UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LKQ Corporation and Keystone Automotive Industries, Inc.
`Petitioners
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`v.
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`GM Global Technology Operations LLC
`Patent Owner
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`Case PGR2020-00024
`Patent No. D859,253
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`PATENT OWNER’S
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`PRELIMINARY RESPONSE
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`I. 
`II. 
`III. 
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`IV. 
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`Attorney Docket: 45343-0036PS1
`Case No. PGR2020-00024
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`TABLE OF CONTENTS
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`Introduction ................................................................................................... 1 
`Background ................................................................................................... 2 
`Level of Ordinary Skill ................................................................................. 5 
`The Ordinary Observer .......................................................................... 5 
`The Ordinary Designer .......................................................................... 9 
`Petitioners Cannot Prevail as to Any Challenged Claim .............................. 9 
`LKQ’s exhaustion and right-of-repair arguments are legally irrelevant
`and factually wrong. .............................................................................. 9 
`1. 
`Neither exhaustion nor right of repair is an invalidity ground. ... 10 
`2. 
`Neither exhaustion nor right of repair is a statutorily authorized
`invalidity ground. ........................................................................ 11 
`The Federal Circuit has held that the doctrine of exhaustion and
`the right of repair do not apply under these facts. ....................... 12 
`LKQ’s Proposed Claim Construction Relies on General Design
`Concepts and Ignores Features of the Claimed Design. ..................... 13 
`1. 
`LKQ ignores the vast array of prior art vehicle tailgates, which
`would inform the ordinary observer’s impression of the claimed
`design. .......................................................................................... 14 
`LKQ fails to accurately convey the overall shape of the claimed
`design. .......................................................................................... 17 
`LKQ fails to demonstrate that the claimed design is obvious in view
`of the 2015 Chevrolet Colorado, alone or together with O’Donnell
`(Grounds 2-3). ..................................................................................... 21 
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`3. 
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`2. 
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`Attorney Docket: 45343-0036PS1
`Case No. PGR2020-00024
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`1. 
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`2. 
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`LKQ’s obviousness theories fail to address the multiple, readily
`apparent differences between the claimed design and the
`proposed combinations. ............................................................... 22 
`LKQ fails to demonstrate that O’Donnell can modify the
`Colorado to create a design with the same overall visual
`appearance as the claimed design (Ground 3). ............................ 37 
`LKQ fails to demonstrate that the claimed design is obvious in view
`of the 2015 GMC Canyon, alone or with O’Donnell (Grounds 4-5). . 40 
`1. 
`LKQ’s obviousness theories fail to address the multiple, readily
`apparent differences between the claimed design and the
`proposed combinations. ............................................................... 40 
`LKQ fails to demonstrate that O’Donnell can modify the Canyon
`to create a design with the same overall visual appearance as the
`claimed design (Ground 5). ......................................................... 53 
`Conclusion ................................................................................................... 54 
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`2. 
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`V. 
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`ii
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`Attorney Docket: 45343-0036PS1
`Case No. PGR2020-00024
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`EXHIBIT LIST
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`Exhibit No.
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`Description
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`2001
`2002
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`2003
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`Declaration of Joseph A. Herriges
`Irwin Letter Re LKQ Petition No. 68 for Relief from Seizure and
`Forfeitures Notices, September 28, 2017
`U.S. Design Patent D758,271 (“McMahan”)
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`iii
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`I.
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`INTRODUCTION
`LKQ’s Petition is deficient in numerous ways, any one of which would
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`Attorney Docket: 45343-0036PS1
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`warrant denial; collectively, they compel it. See Deeper, UAB v. Vexilar, Inc.,
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`IPR2018-01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (denying petition where
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`the majority of challenged claims and grounds failed to meet the institution
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`standard).
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`The fundamental problem with LKQ’s Petition, which pervades its analysis,
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`is that it simply fails to address the design’s claimed features. The ’253 Patent
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`depicts a vehicle tailgate having an outwardly-bowed major face with multiple
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`inflection surfaces and a middle portion rearward of side edges, an upper portion
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`having series of surfaces that protrude outwardly to a varying degree across a
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`width of the tailgate, and offset surfaces above and below a horizontal crease
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`across the lower portion of the tailgate.
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`These claimed features all relate to the rear major surface of the tailgate and
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`the relationship of that major surface to the protrusions and grooves of the design.
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`Despite that, LKQ never once shows a side view of the prior art that actually
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`illustrates the spatial relationship of these features. Instead, because of its overly
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`general approach, LKQ relies on views that obscure the relevant perspective of the
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`alleged prior art and thus fail to enable any meaningful comparison to the claimed
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`design. The Board and the Federal Circuit have repeatedly held that such a cursory
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`approach is inappropriate, particularly in a crowded field like the one at issue
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`involving vehicle tailgates, and this panel should make the same determination
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`here.
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`The Board should likewise reject LKQ’s exhaustion and repair arguments
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`because they are legally incorrect and not invalidity grounds that can be raised in
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`this proceeding.
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`For all these reasons, the Board should deny LKQ’s petition.
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`II. BACKGROUND
`General Motors is an innovator in the areas of vehicle design and automotive
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`engineering. Its innovation has led to iconic vehicle designs such as the Chevrolet
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`Corvette, Chevrolet Suburban, and Cadillac Deville, as well as more recent designs
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`like the Cadillac Escalade, Chevrolet Cruz, and Chevrolet Equinox. One of GM’s
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`more recent innovations resulted in the Patent Office issuing GM U.S. Design
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`Patent No. D859,253, directed to the ornamental appearance of a vehicle tailgate
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`used in the 2020-21 Chevrolet Silverado HD Tailgate, and now at issue in these
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`proceedings.1
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`The industry has also taken notice of GM’s innovative designs for decades,
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`with GM receiving numerous awards that reflect the quality and appeal of its
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`1 GM Global Technology Operations LLC is the assignee of the ’253 Patent.
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`2
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`products. To name a few, GM’s investment in product design and development
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`has been recognized with numerous J.D. Power APEAL Awards, J.D. Power Initial
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`Quality Awards, J.D. Power Dependability Awards, and a J.D. Power Engineering
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`Award for Highest-Rated All-New Vehicle.
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`Petitioner LKQ is an aftermarket manufacturer in the collision repair
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`industry, selling things like replacement fenders, bumpers, and grilles. Unlike an
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`Original Equipment Manufacturer (“OEM”) like GM, however, LKQ does not
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`invest in designing the replacement parts it sells; rather, it copies GM’s design in
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`order to mimic that design and then sells the copy-cat products at a lower price.
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`When a driver is in an automobile accident, for example, LKQ offers its tailgate
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`replacement product, which exactly copies the design of GM’s unique tailgate.
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`LKQ’s copying of the OEM’s design is a business imperative because
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`purchasers of replacement parts demand that their vehicle be restored to its original
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`appearance. A similar appearance is not good enough—here, details matter. For
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`example, a Corvette owner—and the repair shop repairing that vehicle—would not
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`be satisfied with just any replacement vehicle hood, but would demand the same
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`classic look and design in its replacement part that the original vehicle featured.
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`Indeed, in other proceedings, LKQ has recognized the importance of its
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`aftermarket products mimicking the OEM’s designs. For example, in another case,
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`LKQ stated that, when choosing replacement parts, “Automobile owners seek to
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`repair their automobiles in a way that returns their automobile as closely as
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`possible to its original appearance and condition.” Ex. 2002 at 10 (“The purpose
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`of a replacement grille is to repair a vehicle to its original condition and
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`appearance; thus the appearance of replacement grilles is essential to the purpose
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`of replacement grilles.” (emphasis added)), 14 (“If the grille were to look different,
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`or if the placeholder region of a grille were to be absent . . . consumers would
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`simply not purchase the replacement grille, as it would not return their vehicle to
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`its original appearance, nor would it be capable of doing so.”).
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`The requirement that LKQ’s aftermarket parts mimic GM’s designs is
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`particularly important for two reasons. First, LKQ’s customers are primarily
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`professional auto body shops that are knowledgeable about the automotive industry
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`and have a particularly discerning eye. Id. at 4 (“LKQ’s customers for aftermarket
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`automotive parts primarily consist of professional auto body and mechanical repair
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`shops who are knowledgeable about the automotive industry.”), 13 (“The primary
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`purchasers of aftermarket parts are professional automotive and repair shops,
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`which typically repair cars and purchase parts at the behest of insurance
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`companies.”). Second, the laws in many states require that the replacement part
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`mimic the appearance of the original vehicles. See id. at 11 (“State insurance laws
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`and insurer contracts require that insurance companies cover the cost to repair
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`vehicles to their original appearance and condition. . . .”). Thus, design changes in
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`the collision repair industry are not only noticeable to the primary purchaser in the
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`aftermarket space, they may not even be legally permissible.
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`Because it is important to LKQ to be able to copy GM’s designs, GM and
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`LKQ have historically had a confidential Design Patent License Agreement under
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`which LKQ had a license to practice many of GM’s design patents. Although GM
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`and LKQ recently attempted to renegotiate the terms of that license, those
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`negotiations broke down, which led to LKQ filing this PGR. In other words, LKQ
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`was historically content to acquiesce to the validity of GM’s innovative designs
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`and benefit from being the only aftermarket company able to copy them, but now
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`LKQ is claiming GM’s designs should not be eligible for these protections if LKQ
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`is not authorized to use them.
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`III. LEVEL OF ORDINARY SKILL
` The Ordinary Observer
`The identity of the ordinary observer focuses on the “actual product that is
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`presented for purchase, and the ordinary purchaser of that product.” Goodyear
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`Tire & Rubber Co. v. Hercules Tire & Rubber, 162 F.3d 1113, 1117 (Fed. Cir.
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`1998). The ordinary observer is “a person who is either a purchaser of, or
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`sufficiently interested in, the item that displays the patented designs and who has
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`the capability of making a reasonably discerning decision when observing the
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`accused item’s design whether the accused item is substantially the same as the
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`item claimed in the design patent.” Arminak & Assocs., Inc. v. Saint-Gobain
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`Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007). Where the product is
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`purchased by a commercial buyer for delivery to an end consumer, the commercial
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`buyer—rather than the end consumer—may be the ordinary observer. Id. at 1322-
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`23 (“‘the ‘ordinary purchaser’ for the purpose of the block design patent is a
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`purchaser of the patented block,’ not a purchaser of an assembled wall”) (citation
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`omitted).
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`The “ordinary observer is considered to be familiar with prior art designs.”
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`Columbia Sportswear N. Am., Inc. v. Seirus Innovative Access., Inc., 942 F.3d
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`1119, 1129 (Fed. Cir. 2019). “[W]hen the claimed design is close to the prior art
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`designs, small differences between the accused design and the claimed design are
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`likely to be important to the eye of the hypothetical ordinary observer.” Egyptian
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`Goddess v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008). In other words,
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`relevant questions in design patent cases are subject-matter specific: in a crowded
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`field, the ordinary observer is more likely to be attuned to small differences. See In
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`re Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993) (noting “the field of loud speaker
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`design is much less crowded than that of ornamental vase design,” and thus
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`similarity that may “preclude issuance of a design patent” of a loud speaker design
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`may not preclude issuance of a design patent to a vase design).
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`Here, the ordinary observer includes commercial buyers who purchase
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`replacement vehicle tailgates to repair a customer’s vehicle, such as repair shop
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`professionals. LKQ itself, in a related IPR proceeding, acknowledged that
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`“replacement automobile body parts, are typically purchased on behalf of vehicle
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`owners by repair shops.” See LKQ Corp. v. GM Global Tech. Operations LLC,
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`IPR2020-00065, Paper 2 (Petition) at 21 (October 17, 2019) (emphasis added); see
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`also Ex. 2002 at 11 (“LKQ’s customers for aftermarket automotive parts primarily
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`consist of professional auto body and mechanical repair shops who are
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`knowledgeable about the automotive industry.” (emphasis added)). Because a
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`repair shop buyer reviews and analyzes various products as part of his or her job
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`duties, that buyer is particularly discerning. Moreover, the repair shop buyer
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`would be aware of prior art designs that would inform his or her discernment of
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`slight differences between designs. See Egyptian Goddess, 543 F.3d at 681.
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`LKQ suggests that the ordinary observer “should be the retail consumer of
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`an automobile,” Pet. at 33, but does not explain why the repair shop buyer that
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`purchased replacement vehicle tailgates, or the end consumer of the replacement
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`vehicle fender, should be excluded. LKQ’s citation to non-binding district court
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`decisions, id. at 34, ignores that those cases did not involve replacement of vehicle
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`components by repair shops, and ignores Federal Circuit decisions finding
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`intermediate buyers to be the ordinary observer. See, e.g., Arminak, 501 F.3d at
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`1324 (“[W]e hold that the ordinary observer of the trigger sprayer shrouds in this
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`case is, as the district court found, the contract or industrial buyer for companies
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`that purchase the stand-alone trigger sprayer devices [that are the subject of the
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`design patent], not the retail purchasers of the finished product.”). Not only is
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`LKQ’s definition unsupported, but it is at odds with its statement in related
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`proceedings that the relevant replacement body parts are “typically purchased on
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`behalf of vehicle owners by repair shops.” LKQ Corp., IPR2020-00065, Paper 2
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`at 21 (emphasis added); Ex. 2002 at 11.
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`Notably, LKQ’s definition as the retail consumer of the automobile is at
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`odds with the Board’s recent adoption of the understanding of the “ordinary
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`observer as the retail consumer of vehicle front bumpers” in a related case between
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`the parties. LKQ Corp., IPR2020-00062, Paper 14 at 14 (PTAB April 16, 2020);
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`see also Arminak, 501 F.3d at 1322–24. As the Board noted, the “ordinary
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`observer would be more discerning than an average person because a vehicle front
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`bumper is an expensive purchase usually made to return a damaged vehicle to
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`original form.” LKQ Corp., IPR2020-00062, Paper 14 at 14. The same is true
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`here. LKQ’s proposal overlooks this requirement.2
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`The Ordinary Designer
`In determining prima facie obviousness of a design claim, “the proper
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`standard is whether the design would have been obvious to a designer of ordinary
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`skill with the claimed type of article.” MPEP § 1504.03(II). A designer of
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`ordinary skill in the art relevant to the ’253 Patent would have at least an
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`undergraduate degree in automotive design, or other related industrial design field,
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`with at least two years of relevant practical experience in designing automotive
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`body parts. An increase in experience could compensate for less education, and an
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`increase in education could likewise compensate for less experience.
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`IV. PETITIONERS CANNOT PREVAIL AS TO ANY CHALLENGED
`CLAIM
` LKQ’s exhaustion and right-of-repair arguments are legally
`irrelevant and factually wrong.
`LKQ’s assertion that the ’253 Patent is invalid because it is a partial-product
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`patent that violates the doctrine of exhaustion and GM’s customers’ repair right is
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`not supported because neither of these doctrines is an invalidity ground.
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`2 Even if the end “retail consumer” were considered the ordinary observer,
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`the Petition is still deficient. See infra, §§ IV.A–D.
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`Attorney Docket: 45343-0036PS1
`Case No. PGR2020-00024
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`1.
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`Neither exhaustion nor right of repair is an invalidity
`ground.
` The Federal Circuit recently held that the law permits design patents on
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`particular vehicle components: “Ford chose to claim designs as applied to portions
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`of particular components, and the law permits it to do so.” Automotive Body
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`Parts Ass’n v. Ford Global Techs., 930 F.3d 1314, 1325 (Fed. Cir. 2019)
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`(emphasis added). This decision is consistent with both the Supreme Court
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`interpretation and the Patent Act, “which has been understood by the Patent Office
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`and the courts to permit a design patent that extends to only a component of a
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`multicomponent product.” Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429,
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`431 (2016) (citing Ex parte Adams, 84 Off. Gaz. Pat. Office 311; Application of
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`Zahn, 617 F.2d 261, 268 (C.C.P.A.); 35 U.S.C. §171(a). In other words, claims to
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`vehicle components are not invalid—let alone per se invalid, as LKQ appears to be
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`arguing. Neither exhaustion nor the right-of-repair doctrine compels a contrary
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`conclusion because they are not grounds for invalidating a patent.
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`Exhaustion is not an invalidity ground, but rather, an affirmative defense to
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`patent infringement. The Federal Circuit has established that “patent exhaustion is
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`a defense to patent infringement.” ExcelStor Tech., Inc. v. Papst Licensing GMBH
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`& Co. KG, 541 F.3d 1373, 1376 (Fed. Cir. 2008). As the Supreme Court has
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`explained, “The Patent Act grants patentees the right to exclude others from
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`making, using, offering for sale, or selling [their] invention[s],” and “the doctrine
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`of patent exhaustion has imposed a limit on that right to exclude.” Impression
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`Prod., Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523, 1525 (2017). In particular, the
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`doctrine of patent exhaustion applies in scenarios where “a patentee sells one of its
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`products, … the patentee can no longer control that item through the patent laws—
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`its patent rights are said to ‘exhaust.’” Id. That is, patent exhaustion cannot
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`invalidate patent rights but rather limits existing valid patent rights against
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`potential defendants.
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`The right of repair is a related doctrine and similarly is not an invalidity
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`ground. The right to repair a patented article is included in the “right of use
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`transferred to a purchaser by an authorized sale.” Automotive Body Parts, 930
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`F.3d at 1323 (citing Kendall Co. v. Progressive Med. Tech., Inc., 85 F.3d 1570,
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`1573 (Fed. Cir. 1996)). While the right to repair may in some instances relate to
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`the scope of infringers against whom a patent owner can enforce its patent, it says
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`nothing about whether that patent is valid in the first place.
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`2.
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`Neither exhaustion nor right of repair is a statutorily
`authorized invalidity ground.
`Even if exhaustion or right of repair were an invalidity ground, neither is an
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`invalidity ground permitted for post-grant review by 35 U.S.C. §282(b)(2) or (3).
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`Post-grant review is limited to “specific statutory grounds permitted under 35
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`U.S.C. 282(b)(2) or (3).” 37 C.F.R. §42.204. These “specific statutory grounds”
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`include novelty, obviousness, written description, enablement, and indefiniteness.
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`35 U.S.C. §282(b)(2)–(3); see also 35 U.S.C. §§100–212. The doctrine of
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`exhaustion and right of repair are not included in this list of “specific statutory
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`grounds,” id., and thus cannot serve as a basis for invalidity in this proceeding. For
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`this additional reason, the Board should reject this ground.
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`3.
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`The Federal Circuit has held that the doctrine of exhaustion
`and the right of repair do not apply under these facts.
`In Automotive Body Parts, the Federal Circuit considered ABPA’s challenge
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`to Ford’s design patents under the doctrines of patent exhaustion and repair rights.
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`930 F.3d at 1322, cert. denied in Automotive Body Parts Assn. v. Ford Global
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`Technologies, LLC, 2020 WL 1124449 (Mar. 09, 2020). The parties and patents in
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`Automotive Body Parts are similar to those here. In that case, ABPA, an
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`association of companies that distribute automotive body parts, contended that
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`Ford’s design patents directed to the hoods and headlamps of Ford F-150 trucks
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`were unenforceable against APBA under the doctrine of exhaustion and repair
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`rights. Id. at 1316–17, 1319. The Federal Circuit rejected ABPA’s argument that
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`Ford exhausted all of its design patent rights upon initial sale of the F-150 truck,
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`including all of its components, declining to extend the rules of patent exhaustion
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`to cover design patented components. Id. at 1322–23. In particular, the Federal
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`Circuit noted that the parts the ABPA member companies were selling were not
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`authorized by Ford. Id. at 1322. As such, the Federal Circuit ruled that patent
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`exhaustion did not apply because “exhaustion attaches only to items sold by, or
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`with the authorization of, the patentee.” Id. (citing Jazz Photo Corp. v. Int’1 Trade
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`Comm’n, 264 F.3d 1094, 1105 (Fed. Cir. 2001)). That is precisely the case here:
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`because LKQ’s sale of GM’s design patented components is not authorized by
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`GM, there is no exhaustion. See id. at 1322.
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`The Federal Circuit also rejected the right of repair arguments. Id. at 1323–
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`25. The court noted that while the “right to use” transferred to a purchaser under
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`an authorized sale includes the right to repair the patented article, that “[t]he right
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`of repair does not . . . permit a complete reconstruction of a patented device or
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`component.” Id. at 1323. As such, “though a sale of the F-150 truck permits the
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`purchaser to repair the designs as applied to the specific hood and headlamps sold
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`on the truck,” the “right of repair” did not give the purchaser of a Ford F-150 the
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`right to “create new hoods and headlamps using Ford’s designs.” Id. at 1324.
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`Here again, the purchaser of a GM truck may repair it, but that does not authorize
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`the purchaser (or LKQ) to create new components using GM’s patented designs.
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`See id. at 1323–24.
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`
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`LKQ’s Proposed Claim Construction Relies on General Design
`Concepts and Ignores Features of the Claimed Design.
`The Board should deny institution because LKQ’s claim construction is
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`based on generic design concepts, rather than addressing the features of the
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`claimed design. See Vitro Packaging, LLC v. SaverGlass, Inc., IPR2015-00947,
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`Paper 13 at 5 (PTAB Sept. 29, 2015) (denying institution and stating, “[w]e are not
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`persuaded that this is an accurate portrayal of the claimed bottle because it focuses
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`on general dimensions, ratios, and elements common to many bottles.”); Skechers
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`U.S.A., Inc. v. Nike, Inc., IPR2017-00617, Paper 13 at 7–8 (PTAB July 6, 2017)
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`(“While we recognize that the illustration, rather than a verbal description, is the
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`better representation of the claimed design . . . Petitioner’s verbal description in
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`these cases does not go far enough.”). The result is a focus on generic design
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`common to many vehicle tailgates, at the expense of addressing the nuanced
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`features of the claimed design. As described below, this error infects each of
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`LKQ’s grounds, and therefore compels denial of the Petition.
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`1.
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`LKQ ignores the vast array of prior art vehicle tailgates,
`which would inform the ordinary observer’s impression of
`the claimed design.
`LKQ first fails to address the vast array of prior art vehicle tailgates, which
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`inform the level of detail that would impact the ordinary observer’s impression of
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`the claimed design. There are numerous prior art vehicle tailgates, including
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`dozens cited and considered during original prosecution of the ’253 Patent. The
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`Petition fails to address this body of prior art and its impact on the ordinary
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`observer’s impression of the overall appearance of the claimed design, resulting in
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`a failure to identify and fully address features of the claimed design.
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`The “ordinary observer is considered to be familiar with prior art designs.”
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`Columbia Sportswear, 942 F.3d at 1129. “[W]hen the claimed design is close to
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`Attorney Docket: 45343-0036PS1
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`the prior art designs, small differences between the accused design and the claimed
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`design are likely to be important to the eye of the hypothetical ordinary observer.”
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`Egyptian Goddess, 543 F.3d at 681. In other words, relevant questions in design
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`patent cases are subject-matter specific: in a crowded field, the ordinary observer is
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`more likely to be attuned to small differences. See Harvey, 12 F.3d at 1064 (noting
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`“the field of loud speaker design is much less crowded than that of ornamental
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`vase design,” and thus similarity that may “preclude issuance of a design patent” of
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`a loud speaker design may not preclude issuance of a design patent to a vase
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`design).
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`For example, U.S. Pat. Nos. D732,435, D750,002, D805,438, and D809,428
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`depict vehicle tailgate designs. Each was identified and cited by the Examiner, and
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`each includes concepts identified in Petitioner’s proposed construction for the ’253
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`Patent:
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`D732,435, FIG. 5 (partial); D750,002, FIG. 1; D805,438, FIG. 2 (partial);
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`D809,428, FIG. 2 (partial). Dozens more tailgate designs were cited on the face of
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`the ’253 Patent and considered by the Examiner during original prosecution. LKQ
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`fails to account for the ordinary observer’s awareness of such tailgate designs,
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`which results in small differences heavily impacting the overall appearance of
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`tailgate designs in the eyes of the ordinary observer.
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`The Federal Circuit and the PTAB have consistently cautioned against
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`Attorney Docket: 45343-0036PS1
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`LKQ’s error:
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`Indeed, just because a design feature is “slight” does not by itself lead
`directly to the conclusion that such a feature would result in a de
`minimis difference in appearance. As noted by the Federal circuit, it is
`just as likely that the opposite is true as well, for instance where “the
`claimed design is close to the prior art designs, small differences
`between the accused design and the claimed design are likely to be
`important to the eye of the hypothetical ordinary observer.”
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`Vitro Packaging, IPR2015-00947, Paper 13 at 12 (quoting Egyptian Goddess, 543
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`F.3d at 676). LKQ’s analysis is based on a faulty premise that fails to address the
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`ordinary observer’s awareness of the prior art and improperly assumes differences
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`to be insignificant to the overall appearance. This failure leads LKQ to ignore
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`features of the design that contribute to the overall appearance.
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`2.
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`LKQ fails to accurately convey the overall shape of the
`claimed design.
`The ’253 Patent depicts a vehicle tailgate with a cohesive set of features that
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`provides a particular overall appearance. The major face of the tailgate has an
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`outwardly-bowed convex shape, such that the middle portion extends substantially
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`rearward relative to side edges. Multiple segments of the major face are delineated
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`by three inflection locations. An upper middle portion (e.g., having lettering
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`shown in broken lines) is the largest and exhibits the greatest convexity. The
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`claimed design also depicts an upper portion having a series of surfaces that
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`protrude outwardly to a varying degree across a width of the tailgate, such that a
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`middle region overhangs the tailgate to a greater extent than side regions.
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`LKQ ignores these specific features that contribute to the overall appearance
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`of the ’253 Patent. For example, LKQ fails to address the overall shape of the
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`major tailgate face, which is convex in multiple directions—both top-to-bottom
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`and side-to-side—such that a middle portion of the tailgate is rearward of the side
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`edges of the tailgate.
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`Ex. 1001 at FIG. 3 (annotated). LKQ’s generic characterization also ignores the
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`particular curvature of the major face, which includes multiple inflection locations
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`that provide a non-uniform curvature from top-to-bottom. These features are
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`prominently depicted in FIG. 3 of the claimed design, shown above.
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`LKQ also fails to accurately convey the overall shape and proportions of the
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`upper portion of the tailgate. LKQ describes “a contoured upper portion
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`protruding from the horizontal top planar surface, first, sloping downward and
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`away from the tailgate face, wherein the protrusion slightly increases in thickness
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`as it approaches the handle insert and then, second, sloping downward and toward
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`the tailgate face.” Pet. at 15. LKQ’s characterization, however, ignores specific
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`features of the “upper portion.” The claimed design depicts a “first surface”
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`(green) and a relatively thicker “second” surface (blue) below the “first” surface.
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`While the thickness of the “second” surface increases along the central region, the
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`thickness of the “first” surface remains substantially consistent.
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`Ex. 1001, FIGS. 1 and 3 (annotated). LKQ’s construction does not address this.
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`Finally, LKQ fails to accurately convey the “horizontal crease in the lower
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`portion of the tailgate” by ignoring the surfaces that form the “horizontal crease”
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`and the non-coplanar relationship of substantially vertical surfaces above and
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`below the “crease.” The ’253 Patent depicts a substantially vertical surface
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`(yellow) below the “crease” that is offset from a surface (red) above the “crease.”
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`LKQ’s generic characterization ignores the positioning and relationship of these
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`surfaces separated by the “crease.” Pet. at 16. These features are prominently
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`depicted in FIG. 3 of the ’253 Patent.
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`Ex. 1001 at FIG. 3 (annotated). Nothing in the Petition acknowledges these
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`surfaces and their relationship to the alleged “horizontal crease,” despite their
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`significant contribution to the overall shape of the claimed design. Pet. at 16.
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`Additionally, LKQ fails to address the shape of the lower “crease” itself, which
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`forms an obtuse angle.
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`In short, LKQ’s generic description and omission of critical details of the
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`major face of the design fails to give credence to the full three-dimensionality of
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`the claimed design and the overall appearance provided to the ordinary observer,
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`warranting denial of the petition. See, e.g., Aristocrat Technologies, Inc. v IGT,
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`IPR2016-00767,