LKQ Corporation, et al. v. GM Global Technology Operations LLC
Docket No. 2022-00055 (PGR2020-00055) (https://cafc.uscourts.gov/opinions-orders/22-1253.OPINION.1-20-2023_2066551.pdf) (Non-Precedential)
LOURIE, CLEVENGER, STARK
January 20, 2023
Brief Summary: Board post-grant decision finding GM’s design patent not anticipated or obvious affirmed.
Summary: LKQ appealed USPTO final written decision (FWD) holding it failed to show by a preponderance of the evidence that GM’s design patent U.S. Patent D855,508 (the ‘’508 patent’) directed to an “ornamental design for the vehicle front skid bar” shown in Figs. 1-4 was anticipated or would have been obvious over the cited prior art. LKQ sells automotive body repair parts and was a party to a license with GM but that expired in 2022, “after which GM sent letters to LKQ’s business partners alleging that the now unlicensed LKQ parts infringe its patents.” LKQ petitioned the USPTO for post-grant review of the ‘508 patent, arguing that “it was anticipated by the design of the 2015 Changfeng Leopaard CS1020 (“Leopaard”) and would have been obvious over the Leopaard alone or in combination with the design of the 2012 Chevrolet Equinox (‘Equinox’).” The Board disagreed, determining “that the ordinary observer would include both retail consumers who purchase replacement skid bars and commercial replacement part buyers”, emphasizing “that the “’508 design claims a ‘vehicle front skid bar,’ not a vehicle in total.’” The Board also “concluded that, although there were some similarities, the references produced depicting the Leopaard design did not show certain aspects of the claimed design (e.g., the bottom or the sides) and what was visible from the provided images created a different overall impression” (e.g., “a ‘rugged, chiseled, three-dimensional overall appearance’ that the Leopaard’s sloping design did not have.”) The Board also established the Rosen (In re Rosen, 673 F.2d 388 (C.C.P.A. 1982)) and Durling (Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)) tests and found that “the Leopaard did not qualify as a proper primary reference under Rosen” and therefore “did not turn to Durling step two and look beyond the Leopaard to the Equinox”. LKQ argued in this appeal that the Board erred in its finding regarding the ordinary observer, that the Rosen and Durling tests were “implicitly overruled” by KSR (KSR International Co. v. Telflex, Inc., 550 U.S. 398 (2007)), and placed “undue emphasis on allegedly trivial differences between the” ‘508 patent and the prior art (“would not have mattered to the correct ordinary observer,…failed to properly compare the designs as a whole”). The FC panel agreed with GM regarding who the ordinary observer would be (“the lens of the ordinary observer that the anticipation inquiry is viewed. Gorham Co. v. White, 81 U.S. 511, 528 (1871)”, “there is a market for the claimed skid bar alone”, “the claimed design of the ’508 patent is not the design of a whole vehicle, but rather a design of a specific part of a vehicle”; KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1451 (Fed. Cir. 1993); “the Leopaard design do not sufficiently show certain aspects of its design”, “different overall impressions”; “it is not clear the Supreme Court has overruled Rosen or Durling”). The Board decision was therefore affirmed.