I understand that the part would
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`typically be ordered by a repair shop by part number or fitment, and in the case of a
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`Page 31 of 58
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`LKQ - Ex. 1003 p. 31
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`proper repair, would be fitted with a hood insulating pad before being provided to
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`the user.
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`57. The depicted features of the recessed central portion of the hood panel
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`of the ’120 Patent have no ornamental value whatsoever. They are not intended to
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`even be seen when the article has been properly installed in a corresponding vehicle.
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`58. Thus, it is my opinion that the above-identified considerations establish
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`that the appearance of the portion of the claimed design of the ’120 Patent within the
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`recessed area of the structural plate would not be a matter of concern to any
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`prospective purchasers. Rather, those considerations as well as the shape and nature
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`of the parts comprising the recessed area of the structural plate indicate that the
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`design of that portion of the claimed design of the ’120 Patent is driven exclusively
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`by functional considerations, such as structural strength, rigidity, crumple
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`characteristics, thermal insulation, weight reduction, and for facilitating the secure
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`mounting of the sheet constituting the upper surface of the hood, the hood insulating
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`pad, and other mechanical or functional components to be incorporated into the hood
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`panel. No aspect of the design comprising the recessed portion of the hood panel
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`serves any ornamental purpose.
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`Page 32 of 58
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`LKQ - Ex. 1003 p. 32
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`VIII. THE PRIOR ART
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`59.
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`In connection with this matter, I have searched for and located various
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`pieces of prior art. I have also been provided certain pieces of prior art by counsel
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