Trials@uspto.gov
`571-272-7822
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`Paper 9
`Date: October 13, 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.
`____________
`
`PGR2020-00055
`Patent D855,508 S
`____________
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Date: October 13, 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.
`____________
`
`PGR2020-00055
`Patent D855,508 S
`____________
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`PGR2020-00055
`Patent D855,508 S
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`LKQ Corporation and Keystone Automotive Industries, Inc.
`
`(collectively, “Petitioner”)1 filed a Petition requesting post-grant review of
`U.S. Patent No. D855,508 S (“the ’508 patent,” Ex. 1001). Paper 2 (“Pet.”).
`The Petition challenges the patentability of the sole design claim of the ’508
`patent. GM Global Technology Operations LLC (“Patent Owner”)2 filed a
`Preliminary Response to the Petition. Paper 6 (“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 demonstrated that it is more likely than not that
`the challenged claim is unpatentable based on at least one of the grounds
`presented. Therefore, we institute a post-grant review of that claim as to all
`grounds presented.
`
`B. Related Proceedings
`Petitioner lists 23 allegedly “related matters.” Pet. 5. Patent Owner
`
`lists 26 distinct proceedings as related but then qualifies the list by making
`the statement that: “Patent Owner does not concede that any of the above-
`
`
`1 Petitioner identifies LKQ Corporation and Keystone Automotive
`Industries, Inc. as real parties-in-interest. Pet. 5.
`2 Patent Owner identifies General Motors LLC and GM Global Technology
`Operations LLC as real parties-in-interest. Paper 6, 2.
`2
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`identified proceedings would affect, or be affected by, this proceeding.” Id.
`at 3. Paper 5, 3.
`
`C. The ’508 Patent and the Claim
`In a post-grant review requested in a petition filed on or after
`
`November 13, 2018, we apply the same claim construction standard used in
`district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2019). With
`regard to design patents, it is well-settled that a design is represented better
`by an illustration than a description. Egyptian Goddess, Inc. v. Swisa, Inc.,
`543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118
`U.S. 10, 14 (1886)). Although preferably a design patent claim is not
`construed by providing a detailed verbal description, it may be “helpful to
`point out . . . various features of the claimed design as they relate to the . . .
`prior art.” Id. at 679–80; cf. High Point Design LLC v. Buyers Direct, Inc.,
`730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to the district court, in
`part, for a “verbal description of the claimed design to evoke a visual image
`consonant with that design”).
`
`The ’508 patent is titled “Vehicle Front Skid Bar,” and issued August
`6, 2019, from U.S. Application No. 29/645,849, filed April 30, 2018.3
`Ex. 1001, codes (21), (22), (45), (54). The claim recites “[t]he ornamental
`design for a vehicle front skid bar, as shown and described.” Id., code (57).
`The ’508 patent covers a single claim as set forth in four figures. The
`
`3 Because the earliest possible effective filing date for the ’508 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`the America Invents Act) and this petition was filed within 9 months of its
`issue date, the ’508 patent is eligible for post-grant review. See 35 U.S.C.
`§ 321(c).
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`Description specifies that “[t]he broken lines in the drawings illustrate
`portions of the front skid bar that form no part of the claimed design.”
`Figures 1–4 of the ’508 patent are depicted below.
`
`
`
`
`Ex. 1001. Figures 1–4 above depict, respectively, the following views of the
`claimed vehicle front skid bar design: a perspective view of the vehicle
`
`4
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`front skid bar, a front view, a left side view, and a bottom view. Id., code
`(57).
`We determine that the following verbal descriptions will be helpful by
`
`pointing out “various features of the claimed design as they relate to the . . .
`prior art.” Egyptian Goddess, 543 F.3d at 679–80. Petitioner offers a
`detailed claim construction position, identifying almost every feature that
`contributes to the overall appearance of the claimed design. See Pet. 11–20;
`see also Ex. 1004 ¶¶ 32–37 (Petitioner’s declarant testifying that “images
`rather than words best represent the design” and “it is impractical to attempt
`to verbally characterize every element of the claimed design”).
`We discuss here some features identified by Petitioner and Patent
`Owner that we determine contribute to the ornamental design of the ’508
`patent and are relevant to our analysis.
`The claimed skid bar design depicts a perimeter shape with noticeable
`curvature from side-to-side such that the center of the skid bar extends
`further forward than sides of the skid bar. See Prelim. Resp. 15. The
`claimed design has a substantially rectangular vertical front portion that also
`curves rearward from the center that terminates in a top portion and small
`side portions that angle backward. See Pet. 11. The top portion adjoins a
`bottom portion curving slightly rearward from a center, as best depicted in
`Petitioner’s annotated Figure 3 below. See id.
`
`5
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`Petitioner’s annotated Figure 3 with a top portion highlighted in blue and a
`bottom portion highlighted in green. Pet. 11.
`From a front view, the top and bottom portions have four evenly
`spaced recessed portions as best depicted in Petitioner’s annotated Figure 2
`below.
`
`
`
`Petitioner’s annotated Figure 2 with a top portion highlighted in blue and a
`bottom portion highlighted in green and recess portions highlighted in
`purple. Pet. 12. The curvature and depth of the four recesses are best shown
`by Figures 1 and 3 above.
`
`Neither party alleges that the claimed design includes both functional
`and ornamental elements, thus, we do not undertake further construction in
`order to identify the non-functional aspects of the design.
`
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`D. Evidence
`Petitioner relies on the following references4:
`
`Reference
`
`Changfeng Leopaard CS10, http://chinaautoweb.com/carmodels/
`leopaard-cs10/?pid=26615, archived on July 29, 2014 by the
`Internet Archive organization’s “Wayback Machine” at
`https://web.archive.org/web/20140729063321/http://chinaautoweb.co
`m/car-models/leopaard-cs10/?pid=26615.
`Changfeng Leopaard CS10, http://chinaautoweb.com/carmodels/
`leopaard-cs10/?pid=26614, archived on July 29, 2014 by the
`Internet Archive organization’s “Wayback Machine” at
`https://web.archive.org/web/20140729090625/http://chinaautoweb.co
`m/car-models/leopaard-cs10/?pid=26614.
`Changfeng Leopaard CS10, http://chinaautoweb.com/carmodels/
`leopaard-cs10/?pid=26615, archived on July 18, 2017 by the
`Internet Archive organization’s “Wayback Machine” at
`https://web.archive.org/web/20170718213024/http://chinaautoweb.co
`m/car-models/leopaard-cs10/?pid=26615.
`Changfeng Leopaard CS10, http://chinaautoweb.com/carmodels/
`leopaard-cs10/?pid=26614, archived on July 18, 2017 by the Internet
`Archive organization’s “Wayback Machine” at
`https://web.archive.org/web/20170718214205/http://chinaautoweb.co
`m/car-models/leopaard-cs10/?pid=26614.
`Changfeng Leopaard CS10, http://chinaautoweb.com/carmodels/
`leopaard-cs10/?pid=42666, archived on July 18, 2017 by the
`Internet Archive organization’s “Wayback Machine” at
`https://web.archive.org/web/20170718021511/http://chinaautoweb.co
`m/car-models/leopaard-cs10/?pid=42666.
`
`Exhibit
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`4 We adopt, for purposes of this decision only, Petitioner’s descriptions of
`the references. See Pet. vii–viii (Table of Exhibits), 14–15 (identification of
`evidence relied upon). We make no substantive determinations regarding
`Petitioner’s descriptions and representations. We also make no
`determinations regarding Petitioner’s evidentiary arguments.
`7
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`2012 Chevrolet Equinox brochure image, http://www.autobrochures.
`com/makes/Chevrolet/Equinox/Chevrolet_US
`Equinox_2012.pdf, archived on April 3, 2014, by the Internet Archive
`organization’s “Wayback Machine” at
`https://web.archive.org/web/20140403104902/http://www.autobrochures.
`com/makes/Chevrolet/Equinox/Chevrolet_US%20Equinox_
`2012.pdf.
`2012 Chevrolet Equinox brochure, http://www.autobrochures.
`com/makes/Chevrolet/Equinox/Chevrolet_US%20Equinox_
`2012.pdf, archived on April 3, 2014, by the Internet Archive
`organization’s “Wayback Machine” at
`https://web.archive.org/web/20140403104902/http://www.autobrochures.
`com/makes/Chevrolet/Equinox/Chevrolet_US%20Equinox_
`2012.pdf.
`
`Petitioner also relies on the Declarations of James M. Gandy
`(Ex. 1003) and Jason C. Hill (Ex. 1004) in support of its arguments.
`
`1011
`
`1012
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that the sole design claim of the ’508 patent is
`
`unpatentable on the following grounds (Pet. 14–15):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1
`102
`2015 Changfeng Leopaard CS10
`(or publications depicting it)5
`2015 Changfeng Leopaard CS10
`(or publications depicting it)
`alone
`2015 Changfeng Leopaard CS10
`(or publications depicting it) and
`2012 Chevrolet Equinox (or
`publications depicting it)
`
`1
`
`1
`
`103
`
`103
`
`
`5 As discussed further below, Petitioner identifies several exhibits as the
`“Primary” reference (2015 Changfeng Leopaard CS10) for each ground,
`including vehicle itself, and various alleged publications (Exs. 1006–1010).
`See Pet. 14–15.
`
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`II. ANALYSIS
`A. Principles of Law
`
`1. Anticipation
`The “ordinary observer” test for anticipation of a design patent is the
`same as that used for infringement, except that for anticipation, the patented
`design is compared with the alleged anticipatory reference rather than an
`accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d
`1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design
`patent infringement was first enunciated by the Supreme Court in Gorham
`Co. v. White, 81 U.S. 511 (1871), as follows:
`[I]f, in the eye of an ordinary observer, giving such attention as
`a purchaser usually gives, two designs are substantially the
`same, if the resemblance is such as to deceive such an observer,
`inducing him to purchase one supposing it to be the other, the
`first one patented is infringed by the other.
`Id. at 528. The ordinary observer test requires the fact finder to consider all
`of the ornamental features illustrated in the figures that are visible at any
`time in the “normal use” lifetime of the accused product, i.e., “from the
`completion of manufacture or assembly until the ultimate destruction, loss,
`or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further,
`while the ordinary observer test requires consideration of the overall prior art
`and claimed designs,
`[t]he mandated overall comparison is a comparison taking into
`account significant differences between the two designs, not
`minor or trivial differences that necessarily exist between any
`two designs that are not exact copies of one another. Just as
`“minor differences between a patented design and an accused
`article’s design cannot, and shall not, prevent a finding of
`infringement” . . . so too minor differences cannot prevent a
`finding of anticipation.
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`Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp.,
`728 F.2d 1423, 1444 (1984)).
`2. Obviousness
`“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). As explained by the Federal Circuit, “[t]he 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.” High Point Design LLC v.
`Buyers Direct, Inc., 730 F.3d 1301, 1313 (Fed. Cir. 2013) (emphases
`added).6 See also MPEP § 1504.03 (II) (“the proper standard is whether the
`design would have been obvious to a designer of ordinary skill with the
`claimed type of article”).
`The 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”;
`
`
`6 Petitioner correctly notes the “confusion” created by the 2009 Federal
`Circuit decision stating that the ordinary observer test governing design
`patent infringement and anticipation also applies to the obviousness inquiry.
`Pet. 29 (citing Int’l Seaway Trading Corp., 589 F.3d at 1240–41 and High
`Point Design, 730 F.3d at 1313–15 n.2). Petitioner takes the position that
`the “Petition, out of an abundance of caution, considers both perspectives.”
`Pet. 30. We adopt the view of the High Point Design court that “the court
`[in Int’l Seaway] could not rewrite precedent setting forth the designer of
`ordinary skill standard.” High Point Design, 730 F.3d at 1313 n.2.
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`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 of the obviousness analysis, we must “(1)
`discern the correct visual impression created by the patented design as a
`whole; and (2) determine whether there is a single reference that creates
`basically the same visual impression.” Id. at 1312 (internal quotation and
`citations omitted).
`In the second step, the primary reference may be modified by
`secondary references “to create a design that has the same overall visual
`appearance as the claimed design.” Id. at 1311 (internal quotation and
`citations omitted). However, the “secondary references may only be used to
`modify the primary reference if they are ‘so related [to the primary
`reference] that the appearance of certain ornamental features in one would
`suggest the application of those features to the other.’” Durling v. Spectrum
`Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Borden, 90
`F.3d 1570, 1575 (Fed. Cir. 1996)).
`
`When evaluating prior art references for purposes of determining
`patentability of ornamental designs, the focus must be on actual appearances
`and specific design characteristics rather than design concepts. In re
`Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993); see also Apple, Inc. v.
`Samsung Elec. Co., 678 F.3d at 1332 (“Rather than looking to the ‘general
`concept’ of a tablet, the district court should have focused on the distinctive
`‘visual appearances’ of the reference and the claimed design.”).
`
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`3. Ordinary Observer
`Both parties offer distinct definitions of an “ordinary observer.” Pet.
`39–40; Prelim. Resp. 5–9. According to Petitioner, “the ordinary observer
`should be the retail consumer of an automobile because that is the individual
`who compares the claimed design to other automobile designs, makes the
`decision to purchase a vehicle comprising the embodying design.” Pet. 39–
`40 (citing Ex. 1003 ¶ 39; Ex. 1004 ¶ 37). Neither Petitioner, nor its
`declarants, provide evidentiary support for the assessment of an ordinary
`observer.
`Patent Owner generally does not agree with Petitioner’s position as to
`the ordinary observer. Prelim. Resp. 7–9. Patent Owner argues that “the
`ordinary observer includes commercial buyers who purchase replacement
`vehicle front skid bars 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, Paper 2 (Petition)
`(Exhibit 2002)) that “customers for aftermarket automotive parts primarily
`consist of professional auto body and mechanical repair shops who are
`knowledgeable about the automotive industry.” Prelim. Resp. 7 (quoting
`Ex. 2002, 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. 2002, 4 (“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 next argues that in a related proceeding we issued a
`decision on institution determining that the ordinary observer is “the retail
`consumer of vehicle front bumpers.” Prelim. Resp. 9 (quoting IPR2020-
`
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`00062, Paper 14, 14 (PTAB Apr. 16, 2020)). Notably, Patent Owner fails to
`mention that we adopted Petitioner’s proposed construction in that
`proceeding, and also denied institution finding that “[o]ur analysis . . .
`reaches the same result using either parties’ definition of the ordinary
`observer.” Id. at 13 (“Petitioner contends ‘the ordinary observer would be
`the retail consumer of vehicle front bumpers.’ Pet. 31 (citing Ex. 1003 ¶ 35;
`Ex. 1004 ¶ 26)”).
`As we noted in the IPR2020-00062 proceeding, 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. 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.
`Patent Owner cites Egyptian Goddess and In re Harvey for the
`proposition that the “in a crowded field, the ordinary observer is more likely
`to be attuned to small differences.” Prelim. Resp. 6–7. But In re Harvey
`relates to vases. In our view, and on this record, Patent Owner has not
`explained sufficiently how front skid bars, which are a more recent article of
`manufacture than vases, should be understood as a crowded field such that
`small differences should be accorded significant weight.
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`To the extent either party believes this ordinary observer issue to be
`persuasive for their desired outcome, they are invited to present further
`evidence and argument during trial and explain how their proposed
`“ordinary observer” makes a difference in the outcome of the proceeding.
`4. 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 experience in the field of transportation design, or
`someone who has several years’ work experience in the field of
`transportation or automotive design.
`Pet. 37 (citing Ex. 1003 ¶¶ 41–42; Ex. 1004 ¶ 39).
`Patent Owner argues, without citation to evidence, that:
`[a] designer of ordinary skill in the art relevant to the ’508
`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. 9–10.
`The parties do not identify, and we do not discern, any material
`difference between the parties’ proposed definitions. For purposes of this
`decision and on the record currently before us, which includes testimony by
`Petitioner’s witnesses, we adopt Petitioner’s proposed definition of the
`ordinary designer.
`
`B. Alleged Anticipation and Obviousness of the Claim
`Based on 2015 Changfeng Leopaard CS10
`Petitioner contends that the ’508 patent claim is anticipated by the
`2015 Changfeng Leopaard CS10 (“Leopaard”). Pet. 44–51. Petitioner
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`alternatively argues that the claim would have been obvious to a designer of
`ordinary skill in the art over Leopaard. Pet. 51–55.
`As for anticipation, Petitioner argues that to the ordinary observer,
`“[t]he skid bar of the Leopaard is substantially the same as the claimed
`design of the ʼ508 Patent.” Pet. 44 (citing Ex. 1003 ¶¶ 54–57; Ex. 1004 ¶¶
`54–56). Below, we examine Leopaard and then address the parties’
`contentions. Based on the record currently before us, Petitioner has shown
`that it is more likely than not that the ordinary observer would view the skid
`bar of Leopaard as substantially the same as the claimed design of the ʼ508
`patent.
`
`1. Leopaard
`Petitioner articulates the primary reference for this ground as the
`Leopaard vehicle itself or “publications depicting” Leopaard. Pet. 16–17
`(citing Exs. 1006–1007, allegedly available no later than July 29, 2014, and
`Ex. 1008, an additional image of Leopaard publicly available no later than
`July 18, 2017). Petitioner contends that “Exhibits 1006–1007 constitute a
`separate single publication as of July 29, 2014, and Exhibits 1008–1010
`constitute a separate, single publication as of July 18, 2017,” and further
`“each qualify as prior art under 35 U.S.C. § 102(a)(1).” Pet. 17. The skid
`bar of Leopaard is depicted in the two images below.
`
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`Front left view of Leopaard as shown in Exhibit 1010, page 1. Pet. 20.
`
`
`Front view of Leopaard showing its skid bar from Exhibit 1007, page 1.
`Pet. 20.
`
`2. Petitioner’s Contentions
`Petitioner contends “[t]he skid bar of the Leopaard is substantially the
`same as, if not identical to, the claimed design of the ’508 Patent from the
`perspective of an ordinary observer,” and “[a]ny differences . . . are minor
`and therefore insufficient to preclude a finding of anticipation.” Pet. 44
`(citing Ex. 1003 ¶¶ 54–57; Ex. 1004 ¶¶ 54–56). Petitioner relies on the
`following direct, visual comparison of the ’508 patent and the skid bar of
`Leopaard, as shown below.
`
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`Figure 1 compared to Exhibit 1006, page 1 (top), Figure 2 compared to
`Exhibit 1007, page 1 (middle) and Figure 3 compared to both Exhibit 1010,
`page 1 and Exhibit 1006, page 1 (bottom).
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`Petitioner next provides “specific comparison of particular elements”
`to better show similarities. Pet. 46–50. For example, a few of Petitioner’s
`annotated comparisons are depicted below. Relying on its proposed claim
`interpretation, Petitioner argues “[e]ach design includes a substantially
`rectangular bottom portion curving slightly rearward from the center and
`terminating in small side portions rising slightly upward.” Pet. 47.
`
`
`Petitioner’s comparison of Figures 2 and 3 of the ’508 patent with Exhibit
`1007, page 1, Exhibit 1010, page 1, and Exhibit 1006, page 1 with green
`highlighting along the bottom portion. Pet. 47.
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`Petitioner next notes that “[i]n each design, the substantially
`
`rectangular bottom portion is adjacent to a substantially rectangular vertical
`front portion that also curves rearward from the center that terminated in a
`top portion and small side portions that angle backward.” Pet. 48. Petitioner
`further argues that “the substantially rectangular bottom portion and the
`vertical front portion have four, evenly spaced, recessed portions with each
`recessed portion,” as depicted in the following annotated figures.
`
`
`Petitioner’s comparison of Figures 2 and 3 of the ’508 patent with Exhibit
`1007, page 1 (Exhibit 1009, page 1), Exhibit 1010, page 1, and Exhibit 1006,
`page 1 with green highlighting along the bottom portion, blue highlighting
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`along the top portion, and purple highlighting showing on the four recesses.
`Pet. 49.
`
`Petitioner alleges “[t]here is only one minor difference between the
`skid bar of the Leopaard and the claimed design of the ʼ508 Patent.” Pet. 51
`(citing Ex. 1003 ¶ 59; Ex. 1004 ¶ 58). According to Petitioner, “[t]he
`vehicle skid bar of the ’508 Patent has side edges that are vertical rather than
`slightly angled out in a horizontal direction (i.e., the width of the Leopaard
`skid bar increases from the top, front edge to the bottom, back edge).” Id.
`Relying on the testimony of its declarants, Petitioner contends that “this is a
`de minimis difference that does not impact the overall visual impression of
`the design.” Id. (citing Ex. 1003 ¶ 59; Ex. 1004 ¶ 58). Petitioner concludes
`by arguing “[t]he ’508 Patent is anticipated by the skid bar of the Leopaard
`because an ordinary observer . . . would have believed that the skid bar
`design of the Leopaard had an overall visual appearance that was
`substantially the same as that of the design claimed in the ’508 Patent.” Pet.
`51 (citing Ex. 1003 ¶ 60; Ex. 1004 ¶ 59).
`
`As for obviousness of the design over Leopaard alone, Petitioner
`contends, “[t]o the extent any slight difference between the skid bar of the
`Leopaard and the single claim of the ’508 Patent can be found to prevent a
`finding of anticipation, then the single claim of the ’508 Patent is
`unpatentable as obvious over the Leopaard alone.” Pet. 51. Petitioner
`contends that Leopaard is a proper Rosen reference because “the Leopaard is
`a vehicle which includes a vehicle skid bar with basically the same overall
`visual appearance as the claimed design for a vehicle skid bar in the ’508
`Patent.” Pet. 52. To address the recognized difference of “side edges that
`are vertical rather than slightly angled out in a horizontal direction (i.e., the
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`width of the skid of the Leopaard skid bar increases from the top, front edge
`to the bottom, back edge),” Petitioner contends “this is a de minimis
`difference that does not impact the overall visual impression of the design,
`and further would have been immediately obvious to, and well within the
`knowledge, experience, skill, and creativity of a designer of ordinary skill in
`the art.” Pet. 54–55.
`3. Patent Owner’s Contentions
`Patent Owner contends Petitioner’s anticipation theory “is deficient
`for several reasons,” and the Petition fails to consider “readily apparent
`features of the design that differ from the Leopaard.” Prelim. Resp. 20.
`Patent Owner first notes that the Petition fails to even consider and compare
`the bottom view of the claimed design. Id. at 21 (“omits any corresponding
`views of the Leopaard from which a comparison can be made with the
`claimed design”). Patent Owner points out that the claimed design includes
`a unique bottom perimeter (rear edge) and recess spacing from that
`perimeter that Petitioner has not addressed. Id. at 21–23. Patent Owner next
`argues that Petitioner has improperly “add[ed] features to the Leopaard
`where none are shown in the original views,” including adding shading
`where there should be none. Id. at 23–24.
`Patent Owner next argues that Petitioner “fails to address the top
`surface of the claimed design in comparison to the Leopaard, and the
`contribution of the top surface to the overall appearance of the claimed
`design.” Id. at 25.
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`Patent Owner’s annotated Figure 1 with a separate enlarged portion, each
`highlighted in blue along a top surface. Prelim. Resp. 26. Patent Owner
`contends that “the Leopaard lacks the appearance provided by the top
`surface of the claimed design,” and “the Leopaard at most includes a thin
`edge that lacks the overall shape, substantial depth, and outwardly-angled
`lateral edges of the claimed design.” Id.
`
`Patent Owner next argues that Petitioner “also fails to address the
`shape and appearance of rectangular side portions of the claimed design
`compared to the Leopaard.” Id. at 27. Patent Owner further alleges that
`Leopaard shows no side portions. Id. at 29. Similarly, Patent Owner
`contends that “the Petition does not compare the side view shown in FIG. 3
`to a side view of the Leopaard at all.” Id. This failure, according to Patent
`Owner, allows Petitioner to ignore significant design features such as
`curvature from middle portion to the side edges as well as “an inflection line
`. . . across the bottom surface, at which the bottom surface transitions to a
`shallower angle as it extends rearwardly.” Id. at 30–31 (“LKQ ignores the
`contribution of these features prominently depicted in the side view, and
`fails to acknowledge these features in its comparison to the Leopaard.”).
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`Patent Owner next contends that Petitioner “fails to address the
`
`positioning of the claimed recesses, in which the recesses are closer to the
`center of the skid bar than to sides of the skid bar,” and “[i]n contrast, the
`Leopaard has a spacing arrangement in which the outer most recesses are
`located significantly closer to the sides of the skid bar than to the inner
`recesses.” Prelim. Resp. 33–34. Patent Owner similarly argues that “the
`[claimed] recesses terminate at locations spaced apart from the top/front and
`bottom/rear edges of the skid bar,” but in Leopaard the bottom edges of the
`recesses are not visible from the views Petitioner provides. Id. at 34.
`
`As for obviousness of the claimed design based on Leopaard alone,
`Patent Owner reiterates that “there are in fact multiple readily apparent
`differences between the claimed design and the Leopaard.” Prelim. Resp.
`36. Further, Patent Owner contends Petitioner’s analysis is deficient
`because “LKQ summarily dismisses any differences as ‘de minimis,’ without
`meaningful analysis of each one of the many required changes.” Id. at 37.
`4. Analysis
`Based on the current record before us, we determine Petitioner has
`established that the design claim of the ’508 patent is more likely than not
`anticipated by Leopaard. Although Patent Owner presents reasoned attorney
`arguments as to certain distinctions in the designs, we are not convinced that
`these differences are beyond inconsequential based on the record before us.
`Further, Petitioner’s evidence and argument showing how the designs are
`substantially the same to the ordinary observer overcomes these differences.
`See Ex. 1003 ¶¶ 56–60; Ex. 1004 ¶ 55–59. The ordinary observer analysis
`“requires the fact finder to ‘compar[e] similarities in overall designs, not
`similarities of ornamental features in isolation.’” Lanard Toys Ltd. v.
`Dolgencorp LLC, 958 F.3d 1337, 1343 (Fed. Cir. 2020) (quoting Ethicon
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`Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015)).
`P
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