GM Global Technology Operations LLC

Patent Trials and Appeals Board

Aug 4, 2021

IPR2020-00534 (P.T.A.B. Aug. 4, 2021)

Trials@uspto.gov Paper No. 28
571-272-7822 Entered: August 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LKQ CORPORATION and
KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
Petitioner

v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC,
Patent Owner.
____________

IPR2020-00534
Patent D797,625 S
____________

Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claim Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background
LKQ Corporation and Keystone Automotive Industries, Inc.,
(collectively “LKQ”) filed a Petition to institute an inter partes review of the
claim for a “Vehicle Front Fender” in U.S. Patent No. D797,625 S (Ex.
1001, “the ’625 patent”). Paper 2 (“Pet.”). GM Global Technology
Operations, Inc., (“GM”) filed a Preliminary Response. Paper 9 (“Prelim.
Resp.”). On August 11, 2020, we entered a Decision instituting an inter
partes review of the challenged claim in this proceeding. Paper 10 (“Inst.
Dec.”).
Following our Institution Decision, GM timely filed a Response.
Paper 17 (“PO Resp.”). LKQ filed a Reply. Paper 21 (“Pet. Reply”). GM
subsequently filed a Sur-Reply. Paper 23 (“PO Sur-Reply”). We heard oral
argument on April 27, 2021. A transcript of the argument has been entered
into the record. Paper 27 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). Having reviewed the
arguments of the parties and the supporting evidence, we find that Petitioner
has not demonstrated by a preponderance of the evidence that the sole claim
of the ’625 patent is unpatentable.
B. Additional Proceedings
The parties identify various other inter partes and post-grant review
proceedings that Petitioner has filed challenging different patents owned by
GM. The parties do not state that these other proceedings affect, or would
be affected by, the outcome of this proceeding. Pet. 5–6; Paper 5, 2.
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C. The ’625 Patent and Claim
The ’625 patent (Ex. 1001) is a design patent that issued September
19, 2017, and lists GM as the assignee. Ex. 1001, codes (45), (73). The
title, “Vehicle Front Fender,” refers to an outer surface of a vehicle front
fender, which the figures of the patent illustrate in solid lines, but with
certain portions shown in dashed lines, such as the inner surface, that would
not be observable when the fender is attached to a vehicle. See 37 C.F.R.
§ 1.152; see also MPEP 1503.02, subsection III (“Unclaimed subject matter
may be shown in broken lines for the purpose of illustrating the environment
in which the article embodying the design is used. Unclaimed subject matter
must be described as forming no part of the claimed design or of a specified
embodiment thereof.”).
The ’625 design includes Figures 1–4, reproduced below, illustrating
the claimed front fender as set forth below.1

1 We refer to the claim, i.e., the vehicle front fender shown in Figures 1–4,
also as “the ’625 design.”
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Ex. 1001. Figures 1–4 above depict, respectively, the following views of the
claimed vehicle front fender design: a perspective view, a side view, a front
view, and a top view. Id. at code (57).
D. Claim Construction
In an inter partes review based on a petition filed after November 13,
2018, the claims are construed
using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. [§] 282(b),
including construing the claim in accordance with the ordinary
and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to
the patent.
37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc) (setting forth claim construction standard in civil
actions).
With respect to design patents, it is well settled that a design is
represented better by an illustration than a description. Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing
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Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although preferably a design
patent claim is not construed by providing a detailed verbal description, it
may be “helpful to point out . . . various features of the claimed design as
they relate to the . . . prior art.” Id. at 679–80; cf. High Point Design LLC v.
Buyers Direct, Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to
district court, in part, for a “verbal description of the claimed design to
evoke a visual image consonant with that design”).
1. LKQ’s Proposed Claim Construction
LKQ relies on the Declarations of Jason M. Gandy (Ex. 1003) and
Jason C. Hill (Ex. 1004; Ex. 1043) in support of its claim construction and
arguments. GM relies on the Declaration of Thomas V. Peters (Ex. 2004).
LKQ contends that the claim of the ’625 patent, as shown by the solid
lines in the drawings, can be textually described as:
[a] vehicle fender comprising:
a top protrusion extending rearwardly and upwardly from an
upper portion of the fender and having an intermittent u-shaped
notch;
a first crease and a second crease extending forwards from a rear
edge of the fender, a concavity line disposed between the first
crease and the second crease, and an inflection line below the
second crease; and
an angular front elevation profile.
Pet. 13–15 (emphasis omitted). LKQ provides the following annotated
Figure 1 from the ’625 patent, emphasizing certain claim elements.
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In annotated Figure 1, above, LKQ illustrates a front perspective view of the
claimed vehicle fender pointing to a “first crease,” a “concavity line,” a
“second crease,” and an “inflection line.” Id. at 14.
2. GM’s Proposed Claim Construction
GM’s position is that LKQ’s construction is too general and
simplistic. See PO Resp. 1 (GM arguing that it “is not the presence or
absence of common features, but the details in the claimed design that stand
out”). GM describes the claimed design as “a coordinated set of features
that contribute to a unique overall appearance.” Id. at 3. Summarized
below, GM asserts that there are five specific ornamental aspects of the
design that contribute to its uniqueness. Id. at 4–11.
(a) “[f]irst, the claimed design includes distinct lateral and
lower perimeter shapes”
GM argues that the right hand lateral edge, i.e., “door cut line,” and
the circular edge of the wheel arch “complement each other—both have
smooth, arcuate shapes that echo the smooth and consistent curvature of the
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‘first’ and ‘second’ creases and other sculpting of the fender.” Id. at 4.
Reproduced below is GM’s annotated version of Figure 2 of the ’625 design.

GM’s annotated version of Figure 2 of the ’625 design is shown above with
the door cut line and wheel arch highlighted in red. Id. at 5.
(b) “[s]econd, the claimed design includes a ‘protrusion’
having a particular three-dimensional shape”
GM argues that the shape of the protrusion is unique, specifically
drawing our attention to the consistent width of the upper surface of the
protrusion, shown highlighted in green in Patent Owner’s annotated Figure 1
reproduced below.
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GM’s annotated version of Figure 1 of the ’625 design is shown above with
the upper surface of the protrusion highlighted in green. Id. at 6. Patent
Owner argues that “[t]he upper surface (green) has a thickness and
consistent width that mirrors the inside surface of the ‘u-shaped notch,’
furthering the cohesive overall appearance of the fender.” Id. at 5 (citing Ex.
2004 ¶¶ 39–40).
(c) “[t]hird, the claimed design includes lines and surfaces
having smooth, arcing shapes that provide a distinctive
sculpting”
According to GM, the claimed design has first and second creases that
“gently curve between respective ends.” Id. at 7. GM contends that the
“concavity line” is similarly curved and that “[t]hese lines cooperate with the
smooth, arching lines of the fender perimeter, and the contoured surfaces
between these lines, to provide an overall appearance of smooth, curving
shapes.” Id. Figure 2 of the ’625 patent as annotated by Patent Owner is
reproduced below.
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GM’s annotated version of Figure 2 of the ’625 design is shown above with
the first and second creases, and concavity line, highlighted in red. Id. at 5.
Patent Owner refers to the first crease as a “character line.” Id. at 9.
According to GM’s declarant, Mr. Peters, “the curvature and relative
positioning of the ‘first crease’ helps set a tone for the proportions and body
shape of the fender.” Ex. 2004 ¶ 44.
(d) “[f]ourth, the claimed design includes a horizontal
crease near the lower portion of the fender that extends
between the wheel arch and the lateral edge”
GM argues that the horizontal crease located adjacent to the wheel
arch “contributes to the overall sculpted appearance of the front fender, and
adds a focal location extending to the right of the wheel arch.” PO Resp. 10.
We note LKQ refers to this feature as an “inflection line.” Pet. 14. Patent
Owner’s annotated Figure 1 is reproduced below.
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GM’s annotated version of Figure 1 of the ’625 design is shown above with
the horizontal crease highlighted in red. PO Resp. 10.
(e) “[f]ifth, the claimed design defines a wheel arch having
a circular perimeter. The perimeter has a smooth,
continuous curvature that extends between the front
corner and rear bottom corner of the fender”
GM contends also that the wheel arch contributes to the overall
appearance of the claimed design because “the circular perimeter of the
cutout echoes the smooth, arcing lines of the other perimeter edges, the
protrusion, first and second creases, and other sculpting of the fender.” Id. at
11. Figure 2, as annotated by GM, is reproduced below.
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GM’s annotated Figure 2, above, illustrates the perimeter of the wheel arch
highlighted in red. Id.
3. The Claim Construction Analysis
In addition to its claim construction the specific design elements
discussed above, GM makes several arguments to support its overarching
contention that, “in the field of vehicle fender design, nuanced features are
significant to overall appearance.” Id. at 12 (citing Ex. 2004 ¶¶ 48–56). GM
argues that an ordinary observer would consider the overall appearance of
the claimed design and that details are important “because (1) the art is
crowded; (2) the fender at issue must interface with other aspects of a
vehicle, which puts increased focus on incongruities; and (3) fender
replacement part marketing materials tout the importance of details and parts
being ‘identical’ in this field.” Id. We address these three arguments in
turn.
(a) Whether Vehicle Fender Design is a Crowded Art
GM argues that vehicle fenders are in a crowded field. Id. at 13. GM
argues that during prosecution of the application thatthat became the ’625
patent, the Examiner cited and considered “dozens” of vehicle front fenders.
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Id. GM cites several cases, including In re Harvey, 12 F.3d 1061, 1064
(Fed. Cir. 1993), where the Federal Circuit discusses crowded art. In
Harvey, the Federal Circuit distinguished the facts from a prior case, In re
Hopkins, explaining that the loud speaker designs at issue in Hopkins were
in a field “much less crowded than that of ornamental vase design,” which
was the focus of Harvey. Harvey, 12 F.3d at 1064.
We appreciate that a recognition that the vehicle fender field is
considered to be in a “crowded art” would be helpful for GM insofar as
small or “nuanced” differences between the claimed design and the prior art
will then become even more important. However, the “crowded art” concept
is highly fact dependent. GM has presented evidence of other design patents
for vehicle fenders. See PO Resp. 15; see also Ex. 1001, code (56) (listing
dozens of references). GM’s declarant, Mr. Peters, points out 24 design
patents relating to vehicle fender design and, out of those, specifically
addresses six “vehicle fender designs that reflect common design concepts
like those recited in Petitioner’s proposed construction for the ’625 Patent.”
Ex. 2004 ¶ 50. Mr. Peters explains that, due to the necessity to interface
with other vehicle components and body parts, commonalities between
fender designs can “include arcuate wheel arches, protrusions that interface
between the vehicle hood and A-pillar, door cut lines that interface with a
door panel, and contoured surface sculpting that includes multiple creases.”
Ex. 2004 ¶ 51. Also, Mr. Peters references “an article from October 2017
estimating that over 1,700 different car models were on the road.” Id. ¶ 53
(citing Ex. 2002, 2).
We are not persuaded that the field is crowded based merely on the
evidence of the number of vehicle models that include front fenders. GM
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has not defined clearly the field of art that is allegedly crowded. For
example, it is unclear whether the field of art should include all vehicles as
recited in the title, or be limited to sedans, as opposed to trucks or sports cars
which could arguably be significantly different in appearance. GM’s
analysis of six other fender designs, advanced to show that the field of
fender design is crowded, is helpful to show certain commonalities among
related fender designs, but it is not as persuasive that fender design is
specifically a crowded art. Moreover, to the extent In re Harvey is
applicable here, we find that vehicle fenders are more fairly akin to loud
speakers, as compared to vases, which have been made for thousands of
years. See Un-Making Sense of Alleged Abkhaz-Adyghean Inscriptions on
Ancient Greek Pottery, Alexei Kassian, Copyright: Koninklijke Brill NV,
Leiden, 2016 (last viewed Aug. 4, 2021 at https://www.researchgate.net/
publication/311802093_Un_Making_Sense_of_Alleged_Abkhaz
Adyghean_Inscriptions_on_Ancient_Greek_Pottery) (explaining that “[a]
large number of Ancient Greek vases, starting from the late 8th to the early
4th centuries BC, bear short inscriptions”).
We acknowledge that there are many different front fender designs,
and we find that this fact helps illustrate both commonalities and differences
among the designs. See, e.g., PO Resp. 13 (GM providing a collage of
fender designs to illustrate common features). We are not persuaded, on the
record before us, that GM has provided sufficient facts or evidence for the
Board to determine that vehicle fender design is a relatively crowded art.
(b) Interfacing with Other Vehicle Components and the
Similar Appearance of Replacement Parts
GM argues that “the ordinary observer would have been especially
attuned to interfacing aspects of the design because they directly impact the
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match/fit with other parts of the vehicle.” PO Resp. 15–16 (citing Ex. 2004
¶ 54; Auto. Body Parts Ass’n v. Ford Glob. Techs., LLC, 930 F.3d 1314,
1319 (Fed. Cir. 2019)). In this case, extending our claim construction
inquiry beyond the metes and bounds of the claim to address “fit with other
vehicle components” is not necessary. PO Resp. 15–16 (citing Ex. 2004
¶ 54). For one thing, the claim in the ’625 patent does not include any other
body parts or vehicle components. Ex. 1001, code (57), Figs. 1–4; see also
OddzOn Prod., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)
(“A design patent only protects the novel, ornamental features of the
patented design.”). However, we do find persuasive GM’s evidence that,
when repairing a vehicle, consumer preference is to choose identical
replacement parts, for the reason that identical parts best return the vehicle to
its original appearance. Pet. 16 (citing Ex. 2003, 10, 14; Ex. 2004 ¶¶ 55–56;
Ex. 2005, 3–4). This evidence helps support GM’s position that “[t]he
ordinary observer’s overall impression would have been defined by a
multitude of readily apparent features of the ’625 Patent’s design.” PO
Resp. 17.
(c) How the Claim is Construed
We are persuaded by the parties’ arguments and the evidence in this
case that vehicle fender designs include unique ornamentation as shown in
the drawings of the ’625 patent. We are further persuaded that we should
consider and describe, in more detail than the description LKQ proffers, the
elements and ornamentation as part of the overall appearance of the claimed
design. See Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed.
Cir. 2010) (The Federal Circuit questioning how “a court could effectively
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construe design claims, where necessary, in a way other than by describing
the features shown in the drawings.”).
Therefore, in addition to the commonalities between fenders described
by LKQ and its declarant, Mr. Hill, we find persuasive Mr. Peters’ testimony
that “[t]he ordinary observer would have been attuned to nuanced
differences between fender designs,” and “readily recognized differences
that distinguish vehicle fender designs.” Ex. 2004 ¶¶ 52–53. Mr. Peters
testifies, for example, that “[t]he sculpture of vehicle front fenders
significantly impacts the character and visual impression of the fender in the
eyes of the ordinary observer.” Ex. 2004 ¶ 81. Likewise, LKQ’s declarant,
Mr. Hill, testified in his deposition that an ordinary designer would consider
various features, including sculpting, on vehicle fenders:
Q. Right. What about the sculpting on the face of the fender,
would you agree with me that those are features, the sculpting
on the side of a vehicle including on a fender, that are going
to be meaningful to an ordinary observer?
. . . .
A. Yes.
Ex. 2008, 20:6–15.
In our Decision on Institution, we determined that no express verbal
description was necessary. Inst. Dec. 5–6. We explained that “the best
description of the ornamental features of the ’625 design comes from the
drawings themselves.” Id. at 6. Now, on the full record before us, we still
find that the best evaluation of the claimed design occurs by observing and
considering the overall appearance of the claimed design as shown explicitly
in Figures 1–4 of the drawings. See In re Jennings, 182 F.2d 207, 208
(CCPA 1950) (“In considering patentability of a proposed design the
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appearance of the design must be viewed as a whole, as shown by the
drawing, or drawings.”).
However, based on the competing analyses by the parties and
considering the relationship of the prior art to the claimed design, we find it
helpful to describe verbally certain elements of the claim for purposes of our
analysis in this Final Decision. See Egyptian Goddess, 543 F.3d at 680; see
also Durling v. Spectrum Furniture Co., 101 F.3d 100, 104 (Fed. Cir. 1996)
(“A proper interpretation of [the] claimed design focuses on the visual
impression it creates.”).
Considering the overall appearance of the ’625 design, we determine
that LKQ’s proposed construction is incomplete. In addition to LKQ’s
construction, we find certain other elements of the claimed fender, some of
which are described by GM, are readily observable and relevant to the
overall appearance of the claimed design.
1) As best observed in Figures 1–4 of the ’625 patent, on the right
side, the claimed design illustrates a door cut line having a slight
but consistent curvature extending from the u-shaped notch
downwards to a lower terminus of the fender, and a circular wheel
arch extending from the lower terminus to an angular forward edge
of the distal portion. See PO Resp. 4–5 (citing Ex. 2004 ¶¶ 35–38).
2) A consistent width lower rearward terminus shape defined between
the wheel arch and door cut line. See Ex. 1001, Figs. 1–2.
3) A protrusion where the upper surface of the protrusion (shown
highlighted green in GM’s annotated Figure 1, above) has a
thickness and consistent width that mirrors the inside surface of the
u-shaped notch. PO Resp. 7 (citing Ex. 2004 ¶¶ 41–42).
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4) A gently curving first and second crease extending forwards from
the door cut line and defining a concavity line there between. The
first and second crease and concavity lines providing a sculpted
appearance to the fender body below the protrusion, as best shown
in the perspective view of Figure 1. Id. at 10; Pet. 14–15 (citing
Ex. 1004 ¶ 46).
5) As best seen in Figure 1 of the ’625 patent, below the first and
second creases, the claimed design illustrates an inflection line
defined by opposing shade lines, the inflection line extending
between the wheel arch and door cut line. PO Resp. 10, Ex. 1001,
Fig. 1.
Considering Figures 1–4 and keeping these visually apparent
characteristics of the claimed design in mind, we turn below to the
anticipation and obviousness challenges that Petitioner has raised in this
proceeding.
E. Instituted Grounds
LKQ contends that the challenged claim is unpatentable under
35 U.S.C. §§102, 103 based on U.S. Design Patent No. D773,340 S
(Ex. 1006, “Lian”), which is assigned to BYD Company Ltd. and issued
December 6, 2016. Pet. 18. LKQ also argues that the challenged claim is
unpatentable under 35 U.S.C. §103 based on Lian combined with images of
the 2010 Hyundai Tucson (Ex. 1007) as disclosed in a promotional brochure.
Id.
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Claims Challenged 35 U.S.C. § References/Basis
Claim 1 102 Lian2
Claim 1 103 Lian
Claim 1 103 Lian and 2010 Hyundai Tucson3

II. ANALYSIS
A. Principles of Law
1. Anticipation
The “ordinary observer” test for anticipation of a design patent is the
same as that used for infringement, except that for anticipation, the patented
design is compared with the alleged anticipatory reference rather than an
accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d
1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design
patent infringement was first enunciated by the Supreme Court in Gorham
Co. v. White, 81 U.S. 511 (1871), as follows:
[I]f, in the eye of an ordinary observer, giving such attention as
a purchaser usually gives, two designs are substantially the same,
if the resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the other, the
first one patented is infringed by the other.
Id. at 528. The ordinary observer test requires the fact finder to consider all
of the ornamental features illustrated in the figures that are visible at any
time in the “normal use” lifetime of the accused product, i.e., “from the
completion of manufacture or assembly until the ultimate destruction, loss,
or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. In other

2 Ex. 1006, U.S. Design Pat. No. D773,340 S (December 6, 2016).
3 Ex. 1007, 2010 Hyundai Tucson Brochure, copyright 2009,
http://www.auto-brochures.com/makes/Hyundai/Tucson/Hyundai US
Tucson 2010.pdf.
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words, the ordinary observer test requires consideration of the design as a
whole. See id. at 1243; Egyptian Goddess, 543 F.3d at 677. In applying the
ordinary observer test, we must “determine whether ‘the deception that
arises is a result of the similarities in the overall design, not of similarities in
ornamental features in isolation.’” See Richardson, 597 F.3d at 1295.
Additionally, while the ordinary observer test requires consideration
of the overall prior art and claimed designs,
[t]he mandated overall comparison is a comparison taking into
account significant differences between the two designs, not
minor or trivial differences that necessarily exist between any
two designs that are not exact copies of one another. Just as
“minor differences between a patented design and an accused
article’s design cannot, and shall not, prevent a finding of
infringement” . . . so too minor differences cannot prevent a
finding of anticipation.
Int’l Seaway, 589 F.3d at 1243 (citation omitted) (quoting Litton Sys., Inc. v.
Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
2. Obviousness
“In addressing a claim of obviousness in a design patent, the ultimate
inquiry . . . is whether the claimed design would have been obvious to a
designer of ordinary skill who designs articles of the type involved.” Apple,
Inc. v. Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal
quotation and citations omitted); see also High Point Design, 730 F.3d at
1313 (“The use of an ‘ordinary observer’ standard to assess the potential
obviousness of a design patent runs contrary to the precedent of this court
and our predecessor court, under which the obviousness of a design patent
must, instead, be assessed from the viewpoint of an ordinary designer.”).
Often referred to as the Durling test, the obviousness analysis
generally involves two steps: first, “one must find a single reference, a
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something in existence, the design characteristics of which are basically the
same as the claimed design”; second, “[o]nce this primary reference is
found, other references may be used to modify it to create a design that has
the same overall visual appearance as the claimed design.” Durling, 101
F.3d at 103 (internal quotation and citations omitted).
The first step has two parts; we must “(1) discern the correct visual
impression created by the patented design as a whole; and (2) determine
whether there is a single reference that creates ‘basically the same’ visual
impression.” Id. In the second step, the primary reference may be modified
by secondary references “to create a design that has the same overall visual
appearance as the claimed design.” Id. However, the “secondary references
may only be used to modify the primary reference if they are ‘so related [to
the primary reference] that the appearance of certain ornamental features in
one would suggest the application of those features to the other.’” Id.
(alteration in original) (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir.
1996)).
Also, when evaluating prior art references for purposes of determining
patentability of ornamental designs, the focus must be on actual appearances
and specific design characteristics rather than design concepts. Harvey, 12
F.3d at 1064; see also Apple, 678 F.3d at 1332 (“Rather than looking to the
‘general concept’ of a tablet, the district court should have focused on the
distinctive ‘visual appearances’ of the reference and the claimed design.”).
B. The Ordinary Observer
The parties dispute who is an ordinary observer. LKQ argues that
“the ordinary observer should be the retail consumer of an automobile.” Pet.
40 (citing Ex. 1003 ¶ 40; Ex. 1004 ¶ 34). GM argued in its Preliminary
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Response that “the ordinary observer includes commercial buyers who
purchase replacement vehicle front fenders to repair a customer’s vehicle,
such as repair shop professionals.” Prelim. Resp. 7. GM noted that LKQ
has acknowledged in a related proceeding (IPR2020-00065) that
“replacement automobile body parts[] are typically purchased on behalf of
vehicle owners by repair shops.” Id. (quoting IPR2020-00065, Paper 2, 21)
(emphasis omitted).
Before us is evidence that both automobile owners, as well as
insurance and repair companies, desire to return vehicles to their original
appearance. GM points to a letter from LKQ’s counsel to U.S. Customs and
Border Protection stating that “[a]utomobile owners seek to repair their
automobiles in a way that returns their automobile as closely as possible to
its original appearance and condition.” Ex. 2003, 11. This letter also states
that “[i]nsurance companies are overwhelmingly the customers in
aftermarket repair parts market transactions, acting on behalf of their driver
clients.” Id.
The ’625 design claims a “vehicle front fender,” not a vehicle in total.
Ex. 1001, code (54). Based on this, as well as the evidence from both
parties, we determined in our Institution Decision
that the ordinary observer includes a commercial buyer of
replacement vehicle parts and a retail consumer of an
automobile. That is to say, as discussed in detail below, the
evidence on the record before us demonstrates that the designs at
issue have such distinct and similar characteristics that either
ordinary observer (the retail consumer or the repair shop
professional who would be aware of prior art designs) would
confuse the prior art designs for the design claimed by the ’625
patent.
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Inst. Dec. 12 (citation omitted). LKQ clings to its argument that Federal
Circuit case law supports just the vehicle owner as the ordinary observer.
See Tr. 9:20–19:8 (LKQ’s counsel arguing that “the proper ordinary
observer in this context should be the vehicle -- the retail vehicle
purchaser.”); see also Pet. Reply 3 (citing Pacific Coast Marine Windshields
v. Malibu Boats, 739 F.3d 694, 701–702 (Fed. Cir. 2014)). Federal Circuit
cases are consistent in that the determination of the ordinary observer is
factually dependent. See Arminak & Assocs., Inc. v. Saint-Gobain Calmar,
Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007), abrogated on other grounds
by Egyptian Goddess, 543 F.3d at 665 (The Federal Circuit explaining “that
the ordinary observer is a person who is either a purchaser of, or sufficiently
interested in, the item that displays the patented designs and who has the
capability of making a reasonably discerning decision when observing the
accused item’s design whether the accused item is substantially the same as
the item claimed in the design patent.”).
On the facts and evidence in this proceeding, the interests and goals of
both the vehicle owner and repair shop person are aligned, that is—in the
context of repair, to return the vehicle to its original appearance. Ex. 2003,
11; Ex. 2005, 3–4; Ex. 1043; Ex. 2004 ¶¶ 26, 54–56. Even if we chose
between the two, the level of detail and analysis would not change
sufficiently to affect the outcome of this Decision. Therefore, we do not
alter our determination made at institution, that the ordinary observer
includes both a vehicle owner and consumer and also a replacement parts
buyer.
GM offers additional evidence as to the level of detail an ordinary
observer would consider including a website selling a replacement fender for
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the Chevrolet Equinox. PO Resp. 16–17 (citing Ex. 2005). The website
states, for example, “[t]o replace your damaged parts, get these premium
fenders by Replace. They are identical to OE in fit, form, and function.”
Ex. 2005, 3–4. In light of the evidence that both a vehicle owner and repair
shop person would desire to return a vehicle in most cases to its original
appearance, we find Mr. Peters’ testimony persuasive that “the ordinary
observer readily recognized incongruity associated with a part that does not
fit or match other parts of the vehicle it is attached to.” Ex. 2004 ¶ 54. We
understand that this type of observation and consideration would require a
certain level of examination when determining what replacement fender to
purchase. Thus, we find persuasive GM’s and Mr. Peters’ assertions that,
when considering the overall appearance of a vehicle fender, “details are
readily noticed by the ordinary observer.” PO Resp. 17 (citing Ex. 2004
¶ 56).
C. The Designer of Ordinary Skill in the Art
LKQ contends that:
a designer of ordinary skill would be an individual who has at
least an undergraduate degree in transportation or automotive
design and work experience in the field of transportation design,
or someone who has several years’ work experience in the field
of transportation or automotive design.
Pet. 38 (citing Ex. 1003 ¶ 42; Ex. 1004 ¶ 36). GM argues that:
[a] designer of ordinary skill in the art relevant to the ’625 patent
would have at least an undergraduate degree in automotive
design, or other related industrial design field, with at least two
years of relevant practical experience in designing automotive
body parts. An increase in experience could compensate for less
education, and an increase in education could likewise
compensate for less experience.
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Prelim. Resp. 9. We do not discern a significant difference in these
definitions proposed by the parties for an ordinary designer. Both
definitions allow for an undergraduate professional degree, or alternatively,
a reasonable period of time and work experience in the field of
transportation and automotive design field. For purposes of this decision
and on the complete record before us, we adopt LKQ’s proposed definition
of the ordinary designer. Adopting GM’s definition would not alter the
outcome of this Decision.
D. Anticipation by Lian
1. Lian (Ex. 1006)
Lian includes seven drawings of a “Vehicle.” Ex. 1006, code (54).
We reproduce Lian’s Figures 1, 4, and 6 below.

Figure 1 of Lian is a front elevation view of a vehicle. Ex. 1006, 2.
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Figure 4 of Lian is a left side elevation view of the vehicle. Id. at 3.

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Figure 6 of Lian is a front perspective view of the vehicle. Id. at 5. We
selected these figures from among Lian’s seven drawings because they show
best Lian’s left front fender for comparison with the claimed design.
2. LKQ’s Arguments
Because we find it helpful, we reproduce below LKQ’s chart from the
Petition comparing cropped and annotated views of Lian’s figures side-by-
side with Figures 1–4 of the ’625 design. Pet. 46–47.

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LKQ provides on the left side of the claim chart, reproduced above, each of
Figures 1–4 of the claimed front fender compared with a similar cropped
view of the front fender from Lian on the right side of the claim chart.
LKQ provides additional claim charts showing certain similarities
between specific portions of the ’625 design and Lian. Id. at 48–54. For
example, with respect to the “top protrusion,” LKQ compares cropped
portions of the ’625 design and Lian, asserting that the similarities of the top
protrusions are “an overall visual appearance that is substantially the same as
the claimed design.” Id. at 47 (citing Ex. 1003 ¶ 55; Ex. 1004 ¶ 60). We
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reproduce below LKQ’s claim chart comparing the relevant portions of the
top protrusion

Id. at 48. LKQ provides on the left side of the claim chart, above, cropped
and highlighted portions of Figures 2 and 4 of the claimed front left fender
compared with the same referential cropped and highlighted view of the
front left fender of Lian on the right side of the claim chart. LKQ argues
that “both feature a top protrusion extending rearwardly and upwardly and
having an intermittent u-shaped notch.” Id. (citing Ex. 1003 ¶ 55; Ex. 1004
¶ 60).
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Using another claim chart, below, LKQ also points out some
differences, such as the “wheel arch” and “terminus” between the ’625
design and Lian. Id. at 55.

LKQ provides on the left side of the claim chart, above, cropped and
highlighted portions of Figure 2 of the claimed front fender compared with
the same referential cropped and highlighted view of the front fender of Lian
shown on the right side of the claim chart. LKQ argues that the different
curvature of the wheel arch and lower terminus of the fenders “are, at most,
minor distinctions and neither diminishes the overall visual similarity
between the designs.” Id. at 56 (citing Ex. 1003 ¶ 62; Ex. 1004 ¶ 67). Mr.
Gandy testifies, with respect to the wheel arch, that “[t]he minor difference
in shape would not be apparent to an ordinary observer and would be
overwhelmed by the many other common features, especially the similarities
in the more prominent features and particularly in view of the virtual
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identicality [sic] in the width, proportion, and general appearance of the
wheel arch flats of the two designs.” Ex. 1003 ¶ 63.
3. GM’s Arguments
Consistent with its claim construction position, GM argues that when
the overall appearance of the claimed design is considered, many elements
of the claimed design are absent from Lian. PO Resp. 21. GM makes the
following specific arguments:
(a) The claimed door cut line is different from Lian (Id. at 21–24);
(b) “Lian does not disclose a ‘top protrusion’ having the appearance
of the claimed design.” (PO Resp. 24–30);
(c) Lian lacks the inflection line on the lower portion of the fender
between the wheel arch and door cut line. (PO Resp. 30–32);
(d) Lian fails to disclose the same overall appearance provided by the
sculpting shown in the claimed design. (PO Resp. 32–37);
(e) Lian’s wheel arch lacks the consistent curvature of the claimed
design. (PO Resp. 37–41); and
(f) Lian has a different lower rearward terminus shape than the
claimed design. (PO Resp. 41–44).
GM argues that all these elements are important to the overall
appearance of the claimed fender, and are not, as LKQ asserts, “‘a miniscule
element’ that is ‘beneath an ordinary observer’s notice,’” for example with
respect to the lower rear terminus. PO Resp. 43 (citing Pet. 57).
4. Analysis
(a) Similarities between the ’625 patent and Lian
We recognize there are certain articulable and visible similarities in
the overall appearance of the claimed design and Lian that would be
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apparent to an ordinary observer. As LKQ contends, both designs include a
top protrusion and u-shaped notch. Pet. 13, 48. Below the u-shaped notch,
Lian arguably shows a first and second crease extending forward from a
door cut line as well as a concavity between the first and second creases. Id.
at 14, 48–49. Also, the distal portion, i.e. the front left, of both designs has a
slanted forward edge extending between the wheel arch and front elevation
profile fairly close in appearance. Id. at 52–53. These similarities are
readily observable by comparing the elevation views of Figure 2 of the
claimed design with Figure 4 of Lian, reproduced below.

’625 patent Figure 2 Lian’s Figure 4

Figure 2 of the ’625 patent above left, in comparison to a cropped version of
Lian’s Figure 4, on the right.
(b) Differences between the ’625 patent and Lian
Wheel Arch and Terminus
We agree with LKQ that when considering the elevation views, the
wheel arch shape is different, and also the fender terminus, lower right, is
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visibly different. Id. at 55. We reproduce LKQ’s annotated figures from the
’625 patent and Lian, below.

LKQ’s annotated and cropped Figure 2 of the ’625 patent above left, in
comparison to an annotated and cropped Figure 4 of Lian, on the right.
We are not persuaded, however, that “these two differences are, at
most, minor distinctions” as LKQ and its declarants assert. Id. at 56 (citing
Ex. 1003 ¶ 62; Ex. 1004 ¶ 67). One of LKQ’s declarants, Dr. Gandy,
testifies as to the wheel arch and terminus features that “[t]he minor
difference in shape would not be apparent to an ordinary observer and would
be overwhelmed by the many other common features, especially the
similarities in the more prominent features.” Ex. 1003 ¶ 63. GM’s
declarant, Mr. Peters, states the opposite, testifying that “Lian’s wheel arch
accounts for a substantial portion of the fender perimeter and is a prominent
feature of the overall appearance of Lian’s design.” Ex. 2004 ¶ 93.
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Considering the design as a whole, we are persuaded by Mr. Peters’s
testimony and GM’s evidence that an ordinary observer would perceive,
along with the similarities discussed above, that Lian’s wheel arch is non-
circular and that the terminus has a rearwardly extending segment different
from the claimed design. Considering our claim construction and the
testimony of both parties’ declarants, we find that an ordinary observer
certainly would evaluate these visually significant features in defining the
overall appearance of the claimed design, and find them to be missing in
Lian. See Section I.D.3.
Also bearing on our analysis, GM has produced evidence of other
prior art references that disclose and claim various fender designs. See PO
Resp. 13–14 (citing Ex. 2004 ¶¶ 49–53). Because an ordinary observer
would consider at least the wheel arch and terminus differences as a relevant
part of the overall appearance of the claimed design in the context of Lian
and other known prior art fenders, and because these elements are not minor
in that they affect the overall visual impression of the fender, we are
persuaded that an ordinary observer would not be so easily deceived into
purchasing Lian’s fender thinking it to be the claimed fender.4 See Egyptian
Goddess, 543 F.3d at 677 (“Where the frame of reference consists of
numerous similar prior art designs, those designs can highlight the

4 Although LKQ argues that Egyptian Goddess was designated as a test for
infringement, not validity, the Federal Circuit has clarified “that the ordinary
observer test must logically be the sole test for anticipation as well. In doing
so, we will prevent an inconsistency from developing between the
infringement and anticipation analyses.” Int’l Seaway, 589 F.3d at 1240.

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distinctions between the claimed design and the accused design as viewed by
the ordinary observer.”).
Moreover, the wheel arch and terminus are not the only differences
between Lian and the claimed design. LKQ argues that “[n]one of Lian’s
door cut line, protrusion, inflection line, or pattern of creases and sculpture
are meaningfully dissimilar from the claimed design.” Pet. Reply. 11. For
the reasons discussed below, we disagree.
Although in the next sections we analyze additional features of the
claimed design and Lian, we never lose sight of the overall visual
impressions of the claimed design and Lian, or the question of whether Lian
creates the same overall visual impression as the claimed design. Gorham
Mfg. Co. v. White, 81 U.S. 511, 530, 20 L. Ed. 731 (1871) (“though
variances in the ornament are discoverable, the question remains, is the
effect of the whole design substantially the same?”).
Door Cut Line
Considering Figure 2 of the ’625 patent in comparison to Figure 4 of
Lian, it is apparent that the door cut lines are different. Even a cursory
examination reveals that the claimed door cut line is a visually consistent
curvature when observed in the elevation view, whereas Lian’s door cut line
presents a more angular transition at the second crease line. Compare Ex.
1001, Fig. 2, with Ex. 1006, Fig. 4. The door cut line differences may not be
a hugely critical point of emphasis, but they can be a visually differentiable
feature that draws an ordinary observer’s attention. See Ex. 2008 8:13–9:21
(LKQ’s declarant, Mr. Hill, agreeing that a door cut line could have visual
significance to an ordinary observer).
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The importance of small design differences, such as the door cut line,
may increase in importance when we consider the claimed design within the
context of the prior art. See Egyptian Goddess, 543 F.3d at 676 (The Federal
Circuit explaining that “when the claimed design is close to the prior art
designs, small differences between the accused design and the claimed
design are likely to be important to the eye of the hypothetical ordinary
observer.”). GM’s compilation of other vehicle fender designs is reproduced
below. PO Resp. 13.

Shown above are various elevation view figures from U.S. Pat. Nos.
D766149, D704607, D763753, D686536, D692798, and D762151 as
compiled by GM. The door cut lines illustrated in the prior art are generally
slightly arcuate vertical lines, but even among the six designs shown above,
there are visibly apparent differences in angularity and curvature when
viewed objectively. Considering the evidence here, we find persuasive Mr.
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Peters’ testimony that when considered in light of prior art fender designs,
an ordinary observer would have considered differences, even in nuanced
elements such the door cut lines, “and these nuanced differences would have
had a substantial impact on the overall appearance of fender designs to the
ordinary observer.” Ex. 2004 ¶ 52.
Protrusion
Similarly, and keeping in mind the prior art discussed above, we are
further persuaded that differences in the protrusions of the claimed design
and Lian play a role in the overall appearance of the designs. While one
might initially observe some relative similarity of the protrusions at issue
here, specifically in the elevation views, these views alone do not provide a
complete picture and sufficient comparison of the protrusions. The
protrusions in this case are better seen in the perspective views Figures 1 and
4 of the ’625 patent and Figures 5 and 6 of Lian, reproduced below.
’625 patent Figure 1 Lian’s Figure 6

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Above left, Figure 1 of the ’625 patent depicts a perspective view of the
claimed fender design, in comparison to a cropped version of Lian’s
perspective view in Figure 6, on the right.

’625 patent Figure 1 Lian’s Figure 6

Figure 4 showing a top plan view of the fender design of the ’625 patent
above left, in comparison to a cropped top plan view of Lian’s Figure 6, on
the right.
In its comparison, LKQ mainly offers that “both [designs] feature a
top protrusion extending rearwardly and upwardly and having an
intermittent u-shaped notch.” Pet. 48 (citing Ex. 1003 ¶ 55; Ex. 1004 ¶ 60).
GM’s comparison, appropriately in our opinion, includes more detail. GM
notes that the upper surface of the claimed design is generally consistent
from front to back, but “Lian, on the other hand, depicts an upper surface
that changes width and curvature along the length of this surface from its left
to right edges.” PO Resp. 26. We reproduce GM’s annotated comparison of
the protrusions below.
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GM’s annotated Figure 1 of the ’625 patent, above left, and annotated Figure
6 of Lian, above right. We find that GM’s declarant, Mr. Peters, provides
the most persuasive testimony consistent with the elements an ordinary
observer would consider in vehicle fender design. Mr. Peters testifies that
“Lian’s protrusion has an upper surface that rotates and varies in width
between left and right edges. For example, the left edge that interfaces with
a portion of the hood is substantially narrower than a right edge that
interfaces with the A-pillar.” Ex. 2004 ¶ 70.
Sculpting
Sculpting, in the manner of the generally horizontal creases seen in
both the ’625 patent and Lian, certainly plays a role as part of the overall
appearance of the fender as both parties address these elements in their claim
construction and validity analyses. See, e.g., Pet. 48–52 (LKQ describing
visual characteristics of first and second creases and inflection line); see also
PO Resp. 30–37 (GM comparing horizontal creases of the ’625 patent and
Lian). At first glance, the sculpting between the designs exhibits some
similarity in location and arrangement. On the other hand, in his deposition,
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Mr. Hill testified about the emphasis that a designer places on horizontal
features of a fender:
Q. Okay. And I think earlier you said that it’s the horizontal
features of the vehicle that are more often emphasized; is that
right?
A. Yes. Again, very broadly, but also extremely -- you know, we
read left to right and the horizontal aspect, you know, the
orientation of vehicles is generally long and in a horizontal
manner as opposed to buildings which are more architecture and
vertically oriented. So most of the elements are emphasized to --
or harmonized to emphasize an implied length in a horizontal
manner.
Ex. 2008, 9:3–13.
Considering the crease lines and horizontal visual details of the
designs, we find persuasive GM’s arguments and Mr. Peters’ testimony that
an ordinary observer would not find the fender body sculpting substantially
similar between Lian and the claimed design. PO Resp. 32–37 (citing Ex.
2004 ¶¶ 81–89). Moreover, it is reasonably clear that an ordinary observer
would be aware of other prior art fender designs and would notice specific
details in the sculpting. See, e.g., Ex. 2008, 20:6–15 (LKQ’s declarant, Mr.
Hill, agreeing that the sculpting on the fender would “be meaningful to an
ordinary observer.”).
Inflection Line
LKQ argues that Lian exhibits the identical inflection line as the
claimed design, utilizing the annotated figure for comparison below. Pet.
50–52.
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LKQ’s annotated Figure 2 from the ’625 patent, above left, and Lian’s
annotated and cropped Figure 4, above right. LKQ uses a horizontal yellow
highlight line on Lian’s design to indicate where it considers a similar
inflection line on the claimed design. GM takes issue with this comparison
and argues that the claimed inflection line in the ’625 design is in fact a
crease as shown where “the shade lines in FIG. 1 signal a distinct and abrupt
angle change of the fender above and below the crease.” PO Resp. 30
(citing Ex. 2004 ¶ 76). Whether termed an inflection line, or a crease, our
consideration of this feature is consistent with Mr. Peters’ testimony that
Lian lacks such a feature. Mr. Peters compares LKQ’s annotated Figure 4 of
Lian with a similar cropped image without LKQ’s yellow highlight line. Mr.
Peters explains persuasively that different from the claimed design, in Lian
“[t]here is simply no crease at the location annotated with a crease by the
Petition.” Ex. 2004 ¶ 77.
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Shown above is Figure 4 of Lian as annotated by LKQ, on the left, with a
yellow highlight allegedly indicating an inflection line or crease, and on the
right, a cropped annotated image from Figure 4 without the yellow highlight.
First and Second Creases
Also, while certainly nuanced, we are persuaded that there are visually
ascertainable differences between the first and second creases, which are
part of the sculpting of the two designs that would be apparent to an ordinary
observer. We reproduce the perspective views of Figure 1 of the ’625 patent
and Lian’s Figure 6 below.
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’625 patent Figure 1 Lian’s Figure 6

Above, left, Figure 1 is a perspective view of the fender design of the ’625
patent, in comparison to a cropped version of Lian’s perspective view in
Figure 6, on the right. We are persuaded by Mr. Peters’ testimony and
annotated Figure 2, reproduced below, that an ordinary observer would
recognize in the claimed design that, as shown in blue, “the ‘first crease’
extends downwardly while the upper crease of the protrusion, and second
and third creases extend upwardly.” Ex. 2004 ¶ 88.

Mr. Peters’ annotated elevation view, Figure 2 of the ’625 patent, above,
includes annotations highlighting the curvatures of the claimed creases. Id.
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Considering how the sculpting plays into the overall appearance of the
fender, Mr. Peters testifies that compared to Lian, “[t]he ’625 Patent’s
sculpting is characterized by smooth, curving lines.” Id. ¶ 82. For
comparison, we reproduce below Mr. Peters’s annotated cropped portion of
Lian’s Figure 4. Id.

Above is Mr. Peters’ annotated and cropped portion of Lian’s Figure 4
elevational view. Id. Considering Lian’s creases, we find persuasive Mr.
Peters’ testimony that “Lian depicts substantially linear, angled lines,” and
that an ordinary observer would have recognized these lines as elements
integral to the overall appearance of Lian that differ from the claimed
design. Id.
Concavity Line
Both LKQ and GM contest the relevance and similarity of the
concavity line that is positioned and essentially defined between the first and
second creases. LKQ argues that both designs are similar in that relative to
the first and second creases “the interplay between the resulting contours
creates a curved concavity line.” Pet. 48 (citing Ex. 1003 ¶ 56; Ex. 1004
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¶ 61). We reproduce below LKQ’s comparison of annotated Figure 2 of the
’625 patent and a cropped version of Figure 4 of Lian.

Above left, Figure 2 of the ’625 patent depicts an annotated perspective view
of the claimed fender design alongside a cropped version of the perspective
view from Lian’s Figure 6.
GM argues that the concavity lines are different. PO Resp. 34. GM’s
declarant, Mr. Peters, testifies that “Lian altogether lacks a ‘concavity line’
having the shape of the claimed design’s concavity line.” Ex. 2004 ¶ 86.
GM argues of the second crease and concavity lines that “[t]he sculpting
depicted by these lines further contributes to the overall appearance of the
claimed design, providing distinctly shaped areas of relatively lighter and
darker surfaces.” PO Resp. 34 (citing Ex. 2004 ¶ 85).
There does not appear to be any dispute that both designs include a
concavity line defined between the first and second creases. As discussed
above, without much persuasive support, both parties and their respective
declarants conclude that the concavity lines are either the same or different.
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Based on our review, it is not clear, in either the ’625 patent or Lian, what
the scope or significance of the concavity line is with respect to either the
’625 patent or Lian. Observing the claimed design as a whole, we disagree
with GM that the concavity line can be considered “prominen[t].” Id. at 35.
However, overall, the creases and concavity line together play a part in the
overall appearance of each design. Considering our analysis, supra, of the
differences in the first and second creases of both designs, we find
persuasive GM’s position that the concavity line, like the first and second
creases, presents a nuanced difference in the claimed design that contributes
to a visually disparate sculpting and overall appearance of the claimed
design as compared to Lian.
5. Conclusion as to Anticipation by Lian
Having reviewed the complete record, including both parties’
evidence and arguments, and having considered the overall appearance of
the claimed design as compared to that of Lian, we are not persuaded that
LKQ has shown by a preponderance of the evidence that an ordinary
observer would be deceived into “purchas[ing] one supposing it to be the
other.” Gorham Co. v. White, 81 U.S. 511, 528 (1871). LKQ has not
established persuasively that the ’625 patent design and the design of Lian
are substantially the same under the ordinary observer analysis.
Accordingly, based on the final record before us, LKQ has not
established by a preponderance of the evidence that Lian anticipates the
claim of the ’625 patent.
E. Obviousness by Lian, or Lian in view of 2010 Hyundai Tucson
“In determining the patentability of a design, it is the overall
appearance, the visual effect as a whole of the design, which must be taken
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into consideration.” See In re Rosen, 673 F.2d 388, 390 (CCPA 1982). The
proper standard is whether the design would have been obvious to a designer
of ordinary skill who designs articles of the type involved, which, in this
case, are vehicle fenders. See In re Nalbandian, 661 F.2d 1214, 1217
(CCPA 1981); Ex. 1001, Title, Fig. 1 (illustrating ornamental features on the
outer surface of a vehicle fender). For the reasons that follow, we determine
that LKQ fails to carry its burden of identifying a primary, i.e., Rosen,
reference. See Rosen, 673 F.2d at 391. As a consequence, LKQ fails also to
establish that the challenged claim is unpatentable as obvious.
1. LKQ’s Arguments
LKQ contends the ornamental design of the ’625 patent would have
been obvious to a designer of ordinary skill based on Lian alone, or based on
Lian in view of 2010 Hyundai Tucson. Pet. 58–76. LKQ relies on a
comparison of the combined ornamental features of Lian and 2010 Hyundai
Tucson with the design of the ’625 patent, as well as the Gandy and Hill
declarations, to support its conclusion that the “Lian Patent is an appropriate
primary reference for establishing obviousness of the ’625 Patent because it
constitutes ‘a single reference, a something in existence, the design
characteristics of which are basically the same as the claimed design.’” Id.
at 58 (citing Durling, 101 F.3d at 103). Id.
LKQ asserts, as it did with respect to its claim construction and
anticipation analysis, that a designer of ordinary skill in the art would have
“recognized that the only possible differences between Lian and the claimed
design relate to the specific shape of the wheel arch and the lower rearward
terminus of the fender.” Pet. 62 (citing Ex. 1003 ¶ 71; Ex. 1004 ¶ 76). LKQ
argues that Lian is an appropriate primary reference because of all the
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similarities and further argues, as to the two differences, that ‘[t]he ordinary
skill and creativity of a designer of ordinary skill in the art would have
suggested the few minute alterations needed for the designer to arrive at the
claimed design.” Pet. 58 (citing Ex. 1003 ¶ 66; Ex. 1004 ¶ 71). More
specifically, LKQ argues that an ordinary designer would have found the
’625 patent and Lian to have “nearly identical protrusions, first and second
creases, and concavity line.” Id. at 61 (citing Ex. 1003 ¶ 68; Ex. 1004 ¶ 73).
2. GM’s Arguments
GM argues that Petitioner failed to properly evaluate the “multiple,
readily apparent differences between the claimed design and Lian that are
significant to the overall appearance in the eyes of the ordinary
observer/designer.” PO Resp. 45. Because LKQ mainly addressed just two
differences between the claimed design and Lian relating to the wheel arch
and lower terminus, GM argues that even if these differences can be
sufficiently addressed, “multiple, simultaneous changes related to the overall
appearance of the design would be required to achieve the ’625 Patent’s
design.” Id. at 46 (citing Pet. 59; Ex. 2004 ¶ 101). According to GM, “the
Petition summarily dismisses any differences as ‘de minimis,’ without
meaningful analysis of each one of the many required changes.” Id. In
other words, GM’s main argument is that LKQ has failed to show that Lian
is a proper primary, i.e., Rosen, reference. Id. GM also argues that LKQ has
failed to provide a reasoned analysis as to why an ordinary designer would
have modified the shape of Lian’s wheel arch and the shape of Lian’s lower
terminus. Id. at 47. Further, GM argues that even if Lian were modified as
proposed in the ground relying on Lian and 2010 Hyundai Tucson, LKQ
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fails to demonstrate the result would have an overall appearance “basically
the same” as the claimed design. Id. at 54.
3. Obviousness Analysis
As discussed previously, for design patents, the relevant obviousness
inquiry is a two-step process. First, we must identify a primary or Rosen
reference, “a something in existence, the design characteristics of which are
basically the same as the claimed design.” MRC Innovations, 747 F.3d at
1331 (quoting Rosen, 673 F.2d at 391). The “basically the same” test
requires initial consideration of the “visual impression created by the
patented design as a whole.” Id. The second step requires a determination
of whether any secondary reference is “so related [to the primary reference]
that the appearance of certain ornamental features in one would suggest the
application of those features to the other.” Id. (alteration in original)
(quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)).
The Petition asserts that Lian qualifies as a primary or Rosen
reference. We address the two steps of the obviousness inquiry below.
(a) The Visual Impression of the Patented Design as a Whole
We set forth in our claim construction the overall visual impression of
the claimed design. Section I.D.3.(c). We determined that the appropriate
visual impression of the claimed design occurs by observing and considering
the overall appearance of the claimed design as shown explicitly in Figures
1–4 of the drawings. Id. Also, we found that LKQ’s proposed claim
construction offers a starting point, but does not go far enough, in describing
the overall appearance of the claimed design. According to LKQ, the
claimed design can be described as follows:
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[a] vehicle fender comprising:
a top protrusion extending rearwardly and upwardly from an
upper portion of the fender and having an intermittent u-shaped
notch;
a first crease and a second crease extending forwards from a rear
edge of the fender, a concavity line disposed between the first
crease and the second crease, and an inflection line below the
second crease; and
an angular front elevation profile.
Pet. 10–13; Section I.D.3.(c). We reproduce below Figures 1 and 2 of the
’625 patent.

Ex. 1001, Figs. 1–2. Figure 1, above left, is a perspective view of the fender
with ornamental features illustrated as solid lines and unclaimed features
illustrated by broken lines. Figure 2, above right, is an elevation view of the
claimed fender. Ex. 1001, Description.
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In addition, we determined based on GM’s arguments that the
appropriate visual impression considers other ornamental elements and
features of the claimed fender design including:5
1) A consistently curved door cut line and a circular wheel arch. See
PO Resp. 4–5 (citing Ex. 2004 ¶¶ 35–38).
2) A consistent width lower rearward terminus defined between the
wheel arch and door cut line. See Ex. 1001, Figs. 1–2.
3) The top protrusion having an upper surface having a thickness and
consistent width that mirrors the inside surface of the u-shaped
notch. PO Resp. 7 (citing Ex. 2004 ¶¶ 41–42).
4) A gently curving first and second crease extending forward from
the door cut line and defining a concavity line there between. Id.
at 10; Pet. 14–15 (citing Ex. 1004 ¶ 46).
5) Below the first and second crease, an inflection line extending
between the wheel arch and door cut line. PO Resp. 10, Ex. 1001,
Fig. 1.
Section I.D.3.(c).
(b) The First Step of the Durling Test
A preponderance of the evidence supports a conclusion that LKQ fails
to take account adequately of the numerous elements of the patented design
and, therefore, fails also to identify “the correct visual impression created by
the patented design as a whole”—a required first step in identifying a Rosen
reference. Durling, 101 F.3d at 103. That failure, standing alone, justifies

5 These element descriptions are the same as that described in our claim
construction analysis, Section I.D.3., which we summarize here for
readability.
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our conclusion that LKQ fails also to prove by a preponderance of the
evidence that the challenged claim of the ’625 patent is unpatentable.
For purposes of completeness, and alternatively, we turn to the second
part of the first step of the Durling test, which presents an independent basis
for concluding that LKQ fails to carry its burden of proving that the
challenged claim is unpatentable. We thus consider the overall appearance
of the claimed design from the perspective of the ordinary designer in our
analysis as to whether or not the overall appearance of Lian is “basically the
same” as the claimed fender. MRC Innovations, 747 F.3d at 1331. For the
following reasons, we are not persuaded that Lian is basically the same as
the claimed design.
(c) LKQ Fails to Identify a Single Reference that Creates
Basically the Same Visual Impression as the Patented
Design
We reproduce Petitioner’s claim chart, which features Figures 1 and 2
of the claimed design in side-by-side comparison with Lian’s Figures 4 and
6, below.
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LKQ provides on the left side of the claim chart reproduced above, each of
Figures 1 and 2 of the claimed front fender compared with a similar cropped
view of the front fender from Lian’s Figures 4 and 6 on the right side of the
claim chart.
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Lian and the ’625 patent do share certain vehicle fender elements such
as an upper protrusion, a wheel arch, a door cut line, a front angled edge, and
sculpting including at least first and second creases in both designs. See
Section I.D.3.(c); see also Pet. 7–10 (citing Ex. 1044, 73). GM’s declarant,
Mr. Peters, agreed with LKQ’s counsel during his deposition that certain
shared features of the claimed design contribute to the overall appearance of
the challenged design. Ex. 1044, 73–81. But determining whether a design
is “basically the same” is not simply a matter of counting up the similarities
and differences. The appropriate comparison focuses on the correct visual
impression created by the designs. See Durling, 101 F.3d at 104. As we
describe below, and keeping in mind the level and skill of an ordinary
designer in vehicle fender design, a complete visual comparison of the
overall appearance of both designs sufficiently shows that the two designs
are quite different.
It is immediately apparent that the profiles of the wheel arches are not
the same. Compare Ex. 1001, Fig. 2, with Ex. 1006, Fig. 4. Compared to
the claimed consistently circular wheel arch, Lian depicts a more square
profile matched by the square planar edge of the wheel arch extending from
the front angled edge to the fender terminus, lower right. Id. LKQ’s
declarant Mr. Hill agreed that the wheel arch can be a significant feature:
Q. Yeah. Do you believe that the difference in wheel arches
between two fenders is something that a consumer or a designer
would find -- could find significant?
A. Depending on the degree of the extreme thematic element of
a wheel arch, yes. It will always be important to a designer
whether they settle for kind of a common solution or they’re
looking for a new solution. The consumer would also notice it if
it was to such a degree that it presented something, you know,
unique.
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Ex. 2008 16:17–17:5.
The fender terminus of Lian is also visibly different from the claimed
design. Compare Ex. 1001, Fig. 2, with Ex. 1006, Fig. 4. Lian’s terminus
has a rearward protrusion forming a more sharply curved lower portion of
the door cut line. See, e.g., Ex. 1006, Fig. 4. Also, the door cut line of the
claimed design is a mostly consistent curvature extending downward from
the u-shaped notch smoothly to the terminus. Ex. 1001, Fig. 2. A
reasonable observation of Lian’s door cut line reveals a more angular,
sharper bend at the second crease. We appreciate from the deposition
testimony of Mr. Hill, that the door cut and terminus might not be
considered highly significant by an ordinary designer. See, e.g., Ex. 2008,
6:5–7:11, (Mr. Hill testifying about the door cut line, “from the standpoint
that a designer is focused on it, they’re concerned with it, but they’re not
overly concerned with it”). And, we balance this testimony along with
Mr. Peters’ testimony that “I note that the appearance of the door cut line
would have had a substantial impact on the overall appearance of the
design.” Ex. 2004 ¶ 38. We determine that the door cut and terminus
features, even if not overly significant, influence and differentiate the overall
appearance of the claimed design and Lian.
We are also persuaded that the upper protrusions of Lian and the
claimed design are visually different in meaningful ways. When observed in
a comparison of elevation views, the upper protrusions of both designs may
at first glance appear similar. Compare Ex. 1001, Fig. 2, with Ex. 1006, Fig.
4. However, considering all the views of the claimed design and Lian,
specifically the perspective views, it is apparent that the surfaces of the
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protrusions are quite different. We reproduce GM’s annotated Figure 1 of
the claimed design and annotated cropped Figure 6 below.

GM’s annotated cropped Figure 1 of the ’625 patent, above left, as
compared to Lian’s cropped annotated Figure 6, above right. Considering
the ordinary designer’s perspective, our review of the differences between
the designs is consistent with GM’s argument referring to Lian’s Figure 6
above, that in Lian, “[t]he crease becomes less prominent and disappears as
the top surface of the protrusion rotates into a more vertical orientation
where it meets the A-pillar.” PO Resp. 28 (citing Ex. 2004 ¶ 72).
GM argues persuasively that the U-shaped notches are different
because in the claimed design, “the ‘u-shaped cutout’ has the appearance of
a scalloped feature with consistent thickness and smooth curvature.” Id. In
support of this position Mr. Peters explains that “[t]he shape of the scalloped
feature thus mimics the upper surface of the protrusion, which likewise has a
smooth curvature and a nearly identical thickness. The relatedness of these
features again promotes the cohesive overall appearance of the ’625 Patent’s
design.” Ex. 2004 ¶ 73. LKQ’s declarant, Mr. Hill, likewise testified in his
deposition about the U-shaped notch: “[I]t’s going to be very significant to
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the designer to use that space. Normally that is either a mirror pocket or it’s
used as a window . . . [s]o it’s very significant to a designer to manage that
area.” Ex. 2008, 18:13–19:3.
We are also persuaded that Lian lacks the inflection line (as LKQ
refers to it), i.e., the third crease (as GM calls it), as illustrated below the
first and second crease of the claimed design. See Ex. 1001, Figs 1, 2.
GM’s declarant, Mr. Peters, testifies that in the claimed design, “[w]hile
subtle, the third crease has significant impact on the overall appearance of
the fender in the eyes of the ordinary observer.” Ex. 2004 ¶ 77. We
appreciate that LKQ’s declarant, Mr. Hill, testifies that “the fender of Lian
curves convexly to a maximum at approximately the same location on the
fender panel as the inflection line of the ’625 Patent.” Ex. 1004 ¶ 63.
However, Mr. Hill’s testimony does not explain sufficiently that Lian shows
a corresponding visually apparent element. We reproduce, below, a cropped
version of Lian’s Figure 4.

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Shown above is cropped version of Lian’s Figure 4, an elevation view of
Lian’s fender design. Mr. Hill would not commit during his deposition that
Lian shows a corresponding crease or line:
Q. Yeah. There’s no line within the red circle on the Lian close-
up, is there?
[]
THE WITNESS: No. There’s the surface, and I can infer the --
the inflection, the wide line.
[]
Q. But there’s no line like the kind shown in the ’625 patent?
[]
THE WITNESS: One being a shaded 3D model and one being a
line drawing, they -- there is no line in the Lian.
Ex. 2006, 77:3–14. In light of certain general consistencies between the
parties’ witnesses, we find persuasive Mr. Peters’ testimony that Lian “lacks
both the appearance provided by the third crease itself, as well as the distinct
change between light and dark surface shading associated with the third
crease.” Ex. 2004 ¶ 78. Whatever nomenclature we give this element in the
design, we are not persuaded that the inflection line or third crease, an
ornamental feature illustrated in the claimed design, is shown by Lian.
On this record, considering altogether the differences between the
overall appearances of the claimed design and the design shown in Lian,
LKQ does not establish that Lian “creates ‘basically the same’ visual
impression” as the patented design. The claimed design includes the
visually disparate elements discussed above including the upper protrusion,
the u-shaped notch, the door cut line, a circular wheel arch, the lower rear
terminus, the specific sculpting of the first and second creases along with the
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concavity line, and the inflection line below the first and second creases.
See Durling, 101 F.3d at 103. Neither the Petition nor the Reply, each of
which dismisses many of these elements as minor, adequately accounts for
these ornamental features of the patented design. See, e.g., Pet. Reply 12
(“Any difference between the door cut lines, such as the ‘depth’ to which the
door advances beyond the U-shaped notch or the height of its apex, is likely
too minor for an ordinary observer to even notice.” (citing Ex. 1004 ¶¶ 32–
34)).
In sum, a preponderance of the evidence supports a conclusion that
LKQ fails to identify “a single reference that creates ‘basically the same’
visual impression” as the patented design. Durling, 101 F.3d at 103. That
failure provides an independent basis for concluding that LKQ fails to carry
its burden of proving that the subject matter of the challenged claim of the
’625 patent would have been obvious at the time of the invention.
(d) The Second Step of the Durling Test
Accordingly, for the reasons given above, LKQ fails also to establish
by a preponderance of the evidence that the challenged claim is unpatentable
based on the ground that asserts Lian as a Rosen reference, in combination
with 2010 Hyundai Tucson. Pet. 66–76 (asserting Lian as the primary
reference in the challenge identified as Ground 3). We need not, therefore,
reach the second step of the Durling test because the first step has not been
met.
III. CONCLUSION
LKQ has not proved by a preponderance of the evidence that the
claim of the ’625 patent is anticipated by Lian or would have been obvious
over Lian alone or in combination with 2010 Hyundai Tucson.
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Claims
35
U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1 102 Lian 1
1 103 Lian 1
1 103 Lian and 2010
Hyundai Tucson
1
Overall Outcome
1

IV. ORDER
For the reasons given, it is
ORDERED that, based on a preponderance of the evidence, the claim
of the ’625 patent has not been shown to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
any party to the proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Barry F. Irwin
Reid Huefner
IRWIN IP LLC
birwin@irwinip.com
rhuefner@irwinip.com

PATENT OWNER:

Dorothy P. Whelan
Craig A. Deutsch
Grace J. Kim
Jennifer Huang
Joseph A. Herriges (Pro Hac Vice)
FISH & RICHARDSON P.C.
whelan@fr.com
deutsch@fr.com
gkim@fr.com
jjh@fr.com
herriges@fr.com