LKQ Corp. v. GM Glob. Tech. Operations LLC

• Decision Date: 08 October 2021
• Docket Number: 065 S,Patent D864,PGR2020-00054
• Parties: LKQ CORPORATION and KEYSTONE AUTOMOTIVE INDUSTRIES, INC., Petitioner, v. GM GLOBAL TECHNOLOGY OPERATIONS LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

LKQ CORPORATION and KEYSTONE AUTOMOTIVE INDUSTRIES, INC., Petitioner,
v.
GM GLOBAL TECHNOLOGY OPERATIONS LLC, Patent Owner.

PGR2020-00054

Patent D864, 065 S

United States Patent and Trademark Office, Patent Trial and Appeal Board

October 8, 2021

PETITIONER: Barry F. Irwin, P.C. Reid Huefner IRWIN IP LLC

PATENT OWNER: Dorothy P. Whelan Jennifer J. Huang Craig A. Deutsch Grace J. Kim Joseph A. Herriges FISH & RICHARDSON P.C.

Before KEN B. BARRETT, SCOTT A. DANIELS, and ROBERT L. KINDER, Administrative Patent Judges.

JUDGMENT FINAL WRITTEN DECISION DETERMINING NO CHALLENGED CLAIM UNPATENTABLE 35 U.S.C. § 328(A)

KINDER, ADMINISTRATIVE PATENT JUDGE

I. INTRODUCTION

A. Procedural Background and Summary

LKQ Corporation and Keystone Automotive Industries, Inc. (collectively, "LKQ" or "Petitioner")^[1] filed a Petition requesting post-grant review of U.S. Patent No. D864, 065 S ("the '065 patent," Ex. 1001). Paper 2 ("Pet."). The Petition challenges the patentability of the sole design claim of the '065 patent. GM Global Technology Operations LLC ("GM" or "Patent Owner")^[2] filed a Preliminary Response to the Petition. Paper 7. On October 13, 2020, we determined that the '065 patent was eligible for post-grant review and that Petitioner demonstrated that it is more likely than not that the challenged claim was unpatentable. Accordingly, we entered a Decision instituting trial. Paper 10 ("Inst. Dec.").

Following our Institution Decision, GM timely filed a Response. Paper 20 ("PO Resp."). LKQ filed a Reply. Paper 24 ("Pet. Reply"). GM subsequently filed a Sur-Reply. Paper 28 ("PO Sur-Reply"). We heard oral argument on June 29, 2021. A transcript of the argument has been entered into the record. Paper 32 ("Tr.").

We have jurisdiction under 35 U.S.C. § 6(b). This Final Written Decision is issued pursuant to 35 U.S.C. § 328(a). Having reviewed the arguments of the parties and the supporting evidence, we find that LKQ has not demonstrated by a preponderance of the evidence that the sole claim of the '065 patent is invalid or would have been unpatentable. See 35 U.S.C. § 326(e).

B. Related Proceedings

LKQ lists twenty-three allegedly "related matters." Pet. 5. GM lists twenty-five distinct proceedings as related (Paper 6, 2-3), but then qualifies the list by making the statement that: "Patent Owner does not concede that any of the above-identified proceedings would affect, or be affected by, this proceeding." Id. at 3.

C. The '065 Patent and the Claim

In a post-grant review requested in a petition filed on or after November 13, 2018, we apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2019). With regard to design patents, it is well-settled that a design is represented better by an illustration than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although preferably a design patent claim is not construed by providing a detailed verbal description, it may be "helpful to point out. . . various features of the claimed design as they relate to the . . . prior art." Id. at 679-80; cf. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314-15 (Fed. Cir. 2013) (remanding to the district court, in part, for a "verbal description of the claimed design to evoke a visual image consonant with that design").

The '065 patent is titled "Vehicle Fender," and issued October 22, 2019, from U.S. Application No. 29/606, 680, filed June 7, 2017. Ex. 1001, codes (21), (22), (45). Because the earliest possible effective filing date for the '065 patent is after March 16, 2013 (the effective date for the first inventor to file provisions of the America Invents Act) and this Petition was filed within nine months of its issue date, the '065 patent is eligible for post-grant review. See 35 U.S.C. § 321(c).

The claim recites "[t]he ornamental design for a vehicle fender, as shown and described." Ex. 1001, code (57). The '065 patent covers a single claim as set forth in four figures. The Description specifies that "[t]he broken lines shown in the drawings depict portions of the vehicle fender that form no part of the claimed design."

Figures 1-4 of the '065 patent are depicted below.

(Image Omitted)

(Image Omitted)

Figures 1-4 of Exhibit 1001 above depict, respectively, the following views of the claimed vehicle rear bumper design: a front and left perspective view of the vehicle fender, a top plan view, a left end elevation view, and front elevation view. Id at code (57).

D. Claim Construction

We determine that the following verbal descriptions will be helpful by pointing out "various features of the claimed design as they relate to the . . . prior art." Egyptian Goddess, 543 F.3d at 679-80. LKQ offers a detailed claim construction position, identifying almost every feature that contributes to the overall appearance of the claimed design. See Pet. 11-20; see also Ex. 1004 ¶¶ 32-37 (Petitioner's expert testifying that "images rather than words best represent the design" and "it is impractical to verbally characterize every element of the claimed design").

We discuss here the features identified by Petitioner and Patent Owner that contribute to the ornamental design of the '065 patent.

I. Petitioner 's Proposed Claim Construction

LKQ relies on the Declarations of Jason M. Gandy (Ex. 1003) and Jason C. Hill (Exs. 1004, 1052) in support of its claim construction and arguments. LKQ contends that the claim of the '625 patent, as shown by the solid lines in the drawings, can be textually described in detail according to certain prominent features.

LKQ first describes the design as encompassing "an inflection line (coral) demarcating a concave contour and extending forwards and downwards at approximately a 15° angle from the longitudinal axis of the fender . . . and extending for a distance of at least 40% of the length of the fender." Pet. 13 (Petitioner's emphasis omitted throughout interpretations). LKQ's annotated Figure 1 is reproduced below.

(Image Omitted)

LKQ's annotated and cropped Figure 1 above shows an "inflection line" highlighted in color. Id. LKQ identifies an upper portion (shaded purple, below) comprising the portion of the fender located above the inflection line depicted above. Id. at 13-14.

(Image Omitted)

LKQ's annotated and cropped Figure 1 shows the entire shaded top portion in purple. Pet. 14. According to LKQ, "an upper portion . . . comprising the portion of the fender located above the inflection line," comprises "a protrusion extending rearwardly and upwardly said protrusion having a rearwardly curved rear edge, a linear upper rear diagonal edge, and an upwardly curved top edge, and a convex contour." Id. LKQ further contends that "the upper portion further compris[es] a top edge that slopes slightly downwardly and forwards from the protrusion for approximately 20% of its length, then drops briefly for approximately 30% of its height and rounding to run substantially parallel to the inflection line for approximately 70% of its length, and then deflecting 45° downwards and forwards for the remaining 10% of its length." Id.

LKQ next alleges that the design has "a convex crease (blue) extending from a rear edge of the fender forwards in a direction substantially parallel to the inflection line for approximately 30% of the length of the fender, the fender having a convex contour above and below the convex crease," as depicted below. Pet. 15.

(Image Omitted)

LKQ's annotated Figure 1 depicts an added blue line on a convex crease. Pet. 15.

Toward the front end of the fender design, LKQ contends the claim encompasses "a front portion (gold) further comprising a front upper edge approximately 25% of which is downwardly sloped and upwardly curved, and approximately 75% of which is downwardly sloped and downwardly curved, and that intersects a front slanted edge at approximately a 90° angle, the front portion further having a surface that is convexly contoured," as depicted below. Pet. 16.

(Image Omitted)

LKQ's annotated and cropped Figure 1 adds a shaded gold area to the front portion of the fender. Pet. 16.

Next, LKQ examines the portion of the design immediately above the wheel well, and contends the design claims "an arcuate wheel arch flat (green) having a width spanning approximately 20% of the length of the front slanted edge of the front portion, the wheel arch flat describing an arc of approximately 120°, and tapering to approximately 60% of its maximum width as it intersects with the rear edge of the fender towards the lower rear terminus of the fender." Pet. 17.

(Image Omitted)

LKQ's annotated and cropped Figure 1 adds a green shading to the arcuate wheel arch flat. Id.

Finally, LKQ points out that the design claim has

a rear edge having a convex contour and comprising a substantially vertical segment extending from where the wheel arch flat intersects the rear edge of the fender at approximately 20% of the height of the fender panel and extends upwards substantially vertically for approximately 50% of the height of the fender, then deflects rearwardly by approximately 30° versus the vertical for 20% of the height of the fender spanning from the crease to the inflection line and merges into the rearwardly curved rear edge of the upper portion

Pet. 18.

2. The Board's Claim Construction in the Decision to Institute

In our Decision to Institute, we noted that

the verbal descriptions set forth above better define the ornamental design for purposes of the issues presented in this proceeding. Petitioner's descriptions highlighted above, with certain modifications as noted, including our analysis of indefiniteness set forth below, provide a

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