Trials@uspto.gov
`571-272-7822
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`Paper 8
`Date: September 1, 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.
`____________
`
`PGR2020-00021
`Patent D853,903 S
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`571-272-7822
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`
`
`
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`
`Paper 8
`Date: September 1, 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.
`____________
`
`PGR2020-00021
`Patent D853,903 S
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`PGR2020-00021
`Patent D853,903 S
`
`
`INTRODUCTION
`
`I.
`A. Background and Summary
`Petitioners, LKQ Corporation and Keystone Automotive
`
`Industries, Inc. (collectively “Petitioner”), filed a Petition requesting post- .
`grant review of U.S. Patent No. D853,903 S (“the ’903 patent,” Ex. 1001).
`Paper 2 (“Pet.”). The Petition challenges the patentability of the sole design
`claim of the ’903 patent. Patent Owner, GM Global Technology Operation
`LLC (“Patent Owner”), filed a Preliminary Response to the Petition. Paper
`7 (“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.
`
`B. Related Proceedings
`The parties identify various other inter partes and post grant review
`proceedings that Petitioner has filed challenging different patents owned by
`Patent Owner. The parties do not state that these other proceedings affect, or
`would be affected by, this proceeding involving the ’903 patent. Pet. 6;
`Paper 5, 2.
`We point out that Petitioner raises the issue of double patenting with
`respect to U.S. Patent No. D852,099, the subject of a related request by
`Petitioner for Post-Grant Review in PGR2020-00020, in which the Board
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`denied trial review on August 10, 2020. We address the double patenting
`issue in this Decision.
`
`C. The ’903 Patent and Claim
`The ’903 patent is titled “Vehicle Grille Bezel,” and issued July
`
`16, 2019, from U.S. Application No. 29/673,782, filed Dec. 18, 2018, which
`is a division of U.S. Application No. 29/597,780, filed Mar. 20, 2017.1
`Ex. 1001, codes (21), (22), (45), (54), (62). The claim recites “[t]he
`ornamental design for a vehicle grille bezel, as shown and described.” Id. at
`code (57). The drawings of the claim depict several views of the claimed
`grille bezel with certain portions of the design shown as unclaimed by
`broken lines. See id. (“In the drawings, the portions shown in broken lines
`form no part of the claimed design.”). The ’903 design is depicted in five
`figures, which are reproduced below.2
`
`
`1 Because the earliest possible effective filing date for the ’093 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 February 7, 2020, and
`within 9 months of its issue date, the ’903 patent is eligible for post-grant
`review. See 35 U.S.C. § 321(c).
`2 We refer to the claimed design, i.e., the vehicle grille bezel shown in
`Figures 1–5, also as “the ’903 design.”
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`I
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`FIG. 1
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`Ex. 1001. Figures 1–5 above depict, respectively, the following views of the
`claimed vehicle grille bezel design: a perspective view, a front elevational
`view, a left side elevation view, a top plan view, and a bottom plan view. Id.
`at code (57).
`The parties both describe certain features that contribute to the overall
`appearance of the ’903 design. See Pet. 13–18; Prelim. Resp. 1–2; see also
`Ex. 1003 ¶¶ 34–35; Ex. 1004 ¶¶ 32–33. Petitioner contends that the claim
`can be described according to the drawings as shown by the solid lines as
`A vehicle grille bezel comprising:
`a substantially horizontal top portion terminating in a
`short, downward-pointing diagonal bezel segment at each end;
`and
`
`a substantially u-shaped bottom portion extending from
`one diagonal bezel segment to the other diagonal bezel segment;
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`wherein the substantially u-shaped bottom portion
`further includes a minimum at the center line of the bezel;
`and wherein the bezel is horizontally convexly
`curved, and the bottom of the u-shaped portion is forward
`of the substantially horizontal portion.
`
`Pet. 16–18.
`Patent Owner does not agree with Petitioner’s claim construction.
`Rather, Patent Owner contends that the proposed “claim construction is
`insufficient because it focuses on generic design concepts common to many
`vehicle grille bezels, rather than addressing the particular features of the
`claimed design.” Prelim. Resp. 20. Patent Owner further contends that
`Petitioner “ignores or mischaracterizes various distinctive features of the
`claimed design and fails to analyze all of the view provided by the ’903
`patent, ignoring critical features as a result.” Id. Patent Owner proceeds to
`outline what it considers to be errors in the Petitioner’s construction and
`requests that we deny the Petition as a result of those perceived errors. Id. at
`19–27.
`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. See 37 C.F.R. § 42.200(b) (2019). Generally in the context
`of a design patent, an illustration, rather than a verbal description, is the
`better representation of the claimed design. “As the Supreme Court has
`recognized, a design is better represented by an illustration ‘than it could be
`by any description and a description would probably not be intelligible
`without the illustration.’” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d
`665, 679 (Fed. Cir. 2008) (quoting Dobson v. Dornan, 118 U.S. 10, 14,
`(1886)). Although preferably a design patent claim is not construed by
`providing a detailed verbal description, it may be “helpful to point out . . .
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`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”).
`Here, the overall visual appearance of the vehicle grille bezel design
`shown in Figures 1–5 of the ’903 design is clearly exemplified in the
`drawings. In other words, the elements and features of the ’903 design
`which contribute to the overall appearance of the design are readily
`discernable and apparent to any observer. We determine that the best
`description of the ornamental features of the ’903 design comes from the
`drawings themselves. Accordingly, we determine that no articulated verbal
`description is necessary to describe the overall ornamental nature of the ’903
`design. Nonetheless, we have taken into account Petitioner’s verbal
`description of the design in our analysis, but agree with Patent Owner’s
`contention that Petitioner’s verbal description is an incomplete description of
`the actual design. Although we do not undertake a specific verbal
`construction, we acknowledge in our following analyses the relevant design
`characteristics of the ’903 design, including key similarities and distinctions
`in comparison to the prior art. See MRC Innovations, Inc. v. Hunter Mfg.,
`LLP, 747 F.3d 1326, 1332 (Fed. Cir. 2014) (Affirming that a verbal claim
`construction was unnecessary, the Federal Circuit explained that “the district
`court did not err by failing to provide an express verbal description of the
`claimed design; rather, it described the claimed design in the context of
`comparing it to the prior art.”).
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that the sole design claim of the ’903 patent is
`
`unpatentable on the following grounds (Pet. 19):
`
`
`Claim Challenged
`1
`1
`1
`
`35 U.S.C. §
`171
`
`103
`
`References/Basis
`Patent Exhaustion, Right-of-Repair
`Double Patenting3
`2014 Buick Enclave,4 2013 Buick
`Regal5
`2013 Buick Regal, 2013 Buick
`Enclave6
`Petitioner submits the Declaration of James M. Gandy (Ex. 1003) and
`
`the Declaration of Jason C. Hill (Ex. 1004) in support of its arguments.
`
`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
`
`
`3 Ex. 1006, U.S. Design Patent No. D852,099 S, (issued June 25, 2019).
`4 Ex. 1007–1009, “2014 Buick Enclave” (Pet. vi) (characterized as “archived
`on April 2, 2014 by Internet Archive organization’s ‘Wayback Machine.’”
`5 Ex. 1010–1012, “2013 Buick Regal” (Pet. vi–vii) (characterized as
`“archived on April 2, 2014 by Internet Archive organization’s ‘Wayback
`Machine.’”
`6 Ex. 1013, “2013 Buick Enclave” (Pet. vii) (characterized as “archived on
`April 2, 2014 by Internet Archive organization’s ‘Wayback Machine.’”
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`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.”). This
`obviousness analysis generally involves two steps: first, “one must find a
`single reference, a something in existence, the design characteristics of
`which are basically the same as the claimed design”; second, “once this
`primary reference is found, other references may be used to modify it to
`create a design that has the same overall visual appearance as the claimed
`design.” High Point Design, 730 F.3d at 1311 (internal quotation 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)).
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`When evaluating prior art references for purposes of determining
`
`patentability of ornamental designs, the focus must be on actual appearances
`and specific design characteristics rather than design concepts. In re
`Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993); see also Apple, 678 F.3d at
`1332 (“Rather than looking to the ‘general concept’ of a tablet, the district
`court should have focused on the distinctive ‘visual appearances’ of the
`reference and the claimed design.”).
`
`B. The Designer of Ordinary Skill
`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 work experience in the field of transportation design,
`or someone who has several years’ work experience in the field
`of transportation or automotive design.
`Pet. 32 (citing Ex. 1003 ¶¶ 38–39; Ex. 1004 ¶¶ 36–47). Patent Owner
`argues, without citation to evidence, that:
`[a] designer of ordinary skill in the art relevant to the ’903 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. 10–11. 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 declarants, we adopt Petitioner’s proposed
`definition of the ordinary designer. Also, we point out that adopting Patent
`Owner’s definition would not alter the outcome of this Decision.
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`C. The Ordinary Observer
`Both parties also offer definitions of an “ordinary observer.” Pet. 34–
`35; Prelim. Resp. 6–9. The “ordinary observer” test is one that arises in the
`context of either (1) anticipation of a claim of a design patent by prior art, or
`(2) infringement of the patented design by an accused product design. See
`Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238, 1240
`(Fed. Cir. 2009). Neither anticipation nor infringement is relevant to this
`proceeding, which is premised on proposed grounds of unpatentability based
`on obviousness. The ordinary observer test, however, is not without some
`role in connection with contentions of obviousness. To that end, the Federal
`Circuit has stated the following:
`For design patents, the role of one skilled in the art in the
`obviousness context lies only in determining whether to combine
`earlier references to arrive at a single piece of art for comparison
`with the potential design or to modify a single prior art reference.
`Once that piece of prior art has been constructed, obviousness,
`like anticipation, requires application of the ordinary observer
`test, not the view of one skilled in the art.
`Id. at 1240.
`According to Petitioner, “the ordinary observer should be the retail
`consumer of an automobile.” Pet. 33 (citing Ex. 1003 ¶ 37; Ex. 1004 ¶ 35).
`Neither Petitioner, nor its declarants, provide evidentiary support for the
`assessment of an ordinary observer or further elaborate as to who may
`qualify as a retail consumer of an automobile.
`Patent Owner generally does not agree with Petitioner’s position as to
`the ordinary observer. Prelim. Resp. 7–10. Patent Owner argues that “the
`ordinary observer includes commercial buyers who purchase a replacement
`vehicle grille bezel[] to repair a customer’s vehicle, such as repair shop
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`professionals.” Id. at 8. Patent Owner also contends that Petitioner has
`admitted in a related proceeding (IPR2020-00065) that “customers for
`aftermarket automotive parts primarily consist of professional auto body and
`mechanical repair shops who are knowledgeable about the automotive
`industry.” Id. (quoting IPR2020-00065, Paper 2, 21) (emphasis omitted).
`Patent Owner points out that “[b]ecause a repair shop buyer reviews and
`analyzes various products as part of his or her job duties, that buyer is
`particularly discerning.” Id.at 9; Ex. 2004, 11 (“LKQ’s customers for
`aftermarket automotive parts primarily consist of professional auto body and
`mechanical repair shops who are knowledgeable about the automotive
`industry.”) (Emphasis omitted).
`Patent Owner has presented credible arguments and evidence as to
`why the ordinary observer would be a repair shop professional. The
`evidence, however, also reveals that a retail consumer, such as the owner of
`a vehicle, may also be in the position of an ordinary observer. A vehicle
`owner may have a contract with its insurance agent that “require[s] the
`insurer to repair vehicles with parts of ‘like kind and quality’ to the OEM
`parts.” Ex. 2004, 14, see also id. at 11 (“Automobile owners seek to repair
`their automobiles in a way that returns their automobile as closely as
`possible to its original appearance and condition.”). For purposes of this
`Decision we accept that both parties’ definitions fall within the purview of
`an ordinary observer. Our analysis reaches the same result using either
`parties’ definition of the ordinary observer.
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`D. Overview of the Prior Art
`Overview of the 2014 Buick Enclave
`1.
`Petitioner relies upon the 2014 Buick Enclave, as depicted in several
`marketing brochures (Exs. 1007–1009), as the primary reference for its first
`obviousness challenge (Ground 3). Photographs from Exhibit 1007 and
`Exhibit 1008 are reproduced below.
`
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`
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`Ex. 1007, 1; Ex. 1008, 1. The image on the left above is understood to be
`front perspective view of the 2014 Buick Enclave, including its grille bezel.
`The image on the right above is understood to be a side view of the 2014
`Buick Enclave, including its grille bezel.
`Overview of the 2013 Buick Regal
`2.
`Petitioner also relies upon the 2013 Buick Regal, as presented in
`several marketing brochures (Ex. 1010–1012), for both its obviousness
`challenges. Photographs from Exhibit 1010 and Exhibit 1012 are
`reproduced below.
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`Ex. 1010, 1; Ex. 1012, 1. The top image above is understood to be front
`perspective view of the 2013 Buick Regal, including its grille bezel. The
`bottom image above is understood to be a side view of the 2013 Buick
`Regal, including its grille bezel.
`Overview of the 2013 Buick Enclave
`3.
`Petitioner relies upon the 2013 Buick Enclave, as depicted in several
`brochures (Exs. 1013–1014), as the secondary reference for its second
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`obviousness challenge (Ground 4). Photographs from Exhibits 1013 and
`1014 are reproduced below:
`
`
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`
`
`Ex. 1013, 1; Ex. 1014, 2. The top image above is understood to be front
`perspective view of the 2013 Buick Enclave, including its grille bezel. The
`bottom image above is understood to be a side view of the 2013 Buick
`Enclave, including its grille bezel.
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`E. Alleged Obviousness of the Claim Based on 2014 Buick Enclave and
`2013 Buick Regal (Ground 3)
`Petitioner asserts that Patent Owner’s 2014 Buick Enclave is a proper
`primary reference, i.e., a “Rosen” 7 reference, because it has “basically the
`same overall visual appearance as the claimed design for a vehicle grille
`bezel in the ’903 Patent, which makes Patent Owner’s 2014 Buick Enclave a
`proper primary, Rosen reference.” Pet. 47 (citing Ex. 1003 ¶ 51; Ex. 1004
`¶ 51; Durling, 101 F.3d at 103). Specifically, Petitioner asserts
`Patent Owner’s 2014 Buick Enclave and the claimed design in
`the ’903 Patent share the following design elements:
`1) the same overall shape and dimensions; … 2) a substantially
`horizontal top portion terminating in a short, downward-pointing
`diagonal bezel segment at each end; … 3) a substantially u-
`shaped bottom portion extending from one diagonal bezel
`segment to the other diagonal bezel segment; … 4) wherein the
`substantially u-shaped bottom portion further includes a
`minimum at the center line of the bezel; … 5) and wherein the
`bezel is horizontally convexly curved, and the bottom of the u-
`shaped portion is forward of the substantially horizontal portion.
`
`Pet. 48–50. In support of this assertion, Petitioner provides side-by-side
`comparisons of the figures shown in the ’903 Patent with images of the 2014
`Buick Enclave, with the common features color-coded. See id. For
`example, Petitioner depicts how the substantially u-shaped bottom portion of
`the bezel of each of the ’903 Patent and the 2014 Buick Enclave includes a
`minimum at the center line of the bezel, as seen below.
`
`
`7 In the context of design patent law, a proper primary reference for the
`obviousness analysis is “a reference, a something in existence, the design
`characteristics of which are basically the same as the claimed design.” In re
`Rosen, 673 F.2d 388, 391 (CCPA 1982).
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`The image above is offered by Petitioner to compare an annotated copy of
`Figure 2 of Exhibit 1001 to a cropped and annotated image of the bezel from
`page 1 of Exhibit 1007. Id. at 50.
`According to Petitioner, the only difference between Patent Owner’s
`2014 Buick Enclave and the claimed design of the ’903 Patent is that the
`“2014 Enclave’s center line minimum is sharper than the claimed design of
`the ’903 Patent.” Id. at 51 (citing Ex. 1003 ¶¶ 54; Ex. 1004 ¶ 53). Petitioner
`contends that the lack of a shaper center minimum line is readily provided
`by the 2013 Buick Regal. Id. A copy of Petitioner’s side-by-side
`comparison allegedly depicting this feature is reproduced below.
`
`The image above is offered by Petitioner to compare an annotated copy of
`Figure 2 of Exhibit 1001 to a cropped and annotated image of the bezel from
`page 1 of Exhibit 1010. Id. at 51.
`
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`Petitioner reasons that a designer of ordinary skill would have been
`motivated to combine the ornamental components of the 2014 Buick
`Enclave vehicle grille bezel with those of the 2013 Buick Regal “to create a
`softer, more refined appearance in the vehicle and as part of the natural
`evolution of the overall appearance of the Buick line and in conformity with
`other vehicle makes produced by Patent Owner.” Id. at 52 (citing Ex. 1003
`¶ 56–57; Ex. 1004 ¶ 55–57).
`In its Preliminary Response, Patent Owner contends that Petitioner’s
`assertion that the appearance of the ’903 Patent is substantially identical to
`the 2014 Buick Enclave is deficient because “LKQ fails to fully analyze the
`side views of the claimed design that show the rear portion or side profile
`view of the vehicle grille bezel.” Prelim. Resp. 28. In that respect, Patent
`Owner argues the following:
`LKQ merely shows an angled perspective view of the front of
`the vehicle (reproduced below). This view of the 2014 Buick
`Enclave does not show a side view of the grille, and fails to show
`the specific lines and angles that form the rear portion of the 2014
`Buick Enclave’s grille. This shortcoming also results in a failure
`to show that the 2014 Buick Enclave includes a vehicle grille
`bezel where “the bottom of the u-shaped portion is forward of
`the substantially horizontal portion,” as required by LKQ’s own
`claim construction.
`Id. at 28–29 (citations omitted). Patent Owner argues that Petitioner
`“impermissibly ignores the full three-dimensionality of the claimed design.”
`Id. at 29.
`
`We have considered the arguments and evidence of record and
`determine that Petitioner has not met the threshold showing necessary to
`support trial institution with respect to this obviousness ground. In
`particular, we agree with Patent Owner that Petitioner’s analysis is deficient
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`insofar as it fails to sufficiently consider the claimed design from the side
`perspective as shown in Figure 3 of the ’903 patent.
`The only photograph that Petitioner relies upon to show how the grille
`bezel of the 2014 Buick Enclave allegedly meets the claimed design from
`the side does not adequately show the features depicted in Figure 3.
`Petitioner provides a side-by-side comparison of Figure 3 of the ’903 Patent
`with the 2014 Buick Enclave, as reproduced below.
`
`
`
`The image above is offered by Petitioner to compare Figure 3 of Exhibit
`1001 to page 1 of Exhibit 1008 to allegedly show that “the bezel is
`horizontally convexly curved, and the bottom of the u-shaped portion is
`forward of the substantially horizontal portion.” Pet. 50 (color in original).
`However, that photograph shows more of the front than the side of the grille
`bezel. It is not clear from the comparison photograph provided whether “the
`bottom of the u-shaped portion is forward of the substantially horizontal
`portion,” as required by Petitioner’s own textual claim construction. It is
`also not clear from the photograph that the “short, downward-pointing
`diagonal bezel segment at each end” as described in Petitioner’s textual
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`construction extends backward from the “horizontal top portion” to meet the
`top end of the “substantially u-shaped bottom portion.” Neither does
`Petitioner justify that it does not do so by, for instance, by arguing that the
`ordinary observer would not have considered these features from the side
`perspective in determining the overall visual impression created by the
`claimed design. We agree with Patent Owner that Petitioner impermissibly
`ignores the full three-dimensionality of the claimed design.
`For the foregoing reasons, we conclude that Petitioner has not
`met its burden of demonstrating that it is more likely than not that the
`challenged claim is unpatentable based on the 2014 Buick Enclave
`and the 2013 Buick Regal.
`
`F. Alleged Obviousness of the Claim Based on 2013 Buick Regal and 2013
`Buick Enclave (Ground 4)
`Petitioner also contends that the ’903 design would have been obvious
`based on the 2013 Buick Regal and the 2013 Buick Enclave. Pet. 53–61.
`For this obviousness ground, Petitioner asserts that Patent Owner’s 2013
`Buick Regal (discussed above as a secondary reference) can also be a proper
`primary (Rosen) reference insofar as it includes a vehicle grille bezel with
`basically the same overall visual impression as the claimed design. Id. at 55
`(citing Ex. 1003 ¶ 64; Ex. 1004 ¶ 64; Durling, 101 F.3d at 103).
`Specifically, Petitioner asserts the ’903 Patent and Patent Owner’s 2013
`Buick Regal share the following design characteristics:
`1) the same overall shape and dimensions; … 2) a substantially
`horizontal top portion; … 3) a substantially u-shaped bottom
`portion; … 4) wherein the substantially u-shaped bottom portion
`further includes a minimum at the center line of the bezel; … 5)
`and wherein the bezel is horizontally convexly curved, and the
`
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`Patent D853,903 S
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`
`bottom of the u-shaped portion is forward of the substantially
`horizontal portion.
`
`Pet. 55–57. In support of this assertion, Petitioner provides side-by-side
`comparisons of the figures shown in the ’903 Patent with images of the 2013
`Buick Regal, with the common features color-coded. See id. . For example,
`Petitioner depicts how the substantially u-shaped bottom portion of the bezel
`of each of the ’903 Patent and the 2013 Buick Regal includes a substantially
`horizontal top portion, as seen in the side-by-side comparison below.
`
`
`
`The image above is offered by Petitioner to compare an annotated copy of
`Figure 2 of Exhibit 1001 to a cropped and annotated image of the bezel from
`page 1 of Exhibit 1009. Id. at 56.
`According to Petitioner, the only difference between Patent Owner’s
`2013 Buick Regal and the claimed design of the ’903 Patent is that “[t]he
`horizontal top portion of the ’903 Patent terminates in short, downward-
`pointing diagonal bezel segments at each end, whereas the 2013 Buick
`Regal’s horizontal top portion connects directly to the u-shaped bottom
`portion without intervening diagonal bezel segments.” Id. at 58 (citing Ex.
`1003 ¶ 67; Ex. 1004 ¶ 66). Petitioner contends that this missing design
`element is readily supplied by Patent Owner’s 2013 Buick Enclave. Id. at 58
`
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`(citing Ex. 1003 ¶ 68; Ex. 1004 ¶ 67). A copy of Petitioner’s side-by-side
`comparison allegedly depicting this feature is reproduced below.
`
`
`
`The image above is offered by Petitioner to compare an annotated copy of
`Figure 2 of Exhibit 1001 to a cropped and annotated image of the bezel from
`page 1 of Exhibit 1013. Id. at 59
`Petitioner reasons that a designer of ordinary skill would have been
`motivated to combine the ornamental components of the 2013 Buick
`Enclave vehicle grille bezel with those of the 2013 Buick Regal “to create a
`softer appearance in the vehicle and as part of the natural evolution of the
`overall appearance of the Buick line and in conformity with other vehicle
`makes produced by Patent Owner.” Id. at 59 (citing Ex. 1003 ¶¶ 70–71; Ex.
`1004 ¶¶ 69–71). Petitioner contends that “a hypothetical prior art created by
`combining the base of Patent Owner’s 2013 Buick Regal with the diagonal
`bezel segments of Patent Owner’s 2013 Buick Enclave would have an
`overall appearance that is the same as the ’903 Patent.” Id. at 60 (citing Ex.
`1003 ¶ 72; Ex. 1004 ¶ 72).
`In its Preliminary Response, Patent Owner contends that, as with
`Ground 3, Petitioner “fails to fully analyze the side views of the claimed
`design that show the rear portion and profile of the vehicle grille bezel.”
`Prelim. Resp. 35.
`
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`We agree with Patent Owner that Petitioner’s showing based on the
`2013 Buick Regal and 2013 Buick Enclave under Ground 4 fares no better
`than the one discussed above with respect to Ground 3. Petitioner provides a
`side-by-side comparison of Figure 3 of the ’903 Patent with the 2013 Buick
`Regal, as reproduced below.
`
`
`
`The image above is offered by Petitioner to compare Figure 3 of Exhibit
`1001 to page 1 of Exhibit 1011 to once again allegedly show that “the bezel
`is horizontally convexly curved, and the bottom of the u-shaped portion is
`forward of the substantially horizontal portion.” Pet. 57 (color in original).
`However, as with the comparison photograph of the 2014 Buick Enclave in
`Ground 3, Petitioner’s comparison of the side view shown in Figure 3 to the
`2013 Buick Regal in this ground does not show sufficiently that “the bottom
`of the u-shaped portion is forward of the substantially horizontal portion,” as
`required by Petitioner’s own textual claim construction. Furthermore,
`although Petitioner relies upon the 2013 Buick Enclave for incorporating
`diagonal bezel segments at each end, Petitioner does not explain how the
`combination of the prior art designs would result in the “diagonal bezel
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`segment at each end” extending backwards from the “horizontal top portion”
`to meet the top end of the “substantially u-shaped bottom portion.” As noted
`above, Petitioner does not explain why the ordinary observer would not have
`considered these features from the side perspective in determining the
`overall visual impression created by the claimed design. Thus, Petitioner
`again impermissibly ignores the full three-dimensionality of the claimed
`design in its analysis for this ground.
`For the foregoing reasons, we conclude that Petitioner has not
`met its burden of demonstrating that it is more likely than not that the
`challenged claim is unpatentable based on the 2013 Buick Regal and
`the 2013 Buick Enclave.
`
`Assertion that the ’903 Patent is Unpatentable Because it is a
`G.
`Partial-Product Patent that Violates the Doctrine of Exhaustion and
`the Repair Rights of Patent Owner’s Customers
`In addition to the obviousness grounds present in the Petition,
`Petitioner contends that the ’903 Patent should be found unpatentable
`because “it is a design applied to a functionless component part of a
`functional whole, and therefore empowers Patent Owner and other OEMs
`with the ability to improperly subvert the exhaustion doctrine and prevent
`consumers from exercising their right to repair their own vehicles.” Pet. 35–
`36. Petitioner is of the view that a design patent can only be issued for a
`complete article, not a part or sub-part. Id. at 36.
`Patent Owner, by contrast, contends that the law permits design
`patents on particular vehicle component
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