Trials@uspto.gov
`571-272-7822
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`Paper 13
`Date: April 16, 2020
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`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.
`____________
`
`PGR2020-00003
`Patent D847,703 S
`____________
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 13
`Date: April 16, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LKQ CORPORATION and
`KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
`Petitioner,
`
`v.
`
`GM GLOBAL TECHNOLOGY OPERATIONS LLC,
`Patent Owner.
`____________
`
`PGR2020-00003
`Patent D847,703 S
`____________
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`PGR2020-00003
`Patent D847,703 S
`
`
`I.
`
`INTRODUCTION
`Background and Summary
`A.
`LKQ Corporation and Keystone Automotive Industries, Inc.
`
`(collectively, “Petitioner”)1 filed a Petition requesting post-grant review of
`U.S. Patent No. D847,703 S (“the ’703 patent,” Ex. 1001). Paper 2 (“Pet.”).
`The Petition challenges the patentability of the sole design claim of the ’703
`patent. GM Global Technology Operations LLC (“Patent Owner”)2 filed a
`Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”).
`
`A post-grant review may be instituted only if “the information
`presented in the petition . . . demonstrate[s] that it is more likely than not
`that at least 1 of the claims challenged in the petition is unpatentable.”
`35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence
`presented by Petitioner and Patent Owner, we determine, for the reasons set
`forth below, that Petitioner has failed to demonstrate that it is more likely
`than not that the challenged claim is unpatentable based on the grounds
`presented. Therefore, we do not institute a post-grant review of that claim.
`
`Related Proceedings
`B.
`One or both parties identify, as matters involving or related to
`
`the ’703 patent, Patent Trial and Appeal Board cases IPR2020-00062
`(US D811,964 S), IPR2020-00063 (US D828,255 S), IPR2020-00064
`(US D823,741 S), IPR2020-00065 (US D813,120 S), PGR2020-00002
`
`
`1 Petitioner identifies LKQ Corporation and Keystone Automotive
`Industries, Inc. as real parties-in-interest. Pet. 4.
`2 Patent Owner identifies General Motors LLC and GM Global Technology
`Operations LLC as real parties-in-interest. Paper 4, 2.
`2
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`PGR2020-00003
`Patent D847,703 S
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`(US D847,043 S), PGR2020-00004 (US D840,306 S), and PGR2020-00005
`(US D841,532 S). Pet. 4–5; Paper 4, 2.
`
`The ’703 Patent and the Claim
`C.
`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 ’703 patent is titled “Vehicle Rear Bumper,” and issued
`May 7, 2019, from U.S. Application No. 29/609,012, filed June 27, 2017.3
`Ex. 1001, codes (21), (22), (45), (54). The claim recites “[t]he ornamental
`design for a vehicle rear bumper, as shown and described.” Id., code (57).
`The drawings of the claim depict the claimed bumper mounted on a vehicle
`
`3 Because the earliest possible effective filing date for the ’703 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`the America Invents Act) and this petition was filed within 9 months of its
`issue date, the ’703 patent is eligible for post-grant review. See 35 U.S.C.
`§ 321(c).
`
`3
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`Patent D847,703 S
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`with the vehicle and certain aspects of the bumper illustrated as unclaimed
`by broken lines. See id. (“The broken lines in the drawings illustrate
`portions of the vehicle rear bumper that form no part of the claimed
`design.”). The ’703 patent contains four figures, which are reproduced
`below.
`
`
`
`
`
`
`
`Ex. 1001. Figures 1–4 above depict, respectively, the following views of the
`claimed vehicle rear bumper design: a front and left side perspective view, a
`front view, a left side elevation view, and a bottom view. Id., code (57).
`
`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. The parties each, in
`offering a proposed claim construction, identify certain features that
`contribute to the overall appearance of the claimed design. See Pet. 12–16;
`Prelim. Resp. 8–18; see also Exs. 1003 ¶¶ 32–36, 1004 ¶¶ 30–34
`
`4
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`Patent D847,703 S
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`(Petitioner’s declarants’ opinion testimony). Although the parties identify
`some of the same features, Patent Owner argues that Petitioner “addresses
`the design’s claimed features at such a high level of abstraction that it fails
`to accurately portray the invention[,] . . . focus[es] on design concepts, rather
`than the nuances of the claimed design, [and] . . . ignores multiple, readily
`apparent differences between the claimed invention and the purported prior
`art.” Prelim. Resp. 1. We discuss here only some of the features identified
`by the parties.
`1. Cutouts
`Both parties identify cutouts in the lower perimeter line of the bumper
`
`as a pertinent feature of the design. Pet. 16; Prelim. Resp. 11–12. Petitioner
`provides annotated Figures, including the following annotated version of
`Figure 2, to visually identify the referenced feature.
`
`
`Pet. 16. The depiction above is an annotated version of Figure 2 with the
`addition of arrows pointing to those features that Petitioner calls “geometric
`cutouts.” Id.
`
`Patent Owner argues that Petitioner’s “generic characterization” of the
`feature as “geometric” “ignor[es] the unique design elements of this claimed
`feature” and “does not adequately describe the claimed invention.” Prelim.
`Resp. 12. Patent Owner provides the following demonstrative exhibit to
`visually explain what it contends are the important aspects of the specific
`cutout configuration. Id. at 11–12.
`
`5
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`Patent D847,703 S
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`Id. at 12. The depiction above is Figure 2 of the claimed design with an
`enlarged view of a cutout with annotations identifying the sides as “a”
`through “e.” Patent Owner agrees that “[t]he claimed design has two
`geometric cutouts” but goes further with its description, asserting that:
`[Each cutout has] multi-angled perimeter edges coalescing into
`framing contour lines of the bumper, which together create the
`bold, fluid appearance of the claimed design. As shown
`[above] in annotated FIG. 2, the upper perimeter edges (b and
`d) are angled at about 45 degrees, and lower perimeter edges (a
`and e) are angled to a lesser degree relative to a vertical axis.
`The upper and lower perimeter edges together create an
`opening that forms a gradual, enlarged opening at the bottom
`edge of the bumper. Further, the contoured surface extends
`around the cutout shapes nearly parallel to the b and c surfaces
`(left-side cutout) or to the c and d surfaces (right-side cutout).
`Id. at 11–12. For purposes of this decision, we need not adopt Patent
`Owner’s characterization in its entirety, but we do agree that Petitioner’s
`verbal description is inadequate. 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, Petitioner’s verbal
`description in this case does not go far enough. Petitioner’s characterization
`of the feature as a “geometric cutout” is too general and is not an adequate
`
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`Patent D847,703 S
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`verbal description of the visual appearance of the claimed design. For
`example, in addition to Patent Owner’s observation that the sides of the
`cutout are nearly parallel to the surrounding surface contours, we observe
`that the sides of the cutout that are angled at approximately forty-five
`degrees (sides b and d) are nearly parallel to the walls of the inset openings
`at the ends of the bumper.
`2. Negative Space/Inset Openings
`Both parties identify “negative spaces” (Petitioner’s term) or “inset
`
`openings” (Patent Owner’ term) at the bumper’s outer corners as a pertinent
`feature of the design. Pet. 14; Prelim. Resp. 13–14. We, herein, refer to that
`feature as inset openings. Petitioner provides annotated figures, including
`the following annotated version of Figure 2, to visually identify the
`referenced feature.
`
`
`
`Pet. 14. The depiction above is an annotated version of Figure 2 with
`Petitioner’s addition of arrows to indicate the inset openings. Id.
`
`Patent Owner argues that “[Petitioner’s] characterization of the
`‘negative space at the outer corners of the bumper’ does not acknowledge
`the overall shape of the inset opening defined by the bumper and thus fails to
`acknowledge its unique design features.” Prelim. Resp. 13. Patent Owner
`supplies its own annotated figure, which is reproduced below.
`
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`Id. at 13. The figure above is an annotated select portion of Figure 2 of the
`challenged patent with blue shading of the area bounded by the solid line
`perimeter. According to Patent Owner, “[t]he claimed design has a unique
`inset opening defined by curved edges and angled edges of varying degrees
`along its unique-shaped perimeter.” Id. at 13.
`
`Patent Owner argues that Petitioner over-simplifies the claimed design
`and that this “obscures the complex geometry associated with the claimed
`design, effectively ignoring the claimed features.” Id. at 14. Patent Owner
`further argues that “[t]hese unique features accent key portions of the
`vertical face that affects the overall shape of the claimed bumper and
`contributes to its bold and aerodynamically fluid visual appearance.” Id.
`at 14.
`For purposes of this decision, we again need not adopt Patent Owner’s
`
`characterization in its entirety, but we do agree that Petitioner’s verbal
`description does not go far enough. We agree that Petitioner’s verbal
`description is an over-simplification. Petitioner’s characterization of the
`feature merely as “negative space at the outer corners” is not an adequate
`verbal description of the appearance of the claimed design. The perimeter of
`each inset opening of the claimed design has multiple curved and angled
`lines.
`
`3. Surface Contour
`Patent Owner contends that there is an important design feature that is
`
`not addressed in the Petition. Specifically, Patent Owner argues that
`
`8
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`Patent D847,703 S
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`Petitioner “fails to accurately convey the overall shape and dimensions of
`the rear bumper by ignoring surface contour lines in the claimed design,
`depicted by solid lines.” Prelim. Resp. 9. In that regard, Patent Owner
`asserts that “[t]he claimed design also includes vertical contour lines that . . .
`denote its non-planar exterior contours,” and provides the following
`annotated version of Figure 1.
`
`
`Prelim. Resp. 10. Above is Figure 1 of the ’703 patent annotated by Patent
`Owner to highlight the straight-line surface shading indicating contoured
`surfaces. Cf. 37 C.F.R. § 1.152 (“Appropriate and adequate surface shading
`should be used to show the character or contour of the surfaces
`represented.”). According to Patent Owner:
`[T]he claimed contoured surface forms a protruding lower
`portion . . . that extends along the length of the bumper from
`one cutout to the other cutout, surrounding and mimicking the
`outward-angled shape of the cutout portions so as to accentuate
`these features. This protrusion significantly contributes to the
`overall visual appearance of the ’703 Patent’s design.
`Prelim. Resp. 10.
`
`We observe that the protrusion yielded by the surface contour is
`readily discernable in Figure 3 of the ’703 patent, an annotated version of
`which is reproduced below.
`
`9
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`The image above is a left side elevation view of the claimed design with our
`annotation in the form of an arrow pointing to the protrusion.
`
`Petitioner, in the context of describing the claimed design, submits
`into evidence a “photograph of the 2020 Chevrolet Silverado” (Ex. 1005),
`reproduced below, which Petitioner contends shows the commercial
`embodiment of the claimed design of the ’703 patent. Pet. 10 (citations
`omitted).
`
`
`Above is a photograph of the rear portion of a truck that Petitioner represents
`is the 2020 Chevrolet Silverado. Id. In this photograph, a surface contour in
`the form of a protrusion at the lower portion of the bumper is readily
`discernable.
`
`10
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`Evidence
`D.
`Petitioner relies on the following references4:
`Reference
`
`Michael Harley, 2014 GMC Sierra, Autoblog (June 12, 2013),
`https://www.autoblog.com/2013/06/12/2014-gmc-sierra-review-
`first-drive/, archived on June 15, 2013 by the Internet Archive
`organization’s “Wayback Machine” at https://
`web.archive.org/web/20130615234717/https://www.autoblog.com/
`2013/06/12/2014-gmc-sierra-review-first-drive/.
`2014 GMC Sierra brochure (accessed August 21, 2019)
`https://media.gm.com/dld/content/Pages/news/us/en/2012/Dec/
`1213-2014-sierra/_jcr_content/rightpar/sectioncontainer_2/
`par/download_1/file.res/2014_GMC_Sierra.pdf
`2012 Cadillac Escalade brochure (accessed August 13, 2019),
`http://www.motorologist.com/wpcontent/uploads/
`2012-cadillac_escalade_brochure.pdf
`Tim Healey, Review: 2012 Cadillac Escalade ESV, Web2Carz
`(November 15, 2011), https://www.web2carz.com/cadillac/
`escalade-esv/2012/3/review, archived on July 21, 2012 by the
`Internet Archive organization’s “Wayback Machine” at
`http://web.archive.org/web/20120721181646/https://
`www.web2carz.com/cadillac/escalade-esv/2012/3/review
`Ford Atlas Concept Truck, FordF150.net,
`https://www.fordf150.net/atlas-concept/, archived on January 20,
`2013 by the Internet Archive organization’s “Wayback Machine”
`at http://web.archive.org/web/20130120060450/https://
`www.fordf150.net/atlas-concept/
`
`Exhibit
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`4 We adopt, for purposes of this decision only, Petitioner’s descriptions of
`the references. See Pet. v–vi (Table of Exhibits), 17 (identification of
`evidence relied upon). We make no substantive determinations regarding
`Petitioner’s descriptions and representations. We also make no
`determinations regarding Petitioner’s evidentiary arguments and we need not
`address Petitioner’s request for the Board to “take official notice of the facts
`reflected in the screenshots of the archived webpages.” Id. at 44–45 n.3.
`11
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`Patent D847,703 S
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`Petitioner also relies on the Declarations of James M. Gandy
`
`(Ex. 1003) and Jason C. Hill (Ex. 1004) in support of its arguments.
`
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that the sole design claim of the ’703 patent is
`
`unpatentable on the following grounds (Pet. 17):
`Claim(s) Challenged
`35 U.S.C. §
`1
`103
`
`Reference(s)/Basis
`2014 GMC Sierra (Exs. 1006,
`1007), 2012 Cadillac Escalade
`(Exs. 1008, 1009)5
`2014 GMC Sierra (Exs. 1006,
`1007), Ford Atlas Concept
`Truck (Ex. 1010)
`
`1
`
`103
`
`II. ANALYSIS
`A. Principles of Law
`“In addressing a claim of obviousness in a design patent, the ultimate
`
`inquiry is whether the claimed design would have been obvious to a designer
`of ordinary skill who designs articles of the type involved.” Apple, Inc. v.
`Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal quotation
`and citations omitted); see also High Point Design, 730 F.3d at 1313 (“The
`use of an ‘ordinary observer’ standard to assess the potential obviousness of
`a design patent runs contrary to the precedent of this court and our
`predecessor court, under which the obviousness of a design patent must,
`instead, be assessed from the viewpoint of an ordinary designer.”).6 This
`
`5 As discussed further below, Petitioner identifies two exhibits as the
`“Primary” reference (2014 GMC Sierra) for both grounds, and two exhibits
`as the “Secondary” reference (2012 Cadillac Escalade) for the first ground.
`See Pet. 17.
`6 Petitioner incorrectly applies the ordinary observer standard in its
`obviousness analysis. Pet. 42, 47–48 (citing in Int’l Seaway Trading Corp.
`12
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`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 and
`citations omitted). In performing the first step, we must “(1) discern the
`correct visual impression created by the patented design as a whole; and
`(2) determine whether there is a single reference that creates basically the
`same visual impression.” Id. at 1312 (internal quotation and citations
`omitted). In the second step, 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. In re
`Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993); see also Apple, Inc. v.
`
`
`v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009)). “[T]he court [in
`Int’l Seaway] could not rewrite precedent setting forth the designer of
`ordinary skill standard.” High Point Design, 730 F.3d at 1313 n.2.
`13
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`Samsung Elec. Co., 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.”).
`
`
`
`The Designer of Ordinary Skill
`B.
`Petitioner contends that:
`a designer of ordinary skill would be an individual who has at
`least an undergraduate degree in transportation or automotive
`design and has work experience in transportation or automotive
`design, or someone who has several years’ work experience in
`transportation or automotive design.
`Pet. 27 (citing Ex. 1003 ¶ 40; Ex. 1004 ¶ 38). Patent Owner argues, without
`citation to evidence, that:
`[a] designer of ordinary skill in the art relevant to the ’703
`Patent would have at least an undergraduate degree in
`automotive design, or other related industrial design field, with
`at least two years of relevant practical experience in designing
`automotive body parts. An increase in experience could
`compensate for less education, and an increase in education
`could likewise compensate for less experience.
`Prelim. Resp. 8. The parties do not identify, and we do not discern, any
`material difference between the parties’ proposed definitions. For purposes
`of this decision and on the record currently before us, which includes
`testimony by Petitioner’s witnesses, we adopt Petitioner’s proposed
`definition of the ordinary designer.
`
`The Alleged Obviousness of the Claim
`C.
`Over the 2014 GMC Sierra and the 2012 Cadillac Escalade
`Petitioner alleges that the claimed design of the ’703 patent would
`
`have been obvious over the 2014 GMC Sierra and the 2012 Cadillac
`Escalade. See Pet. 29–43. Specifically, Petitioner focuses on the design
`features that it identified in its proposed claim construction and argues “there
`
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`is a primary reference, Patent Owner’s 2014 GMC Sierra, which is ‘a single
`reference, a something in existence, the design characteristics of which are
`basically the same as the claimed design.’” Id. at 29 (quoting Durling, 101
`F.3d at 103; citing In re Rosen, 673 F.2d 388, 391 (CCPA 1982)) (emphasis
`and internal quotation marks omitted). Petitioner further argues that “[a]ny
`differences between Patent Owner’s 2014 GMC Sierra and the claimed
`design of the ’703 Patent are de minimis and/or suggested by the secondary
`reference—the 2012 Cadillac Escalade.” Id. (citations omitted). Petitioner
`also argues that “[t]he single missing element that is not a de minimis
`difference (the geometric cutouts) is easily found in the [2012 Cadillac
`Escalade].” Id. at 3.
`
`Patent Owner argues that “[t]he Board should deny institution because
`[Petitioner] LKQ’s claim construction is based on generic design concepts,
`rather than addressing the features of the claimed design.” Prelim. Resp. 8
`(citations omitted). Patent Owner further argues that Petitioner, in
`comparing the claimed design to the prior art references, “ignores specific
`features that contribute to the overall shape and dimensions of the claimed
`design.” Id. at 16 (citations omitted). For the reasons discussed below, we
`find Patent Owner’s position to be persuasive.
`1. 2014 GMC Sierra (Ex. 1006, Ex. 1007)
`The identity of the primary reference is unclear. Petitioner articulates
`
`the grounds using the phrase “2014 GMC Sierra” and labels two documents,
`Exhibits 1006 and 1007, as the “Primary” reference. See, e.g., Pet. 17. In
`arguing that the primary reference is prior art to the challenged patent,
`Petitioner refers to: the “2014 GMC Sierra” as “prior art,” the two exhibits
`as plural “depictions” of the Sierra, and a singular “publication date” of
`these “depictions.” Pet. 30; see also id. at 29 (characterizing “2014 GMC
`
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`Sierra” as “a single reference”), 31 (arguing that “Patent Owner’s 2014
`GMC Sierra [is] a proper, primary Rosen reference.”). Thus, Petitioner may
`be utilizing, as the primary reference, a combination of two purported
`printed publications or the physical Sierra truck itself. For purposes of this
`decision, we need not resolve that uncertainty. For purposes of this decision,
`we, like the parties, treat both of the two exhibits identified by Petitioner as
`constituting the primary reference, the 2014 GMC Sierra. See, e.g., Pet. 17
`(labeling both Exhibit 1006 and Exhibit 1007 as “Primary”); Prelim. Resp.
`18–22 (citing both Exs. 1006, 1007).
`
`Reproduced below are excerpts from Exhibits 1006 and 1007.
`
`
`On the left above is a rear view of bumper of the 2014 GMC Sierra. See
`Pet. 2 (reproducing the above cropped photograph from Ex. 1006, 1). On
`the right above is a perspective view of the rear bumper of the 2014 GMC
`Sierra. Ex. 1007, 10 (as cropped).
`2. 2012 Cadillac Escalade (Ex. 1008, Ex. 1009)
`As with the primary reference, Petitioner identifies two exhibits,
`
`Exhibits 1008 and 1009, as the singular secondary reference, the 2012
`Cadillac Escalade. Pet. 17. For purposes of this decision, we treat both of
`the exhibits as constituting the secondary reference, the 2012 Cadillac
`Escalade. See Ex. 1008, 17; Ex. 1009, 1; cf. Pet. 41 (citing Exs. 1008,
`1009); Prelim. Resp. 26 (depicting a cropped and magnified select portion of
`a photograph that appears to be from either Exhibit 1008 or Exhibit 1009).
`Reproduced below is an illustrative photograph of the Escalade’s bumper.
`
`16
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`Pet. 3 (citing Ex. 1008, 17; Ex. 1009, 1)7. The text associated with the
`Petitioner’s relied-upon photo of the Escalade states, “[t]he dual-outlet
`stainless-steel exhaust’s bold, rectangular tips are seamlessly integrated in
`the rear bumper.” Ex. 1008, 17.
`3. Analysis of Petitioner’s Challenge to the Claim as Being
`Obvious Over the 2014 GMC Sierra and the 2012 Cadillac
`Escalade
`Petitioner argues that “Patent Owner’s 2014 GMC Sierra discloses a
`
`vehicle rear bumper with basically the same overall visual appearance as the
`claimed design in the ‘703 Patent, which makes Patent Owner’s 2014 GMC
`Sierra a proper, primary Rosen[8] reference.” Pet. 31 (citations omitted).
`Petitioner identifies the lack of “geometric cutouts” in the Sierra bumper as a
`difference between the primary reference and the claimed design. Id. at 40.
`Petitioner addresses this difference in arguing,
`the secondary reference [the 2012 Cadillac Escalade] suggests
`the slight modification of adding the integrated squared cutouts
`to Patent Owner’s undisclosed 2014 GMC Sierra . . . [and] a
`hypothetical prior art created by combining the base of Patent
`
`7 The photograph shown is from the Petition and appears to be either the
`photograph on page 17 of Exhibit 1008 or a cropped version of the
`photograph on page 1 of Exhibit 1009.
`8 In the context of design patent law, a proper primary, or Rosen, reference is
`“something in existence, the design characteristics of which are basically the
`same as the claimed design.” In re Rosen, 673 F.2d 388, 391 (CCPA 1982).
`17
`
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`
`Owner’s 2014 GMC Sierra with the geometric cutouts of Patent
`Owner’s 2012 Cadillac Escalade would have an overall
`appearance that is substantially the same as the ’703 Patent.
`Id. at 42.
`
`Petitioner’s analysis of the claimed design is exemplified in the
`following quote: “[T]he design elements of the ’703 Patent are nothing
`new—all of these elements (the center depression area; the negative spaces
`at the outer corners of the bumper; the scalloped lower perimeter line; and
`the geometric cutouts) are easily found within the prior art.” Pet. 2. We do
`not find Petitioner’s arguments persuasive because Petitioner focuses on
`design concepts rather than actual appearances and specific design
`characteristics. See In re Harvey, 12 F.3d at 1064; see also Apple, Inc. v.
`Samsung Elec. Co., 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.”); Prelim.
`Resp. 8 (“The Board should deny institution because [Petitioner] LKQ’s
`claim construction is based on generic design concepts, rather than
`addressing the features of the claimed design.”).
`
`Patent Owner argues that Petitioner has failed to analyze adequately
`several features of the claimed design that distinguish it from the primary
`reference, the 2014 GMC Sierra, and from Petitioner’s proposed
`combination where that primary reference is modified to have the cutouts of
`the 2012 Cadillac Escalade. Prelim. Resp. 16, 26–27; see id. at 8–9 (Patent
`Owner arguing that “[Petitioner] ignores or mischaracterizes at least four
`distinctive features of the claimed design, and fails to analyze all of the
`views provided by the’703 Patent, obscuring critical features as a result.”
`
`18
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`(emphasis omitted)). We only discuss here an exemplary number of features
`identified by Patent Owner and their impact on the overall design.
`a. Surface Contour
`Patent Owner argues that the claimed design has surface contour lines
`
`and an associated protrusion, and contends that Petitioner has failed to
`address this feature. Prelim. Resp. 9–11, 17–19. According to Patent
`Owner, “the claimed design has a series of contour lines on the exterior
`surface that accent select portions of the vertical face of the bumper, creating
`a multi-dimensional, stylized look[.]” Id. at 17. Patent Owner further
`argues that, “[i]n contrast, the 2014 GMC Sierra’s bumper has a planar
`vertical face that lacks both a horizontal contour line as well as an elongate
`protrusion along the lower portion of the bumper.” Id.
`
`As mentioned above, a protrusion is readily discernable in the side
`view of the claimed design, an annotated version of which is reproduced
`again below.
`
`
`The image above is a left side elevation view of the claimed design with our
`annotation in the form of an arrow pointing to the protrusion.
`
`19
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`Patent D847,703 S
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`To assist in a comparison of the appearance of the bumper of the
`
`claimed design and of the primary reference, the 2014 GMC Sierra, the
`perspective views of both are shown below.
`
`
`Shown above, on the left, is Figure 1 of the ’703 patent and is a front and left
`side perspective view of a vehicle rear bumper of the claimed design.
`Ex. 1001, code (57). Shown above, on the right, is a perspective view of the
`bumper of the primary reference, the 2014 GMC Sierra. Ex. 1007, 3
`(cropped).
`
`We are unable to discern a discussion of this contour feature in
`Petitioner’s comparison of the claimed design to the relied-upon prior art.
`See Pet. 29–43; id. at 36 (Petitioner identifying what it characterizes as the
`only four differences between the primary reference and the claimed
`design); see also id. at 12–13 (describing the claimed design). To the extent
`that Petitioner argues that this is a de minimis feature that, therefore, needs
`no analysis, we are not persuaded. See, e.g., id. at 29 (“Any differences
`between Patent Owner’s 2014 GMC Sierra and the claimed design of the
`’703 Patent are de minimis and/or suggested by the secondary reference—
`the 2012 Cadillac Escalade—and, therefore, are not sufficient to justify a
`finding that the claimed design in the ’703 Patent is patentable.”).
`Accordingly, we determine that Petitioner does not address adequately the
`differences in appearance due to the contour lines and the protrusion. The
`bumper of the prior art has a relatively smooth profile resulting in a clean
`look, whereas the claimed design, as Patent Owner argues, has a
`
`20
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`multi-dimensional appearance. We also observe that, in the claimed design,
`certain portions of the contour are parallel to the approximately forty-five
`degree angles of the inset openings and of the exhaust pipe cutouts, resulting
`in a portion of the protrusion that carries the angular appearance of the inset
`openings through to the exhaust cutouts.
`b. Negative Spaces/Inset Openings
`For the inset openings, or “negative spaces at the outer corners,”
`
`Petitioner identifies a single difference between the inset openings of the
`primary reference, the 2014 GMC Sierra, and that of the claimed design.
`Pet. 36–37. Petitioner contends that “the negative spaces at the outer corners
`of the bumper present at slightly different angles,” and provides the
`annotated depictions reproduced below. Id. at 36–37.
`
`
`Id. at 37. Above, on the left, is an annotated and cropped version of Figure 2
`of the ’703 patent showing the inset opening of the claimed design
`(Ex. 1001) and, on the right, an annotated and cropped version of a
`photograph of the inset opening of the 2014 GMC Sierra (Ex. 1006, 1).
`Both are annotated by Petitioner to have an arrow indicating that which
`Petitioner characterizes as “slightly different angles.” Pet. 36–37.
`
`Patent Owner argues that Petitioner “fails to acknowledge the shape of
`the inset opening provided by the claimed design . . . [and] ignores the
`unique inset opening features and their contributions to the overall shape and
`
`21
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`dimensions of the claimed design.” Prelim. Resp. 21. Patent Owner
`contends, with reference to the depicti
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