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.
`____________
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`PGR2020-00024
`Patent D859,253 S
`____________
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`
`
`Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
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`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.
`____________
`
`PGR2020-00024
`Patent D859,253 S
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
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`PGR2020-00024
`Patent D859,253 S
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`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. D859,253 S (“the ’253 patent,” Ex. 1001).
`Paper 2 (“Pet.”). The Petition challenges the patentability of the sole design
`claim of the ’253 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 ’253 patent. Pet. 5;
`Paper 3, 2.
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`C. The ’253 Patent and Claim
`The ’253 patent is titled “Vehicle Tailgate,” and issued Sept.
`
`10, 2019, from U.S. Application No. 29/650,488, filed June 7, 2018.1
`Ex. 1001, codes (21), (22), (45), (54). The claim recites “[t]he ornamental
`design for a vehicle tailgate, as shown and described.” Id. at code (57). The
`drawings of the claim depict several views of the claimed tailgate with
`certain portions of the design shown as unclaimed by broken lines. See id.
`(“The broken lines in the drawings illustrate portions of the vehicle tailgate
`that form no part of the claimed design.”). The ’253 design is depicted in
`five figures, which are reproduced below.2
`
`
`1 Because the earliest possible effective filing date for the ’253 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 ’253 patent is eligible for post-grant
`review. See 35 U.S.C. § 321(c).
`2 We refer to the claim, i.e., the vehicle tailgate shown in Figures 1–5, also
`as “the ’253 design.”
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`Ex. 1001. Figures 1–5 above depict, respectively, the following views of the
`claimed vehicle tail gate design: a perspective view, a front view, a left side
`view, a top view, and a bottom view. Id. at code (57).
`The parties both describe certain features that contribute to the overall
`appearance of the claimed design. See Pet. 13–18; Prelim. Resp. 13–20; see
`also Ex. 1003 ¶¶ 32–35, Ex. 1004 ¶¶ 30–34. Petitioner contends that the
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`claim can be described according to the drawings as shown by the solid lines
`as:
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`A vehicle tailgate comprising:
`a horizontal top planar surface extending the width of the
`tailgate;
`a contoured upper portion protruding from the horizontal
`top planar surface, first, sloping downward and away from the
`tailgate face, wherein the protrusion slightly increases in
`thickness as it approaches the handle insert and then, second,
`sloping downward and toward the tailgate face; and
`a tailgate face primarily consisting of an unadorned
`vertical exterior surface, the vehicle tailgate overhung by the
`contoured upper portion, with surface
`features
`further
`comprising:
`a horizontal crease in the lower portion of the
`tailgate stretching across the entire surface; and
`
`a convex top portion stretching horizontally across
`the entire upper portion of a convex tailgate.
`Pet. 14–17.
`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 common to many vehicle
`tailgates, at the expense of addressing the nuanced features of the claimed
`design.” Prelim. Resp. 14. Patent Owner further contends that Petitioner
`fails “to identify and fully address features of the claimed design.” 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 14–53.
`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
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`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 . . .
`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 tailgate design
`shown in Figures 1–5 of the ’253 design is clearly exemplified in the
`drawings. In other words, the elements and features of the ’253 design that
`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 ’253 design comes from the drawings themselves.
`Accordingly, we determine that no articulated verbal description is
`necessary to describe the overall ornamental nature of the ’253 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
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`acknowledge in our following analyses the relevant design characteristics of
`the ’253 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.”).
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that the sole design claim of the ’253 patent is
`
`unpatentable on the following grounds (Pet. 18):
`
`
`Claim Challenged
`1
`1
`1
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`35 U.S.C. §
`171
`103
`103
`
`1
`
`103
`
`References/Basis
`Patent Exhaustion, Right-of-Repair
`2015 Chevrolet Colorado3
`2015 Chevrolet Colorado,
`O’Donnell4
`2015 GMC Canyon5
`
`
`3 Ex. 1005, “2015 Chevrolet Colorado” (Pet. vii) (characterized as “archived
`on March 12, 2016 by Internet Archive organization’s ‘Wayback Machine.’”
`4 Ex. 1006, US D710,283
`5 Ex. 1007, “2015 GMC Canyon” (Pet. vii) (characterized as “archived on
`April 1, 2014 by Internet Archive organization’s ‘Wayback Machine;’” Ex.
`1008, “2015 GMC Canyon Brochure (Pet vii);” Ex. 1009, “2015 GMC
`Canyon” (Pet. vii) (characterized as “archived on March 18, 2015 by
`Internet Archive organization’s ‘Wayback Machine;’” Ex. 1010, “GMC
`Canyon brochure” (Pet. viii); and Ex. 1011, “2015 GMC Canyon” (Pet. viii)
`(characterized as “archived on February 20, 2015 by Internet Archive
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`Claim Challenged
`1
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`35 U.S.C. §
`103
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`References/Basis
`2015 GMC Canyon, O’Donnell
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`Petitioner submits the Declaration of James M. Gandy (Ex. 1003) and
`
`the Declaration of Jason C. Hill (Ex. 1004) in support of its arguments.
`
`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.”). 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).
`
`
`organization’s ‘Wayback Machine.’” (Collectively we reference Exhibits
`1007–1011 as “2015 GMC Canyon”).
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`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, 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:
`
`
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`a designer of ordinary skill would be an individual who has at
`least an undergraduate degree in transportation or automotive
`design and experience in the field of transportation design, or
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`someone who has several years’ work experience in the field of
`transportation or automotive design.
`Pet. 31 (citing Ex. 10036 ¶ 39; Ex. 10047 ¶ 38). Patent Owner argues,
`without citation to evidence, that:
`[a] designer of ordinary skill in the art relevant to the ’253 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. 9. 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.
`
`C. The Ordinary Observer
`Both parties also offer definitions of an “ordinary observer.” Pet. 33–
`34; Prelim. Resp. 5–9. 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
`
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`6 Exhibit 1003 is the Declaration of Petitioner’s declarant James M. Gandy.
`7 Exhibit 1004 is the Declaration of Petitioner’s declarant Jason C. Hill.
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`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.
`Int’l Seaway Trading Corp., 589 F.3d at 1240.
`According to Petitioner, “the ordinary observer would be the retail
`consumer of an automobile.” Pet. 33 (citing Ex. 1003 ¶ 38; Ex. 1004 ¶ 37).
`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. 5–9. Patent Owner contends that the
`position is “unsupported.” Id. at 8. Patent Owner argues that “the ordinary
`observer includes commercial buyers who purchase replacement vehicle
`tailgates to repair a customer’s vehicle, such as repair shop professionals.”
`Id. at 7. 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.; Ex.
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`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 argument 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 which “require the insurer to repair
`vehicles with parts of ‘like kind and quality’ to the OEM parts.” Ex. 2002,
`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.
`
`D. Overview of the Prior Art
`1. Overview of the 2015 Chevrolet Colorado
`Petitioner relies upon the tailgate design of the 2015 Chevrolet
`Colorado pickup truck, as depicted in Exhibit 1005 (an archived webpage
`from www.automobilemag.com), as the primary reference for its Ground 2
`and Ground 3 obviousness challenges. A representative photograph from
`Exhibit 1005 is reproduced below:
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`Ex. 1005, 17. The photograph above shows a rear perspective view of the
`2015 Chevrolet Colorado with the tailgate closed. Other images of the 2015
`Chevrolet Colorado are discussed below as part of our analysis of
`Petitioner’s grounds.
`
`2. Overview of the 2015 GMC Canyon
`Petitioner relies upon the tailgate design of the 2015 GMC Canyon
`pickup truck, as depicted in several marketing brochures and archived
`webpages (Exhibits 1007–1011), as the primary reference for its Ground 4
`and Ground 5 obviousness challenges. A representative photograph from
`Exhibit 1007 is reproduced below:
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`Ex. 1007, 1. The photograph above shows a rear perspective view of the
`2015 GMC Canyon with the tailgate closed. Other images of the 2015 GMC
`Canyon are discussed below as part of our analysis of Petitioner’s grounds.
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`3. Overview of the O’Donnell
`O’Donnell is a design patent issued on August 5, 2014 to Patent
`Owner for a “vehicle decklid.” Ex. 1006. Patent Owner relies upon
`O’Donnell as a secondary reference for its Ground 3 and Ground 5
`obviousness challenges. Figure 1 of O’Donnell is reproduced below:
`
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`Id., 2. The reproduced figure above shows a front perspective view of the
`vehicle decklid design claimed in O’Donnell.
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`E.
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`Alleged Obviousness of the Claim Based on the 2015 Chevrolet
`Colorado (Grounds 2 and 3)
`Petitioner contends that the ’253 design would have been obvious
`based on the 2015 Chevrolet Colorado, either alone (Ground 2) or in
`combination with O’Donnell (Ground 3). For these challenges, Petitioner
`asserts that the 2015 Chevrolet Colorado is a proper primary, or Rosen,8
`reference because “the design characteristics of which are basically the same
`as the claimed design.” Pet. 39–40 (emphasis omitted) (citing Durling, 101
`F.3d at 103). Specifically, Petitioner asserts that the ’253 design and the
`2015 Chevrolet Colorado share the following design elements:
`1) the same overall shape and dimensions; . . . 2) a
`horizontal top planar surface extending the width of the
`tailgate; . . . 3) a contoured upper portion protruding from
`the horizontal top planar surface, first, sloping downward
`and away from the tailgate face and then, second, sloping
`downward and toward the tailgate face; and . . . 4) a
`tailgate face primarily consisting of an unadorned vertical
`exterior surface, the vehicle tailgate overhung by the
`contoured upper portion, with surface features further
`comprising: a horizontal crease in the lower portion of the
`tailgate stretching across the entire surface; and . . . 5) a
`convex portion stretching horizontally across the entire
`upper portion of a convex tailgate.
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`Pet. 42–48 (citing Ex. 1003 ¶ 50; Ex. 1004 ¶¶ 52–53).
`According to Petitioner, there are only “two minor differences”
`between the 2015 Chevrolet Colorado and the claimed design of the ’253
`
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`8 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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`Patent. Id. at 48. First, Petitioner contends that in the ’253 Patent there is a
`slight increase in the thickness of the top protrusion as it approaches the
`center of the tailgate, where the intended handle insert is indicated in dotted
`lines. Id. at 48–49 (citing Ex. 1003 ¶ 51; Ex. 1004 ¶ 54). Second, Petitioner
`contends that the horizontal crease in the lower portion of the tailgate
`surface is slightly thicker than the horizontal crease in the lower portion of
`the ’253 Patent. Id. at 49 (citing Ex. 1003 ¶ 51; Ex. 1004 ¶ 54). Petitioner
`contends, however, that these are “minor differences to the overall visual
`appearance of the design,” and “the addition of a thinner crease and a thicker
`protrusion to the 2015 Chevrolet Colorado and are ‘insubstantial change[s]
`that would have been obvious to a skilled designer.’” Id. (citing Ex. 1003
`¶ 51; Ex. 1004 ¶¶ 54–56; MRC Innovations, Inc., 747 F.3d at 1335).
`Petitioner reasons that it would have been obvious to a designer of ordinary
`skill to increase the thickness of the top protrusion to accommodate a handle
`inset at the top of the tailgate while sizing the handle insert to be both
`aesthetic and proportionally appropriate. Id. at 50 (citing Ex. 1004 ¶ 55).
`Petitioner also reasons that it would have been obvious to a designer of
`ordinary skill to decrease the thickness of the crease to visually connect to
`parts of the tail lamps set into the corners of the tailgate. Id. (citing Ex. 1004
`¶ 55). Additionally, under Ground 3, Petitioner contends that the second
`difference of the thinner crease is supplied by O’Donnell as the secondary
`reference, which suggests the modification of narrowing the crease of the
`2015 Chevrolet Colorado. Id. at 54–56 (citing Ex. 1003 ¶¶ 56–59; Ex. 1004
`¶¶ 62–64).
`In its Preliminary Response, Patent Owner contends that Petitioner’s
`obviousness theories based on the 2015 Chevrolet Colorado fail to address
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`several features of the claimed design including: 1) “the claimed design’s
`convexity that results in a middle portion of the tailgate substantially
`rearward of the side edges of the tailgate,” 2) “the appearance of the contour
`of the major surface of the tailgate,” 3) “the appearance of the ‘horizontal
`crease,’” 4) “the relative proportions of the purported ‘first’ and ‘second’
`sloping surfaces,” and 5) “a ‘contoured upper shape’ that extends rearward
`beyond the rest of the tailgate.” 23–37. Patent Owner further argues that
`Petitioner fails to demonstrate that O’Donnell can be used to modify the
`2015 Chevrolet Colorado to create a design with the same overall visual
`appearance as the claimed design. Id. at 37–40.
`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 these obviousness grounds. We agree
`with Patent Owner that Petitioner’s analysis is deficient insofar as it fails to
`address how certain prominent features of the claimed design are satisfied by
`the 2015 Chevrolet Colorado.
`In particular, with respect to the claimed design from the side view
`perspective shown in Figure 3, Petitioner describes that feature as a “convex
`portion stretching across the entire upper portion of a convex tailgate,” as
`depicted below:
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`Pet. 47. The image above is offered by Petitioner to show the convex
`portion stretching across the upper portion of the convex tailgate. Petitioner
`contends that the foregoing aspect of the claimed design is shown by the
`following images of the 2015 Chevrolet Colorado:
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`Pet. 48; Ex. 1005, 4. The top photograph above shows a cropped and
`enlarged side view of the 2015 Chevrolet Colorado with the tailgate open.
`The bottom photograph above shows a cropped and enlarged rear view of
`the 2015 Chevrolet Colorado with the tailgate open. The annotations in red
`in the photographs above were added by Petitioner to show the relevant
`features for its challenges. Pet. 48.
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`We find, however, that Petitioner’s analysis of the claimed design is
`incomplete in several respects. As noted by Patent Owner, the tailgate of the
`’253 design includes an outwardly-bowed convex shape, which is
`particularly prominent when viewed from the side as shown in Figure 3.
`Prelim. Resp. 23. Furthermore, as noted by Patent Owner, the major face of
`the tailgate of the claimed design depicts three inflection locations that
`contribute to a particular contoured shape between an upper portion of the
`major face and the “horizontal crease.” Id. at 27.
`These aspects of the claimed design are highlighted in the following
`annotated versions of Figure 3 provided by Patent Owner:
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`Id. at 24, 27. The annotated image on the left above is offered by Patent
`Owner to show that “the tailgate (blue) extends substantially rearward
`relative to the side edges (red),” and “[a]s a result of this convexity from
`side-to-side, a substantial portion of the tailgate is visible from the side
`view.” Id. at 23–24. The annotated image on the right above is offered by
`Patent Owner to show that “[t]he upper inflection location provides a
`relatively pronounced convexity at the upper end of the tailgate, while more
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`subtle curvature is depicted at locations near the lower inflection locations”
`and “[t]he claimed design thus exhibits a non-uniform curvature that
`accentuates the upper middle section (where lettering is shown in
`broken lines).” Id. at 27.
`
`As noted by Patent Owner, the tailgate of the ’253 design includes an
`outwardly-bowed convex shape, which is particularly prominent when
`viewed from the side as shown in Figure 3. Prelim. Resp. 23. Furthermore,
`as noted by Patent Owner, the major face of the tailgate of the claimed
`design depicts three inflection locations that contribute to a particular
`contoured shape between an upper portion of the major face and the
`“horizontal crease.” Id. at 27. We agree with Patent Owner that the images
`relied upon by Petitioner fail to show these features of the claimed design in
`the 2015 Chevrolet Colorado. None of the images provided in the Petition
`show that the middle portion of the 2015 Chevrolet Colorado’s tailgate
`extends substantially rearward relative to the side edge, thereby resulting in
`an outwardly-bowed convex shape when viewed from the side. Nor does
`Petitioner identify any corresponding inflection points in the 2015 Chevrolet
`Colorado’s tailgate that would produce a non-uniform curvature that
`accentuates the upper middle section of the tailgate. At most, the images
`provided by Petitioner show the contours of the edges of the opened tailgate
`from the side and rear view perspectives, but they do not show the convexity
`or curvature of the middle section of the tailgate as would be required for a
`complete analysis of the claimed design.
`
`Moreover, Petitioner’s own claim construction requires that the
`tailgate face primarily consist of an “unadorned vertical exterior surface.”
`Pet. 16. We observe that the vertical surface of the tailgate of the 2015
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`Chevrolet Colorado is not viewed reasonably as being primarily
`“unadorned.” That is so, at least due to the presence of the tailgate’s handle
`and the Chevrolet logo both of which reside on the vertical surface of the
`tailgate. We again reproduce the image from page 41 of the Petition that
`LKQ purports to be an image from the 2015 Chevrolet Colorado.
`
`
`
`The image above shows what Petitioner contends is the tailgate of the 2015
`Chevrolet Colorado truck. See Pet. 41. Given the presence of the Chevrolet
`logo and the handle, however, we do not regard the tailgate depicted in the
`2015 Chevrolet Colorado as being primarily “unadorned.” Prelim. Resp.
`28–29.
`
`Finally, in its Ground 3 challenge, Petitioner does not rely upon
`O’Donnell to make up for the foregoing deficiencies with the respect to the
`2015 Chevrolet Colorado. Rather, Petitioner only relies upon the “thinner
`crease” taught by O’Donnell in combination with the other features of the
`2015 Chevrolet Colorado. See Pet. 56. Following the principles set out in
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`International Seaway Trading Corp., we conclude that even if a designer of
`ordinary skill were to have combined the 2015 Chevrolet Colorado and
`O’Donnell, the result would not be a piece of prior art that accounts for the
`overall visual appearance of the ’253 design. See Int’l Seaway Trading
`Corp., 589 F.3d at 1240; High Point Design, 730 F.3d at 1311.
`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 2015 Chevrolet
`Colorado, either alone or in combination with O’Donnell.
`
`F.
`
`Alleged Obviousness of the Claim Based on the 2015 GMC
`Canyon (Grounds 4 and 5)
`Petitioner contends that the ’253 design would have been obvious
`based on the 2015 GMC Canyon, either alone (Ground 4) or in combination
`with O’Donnell (Ground 5). For these challenges, Petitioner asserts that the
`2015 GMC Canyon is a proper primary, or Rosen, reference because “the
`design characteristics of which are basically the same as the claimed
`design.” Pet. 58–59 (emphasis omitted) (citing Durling, 101 F.3d at 103).
`Specifically, Petitioner asserts that the 2015 GMC Canyon and the claimed
`design in the ’253 Patent share the same five design elements discussed
`above with respect to the 2015 Chevrolet Colorado. Pet. 61–68 (citing Ex.
`1003 ¶¶ 63–64; Ex. 1004 ¶¶ 68–69).
`According to Petitioner, there are only “two minor differences”
`between the 2015 GMC Canyon and the claimed design of the ’253 Patent,
`namely, the thickness of the top protrusion and the horizontal crease, which
`are also the differences identified for the 2015 Chevrolet Colorado above.
`Id. at 68 (citing Ex. 1003 ¶ 65; Ex. 1004 ¶¶ 70–71). Petitioner contends,
`again, that these differences are minor differences to the overall visual
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`appearance of the design and are “insubstantial change[s] that would have
`been obvious to a skilled designer.” Id. (citing Ex. 1003 ¶ 65; Ex. 1004 ¶¶
`70–71; MRC Innovations, Inc., 747 F.3d at 1335. Petitioner reasons that it
`would have been obvious to a designer of ordinary skill to increase the
`thickness of the top protrusion to accommodate a handle inset at the top of
`the tailgate while sizing the handle insert to be both aesthetic and
`proportionally appropriate. Id. at 69 (citing Ex. 1004 ¶¶ 70–71). Petitioner
`also reasons that it would have been obvious to a designer of ordinary skill
`to decrease the thickness of the crease to visually connect to parts of the
`taillamps set into the corners of the tailgate. Id. (citing Ex. 1004 ¶¶ 70–71).
`Patent Owner contends that Petitioner’s obviousness theories for the
`2015 GMC Canyon are deficient for the same reasons discussed with respect
`to the 2015 Chevrolet Colorado, namely because the Petition ignores several
`features
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