GM Global Technology Operations LLC

Patent Trials and Appeals Board

Oct 13, 2020

IPR2020-00823 (P.T.A.B. Oct. 13, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Date: October 13, 2020

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.
____________

IPR2020-00823
Patent D837,105 S
____________

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

DANIELS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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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 Grille” in U.S. Patent No. D837,105 (Ex. 1001, “the
’105 patent”). Paper 2 (“Pet.”). GM Global Technology Operations LLC
(“GM”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
of the Petition and the Preliminary Response we determine that LKQ has not
established a reasonable likelihood of prevailing on the sole design claim
challenged in the Petition. For the reasons expressed below, we do not
institute an inter partes review of the claim of the ’105 patent.
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, this proceeding involving the ’105 patent. Pet. 4–5; Paper 5.
C. The ’105 Patent and Claim
The ’105 patent (Ex. 1001) issued January 24, 2018, and lists GM as
the assignee. Ex. 1001, codes (72), (73). The title, “Vehicle Grille,” refers
to a front surface of a vehicle grille illustrated in solid lines but with certain
unclaimed portions, which appear to be mainly functional attachment points
and symbol indicia, shown in dashed lines. See 37 C.F.R. § 1.152, see also
MPEP § 1503.02, subsection III (9th ed. rev. Oct. 2019 June 2020)
(“Unclaimed subject matter may be shown in broken lines for the purpose of
illustrating the environment in which the article embodying the design is
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used. Unclaimed subject matter must be described as forming no part of the
claimed design or of a specified embodiment thereof.”).
The ’105 design includes Figures 1–5, reproduced below, illustrating
the claimed front grille as set forth below.1

1 We refer to the claim, i.e., the vehicle front grille shown in Figures 1–5,
also as “the ’105 design.”
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Ex. 1001. Figures 1–5 above depict, respectively, the following views of the
claimed vehicle grille design: a perspective view, a front elevation view, a
left side elevation view, a top plan view and a bottom plan view. Id., code
(57).
D. Claim Construction
LKQ contends that the claim can be described according to the
drawings as shown by the solid lines as
[a] vehicle grille comprising:
a substantially horizontal top portion (blue) of a contoured
bezel terminating in a short, slightly downward-pointing
diagonal bezel segment (green) at each end, wherein each
diagonal bezel segment is approximately 10% of the length of
the horizontal top portion;
a substantially longitudinally elongated u-shaped bottom
bezel portion (red) extending inwardly and downwardly at an
approximate 45-degree angle from the diagonal bezel segments
and extending approximately parallel to the top portion along the
bottom;
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wherein the substantially u-shaped bottom bezel portion
further includes a minimum at a center line of the contoured
bezel;
wherein the contoured bezel is horizontally convexly
curved, and the minimum of the substantially u-shaped bezel
bottom portion is forward of the substantially horizontal top
portion;
an interior portion of the contoured bezel comprising
evenly-spaced, substantially vertical tines that slightly angle
towards the minimum and gradually decrease in angle as the tines
approach the minimum, with the outermost vertical tines closest
to a side edge of the bezel extending to the side edge,
partial tines filling the bottom portion of the voids between
the substantially vertical tines, the partial tines extending from
the elongated u-shaped bottom bezel portion to approximately
25% a height of the interior portion;
a circular portion horizontally centered in the interior
portion of the contoured bezel with a diameter spanning
approximately 20% of the overall width of the substantially
horizontal top portion; vertically, adjacent to the substantially
horizontal top portion wherein the diameter is further
approximately 75% of a center height of the interior portion; and,
having narrow, substantially horizontal extensions that angle
slightly upward, further gradually narrow, are situated
approximately 20% of a distance from the substantially
horizontal top portion to the substantially u-shaped bottom
portion, and extend the entire length of the interior portion,
terminating adjacent to where the short, downward-pointing
diagonal bezel segments join the elongated u-shaped bezel
bottom portion, and
wherein the substantially vertical tines bow forward and
increase in thickness of depth from the top of the interior portion
to the substantially horizontal extensions, then extend
substantially vertically, but slightly rearward, from the narrow,
substantially horizontal extensions to the bottom of the interior
portion while gradually reducing in thickness of depth.
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Pet. 14–19.
GM argues that LKQ’s claim construction does not present an
accurate visual image of the design because it “is based on generic design
concepts, rather than addressing the features of the claimed design.” Prelim.
Resp. 10 (citing Vitro Packaging, LLC v. SaverGlass, Inc., IPR2015-00947,
Paper 13 at 5 (PTAB Sept. 29, 2015). GM does not provide an explicit
alternative construction. Id. at 12.
Our observation of the ’105 design is that no verbal description is
necessary. “As the Supreme Court has recognized, a design is better
represented by an illustration ‘than it could be by any description and a
description would probably not be intelligible without the illustration.’”
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008)
(quoting Dobson v. Dornan, 118 U.S. 10, 14 (1886). The overall visual
appearance of “a vehicle grille” shown in Figures 1–5 of the ’105 design is
clearly exemplified in the drawings. On the record at this stage of the
proceeding, the best description of the ornamental features of the ’105
design comes from the drawings themselves. Accordingly, at this stage of
the proceeding, we determine that no articulated verbal description is
necessary to describe the overall ornamental nature of the ’105 design. And,
although we do not undertake a specific claim construction, we acknowledge
in our following obviousness analysis relevant design characteristics of the
’105 design, including key similarities and distinctions relative to the prior
art. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1332
(Fed. Cir. 2014) (Affirming that a verbal claim construction was
unnecessary, the Federal Circuit explained that “the district court did not err
by failing to provide an express verbal description of the claimed design;
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rather, it described the claimed design in the context of comparing it to the
prior art.”).
E. The Alleged Grounds of Unpatentability
LKQ contends that the challenged claim is unpatentable under
35 U.S.C. § 103 based on images from a website, www.carbodydesign.com,
that LKQ refers to as the “CBD GM Avenir Article” (Ex. 1005), which we
refer to in this Decision as “Avenir Article.” Pet. 36. LKQ contends that
Avenir Article includes images of a vehicle and front grille that predate the
filing of the ’105 patent by more than a year. Id. at 36–37. LKQ argues that
any differences between the images from Avenir Article and the ’105 design
are taught by U.S. Design Patent No. D558,102 (“Lau”) (Ex. 1011) or are de
minimus. Id. at 37.
Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
1 103 Avenir Article2 and Lau3

LKQ also relies on the Declarations of Jason M. Gandy (Ex. 1003)
and Jason C. Hill (Ex. 1004) in support of its arguments.

2 Ex. 1005, Buick Avenir Concept, http://www.carbodydesign.com (Pet. 21–
22) (characterized by Editor-in-Chief of Car Body Design, Mr. Marco
Traverso, as “a true and accurate copy of an article posted to Car Body
Design titled ‘Buick Avenir Concept.’ This article was posted together with
embedded videos and a gallery of images including additional images of the
vehicle, sketches, and renderings. I published the article, embedded videos,
and accompanying gallery to carbodydesign.com on January 12, 2015.”)
(Ex. 1016 ¶ 7).
3 Ex. 1011, U.S. Design Pat. No. D558,102 S, (December 25, 2007) (“Lau”).
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II. ANALYSIS
A. Principles of Law
“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) (alteration
in original, internal quotation); see also High Point Design LLC v. Buyers
Direct, Inc., 730 F.3d 1301, 1313 (Fed. Cir. 2013) (“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.”). This obviousness analysis generally
involves two steps: first, “one must find a single reference, a something in
existence, the design characteristics of which are basically the same as the
claimed design”; second, “once 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.” High Point Design, 730
F.3d at 1311 (internal quotation).
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. at 1312 (internal quotation and citations omitted). In the
second step of the obviousness analysis, 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. at 1311 (internal
quotation and citations omitted). However, the “secondary references may
only be used to modify the primary reference if they are ‘so related [to the
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primary reference] that the appearance of certain ornamental features in one
would suggest the application of those features to the other.’” Durling v.
Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (alteration
in original) (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)).
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. In re
Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993); 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.”).
As we have set forth the appropriate claim construction above,
notably the drawings imparting the correct visual impression of the ’105
design, that is—the appearance of the vehicle grille in Figures 1–5
themselves, we turn below, to addressing the designer of ordinary skill and
the second part of the first step in the obviousness analysis.
B. The Designer of Ordinary Skill
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 or
automotive design, or someone who has several years’ work
experience in transportation or automotive design.
Pet. 33 (citing Ex. 1003 ¶ 45; Ex. 1004 ¶ 44). GM argues, without citation
to evidence, that:
[a] designer of ordinary skill in the art relevant to the ’105 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
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body parts. An increase in experience could compensate for less
education, and an increase in education could likewise
compensate for less experience.
Prelim. Resp. 9. The parties do not identify, and we do not discern, any
material difference between the parties’ proposed definitions. For purposes
of this decision and on the record currently before us, which includes
testimony by LKQ’s witnesses, we adopt LKQ’s proposed definition of the
ordinary designer. Also, we point out that adopting GM’s definition would
not alter the outcome of this Decision.
C. Whether the claim of the ’105 design is obvious in view of
Avenir Article and Lau
LKQ argues that the claim of the ’105 design for Vehicle Grille would
have been obvious over Avenir Article and Lau. Pet. 36.
1. The Asserted Primary Reference – Avenir Article
LKQ asserts Avenir Article, which includes several images of a front
grille on a Buick Avenir concept car, as the initial primary, or Rosen,
reference.4 Pet. 37–38 (citing Ex. 1003 ¶¶ 54–56; Ex. 1004 ¶¶ 57–59). A
representative photograph from Avenir Article is reproduced below:5

4 In the context of design patent law, a proper primary reference for the
obviousness analysis is “a reference, a something in existence, the design
characteristics of which are basically the same as the claimed design.” In re
Rosen, 673 F.2d 388, 391 (CCPA 1982).
5 Unless otherwise noted, we use “Avenir Article” broadly to refer to the
images of the vehicle grille shown in the reference.
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The photograph from Avenir Article, above, shows a front perspective view
of the 2015 Avenir concept Car.
We reproduce, below, LKQ’s visual comparison in its Petition of
Figure 2 of the ’105 patent and a cropped image from Avenir Article.

Above is LKQ’s visual comparison of Figure 2 of the ’105 patent on the left,
with a cropped image from Avenir Article on the right, depicting a front
grille of the Avenir concept car. Pet. 38.
Relying on testimony from its Declarants, Mr. Gandy and Mr. Hill,
LKQ argues that these designs share the following elements:
1) a substantially horizontal top portion terminating in a short,
slightly downward-pointing diagonal bezel segment at each end,
wherein each diagonal bezel segment is approximately 10% of the
length of the horizontal top portion;
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2) a substantially longitudinally elongated u-shaped bottom bezel
portion extending inwardly and downwardly at an approximate 45–
degree angle from the diagonal bezel segments and extending
approximately parallel to the top portion along the bottom;
3) wherein the substantially u-shaped bottom bezel portion further
includes a minimum at a center line of the contoured bezel;
4) wherein the contoured bezel is horizontally convexly curved, and
the minimum of the substantially u-shaped bezel bottom portion is
forward of the substantially horizontal top portion;
5) an interior portion of the contoured bezel comprising evenly-
spaced, substantially vertical tines that slightly angle towards the
minimum and gradually decrease in angle as the tines approach the
minimum;
6) a circular portion horizontally centered in the interior portion of the
contoured bezel with a diameter spanning approximately 20% of
the overall width of the substantially horizontal top portion;
vertically, adjacent to the substantially horizontal top portion; and,
having narrow, substantially horizontal extensions that angle
slightly upward from the circular portion and that further gradually
narrow, are situated approximately 20% of a distance from the
substantially horizontal top portion to the substantially u-shaped
bottom portion, and extend the entire length of the interior portion,
terminating adjacent to where the short, downward-pointing
diagonal bezel segments join the substantially u-shaped bezel
bottom portion; and
7) wherein the substantially vertical tines bow forward and increase
in thickness of depth from the top of the interior portion to the
substantially horizontal extensions, then extend substantially
vertically, but slightly rearward, from the narrow, horizontal
extensions to the bottom of the interior portion while gradually
reducing in thickness of depth.

Pet. 38–42 (citing Ex. 1003 ¶ 56; Ex. 1004 ¶ 59).
Acknowledging there are differences, LKQ maintains that Avenir
Article, is “a single reference, [is] ‘a something in existence, the design
characteristics of which are basically the same as the claimed design.’” Id.
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at 37 (citing Durling, 101 F.3d at 103). LKQ argues that there are only four
differences:
(1) the tines closest to the side edges (the outermost tines) extend
to those side edges in the claimed design; (2) the dimensions of
the circular portion; (3) a more pronounced angle where the
horizontal extensions in the claimed design meet the circular
portion; and (4) the partial tines extending up along the bottom
of the claimed design.
Id. at 43. LKQ argues that the first three differences are mainly “de
minimis,” and with respect to the fourth difference, the “partial tines are
purely functional—providing both structural reinforcement to the grille and
directing airflow toward the center of the grille—and do not contribute to
the ornamental appearance.” Id. 45–52 (citing Ex. 1003 ¶ 77; Ex. 1004
¶ 78).
GM disagrees with LKQ’s portrayal of the claimed design and
comparison with Avenir Article, asserting that LKQ has ignored relevant
features of the claimed design, arguing that by “focusing instead on design
concepts, LKQ fails to analyze the unique overall appearance of the claimed
design, and thus fails to represent an accurate visual image of the claimed
design.” Prelim. Resp. 17 (citing LKQ Corp. v. GM Global Tech.
Operations LLC, IPR2020-00062, Paper 14 at 21–22 (PTAB April 16,
2020)). GM argues specifically that by relying on an incomplete description
of the claimed design and mischaracterizing certain elements of the claimed
design, LKQ “ignores specific features that contribute to the overall shape
and dimensions of the claimed design.” Id. at 24. According to GM, “for
example, the shape of the alleged ‘contoured bezel’ and the three-
dimensional nature of the alleged ‘narrow, substantially horizontal
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extensions’ . . . distinguish the claimed design from the CBD GM Avenir
Article, yet LKQ either offers no analysis or mischaracterizes them.” Id.
We have considered the arguments and evidence of record and
determine that LKQ has not met the threshold showing necessary to support
trial institution with respect to these obviousness grounds. As explained
below, we agree with GM that LKQ’s analysis is deficient insofar as it fails
to address how prominent features of the claimed design are satisfied by
Avenir Article and Lau. We first consider whether Avenir Article is a
proper Rosen reference, and, as explained immediately below, we determine
that it is not.
To determine that a prior art reference is a suitable primary reference;
the appearance of the article described in the proposed primary reference
must be compared to the claimed design as a whole. Rosen, 673 F.2d at 391.
In order to construct a suitable overall appearance for the sake of making a
forthright comparison, and keeping in mind both parties analyses, we
observe and consider, below, several distinct characteristics of the design
which draw our attention, most notably, the bezel, the vertical tines, the
central circular portion and the horizontal extensions.
a. Bezel
Considering initially the grille profile and bezel surrounding the tines,
LKQ argues that the claimed grille includes “a substantially horizontal top
portion terminating in a short, slightly downward-pointing diagonal bezel
segment at each end,” and below the top portion of the bezel, “a
substantially longitudinally elongated u-shaped bottom bezel portion
extend[s] inwardly and downwardly at an approximate 45–degree angle
from the diagonal bezel segments and extend[s] approximately parallel to
the top portion along the bottom.” Pet. 38–39.
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GM argues that LKQ’s analysis of the bezel does not account for “the
shape of the alleged ‘contoured bezel’” and the side view of the claimed
design as shown in Figure 3. Prelim. Resp. 24. The side view in Figure 3,
GM argues, shows the three-dimensional characteristics of the bezel,
including “the substantially horizontal line, the substantially vertical line,
and the slightly curved line that are only visible from that view.” Id. at 24–
25. GM emphasizes these lines, highlighted in an annotated version of
Figure 3 from the ’105 patent, reproduced below.

Figure 3 of the ’105 patent as annotated by GM to highlight a substantially
horizontal line (red), a substantially vertical line (blue), and a slightly curved
line (green). Id. at 16.
On one hand, GM is correct that neither LKQ nor its Declarants have
analyzed sufficiently a side view of the grille shown in the claimed design
and in Avenir Article. Id. at 15. On the other hand, we are not particularly
impressed that these lines in the bezel of the claimed design, which appear to
define a contour of a bend or crease in the bezel, are such a unique
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characteristic of the design that an ordinary designer would find such lines
distinctive. Also, a specific transverse line, apparently indicating a “v-
shaped” bottom portion of the bezel in the artist drawing in Avenir Article is
different GM argues, from a “u-shaped” bottom portion of the bezel of the
claimed design. GM’s comparison of annotated versions of Avenir Article
and Figure 2 of the ’105 design is reproduced below.

Above is LKQ’s annotated visual comparison of Figure 2 of the ’105 patent
on the right, with a cropped image from Avenir Article on the left, depicting
a front grille of the Avenir concept car. Pet. 25.
The shading in what appears to be a drawing of the Avenir concept
car appears to enhance the importance of the transverse line that GM alleges
defines a “v-shaped bottom.” Observing other images in Avenir Article, we
are not persuaded that such a transverse line is particularly distinctive, and
that such a “v-shaped” bottom bezel would be a sufficient difference in this
case to affect a determination by a designer of ordinary skill in the art, when
considering the designs as a whole, of whether or not Avenir Article was an
appropriate primary reference. Considering these lines which GM points
out, as part of the entire design, we find such features of the claimed design
to be fairly neutral in terms of whether there is a readily discernable
difference sufficient to show that Avenir Article is not, a primary reference.
Considering the overall appearance of the designs as a whole, and
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comparing the bezels of the claimed design to that in the Avenir Article, we
determine that LKQ has shown that an ordinary designer would find the
bezels to be similar in profile and appearance.
b. Vertical Tines
Another element of the designs which, at first glance appear similar, is
the substantially vertical tines. We reproduce LKQ’s comparison of the
annotated claimed design and a partial image from Avenir Article below.

Above is LKQ’s visual comparison of Figure 2 of the ’105 patent on the left
with the vertical tines highlighted in blue, and a cropped image from Avenir
Article on the right, depicting a front grille of the Avenir concept car. Pet.
41. In both the claimed design and in Avenir Article the tines extend
essentially vertically between the lower and upper portions of the bezel.
However, as GM points out, the side view of the claimed design depicts
portions of the vertical tines adjacent the upper portion of the bezel where
“the ‘vertical tines’ briefly decrease in thickness of depth near the top of the
tines before eventually increasing in thickness of depth.” Prelim. Resp. 22.
GM’s annotated Figure 3 of the ’105 design, below, illustrates these
features.
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Figure 3 of the ’105 patent, above, as annotated by GM to highlight the
decrease in thickness of depth of the vertical times adjacent the bezel. Id. at
23.
We agree with GM, that LKQ does not address or sufficiently analyze
the side view of either the ’105 design, or Avenir Article, and the ornamental
appearance of the tines which are not an indistinct feature of the ’105
design.6 Id. at 22. Although there are general similarities in the vertical

6 Both LKQ’s Declarants base their comparison mainly as to the vertical
tines with respect to the front perspective view in Figure 2 of the ’105
design, stating that the “vertical tines bow forward and increase in thickness
of depth from the top of the interior portion to the substantially horizontal
extensions, then extend substantially vertically, but slightly rearward, from
the narrow, substantially horizontal extensions to the bottom of the interior
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tines between the ’105 design and Avenir Article, we are persuaded that a
designer of ordinary skill in the art would observe a visually apparent
distinction, particularly shown in the side view of Figure 3 of the claimed
design, between the overall appearance of the ornamental features of the
claimed design and Avenir Article that depends on the shape and contours of
the vertical tines. This distinction is not addressed by LKQ or its Declarants.
c. Circular Portion and Horizontal Extensions
Still considering the designs as a whole, the bezel and to a lesser
extent the vertical tines, in our opinion, are where any similarities end. In
contrast, what stands out based on a reasonable comparison, and would be
readily apparent to an ordinary designer, are distinctions between the central
circular portions of the designs as well as the dissimilarity between the
horizontal extensions on either side of the central circular portion in each
design.
Here we consider, from the perspective of an ordinary designer, the
circular portion, which in the ’105 design is apparently intended by way of
dashed lines to encompass the Buick logo indicia, as compared to the
smaller circular portion in Avenir Article. Besides a smaller gap in the
claimed design between the circular portion and the upper portion of the
bezel as GM argues, one can observe that the central circular portion of the
claimed design appears significantly proportionally larger in size with
respect to the tines and bezel profile, than the circular portion and emblem in
Avenir Article.

portion while gradually reducing in thickness of depth.” Ex. 1003 ¶ 40; Ex.
1004 ¶ 39.

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In conjunction with the central circular portion, the claimed design
includes quite different horizontal extensions, as shown below in GM’s
annotated Figure 1.

Figure 1 of the ’105 patent as annotated by GM to highlight in dark yellow
the horizontal extensions of the claimed design. Prelim. Resp. 29. As GM
argues, the proximal end of each horizontal extension in the claimed design
has a change in angle as it approaches the central circular portion and then
tapers to a point adjacent the circular portion. Id. at 30–31. Additionally,
the claimed design has a line and surface shading along the length of the
horizontal extensions that does not appear to be the same as the forward
most blade-like surface in the horizontal extensions in the Avenir Article. A
cropped image from Avenir Article is reproduced below showing the
horizontal extensions of the grille disclosed in Avenir Article.

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A cropped image from Avenir Article, above, shows the Avenir concept
grille including central circular portion and horizontal extensions. Ex. 1005.
The horizontal extensions shown in Avenir Article do not have an angle or
taper at the proximal end, and instead extend directly horizontally from the
circular portion to a tapering distal end.
LKQ argues that these differences are de minimis. Pet. 46–52 (citing
Ex. 1003 ¶¶ 64–74; Ex. 1004 ¶¶ 67–76). LKQ contends that simply by
making the circle larger, “such a difference of proportion is de minimis, and
the slight dimension change to the circular portion does not make the
claimed design patentable.” Id. at 46–47 (citing Ex. 1003 ¶¶ 64–65; Ex.
1004 ¶ 68). LKQ also argues that the difference between the horizontal
extensions is de minimis, and that “a designer of ordinary skill would have
been motivated to change the initial angle of the extensions in order to
accommodate a larger emblem in a larger circular portion.” Id. at 51 (citing
Ex. 1003 ¶ 71; Ex. 1004 ¶ 74).
We are not persuaded that these clearly visible differences in the
central circular portion and the horizontal extensions shown in the claimed
design, as compared to Avenir Article, would be considered de minimis by a
designer of ordinary skill in the art. For instance, Mr. Gandy testifies that “a
designer of ordinary skill would have been motivated to increase the
dimensions of the circular portion of the vehicle grille in order to
accommodate a larger emblem in the grille.” Ex. 1003 ¶ 66. This testimony
expresses a reason for enlarging the circular portion. It is not, however,
persuasive evidence that the larger circle size does not have a significant
impact on the overall visual impression of the claimed design. Indeed, the
larger central circle and angled horizontal extensions of the claimed design
are not, in our view, insignificant or minor aspects of the claim. When
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compared to Avenir Article, the claimed central ornamental elements work
together in the context of the overall design such that the larger circle and
the proximal tapered and angled ends of the horizontal extensions present a
proportionally larger and dynamic emblematic element relative to the bezel
and vertical tines.
Although both designs are for a vehicle front grille and include a
similar bezel profile and generally show vertical tines, the smaller circle and
linear blade-like horizontal extensions in Avenir Article do not look like the
larger and proportionally dominating central circular portion and horizontal
extensions with angled and tapering proximal ends adjacent the circular
portion of the claimed design. Add to this the claimed design having
vertical tines with decreasing depth portions adjacent the bezel, and thus the
claimed design presents a more muscular and dynamic impression than the
straight blade-like horizontal extensions and smaller circular portion in
Avenir Article.
In light of these differences we are not persuaded that a designer of
ordinary skill would have viewed Avenir Article as providing the same
visual impression as the claimed design so as to be an appropriate primary
reference.
2. The Asserted Secondary Reference – Lau
Even were we to find that Avenir Article was a proper primary
reference, which we do not, and that a designer of ordinary skill would have
determined that Lau was so related in ornamental appearance to Avenir
Article and would suggest the application of those features Avenir Article,
the combination still fails to address the conspicuous discrepancies between
the designs discussed above. See In re Carter, 673 F.2d 1378, 1380 (CCPA
1982) (“The designs of other references may properly be relied upon for
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Patent D837,105 S
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modification of this basic design when the references are ‘“so related that
the appearance of certain ornamental features in one would suggest the
application of those features to the other.’”).7
LKQ acknowledges that the images in Avenir Article do not reveal
the partial tines as shown in the claimed design. Pet. 52. LKQ relies on Lau
mostly for its disclosure of a vehicle grille and “partial tines” along the
bottom of the grille interposed between the substantially vertical tines. Id. at
52. We reproduce Petitioner’s annotated figures comparing the claimed
design, Avenir Article, and Lau, below.

7 Because we determined that Avenir Article was not a sufficient primary
reference, we need not make a finding here as to whether a designer of
ordinary skill in the art would have combined Avenir Article and Lau. We
assume, only for the sake of argument, that the combination is appropriate.

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Patent D837,105 S
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Above, is LKQ’s visual comparison of annotated Figure 2 of the ’105 patent,
with the partial tines highlighted in purple, a cropped image from Avenir
Article depicting a front grille of the Avenir concept car, and Lau Figure 2,
with the asserted partial tines highlighted, also in purple. Id. at 53. LKQ
argues that the combination of Avenir Article and Lau provides “a
hypothetical prior art created by slightly modifying the base of the vehicle
grilles from the CBD GM Avenir Article . . . with the partial tines of Lau
would have an overall appearance that is the same as the ’105 Patent.” Id. at
54 (citing Ex. 1003 ¶ 80; Ex. 1004 ¶ 82).
Even if a designer of ordinary skill would have modified Avenir
Article to include partial tines, Lau does not address the more significant and
visually important aspects of the claimed design missing in Avenir Article—
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Patent D837,105 S
25
that is the larger central circle portion and the angled tapering horizontal
extensions that are distinctive ornamental features of the claimed design.
Accordingly, even if the prior art of Avenir Article and Lau can be
combined, the combination still fails to render the overall appearance of the
claimed design obvious because “it would still be necessary to make several
significant changes in the cited prior art designs in order to achieve each of
the claimed designs.” In re Harvey, 12 F.3d at 1065.
3. Conclusions Regarding the Obviousness Challenge Based on
Avenir Article and Lau
On the record before us and for purposes of this decision, we
determine that the circular portion, horizontal extensions and shape of the
vertical tines contribute to the overall visual impression of the design
claimed in the ’105 patent. In light of that, we determine that LKQ has not
made a threshold showing that Avenir Article is a single reference that
creates basically the same visual impression as the claimed design. High
Point Design, 730 F.3d at 1312.
We further determine on this record, that the circular portion and
horizontal extensions as well as the shape of the vertical tines all contribute
to the overall visual impression of the claimed design. In light of that, we
conclude that even if a designer of ordinary skill were to have combined the
Avenir Article and Lau, the result would not be prior art that accounts for the
overall visual appearance of the ’105 design. See High Point Design, 730
F.3d at 1311. For the foregoing reasons, we determine that LKQ has not met
its burden of demonstrating a reasonable likelihood that the challenged claim
is unpatentable over the Avenir Article in combination with Lau.
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Patent D837,105 S
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III. CONCLUSION
LKQ has not demonstrated that that it is more likely than not that the
challenged design claim of the ’105 patent is unpatentable based on the
challenges presented.
IV. ORDER
For the reasons given, it is
ORDERED that the Petition is denied and no trial is instituted.
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Patent D837,105 S
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PETITIONER:
Barry F. Irwin
Reid Huefner
IRWIN IP LLC
birwin@irwinip.com
rhuefner@irwinip.com

PATENT OWNER:

Dorothy P. Whelen
Craig A. Deutsch
Grace J. Kim
Jennifer J. Huang
Joseph A. Herriges (Pro Hac Vice)
FISH & RICHARDSON P.C.
IPR45343-0018IP1@fr.com
PTABInbound@fr.com
whelan@fr.com
deutsch@fr.com
gkim@fr.com
jhuang@fr.com
herriges@fr.com