GM Global Technology Operations LLC

Patent Trials and Appeals Board

Apr 15, 2021

IPR2020-00064 (P.T.A.B. Apr. 15, 2021)

Trials@uspto.gov Paper No. 39
571-272-7822 Entered: April 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LKQ CORPORATION and
KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
LKQ,
Petitioner,

v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC,
GM,
Patent Owner.
____________

IPR2020-00064
Patent D823,741 S
____________

Before JOSIAH C. COCKS, SCOTT A. DANIELS, and
ROBERT L. KINDER, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining The Challenged Claim Unpatentable
35 U.S.C. § 318(a)

IPR2020-00064
Patent D823,741 S

2
I. INTRODUCTION
A. Background
LKQ Corporation and Keystone Automotive Industries, Inc.,
(collectively “LKQ”) filed a Petition to institute an inter partes review of the
claim for a “Vehicle Front Fender” in U.S. Patent No. D823,741 (Ex. 1001,
“the ’741 patent”). Paper 2 (“Pet.”). GM Global Technology Operations,
Inc., (“GM”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). LKQ
requested, and we authorized, a Preliminary Reply to the Preliminary
Response. Paper 10 (“Reply”). We entered a Decision instituting an inter
partes review of the challenged claim in this proceeding. Paper 13 (“Inst.
Dec.”). GM timely filed a Response. Paper 16 (“PO Resp.”) LKQ filed a
Reply. Paper 28 (“Pet. Reply”). GM subsequently filed a Sur-Reply. Paper
34 (“PO Sur-Reply”). We heard oral argument on January 28, 2021. A
transcript of the argument has been entered into the record. Paper 38
(“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). Having reviewed the
arguments of the parties and the supporting evidence, we find that Petitioner
has demonstrated by a preponderance of the evidence that the sole claim of
the ’741 patent is unpatentable.
B. Additional Proceedings
The parties identify various other inter partes and post grant review
proceedings that Petitioner has filed challenging different patents owned by
GM. The parties do not state that these other proceedings affect, or would
be affected by, this proceeding involving the ’741 patent. Pet. 4–5; Paper 4.
IPR2020-00064
Patent D823,741 S

3
C. The ’741 Patent and Claim
The ’741 patent (Ex. 1001) issued July 24, 2018, and lists GM as the
assignee. Ex. 1001, codes (45), (73). The title, “Vehicle Front Fender,”
refers to an outer surface of a vehicle front fender illustrated in solid lines
but with certain portions, which appear to be mainly functional attachment
points, shown in dashed lines. Id. at code (54); see 37 C.F.R. § 1.152, see
also MPEP § 1503.02, subsection III (9th ed. rev. 10.2019 June 2020)
(“Unclaimed subject matter may be shown in broken lines for the purpose of
illustrating the environment in which the article embodying the design is
used. Unclaimed subject matter must be described as forming no part of the
claimed design or of a specified embodiment thereof.”).
1. The Claim
The ’741 design includes Figures 1–4, reproduced below, illustrating
the claimed front fender as set forth below.1

1 We refer to the claim, i.e., the vehicle front fender shown in Figures 1–4,
also as “the ’741 design.”
IPR2020-00064
Patent D823,741 S

4

Ex. 1001. Figures 1–4 above illustrate, respectively, the following views of
the claimed vehicle rear bumper design: a perspective view, a front view, a
side elevation view, and a top view. Id. at code (57). The Description of the
invention explains, “[t]he broken lines shown in the drawings depict portions
of the vehicle front fender that form no part of the claimed design.” Id. at
Description. See 37 C.F.R. § 1.152.
2. The Claim Construction Standard
In an inter partes review based on a petition filed after November 13,
2018, the claims are construed
using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. [§] 282(b),
including construing the claim in accordance with the ordinary
and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to
the patent.
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (setting
forth claim construction standard in civil actions).
With respect 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
IPR2020-00064
Patent D823,741 S

5
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.” Egyptian Goddess, 543 F.3d at 679–80; cf.
High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314–15
(Fed. Cir. 2013) (remanding to district court, in part, for a “verbal
description of the claimed design to evoke a visual image consonant with
that design”).
3. LKQ’s Proposed Claim Construction
LKQ contends that the claim of the ’741 patent can be described
according to the drawings as shown by the solid lines as
[a] vehicle front fender comprising:
a substantially vertical side including an intermittent u-
shaped notch near a top of the fender;
the top of the fender including a top protrusion near the
intermittent, u-shaped notch, the top of the fender sloping down
and away from the substantially vertical side to a curved, distal
portion;
a crease in a surface of the fender extending from the
substantially vertical side and in the general direction of the
curved, distal portion; and
a wheel arch between the curved, distal portion and a
bottom of the fender, wherein the wheel arch is connected to an
edge of the curved, distal portion at an obtuse angle.
Pet. 12–14 (emphasis omitted).
4. GM’s Proposed Claim Construction
GM contends that LKQ’s claim construction is superficial and does
not present an accurate visual image of the design. PO Resp. 2. GM
proposes a more detailed construction arguing that the “design includes a
IPR2020-00064
Patent D823,741 S

6
unique top edge shape, overall profile, and nuanced divergent sculpting of its
surfaces. Each of these features contributes to the overall appearance of the
claimed design.” Id. (citing Ex. 2004 ¶¶ 26–50 (Peters declaration)).
Summarized below are four aspects of the fender design which GM argues
require more detailed consideration. Id. at 2–13.
First, GM asserts that the design includes a “substantially parallel top
edge” and an “arcuate edge feature.” Id. (citing Ex. 2004 ¶ 38). GM’s
annotated portions of Figures 2, 4, and 6 illustrating the parallel top edge in
green, and the arcuate edge feature are reproduced below.

Portions of Figures 2, 4, and 6 of the ’741 design as annotated by GM are
shown above illustrating the top edge and arcuate edge features. Referring
to annotated Figure 1 of the ’741 patent, reproduced below, GM argues that
the arcuate edge feature is a prominent element of the design and includes:
(i) an inwardly folded, linear top edge a;
(ii) a sharp, downwardly sloped edge b; followed by
IPR2020-00064
Patent D823,741 S

7
(iii) a gradual, downwardly sloped edge c.
Id. at 3 (citing Ex. 2004 ¶ 39).

Annotated partial Figure 1 is shown above illustrating GM’s annotated parts
a, b, and c, of the arcuate edge feature.
Second, according to GM’s annotated Figure 4 reproduced below, the
perimeter shape of the ’741 design “narrows as it extends from the rear end
to the front tip.” Id. at 6.

Figure 4 of the ’741 patent, above, as annotated by GM illustrates a
narrowing profile from rear to front. Also, GM points out that in Figure 4 a
portion of the wheel arch can be observed due to the surface contours of the
IPR2020-00064
Patent D823,741 S

8
fender body as shown in another annotated view of Figure 4 reproduced
below. Id. at 6–7.

Figure 4 of the ’741 patent, above, as annotated by GM, illustrates the wheel
arch, i.e. rim, relative to the upper surface contour of the fender.
Third, GM argues that the front of the fender includes “a unique distal
portion shape that is prominent and significant in its impact on the overall
appearance of the vehicle front fender.” Id. at 7 (citing Ex. 2004 ¶ 43). GM
provides an annotated portion of Figure 3, reproduced below.

IPR2020-00064
Patent D823,741 S

9
Fig. 3 of the ’741 patent, above, as annotated by GM, depicts a first slope
which GM argues “is approximately 30% longer than the” second slope
which leads to a pointed edge. Id. at 8–9.
Fourth, GM argues that the ’741 design includes a “character line,”
what LKQ refers to as the “crease,” and that “the top view shape of the
character line shows that it is divergent (i.e., not parallel) with respect to all
of the surrounding edges (highlighted in blue and yellow) as shown in
Figure 4, as annotated by GM and reproduced below. Id. at 10–11.

Figure 4, as annotated by GM above, depicts the red character line as
“diverging” from surrounding edges shown in blue and yellow. GM also
argues that the character line is formed by a convex surface of the fender.
Id. GM relies upon its declarant, Mr. Peters, who testifies that
[t]he character line is a critical feature of car design because it
sets the tone for the proportions and the basic body shape of not
only the fender, but also of many vehicle parts attached to the
fender, such as the front portion of the vehicle such as the
bumper, head lights, side panels, as well as rear portions of the
vehicle, such as side panels and rear bumper.
Ex. 2004 ¶ 48. Mr. Peters also points out that “the inflection line
(highlighted in blue) is a crease that extends from the claimed design’s rear
lateral edge to its arcuate edge feature.” Id. ¶ 49. GM contends that overall
IPR2020-00064
Patent D823,741 S

10
“[e]ach of these features contributes to the overall appearance of the claimed
design. PO Resp. 2 (citing Ex. 2004 ¶¶ 26–50).
In addition, GM argues that the nuances discussed above are
important, and “become even more significant when assessing those nuances
in view of the crowded art.” Id. at 13. GM argues that “[t]he field of fender
designs is a crowded one.” Id. at 15. In support of this position, GM lists 22
patents that depict fender designs. GM argues that when looking at fenders,
“a skilled designer would focus not on the generic commonalities, but on the
nuanced differences between the designs.” Id. at 17.
5. The Claim Construction Analysis
We address initially the particular argument made by GM that vehicle
fender designs is a crowded art. GM cites several cases, including In re
Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993), where the Federal Circuit
discusses crowded art. In Harvey, the Federal Circuit distinguished the facts
from a prior case, In re Hopkins, explaining that the loud speaker designs at
issue in Hopkins, were in a field “much less crowded than that of ornamental
vase design,” which was the focus of In re Harvey. In re Harvey, 12 F.3d
1064. We appreciate that the idea, or theory, of “crowded art” would be
helpful for GM in this proceeding because if the vehicle fender field is
considered to be crowded than the supposition is that small or “nuanced”
differences in the claimed design become even more important. We are not
persuaded, however, that on the record now before us GM has provided
sufficient facts or evidence for the Board to determine that vehicle fender
design is a crowded art.
The “crowded art” concept is highly fact dependent. What is before
us is evidence of twenty-two design patents for vehicle fenders. PO Resp.
IPR2020-00064
Patent D823,741 S

11
15; Ex. 1001, code (56). Although we suspect without doing a search
ourselves that there is more prior art, we are not prepared in this proceeding
to find that the field of fender design is specifically a crowded art simply
because there exist at least 22 vehicle fender design patents. Moreover, to
the extent In re Harvey is applicable here, it is more than likely that vehicle
fenders would be considered fairly contemporaneous with loud speaker
design, as compared to vases, which have been arguably made for thousands
of years. See Un-Making Sense of Alleged Abkhaz-Adyghean Inscriptions on
Ancient Greek Pottery, Alexei Kassian, Copyright: Koninklijke Brill NV,
Leiden, 2016 (last viewed 3/31/2021 at
http://web.a.ebscohost.com/ehost/pdfviewer/ pdfviewer? vid=
1&sid=b88ee19b-40c8-4c27-aca9 af3c0f61d645%40 sessionmgr4007
(Explaining that “[a] large number of Ancient Greek vases dated to the 1st
millennium BC contain short inscriptions).
Although we do not determine that the facts and evidence in this case
support a finding that vehicle fenders are a crowded art, we do agree with
GM “that the ‘ordinary observer is considered to be familiar with prior art
designs.”’ PO Resp. 14 (citing Columbia Sportswear N. Am., Inc. v. Seirus
Innovative Access., Inc., 942 F.3d 1119, 1129 (Fed. Cir. 2019). For
determining obviousness we use the ordinary designer, rather than the
ordinary observer, and further agree with GM that “familiarity with the prior
art designs would be equally applicable—if not more applicable—to the
ordinary designer.” Id. We find Mr. Peters’ testimony persuasive when he
explains that “[a] designer of ordinary skill would be both familiar with prior
art designs and attuned to small differences.” Ex. 2004 ¶ 52. Similarly,
IPR2020-00064
Patent D823,741 S

12
LKQ’s declarant, Mr. Hill, agreed in his deposition that an ordinary designer
would notice nuances and small differences:
Q. [] You would agree with me that ordinary designers of fenders
will observe small differences between fenders?
. . .
A. Ordinary designers in the skilled art would observe lots of
little nuances and differences, yes.
Ex. 2013, 15:23–15:3.
We determine that there is a middle road here for claim construction.
What both parties’ claim construction arguments reinforce is the importance
of the overall appearance of the claimed design. See In re Jennings, 182
F.2d 207, 208 (CCPA 1950) (“In considering patentability of a proposed
design the appearance of the design must be viewed as a whole, as shown by
the drawing, or drawings.”). On one hand, we appreciate that there are more
elements and features making up the overall appearance of the claimed
fender design than LKQ’s express construction embodies. LKQ’s
description for example, omits any reference to the arcuate edge feature that
is part of the upper edge of the fender design and also does not account for
the visibly different slope and angularity of the edges making up the curved,
distal portion at the front of the fender.
On the other hand, as discussed above, we are not persuaded to apply
GM’s concept of crowded art and we do not determine that any one feature
or element of the claimed design is particularly prominent, significant, or
unique. GM’s description refers to certain features as unique, significant,
and prominent. See, e.g., PO Resp. 3–7 (Patent Owner stating that “[t]he
prominent arcuate edge feature also has a three-dimensional shape,” and “the
IPR2020-00064
Patent D823,741 S

13
claimed design has a unique distal portion shape that is prominent and
significant in its impact on the overall appearance.”).
On the facts in this proceeding, we take an egalitarian approach when
considering the elements of the claimed design in the context of the overall
appearance of the fender. Our observation is that all the elements of the
claimed design are significant for their contribution to the overall
appearance of the front fender, and that no one element has been shown to
be significantly more important than any other element. In other words, we
are not persuaded that there is any one element, on its own, so unique or
prominent as to be deserving of significantly more weight in our analysis
than any other element.
In our Decision on Institution we determined that no verbal
description was necessary. Inst. Dec. 4–5. We explained that “the best
description of the ornamental features of the ’741 design comes from the
drawings themselves.” Id. at 5. Now, on the full record before us we still
find that the best description of the claimed design occurs by observing and
considering the overall appearance of the claimed design as shown explicitly
in Figures 1–4 of the drawings. However, based on the competing analyses
by the parties and considering the relationship of the prior art to the claimed
design, we find it helpful to describe verbally certain elements of the claim
for purposes of our analysis in this Final Decision. See Egyptian Goddess,
543 F.3d at 680, see also Durling v. Spectrum Furniture Co., 101 F.3d 100,
104 (Fed. Cir. 1996) (“A proper interpretation of [the] claimed design
focuses on the visual impression it creates.”).
Considering the overall appearance of the ’741 design we determine
that LKQ’s proposed construction is incomplete. In addition to LKQ’s
IPR2020-00064
Patent D823,741 S

14
construction, we find certain other elements of the claimed fender described
by GM are readily observable and relevant to the overall appearance of the
claimed design.
1) As best observed in Figures 1–4 of the ’741 patent, the claimed
design illustrates that the top edge of the fender is defined by an
upper and a lower proportional inflection line above the v-notch.
The upper and lower inflection lines delineate the top protrusion,
and the lower inflection line extends substantially parallel with the
top edge to an arcuate edge feature that curves downwards from
the top edge towards the curved distal portion of the fender.
2) We further observe, consistent with GM’s argument, and shown
particularly in Figures 1 and 3, that the curved distal portion is
multi-angular, composed of a first and second sloping edge
defining an angular top edge leading to a pointed tip. See PO
Resp. 7–9 (citing Ex. 2004 ¶ 43–44).
3) As best seen in Figure 4 of the ’741 patent, the claimed design has
a perimeter shape that narrows from the rear to the front when
observed from above.
4) The overall appearance of the crease, or “character line” as GM
refers to it, is best considered by reference to each of Figures 1–4.
Id. at 10. The crease, as we will refer to it, extends from the rear
edge and displays a spatial relationship relative to the wheel arch,
the lower inflection line, and top edge of the fender.
5) And, best seen in Figure 2, the crease itself is formed by the
intersection of a lower convex surface and a more planar upper
IPR2020-00064
Patent D823,741 S

15
surface providing a three-dimensional sculpted appearance to the
contour of the fender.
D. Instituted Grounds
LKQ contends that the challenged claim is unpatentable under
35 U.S.C. § 103 based on U.S. Design Patent No. D679,231 S (Ex. 1006),
“Karras,” a design assigned to GM, issued April 2, 2013, combined with the
images of GM’s 2015 Cadillac Escalade as disclosed in various media
forms, i.e., documents and websites, (Ex. 1007, Ex. 1008).2 Pet. 28–40.
Claims Challenged 35 U.S.C. § References
1 103 Karras,3 autoblog,4 and
cadillac.com5
1 103 autoblog, cadillac.com, and Karras

LKQ relies on the Declarations of James M. Gandy (Ex. 1003) and
Jason C. Hill (Ex. 1004) in support of its arguments. GM relies upon the
Declaration of Thomas V. Peters (Ex. 2004) and Robert Gollehur
(Ex. 2006).
E. The Designer of Ordinary Skill in the Art
For design patents, a person of ordinary skill in the art is referred to
usually as a designer of ordinary skill in the art or simply an “ordinary
designer.” See In re Nalbandian, 661 F.2d 1214, 1216 (CCPA 1981) (“The

2 We adopt LKQ’s descriptions of the references. See Pet. vi–vii (Table of
Exhibits), 16 (identification of evidence relied upon).
3 Ex. 1006, U.S. Design Pat. No. D679,231 S, (April 2, 2013) (“Karras”).
4 Ex. 1007, 2015 Cadillac Escalade—Flying High in Caddy’s First-Class
SUV, Aug. 29, 2014, http://www.autoblog.com/2014/08/29/2015-cadillac-
escalade-review.
5 Ex. 1008, Cadillac—2015 Escalade / ESV, http://www.cadillac.com/
escalade-suv/exterior-photos.html
IPR2020-00064
Patent D823,741 S

16
‘ordinary designer’ means one who brings certain background and training
to the problems of developing designs in a particular field, comparable to the
‘mechanic’ or ‘routineer’ in non-design arts.”).
In this proceeding, LKQ and its declarants, Mr. Gandy and Mr. Hill,
contend that:
a designer of ordinary skill would be an individual who has at
least an undergraduate degree in transportation or automotive
design and work experience in the field of transportation or
automotive design, or someone who has several years’ work
experience in transportation or automotive design.
Pet. 25 (citing Ex. 1003 ¶ 40; Ex. 1004 ¶ 39). GM does not identify, and we
do not discern, any material issues concerning LKQ’s proposed definition.
See Ex. 2004 ¶ 25 (GM’s declarant, Mr. Peters, stating “I do not discern any
relevant differences between these proposals, nor do I have any substantive
disagreement with Mr. Gandy’s proposal.”). For purposes of this Decision
and on the complete record now before us, which includes testimony by
LKQ and GM’s Declarants, we adopt LKQ’s proposed definition of the
ordinary designer.
II. ANALYSIS
LKQ bears the burden of proving unpatentability of the challenged
claims, and the burden of persuasion never shifts to GM. Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015). To prevail, LKQ must establish the facts supporting its challenge by
a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
A. Principles of Design Patent Obviousness
In a challenge to a design patent based on obviousness under 35
U.S.C. § 103, the ultimate inquiry is “whether the claimed design would
have been obvious to a designer of ordinary skill who designs articles of the
IPR2020-00064
Patent D823,741 S

17
type involved.” Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329
(Fed. Cir. 2012) (quoting Durling, 101 F.3d at 103). This obviousness
inquiry consists of two steps. Id. In the first step, a primary reference
(sometimes referred to as a “Rosen reference”) must be found, “the design
characteristics of which are basically the same as the claimed design.” Id.
(quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)). This first step is
itself a two-part inquiry under which “a court must both ‘(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.’” High Point Design, 730 F.3d at 1311–12
(quoting Durling, 101 F.3d at 103).
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. 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, 101 F.3d at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed.
Cir. 1996)).
Although already discussed in our claim construction section, we
point in that 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 at 1064 (Fed. Cir. 1993); see also Apple, 678 F.3d at
1332 (“Rather than looking to the ‘general concept’ of a tablet, the district
IPR2020-00064
Patent D823,741 S

18
court should have focused on the distinctive ‘visual appearances’ of the
reference and the claimed design.”).
As we have set forth the proper claim construction above, notably the
drawings imparting the correct visual impression of the ’741 design, that
is—the appearance of the vehicle front fender in Figures 1–4 themselves, as
well as verbal description identifying certain objectively visual elements of
the claimed design, we turn below to the second part of the first step in the
obviousness analysis.
B. Obviousness Based on Karras, autoblog, and cadillac.com
LKQ argues that the claim of the ’741 design for “a vehicle front
fender” would have been obvious over Karras, autoblog, and cadillac.com.
Pet. 28.
1. The Asserted Primary Reference—Karras
LKQ asserts Karras, which is GM’s own U.S. Design Patent No.
D679,231, as the initial primary, or Rosen, reference. Pet. 29 (citing Ex.
1003 ¶ 48; Ex. 1004 ¶¶ 48, 50–51, 56–62). We reproduce, below, Figures 1
and 2 from Karras.
IPR2020-00064
Patent D823,741 S

19

Figures 1 and 2 of Karras, above, depict a side and front view, respectively,
of the Karras design. Ex. 1001, code (57). Below we reproduce Figures 3
and 4 of Karras.
IPR2020-00064
Patent D823,741 S

20

Figures 3 and 4 of Karras, above, depict a top plan view and a perspective
view, respectively, front of the Karras design. Id.
2. The Asserted Secondary References—Autoblog (Ex. 1007) and
Cadillac.com (Ex. 1008)
LKQ argues that either or both of autoblog, (Ex. 1007), and
cadillac.com, (Ex. 1008), is an appropriate secondary reference because each
reference reveals images of a 2015 Cadillac Escalade depicting a related and
similar vehicle front fender to Karras. Pet. 35–40. LKQ contends that
autoblog and cadillac.com teach the elements not found in Karras. Id. We
reproduce cropped images from autoblog and cadillac.com, below.
IPR2020-00064
Patent D823,741 S

21

The figure, above, on the left, is a cropped image and side elevation view of
a 2015 Cadillac Escalade front fender from autoblog, and the photograph on
the right is a cropped image and perspective view of a 2015 Cadillac
Escalade front fender, from cadillac.com.
3. Whether Karras is a Proper Primary Reference
We must first determine whether Karras is an appropriate primary,
i.e., Rosen reference. Below is a chart comparing each relative figure of
Karras and the ’741 design.

’741 Patent Drawings (Figures 1–4) Karras (Figures 1-4)

IPR2020-00064
Patent D823,741 S

22
’741 Patent Drawings (Figures 1–4) Karras (Figures 1-4)

IPR2020-00064
Patent D823,741 S

23

4. LKQ’s Arguments
Relying on testimony from its Declarants, Mr. Gandy and Mr. Hill,
LKQ argues that these designs share the following elements:
1) a substantially vertical side;
2) an intermittent, u-shaped notch in the substantially vertical side
near a top of the fender;
3) the top of the fender including a top protrusion near the
intermittent, u-shaped notch;
4) the top of the fender sloping down and away from the substantially
vertical side to a curved, distal portion;
5) a crease in a surface of the fender extending from the substantially
vertical side and in the general direction of the curved, distal
portion; and
6) a wheel arch between the curved, distal portion and a bottom of the
fender.
Pet. 33–35 (citing Ex. 1003 ¶¶ 50–51; Ex. 1004 ¶ 54).
Based on the similarities above, LKQ acknowledges two differences
between the ’741 design and Karras. Id. at 36 (citing Ex. 1003 ¶ 52; Ex.
1004 ¶ 55). LKQ contends that “[f]irst, in the ’741 Patent, the curved distal
portion is a slightly angled diagonal edge that rounds into a steeply angled
diagonal edge that ends on a point, whereas Karras’s distal portion is a
single, continuous curvature that ends at a short, diagonally rearward,
extending lower edge.” Id. (citing Ex. 1003 ¶ 54; Ex. 1004 ¶ 55. LKQ
contends “[s]econd, Karras’s wheel arch is not connected to an edge of the
distal portion of the fender at an obtuse angle.” Id. at 38 (citing Ex. 1003 ¶
IPR2020-00064
Patent D823,741 S

24
55; Ex. 1004 ¶ 58). According to LKQ, these two missing elements are
supplied by the secondary references. Despite these two differences, LKQ
argues that overall Karras discloses “a vehicle front fender with basically the
same overall visual appearance as the claimed design in the ’741 Design,
claiming a vehicle fender, making Karras a proper primary reference.” Id. at
31 (citing Ex. 1003 ¶ 49; Ex. 1004 ¶ 51).
5. GM’s Arguments
GM disagrees that there are only two differences between Karras and
the ’741 design. GM argues that “[t]here are actually multiple, readily
apparent differences between Karras and the claimed design, showing that
Karras is not “basically the same.” PO Resp. 18. GM argues that a designer
of ordinary skill in the art, aware of other fender designs in the prior art,
would find that the ’741 design has multiple design elements that “provide a
meaningful impact on the totality of elements that interact with one another
to form a unique, distinctive design.” Id. at 19 (citing Ex. 2004 ¶ 71). GM
argues that the following elements are distinct between the designs:
a) Karras does not disclose the claimed design’s top edge shape
including a flat top edge and arcuate edge features. Id. at 19–24
(citing Ex. 2004 ¶¶ 72–78).
b) Karras does not disclose the same distal portion, including the
concave intersection of the more angular distal portion with the
arcuate edge feature. Id. at 24–25 (citing Ex. 2004 ¶ 79).
c) Karras has a different overall three-dimensional profile and shape
compared to the claimed design. Id. at 27–31 (citing Ex. 2004
¶¶ 81–86).
IPR2020-00064
Patent D823,741 S

25
d) Karras has different “divergent sculpting and contour lines.”
Id. at 31–32 (citing Ex. 2004 ¶¶ 87–89).
6. Comparing Karras and the ’741 design
The overall appearance of the claimed fender design is in some ways
fairly basic, as the design includes only the outer side of a vehicle fender and
we are not overwhelmed by a horde of disparate elements. In other ways
there is a complexity and art in the interrelating elements which exists in the
sum of its ornamental features, which may impart aspects of functionality to
an ordinary observer and a designer of ordinary skill. See, e.g., Ex. 2004
¶ 10 (Mr. Peters explaining that “I believe that good automotive design is a
three-dimensional product solution to a problem or a challenge that is
beautifully executed. . . [t]he design conveys not only aesthetics, but
customer perception of function”).
As discussed in our claim construction section we agree with GM to
some extent that LKQ has not considered all the relevant ornamental
features which contribute to the overall appearance of the claimed design.
Yet, we also find that many of the differences which GM asserts would be
important to a designer of ordinary skill in the art, are over-blown,
particularly as many are based on GM’s flawed perception of vehicle fender
design as a crowded art and falter in light of Mr. Peters’ cross-examination
testimony. As discussed in detail below, we are not persuaded that the
differences are so great that the ’741 design cannot be considered
substantially the same as Karras.
To start, we reproduce below the annotated perspective figures from
the ’741 design (Figure 1) and Karras (Figure 4).
IPR2020-00064
Patent D823,741 S

26

A highlighted perspective view of the ’741 design (Figure 1) is shown above
on the left, compared to a highlighted perspective view (Figure 4) of Karras,
on the right.
An initial observation we make is that Karras does not include any
shade or trim lines. At times, this can impact the comparison mainly
because with shade lines the surface contours of the ’741 design are
somewhat more definitive in nature. However, there is no argument before
us that Karras is indefinite.6 And, being able to observe Karras from its side,
perspective, top plan and front views in Figures 1–4 we determine that there
is sufficient disclosure that an ordinary designer would perceive with

6 When asked at oral argument about the lack of detail in Karras, GM’s
Counsel stated that “I don’t think I’m prepared to say that it would render it
indefinite . . . [w]e’re stuck with what a skilled designer would have
perceived this reference to show.” Tr. 28:15–29:1–2.
IPR2020-00064
Patent D823,741 S

27
reasonable clarity the relevant surface contours of Karras’s design making
possible an objective comparison with the ’741 design.
a. The rear edge, protrusion, and wheel arch
We agree with, and GM does not persuasively dispute, several of
LKQ’s points of comparison which we find relevant to our analysis. GM
does try to downplay these comparisons, for example arguing that “every car
on the road has a front fender, and many of those fenders share the generic
characteristics LKQ discusses in its Petition—a ‘vertical side,’ ‘u-shaped
notch,’ ‘curved distal portion,’ or ‘side crease.’” PO Resp. 1. However, as
set forth in our claim construction we determine that all elements of the ’741
design are entitled to some similar relative weight.
Quite similar are the substantially vertical side edges of the designs
including, as highlighted above, the nearness and proportional spacing of the
vertical side edges relative to the wheel arch, the concave sculpting of the
fender surface immediately below the crease which extends forward and
substantially normal to the vertical side edge, as well as the U-shaped notch
above the crease. Compare Ex. 1001, Fig. 1, with Ex. 1006, Fig. 4. Also,
GM does not persuasively dispute that the top protrusion illustrated in the
’741 design, above the intermittent u-shaped notch, is not substantially the
same as in Karras. PO Resp. 1–12. In addition, the wheel arch for both
designs highlighted in blue above, is highly similar if not exactly the same,
being defined by the same or similar general circumferential planar flat rim
in similar proportions relative to the rest of the fender design. Compare
Ex. 1001, Fig. 1, with Ex. 1006, Fig. 4.
IPR2020-00064
Patent D823,741 S

28
b. The crease
Still considering the annotated perspective views in Figure 1 of the
’741 design and Figure 4 of Karras, reproduced below, we address the crease
feature found in both designs.

A highlighted perspective view of the ’741 design (Figure 1) is shown above
on the left, compared to a highlighted perspective view (Figure 4) of Karras,
on the right. The crease extends normal to the rear edge of both designs, just
above a slight in-cut section of the rear edge, and appears fairly similar
between Figure 1 of the ’741 design and Figure 4 of Karras. In both designs
the crease extends approximately halfway across the width of the wheel arch
and is similarly proportionally located above the wheel arch and below the
u-shaped notch.
Reproduced below are Figure 4 of the ’741 in comparison (on left) to
Figure 3 of Karras (on right) also illustrating the crease as seen from a top
view.
IPR2020-00064
Patent D823,741 S

29

A highlighted perspective view of the ’741 design (Figure 4) is shown above
on the left, compared to a highlighted perspective view (Figure 3) of Karras,
on the right. We observe, as GM points out in Figure 4 of the ’741 patent,
the crease is slightly divergent, or curved towards its end above the wheel
arch, as compared to Karras which remains generally horizontal as it extends
out over the wheel arch. See PO Resp. 31. On the other hand, as shown by
the in-cut on the rear edge, in both designs the crease is formed with a
slightly convex lower surface below and a more planar surface above.
Despite the minor difference, comparing the designs as a whole including
the crease as shown in each of Figures 1–4 of both designs, we determine
that the evidence of record establishes that a designer of ordinary skill in the
art would find the crease in Karras substantially the same as the crease in the
’741 design.
c. The top edge
In our view, there are mostly similarities in the top edge between the
’741 design and Karras, which extends from the protrusion to the distal
portion. In each design, extending from the very similar protrusions the top
edge curves downward at a comparable curvature to form an inwardly folded
edge portion that is defined by and substantially parallel to a lower inflection
line. The lower inflection lines of each design are highlighted below in
IPR2020-00064
Patent D823,741 S

30
reproduced annotated Figure 4 of the ’741 design in comparison to Figure 3
of Karras.

The inflection line is shown, highlighted above, in the ’741 design (Figure 4)
above on the left, compared to a highlighted top plan view (Figure 3) of
Karras, on the right. GM argues that one nuanced difference is that the ’741
design “includes an inwardly folded, flat top edge . . . extending from the
protrusion to the arcuate edge feature.” PO Resp. 19 (citing Ex. 2004 ¶ 74).
Karras, GM argues, “has neither a sharp bend nor a flat top edge. Instead,
the top edge is a curved surface, having a substantially smaller width.” Id. at
20 (citing Ex. 2004 ¶ 74).
We do not find that the evidence of record consistent with GM’s
argument and its Declarant’s testimony here. Specifically, we are not
persuaded that Karras has a “curved” top edge as compared to a “flat top
edge” in the ’741 design as GM asserts. GM relies, in part of Karras’s
Figure 2 which is a front view of Karras’s fender showing no inflection or
crease lines. Id. at 20. However, Figures 1, 3, and 4 of Karras illustrate a
similarly distinctive lower inflection line as the ’741 design, indicating a
radius leading to the top edge of the fender. It cannot be readily ascertained
exactly what is the specific radius of Karras’s inflection line, or that of the
IPR2020-00064
Patent D823,741 S

31
’741 design for that matter. However, looking at all Karras’s figures
together, we find it more persuasive that the inflection lines are similar if not
the same to the ’741 design. Our view is confirmed to some extent by Mr.
Peters who conceded in his deposition that both top edges were similarly
“crowned.”
Q. That surface is a crown surface; correct?
[]
A. To some degree, it is crown.
[]
Q. And, similarly, in Karras, that surface above the inflection line
is a crowned surface, right?
[]
A. In general, yes.
Ex. 1037, 201:24–202:7. Also in his deposition Mr. Peters was reluctant to
confirm that the ’741 top edge was in fact flat, instead stating:
A. I’d say a narrow, linear shear surface.
Q. Does that capture the concept that even though it’s not
perfectly flat, it’s sort of horizontal?
A. Not necessarily horizontal, but it has a consistent direction. It
could be sloped. It could go up. It could be angled, if you’re
seeing my hands. The shearness refers to the amount of crown.
You could say a crowned shear linear surface, like your watch.
Q. All right. Crowned shear linear surface?
A. And that can be metered in an infinite amount of
configurations.
Ex. 1037, 180:3–15. And, Mr. Peters reluctantly conceded that Karras’s top
edge, like the ’741 design, was crowned and possibly shear:
IPR2020-00064
Patent D823,741 S

32
Q. And is that surface crowned?
[]
A. I can’t tell in this particular illustration. I would venture to say
it has some sort of crown in it.
[]
Q. And is it shear?
[]
A. It’s possible.
Id. at 186:11–20. Mr. Peter’s deposition testimony is not unequivocal that
there exists a significant difference in the top edge between the two designs.
Our perspective, observing both designs as a whole, and considering in this
instance the top edges in comparison, it appears that the top edges of the
’741 and Karras are substantially the same. Our own observation and
comparison of the top edges by themselves suggests that there is some
difference. Our comparison of the designs as a whole shows, however, that
the visual difference is not particularly remarkable, and the lack of
specificity by Mr. Peters as to what the difference actually is, further informs
our determination that the top edges are substantially the same.
d. The perimeter shape
GM argues that the perimeter shape of the ’741 design, particularly
when viewed in the top views, as seen in Figure 4 of the ’741 design and
Figure 3 of Karras, above, is unique. PO Resp. 6 (citing Ex. 2004 ¶¶ 40–
42). GM argues specifically that the ’741 design narrows from rear to front
and that “the wheel arch contour line is visible from the top view, protruding
outwardly at the front portions of the front end of the fender due to the
narrowing of the upper portion of the fender body.” Id. at 6–7.
IPR2020-00064
Patent D823,741 S

33
LKQ argues that a designer of ordinary skill in the art would have
seen the perimeters as largely the same, and supports this with cross-
examination testimony from Mr. Peters, who mostly agreed that the
perimeter sections of the designs were similar:
Q. . . . Is the dimension that I’ve indicated as F, generally, an
accurate characterization of the width of the fender at the rear of
Karras?
A. Generally, I would agree.
Q. Thank you. Would you agree that the dimension that I’ve
indicated at E, as E, is the thickness of Karras at the front?
A. Approximately.
Ex. 1037, 192:10–20. We would agree that viewing only the top views in
isolation appear to present some minor disparities in profile and contour.
However, we find Mr. Peter’s testimony telling, and consistent with our own
observations—namely, that viewing all the figures in context of the overall
appearance of the designs indicates that the perimeter shape and edge
sections, while different in certain minor respects as a whole, are
substantially similar and proportionally arranged so as to define a perimeter
and surface contour of the designs that is substantially similar.
e. The transition from top edge to distal portion
GM argues that the “three-dimensional arcuate edge” transition from
the top edge to the distal portion of the ’741 design is not the same as in
Karras. PO Resp. 20 (citing Ex. 2004 ¶ 75). GM relies on testimony from
Mr. Peters, who provides the annotated figures below and testifies that
different from the ’741 design “Karras has a subtle transition from the
curved top edge. Karras does not depict any arcuate edge feature defined by
IPR2020-00064
Patent D823,741 S

34
three distinct edge shapes a-c, as provided by the claimed design.” Ex. 2004
¶ 75.

Above, on the left is an annotated partial blown-up view, provided by Mr.
Peters, of the top edge transition to the distal portion as seen in the ’741
design on the left, and in Karras on the right. Id.
Mr. Peters’ contrast, above, compares the ’741 design to a slightly
different perspective view of Karras’s top edge which does not show as well
the related edge sections. Observing Karras’ Figures 1–4 together we see a
similar transition to which one could apply the “a, b, c” designation as well.
For example, as seen in Karras’s Figure 1 below, although not as
pronounced as in the ’741 design, there is, in our observation, a “b” edge in
Karras’s top edge transition to the distal portion. But, GM has a point here,
it is a reasonable and visibly apparent size difference in the transitions
between the designs.
IPR2020-00064
Patent D823,741 S

35

An annotated side view of the ’741 design (Figure 3) is shown above on the
left, compared to an annotated side view (Figure 1) of Karras, on the right.
We are persuaded that there is a visual difference that weighs in favor of
finding that the transition (annotated with red circle) from the top edge to the
distal portion where the transition in the ’741 is deeper and more convex
than the more shallow transition in Karras. PO Resp. 23 (citing Ex. 2004
¶ 78).
f. The distal portion
GM argues that arcuate edge transition discussed above, and the distal
portion of the ’741 design are part of an overall unique profile that is
different and not substantially the same as Karras. PO Resp. 7–9, 20–26.
GM argues the distal portion is different from Karras, mainly because it has
two distinct slopes making up a “multi-angled top edge and a symmetric
pointed tip.” Id. at 7. Here, considering the distal portions of each design,
we get to the heart of the matter in this proceeding, that is—in the context of
a primary reference, what aspects of the overall appearance of each design
are clearly different.
IPR2020-00064
Patent D823,741 S

36
LKQ in fact concedes that “in the ’741 Patent, the curved distal
portion is a slightly angled diagonal edge that rounds into a steeply angled
diagonal edge that ends on a point, whereas Karras’s distal portion is a
single, continuous curvature that ends at a short, diagonally rearward,
extending lower edge.” Pet. 36 (citing Ex. 1003 ¶ 54; Ex. 1004 ¶ 55).
We reproduce below, the highlighted side views of the respective
fender designs in each of the’741 design and Karras.

An annotated side view of the ’741 design (Figure 3) is shown above on the
left, compared to an annotated side view (Figure 1) of Karras, on the right.
As readily apparent from the comparison above, the distal portion of the
’741 design has two sloping sections creating a multi-angled top edge that is
unlike the continuous curve of the complimentary top edge in Karras. Also,
the lower edge of the distal portion in the ’741 design is linear creating an
acute angle with the multi-angled top edge. Karras has a curved lower edge
that forms approximately a 90 degree angle with the continuously curved top
edge.
IPR2020-00064
Patent D823,741 S

37
g. Karras is a proper primary reference
Overall, our analysis of the claimed design and Karras shows
considerably more similarities than differences in a comparison of the
overall appearances of both designs. We acknowledge that there are
nuanced differences for similar features, as GM and its Declarants point out,
such as a slightly outward turn in the crease of the ’741 design and a
nominally different radius of the lower inflection line as it defines the top
edge. PO Resp. 20, 31. The greatest differences are found in the transition
and distal portions of the designs. We find that these differences, while
noticeable and important as part of the overall analysis, do not outweigh the
substantial similarity between the overall appearance of Karras and the ’741
design.
It is not simply that Karras depicts a front fender, but, as described
above, when the visual appearances of Karras and the ’741 patent are
compared, we are persuaded that the claimed design has a multitude of
similar, if not the same features, as Karras. See Apple, 678 F.3d at 1332
(The Federal Circuit explaining that “Fidler does not qualify as a primary
reference simply by disclosing a rectangular tablet with four evenly rounded
corners and a flat back.”). In an obviousness analysis, a primary reference
need not be the exact same as the claimed design. See MRC Innovations,
Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1333 (Fed. Cir. 2014) (The Federal
Circuit explaining “[t]hat there are slight differences in the precise
placement of the interlock fabric and the ornamental stitching does not
defeat a claim of obviousness; if the designs were identical, no obviousness
analysis would be required.”). We are persuaded that an ordinary designer
would find the overall visual impression created by the ’741 design is very
IPR2020-00064
Patent D823,741 S

38
much the same as Karras and we conclude on the full record now before us
that Karras is “basically the same as the claimed design.” Rosen, 673 F.2d at
391.
7. Whether autoblog and cadillac.com are Appropriate Secondary
References
LKQ argues that either or both of autoblog, (Ex. 1007), and
cadillac.com, (Ex. 1008), is an appropriate secondary reference because each
reference reveals photographs of a 2015 Cadillac Escalade including a
similar vehicle front fender to Karras which teaches the arcuate edge
transition and distal portion not found in Karras. Pet. 35–40. We provide
partial images from autoblog and cadillac.com, below.

The figure, above, on the left, is a portion of an image of a 2015 Cadillac
Escalade from autoblog, and the photograph on the right is a portion of an
image also of a 2015 Cadillac Escalade from Cadillac.com.
According to LKQ, both autoblog and cadillac.com depict a vehicle
front fender “which is an appropriate, secondary reference ‘so related [to
Karras] that the appearance of certain ornamental features in one would
suggest the application of those features to the other.’” Pet. 36 (quoting In
re Borden, 90 F.3d at 1575). LKQ argues specifically that the 2015 Cadillac
Escalade front fender discloses the design elements missing in Karras’s front
fender, including a distal portion having “a slightly angled diagonal edge
IPR2020-00064
Patent D823,741 S

39
that rounds into a steeply angled diagonal edge ending at a point.” Id. at 37
(citing Ex. 1003 ¶ 54; Ex. 1004 ¶ 57). According to LKQ, the 2015 Cadillac
Escalade fender also discloses a lower edge of the distal portion which
“readily supplies the missing element in Karras, an obtuse angle.” Id. LKQ
argues that an ordinary designer, having all the relevant prior art before
them, would have found that the 2015 Cadillac Escalade taught a related
front fender and suggested “the slight modification of changing the angle at
which the wheel arch meets the distal portion of the fender and ending the
curved, distal portion at a point.” Id. at 39 (citing Ex. 1003 ¶ 56; Ex. 1004
¶¶ 59–60).
GM does not agree that an ordinary designer would have combined
the distal portion elements from the 2015 Cadillac Escalade fender with
Karras. GM argues that “a skilled designer would not even have been
motivated to combine Karras and the Cadillac Escalade because they are
different vehicle types with drastically different styles. PO Resp. 32–33
(citing Ex. 2004 ¶¶ 91–95). GM argues that “LKQ ignores other differences
between the vehicle front fenders, such as the Escalade’s rectangular wheel
arch.” Id. at 34. GM contends that even if the 2015 Cadillac Escalade is
combined with Karras, the 2015 Cadillac Escalade “still fails to teach the
claimed design’s distal portion” as well as other features of the ’741 design.
Id. at 36 (citing Ex. 2004 ¶¶ 96–100).
As discussed in detail below, we are persuaded by the evidence before
us in this proceeding that LKQ has shown by a preponderance of the
evidence that a designer of ordinary skill in the art would have found that the
2015 Cadillac suggested the modification of Karras to create a design that
IPR2020-00064
Patent D823,741 S

40
has the same overall visual appearance as the ’741 design. MRC
Innovations, 747 F.3d at 1331.
An initial question we address is whether or not the front fender
shown on the 2015 Cadillac Escalade is so related to Karras that in the
context of an ordinary designer “that the appearance of certain ornamental
features in one would suggest the application of those features to the other.”
Durling, 101 F.3d at 103, see also In re Borden, 90 F.3d at 1574 (The
Federal Circuit explaining that “there must be some suggestion in the prior
art to modify the basic design with features from the secondary
references.”).
We provide a visual comparison of the images from autoblog and
cadillac.com, below, relative to Karras’s Figure 4.

The two images on the left show a 2015 Cadillac Escalade vehicle front
fender from Exhibits 1007–1008, as compared to Karras’s figure 4, on the
right. Considering the images and Karras Figure 4, above, like Karras,
autoblog and cadillac.com depict a vehicle front fender. Many of the same
and similar ornamental elements can be found between Karras and the 2015
Cadillac Escalade fender shown in the secondary references, for example a
IPR2020-00064
Patent D823,741 S

41
vertical rear edge extending upwards to an upper protrusion that is
proportional in size and positioning to the wheel arch. Another similarity is
the inflection line below the upper protrusion extending generally
perpendicular from the vertical rear edge parallel with the top edge to
intersect the front distal portion at the transition. Also, the 2015 Cadillac
Escalade depicts a substantially planar wheel arch surface which forms and
surrounds the wheel arch to differentiate the wheel arch surface relative to
the other surfaces on the fender.
It is true that the appearance of the 2015 Cadillac Escalade fender is
not the same as Karras’s fender. There are differences, for example in the
proportionality of the surfaces defined by the inflection line and top edge,
the lack of a u-shaped notch below the upper protrusion in the 2015 Cadillac
Escalade fender and no lateral crease extending from the rear edge.
However, besides being related as vehicle front fenders, in our view there is
an overall visual consistency in the dramatic profile, surface contours, and
transition to the distal portion in the overall appearance of the 2015 Cadillac
Escalade’s fenders as compared to Karras, suitable to determine that the
designs are related and similar. See MRC Innovations, 747 F.3d at 1334
(The Federal Circuit explained that when considering secondary references,
“it is the mere similarity in appearance that itself provides the suggestion
that one should apply certain features to another design.”).
The evidence reveals that Karras and the 2015 Cadillac Escalade are
related beyond being simply vehicle front fenders. Karras, according to Mr.
Peters, embodies the 2013-2014 Cadillac XTS front fender. See Ex. 1037,
203:7–8 (Mr. Peters stating that “[m]y understanding is 2013-2014 is the
Karras XTS Cadillac.”). Although Mr. Peters did not concede during his
IPR2020-00064
Patent D823,741 S

42
deposition that the Cadillac Escalade fender was sufficiently related to
Karras so as to be a proper secondary reference, he does ascribe to both
fender designs the descriptor “Cadillac character.”
Q. But do you have an opinion as to whether it meets the
relatedness test?
A. In certain aspects.
Q. What is that?
A. That they are both Cadillacs.
. . .
A. Yeah. The fenders. Okay. Just the fender. To me, they are
different enough. I don’t – you know, I can see Cadillac
character in both of them; but as far as comparing them, I guess
I’d have to understand what you mean by “comparing” them.
Is that comparing math? Is it the overall impression or whatever?
But, to me, those are two different vehicles.
Q. I understand they are two different vehicles, and I’m not
asking you to create an opinion now. I am asking you, as you sit
here today, do you have an opinion as to whether or not the
Escalade fender meets the relatedness test such that its features
can be applied to the Cadillac --
A. I guess I have to say no.
Ex. 1037, 130:11–31:24. Mr. Peters’ testimony here is not unequivocal.
However it is sufficient to support our determination of relatedness.
Moreover, Mr. Peters explained in his Declaration that “the designs of
vehicles have certain shapes, angles, proportions, and overall profiles that
create a brand and differentiation within the crowded field of consumer
vehicles.” Ex. 2004 ¶ 15. These similarities, according to Mr. Peters, are
how consumers identify and distinguish between vehicle brands. Id. This
IPR2020-00064
Patent D823,741 S

43
testimony reinforces our determination that Karras and 2015 Cadillac
Escalade, although clearly different fenders for different vehicles, indicate to
consumers, and thus ordinary designers, sufficient relatedness and similarity
to determine that the 2015 Cadillac Escalade is a proper secondary
reference.
GM advances several arguments with respect to the inapplicability of
the 2015 Cadillac Escalade as a sufficient secondary references which we do
not find persuasive, and for purposes of completeness, we address below.
GM argues that “the 2015 Cadillac Escalade is a truck-styled SUV,
while Karras is a sedan.” PO Resp. 33 (citing Ex. 2004 ¶¶ 91–93). We do
not find this argument persuasive or credit Mr. Peters’ testimony regarding
the difference in the vehicles as a whole because the primary reference
Karras is not a sedan, or even a vehicle, but simply claims a vehicle
component, a “Vehicle Front Fender.” Ex. 1006, code (54). Moreover, as
described above, we credit the testimonial evidence from Mr. Peters that
vehicles and components across particular brands, despite being different
models, can include certain visual similarities. Ex. 2004 ¶ 15.
GM also argues that “LKQ plucks select features―the alleged ‘distal
portion’ and ‘obtuse angle’―from the 2015 Cadillac Escalade for
incorporation with Karras while ignoring the remaining features of the
vehicle front fender of the 2015 Cadillac Escalade that are not shared with
Karras.” PO Resp. 34. This argument is not persuasive because LKQ’s
analysis need not bodily incorporate all the elements of the 2015 Cadillac
Escalade into Karras. It is enough in design patent law that the references as
so closely related that the missing elements found in autoblog and
cadillac.com would convert Karras into the claimed design “in a setting that
IPR2020-00064
Patent D823,741 S

44
would suggest the combination to one of skill in the art.” In re Borden, 90
F.3d 1570, 1576 (Fed. Cir. 1996).
In a similar vein, GM also argues that “LKQ has provided no reason
why a designer of ordinary skill would have incorporated the particular
aspects—the ‘distal portion’ and ‘obtuse angle’—that LKQ cherry-picks
from the 2015 Cadillac Escalade.” PO Resp. 35. This is an interesting
argument because it essentially invokes, without supporting case law or legal
analysis, the Supreme Court’s decision in KSR International Co. v. Teleflex,
Inc., 550 U.S. 398 (2007). We have no persuasive position or arguments
from GM that KSR has substantively altered the Durling test or somehow
added additional requirements that LKQ must expressly assess in order to
support the combination of Karras and the 2015 Cadillac Escalade. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR, 550 U.S. at 419 (holding a rigid
insistence on teaching, suggestion, or motivation [TSM] is incompatible
with its precedent concerning obviousness)).
GM argues further that “the Escalade’s design is simply not
compatible with Karras’ softer aesthetic,” and therefore modifying Karras
with the 2015 Cadillac Escalade distal portion is improper hindsight
reconstruction. PO Resp. 35–36 (citing Ex. 2004 ¶¶ 59–70, 95). For support
of this hindsight argument, GM cites to L.A. Gear, Inc. v. Thom McAn Shoe
Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993). In L.A. Gear, the Federal Circuit
upheld the district court’s finding of non-obviousness based on the design
patent challenger’s assertion of twenty-two references. Specifically, the
Federal Circuit found no error in the district court’s conclusion “that there
IPR2020-00064
Patent D823,741 S

45
was no teaching or suggestion in the prior art of the appearance of the
claimed design as a visual whole.” L.A. Gear, 988 F.2d at 1124. Quite
different from the reconstruction based on twenty-two references in L.A.
Gear, in this proceeding we have a primary reference, Karras, and a
secondary reference depicting the 2015 Cadillac Escalade. As discussed
above, LKQ has shown by preponderance of the evidence that the secondary
reference is so related to the primary reference that it would have suggested
to a designer of ordinary skill in the art the modification of Karras’s distal
portion with the multi-angled distal portion and obtuse angled lower edge
from the 2015 Cadillac Escalade. On the record in this proceeding, we do
not find GM’s hindsight argument persuasive.
GM makes additional arguments asserting that even if the references
are properly combined, and Karras is modified with the distal portion
elements of the 2015 Cadillac Escalade, the proposed combination would (1)
not have a sharp tip that points downward as in the ’741 design, and (2) the
proposed combination would necessarily include the beveled front edge of
the downward sloping front edge of the distal portion which the ’741 design
does not have. We reproduce below GM’s annotated comparison illustrating
their arguments. PO Resp. 37.
IPR2020-00064
Patent D823,741 S

46

Above is GM’s annotated comparison of a portion of Figure 2 of the ’741
design on the left, and a blow-up view of the distal portion of the 2015
Cadillac Escalade on the right.
As to argument (2), GM’s Declarant Mr. Peters, testifies that “[t]his
beveled edge difference between the 2015 Cadillac Escalade and the claimed
design would be evident to a vehicle designer.” Ex. 2004 ¶ 98.
Even if we find Mr. Peters’ testimony on this point convincing, GM’s
argument misses the mark because it attacks the references in isolation. As
discussed above with respect to other features of the 2015 Cadillac Escalade
which GM argues are excluded by LKQ, the proposed combination is based
on the teachings of the two references and need not incorporate all elements
of the secondary reference. An ordinary designer would have been aware of
the teachings in the 2015 Cadillac Escalade of a multi-angled profile and
obtuse angled lower edge in conjunction with the planar wheel arch and
because of the relatedness of the primary and secondary references would
IPR2020-00064
Patent D823,741 S

47
have incorporated those elements into Karras to achieve the claimed ’741
design.
As for argument (1), we compare below a perspective view of the
2015 Cadillac Escalade with the perspective view shown in Figure 1 of the
’741 design.

Figure 1 of the ’741 front fender design is illustrated above, left, compared
to a cropped image of the 2015 Cadillac Escalade fender, on the right. We
appreciate GM’s argument and Mr. Peters’ testimony that, when considered
in exacting detail, the ’741 design appears to have a pointed, forward and
downwardly aimed arcuate tip. Ex. 2004 ¶ 97. However, we determine that
the 2015 Cadillac Escalade successfully bridges the gap with the claimed
design because it too has an arcuate tip that appears pointed similarly in a
forward and downward direction. Compare Exs. 1007, 1008, with Ex. 1001,
Figs. 1–4. Perhaps the 2015 Cadillac Escalade does not disclose quite as
downwardly pointing a tip as the ’741 design, but considering the overall
appearance of the designs we find the arcuate tip of the distal portions of
both designs sufficiently similar that a designer of ordinary skill would still
IPR2020-00064
Patent D823,741 S

48
consider the claimed design and the proposed combination of Karras and the
2015 Cadillac Escalade nearly identical.
Similarly, GM argues that the 2015 Cadillac Escalade has a
differently shaped distal portion where “[t]he combined sloped regions (both
first and second sloped regions) of the 2015 Cadillac Escalade also have a
shorter length extending along the horizontal axis as compared to the
claimed design.” PO Resp. 40 (citing Ex. 2004 ¶ 100). GM provides the
annotated comparison, reproduced below, of the 2015 Cadillac Escalade and
a cropped portion of Figure 3 of the ’741 design. Id.

Above is GM’s annotated comparison of Figure 3 of the ’741 design on left,
and a cropped image of the 2015 Cadillac Escalade, on the right. GM argues
that “[t]hese differences would create a hypothetical combination having a
‘distal portion’ with a different shape, which would contribute to an overall
appearance different [than] the claimed design.” PO Resp. 40 (citing Ex.
2004 ¶ 100).
In GM’s comparison, above, we agree that there is an observable
difference between the lengths of the sloped regions. Despite this, and even
considering Mr. Peters’ testimony and that a designer of ordinary skill would
recognize the difference, when considered in the context of the overall
IPR2020-00064
Patent D823,741 S

49
appearance of the ’741 design, we find the similar sloped regions and multi-
angular character of the distal portion along with the obtuse angular
intersection with the wheel arch of the 2015 Cadillac Escalade strikingly
similar in overall appearance between the two designs. In addition, we also
observe, in a cropped image of the 2015 Cadillac Escalade below, a deeper
transition from the top edge to the first sloped region of the distal portion.
We reproduce, below, Figure 3 of the ’741 design in comparison to an image
of the 2015 Cadillac Escalade.

On the left, above, is a side view, Figure 3 of the ’741 design compared to a
cropped image from the 2015 Cadillac Escalade on the right. We are
persuaded on the arguments and evidence presented that the distal portion
elements of the Cadillac Escalade bridge the gap between Karras and the
’741 design such that LKQ has shown by a preponderance of the evidence
that the ’741 design would have been obvious in view of Karras and the
2015 Cadillac Escalade.
IPR2020-00064
Patent D823,741 S

50
8. Conclusion of Obviousness Based on Karras, autoblog and
cadillac.com
Based on the complete trial record in the proceeding, we are
persuaded Karras is a proper primary reference, and that the front fender of
the 2015 Cadillac Escalade is related and sufficiently similar to the
appearance of Karras to be an appropriate secondary reference. In this way,
the elements of the multi-angled distal portion and obtuse angle with the
wheel arch in the 2015 Cadillac Escalade would have suggested themselves
to a designer of ordinary skill in the art as a modification to the overall
appearance of Karras. See Borden, 90 F.3d at 1574, see also MRC
Innovations, 747 F.3d at 1334 (Fed. Cir. 2014) (The Federal Circuit
explaining that “it is the mere similarity in appearance that itself provides
the suggestion that one should apply certain features to another design.”).
GM has not produced evidence, or provided argument, that any secondary
considerations of nonobviousness support its position. We are persuaded
based on the arguments and evidence in this proceeding that the distal
portion elements of the Cadillac Escalade bridge the gap between Karras and
the ’741 design such that LKQ has shown by a preponderance of the
evidence that the ’741 design would have been obvious in view of Karras
and the 2015 Cadillac Escalade.
C. Obviousness Based on autoblog, cadillac.com, and Karras
Because we determine that the claim of the ’741 design is
unpatentable over Karras, autoblog, and cadillac.com, we do not reach
LKQ’s additional challenge asserting that the claim of the ’741 design is
obvious based on autoblog and cadillac.com, depicting the 2015 Cadillac
Escalade, as a primary reference, and Karras as a proper secondary
reference.
IPR2020-00064
Patent D823,741 S

51
III. CONCLUSION7
Petitioner has proved by a preponderance of the evidence that the
claim of the ’741 patent would have been obvious over Karras, autoblog,
and cadillac.com.
Claims
35
U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1 103 Karras,
autoblog,
cadillac.com
1
1 103 autoblog,
cadillac.com,
Karras,
Not Reached
Overall Outcome 1

IV. ORDER
For the reasons given, it is
ORDERED, based on a preponderance of the evidence that the claim
of the ’741 patent is unpatentable; and

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
IPR2020-00064
Patent D823,741 S

52
FURTHER ORDERED that, because this is a Final Written Decision,
any party to the proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2020-00064
Patent D823,741 S

53
For PETITIONER:

Barry F. Irwin
Reid Huefner
IRWIN IP LLC
birwin@irwinip.com
rhuefner@irwinip.com

PATENT OWNER:

Dorothy P. Whelan
Craig A. Deutsch
Grace J. Kim
Jennifer Huang
Joseph A. Herriges (Pro Hac Vice)
FISH & RICHARDSON P.C.
whelan@fr.com
deutsch@fr.com
gkim@fr.com
jhuang@fr.com
jjh@fr.com
herriges@fr.com