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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
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`In the Matter of
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`CERTAIN REPLACEMENT AUTOMOTIVE
`LAMPS
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`Investigation No. 337-TA-1291
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`RESPONDENTS’ REPLY SUBMISSION
`IN RESPONSE TO THE COMMISSION’S NOTICE OF REVIEW
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`TABLE OF CONTENTS
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`I.
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`II.
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`Introduction ..........................................................................................................................1
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`Responses to the Commission’s Questions on Review .......................................................2
`
`A.
`
`Kia’s Response to Question 1 Shows That It Failed to Meet Its Burden to
`Prove Infringement Based on the Ordinary Observer Test ......................................2
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`1.
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`2.
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`3.
`
`4.
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`The Parties identified almost the same record citations regarding
`the ordinary observer test, and that evidence cannot meet Kia’s
`burden ..........................................................................................................2
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`Kia fails to answer the Commission’s question as to what evidence
`is required aside from side-by-side images ..................................................6
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`Crocs does not support Kia’s failures to submit a written
`explanation of its infringement bases and nonconclusory evidence ............7
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`Kia’s conduct undermines its arguments .....................................................8
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`B.
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`C.
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`Kia’s Response to Question 2 Asserts a New, Incorrect Copying
`Argument .................................................................................................................8
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`Kia’s Response to Question 3 Does Not Address the ID’s “Revised Patent-
`by-Patent Investments,” Let Alone Show Why They Are Significant ....................9
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`D.
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`Kia’s Response to Question 4 Lacks Merit ............................................................10
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`III.
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`Remedy ..............................................................................................................................12
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`Kia’s Challenge to Including a Service and Repair Exemption in any LEO
`Lacks Support ........................................................................................................12
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`Kia’s CDO Arguments Are Untimely and Incorrect .............................................13
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`1.
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`2.
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`3.
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`4.
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`Kia failed to show that either of the TYC Respondents maintain
`commercially significant domestic inventory of the accused
`products ......................................................................................................13
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`Kia failed to show that LKQ/Keystone maintain commercially
`significant inventory ..................................................................................14
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`Kia failed to rebut Respondents’ testimony regarding inventory ..............16
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`Kia’s evidence of the domestic Respondents’ overall distribution
`operations fails to address the accused products ........................................16
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`B.
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`Kia’s claim of nonwaiver of its inventory arguments lacks merit .............17
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`5.
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`IV.
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`V.
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`Public Interest ....................................................................................................................18
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`Bond ...................................................................................................................................18
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`A.
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`B.
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`Kia Fails to Justify Its Shift in Positions to a 100% Bond After
`Abandoning It in Its Prehearing Brief ....................................................................18
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`Kia Submitted No Evidence in Support of a 100% Bond ......................................19
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`VI.
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`Conclusion .........................................................................................................................20
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`ABC Corp. I v. P’ship & Unincorporated Assocs. Identified on Schedule “A”,
`52 F.4th 934 (Fed. Cir. 2022) ....................................................................................................2
`
`Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc.,
`501 F.3d 1314 (Fed. Cir. 2007), abrogated on other grounds by Egyptian
`Goddess, 543 F.3d 665...........................................................................................................3, 8
`
`Certain Access Control Sys. & Components Thereof,
`Inv No. 337-TA-1016, Comm’n Op. (Aug. 21, 2018) .............................................................19
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`Certain Audio Players & Controllers, Components Thereof, & Prods. Containing
`Same,
`Inv. No. 337-TA-1191, ID (Aug. 13, 2021) ...............................................................................4
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`Certain Automated Put Walls & Automated Storage & Retrieval Sys., Associated
`Vehicles, Associated Control Software, & Component Parts Thereof,
`337-TA-1293 (ID, Mar. 31, 2023) ...........................................................................................17
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`Certain Bulk Welding Wire Containers & Components Thereof & Welding Wire,
`Inv. No. 337-TA-686, ID (July 29, 2010) ................................................................................15
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`Certain Digital Models, Digital Data, & Treatment Plans for Use in Making
`Incremental Dental Positioning Appliances Made Therefrom & Methods of
`Making the Same,
`Inv. No. 337-TA-883, Comm’n Op. (Apr. 9, 2014) ................................................................17
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`Certain Elec. Digital Media Devices & Components Thereof,
`Inv. No. 337-TA-796, Comm’n Op. (Sept. 6, 2013) .............................................................3, 8
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`Certain Integrated Repeaters, Switches, Transceivers, & Prods. Containing Same,
`Inv. No. 337-TA-435, Comm’n Op. (Aug. 16, 2002) ..............................................................15
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`Certain Liquid Crystal Display Devices & Prods. Containing the Same (“Liquid
`Crystal Display Devices”),
`Inv. No. 337-TA-631, Comm’n Op. (July 14, 2009) .........................................................19, 20
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`Certain Magnetic Data Storage & Tapes & Cartridges Containing the Same
`(II), Inv. No. 337-TA-1076, Comm’n Op. (June 20, 2019) .....................................................14
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`Certain Multiple Mode Outdoor Grills & Parts Thereof,
`Inv. No. 337-TA-895, Comm’n Op. (Feb. 20, 2015)...............................................................16
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`Certain Personal Data & Mobile Commc’ns Devices & Software (“Personal Data
`Devices”),
`Inv. No. 337-TA-710, Comm’n Op. (Dec. 29, 2011) ........................................................19, 20
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`Certain Powered Cover Plates,
`Inv. No. 337-TA-1124, Comm’n Op. (July 10, 2020) .............................................................14
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`Certain Semiconductor Devices,
`337-TA-1010, ID at 191-92 (June 30, 2017) ...........................................................................17
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`Certain Wearable Elec. Devices with ECG Functionality,
`Inv. No. 337-TA-1266, Comm’n Op. (Jan. 20, 2023) .......................................................10, 16
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`Dorman Prods., Inc. v. Paccar, Inc.,
`201 F. Supp. 3d 663 (E.D. Pa. 2016), as amended (Oct. 17, 2016) ...........................................9
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`Egyptian Goddess, Inc. v. Swisa, Inc.,
`543 F.3d 665 (Fed. Cir. 2008) (en banc) .......................................................................2, 4, 5, 6
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`Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
`796 F.3d 1312 (Fed. Cir. 2015)..................................................................................................6
`
`High Point Design LLC v. Buyers Direct, Inc.,
`730 F.3d 1301 (Fed. Cir. 2013)..................................................................................................5
`
`Lelo Inc. v. ITC,
`786 F.3d 879 (Fed. Cir. 2015)..............................................................................................7, 10
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016)................................................................................................12
`
`Moleculon Research Corp. v. CBS, Inc.,
`793 F.2d 1261 (Fed. Cir. 1986)..................................................................................................6
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`Nike, Inc. v. Adidas AG,
`955 F.3d 45 (Fed. Cir. 2020)..............................................................................................11, 12
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009)..................................................................................................6
`
`Smith v. Whitman Saddle Co.,
`148 U.S. 674 (1871) ...................................................................................................................6
`
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019)..................................................................................................4
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`Union Carbide Corp. v. Am. Can Co.,
`724 F.2d 1567 (Fed. Cir. 1984)..................................................................................................6
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`Statutes
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`5 U.S.C. §§ 554, 556, 557 ..............................................................................................................12
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`5 U.S.C. §§ 554 through 556 .........................................................................................................11
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`5 U.S.C. § 557(c) ...........................................................................................................................11
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`19 U.S.C. 1337(a)(3)(A) ................................................................................................................10
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`Administrative Procedure Act........................................................................................................11
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`Other Authorities
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`19 C.F.R. § 210.36(d) ....................................................................................................................11
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`19 C.F.R. § 210.43(b)(2) ................................................................................................................11
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`GLOSSARY
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`DEFINITION
`Inv. No. 337-TA-1292
`Transcript of the August 18-22, 2022 Evidentiary Hearing
`Administrative Law Judge
`U.S. Design Patent Nos. D592,773 (“the ’773 Patent),
`D635,701 (“the ’701 Patent), D636,506 (“the ’506 Patent),
`D650,931 (“the ’931 Patent), D695,933 (“the ’933 Patent),
`D705,963 (“the ’963 Patent), D709,218 (“the ’218 Patent),
`D714,975 (“the ’975 Patent), D714,976 (“the ’976 Patent),
`D720,871 (“the ’871 Patent), D749,757 (“the ’757 Patent),
`D749,762 (“the ’762 Patent), D749,764 (“the ’764 Patent),
`D774,222 (“the ’222 Patent), D774,223 (“the ’223 Patent),
`D776,311 (“the ’311 Patent), D781,471 (“the ’471 Patent),
`D785,833 (“the ’833 Patent), D785,836 (“the ’836 Patent),
`and D792,989 (“the ’989 Patent)
`Chief Administrative Law Judge
`Cease-and-desist order
`Complainants’ Initial Post-Hearing Brief
`Kia Corporation and Kia America, Inc.
`Complainants’ Initial Written Submission in Response to the
`Commission’s Notice of Review of Final Initial
`Determination (May 25, 2023)
`The Complaint filed by Complainants with the International
`Trade Commission on December 16, 2021, in the above-
`captioned matter, including the supplement filed on January
`6, 2022.
`Complainants’ Prehearing Brief
`Complainants’ Responsive Post-Hearing Brief
`Complainants’ Supplemental Post-Hearing Brief
`Complainants’ Supplemental Post-Hearing Reply Brief
`The products identified in RX-310 (Complainants’ February
`25, 2022 List of Products to Satisfy the Domestic Industry
`Requirement)
`The DI Products allegedly protected by one of the ’222,
`’762, and ’764 patents
`Final Initial Determination on violation of Section 337,
`January 24, 2023
`Hyundai Motor America, Inc.
`Hyundai Motor Company
`Hyundai Motor Manufacturing Alabama, LLC
`Hyundai IHL Co., Ltd.
`Hyundai Mobis Co., Ltd.
`Hyundai Motor Company and Hyundai Motor America, Inc.
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`vi
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`TERM
`“1292 Investigation”
`“1292 Tr.”
`“ALJ”
`“Asserted Patents”
`
`“CALJ”
`“CDO”
`“CIB”
`“Complainants” or “Kia”
`“Complainants’ Response”
`or “Kia’s Response”
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`“Complaint” or “Compl.”
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`“CPHB”
`“CRB”
`“CSB”
`“CSRB”
`“DI Products”
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`“Domestically
`Manufactured DI Products”
`“FID”
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`“HMA”
`“HMC”
`“HMMA”
`“Hyundai IHL”
`“Hyundai Mobis”
`“Hyundai”
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`“IID”
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`“Imported DI Products”
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`“Investigation”
`“KAI”
`“Kia”
`“Kia Corp.”
`“Kia Georgia”
`“LEO”
`“MPA”
`“NOI”
`“Non-Infringed Patents”
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`“RD”
`“Respondents
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`‘Respondents’ Response”
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` “RRB”
`“SL Alabama”
`“SL America”
`“SL Corp.”
`“Tr”
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`Interim Initial Determination on the Economic Prong of the
`Domestic Industry Requirement, July 1, 2022
`The DI Products allegedly protected by one of the ’773,
`’701, ’506, ’931, ’933, ’963, ’218, ’975, ’976, ’871, ’757,
`’223, ’311, ’471, ’833, ’836, and ’989 Patents
`Inv. No. 337-TA-1291
`Kia America, Inc.
`Complainants Kia Corp. and Kia America, Inc.
`Kia Corporation
`Kia Georgia, Inc.
`Limited exclusion order
`Mobis Parts America LLC
`Notice of Institution of the Investigation
`U.S. Design Patent Nos. D705,963 (“the ’963 Patent),
`D749,757 (“the ’757 Patent), and D781,471 (“the ’471
`Patent).
`Recommended Determination on Remedy and Bond from
`the Final Initial Determination
`TYC Brother Industrial Co., Ltd., Genera Corporation, LKQ
`Corporation, and Keystone Automotive Industries, Inc.
`Respondents’ Initial Written Submission in Response to the
`Commission’s Notice of Review (May 25, 2023)
`Respondents’ Responsive Post-Hearing Brief
`SL Alabama LLC
`SL America Corp.
`SL Corporation
`Transcript of the August 15-17, 2022 Evidentiary Hearing
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`I.
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`INTRODUCTION
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`Kia failed to carry numerous burdens of proof in this investigation. It submitted no
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`evidence of how the ordinary observer would view the designs at issue and so failed to meet its
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`infringement and technical prong burdens. Kia also submitted no evidence explaining or
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`substantiating why the FID’s investment comparisons prove significance and so failed to meet its
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`economic prong burden. And Kia submitted inadequate evidence for its CDO and bond burdens.
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`Kia’s response to the Notice of Review does not overcome these failures of proof. Its
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`answers to the Commission’s questions say very little. For Questions 1 and 2, Kia identifies
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`virtually the same record citations that Respondents identified. Under the relevant case law,
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`those citations fail to carry Kia’s burden, and Kia’s authority is inapposite. For Question 2, Kia
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`also raises an untimely “copying” argument, but it is contrary to law, illogical, and unsupported.
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`For Question 3, Kia does not meaningfully discuss the quantitative significance of the FID’s
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`revised Prong (A) investments, and its qualitative significance arguments are legally and
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`factually incorrect. And for Question 4, Kia ignores the applicable sections of the APA,
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`addresses only a single irrelevant provision of the Act, and fails to discuss a single relevant case.
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`Kia’s remedy, public interest, and bond arguments are similarly unavailing. As to its
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`requested LEO, Kia argues against the RD’s recommended warranty exemption, but it provides
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`neither legal nor factual support. As to its requested CDOs, Kia identifies no evidence that would
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`enable the Commission to assess whether Genera’s inventory levels in a one-day snapshot are
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`commercially significant, and it provided no evidence of Respondents LKQ/Keystone’s
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`inventories. As to public interest, Kia relies on its previous submissions, but they are conclusory
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`and unsupported. And as to bond, Kia neither adequately justifies its abandonment of its current
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`100% contention nor provides evidence supporting a bond at that rate.
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`II.
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`RESPONSES TO THE COMMISSION’S QUESTIONS ON REVIEW
`A.
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`Kia’s Response to Question 1 Shows That It Failed to Meet Its Burden to
`Prove Infringement Based on the Ordinary Observer Test
`1.
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`The Parties identified almost the same record citations regarding the
`ordinary observer test, and that evidence cannot meet Kia’s burden
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`There is no dispute as to the record evidence related to Kia’s attempt to prove
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`infringement. In response to Question 1, which asks for record citations where Kia carried its
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`burden of proof under the ordinary observer test, the Parties identified virtually the same
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`evidence.1 Both identified citations to the asserted patents, higher resolution “SCORE” drawings,
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`photos of the accused products, and expert testimony that the ALJ rejected as “conclusory.”2
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`But this evidence cannot meet Kia’s burden because it does not show how the ordinary
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`observer—an automotive lamp purchaser who would closely inspect them in light of the prior
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`art—would perceive the claimed and accused designs.3 Neither Kia’s evidence nor its response
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`to Question 1 addresses this ordinary observer at all.
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`Kia argues that it only had to present the patent figures and accused product photos side
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`by side to meet its burden,4 but the applicable case law refutes this. As Respondents have
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`explained, the controlling cases require the factfinder to assess substantial similarity from the
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`point of view of the “‘ordinary observer [who] give[s] such attention as a purchaser usually
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`gives’”5 and who is “conversant with the prior art.”6 “[T]hough not an expert,” the ordinary
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`1 Comm’n Not. of Review at 3.
`2 See Resp’ts’ Resp. at 9; Complainants’ Resp. at 13–14.
`3 See Resp’ts’ Resp. at 9–13.
`4 See Complainants’ Resp. at 6.
`5 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc) (quoting
`Gorham Co. v. White, 81 U.S. 511, 528 (1871)).
`6 Id. at 678; see also ABC Corp. I v. P’ship & Unincorporated Assocs. Identified on Schedule
`"A", 52 F.4th 934, 942 (Fed. Cir. 2022) (“[T]he district court was required to conduct the
`ordinary observer analysis through the lens of the prior art, and the court’s conclusory discussion
`contains no indication that it conducted the required analysis.”).
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`observer “has reasonable familiarity with such objects” as the products at issue and can form “a
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`reasonable judgment” as to whether their designs are similar or distinctive.7 The degree of
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`“attention” an ordinary observer typically gives to the designs is critical, with the Commission
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`and numerous courts rejecting substantial similarity findings where the ordinary observer would
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`exercise a “greater degree of care” when inspecting the designs.8
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`Here, the undisputed evidence shows that the ordinary observer of automotive lamps
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`would exercise a greater degree of care—Kia admitted that the ordinary observer “would closely
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`inspect” replacement lamps.9 Further, the record evidence shows that purchasers of automotive
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`lamps are mostly institutional buyers, such as manufacturers, dealers, distributors, body shops,
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`and retailers, as well as some individual customers who purchase for DIY repairs.10
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`Yet Kia submitted no evidence showing how this ordinary observer would perceive the
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`claimed and accused designs. The patent figures, SCORE drawings, and accused product photos
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`do not explain how the ordinary lamp buyer would view the designs. Kia cited testimony from its
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`expert Schiavone,11 but it is conclusory.12 For example, Kia identified his below testimony as
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`evidence supporting alleged infringement of the ’764 patent:13
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`Q. What’s going on in slide 100?
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`A.
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`’764 Patent.
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`Q.
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`Okay. Next slide. Okay, if we can just take a second here to pause, and
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`7 Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1322 (Fed. Cir. 2007),
`abrogated on other grounds by Egyptian Goddess, 543 F.3d 665 (cleaned up).
`8 Certain Elec. Digital Media Devices & Components Thereof, Inv. No. 337-TA-796, Comm’n
`Op. at 11, 20 (Sept. 6, 2013); see also Arminak, 501 F.3d at 1324 (affirming noninfringement
`where ordinary observer was “the contract or industrial buyer . . . not the retail purchasers of the
`finished product”).
`9 FID at 26 (quoting Tr. (Schiavone) at 279:8–18).
`10 See CIB (May 2, 2022) at 13; Tr. (Newman) 358:5–359:21; Tr. (Jude) 329:6–12, 335:8–14.
`11 Complainants’ Resp. at 13–14.
`12 See FID at 33 (finding Schiavone infringement testimony conclusory).
`13 See Complainants’ Resp. at 14 (citing Tr. (Schiavone) at 199:9–200:5).
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`then go to the next slide. Okay. Then pause and go to the next slide. And
`then one more slide. Okay. Then back to Figure 1. Okay, Mr. Schiavone,
`we’ve just looked at several slides. Could you explain what we saw.
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`A. We saw corresponding views of the ’764 Patent compared to the TYC
`representative accused part.
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`Q.
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`A.
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`Q.
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`A.
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`Q.
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`A.
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`If an ordinary observer looked at all seven figures, and looked at the
`design as a whole, how would he view these two designs?
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`The ordinary observer would see no difference and find
`fundamentally the same.
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`them
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`For the record, JX-0399 are the ’762 Patent SCORE drawings. Did you
`review those Mr. Schiavone?
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`I did.
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`The accused product photos are located at CX-0479, RX-1219, and RX-
`2300. Did you review those photos?
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`Yes, I did.14
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`This conclusory testimony does not explain why an ordinary observer would find the designs
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`substantially similar and therefore cannot support infringement findings.15
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`Indeed, the ALJ rejected Schiavone’s infringement testimony.16 Kia ignores this finding
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`and relies on a footnote from the FID purporting to rely on this testimony if the Commission
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`requires expert testimony.17 But “[c]onclusory expert testimony does not qualify as substantial
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`evidence,”18 so Schiavone’s testimony cannot support any infringement findings here.19
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`14 Tr. (Schiavone) at 199:8–200:5.
`15 See Resp’ts’ Resp. at 4–6 (collecting cases).
`16 FID at 33.
`17 See Complainants’ Resp. at 15 (quoting FID at 46 n.11).
`18 TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019); see also Certain
`Audio Players & Controllers, Components Thereof, & Prods. Containing Same, Inv. No. 337-
`TA-1191, ID at 99 (Aug. 13, 2021) (“Conclusory assertions without additional evidence cannot
`support a finding of infringement.”).
`19 Further, Schiavone admitted that he failed to “discount the similarities that were common to
`the prior art when [he was] comparing the accused product and the patented design . . .” (Tr.
`(Schiavone) at 281:1–5), such that his infringement analysis is wrong as a matter of law, see
`Egyptian Goddess, 543 F.3d at 676 (“When the differences between the claimed and accused
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`Kia also relies on Schiavone’s testimony—and for three patents, demonstratives—
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`concerning nonobviousness,20 but this evidence does not address the accused products, and it is
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`irrelevant to infringement. Obviousness must “be assessed from the viewpoint of an ordinary
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`designer,” not an “ordinary observer,”21 and Schiavone purported to apply that standard.22 This
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`testimony thus cannot inform how an ordinary observer would perceive the designs at issue.
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`Kia’s only other record citations are to its cross-examination of Respondents’ expert
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`Baker regarding the ’701 and ’931 patents,23 but those citations each address a comparison of
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`only one patent figure to one accused product photo, and such comparisons are legally
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`improper.24 In KeyStone Retaining Wall Systems Inc. v. Westrock, Inc., the Federal Circuit
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`rejected an argument that “only the front face” of a patented block design “should have been
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`considered for infringement purposes” because “one cannot establish design patent infringement
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`by showing similarity of only one part of a patented design if the designs as a whole are
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`substantially dissimilar.”25 Here, Baker testified that ordinary observers “[l]ooking at all the
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`views . . . would not think one to be the other.”26 Kia’s citation of his testimony comparing a
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`design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will
`be drawn to those aspects of the claimed design that differ from the prior art.”).
`20 See Complainants’ Resp. at 13–14 (citing Tr. (Schiavone) at 534:24–536:8, 536:22–537:24,
`538:10–540:19, 541:15–25; 542:18–543:1; 543:22–544:7; 547:23–548:4; 549:1–10; 550:13–
`551:3; 552:21–553:14; 554:22–555:5; 556:1–25; 558:1–14; 559:15–560:3; 561:10–562:5; 563:23–
`565:15; CDX-0003C at 46–50, 66–67, 75–76, 93–94).
`21 High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313 (Fed. Cir. 2013) (error for
`court to assess obviousness under the ordinary observer standard); see also Egyptian Goddess,
`543 F.3d at 679 n.1 (distinguishing obviousness from infringement inquiries).
`22 See, e.g., Tr. (Schiavone) at 557:19–24 (testifying that “ordinary designer would not see . . .
`[the claimed and prior art designs] as having the same impression”).
`23 See Complainants’ Resp. at 10, 12, 13.
`24 See Tr. (Baker) at 495:5–22 (testifying about comparison of Fig. 1 from ’701 patent to single
`photo of lamp, RX-1208.0002), 497:13–23 (testifying about comparison of Fig. 1 from ’931
`patent to single photo of lamp, RX-1210.0002).
`25 997 F.2d 1444, 1450 (Fed. Cir. 1993).
`26 Tr. (Baker) at 516:7–14; see also id.at 516:25–517:8.
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`single patent figure to a single product photo is therefore misleading and improper.
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`2.
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`Kia fails to answer the Commission’s question as to what evidence is
`required aside from side-by-side images
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`Kia attempts to excuse its lack of evidence by arguing that expert testimony is
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`unnecessary for design patents and can be “especially problematic,”27 but this is incorrect.
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`Where, as here, designs pertain to specialty products that the ordinary observer “would closely
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`inspect,” proving infringement requires reliable evidence that informs how that ordinary observer
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`would perceive the designs, including differences, in light of prior art.28
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`Kia’s authority does not say otherwise. It first cites three cases involving utility patents,29
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`but none address the burden of proof concerning the ordinary observer test. And although design
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`patent infringement is a question of fact,30 all three cases concerned questions of law.31 Kia then
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`cites cases stating that the ordinary observer is not an expert,32 but these cases also define the
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`ordinary observer as someone “of ‘ordinary acuteness’ who is a ‘principal purchaser’ of the
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`underlying articles with the claimed designs”33 and who is familiar with the prior art.34
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`27 Complainants’ Resp. at 3.
`28 See supra Section II.A.1; see also Resp’ts’ Resp. at 8–9, 14.
`29 See Complainants’ Resp. at 2 (citing Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261,
`1270 (Fed. Cir. 1986); Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir.
`1984); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1239 (Fed. Cir. 2009)).
`30 See Egyptian Goddess, 543 F.3d at 682.
`31 See Moleculon, 793 F.2d at 1270–1273 (reviewing district court’s claim construction); Union
`Carbide, 724 F.2d at 1573 (noting that “the issue of obviousness [i]s one of law on which [the
`appellate court] must exercise independent judgment”); Perfect Web, 587 F.3d at 1330–1331
`(affirming summary judgment of obviousness based on common sense where person of ordinary
`skill had “only a high school education and limited marketing and computer experience”).
`32 See Complainants’ Resp. at 3 (quoting Egyptian Goddess, 543 F.3d at 670; Smith v. Whitman
`Saddle Co., 148 U.S. 674, 679–80 (1871); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d
`1312, 1337 (Fed. Cir. 2015)).
`33 Ethicon Endo-Surgery, 796 F.3d at 1337 (quoting Gorham, 81 U.S. at 528) (affirming
`summary judgment of noninfringement and noting district court found the ordinary observer was
`“a sophisticated entity who managed the complex medical device purchasing process”).
`34 Whitman Saddle, 148 U.S. at 682 (assessing infringement in context of prior art saddle
`designs); Egyptian Goddess, 543 F.3d at 676 (explaining case law “as applying a version of the
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`Importantly, none of these cases suggests that side-by-side images of the claimed and accused
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`designs suffice to prove infringement where the ordinary observer is a buyer of specialty
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`products, such as automotive lamps, who closely inspects the designs.
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`3.
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`Crocs does not support Kia’s failures to submit a written explanation
`of its infringement bases and nonconclusory evidence
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`Kia also heavily relies on Crocs, Inc. v. ITC,35 but it is inapposite. There, the Federal
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`Circuit reversed infringement and technical prong determinations that relied on “a detailed verbal
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`claim construction,” which erroneously included elements not required by the claimed design.36
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`Kia twists this claim construction ruling into license not to “provide a written description
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`in its prehearing or post-hearing briefs discussing how the accused products and each asserted
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`patent are substantially the same from the perspective of the ordinary observer.”37 But Crocs
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`does not suggest that written discussions of design patent infringement should be eschewed
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`altogether, and the decision itself includes a written explanation for why the ordinary observer
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`would find the designs at issue substantially similar.38 And Crocs did not address what a design
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`patentee must do to prove infringement or hold that conclusory evidence and argument suffice.
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`Kia also relies on Crocs as supporting the ALJ’s infringement determinations based only
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`on side-by-side comparisons of the claimed and accused designs,39 but the case differed
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`factually. There, the products at issue (foam footwear) were everyday consumer goods that had a
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`particularly well-known design. Here, by contrast, the products at issue are specialty goods
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`ordinary observer test in which the ordinary observer is deemed to view the differences between
`the patented design and the accused product in the context of the prior art”).
`35 See Complainants’ Resp. at 3–6, 17–18 (discussing 598 F.3d 1294 (Fed. Cir. 2010)).
`36 See Crocs, 598 F.3d at 1303; see also id. at 1297 (noting that the Commission “erred in claim
`construction”).
`37 Complainants’ Resp. at 17.
`38 See Crocs, 598 F.3d at 1306 (describing the “overall effects” shared by the claimed and
`accused designs).
`39 Complainants’ Resp. at 15–16.
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`(automotive lamps) that the ordinary observer “would closely inspect.” Crocs thus does not
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`suggest that side-by-side comparisons alone amount to substantial evidence of infringement
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`where the ordinary observer exercises a “greater degree of care.”40
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`4.
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`Kia’s conduct undermines its arguments
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`Moreover, Kia’s own conduct undermines its claims as to the sufficiency of its
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`infringement evidence and argument. Although Kia now asserts that it could forgo reliable expert
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`testimony,41 it did try to submit expert testimony during the evidentiary hearing as to the reasons
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`why an ordinary observer would supposedly find the designs substantially similar.42 But the ALJ
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`sustained Respondents’ objections to this testimony as untimely, noting to Kia, “I guess you can
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`let me know how you want to proceed because I know this may be a large issue for you . . .”43
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`Kia also asserts that it could omit a written explanation of its infringement positions from
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`its pre- and post-hearing briefs, but its Response gives the game away. While those briefs
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`included only unannotated side-by-sides of the patent figures and accused product photos, Kia’s
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`Response now provides annotated side-by-sides of exemplary patents and select views that argue
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`substantial similarity.44 These new annotations are both untimely and improper, as they do not
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`account for all views of those designs or address the ordinary observer’s perspective.45
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`B.
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`Kia’s Response to Question 2 Asserts a New, Incorrect Copying Argument
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`In response to Question 2, Kia admits that the only evidence it submitted to satisfy the
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`technical prong was the asserted patents, SCORE drawings, photos of a single DI Product for
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`40 See Elec. Digital Media Devices, Inv. No. 337-TA-796, Comm’n Op. at 11, 20; Arminak, 501
`F.3d at 1324.
`41 See Complainants’ Resp. at 15–16.
`42 See Resp’ts’ Resp. at 26.
`43 See id. at 26–27 (quoting Tr. (Schiavone) at 112:1–15).
`44 See Complainants’ Resp. at 9–12.
`45 See id.
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