GM Global Technology Operations LLC

Patent Trials and Appeals Board

Oct 8, 2021

PGR2020-00054 (P.T.A.B. Oct. 8, 2021)

Trials@uspto.gov Paper 33
571-272-7822 Date: October 8, 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.
____________

PGR2020-00054
Patent D864,065 S
____________

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

KINDER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claim Unpatentable
35 U.S.C. § 328(a)

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I. INTRODUCTION
A. Procedural Background and Summary
LKQ Corporation and Keystone Automotive Industries, Inc.
(collectively, “LKQ” or “Petitioner”)1 filed a Petition requesting post-grant
review of U.S. Patent No. D864,065 S (“the ’065 patent,” Ex. 1001). Paper
2 (“Pet.”). The Petition challenges the patentability of the sole design claim
of the ’065 patent. GM Global Technology Operations LLC (“GM” or
“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 7. On
October 13, 2020, we determined that the ’065 patent was eligible for post-
grant review and that Petitioner demonstrated that it is more likely than not
that the challenged claim was unpatentable. Accordingly, we entered a
Decision instituting trial. Paper 10 (“Inst. Dec.”).
Following our Institution Decision, GM timely filed a Response.
Paper 20 (“PO Resp.”). LKQ filed a Reply. Paper 24 (“Pet. Reply”). GM
subsequently filed a Sur-Reply. Paper 28 (“PO Sur-Reply”). We heard oral
argument on June 29, 2021. A transcript of the argument has been entered
into the record. Paper 32 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 328(a). Having reviewed the
arguments of the parties and the supporting evidence, we find that LKQ has
not demonstrated by a preponderance of the evidence that the sole claim of
the ’065 patent is invalid or would have been unpatentable. See 35 U.S.C.
§ 326(e).

1 Petitioner identifies LKQ Corporation and Keystone Automotive
Industries, Inc. as real parties-in-interest. Pet. 5.
2 Patent Owner identifies General Motors LLC and GM Global Technology
Operations LLC as real parties-in-interest. Paper 6, 2.
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B. Related Proceedings
LKQ lists twenty-three allegedly “related matters.” Pet. 5. GM lists
twenty-five distinct proceedings as related (Paper 6, 2–3), but then qualifies
the list by making the statement that: “Patent Owner does not concede that
any of the above-identified proceedings would affect, or be affected by, this
proceeding.” Id. at 3.
C. The ’065 Patent and the Claim
In a post-grant review requested in a petition filed on or after
November 13, 2018, we apply the same claim construction standard used in
district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2019). With
regard to design patents, it is well-settled that a design is represented better
by an illustration than a description. Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118
U.S. 10, 14 (1886)). Although preferably a design patent claim is not
construed by providing a detailed verbal description, it may be “helpful to
point out . . . various features of the claimed design as they relate to the . . .
prior art.” Id. at 679–80; cf. High Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to the district court, in
part, for a “verbal description of the claimed design to evoke a visual image
consonant with that design”).
The ’065 patent is titled “Vehicle Fender,” and issued October
22, 2019, from U.S. Application No. 29/606,680, filed June 7, 2017.
Ex. 1001, codes (21), (22), (45). Because the earliest possible effective
filing date for the ’065 patent is after March 16, 2013 (the effective date for
the first inventor to file provisions of the America Invents Act) and this
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Petition was filed within nine months of its issue date, the ’065 patent is
eligible for post-grant review. See 35 U.S.C. § 321(c).
The claim recites “[t]he ornamental design for a vehicle fender, as
shown and described.” Ex. 1001, code (57). The ’065 patent covers a single
claim as set forth in four figures. The Description specifies that “[t]he
broken lines shown in the drawings depict portions of the vehicle fender that
form no part of the claimed design.”
Figures 1–4 of the ’065 patent are depicted below.

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Figures 1–4 of Exhibit 1001 above depict, respectively, the following views
of the claimed vehicle rear bumper design: a front and left perspective view
of the vehicle fender, a top plan view, a left end elevation view, and front
elevation view. Id. at code (57).
D. Claim Construction
We determine that the following verbal descriptions will be helpful by
pointing out “various features of the claimed design as they relate to the . . .
prior art.” Egyptian Goddess, 543 F.3d at 679–80. LKQ offers a detailed
claim construction position, identifying almost every feature that contributes
to the overall appearance of the claimed design. See Pet. 11–20; see also Ex.
1004 ¶¶ 32–37 (Petitioner’s expert testifying that “images rather than words
best represent the design” and “it is impractical to verbally characterize
every element of the claimed design”).
We discuss here the features identified by Petitioner and Patent Owner
that contribute to the ornamental design of the ’065 patent.

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1. Petitioner’s Proposed Claim Construction
LKQ relies on the Declarations of Jason M. Gandy (Ex. 1003) and
Jason C. Hill (Exs. 1004, 1052) in support of its claim construction and
arguments. LKQ contends that the claim of the ’625 patent, as shown by the
solid lines in the drawings, can be textually described in detail according to
certain prominent features.
LKQ first describes the design as encompassing “an inflection line
(coral) demarcating a concave contour and extending forwards and
downwards at approximately a 15° angle from the longitudinal axis of the
fender . . . and extending for a distance of at least 40% of the length of the
fender.” Pet. 13 (Petitioner’s emphasis omitted throughout interpretations).
LKQ’s annotated Figure 1 is reproduced below.

LKQ’s annotated and cropped Figure 1 above shows an “inflection line”
highlighted in color. Id. LKQ identifies an upper portion (shaded purple,
below) comprising the portion of the fender located above the inflection line
depicted above. Id. at 13–14.
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LKQ’s annotated and cropped Figure 1 shows the entire shaded top portion
in purple. Pet. 14. According to LKQ, “an upper portion . . . comprising the
portion of the fender located above the inflection line,” comprises “a
protrusion extending rearwardly and upwardly said protrusion having a
rearwardly curved rear edge, a linear upper rear diagonal edge, and an
upwardly curved top edge, and a convex contour.” Id. LKQ further
contends that “the upper portion further compris[es] a top edge that slopes
slightly downwardly and forwards from the protrusion for approximately
20% of its length, then drops briefly for approximately 30% of its height and
rounding to run substantially parallel to the inflection line for approximately
70% of its length, and then deflecting 45° downwards and forwards for the
remaining 10% of its length.” Id.
LKQ next alleges that the design has “a convex crease (blue)
extending from a rear edge of the fender forwards in a direction substantially
parallel to the inflection line for approximately 30% of the length of the
fender, the fender having a convex contour above and below the convex
crease,” as depicted below. Pet. 15.
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LKQ’s annotated Figure 1 depicts an added blue line on a convex crease.
Pet. 15.
Toward the front end of the fender design, LKQ contends the claim
encompasses “a front portion (gold) further comprising a front upper edge
approximately 25% of which is downwardly sloped and upwardly curved,
and approximately 75% of which is downwardly sloped and downwardly
curved, and that intersects a front slanted edge at approximately a 90° angle,
the front portion further having a surface that is convexly contoured,” as
depicted below. Pet. 16.

LKQ’s annotated and cropped Figure 1 adds a shaded gold area to the front
portion of the fender. Pet. 16.
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Next, LKQ examines the portion of the design immediately above the
wheel well, and contends the design claims “an arcuate wheel arch flat
(green) having a width spanning approximately 20% of the length of the
front slanted edge of the front portion, the wheel arch flat describing an arc
of approximately 120°, and tapering to approximately 60% of its maximum
width as it intersects with the rear edge of the fender towards the lower rear
terminus of the fender.” Pet. 17.

LKQ’s annotated and cropped Figure 1 adds a green shading to the arcuate
wheel arch flat. Id.
Finally, LKQ points out that the design claim has
a rear edge having a convex contour and comprising a
substantially vertical segment extending from where the wheel
arch flat intersects the rear edge of the fender at approximately
20% of the height of the fender panel and extends upwards
substantially vertically for approximately 50% of the height of
the fender, then deflects rearwardly by approximately 30° versus
the vertical for 20% of the height of the fender spanning from the
crease to the inflection line and merges into the rearwardly
curved rear edge of the upper portion.
Pet. 18.
2. The Board’s Claim Construction in the Decision to Institute
In our Decision to Institute, we noted that
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the verbal descriptions set forth above better define the
ornamental design for purposes of the issues presented in this
proceeding. Petitioner’s descriptions highlighted above, with
certain modifications as noted, including our analysis of
indefiniteness set forth below, provide a sufficient understanding
of the scope of the design claim.
Inst. Dec. 10.
One such modification to Petitioner’s proposed interpretation was a
recognition of the complex curvature and shape of the upper and upper right
portions of the fender design. Relying on the annotated figures below, we
noted, and agreed with, Patent Owner’s arguments that “‘the protrusion is a
short segment, while the crest makes up the majority of the upper portion’s
length,’” and “the claimed design has distinctive ‘edge shapes of the
protrusion, which include: (a) a right upper edge, (b) a right lower edge, (c) a
left edge, and (d) an elongate upper left edge, as shown below.’” Id. at 7
(footnote omitted). We clarified that the upper left edge (d) “appears to be a
concavely curved upper edge.” Id. at 7 n.7.

GM’s annotated enlargements of the upper portion of fender from
Figure 1 and Figure 2. Id. at 8. Based on the final record before us, we
again recognize these additional features as impacting the scope of the
design claim.
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3. Patent Owner’s Proposed Claim Construction
GM contends that “[t]he nuances of the ’065 Patent are significant in
distinguishing that design from the prior art,” and that
[d]etails are particularly important in this case 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.
PO Resp. 7 (citing Ex. 2004 ¶ 42). Although GM’s arguments perhaps go
more toward perception of the claimed design and how much attention to
detail should be afforded, we treat these arguments as going to the scope of
the claim and address each of GM’s contentions below.
(a) Whether Vehicle Fender Design is a Crowded Art
GM argues that vehicle fenders are in a crowded field. PO Resp. 7–
10. GM argues that during prosecution of the application that became the
’625 patent, the Examiner cited and considered “dozens” of vehicle front
fenders. 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. 8; see also Ex. 1001, code (56) (listing
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dozens of references). GM’s declarant, Mr. Peters, points out several design
patents relating to vehicle fender design and, contends that from these
designs on the face of the ’065 patent, one should see “that the existing front
fender designs were vast and numerous at the time of filing.” Ex. 2004 ¶ 44.
Mr. Peters explains that, due to the necessity to interface with other vehicle
components and body parts, a designer of ordinary skill would have an
“increased focus on incongruities,” and the cited prior art “show[s] similar
features that are common in the field of vehicle fender designs include an
upper portion of the fender, a crease line extending perpendicular from the
rear edge below the upper portion, a rear lateral edge, and a similarly shaped
wheel arch.” Id. ¶¶ 42, 45, 47 (“Such interfacing features include the
perimeter shape, dimensions, and relative proportions of the design, as well
as the shape of the protrusion interfacing between the hood, A-Pillar, side
mirror, and/or door.”). Mr. Peters testifies that “[a] designer would be aware
of the types of specific design differences that distinguish between different
fenders,” and “would have been attuned to subtle differences between fender
designs, and these subtle differences would have had a substantial impact on
the overall appearance of fender designs to the ordinary designer.” Id. ¶ 46.
We are not persuaded that the field is crowded based merely on the
evidence of other vehicle models that include front fenders. GM 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 of the patent, or be limited to sedans,3 as opposed to trucks or sports
cars which could arguably be significantly different in appearance. GM’s

3 The claim of ’065 patent is purportedly “embodied by General Motors’
2020 Cadillac XT4.” Pet. 1; PO Resp. 16.
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analysis of twelve 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.
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. 8–9 (GM providing a collage of
fender designs to illustrate common features); Ex. 1042. 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 crowded
art.
(b) Interfacing with Other Vehicle Components and the
Similar Appearance of Replacement Parts
GM argues that “the ordinary observer or a skilled designer would
have been especially attuned to interfacing aspects of the design because
they directly impact the match/fit with other parts of the vehicle.” PO Resp.
10 (citing Ex. 2004 ¶ 47; 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. Id. at 10–11 (citing
Ex. 2004 ¶ 47). 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.
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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. PO Resp. 11 (citing Ex. 2003, 10, 14; Ex. 2004 ¶¶ 48, 49;
Ex. 2005, 3–4). This evidence also helps support GM’s position that “details
are readily noticed by the skilled designer,” who would take into
consideration consumers’ desires. See id. at 11–12.
4. Claim Construction Analysis
While we recognize that the illustration, rather than a verbal
description, is the better representation of the claimed design, Egyptian
Goddess, Inc., 543 F.3d at 679, the verbal descriptions set forth above better
define the ornamental design for purposes of the issues presented in this
proceeding. The parties’ positions as to claim scope are not divergent, but
instead vary as to the level of detail that should be included, or readily
observable, in the analysis. LKQ’s descriptions highlighted above, with
certain modifications as also noted above, provide a sufficient understanding
of the scope of the design claim.
Claim scope is also examined below in our analysis of indefiniteness.
Notably, the level of detail and in-depth descriptions provided by LKQ
(Pet. 7–20) and its experts in the claim construction analysis also persuade
us that one skilled in the art, viewing the design as would an ordinary
observer, would understand the scope of the design with reasonable certainty
based on the claim and visual disclosure.
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E. Evidence
Petitioner relies on the following references4:

4 We adopt Petitioner’s descriptions of the references. See Pet. viii–iv
(Table of Exhibits), 21–22 (identification of evidence relied upon).
Reference Exhibit
Fiat Toro: Design Story, Car Body Design, April 14, 2016,
https://www.carbodydesign.com/2016/04/fiat-toro-design-story/.
1006
Fiat Toro, Car Body Design, April 14, 2016,
https://www.carbodydesign.com/gallery/2016/04/fiat-toro-design-
story/51/.
1007
Kia Horki Concept: Shanghai Motor Show in Pics, April 21, 2013,
http://chinaautoweb.com/2013/04/kia-horki-concept-
shanghai-motor-show-in-pics/, archived on April 24, 2013 by
Internet Archive organization’s “Wayback Machine” at
https://web.archive.org/web/20130424015924/http://chinaautoweb.com/
2013/04/kia-horki-concept-shanghai-motor-show-in-pics/.
1008
Brian Waring, 2017 Cadillac XT5 North American Debut — 2015
L.A. Auto Show [Video], TFL Car, November 19, 2015,
http://www.tflcar.com/2015/11/2017-cadillac-l-a-auto-show/,
archived on November 21, 2015 by Internet Archive organization’s
“Wayback Machine” at
https://web.archive.org/web/20151121012637/http://www.tflcar.com/
2015/11/2017-cadillac-l-a-auto-show/.
1009
Compilation of screen captures from car video available on TFL Car
as posted on YouTube on November 19, 2015, available at
https://www.youtube.com/watch?v=YYILCPtiQHs&feature=emb_title.
1010
U.S. Design Patent No. D800,605, filed on Jan. 6, 2016, claiming a
priority date of July 17, 2015, issued on Oct. 24, 2017 (“Lan”).
1011
TFL Car, 2017 Cadillac XT5: Everything You Ever Wanted to Know,
YouTube (Nov. 19, 2015),
https://www.youtube.com/watch?v=YYILCPtiQHs&feature=emb_title,
MPG file. Parts 1–4.
1015–
1018
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Petitioner also relies on the Declarations of James M. Gandy
(Ex. 1003) and Jason C. Hill (Exs. 1004, 1052) in support of its arguments.5
Patent Owner relies on the Declaration of Thomas V. Peters (Ex. 2004) in
support of its arguments. The parties rely on other evidence and argument
as examined below.
F. Asserted Grounds of Unpatentability
Petitioner asserts that the sole design claim of the ’065 patent is
invalid or unpatentable based on the following grounds (Pet. 20–21):
Claim(s)
Challenged 35 U.S.C. § Reference(s)/Basis
1 112 Indefiniteness
1 103 2016 Fiat Toro vehicle6 (Exs. 1006, 1007),
the Horki 2013 Shanghai-DYK Concept
vehicle7 (Ex. 1008)
1 103 2016 Fiat Toro vehicle, 2017 Cadillac XT5
vehicle8 (Exs. 1009, 1010, 1015–1018), and
Lan (Ex. 1011)

5 We have considered Patent Owner’s contentions that we should give no
weight to LKQ’s declarants because the declarations of both experts “are
word-for-word the same as each other and the Petition.” PO Resp. 12
(emphasis omitted). Although two identical expert reports without
collaboration evinces attorney driven expert reports, we decline to reach
GM’s specific arguments because the Panel agrees that even with full
consideration of the opinions expressed in the declarations of LKQ’s
experts, the totality of the evidence supports our findings and conclusions in
favor of GM.
6 Petitioner identifies two exhibits as the “Primary” reference (2016 Fiat
Toro vehicle) for both grounds, including the vehicle itself, and a Car Body
Design publication (Exs. 1006, 1007). See Pet. 20–28.
7 Petitioner relies on a representation of the 2013 Horki Concept vehicle
published through a China Auto Web publication (Ex. 1008). See Pet. 20.
8 Petitioner identifies multiple exhibits as the 2017 Cadillac XT5 vehicle,
including the vehicle itself, a publication depicting the vehicle (Ex. 1009),
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II. ANALYSIS
A. Principles of Law
1. Indefiniteness
Pursuant to 35 U.S.C. § 321(b), “[a] petitioner in a post-grant review
may request to cancel as unpatentable 1 or more claims of a patent on any
ground that could be raised under paragraph (2) or (3) of section 282(b),”
which includes any requirement of section 112. One such § 112 requirement
is that “[t]he specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(b).
The Federal Circuit has long held that this § 112 requirement applies to
design patents. In re Maatita, 900 F.3d 1369, 1375 (Fed. Cir. 2018) (“As
with utility patents, the written description of a design patent must meet
certain statutory requirements regarding enablement and definiteness.”). See
also Ex Parte Asano, 201 USPQ 315, 317 (BPAI 1978).
“[A] design patent is indefinite under § 112 if one skilled in the art,
viewing the design as would an ordinary observer, would not understand the
scope of the design with reasonable certainty based on the claim and visual
disclosure.” Maatita, 900 F.3d at 1377 (clarifying the standard for design
patent indefiniteness in view of Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898 (2014), and the revision of the standard for design patent
infringement in Egyptian Goddess, Inc., 543 F.3d 665).
The Federal Circuit has explained that “[a] visual disclosure may be
inadequate — and its associated [design] claim indefinite — if it includes

screen captures of a video depicting the vehicle (Ex. 1010) and a video (four
mpegs) depicting the vehicle (Exs. 1015–1018). See Pet. 20–22, 31–34.
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multiple, internally inconsistent drawings” that “preclude the overall
understanding of the drawing as a whole.” Maatita, 900 F.3d at 1375–76.
Likewise, a design patent may be “indefinite for §112 purposes whenever its
claim, read in light of the visual disclosure (whether it be a single drawing or
multiple drawings), ‘fail[s] to inform, with reasonable certainty, those
skilled in the art about the scope of the invention.’” Id. at 1376 (quoting
Nautilus, Inc., 134 S. Ct. at 2124) (alteration in original). Errors and
inconsistencies between drawings do not merit finding a claim invalid
pursuant to § 112 if they do not preclude the overall understanding of the
drawing as a whole.
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 omitted) (alteration in original); see also High Point Design LLC,
730 F.3d at 1313. See also MPEP § 1504.03 (II) (“the proper standard is
whether the design would have been obvious to a designer of ordinary skill
with the claimed type of article”).
The 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 omitted). In performing the first step, we must “(1) discern the
correct visual impression created by the patented design as a whole; and
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(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, 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 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., 101 F.3d 100, 103 (Fed. Cir. 1996) (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. 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 Designer of Ordinary Skill in the Art (“DOSA”)
LKQ contends that:
a designer of ordinary skill would be an individual who has at
least an undergraduate degree in transportation or automotive
design experience in the field of transportation design, or
someone who has several years’ work experience in
transportation or automotive design.
Pet. 51 (citing Ex. 1003 ¶ 42; Ex. 1004 ¶ 41). Based on the final record,
which includes testimony by LKQ’s witnesses, we adopt LKQ’s proposed
definition of the ordinary designer.
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C. Indefiniteness
LKQ alleges that the ’065 patent claim is invalid as indefinite. See
Pet. 58–73. Specifically, LKQ argues, “[w]hile the quantity of individual
inconsistencies is not determinative in an indefiniteness analysis, many
individual inconsistencies render the drawings irreconcilably inconsistent
and thus make it unclear for an ordinary observer to ascertain the scope of
the claimed design.” Id. at 58. More specifically, LKQ identifies at least
eight purported inconsistencies or vague representations within the drawings
of the ’065 patent. Pet. 58–73. LKQ argues that these issues make the
design claim indefinite as to scope.
GM contends that a skilled designer, viewing the design as would an
ordinary observer, would be able to determine the scope of the claimed
design, and would have understood the coordinated set of features that
contribute to a unique overall appearance of the claimed design. PO Resp.
18–19 (citing Ex. 2004 ¶¶ 50–54). GM argues that the particular view
presented in each figure dictates what portions of the claimed design are
visible and how those portions appear from the particular perspective. Id. at
19 (citing Ex. 2004 ¶¶ 50–76). Further, GM argues that “[t]he majority of
LKQ’s alleged ‘inconsistencies’ are not errors resulting in indefiniteness, but
differences associated with two-dimensional illustrations depicting a three-
dimensional design at different views.” Id. at 20.
For the reasons set forth below, and based on the final record before
us, LKQ has not established by a preponderance of the evidence that the
claim of the ’065 patent is indefinite. Below, we provide LKQ’s contentions
related to specific design features and Patent Owner’s response. We then
provide our analysis of each feature. Finally, we consider the parties’
contentions in the aggregate and consider the claim as a whole.
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1. Double Line on the Convex Crease
LKQ first argues that Figure 1 of the ’065 patent has a double line on
the convex crease visible that is not visible in Figures 2–4. Pet. 60–61
(citing Ex. 1003 ¶ 56; Ex. 1004 ¶ 55). LKQ notes that this bottom line also
further varies in length as depicted in the annotated figures below. Id.

Annotated Figures 1–4 shows a double line or line circled in blue. Pet. 60–
61 (citing Ex. 1003 ¶ 56; Ex. 1004 ¶ 55). LKQ’s expert, Mr. Hill, explains
that in Figure 1 “there is a double line at the convex crease,” which “would
conventionally indicate to a designer of ordinary skill in the art some form of
scalloping or undercut to the convex crease on the fender.” Ex. 1004 ¶ 56.
According to Mr. Hill, “neither the double line, nor any such contour lines
are depicted in the other figures,” and this would render the claim scope
indefinite. Id.
Patent Owner, relying on the testimony of Mr. Peters, contends
“[e]ach of Figures 1–4 depicts a convex band of the claimed design
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consistently.” PO Resp. 21 (citing Ex. 2004 ¶¶ 55–59). Mr. Peters testifies
that the convex band is a three-dimensional feature that can be described as a
feature defined by a narrow width and a convexly shaped surface that
extends along the surface of the fender. Ex. 2004 ¶ 55. Mr. Peters attributes
the apparent altered length of the convex band to the view because “a two-
dimensional drawing provides an approximate representation of an image in
the form of a linear perspective.” Id. ¶ 56. “Thus,” according to Mr. Peters,
“the image provides a representation of how the object would be perceived
when seen by the eye of a viewer,” as when “an object will appear smaller as
its distance from the hypothetical viewer increases,” for example. Id.
(describing the effect as “foreshortening,” when an object’s dimensions
along the line of sight appear shorter than its dimensions across the line of
sight). GM points out that “objects will recede to points in the distance—a
principle LKQ’s expert agrees with.” PO Resp. 23 (citing Ex. 2006,
143:11–16 (Hill deposition); see also Ex. 2006, 144:4–7 (“Q. The length of
the line, a viewer’s perception of the length of a line may change depending
on viewpoint? A. As asked, generally it could.”)).
Mr. Peters attributes the length of the convex band appearing
“‘shorter’ in length in the perspective views, as shown in Figures 1 and 4,
because the convex band extends along the line-of-sight in these figures.”
Ex. 2004 ¶ 56. “In contrast, one can see that the convex band appears longer
in direct views, as shown in Figures 2 and 3, because the convex band
extends across the line-of-sight views in these figures.” Id.
Based on this testimony, GM contends the claim depicting the convex
band with both a single line (Figure 1, 2, and 4) and a double line (Figure 3)
is consistent with how a skilled designer, viewing the design as would an
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ordinary observer, would have understood that this feature may be depicted.
PO Resp. 23 (citing Ex. 2004 ¶ 57). Mr. Peters testifies that “the claimed
design describes the convex band consistently because each of the figures
presents at least one of the ways that a convex band can be represented. . . .
Figure 1 illustrates the two intersecting lines of the convex band, while
Figures 2-4 illustrate the single max height line of the convex band.”
Ex. 2004 ¶ 58. GM contends “[t]hese are not inconsistent, but rather are
complementary: both connecting lines (as shown in Figure 1) and the max
height line (as shown in Figure 2) are accurate depictions of the convex band
of the claimed design.” PO Resp. 24 (citing Ex. 2004 ¶ 58). Further, GM
alleges that “[t]he convex band might appear as two lines or as one line
because light can reflect from an object in different ways depending on the
viewpoint of the viewer—a concepts both experts agree on.” Id. at 25
(citing Ex. 2004 ¶ 58; Ex. 2006, 139:21–25).
GM also notes that the prosecution history supports its position
whereas an Appendix9 in the file history contains line drawings that
illustrate that the convex band may be depicted with two intersecting lines.
Id. at 25–26 (citing Ex. 1002, 29–30). GM, and Mr. Peters, contend that
“[t]o the extent there is any ambiguity in the figures, which there is not, it
could be resolved by reference to the figures in the Appendix.” Id. at 26;
Ex. 2004 ¶ 59.
In Reply, LKQ reasserts that the claim requires the convex crease to
have a single inflection in some views, but an undercut in others, making the

9 Patent Owner noted that it reserved “the right to claim any part, portion,
element and/or combination thereof of the disclosed design” set forth in the
“Appendix to the Specification.” Ex. 1002, 27.
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figures inconsistent. Pet. Reply 8–14 (citing Ex. 1052 ¶ 21–33). LKQ
contends “[a] DOSA would have understood the double-line evident on
Figure 1 to denote an undercut or scallop beneath the crease. Hill ¶24.
However, the inflection is denoted by a single line in all three other views.”
Id. at 9. LKQ alleges that depicting “the same feature using two different
drawing conventions is inconsistent with standard practice,[10] inconsistent
with GM’s practice, and contradicted by the fact that the drawing convention
that GM claims was used in Fig. 1 was not used in connection with other
features in that same figure that share the characteristic GM asserts exists for
the convex crease.” Id. at 9–10. LKQ also asserts that reliance on the
Appendix to the file history is improper and only further confuses the issue
because “the appendix figures disclose an undercut beneath a sharply
expressed crease, not the rounded inflection line GM claims defines the
feature.” Id. at 10. LKQ presents overlays of the patent figures over the file
histories wireframe drawings, which purportedly show further
inconsistencies in GM’s position. Id. at 12–13.
GM responds to these contentions by first arguing that “[t]he ’065
Patent consistently depicts a convex band with a narrow width and convex
surface.” PO Sur-Reply 7 (citing Ex. 2004 ¶¶ 55–59). GM contends that
LKQ’s argument that a “double-line . . . denote[s] an undercut or scallop,” is
controverted because “neither the figures of the claimed design nor its
prosecution history support this.” Id. (alterations in original). According to
GM, “magnified images of the appendix drawings do not show an undercut
or scallop feature along the rear edge,” as reproduced below. Id.

10 It is unclear what “standard practice” Petitioner is referring in this
argument.
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GM’s magnified images of the Appendix drawing purportedly not showing
an undercut or scallop feature, found at Exhibit 1048, Figure A (select,
annotated) and Figure B (select, annotated). PO Sur-Reply 7–8. GM argues
that “[i]nstead, they show a surface protrusion consistent with the convex
band described by either two intersection lines or a single line, as Mr. Peters
explained.” Id. at 8 (citing Ex. 2004 ¶ 57).

GM’s comparison of Exhibit 1048, Figure A (select), with Mr. Peter’s
illustrative figure showing intersection lines (in blue) and a max height line
(in red) at Exhibit 2004 ¶ 57 (showing figure of convex band). PO Sur-
Reply 8.
GM further argues that LKQ’s contention that GM uses a different
drawing convention because it uses a double line to indicate a single
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inflection ignores that the band may be depicted using either a double line or
a single line, depending on the angle at which the feature is viewed and how
light reflects from its surface. PO Sur-Reply 9. GM again relies on the file
history and notes that the “3D model drawings also undercut LKQ’s
position,” because “the convex band (below) is depicted as a single line in
Figure G of the 3D model due to sharp light contrast provided by this view.”
Id.

GM’s annotated version of Exhibit 1048, Figure G (partial) depicting an area
of sharp light contrast with a single line. Id. According to GM, “[t]he
convex band in Figure A (below), however, looks more like a convex
protrusion because the light contrast in this view is softer and the interaction
lines are more visible at this particular angle.” Id.
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GM’s annotated version of Exhibit 1048, Fig. A (partial) depicting an area
of soft light contrast with double lines. Id. at 10. GM relies on Mr. Peter’s
testimony that the prosecution history confirms that the convex band may
appear as two intersecting lines or as one line, depending on the manner in
which the light is reflecting from the object and the particular viewpoint. Id.
(citing Ex. 2004 ¶ 58).
Based on the final record, the purported issues related to a double line
on the convex crease and the length of the single line do not create internally
inconsistent drawings that would preclude the overall understanding of the
drawing as a whole. We have considered the testimony of each witness and
we find Mr. Peters’ explanation most convincing that “the claimed design
describes the convex band consistently because each of the figures presents
at least one of the ways that a convex band can be represented. . . . Figure 1
illustrates the two intersecting lines of the convex band, while Figures 2-4
illustrate the single max height line of the convex band.” Ex. 2004 ¶ 58.
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Thus, we agree with GM that these figures are not inconsistent, but rather
complementary because both connecting lines (as shown in Figure 1) and the
max height line (as shown in Figure 2) are accurate depictions of the convex
band of the claimed design. Further, GM has presented persuasive evidence
that the varied length of the line between figures is also understandable
depending on the point of reference of a particular figure. Ex. 2004 ¶¶ 55,
56; Ex. 2006, 143:11–16, 144:4–7.
We also determine that it is proper to rely on materials found in the
’065 patent’s prosecution history for guidance as to claim scope, whereas the
designer of ordinary skill would consider information contained in a file
history in determining whether a claim is indefinite. See Nautilus, Inc., 572
U.S. at 910 (“Cognizant of the competing concerns, we read § 112, ¶ 2 to
require that a patent’s claims, viewed in light of the specification and
prosecution history, inform those skilled in the art about the scope of the
invention with reasonable certainty.”) (emphasis added); see also Tr. 18:16–
19:6. In this instance, the materials cited above by GM found in the file
history provide additional clarity as to claim scope as testified by Mr. Peters.
Further, we disagree with LKQ that “depictions in the file history of
3D models” “irreconcilably conflict” with the claimed design. Pet. Reply 8.
Instead, GM has shown consistency between the 3D model drawings and the
claimed design’s figures. See PO Sur-Reply 4–7. Specifically, as seen in
pages 5 and 6 of GM’s Sur-Reply, the ’065 patent’s features appear to match
the surface contours of the 3D models drawings in the ’065 patent’s file
history. Id. The consistency between the file history’s 3D model drawings
and the claimed design’s figures further illustrates that LKQ’s purported
discrepancies are not errors. Id. at 7.
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2. Contour of the Upper Portion
LKQ next argues that “the contour of the upper portion, where it
meets the protrusion, appears as flat in some views, and alternatively
concave or convex in other views.” Pet. 62. LKQ provides the following
annotated figures of Figures 1–4 of the ’065 patent.

Annotated Figures 1–4 show a green arrow rising from the drawings top
contour line. Pet. 62 (citing Ex. 1003 ¶ 58; Ex. 1004 ¶ 57). According to
LKQ, “Figure 1 indicates with contour lines some form of convexity where
the upper portion transitions from plane to protrusion,” but “Figures 2 and 3,
however, indicate the top protrusion angles inwardly without indicating
convexity and instead indicate flatness.” Id. LKQ then notes “Figure 4
indicates concavity with the contour lines and simultaneously indicates
convexity by angling the top protrusion inwardly.” Id. at 63.
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LKQ further points out in reply that “in Figure 3, the contour lines
cross from the purportedly convex zone to the purportedly concave zone
without any change in contour,” while “in Figure 4 the bottom right section
of the fender’s top is clearly depicted as concave; not convex.” Pet. Reply
15–16 (citing Ex. 1052 ¶ 36).
GM responds that the “contour of the upper portion” of the claimed
design is also depicted consistently. PO Resp. 27. GM relies on the
testimony of Mr. Peters who explains, the figures of the ’065 Patent
collectively illustrate that the upper portion contour includes both concave
and convex surfaces. Id. (citing Ex. 2004 ¶ 60). GM contends that
[t]he surface of the claimed design includes an upper portion with
both concavity and convexity, transitioning from a generally
concave curvature at the front portion of the fender (depicted in
blue), as shown in Figure 4, to a generally convex curvature at
the rear portion of the fender (depicted in red), as shown in Figure
1.
Id.

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GM creates annotated Figures 1–4 that show a left area depicted in blue and
a right area depicted in red, and with a green arrow. PO Resp. 28 (citing
Ex. 1003 ¶ 58; Ex. 1004 ¶ 57). GM contends that each of figures
consistently depicts the “contour of the upper portion” because the shape of
the surface depends on its location along the fender. Id. (citing Ex. 2004
¶ 62).
Mr. Peters provides examples and testifies that “in the top plan view
(shown in Figure 2), the convexity of the surface is not readily visible
because the direction of the curves are directly aligned with the viewer’s
eye,” thus, “the curves of the upper portion are depicted with straight lines
because its surface directly aligns with the person viewing the claimed
design (Figure 2).” Ex. 2004 ¶ 62. Mr. Peters contrasts Figure 1, which
“shows the convexly curved surface with curved lines, as annotated above,
because the curves would be visible to a viewer in a perspective view.” Id.
Thus, according to Mr. Peters, “[t]his perceived difference in curvature in
Figures 1 and 2 can be explained by the perception of features visible at a
particular angle.” Id. Further, GM contends that Figure 3 shows a side view
that does not show the surface curvature because the direction of the
curvature is orthogonal to the plane of view, and as such, due to
foreshortening effects, the curves in Figure 3 are depicted with generally
straight lines. PO Sur-Reply 11–12 (citing Ex. 2004 ¶¶ 60–62).
GM has persuasively shown that the surface of the claimed design
includes an upper portion that transitions from a generally concave curvature
at the front portion of the fender (depicted in blue in Figure 4 above) to a
generally convex curvature at the rear portion of the fender (depicted in red
in Figure 1 above). See PO Resp. 27; PO Sur-Reply 12; Ex. 2004 ¶¶ 60–61.
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We also find persuasive Mr. Peters’ testimony that the concave curvature of
the front portion (blue, above) is more visible in Figure 4 than in Figure 1
due to foreshortening effects, and the contour lines extend higher (nearly to
the top edge) to a more convexly contoured portion of the fender body in
Figure 1. See Ex. 2004 ¶¶ 56, 60–62. We also find persuasive GM’s
arguments related to the wireframe figure (Fig. D) found in the appendix of
the prosecution history, which further shows concavity at the front portion of
the fender and convexity at the rear portion of the fender. PO Sur-Reply 13–
14 (depicting Ex. 1048, 3 (Fig. D) with annotations)); see also id. at 15
(noting the limitations of wireframe drawings that lack surfaces).
We have considered LKQ’s argument that “Mr. Peters admitted that
he could not discern the contours of the ’065 Patent’s design based on the
figures alone; he relied not only upon the drawings, but also photographs.”
Pet. Reply 16 (citing Ex. 1051, 524). We understand Mr. Peters to have
primarily relied on the “section lines” of the patent figures in ascertaining
claim scope in this line of questioning. See Ex. 1051, 523:24–524:3 (“Q.
Okay. Why do you say ‘It’s got to be complex surface’? A. Based on the
section lines and all the elements that are representing two dimension, and
then when I looked at other images provided.”). GM contends that “what he
actually said was, ‘when I looked at other images provided . . . I just know
that it’s . . . a complex surface,’” which “only confirms that Mr. Peters
examined all relevant materials, not that he was unable to discern the
contours based on the claimed figures alone.” PO Sur-Reply 13 (quoting
Ex. 1051, 524:1–5) (alterations in original). We agree with this assessment
of Mr. Peters’ testimony and determine he properly relied on the patent
figures in his analysis.
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3. Length of the Concave Inflection Line
LKQ also argues that the length of the concave inflection line across
the length of the fender is inconsistent and unclear between figures. Pet. 64
(depicting varied length of inflection line between figures). Relying on the
testimony of its experts, LKQ reasons that “[e]ach view depicts an
inconsistent view from the others, and these inconsistencies would prevent a
DOSA, viewing the claimed design as an ordinary observer would, from
understanding the design claimed with reasonable certainty.” Id. at 63
(citing Ex. 1003 ¶ 58; Ex. 1004 ¶ 57). LKQ includes the following
annotated figures showing the apparent varied length of the concave
inflection line.

LKQ’s annotated Figures 1–4 of the ’065 patent add a red arrow pointed at
the upper concave inflection line. Pet. 64.
LKQ contends that Figures 1 and 4 indicate that the concave
inflection line extends across a majority of the length of the fender, but
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Figure 3 shows the inflection line only extending approximately 40% of
length of the fender. Pet. 64–65. LKQ also points to purported
inconsistencies in concavity along this line whereas Figure 3 depicts a
concave contour at approximately 75% of the fender from the rear edge,
Figure 1 similarly shows a concave contour near that point, but Figure 4
shows no concavity and further shows the concave inflection line curving
downwards near the curved upper edge. Pet. 65.
LKQ surmises that “artifacts of light and reflection have no place in or
bearing on a line drawing,” and “the length difference has nothing to do with
perspective or any ‘foreshortening’ effect.” Pet. Reply 17 (citing Ex. 1052
¶ 38). LKQ further provides a graphical display “overlaying the patent
figures on the appendix line drawings and using red Xs to denote the end
point,” arguing from this display that “it is clear the inflection line
terminates at (at least) three different locations.” Id. at 17–18.
GM responds that “[t]he ’065 Patent consistently depicts the concave
inflection line.” PO Sur-Reply 14 (citing Ex. 2004 ¶¶ 63–65). GM again
notes that “[t]he angle at which a part is viewed can affect how light reflects
from a surface, which, in turn, can change the appearance of a curved
surface.” PO Resp. 29 (citing Ex. 2004 ¶ 63; Ex. 2006, 139:21–25).
Relying on Mr. Peters’ testimony, GM contends that “while the inflection
line appears longer when viewed at an angle (as shown in Figures 1 and 4)
as compared to an orthogonal view (as shown in Figures 2 and 3), this is
entirely consistent with what a skilled designer, viewing the design as would
an ordinary observer, would expect.” Id. at 30 (citing Ex. 2004 ¶ 63). Mr.
Peters explains that Figures 1 and 4 show a longer inflection line extending
across the majority of the fender body because its concavity is readily visible
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over a longer distance in these views. Ex. 2004 ¶ 63. He contrasts Figures 2
and 3 that show a shorter length of the inflection line because the degree of
concavity is less visible in those views because the direction of the curvature
is orthogonal to the plane of view. Id. We find Mr. Peters’ testimony more
persuasive.
Although we recognize the perceived disparity between the length of
the inflection between Figures 1 and 2, for example, we also recognize the
challenges of depicting three-dimensional contours in two dimensions. Mr.
Peters explains that foreshortening causes an inflection line to change in
length in certain views because the visibility of degree of concavity changes
depending on the viewpoint and light and reflection may impact perspective.
Ex. 2004 ¶¶ 58, 63; see also Ex. 2006, 139:21–25. Further, we are
persuaded by Mr. Peters’ testimony that
the concavity line is used to signify the general direction of the
transitioning surface and to indicate significant, not minor,
changes in curvature in the vehicle surface. The claimed design
includes an inflection line depicting a varied degree of concavity
along the fender surface. The reason for this is because the
depiction of inflection line in the figures of the ’065 Patent shows
that the front portion of the fender has a lesser degree of
concavity and the rear portion of the fender has a greater degree
of concavity. That is why the inflection line is always visible
toward the rear of the fender, regardless of the figure, but in
certain views only sometimes visible toward the front of the
fender.
Ex. 2004 ¶ 64. Based on Mr. Peters’ explanation, it is understandable that
the softer curves at the front of the fender would not be as detectable as a
significant change in curvature to a viewer looking directly at the fender, for
example, in the top and side views (Figures 2 and 3). Id.; see also id. ¶ 65
(examining shaded drawings from prosecution history and determining
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“shaded drawings show that the front portion of the fender has a lesser
degree of concavity due to the presence of an increased sloped surface
located above the wheel arch”) (citing Ex. 1002, 28, 30). Based on the
evidence and arguments before us, we find GM’s contentions as to this
design element more persuasive.
4. Point of Maximum Concavity of the Fender
LKQ contends that “[t]he point of maximum concavity of the fender
should be the concave inflection line, however the views do not reflect this
consistently nor does it reflect the same concavity across the fender.”
Pet. 66. Relying on the annotated figures below, LKQ argues:
In particular, the Figure 1, which shows concave contours
near the front of the fender for the concave inflection line,
indicates that the maximum concavity at the concave inflection
line should be at the line near the front portion of the fender yet
in that same figure, the contours indicate the maximum concavity
below the concave inflection line near the rear edge of the fender.
Figures 2 and 4 also indicate that the maximum concavity would
be below the concave inflection line, yet in different locations.
Meanwhile, Figure 3, the most direct view of the fender from the
side, indicates that the maximum concavity should be at the
concave inflection line. The maximum concavity cannot be in
each of these multiple locations.
Pet. 66–67 (internal citations omitted).
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LKQ’s annotated Figures 1–4 of the ’065 patent add purple arrows at
different locations conveying the concave inflection line. Pet. 66.
LKQ contends that “where an inflection line is used to describe a
contoured surface, it should be drawn along the peak or trough of that
surface.” Pet. Reply 19 (citing Ex. 1052 ¶ 40). Mr. Hill contends that
“[p]lacing it in any other location would mislead a DOSA.” Ex. 1052 ¶ 40.
Relying on the testimony of Mr. Peters, GM responds that the
maximum concavity along the fender body does not need to be at the same
location as the concave inflection line. PO Resp. 32 (citing Ex. 2004 ¶ 67).
Mr. Peters explains that the inflection line need not be positioned at the same
location as the maximum concavity because the purpose of the inflection
line is to provide the general direction of the transitioning surface. Ex. 2004
¶ 67. Mr. Peters testifies that the inflection line is dependent on how light
reflects from the vehicle surface to define a transitioning surface―not a
geometric metric, such as the maximum concavity. Id.; see also PO Sur-
Reply 16 (“light reflects from the vehicle surface to define a transitioning
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surface, such as the inflection line”). GM further argues that “the maximum
concavity of the claimed design can be identified based its shading lines,”
and “[u]nlike the inflection line, which indicates major changes in curvature,
the shading lines can be used to describe the full nuanced, contoured shape
of the vehicle surface.” PO Resp. 32. Thus, according to GM, “[t]his is why
the shading lines are used to understand the curved profile of a vehicle
surface, including locations of the maximum concavity.” Id. (citing
Ex. 2004 ¶ 68). Mr. Peters testifies that the location of maximum concavity
can deviate from the location of the inflection line, but the inflection line
provides a general direction of the transitioning surface. Ex. 2004 ¶¶ 66–68.
GM further argues that “the claimed design’s inflection line (shown in
red) tracks along the location where light reflects surface transitions on the
3D model drawings,” as depicted below. PO Sur-Reply 16–17. GM creates
the following figures by combining shaded drawings from the Appendix
(file history) overlaid with figures from the ’065 patent.

GM’s representation of Exhibit 1048, Figures E and A overlaid on the ’065
patent, Figures 3 and 1, respectively. GM, relying on the testimony of
LKQ’s expert that the 3D models in the appendix “show . . . the correct path
of the inflection line,” argues that the inflection line is correctly depicted on
the 3D models, and thus, the claimed design’s inflection line is also correct.
PO Sur-Reply 17 (quoting Ex. 1052 ¶ 41).
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Neither party has cited to any authority that provides guidance as to
proper drawing convention for depicting the point of maximum concavity.
Potential guidance, which neither party has discussed in depth, is 37 C.F.R.
§ 1.152, which states that: “[a]ppropriate and adequate surface shading
should be used to show the character or contour of the surfaces represented.”
Here, GM has elected to portray the claimed design’s inflection line tracking
along the location where light reflects surface transitions. We recognize that
Mr. Hill’s testimony makes sense, whereas an inflection line that is used to
describe a contoured surface could be drawn along the peak or trough of that
surface. Ex. 1052 ¶ 40. However, in the absence of any authority
mandating this drawing convention, we cannot say that using other
techniques, such as GM has done here, would create undo confusion for a
designer of ordinary skill in the art.
We are persuaded that GM has shown a relationship between the
inflection line and light reflecting from the vehicle surface to define a
transitioning surface. Further, we find persuasive Mr. Peters’ testimony that
the inflection line may be depicted in a manner dependent on how light
reflects from the vehicle surface to define a transitioning surface. Ex. 2004
¶¶ 66–68. Based on the record before us, LKQ has not persuasively shown
that GM’s choice of drawing convention for depicting the concavity of the
fender makes the scope of claim unclear to a designer of ordinary skill in the
art.
5. Shape of the Wheel Arch
LKQ next focuses on the claimed wheel arch. According to LKQ, the
Figures of the ’065 patent are inconsistent and show that “the shape of the
wheel arch may be flat or concave or convex.” Pet. 68. LKQ relies on the
following annotated Figures 1–4 from the ’065 patent.
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Annotated Figures 1–4 of the ’065 patent with LKQ’s descriptions related to
shape of the wheel arch, which contrasts Figures 1 and 3 (large convexity)
with Figure 2 and 4 (minor convexity). Id. (citing Ex. 1003 ¶ 61; Ex. 1004
¶ 60). Again, relying on its experts, LKQ contends the Figures are
inconsistent because “[t]he contour lines of Figures 1 and 3 suggest that the
wheel arch flat . . . is substantially convex, while the contour lines of Figure
4 appears to have vertical contour lines which would suggest both a flat or
only minorly convex wheel arch and a concave wheel arch at the same time,
based upon the front elevation view perspective.” Pet. 68–69. In contrast,
“Figure 2 may suggest that the wheel arch has some minor convexity due to
the sliver of space between the two bottom-most lines.” Id. at 69.
GM argues that “[t]he figures of the ’065 Patent provide a clear
description of the surface of the wheel arch,” and “[t]here is no dispute that
Figures 1 and 3 show a wheel arch having a consistent degree of convexity.”
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PO Resp. 33. GM contends “a top view (Figure 2) does not generally show
the degree of convexity of a wheel arch,” and here the top view shows
feature lines of the wheel arch that define its top and bottom edges, but does
not show its convex curvature. Id. (citing Ex. 2004 ¶ 70). GM provides the
following annotated figures from the ’065 patent to show how the two
feature lines of the wheel arch are visible in Figure 2.

GM’s Figure 2 (on left, select, magnified) and Figure 1 (annotated) of the
’065 patent, both with added annotations showing a top edge (blue arrow)
and bottom edge (red arrow). Id. at 33–34. GM contends that “[i]nstead of
looking at the top view to determine convexity, a skilled designer, viewing
as would an ordinary observer would rely on other views, such as
perspective or side views (Figures 1 and 3) of the vehicle design.” Id. at 34
(citing Ex. 2004 ¶ 70).
As for conveying convexity in Figure 4, GM argues “the degree of
convexity in the wheel arch surface would be expected to be less apparent in
Figure 4 because of the foreshortening effects with the highly angled
viewpoint.” Id. (citing Ex. 2004 ¶ 71). GM, and its expert, also rely on
additional evidence including the Appendix drawings to show how the
figures convey a degree of convexity to the wheel arch. Id. at 34–36.
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We are more persuaded by GM’s arguments and evidence that
although the degree of convexity in the wheel arch surface is more apparent
in certain views, such as Figures 1 and 3, the figures combined still portray a
surface that is generally sheer with a degree of convexity. See Ex. 2004
¶ 73. Further, a designer of ordinary skill would not rely on the top view to
determine convexity, instead, other views, such as perspective or side views
(Figures 1 and 3) of the vehicle design provide the best understanding of
curvature within the wheel arch. See id. ¶ 70. We are persuaded by GM that
the minor differences do not preclude the overall understanding of the
drawings as a whole.
6. Portion of the Mounting Plate Claimed in Figure 2
LKQ contends that a small portion of Figure 2 depicts a portion of the
mounting plate in solid (thus claimed) lines. See Pet. 70. A blowup of
Figure 2, relied on by both parties, is provided below.

Magnified partial Figure 2 with a blue circle around a disputed portion
referred to by LKQ as a mounting plate. Pet. 70; PO Resp. 36. LKQ argues
that Figure 2 of the ’065 patent appears to claim a portion of the mounting
plate and that Figures 1, 3, and 4 do not claim this same area, thus the
drawings are inconsistent.
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GM argues that “[t]he scope of the claimed design does not include
the alleged ‘mounting plate,’” based on a review of the other three figures
and the prosecution history. PO Resp. 36. GM notes that “[t]he only figures
that clearly depict the mounting plate are Figures 1, 3, and 4, which all
unambiguously show that the mounting plate is not part of the claimed
design,” as depicted below. Id. at 37.

Partial views of Figures 1 (left), 3 (middle), and 4 (right) of the ’065 patent
depict the mounting plate in dashed (thus unclaimed) lines. PO Resp. 37.
GM also relies on the prosecution history, and argues that the lower
“attachment tab” was specifically said to be disclaimed. Ex. 1002, 83–84
(“the disclaimed, lower ‘attachment tab’ extends rearwardly from the
claimed surface”).
GM also points out that
Mr. Hill conceded in his deposition that he took no issue with the
clarity of that disclaimer. Ex. 2006 (Hill Tr.) at 158:7-14 (“Q.
And you don’t take any issue with the clarity of the statement
that the applicant made when saying that the mounting plate is
not part of the design, do you? A. I don’t take issue with that.”)
(objection omitted.); id. at 161:2-6 (“Q. So can you point me to
anything suggesting that we shouldn’t take the applicant’s
statement at face value? A. As it relates to the mounting tab on
page 53, no.”).
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PO Resp. 38. GM also argues that Mr. Hill also agreed that based on this
disclaimer and figures of the patent there is at least reasonable evidence to
conclude the mounting plate, or attachment tab, is not part of the claimed
design:
Q. Would you agree that given everything that we’ve talked
about today, while there may not be absolute certainty that the
mounting plate is part of the claimed design, there is at least
reasonable evidence to conclude it is not part of the claimed
design?
A. Okay. Again, as – if taken alone, through the – through the
process, I know that it’s – it was there, but it’s not to be
considered, and I agree with your – your statement as stated.
PO Resp. 38 (quoting Ex. 2006, 164:25–165:10).
Even if we agree with LKQ that Figure 2 of the ’065 patent claims a
portion of the mounting plate, and thus conflicts with the scope of the claim
set forth in Figures 1, 3, and 4, the record as a whole must be considered.
Based on the complete record before us, we believe a designer of ordinary
skill in the art would have realized that Figure 2’s depiction of a small
portion of the mounting plate in solid line was a minor drafting error. See,
e.g., Ex. 1003 ¶ 35 (Mr. Gandy recognizing that “the Examiner initially
made an indefiniteness rejection to the ’065 Patent for claiming the mirror
embodiment and for claiming a portion of the mounting tab when in other
views it was unclaimed,” but “the Examiner allowed the mounting tab
drawing after Patent Owner Response.”); Ex. 1004 ¶ 34 (same for Mr. Hill);
see also Tr. 10:21–11:7. Figures 1, 3 and 4 clearly depict the mounting plate
as unclaimed. Further, the prosecution history provided reasonable evidence
that the mounting plate is not part of the claimed design. Ex. 1002, 83–84;
see also Ex. 2006, 164:25–165:10, 175:19–176:22 (Mr. Hill admitting that
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the solid line of the mounting plate was not considered part of the claim for
purposes of his invalidity analysis); Ex. 1003 ¶ 35.
Based on the totality of the evidence, including explanation in the
prosecution history, we determine that the portion of the mounting plate in
Figure 2 does not hinder a designer of ordinary skill from understanding the
scope of the design with reasonable certainty.
7. Overall Indefiniteness Analysis
The figures of the ’065 patent are not perfect and the issues discussed
above demonstrate that attention to detail matters when conveying the scope
of a three-dimensional object in two dimensions. The proper standard for
indefiniteness does not, however, require perfection, but instead requires that
an invention is shown with “reasonable certainty.” Nautilus, Inc., 572 U.S.
at 910. The purpose of the definiteness standard is “to ensure that the
disclosure is clear enough to give potential competitors (who are skilled in
the art) notice of what design is claimed – and therefore what would be
infringed.” Maatita, 900 F.3d at 1376. Based on the totality of the evidence
before us, we determine that the claimed design of the ’065 patent is
reasonably understandable and gives potential competitors, and the public,
notice of the scope of the claim. As analyzed above, LKQ has not shown
that most of the alleged inconsistencies are, in fact, inconsistent features
within the claim. Further, we determine that the inconsistencies argued by
LKQ do not in the aggregate “preclude the overall understanding of the
drawing as a whole.” Id. at 1375–76.
Both of LKQ’s experts were able to offer a detailed claim
interpretation without noting any potential inconsistency or ambiguity in
their interpretation. See Ex. 1003 ¶¶ 32–38; Ex. 1004 ¶¶ 31–37. Mr. Gandy
provides an eleven page explanation of claim scope arguing at the end that
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“the above claim construction attempts to identify all of the features of the
claimed design, regardless of the materiality of that feature or whether it
contributes to the overall visual impression of the design.” Ex. 1003 ¶ 38.
As one example, despite alleging that the “the shape of the wheel arch may
be flat or concave or convex,” for purposes of indefiniteness (Pet. 68),
LKQ’s experts earlier construe the scope of the claim to include:
an arcuate wheel arch flat [] having a width spanning
approximately 20% of the length of the front slanted edge of the
front portion, the wheel arch flat describing an arc of
approximately 120°, and tapering to approximately 60% of its
maximum width as it intersects with the rear edge of the fender
towards the lower rear terminus of the fender.
Ex. 1003 ¶ 36; Ex. 1004 ¶ 35. LKQ’s experts do not allege that any
particular claim feature is ambiguous or inconsistent in their detailed claim
interpretation. See Ex. 2006, 138:15–23, 139:6–19. Thus, we are further
persuaded that the alleged inconsistencies noted above do not impact the
understanding of the claim scope to a designer of ordinary skill in the art.
We also recognize GM’s argument that “the fact that LKQ’s expert
. . . was readily able to discern the boundaries of design, significantly
undercuts LKQ’s argument.” PO Sur-Reply 3. We agree that both of
LKQ’s experts were able to offer an informed opinion about which GM
vehicle embodied the ’065 patent and which prior art design purportedly met
its limitations. See Ex. 2006, 127:5–14, 129:14–130:3, 130:5–135:6;
Ex. 1004 ¶¶ 68–69. GM provides an example that “while LKQ claims that
the depictions of the concave portion on ’065 Patent render it indefinite, Mr.
Hill was able to determine the scope of that feature with sufficient clarity to
opine that it matched the Fiat Toro.” PO Resp. 17–18 (citing Ex. 2006,
167:23–168:1). “Similarly, Mr. Hill had no problem determining that the
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purportedly indefinite convex crease in the ’065 Patent matched that of the
Fiat Toro.” Id. (citing Ex. 2006, 172:20–173:1); see also Ex. 2006, 166:22–
24 (opining that the wheel arch on the Horki vehicle was “substantially
similar” to the ’065 Patent). The disclosure being clear enough to give
LKQ’s experts notice of the design sufficient to compare prior art designs is
not conclusive as to indefiniteness, and at most provides minor support for
our ultimate determination. We recognize that the experts were opining on
the understanding of one skilled in the art, viewing the design as would an
ordinary observer.
We are aware that Mr. Hill contends in his Reply Declaration that “he
was able to do a reasonable comparison only by resolving the inconsistencies
that he pointed to by observing that the patent looked like the XT4.”11
Tr. 27:24–28:4 (emphasis added); Ex. 1052 ¶ 21. We find that this post hoc
argument, not addressed in the opening expert declaration, is unpersuasive.
Mr. Hill did not mention having to resolve inconsistencies by looking to the
XT4 in his original declaration, thus these later concerns are impliedly
inconsistent with his earlier opinion. If true that Mr. Hill conducted a
“comparison only by resolving the inconsistencies” through examination of
the design of the XT4, this methodology should have been explained in his
opening declaration, especially considering the sheer amount of alleged
inconsistencies.
The totality of the evidence before us supports our ultimate
determination. During prosecution of the ’065 patent, indefiniteness was a
basis for rejection and it was overcome by GM after explanation to the

11 Both parties seem to agree that the 2019 Cadillac XT4 vehicle embodies
the claim of the ’065 patent. See Pet. 1, 9; PO Resp. 16–17.
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Office. See Ex. 1002, 83–84 (“the disclaimed, lower ‘attachment tab’
extends rearwardly from the claimed surface”); see also 37 C.F.R. § 1.152
(An Examiner is required to reject a design claim “[w]hen the
inconsistencies are of such magnitude that the overall appearance of the
design is unclear.”). Mr. Peters’ testimony that the alleged discrepancies
were primarily due to differences in viewpoint that change the perception of
the claimed features is sufficiently persuasive. LKQ has not persuasively
proven by a preponderance of the evidence that the alleged inconsistencies
considered above should be deemed errors resulting in indefiniteness.
Further, as explained above GM has offered sufficient explanation that the
differences are a result of using two-dimensional illustrations to depict
different views of a three-dimensional design.
GM has shown that the record contains sufficient information for a
skilled designer, viewing the design as would an ordinary observer, to
understand the scope of the claim. Based on the final record before us, LKQ
has not established by a preponderance of the evidence that the claim of the
’065 patent is indefinite.
D. The Alleged Obviousness of the Claim over the 2016 Fiat Toro Vehicle
and the Horki Concept Vehicle
LKQ contends that the single claim of the ’065 patent is unpatentable
as obvious over the Fiat Toro in view of the Horki Concept Vehicle.
Pet. 73–91. GM contends that LKQ has failed to identify a proper primary,
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or Rosen12, reference, and has failed to identify a combination that a skilled
designer would make or that results in the claimed design. PO Resp. 39
(citing Ex. 2004 ¶¶ 77–86).
For the reasons set forth below, and based on the final record before
us, LKQ has not established by a preponderance of the evidence that the
claim of the ’065 patent would have been obvious based on this ground.
Below, we provide LKQ’s contentions and Patent Owner’s response.
Finally, we provide our analysis and explanation as to why we determine
that the Fiat Toro is not a proper Rosen reference and why the design claim
would not have been obvious to a designer of ordinary skill in the art.
1. Fiat Toro
LKQ articulates the primary reference for this ground in the
alternative – stating either the “2016 Fiat Toro vehicle,” or “the Car Body
Design Article prior art publication depicting the 2016 Fiat Toro vehicle.”
Pet. 20; see also Pet. 28 (“For the purposes of this Petition, ‘2016 Toro’ or
‘Fiat Toro’ will be used to refer to the vehicle itself and/or the prior art Car
Body Design Article.”). LKQ provides two documents, Exhibits 1006 and
1007, as the “Primary” reference. Pet. 21. In arguing that the primary
reference is prior art to the challenged patent, LKQ refers to: the “2016 Fiat
Toro Vehicle” as “prior art,” the two exhibits as plural depictions of the Fiat
Toro Vehicle, and a singular “Publication / Issue Date” of April 14, 2016.
Pet. 21.

12 In re Rosen, 673 F.2d 388, 391 (CCPA 1982) (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.”).
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Thus, LKQ is utilizing as the primary reference a combination of two
purported printed publications and, alternatively, the physical Fiat Toro
itself. We treat both of the exhibits identified by LKQ as constituting the
primary reference, the 2016 Fiat Toro. See, e.g., Pet. 21 (labeling both
Exhibit 1006 and Exhibit 1007 as “Primary”).
As can be seen better below, the overall quality and detail of the
images provided by LKQ comprising the 2016 Fiat Toro are lacking.
Reproduced below are images of the 2016 Fiat Toro from Exhibits 1006 and
1007. These images do not specifically focus on the fender area of the
vehicle, but instead provide oblique or perspective views of the entire
vehicle.

LKQ relies on images of the 2016 Fiat Toro including Exhibit 1006, at 1
(upper left), 2 (upper right), and 5 (bottom left), as well as Exhibit 1007, at 1
(lower right).
According to LKQ, Exhibits 1006 and 1007 constitute a single printed
publication because “the Fiat Toro article with the accompanying image
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gallery constitutes a single printed publication as they were made publicly
available on the same date and on the same website, and each webpage
linked to the other.” 13 Pet. 24–25. LKQ argues that “[t]he design disclosed
in the Fiat Toro is an appropriate primary reference, as it constitutes a single
reference, a something in existence, the design characteristics of which are
basically the same as the claimed design.” Pet. 73 (internal quotations and
emphasis omitted).
2. Horki Concept
LKQ relies on the Horki Concept as a secondary reference.
According to LKQ, the Horki Concept is prior art because it was publicly
available as of April 2013, making the vehicle prior art under 35 U.S.C.
§ 102(a)(1). Pet. 28. LKQ notes that Exhibit 1008 is an accurate
representation of the 2013 Horki Concept vehicle published through a China
Auto Web publication. Id. This publication depicts the Horki Concept
through a number of photographic images, some of which are depicted
below.

13 Because we do not find that even the combination of these references
constitutes a proper Rosen reference, we decline to address the propriety of
using these specific exhibits as a single printed publication.
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LKQ’s images of the Horki Concept as found on pages 6 and 7 of Exhibit
1008, including a front view (top), left front plan view (middle) and right
side view (bottom). LKQ notes that in “this Petition, ‘2013 Horki Concept’
or ‘Horki Concept’ will be used to refer to the vehicle itself and/or the prior
art China Auto Web Article.” Pet. 31.
3. Petitioner Contentions
LKQ alleges that the claimed design of the ’065 patent would have
been obvious over the Fiat Toro (Exs. 1006, 1007) and the Horki Concept
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(Ex. 1008). See Pet. 73–91. Specifically, LKQ focuses on the design
features that it identified in its proposed claim construction and argues “[t]he
design disclosed in the Fiat Toro is an appropriate primary reference, as it
constitutes a single reference, a something in existence, the design
characteristics of which are basically the same as the claimed design.”
Pet. 73 (quoting Durling, 101 F.3d at 103; citing In re Rosen, 673 F.2d 388,
391 (CCPA 1982)) (emphasis and internal quotation marks omitted). LKQ
first argues that “[a] simple visual comparison demonstrates that the two
designs have an overall visual appearance and design elements that are
basically the same.” Pet. 74–75. LKQ then provides an element-by-element
analysis of the claimed design compared to the Fiat Toro. Pet. 76–82. LKQ
provides the following annotated comparisons with the column on the left
showing figures of the ’065 patent and the column on the right depicting
images of the Fiat Toro.

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LKQ’s comparisons including, Figure 1 with a highlighted upper inflection
line compared to Exhibit 1006, page 7 (top), Figure 4 compared to Exhibit
1007, page 1 (middle), and Figure 1 with upper portion highlighted in purple
compared to Exhibit 1006, page 5 also with an upper portion highlighted in
purple (bottom). Pet. 76–77. Relying on the above comparisons, LKQ
alleges that “both the Fiat Toro design and the claimed design of the ’065
Patent comprise: 1) an inflection line demarcating a concave contour
extending forwards and downwards from a rear edge of the fender towards a
corner of a headlight aperture,” as well as “an upper portion above the
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inflection line having a similarly shaped protrusion and having an inwardly
folded top edge.” Id.
LKQ argues that the following comparison demonstrates “a convex
crease extending approximately 30% of the length of the fender forwards
from a rear edge and substantially parallel to the inflection line.” Pet. 78.

LKQ produces Figure 1 with a highlighted inflection line compared to
Exhibit 1006, page 5. Id.
LKQ next compares the front portions of the two designs and alleges
both have “a front portion having a front upper edge with 25% being
downwardly sloped and upwardly curved and a remainder that is
downwardly sloped and downwardly curved intersecting a front slanted edge
and the front portion further being convexly contoured.” Pet. 78–79.
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LKQ produces Figure 1 with front portion highlighted in gold compared to
Exhibit 1006, page 5 with front fender area also highlighted in gold. Id.
LKQ further contends that both designs have “a similar rear edge
having a substantially vertical segment extending from where the wheel arch
flat intersects the rear edge of the fender at approximately 20% of the height
of the fender panel,” as depicted below. Pet. 79–80.

LKQ’s comparison of Figure 3 with Exhibit 1006, page 1 showing the left
end side elevation view comparison. Pet. 80.
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LKQ notes that “[a]lthough the Fiat Toro design’s front edge portion
does not curve as far downward as the front portion of the claim design, this
does not take away from the basic similarity of the overall visual
impressions created by the two designs.” Pet. 81. “Thus,” according to
LKQ, “the Fiat Toro discloses a fender that creates an overall visual
impression that is basically the same as that claimed in the ’065 Patent.” Id.
LKQ contends that “[t]here are three minor differences between the
Fiat Toro design and the claimed design of the ’065 patent, none of which
change the overall visual similarities between the Fiat Toro and the design of
the ’065, but all of which are nonetheless taught by the fender design
disclosed by the Horki Article.” Pet. 81. These purported differences
include (i) “the Fiat Toro design’s front portion has a bone line, or light
crease, located on its front portion forwards of its wheel arch,” (ii) “the
curved edge along the top of the Fiat Toro design’s front portion does not
curve as far downward as the claimed design and the slanted edge is more
vertical than the slanted edge of the ’065 Patent,” and (iii) “the wheel arch of
the claimed design is more arcuate.” Pet. 81–82. LKQ then relies on the
2013 Horki Concept for each of those design features. Id.
LKQ argues that the Horki Concept is an appropriate secondary
reference because the visual appearance and features of the fender disclosed
in the design of the Horki Concept are so related to the Fiat Toro design that
the appearance of certain ornamental features in the Horki Concept design
would suggest the application of those features to the Fiat Toro design. Pet.
82. LKQ contends that the design disclosed in the Horki Concept comprises
the same wheel arch shape and as the design of the ’065, and the same front
edge portion as both depicted in the annotated comparison below.
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LKQ’s comparison of each annotated figure of the design claim with
annotated figures from Exhibit 1007 showing a gold shaded area over the
front portion and a green shade along the wheel arch. Pet. 85–87.
LKQ contends that a designer of ordinary skill in the art “would have
been motivated to modify the Fiat Toro design’s front portion by removing
the bone-line,” and “to adapt the angle and location of the Fiat Toro design’s
leading slanted edge to accord with that of the Horki Concept’s fender and,
further, to adopt the Horki Concept’s arcuate wheel arch and narrower wheel
arch flat and incorporate those design elements into the fender design of the
Fiat Toro.” Pet. 87 (citing Ex. 1003 ¶ 74; Ex. 1004 ¶ 73). LKQ argues that
is would have would have been obvious to also remove the Fiat Toro fender
design’s bone line to integrate with Horki Concept which does not have a
bone line. Pet. 88.
Further, LKQ contends that a designer of ordinary skill “would have
been further motivated to combine the curved front edge with the Fiat Toro,
which already suggests a curved front edge shape for a headlamp aperture to
accommodate a headlamp such as the headlamp shown in the Horki
Concept,” “because the Toro’s headlamps feature an unconventional design:
they are unusually wide in relation to their height.” Id. LKQ argues the
headlight aperture modification is appropriate to achieve “a more
conventionally proportioned, taller headlamp design would appeal to a
broader audience than the unusual headlamp and corresponding aperture
shape featured on the Fiat Toro’s fender.” Pet. 88–80 (citing Ex. 1003 ¶¶
76, 77; Ex. 1004 ¶¶ 75, 76).
LKQ, and its experts, contend that “an ordinary observer would have
found the overall visual impression of the claimed design of the ’065 Patent
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to be substantially the same regardless of the existence of minor differences,
if any, as that created by the Fiat Toro, so modified.” Pet. 91 (citing Ex.
1003 ¶¶ 79; Ex. 1004 ¶¶ 78).
4. Patent Owner Contentions
GM disagrees that the Fiat Toro is a proper primary, or Rosen,
reference and also contends that LKQ’s analysis is inadequate. PO Resp. 39.
GM argues that the claim is a “smooth, elegant, and athletic,” design distinct
from the Fiat Toro, which portrays a “bold, rugged, and muscular,” design
that also lacks “numerous aspects of the claimed design, including the
unique upper portion shape and profile, inwardly folded top edge,
‘protrusion” having a distinct three-dimensional shape, and specific shape of
the rear lateral edge.” Id. (citing Ex. 2004 ¶¶ 78–79). GM notes that LKQ
failed to “account[] for these difference—and particularly, the significance
of these differences to the skilled designer,” thus, “the Petition failed to
demonstrate that the Fiat Toro creates basically the same overall visual
impression as the claimed design.” Id. at 39–40.
GM first alleges that “[t]he Fiat Toro does not disclose the claimed
design’s overall profile and shape of the ‘upper portion.’” Id. at 40. GM
notes that this “upper portion” “of the claimed design has distinct features
that include: (1) an overall shape of the ‘upper portion’ that includes an
elongate crest connecting to a protrusion feature, and (2) the unique shapes,
proportions, and edges of the crest and the protrusion features.” Id. at 40
(citing Ex. 2004 ¶¶ 80–81). GM’s expert, Mr. Peters, testifies that the
skilled designer would have been closely attuned to even slight differences
in the shape of the upper portion and its specific components as well as the
rear lateral edge, because minor differences impact the match with a vehicle
that has even a slightly different door shape. Ex. 2004 ¶¶ 80–81. Further,
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he opines that the differences are impactful to the claimed design’s smooth,
elegant, and athletic overall appearance, whether the fender is viewed alone
or installed on a vehicle, because these differences directly affect the match
and compatibility of the fender. Id.
Relying on the comparison below, GM shows how “the Fiat Toro’s
upper portion is defined by a more angular, prominent protrusion, occupying
a majority of the upper portion’s length (> 63%), and a barely visible crest
located above an inflection line.” PO Resp. 40–41 (citing Ex. 2004 ¶ 81).
GM contends that the Fiat Toro’s inflection line extends in close proximity
to the upper edge of the fender and also forms a crest that is hardly
noticeable, and thus results in drawing a viewer’s eye to the prominent
protrusion. Id. at 41.

GM’s comparison of the “upper portion” of Exhibit 1001 at Figure 3 (partial,
annotated) to Exhibit 1006, at 1 (partial, annotated). GM contends that “[i]n
contrast, the crest of the claimed design is clearly visible, occupying a
significant portion of the upper portion’s length, and has a substantial
thickness that gently slopes forward from the protrusion.” PO Resp. 41
(citing Ex. 2004 ¶ 81). GM contends that these differences, not addressed
by LKQ in the Petition, are enough to render the Fiat Toro an improper
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Rosen reference, particularly given the significance of the interfacing
features. Id.
GM next argues that LKQ fails to properly address its own claim
construction that the upper surface further comprises an inwardly folded top
edge that is folded approximately 70° relative to the vertical axis of the
fender. PO Resp. 42. According to GM and Mr. Peters, the Fiat Toro also
does not disclose the claimed design’s inwardly folded top edge, as shown
below. Id.; Ex. 2004 ¶¶ 82–83.

GM’s depiction of Figures 1, 3, and 4 with purple annotations added in the
Petition (page 14) and red annotations added by GM to show the inwardly
folded top edge. PO Resp. 42. GM argues that “[a]s shown, the L-shaped
inwardly folded top extends along the entire length of the upper portion of
the claimed design,” but LKQ presents no evidence showing that the Fiat
Toro’s upper portion above the inflection line also has an inwardly folded
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top edge. Id. In particular, the image of the Fiat Toro that LKQ provides
does not have a view from which one can determine whether the “inwardly
folded top edge” is in fact “folded approximately 70° relative to the vertical
axis of the fender,” as in the claimed design, and as depicted in LKQ’s
comparison below. Id. at 43 (citing Pet. 14; Ex. 2004 ¶ 83).

GM includes LKQ’s annotated comparison (Pet. 77) of Figure 1
(annotated in Petition) and Exhibit 1006 at page 5 (annotated
in Petition) both with purple added to the upper portion. PO
Resp. 43.
GM next contends that the rear lateral edge is distinct between the two
designs. Id. According to GM, the Fiat Toro also does not disclose the
claimed design’s “rear lateral edge,” because “the claimed design has a
lower rear lateral edge (highlighted below in red) extending vertically, but
with a slight frontward bow and an upper rear lateral edge (highlighted
below in blue) that extends rearwardly and connects to the protrusion edge
(highlighted below in green).” Id. (citing Ex. 2004 ¶¶ 84–86).
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GM’s comparison of Figure 3 of the claimed design with Exhibit 1006, at 1
(partial, annotated) adding red, blue, and green lines along the rear lateral
edge of both designs to emphasis the varied directions of that rear lateral
edge. PO Resp. 43–44. GM argues that “[i]n contrast, the Fiat Toro’s upper
rear lateral edge (highlighted in blue) extends in an opposite
direction―forward rather than rearward,” and “the Fiat Toro’s upper rear
lateral edge (highlighted in red) extends substantially vertical, and does not
bow forward like the claimed design.” Id. at 44 (citing Ex. 2004 ¶¶ 84–85).
GM contends again that the rear lateral edge is a critical interfacing feature,
and as such, any deviation would be significant to a skilled designer.
GM concludes that the Fiat Toro does not teach the claimed design’s
configuration, which again renders that vehicle an improper Rosen reference.
Id. (citing Ex. 2004 ¶ 86).
GM also argues that a skilled designer would not combine the Horki
Concept with the design of the Fiat Toro for various reasons. Id. at 45–49.
GM then argues even if the Fiat Toro were a proper Rosen reference,
and even if the two references were combinable, the Horki Concept does not
teach the claimed design’s front portion as LKQ contends. Id. at 49.
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According to GM and Mr. Peters, the Horki Concept does not teach a front
portion having a bulbous shape. Id. at 50 (citing Ex. 2004 ¶ 95). GM notes
that “the front portion of the claimed design has a distinct, asymmetric shape
formed by a linear region, followed by a convexly curved edge at the front
end,” and that this “asymmetric design forms the bulbous tip, which
contributes to the claimed design’s overall appearance,” as depicted in the
graphics provided by GM below. Id.

GM’s comparison of the front portion of the fender of the ’065 patent using
LKQ’s gold annotated Figure 3 to the front portion of the Horki Concept
found at Exhibit 1008, at 6 (reversed, partial). PO Resp. 50. GM adds a
blue “Curved region” and red “Linear region” annotation to Figure 3 in
order to depict the curvature of the top edge – flowing frontward in a linear
region downward into a curved region at the front portion. As depicted, the
Horki Concept’s front portion and tip are formed by a continuous upper arc
extending to and the front portion has no linear region. Id. Mr. Peters
testifies that this difference is not only evident to an ordinary designer, but
demonstrates stark stylistic distinctions between the Horki Concept and the
claimed design. Ex. 2004 ¶ 95.
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GM next argues that the tips of the front portion are distinct and the
Horki Concept does not teach a 90-degree angled tip, as found in the design
claim. PO Resp. 51 (citing Ex. 2004 ¶ 96). GM alleges that “[t]he claimed
design’s short, blunt tip is formed by the upper and front edges of the fender
intersecting at a right angle,” and “the Horki Concept’s tip has a more
sharply angled front tip as compared to the claimed design,” as depicted
below.

GM’s comparison of the front tip of the fender of the ’065 patent using
LKQ’s gold annotated Figure 3 adding a red 90 degree angle, to the front
portion of the Horki Concept found at Exhibit 1008, at 6 (reversed, partial).
PO Resp. 51.
5. Analysis
Based on the final record before us, LKQ has not persuasively shown
that the designer of ordinary skill in the art would find that the Fiat Toro is a
proper primary, or Rosen, reference. Further, to the extent that Fiat Toro
were a proper Rosen reference, LKQ fails to demonstrate that the ’065 patent
is unpatentable based on the combination of the Fiat Toro and the Horki
Concept because the Horki Concept does not teach the front portion relied
upon by LKQ for the combination. We undertake our analysis with the
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skilled designer in mind. The designer of ordinary skill is an individual who
has at least an undergraduate degree in transportation or automotive design
experience in the field of transportation design, or someone who has several
years’ work experience in transportation or automotive design. See Pet. 51.
We also determine, based on the final record, that seemingly subtle details
are readily noticed by the skilled designer for vehicle front fender design.
Ex. 2004 ¶¶ 48, 49 (discussing evidence of “importance that replacement
parts be identical to the original part”); Ex. 2003, 10, 14 (LKQ Petition
Letter stating that if the look of the part is different “consumers would
simply not purchase the replacement.”); Ex. 2005, 3–4.
The Petition fails to adequately address the differences between the
claimed ornamental fender design and the Fiat Toro in several important
areas, including: the distinct upper portions of each design, the claimed
design’s inwardly folded (L-shaped) top edge, and the rear lateral edge.
Based on the final record, these differences combined with the other
differences noted by LKQ (Pet. 81) are substantial and prevent the Fiat Toro
from having design characteristics that are basically the same as that claimed
in the ’065 patent – as required for a Rosen reference.
The shape of the upper portion of the fender contributes to the claimed
design’s smooth and athletic overall appearance, and it includes two major
components: a protrusion and a crest. See Ex. 2004 ¶ 38.
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Mr. Peters’ annotated version of Figure 1 taken from the Petition (at 14)
with purple shaping along the top portion and the words “Crest” and
“Protrusion” added in red with areas pointing to those respective regions.
Ex. 2004 ¶ 38. The “L-shaped” inwardly folded top edge is prominent in the
figure above running along the top of the crest and up into the protrusion
portion.

An annotated portion of Figure 1 with purple shading (Pet. 14) but also
adding a red circle around the inwardly folded top edge that is folded
approximately 70° relative to a vertical axis. See Ex. 2004 ¶ 40.
The Fiat Toro’s top edge has a different appearance than the ’065
patent in part because the Fiat Tori does not depict the claimed design’s
inwardly folded (L-shaped) top edge. The top edge is shown in solid lines in
the ’065 patent, and prominently visible in the views shown in the ’065
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patent, whereas the quality of the Fiat Toro exhibits do not persuasively
show such an edge as seen below.

LKQ’s comparison of annotated Figure 1 with Exhibit 1006 at 5 both
cropped and annotated in purple shading. Pet. 77. The record does not
support LKQ’s contention that the Fiat Toro has an L-shaped inwardly
folded top edge.
LKQ argues that a designer of ordinary skill in the art would have
understood the Toro’s fender to have or suggest a folded top edge (Pet.
Reply 30), but there is no persuasive evidence of such a fold before us. See
Pet. 77; Pet. Reply 21–30, 33 (pointing to a portion below the top edge but
not along the edge), 34 (same); see also Tr. 12:18–13:26 (discussing
differences in top portion). LKQ annotates two obscured images of the Fiat
Toro (Pet. Reply 33–34), but there is simply no evidence of an L-shaped
inwardly folded top edge along the crest of the top portion. Neither of
LKQ’s images show an inwardly folded top edge that is folded
approximately 70° relative to the vertical axis of the fender. See PO Sur-
Reply 30 (including both annotated images). LKQ’s exhibits of the Fiat
Toro are obscured along this edge, which prevents visibility of the internal
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components of the top edge of the fender. 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. LKQ has not
produced any persuasive evidence showing the actual appearance of the Fiat
Toro top edge or even how it interacts directly with the creases of the hood
and the vehicle A-pillar. See Ex. 2004 ¶¶ 40, 83. We also disagree that “the
presence or absence of an inwardly folded edge has no bearing on the basic
similarity of the designs.” Pet. Reply 34 (citing Ex. 1052 ¶ 55). The edge is
prominently shown in each of the ’065 patent’s four figures. See Ex. 1001,
Figs. 1–4.
As shown from the below comparison, the Fiat Toro’s upper portion is
defined by a more angular, prominent protrusion, occupying a majority of
the upper portion’s length (> 63%), and a less prominent crest located above
an inflection line. See Ex. 2004 ¶ 81.

GM’s comparison of the “upper portion” of Exhibit 1001 at Figure 3 (partial,
annotated) to Exhibit 1006 at 1 (partial, annotated). We agree partially with
GM that the Fiat Toro’s inflection line extends in close proximity to the
upper edge of the fender forms a crest that is not as noticeable as that
claimed in the ’065 patent, but perhaps not to the extent pictured by GM
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above. Compare Pet. Reply 31–32 with the above shading. Further,
examining just the upper right portion, the claim design requires: (a) a right
upper edge, (b) a right lower edge, (c) a left edge, and (d) an elongate upper
left edge, as shown below, but the Fiat Toro has distinct slopes and curvature
that would be noticeable to the designer of ordinary skill.

Enlargement of the upper portion of fender from Figure 1 (left) compared to
the Fiat Toro’s upper right portion found in Exhibit 1006, page 1, with
yellow highlighting around the perimeter with letters “a–d” added on each
perimeter line. Inst. Dec. 36. Examining all the comparison of all the
figures above, the claimed design has a steep right upper edge (a), which is
closer to vertical, while the Fiat Toro has a much different right upper edge
that is nearer to horizontal. The elongate upper left edges (d) are similar for
both designs, but both the right lower edges (b), and the left edges (c) have
small but noticeable distinctions in slope angle and curvature.
As further seen below, the Fiat Toro does not disclose the claimed
design’s rear lateral edge, which for large part is dictated by the matching
shape of the door and A-pillar.
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GM’s comparison of Figure 3 of the claimed design with Exhibit 1006, at 1
(partial, annotated) adding red, blue, and green lines along the rear lateral
edge of both designs to emphasis the varied directions of that rear lateral
edge. PO Resp. 43–44. The claimed design has a lower rear lateral edge (in
red above) extending vertically, but with a slight frontward bow and an
upper rear lateral edge (blue) that extends rearwardly and connects to the
protrusion edge (green). Id. (citing Ex. 2004 ¶¶ 84–86).
Another significant distinction between the two designs, and as
recognized by LKQ (Pet. 81–82), is the front portion of the fender.

A comparison of annotated Figure 3 (left) (as found at PO Resp. 51) with a
partial portion of Exhibit 1006 at 1 (right) shows that the claimed design’s
front portion has a distinct, asymmetric shape formed by a linear region,
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followed by a convexly curved tip at the front end. The claimed asymmetric
design forms a bulbous tip with a defined right angle. Contrastingly, the Fiat
Toro has about a 45 degree angle, creating a sharp front angle. The claimed
design’s short, blunt tip that is formed by the upper and front edges of the
fender intersecting at a right angle is very distinct from the Fiat Toro’s
sharply angled front tip that is more elongated and almost flat (slightly
convex) along the upper edge. As also recognized by LKQ, the wheel arch
of the claimed design is more arcuate than that of the Fiat Toro. Pet. 82.
LKQ argues that GM did not consider every similarity and compare
the designs as a whole. See Pet. Reply 25–30 (listing about twenty-eight
similarities). We have considered these arguments, including each of the
alleged similarities asserted by LKQ. GM and Mr. Peters did in fact
compare the designs as a whole, including multiple side-by-side
comparisons of the ’065 patent design and the Fiat Toro. See PO Resp. 39–
44; Ex. 2004 ¶¶ 78–86, 80 (“Fiat Toro’s design has a different overall
appearance than the ’065 Patent in part because the Fiat Toro does not depict
the claimed design’s overall profile and shape of the upper portion. The
shape of the upper portion has multiple distinct features that contribute to the
overall appearance of the ’065 Patent’s design.”); PO Sur-Reply 22–30. We
agree with GM, however, that it was the unmistakable differences, not the
mundane similarities, between these designs that dominated the analysis.
See PO Sur-Reply 22–24. The differences in the upper portion of the
claimed design, and the front portions, as compared to the Fiat Toro,
substantially affect its overall appearance, as further depicted below.
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GM’s use of Exhibit 1006 at 1 (partial), overlaid with a yellow outline of
Figure 3 of the ’065 patent. PO Sur-Reply 24. Even if we discount GM’s
sizing of these two designs on top of one another as potentially being off, the
overall differences in the angles, slopes, proportions, and edge shapes of the
claimed design’s upper and front portions are numerous and distinguish the
two designs. Id. at 25. For example, the Toro’s upper portion drops at a
different location and has a different height and angles. These differences,
combined with the distinct front portions and rear lateral edge angles, are
significant and disqualify the Toro as a primary reference.
Even presuming that the Fiat Toro qualifies as a proper Rosen
reference, which we determine it does not, in the second step of our analysis
we consider whether LKQ has shown that the Fiat Toro may be modified by
the Horki Concept to create a design that has the same overall visual
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appearance as the claimed design. LKQ’s proposal of incorporating a
purported “bone line,” the front portion’s “curve,” and “slanted edge,” and
an arcuate wheel arch (Pet. 81–82) fails to account for the multiple other
differences between Fiat Toro and the claimed design that are significant to
the designer’s impression of the overall visual appearances of the design.
Even after the Horki Concept’s front portion is used to modify the Fiat Toro
design, LKQ still has not persuasively shown that the modification of the
Fiat Toro with the Horki Concept would create a design that has the same
overall visual appearance as the claimed design to the designer of ordinary
skill.
As noted above, the claimed design has a distinct, asymmetric shape
formed by a linear region, followed by a convexly curved tip at the front
end, and asymmetric design forms a bulbous tip with a defined right angle.
In contrast, the Horki Concept has a generally symmetrical curved tip
formed by one continuous arc, and the front portion has no linear region, as
depicted in the comparison below.

GM’s comparison of Figure 3 (Pet. 16) (partial, annotated) to Exhibit 1008,
page 7 (reversed, partial) adding a 90 degree right angle annotated in red on
the claimed design’s front angle in Figure 3. PO Resp. 51. As also depicted
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above, the Horki Concept does not teach a 90-degree angled tip, whereas the
claimed design’s short, blunt tip is formed by the upper and front edges of
the fender intersecting at a right angle. See Ex. 2004 ¶¶ 95, 96. The Horki
Concept’s tip has a more sharply angled front tip and also appears more
elongated as compared to the claimed design’s short tip. We find Mr.
Peter’s testimony that these differences would create a hypothetical
combination having a “front portion” with a different shape, which, in turn,
would contribute to an overall appearance that is distinct from that of the
claimed design. See id. ¶ 96.
Based on the distinctions noted above, LKQ has not persuasively
shown on the final record that a designer of ordinary skill would find that
LKQ’s proposed combination of prior art designs has the same overall visual
appearance as the claimed design. Because we determine that LKQ has not
persuasively shown that the Horki Concept teaches the ornamental design of
the front portion, we decline to reach GM’s remaining arguments about the
why it would have been improper to combine the designs of the two
references.
E. The Alleged Obviousness of the Claim Over the 2016 Fiat Toro Vehicle,
2017 Cadillac XT5 Vehicle, and Lan
LKQ contends that “the single claim of the ’065 patent is unpatentable
as obvious over the Fiat Toro in view of the 2017 Cadillac XT5 as depicted
in Exhibits 1009–10 in further view of Lan (Ex. 1011).” Pet. 91. LKQ
relies on the 2017 Cadillac XT5 for its “same front upper edge and convex
front portion as the design of the ’065” patent, and also for teaching to
“modify[] the Fiat Toro design to remove the bone line to create a smoother,
more refined and fluid appearance.” Pet. 95, 98. LKQ relies on Lan for “the
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same wheel arch shape and bevel as the design of the ’065” patent.”
Pet. 100–101.
For the reasons set forth above, we determine that the Fiat Toro is not
a proper Rosen reference. For this reason, and based on the final record
before us, LKQ has not established by a preponderance of the evidence that
the claim of the ’065 patent would have been obvious based on this ground.
Below, we also determine that even if the Fiat Toro qualifies as a
proper Rosen reference, in the second step of our analysis we determine that
the designer of ordinary skill in the art would not find that the Fiat Toro
modified by the 2017 Cadillac XT5 and Lan creates a design that has the
same overall visual appearance as the claimed design. We provide LKQ’s
contentions and GM’s response as to these contentions. Finally, we provide
our analysis and explanation as to why we determine that the proposed
combination would not create a design that has the same overall visual
appearance as the claimed design.
1. 2017 Cadillac XT5 Vehicle
According to LKQ, Exhibits 1009 and 1010 constitute “[a] true and
accurate representation of the Cadillac XT5 vehicle,” which was “published
through a TFL Car publication that announced the unveiling of the 2017
Cadillac XT5.” Pet. 31. LKQ asserts that “this article and accompanying
video qualify as prior art under 35 U.S.C. § 102(a)(1).” Id. An image of the
Cadillac XT5, as depicted in the TFL Car publication and video relied upon
by LKQ are shown below:
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LKQ produces an image of Cadillac XT5 left front view from Exhibit 1009,
page 1. Pet. 33.
2. Lan
LKQ also relies on Lan as a secondary reference. Ex. 1011. LKQ
contends that Lan is prior art under 35 U.S.C. § 102(a)(1) because “Lan was
filed on January 6, 2016, claimed a priority date of July 17, 2015 and issued
on October 24, 2017.” Pet. 34 (citing Ex. 1011, 1). Figure 1 of Lan is
reproduced below.

Figure 1 of Lan shows a right front perspective view of the Lan automobile.
Ex. 1011.
3. Petitioner Contentions
LKQ relies on the same analysis discussed above to show that the Fiat
Toro is a proper primary reference. See Pet. 91–92. For the reasons set
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forth above, we disagree and determine that the Fiat Toro is not a proper
Rosen reference.
LKQ relies on the Cadillac XT5 as a secondary reference alleging that
it has “similar proportions as the 2016 Fiat Toro,” and the vehicles “are
similarly classified and share a similar design theme of bold lines and
flowing contours,” such that “the appearance of design elements on the XT5
Article design would suggest their application to the Fiat Toro Design.” Pet.
93–94. LKQ then uses the following figures to show the front portion of the
claimed design compared to the same area of the Cadillac XT5:

LKQ relies on Figure 3 of the ’065 patent compared to Exhibit 1010, page
15 (top), and Figure 1 compared to Exhibit 1009, page 1 (bottom) with both
sets of drawings annotated with gold highlighting. Pet. 95–96. LKQ
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contends that these comparisons show that “the upper edge of the front
portion of the Cadillac XT5 fender design portion teaches a curvature
precisely matching that claimed in the ’065 patent, and thus would have
suggested to a DOSA modifying the front upper edge of the similar front
portion of the Fiat Toro fender design,” for reasons further explained. Pet.
96–97.
LKQ next argues “Lan comprises the same wheel arch shape and
bevel as the design of the ’065,” as depicted below:

LKQ’s comparison of Figure 3 of the ’065 patent with Lan (Ex. 1011)
Figure 6, both annotated with a green highlight along the wheel arch. Pet.
100. LKQ contends “the wheel arch flat disclosed by Lan tapers as it
approaches the rear edge, has an arcuate shape of approximately the same
dimensions as that of the ’065 Patent.” Pet. 102.
4. Patent Owner Contentions
GM argues that the teachings of the teachings of the Fiat Toro are too
different to be combined with the Cadillac and Lan references. PO Resp.
52–56.
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Relying on the testimony of Mr. Peters, GM next argues that even if
the Fiat Toro were combined with the Cadillac and Lan, the combination
does not teach the overall ornamental appearance as “basically the same” as
the claimed design of the ’065 patent. Id. at 56 (citing Ex. 2004 ¶¶ 106–
109). According to GM, the Cadillac and Lan fail to teach other differences
between the Fiat Toro and the claimed design, namely, the “front portion” of
the claimed design. Id. at 56–59. GM relies on the following figures
showing a comparison of the front portion of the claimed design with that of
the Cadillac XT5.

A comparison of Figure 3 with gold shading at the front and blue
annotations showing a curved region and red annotations showing a linear
region with the Cadillac Exhibit 1009 at 1 (partial, annotated with a blue
trace of the front portion). PO Sur-Reply 33 (citing Ex. 2004 ¶¶ 107–109).
The claimed design’s front portion has a “bulbous” shape formed by an
upper edge with a long linear region and a short curved region, and a
downward sloping lower edge. Ex. 2004 ¶¶ 107–109. In contrast, the
Cadillac’s front portion (shown in blue) includes a symmetrical, curved
upper edge and a lower edge extending in an upward and rearward direction
pointing to the top of the wheel arch. Id.
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5. Analysis
Our views of the Fiat Toro as a primary, or Rosen, reference are
addressed above.
We determine that the combination of the Fiat Toro with the Cadillac
XT5 and Lan does not result an overall appearance that is “basically the
same” as the claimed design. LKQ has not persuasively proven that a
designer of ordinary skill in the art would view the Cadillac XT5 fender
design as teaching “a curvature precisely matching that claimed in the ’065
Patent,” as argued by LKQ. As seen below in the comparison of the front
portion of the claimed design with that of the Cadillac XT5, claimed design
has a front portion having linear region transitioning into a curved region
that forms a bulbous shape, while the Cadillac XT5’s upper edge has a
symmetrically positioned curved region that forms a narrowed tip shape.

A comparison of Figure 3 with gold shading at the front and blue
annotations showing a curved region and red annotations showing a linear
region with the Cadillac Exhibit 1009 at 1 (partial, annotated with a blue
trace of the front portion). PO Sur-Reply 33 (citing Ex. 2004 ¶¶ 107–109).
Mr. Peters testifies that the claimed design’s front portion has a “bulbous”
shape formed by an upper edge with a long linear region and a short curved
region, and a downward sloping lower edge, but the Cadillac’s front portion
(shown in blue) includes a symmetrical, curved upper edge and a lower edge
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extending in an upward and rearward direction pointing to the top of the
wheel arch. Ex. 2004 ¶¶ 107–109. We find this testimony more persuasive
than LKQ’s declarants.
GM provides the following persuasive comparison showing the
remarkably distinct downwardly sloped lower edge (in yellow) of the
claimed design compared to a slope in an upward and rearward direction of
the Cadillac XT5.

GM’s annotated Figure 3 of the ’065 patent compared to with Exhibit 1009
at 1 (partial, annotated). As seen above, the Cadillac XT5 has a convexly
curved area that is similar, but the front angles are not. The Cadillac XT5
has a noticeably acute angle where the ’065 patented design has a near right
angle at the lower front left corner. Further, the front bottom surface from
this right angle is slope downward, while the Cadillac XT5 has a bottom
surface sloping upward toward to a top portion of the wheel arch. Ex. 2004
¶ 107. As Mr. Peters explains, these difference would be evident to an
ordinary designer as distinct stylistic differences between the Cadillac XT5
and the claimed design. Id.
LKQ contends that it would only adopt the Cadillac XT5’s upper
curvature – the headlamp aperture shape that progresses forwards – but keep
“the Toro’s original slanted cut.” Pet. Reply 45 (citing Ex. 1052 ¶ 77). We
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have considered LKQ’s arguments that Cadillac’s “headlamp aperture shape
that progresses forwards, then arcs downwards” would “create the same
bulbous front portion shape as claimed,” but we determine that this
argument is unpersuasive. Id. Because the Cadillac’s front edge curves
symmetrically downward and lacks a linear region, the lower edge of the
front portion would also need to extend downward in a similar fashion in
order to maintain its specific shape. See PO Sur-Reply 34. Thus, even if the
Cadillac’s front edge were to accommodate the Fiat Toro’s original slant, as
suggested by LKQ, this would result in a premature termination of the upper
edge of the Cadillac’s front portion as depicted in the annotated figures
provided by GM below.

GM’s depiction of the upper edge of the Cadillac’s front portion (left) as that
edge would be overlaid onto the front portion of the Fiat Toro (right). PO
Sur-Reply 35. We do not find persuasive LKQ’s argument that seeks to
adopt the headlamp aperture shape of the Cadillac XT5 (upper edge of the
front portion) while ignoring other design elements in the front portion of
the XT5, such as: slope of the bottom edge, front angle, and proportionality.
Finally, even with the proposed modifications suggested by LKQ (Pet.
Reply 44–45), the combination would still fail to create the distinctive
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bulbous front portion that significantly contributes to the claimed design’s
smooth overall appearance.
Because we determine LKQ has not persuasively proven that the
combination of references creates basically the same ornamental appearance
as the claimed design, we decline to address GM’s alternative arguments
that the teachings of the Fiat Toro are too different to be combined with the
Cadillac and Lan references.
III. CONCLUSION
LKQ has not proven by a preponderance of the evidence that the ’065
patent design claim is indefinite. For the reasons expressed above, we
determine that LKQ has not proven by a preponderance of the evidence that
the ’065 patent design claim would have been obvious over the Fiat Toro in
combination with the Horki Concept. Likewise, LKQ has not proven by a
preponderance of the evidence that the ’065 patent design claim would have
been obvious over the Fiat Toro in combination with the Cadillac XT5 and
Lan.

Claims
35
U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1 112 Indefiniteness 1
1 103 Fiat Toro and
Horki Concept
1
1 103 Fiat Toro, Cadillac
XT5, and Lan
1
Overall Outcome
1

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IV. ORDER
For the reasons given, it is
ORDERED that, based on a preponderance of the evidence, the claim
of the ’065 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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PETITIONER:
Barry F. Irwin, P.C.
Reid Huefner
IRWIN IP LLC
birwin@irwinip.com
rhuefner@irwinip.com

PATENT OWNER:
Dorothy P. Whelan
Jennifer J. Huang
Craig A. Deutsch
Grace J. Kim
Joseph A. Herriges
FISH & RICHARDSON P.C.
PTABInbound@fr.com
whelan@fr.com
jjh@fr.com
deutsch@fr.com
gkim@fr.com
herriges@fr.com