GM Global Technology Operations LLC

Patent Trials and Appeals Board

Oct 8, 2021

PGR2020-00055 (P.T.A.B. Oct. 8, 2021)

Trials@uspto.gov Paper 33
571-272-7822 Date: October 8, 2021

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.

JUDGMENT
Final Written Decision
Determining No Challenged Claim Unpatentable
35 U.S.C. § 328(a)
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I. INTRODUCTION
A. Background and Summary
LKQ Corporation and Keystone Automotive Industries, Inc.
(collectively, “LKQ” or “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 (“GM” or
“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 6. On
October 13, 2020, we determined that the ’508 patent was eligible for post-
grant review and that Petitioner demonstrated that it is more likely than not
that the challenged claim was unpatentable. Accordingly, we entered a
Decision instituting trial. Paper 9 (“Inst. Dec.” or “Institution Decision”).
Following our Institution Decision, GM timely filed a Response.
Paper 19 (“PO Resp.”). LKQ filed a Reply. Paper 23 (“Pet. Reply”). GM
subsequently filed a Sur-Reply. Paper 27 (“PO Sur-Reply”). We heard oral
argument on June 29, 2021. A transcript of the argument has been entered
into the record. Paper 32 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 328(a). Having reviewed the
arguments of the parties and the supporting evidence, we find that Petitioner
has not demonstrated by a preponderance of the evidence that the sole claim
of the ’508 patent is anticipated or would have been unpatentable. See
35 U.S.C. § 326(e).

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 5, 2.
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B. Related Proceedings
LKQ lists twenty-three allegedly related matters. Pet. 5. GM lists
twenty-six distinct proceedings as related but then qualifies the list by
making the statement that: “Patent Owner does not concede that any of the
above-identified proceedings would affect, or be affected by, this
proceeding.” 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

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
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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. at code
(57). The ’508 patent covers a single claim as set forth in four figures. The
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.” Id.
Figures 1–4 of the ’508 patent are depicted below.

issue date, the ’508 patent is eligible for post-grant review. See 35 U.S.C.
§ 321(c).
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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
front skid bar, a front view, a left side view, and a bottom view. Id. at code
(57).
We determine that the following verbal descriptions provided by the
parties 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.
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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 PO Resp. 2–3. The claimed
design has a prominent substantially vertical front portion that also curves
rearward from the center that terminates in a top portion and small side
portions that angle backward. See id.; Pet. 11. GM’s annotated Figure 1 of
the ’508 patent is reproduced below.

GM’s provides an annotated Figure 1 adding shading to the prominent front
surface with a substantially vertical orientation. PO Resp. 3. The front
surface is large relative to other surfaces of the skid bar, and accounts for
nearly half the overall height of the skid bar. Ex. 2004 ¶ 37 (Peters
declaration).
The skid bar design has top and side surfaces that project outwardly.
The top surface is oriented substantially perpendicular to the front and side
surfaces, making for a squared relationship and outwardly-projecting
positioning of the front surface as best depicted in GM’s annotated Figure 1
below.
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GM’s provides an annotated Figure 1 with shading along the very top and
side surfaces that project outwardly. Ex. 2004 ¶ 38.
The front portion adjoins a bottom portion curving rearward from a
center, as best depicted in LKQ’s annotated Figure 3 below.

LKQ creates an annotated Figure 3 with a top portion highlighted in blue
and a bottom portion highlighted in green. Pet. 11. In the view above, the
skid bar curves noticeably from side-to-side. In this view, an unclaimed
bottom surface is also visible.
From a front view, the top and bottom portions have four evenly
spaced recessed portions as depicted in Petitioner’s annotated Figure 2
below.
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LKQ creates an annotated Figure 2 with a top portion shaded in blue and a
bottom portion shaded in green and the four recess portions shaded in
purple. Pet. 12. In this view, the skid bar includes a set of four recesses that
extend deeply into the skid bar, and that are visible in their entirety including
top and bottom edges of each recess. The curvature and depth of the four
recesses are best shown by GM’s annotated Figure 3 below.

GM produces an annotated Figure 3 with shading within the recesses and
arrows below the recesses showing a substantial space under the recesses in
the bottom portion. Ex. 2004 ¶ 39. The substantial depth of the recesses
creates an impression of thickness of the claimed skid bar design. Id. As a
result of its curvature, two recesses are prominent in this side view including
the interior surfaces of two recesses that also complement the side surface of
the claimed design. Id. ¶ 41.
Each of these specific features discussed above, and the relationships
of these features, contribute to the overall appearance of the ’508 Patent’s
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design. 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.
D. Evidence
Petitioner relies on the following references4:

4 We adopt Petitioner’s descriptions of the references. See Pet. vii–viii
(Table of Exhibits), 14–15 (identification of evidence relied upon).
Reference Exhibit
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.
1006
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.
1007
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.
1008
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.
1009
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
1010
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LKQ also relies on the declarations of James M. Gandy (Ex. 1003)
and Jason C. Hill (Exs. 1004, 1028) in support of its arguments.5 GM relies
on the declaration of Thomas Peters (Ex. 2004).

5 We have considered GM’s contentions that we should give no weight to
LKQ’s declarants because the declarations of both experts “are word-for-
word the same as each other and the Petition.” PO Resp. 12. Although two
identical expert reports without collaboration evinces attorney driven expert
reports, we decline to reach GM’s specific arguments because we agree that
even with full consideration of the opinions expressed in the declarations of
LKQ’s experts, the totality of the evidence supports our findings and
conclusions in favor of GM. As a matter of weight, we do find Mr. Peters’
testimony more persuasive because it is well supported by the evidence of
record and because of his extensive experience in automotive design. See
Ex. 2004, App. A.
https://web.archive.org/web/20170718021511/http://chinaautoweb.co
m/car-models/leopaard-cs10/?pid=42666.
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.
1011
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.
1012
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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)6
1 103 2015 Changfeng Leopaard CS10
(or publications depicting it) alone
1 103 2015 Changfeng Leopaard CS10
(or publications depicting it) and
2012 Chevrolet Equinox (or
publications depicting it)
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:

6 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; Tr. 5:6–24
(“I’m relying upon the skid bar itself and I’m using the publication as
evidence of what that skid bar looked like. It’s an on-sale bar, if you want to
call it that. It’s the actual item that was available for the critical date, that
actual item was publicly known, was offered for sale. The actual item is
evidenced by the publication itself.”).
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[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.
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 omitted); see also High Point Design LLC, 730 F.3d at 1313. See
also MPEP § 1504.03 (II) (“the proper standard is whether the design would
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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”;
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
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 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)) (alteration in original).
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
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Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993); see also Apple, Inc., 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.”).
3. Ordinary Observer
According to LKQ, “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 the Petition, nor the declarations filed in
support thereof, provided evidentiary support for the assessment of an
ordinary observer.
In its Preliminary Response, GM initially disputed this classification,
arguing instead that the ordinary observer should be a commercial buyer
who purchase replacement vehicle front skid bars to repair a customer’s
vehicle, such as repair shop professionals. See Inst. Dec. 12. In our
Institution Decision, we determined that the ordinary observer includes both
a vehicle owner and consumer and also a replacement parts buyer. Inst.
Dec. 13. In its Response, GM adopts Mr. Peters’ view that definitional
disagreement as to the ordinary observer is irrelevant because his opinion is
the same regardless, and “[t]he overall appearance of the ’508 Patent is
meaningfully different compared to the Leopaard from the perspective of the
ordinary observer under either definition.” Ex. 2004 ¶ 26; PO Resp. 8.
Based upon the full record, we agree with Mr. Peters, and GM, that it is
irrelevant which ordinary observer is adopted, and as such, we determine the
following.
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Before us is evidence that both automobile owners, as well as
insurance and repair companies, desire to return vehicles to their original
appearance. GM points to a letter from LKQ’s counsel to U.S. Customs and
Border Protection stating that “[a]utomobile owners seek to repair their
automobiles in a way that returns their automobile as closely as possible to
its original appearance and condition.” Ex. 2002, 11. This letter also states
that “[i]nsurance companies are overwhelmingly the customers in
aftermarket repair parts market transactions, acting on behalf of their driver
clients.” Id.
The ’508 design claims a “vehicle front skid bar,” not a vehicle in
total. Ex. 1001, code (57). Based on this, as well as the evidence from both
parties, we determined in our Institution Decision:
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
. . . . For purposes of this Decision we accept that both parties’
definitions fall within the purview of an ordinary observer.
Inst. Dec. 13 (citations omitted).
LKQ clings to its argument that Federal Circuit case law supports just
the prospective purchaser of a vehicle as the ordinary observer. See Pet.
Reply 3 (citing Pacific Coast Marine Windshields v. Malibu Boats, 739 F.3d
694, 701–702 (Fed. Cir. 2014)). Federal Circuit cases are consistent in that
the determination of the ordinary observer is factually dependent. See
Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1323
(Fed. Cir. 2007), abrogated on other grounds by Egyptian Goddess, 543
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F.3d at 665 (The Federal Circuit explaining “that the ordinary observer is a
person who is either a purchaser of, or sufficiently interested in, the item that
displays the patented designs and who has the capability of making a
reasonably discerning decision when observing the accused item’s design
whether the accused item is substantially the same as the item claimed in the
design patent.”). Perhaps just as important is that the ordinary observer
analysis is not limited to only a product phase, such as when installed on a
vehicle, but the analysis most consider the normal use lifetime of the
product. See Contessa Food Prods. v. Conagra, Inc., 282 F.3d 1370, 1380
(Fed. Cir. 2002) (“the ‘ordinary observer’ analysis is not limited to those
features visible during only one phase or portion of the normal use lifetime
of an accused product.”).
On the facts and evidence in this proceeding, the interests and goals of
both the vehicle owner and repair shop person are aligned, that is—in the
context of repair, to return the vehicle to its original appearance. Ex. 2002,
11; Ex. 2004 ¶¶ 26, 43, 45, 47, 48, 51. Even if we chose between the two,
our analysis would not change sufficiently to affect the outcome of this
Decision. Therefore, we do not alter our determination made at institution,
that the ordinary observer includes both a vehicle owner and consumer and
also a replacement parts buyer.
4. The Designer of Ordinary Skill in the Art (“DOSA”)
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).
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GM originally argued for a slightly different standard for the ordinary
designer in its Preliminary Response, but for purposes of its Response, GM
has acquiesced in LKQ’s definition. See PO Resp. 8. Mr. Peters contends
that “I do not discern any relevant differences between these proposals, nor
do I have any substantive disagreement with Mr. Gandy’s proposal. My
opinion is the same, regardless of which definition is applied.” Ex. 2004
¶ 27.
Based on the final record, 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
alternatively argues that the claim would have been obvious to a designer of
ordinary skill in the art over the Leopaard. Pet. 51–55.
We are mindful of the different standards for design patent
anticipation versus obviousness. As noted above, anticipation requires that
two designs be substantially the same to the ordinary observer. To qualify
as a primary reference for purposes of obviousness, two designs must have
design characteristics that are basically the same to the designer of ordinary
skill in the art. Below, we determine that the Leopaard does not have design
characteristics that are basically the same, or substantially the same, as the
patented design. We analyze both obviousness and anticipation in the same
section for convenience, but from the perspective required for each standard.
As for anticipation, LKQ argues that to the ordinary observer, “[t]he
skid bar of the Leopaard is substantially the same as the claimed design of
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the ʼ508 Patent.” Pet. 44 (citing Ex. 1003 ¶¶ 54–57; Ex. 1004 ¶¶ 54–56).
For purposes of obviousness, LKQ 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.
Below, we discuss the Leopaard’s design and then address the parties’
contentions. As we analyze in detail below, LKQ’s case is not persuasive
for several reasons, including its failure to provide sufficient evidence. LKQ
has not produced images of the Leopaard that would enable a persuasive
comparison with corresponding views of the claimed invention. The
evidence produced by LKQ related to the Leopaard simply fails to clearly
show several claimed aspects of the design. Because the Petition omits
sufficient views of any complete single skid bar (Ex. 2004 ¶ 51), the
evidence produced by LKQ related to the Leopaard simply fails to clearly
show several claimed aspects of the design. For example, Exhibits 1006–
1009 include front or perspective views that show, at most, only an upper
portion of a skid bar. Exhibit 1010 shows slightly more of the skid bar of its
vehicle, but also omits a significant portion of the bottom of the skid bar.
Ex. 2004 ¶ 51; Ex. 2006, 77:2–21. The exhibits do not show a sufficient
bottom view to allow comparison and the exhibits also have obscured side
views due to other trim features covering the outsides of the skid bar. For
these and other reasons such as the differences between the designs
discussed below, LKQ has failed to meet its burden of proof.
Based on the final record, LKQ has not shown sufficiently that the
ordinary observer would view the skid bar of Leopaard as substantially the
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same as the claimed design of the ʼ508 patent, and thus has not shown by a
preponderance of the evidence that the ’508 patent is anticipated by the
Leopaard.
Similarly, LKQ has not shown sufficiently that the ’508 patent and
Leopaard’s skid bar have design characteristics that are basically the same to
the designer of ordinary skill in the art and thus the Leopaard is not a proper
Rosen reference. Thus, LKQ has not shown by a preponderance of the
evidence that the ’508 would have been obvious over the Leopaard.
1. Leopaard
Petitioner articulates the primary reference for this ground as the
Leopaard vehicle itself or “publications depicting” the 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. 18. The skid
bar of Leopaard is depicted in the images below.

LKQ produces a front left view of Leopaard as shown in Exhibit 1010, page
1. Pet. 20. Another similar view is found in Exhibit 1008.
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LKQ relies on a front left view of Leopaard as shown in Exhibit 1008, page
1.

LKQ produces this front view of Leopaard showing its skid bar from Exhibit
1007, page 1. Pet. 20.
LKQ’s exhibits for the Leopaard show photographs of the Leopaard
vehicle taken at mid-car height. See Exs. 1006–1010. The images of the
skid bar in each photographic exhibit are all from an upper perspective
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(looking downward on the skid bar). These angles fail to provide a complete
representation of the underside, or bottom, of the skid bar as well as a side
view. Further, as seen above, the side portions of the skid bar are obscured
in each image relied on by LKQ. See id. Each of Exhibits 1006–1010
appears to be a secondary webpage capture from the “Wayback Machine,”
also making the images less than clear.
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 (Pet. 45–46).

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LKQ provides a set of comparisons including, 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).
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.
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LKQ provides a set of comparisons to show similarity in the bottom portions
of the skid bar including, 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.
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
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vertical front portion have four, evenly spaced, recessed portions with each
recessed portion,” as depicted in the following annotated figures.

LKQ provides a 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 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
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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.” Id.
(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 Rosen7 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
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

7 In re Rosen, 673 F.2d 388, 391 (CCPA 1982) (A proper primary reference
for the obviousness analysis is “a reference, a something in existence, the
design characteristics of which are basically the same as the claimed
design.”).
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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.
In its Reply briefing, LKQ relies on the additional testimony of
Mr. Hill (Ex. 1028), which we have considered. See, e.g., Ex. 1028 ¶¶ 21–
25 (alleging that over a dozen features between the two designs “were either
identical or near-identical”). LKQ contends that GM failed to perform a
balanced analysis because GM, and Mr. Peters, did not address the overall
visual similarity of the Leopaard and the ’508 patent and then weigh those
similarities against the differences. Pet. Reply 5–13. LKQ again points out
the perceived similarities in the two designs, including a front facing surface,
four recesses cut into the front-facing and rearward sloping surfaces, a
positive space between the central two recesses, and several other
similarities. Id. at 9–12. LKQ contends that Mr. Peters requires “perfect
identity” for similarity of designs and he was unable to weigh purported
differences against the designs’ similarities. Id. at 8–9 (citing Ex. 1026, 80–
85 (Peters deposition)). LKQ then addresses each of the six alleged
differences examined by GM. Id. at 14–28. We address these arguments in
our analysis below.
3. Patent Owner’s Contentions
GM first contends that the Petition is based on an improper analysis
that ignores the way in which an ordinary observer would have viewed the
design. PO Resp. 8–9. GM points out that the ordinary observer analysis
extends to the entire normal and intended use of the vehicle skid bar,
including both alone as a replacement part, as depicted by the ’508 Patent,
and when installed on a vehicle. Id. at 9 (quoting Int’l Seaway Trading
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Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) (“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.’”)). GM notes that “the ‘ordinary observer’
analysis is not limited to those features visible during only one phase or
portion of the normal use lifetime of an accused product.” Id. (quoting
Contessa Food Prods., 282 F.3d at 1380).
GM contends that “[t]he skid bar depicted by the ’508 Patent has a
unique overall appearance conveyed by the specific features of the design—
both when viewed alone and when assembled with a vehicle.” Id. at 10.
GM relies on the testimony of Mr. Peters that the specific skid bar features
are intended to “promote its appearance of ruggedness, strength, and
capability, including its prominent, substantially vertical front surface,
positioning and substantial depth of recesses that are entirely visible and
spaced from a bottom edge, and the curvature of the skid bar (e.g.,
highlighted by the shape of the bottom edge).” Id. (citing Ex. 2004 ¶ 46).
GM contends that “LKQ’s analysis is faulty because it discounts the
ordinary observer’s perception of the complete skid bar, particularly when
viewed as a replacement part as depicted by the ’508 Patent.” Id. at 11
(citing Ex. 2006, 96:5–8 (“It’s got to be attached to the product of which it’s
a part of.”)). GM argues that the Petitioner fails to consider certain features
in its analysis and does not include an entire bottom portion of the Leopaard
skid bar at all. Id. (citing Ex. 2004 ¶ 47). In the aggregate, GM argues that
“these omissions fail to demonstrate overall appearance from the requisite
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‘ordinary observer’ perspective.” Id. As explained more below, we agree
with GM’s assessment.
GM stresses that the ordinary observer would be attuned to finding
similarly appearing parts, and that observable differences matter to the
ordinary observer. Id. (citing Ex. 2002, 14, Ex. 2004 ¶ 48). GM relies on
LKQ’s statement that, when choosing replacement parts, “[a]utomobile
owners seek to repair their automobiles in a way that returns their
automobile as closely as possible to its original appearance and condition.”
Id. (quoting Ex. 2002, 10 (LKQ letter for relief from seizure and forfeiture)).
GM emphasizes that “readily visible details matter to the ordinary observer’s
impression of overall appearance in the context of vehicle front skid bars.”
Id. at 12.
GM contends that “[n]umerous aspects of the claimed design that
make up its overall appearance are absent from the Leopaard, including the
claimed design’s:”
(i) substantial front face,
(ii) bottom surface and edge,
(iii) outwardly projecting top and side surfaces,
(iv) curvature from side-to-side,
(v) deep recesses entirely visible from the front, and
(vi) outer perimeter shape.
PO Resp. 14–15 (citing Ex. 2004 ¶¶ 49, 52–81). GM notes that LKQ does
not even acknowledge, no less examine, any of these notable distinctions.
Id. at 15.
(i) substantial front face
GM contends that the Leopaard lacks the claimed design’s prominent
front surface, which is a fundamental aspect of the ’508 patent’s design. PO
Resp. 17–18 (citing Ex. 2004 ¶¶ 52–57). The front surface, according to
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GM, “includes at least three distinct features significant to the design’s
overall appearance: (1) a substantial height, (2) a nearly vertical orientation,
and (3) a nearly perpendicular relationship with side and top surfaces of the
skid bar,” as depicted below. Id. (citing Ex. 2004 ¶ 52).

GM produces annotated Figures 1 and 2 with a red shading in the front face
portion of the design. PO Resp. 18. GM argues that the Leopaard lacks the
specific aspects of this critical feature, and lacks the overall appearance of
the claimed design. Id. GM notes that the front surface of the ’508 patent
has a substantial height relative to other portions of the skid bar, which
actually accounts for more than 1/3 of the overall height of the skid bar. Id.
(citing Ex. 2004 ¶ 53).
GM contends that the front surface has a nearly vertical orientation,
which along with its relatively large size, makes the front surface
particularly prominent and provides a structural, bumper-like appearance to
the ordinary observer. Id. at 19 (citing Ex. 2004 ¶ 54). GM argues that “the
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angled relationship of the front surface relative to the side surfaces and a
nearly perpendicular orientation relative to the top surface accentuates an
outwardly-protruding appearance of the front surface,” which “provides the
appearance of a commanding leading surface.” Id. (citing Ex. 2004 ¶ 55).
GM contends “the large, nearly vertical orientation, and outwardly-
protruding positioning, creates an imposing presence that promotes the
rugged and squarish overall appearance of the ’508 Patent’s
design.” Id.
GM alleges that “[t]he different appearance of the Leopaard is
glaring,” because “the front surface of the Leopaard has a relatively short
height that accounts for only a small portion of the overall height of the skid
bar.” Id. at 20 (citing Ex. 2004 ¶ 57). GM points out that, in the photograph
shown below of a Leopaard vehicle having a skid bar, “the bottom surface
that makes up a large majority of the visible surface area,” and “[t]he bottom
surface, and particularly its rearwardly sloping orientation, dominates the
appearance of the Leopaard’s skid bar.” Id.

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GM’s produces a front angular view of Leopaard’s skid bar from the Petition
and Exhibit 1010 at 1. PO Resp. 21 (noting the image is from Pet. 20). Mr.
Peters testifies that this difference is not minor and it significantly impacts
the overall impression of the Leopaard’s skid bar. Ex. 2004 ¶ 57.
(ii) bottom surface and edge
GM next contends that the Leopaard lacks the ’508 patent’s bottom
surface and perimeter shape. PO Resp. 21–22. GM contends these features
would contribute to an ordinary observer’s perception of the design, but the
Petition omits any corresponding view of the Leopaard from which
comparison can be made with these features. Id. at 22 (citing Ex. 2006,
109–111). GM contends that “LKQ’s expert also concedes, the Petition
omits any corresponding views of the Leopaard from which comparison can
be made with these features.” Id.; see also Ex. 2006, 77:2–5; 77:13–21.
As depicted below in annotated Figures 2 and 3, GM alleges that
“[t]he recesses of the claimed design are spaced from the bottom edge such
that a smooth surface extends continuously across the width of the skid bar
between lower ends of the recesses and the rear edge.” PO Resp. 22–23.

GM produces annotated Figures 2 and 3 (Ex. 2004 ¶ 59) adding red
markings along the slanted smooth surface area under the recesses. PO
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Resp. 22–23. Referring to the figures above, GM contends that the lower
edge of the recesses, bottom edge of the skid bar, and continuous surface
that separates these features are all visible when viewed from the front and
side. Id. at 23. GM argues that “[n]one of these features are present in the
images of the Leopaard included in the Petition,” because “[t]he Petition
relies exclusively on images of the Leopaard that show higher portions of
the Leopaard’s skid bar, not a complete bottom portion.” Id. “Indeed, the
Petition lacks any depiction of a complete bottom portion of the Leopaard
from which a reasoned comparison can be made at all. Such lack of
evidence plainly falls short of Petitioner’s burden.” Id. at 23–24; see also
Ex. 2006, 77:13–21. GM further contends that “the Petition omits any views
of a complete bottom portion, inexplicably alleging a front surface of the
Leopaard is comparable to a bottom surface of the claimed design.” PO
Resp. 26 (citing Pet. 50; Ex. 2006, 104:9–105:18).
GM notes that the Petition’s own claim interpretation requires “that
the recessed portions of the claimed design ‘each begin at approximately
70% of the height of the substantially vertical front portion and end at
approximately 70% of the length of the substantially rectangular bottom
portion.’” Id. at 24 (quoting Pet. 12) (emphasis omitted). GM contends that
“[t]his feature, however, is plainly absent from the images provided in the
Petition.” Id. (citing Ex. 2004 ¶ 61; Pet. 49). Further, GM argues that the
“ordinary observer” analysis must include both the visual impression of the
claimed skid bar in isolation as a replacement part, and when installed on a
vehicle. Id. at 27. Even when considered installed on a vehicle, GM
contends the claimed bottom portion is readily visible and impacts the
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ordinary observer’s overall impression. Id. at 28–29 (citing Ex. 2006,
109:22–110:23, 110:2–110:23).
(iii) outwardly projecting top and side surfaces
GM alleges that “[t]he Leopaard lacks the ’508 Patent’s chiseled,
three-dimensional appearance provided by its top and side surfaces.” PO
Resp. 29 (emphasis omitted). GM notes that the distinct top and side
surfaces project the front surface and “[t]he top surface is oriented
substantially perpendicular to the front surface and is defined by front and
rear perimeter edges that curve across the width of the skid bar, and lateral
edges that angle outwardly.” Id. (citing Ex. 2004 ¶ 65). GM contends that
“[t]he side surfaces angle rearwardly from the front surface to lateral edges,
and are prominently visible when the skid bar is viewed from the front and
sides,” as depicted in the annotated figures of the ’508 patent shown below.

GM provides annotated Figures 3 (upper left), 1 (upper right), and 2
(bottom), each with a red shade in the outwardly projecting top and side
surfaces. PO Resp. 30 (citing Ex. 2004 ¶ 65).
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GM, relying on the testimony of Mr. Peters, argues that “[t]he top and
side surfaces—prominently visible in each view of the ’508 Patent—are
significant to the ’508 Patent’s overall appearance,” yet, “[t]he Leopaard
discloses none of these features, and fails to disclose the associated overall
appearance of the claimed design.” Id. at 30–31 (citing Ex. 2004 ¶¶ 66, 67).
Mr. Peters testifies that the outwardly-extending surfaces provide a three-
dimensional appearance in which the vertical front surface projects
forwardly. Ex. 2004 ¶ 66 (“this would have been significant to the ordinary
observer’s overall impression because it creates a structural, bumperlike
image and an appearance of thickness”). Mr. Peters also explains “that the
side surfaces are prominently visible whether the skid bar is viewed alone, or
when assembled.” Id.
GM, and Mr. Peters, next examine the Leopaard and conclude that
“[t]he Leopaard includes, at most, only a thin top edge, and does not include
side surfaces at all.” PO Resp. 31 (citing Ex. 2004 ¶ 67). Relying on images
of the Leopaard below, GM argues “[t]hese differences are not minor,” but
instead, “the Leopaard’s skid bar lacks the overall three-dimensionality,
substantial depth, and forwardly-projected front surface of the ’508 Patent.”

GM produces a cut out enlarged view of the Leopaard skid bar from Exhibits
1006 (left) and 1010 (right). As seen above, GM argues that “[t]he
relationship between the front and top portions are not discernable in the
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Petition’s images of the Leopaard,” and “the Petition never addresses the
size of the claimed top surface, or the substantially perpendicular
relationship between the top and front surface.” PO Resp. 32 (citing Ex.
2004 ¶ 68).
GM notes that Petitioner’s own claim construction requires “small
side portions that angle backward” and “small side portions rising slightly
upward,” but these features are not shown in the Leopaard and Petitioner’s
contrary assertions lack evidentiary support. Id. (citing Pet. 10–11, 47–48).
“Even LKQ’s own declarant again acknowledged that the Petition’s images
of the Leopaard skid bar do not depict a side portion like the ’508 Patent.”
Id. at 33 (citing Ex. 2006, 90:1–21 (Q: “That end surface shown in figure 1
is not visible in the Leopaard vehicle, right?” [A:] “Yeah, I stated that it’s
not visible in the embodiment.”).
(iv) curvature from side-to-side
GM and Mr. Peters argue that the claimed side view of the ’508 patent
requires a “significant curvature that projects the middle portion of the skid
bar substantially forwardly (e.g., to the left in FIG. 3) relative to the side
edges of the skid bar.” PO Resp. 33–34 (citing Ex. 2004 ¶¶ 70–72). Mr.
Peters believes this significant curvature is significant to the overall
appearance of the claimed design, and because of the curvature, a substantial
portion of the skid bar is visible from the side view, including two complete
recesses and space between these recesses as depicted in two annotated
Figure 3s of the ’508 patent reproduced below. Ex. 2004 ¶¶ 70–72.
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GM produces two annotated Figure 3s, with the one on the left having edges
in red to emphasize the significant curvature and the one on the right having
a red inflection line that serves as a transition where the bottom portion
changes from a slightly steeper angle to a slightly shallower angle and a blue
line and arrow showing the outside change in angle. PO Resp. 34; Ex. 2004
¶¶ 70, 71. According to GM, the bottom portion of the design includes an
inflection line that is particularly prominent when viewed from the side and
it extends across the bottom portion of the skid bar where the bottom surface
transitions to a shallower angle as it extends rearwardly. PO Resp. 34 (citing
Ex. 2004 ¶ 71).
Comparing these features to the Leopaard, GM argues that “the views
of the Leopaard included in the Petition do not show significant depth from
the central, leading edge to the rear-most portion, and lack an appearance in
which two recesses are visible when viewed from the side.” PO Resp. 35
(citing Ex. 2004 ¶ 72). GM contends that “Mr. Hill acknowledged that the
Leopaard lacked the curvature of the claimed design and that he ‘can’t tell
how much’ the middle of the Leopaard’s skid bar extends forward of the
sides of the skid bar.’” Id. (quoting Ex. 2006, 88:22–89:6) (emphasis
omitted); see also Pet. 44–51 (omitting any side views of the Leopaard).
GM also contends that “Mr. Hill acknowledged that the Leopaard lacks the
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inflection line or angle change of the bottom surface.” PO Resp. 35 (citing
Ex. 2006, 74:20–75:10). GM concludes that “[t]he significant curvature,
bottom inflection line, and significant depth when viewed from the side are
readily observable and prominent in the ’508 Patent’s design, contributing to
the chiseled, rugged, and, durable overall appearance.” Id. (citing Ex. 2004
¶ 72). GM again argues that the Petition ignores these features even though
they contribute to the overall appearance. Id.
(v) deep recesses entirely visible from the front
GM contends that the Leopaard fails to provide the specific shapes
and proportions of the recesses of the claimed design. PO Resp. 36 (“does
not disclose the claimed design’s distinctive sculpting associated with its
four recesses”). GM provides annotated Figure 2 below and argues that the
claimed design has recesses with parallel top and bottom edges of nearly the
same width, and three side edge segments that first angle outwardly from the
top edge and then angle back towards the bottom edge. Id. (citing Ex. 2004
¶ 74).

GM provides annotated Figure 2 with three red lines tracing the left edge of
the third recess. PO Resp. 36 (citing Ex. 2004 ¶ 74). GM contends that
“[t]he Leopaard lacks this distinctive recess shape,” and “[i]nstead, the
Leopaard recesses include angled segments extending outwardly from a top
edge, and generally vertical portions extending down from the angled
segments.” Id. (citing Ex. 2006, 78:23–79:12).
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Relying on the testimony of Mr. Peters, GM next contends that “the
Leopaard lacks the appearance of recesses having substantial depth depicted
by the ’508 Patent,” and “the substantial depth of the recesses provides an
impression of overall thickness that promotes the ’508 Patent’s chiseled,
durable, and strong overall appearance.” Id. at 37 (citing Ex. 2004 ¶ 75).
GM relies on an annotated version of Figure 3, below, to show the
prominence of the depth of the recesses from the side perspective as
compared to the Leopaard. Id.

GM relies on annotated Figure 3 (side view) with red shading in the recesses
compared a perspective view of the Leopaard (Ex. 1010). GM contends that
“the Leopaard depicts shallow depressions,” which “relate to the thin top
line and other small surfaces of the Leopaard skid bar, coordinating to
provide a different overall appearance.” PO Resp. 37.
GM further contends that “the Leopaard does not disclose the
cohesive relationship between side surfaces of the recesses and the outer side
surfaces of the skid bar.” Id. at 38. As depicted below in an annotated
Figure 3 with the recesses and outer side surfaces shaded in red, GM argues
that in “the claimed design, the substantial depth of the side walls of the
recesses coordinates with the outer side surfaces of the skid bar,” such that
“[t]hese surfaces complement one another to depict substantial thickness,
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here again promoting the chiseled overall appearance that conveys strength
and durability.” Id. (citing Ex. 2004 ¶ 76).

GM provides annotated Figure 3 with the recesses and outer side surfaces of
the claimed skid bar shaded in red. PO Resp. 38. GM concludes that the
Leopaard lacks this relationship and the cohesive overall appearance because
the Leopaard lacks side surfaces, and has shallow depressions, which
combined result in an overall appearance entirely different from the claimed
design. Id. Mr. Peters testifies that the shape and position of the recesses
significantly impacts the character and visual impression of the ’508 patent’s
skid bar and this visual similarity is absent in the Leopaard. Ex. 2004 ¶¶ 73–
78.
(vii) outer perimeter shape
GM reiterates that “[t]he ’508 Patent’s design includes an outer
perimeter shape having substantially vertical side edges,” and further argues
that “LKQ concedes that the claimed design’s outer perimeter shape differs
from the Leopaard, but wrongly argues (without evidence) that this feature is
de minimis.” PO Resp. 39. GM’s declarant, Mr. Peters, testifies that the
vertical orientation of the side edges, and relationship to other features of the
skid bar, are significant to the overall appearance of the claimed design.
Ex. 2004 ¶ 79. Mr. Peters opines that the vertical edges complement vertical
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lines of the recesses, and the vertical sides have a nearly perpendicular
relationship with the top surface, promoting the squarish, rugged overall
appearance of the skid bar. Id. Contrastingly, Mr. Peters testifies that the
Leopaard lacks a perimeter shape having vertical side edges and the
Leopaard’s side edges angle outwardly in each exhibit in the Petition. Id.
¶ 80.
GM also argues that Petitioner’s experts failed to provide any
explanation as to why these side features would have been considered de
minimis. PO Resp. 41 (quoting Ex. 2006, 113:11–16 (“I did not write out
any – any specific determination on why.”)). GM concludes that “the
Petition’s assumption regarding the appearance of the Leopaard’s skid bar
fails to analyze the features of the design that would have been readily
apparent and meaningful to the ordinary observer.” Id.
As for anticipation, GM also argues that LKQ’s anticipation theory
impermissibly relies on multiple distinct references that are directed to
different vehicles.8 PO Resp. 16–17.
Turning to LKQ’s grounds based on obviousness, GM contends that
“[t]he Leopaard references fail to depict numerous aspects of the claimed
design,” yet the obviousness grounds “assume ‘only one minor difference’
between the ’508 Patent’s design and the Leopaard.” Id. at 42 (citing

8 Because the outcome of the proceeding would not change, we assume that
LKQ has produced a single prior art reference, or thing in existence,
sufficient for an anticipation analysis for Post Grant Review. See Verdegaal
Bros. v. Union Oil Co. of Ca., 814 F.2d 628, 631 (Fed. Cir. 1987); see also
Pet. Reply 13 n.3 (“the images depict the same physical item, which is
sufficient for Post Grant Review, a ‘thing in existence’”).

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Ex. 2004 ¶ 82). GM incorporates its arguments from the anticipation section
and further argues that “there are in fact multiple, readily apparent
differences between the claimed design and the Leopaard that are significant
to the overall appearance in the eyes of the ordinary observer/designer.” Id.
(citing Ex. 2004 ¶ 82).
GM alleges that the Petition never acknowledges the numerous
differences discussed above, and never attempts to modify the Leopaard
with respect to these differences. Id. at 43. GM continues, “[g]iven these
omissions, even if the Leopaard were altered to selectively ‘straighten the
side edges of the skid bar,’ the Petition offers no reasoned analysis why the
result would be substantially identical to the claimed design in view of the
many other visible differences significant to the overall appearance.” Id.
(citing Ex. 2004 ¶¶ 82–83). GM contends that the obviousness grounds
based on the Leopaard fail for this reason alone. Id.
GM, again relying on much of its earlier anticipation analysis,
contends that the Leopaard is not a proper Rosen reference. Id. at 43–44.
GM argues that LKQ’s theory “that the Leopaard provides ‘basically’ the
same visual impression is based on a faulty premise—that there is ‘only one’
difference between the claimed design and the Leopaard.” Id. (emphasis
omitted). GM reminds that “this assumption ignores readily apparent
differences of the claimed design” that were noted above. Id. at 44. GM
concludes that “[w]ithout accounting for these differences—and particularly,
the significance of these differences to the ordinary observer/designer—the
Petition lacks any sufficient evidence that the Leopaard is ‘a single reference
that creates basically the same visual impression’ as the claimed design.” Id.
(quoting High Point Design, 730 F.3d at 1314).
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4. Analysis
Automotive design is a field in which readily observable details have
an impact on the overall appearance of a vehicle to both the ordinary
observer and the designer of ordinary skill in the art. See Ex. 2004 ¶¶ 10–
17. The design of the ’508 patent claims four distinct views or angles of a
vehicle front skid bar: a perspective view from the front (Fig. 1), a front
view (Fig. 2), a side view (Fig. 3), and a bottom view (Fig. 4). Although
Petitioner has produced sufficient images of the Leopaard to allow a fair
comparison with the perspective view, the evidence produced is not
sufficient to enable an objective comparison with the claimed bottom and
side views, and the bottom of the front view is unclear in the images of the
Leopaard. The images of the Leopaard focus on the entire vehicle, not the
front skid bar. One image of the Leopaard shows only a partial view of the
bottom of the Leopaard (Ex. 1010) – LKQ has simply not produced any
bottom or side view of the Leopaard for adequate comparison.
In its Petition, LKQ and its experts improperly compared the bottom
view of the claimed design (Fig. 2) to the front view of the Leopaard. See
Pet. 50; Ex. 1003 ¶ 58; Ex. 1004 ¶ 57. LKQ also compares the side view of
the claimed design (Fig. 3) to the perspective view of the Leopaard, but this
comparison is inadequate for reasons set forth below. Further, Figures 1 and
3 claim a unique pronounced curvature and a tall nearly vertical front upper
face portion. Ex. 2004 ¶¶ 53, 54, 66, 70. These two features are not
apparent in any produced image of the Leopaard9 and thus cannot be

9 We have reviewed Mr. Hill’s testimony to the contrary (Ex. 1028 ¶¶ 23,
33, 39, 40), including his cross examination testimony (Ex. 2006, 85:10–
86:7). We understand his position that Exhibit 1006 may be combined with
Exhibit 1010 to show volume, depth, and curvature that is shown in Figure 3
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43
accurately compared. Id. ¶¶ 70–72; see also Ex. 2006, 90:1–21. The side
edges of the Leopard are also obscured by a different trim portion of the
vehicle that obstructs the view of the front skid bar. Ex. 2004 ¶ 69.
These failures in evidence impact both the ordinary observer and the
designer of ordinary skill analysis whereas the overall claimed design cannot
be accurately compared to the Leopaard vehicle. As we discuss in more
detail below, there are simply too many aspects of the claimed design that
are not adequately disclosed by the images of the Leopard. Although LKQ’s
experts project what is likely to be in these evidentiary voids, we do not find
estimations of design features on par with an actual showing. LKQ’s
anticipation and obviousness theories are based too much on speculation and
conjecture about what features might be present in the Leopaard’s skid bar
(see, e.g., Pet. Reply 22 (“most likely”)), or that various features can be
discounted as “likely barely noticeable” or “unlikely to be noticeable.” Id. at
25, 28. With this understanding, we compare the design claim to the
Leopaard, noting both the similarities and difference and also the
shortcomings in evidence.
We recognize there are certain articulable and visible similarities in
the overall appearance of the claimed design and the Leopaard that would be
apparent to an ordinary observer as well as the designer of ordinary skill. As
seen below, the ornamental design features that are most prominent are the
four uniformly spaced recesses cut into the front-facing and rearward
sloping surfaces. See Ex. 1004 ¶ 57; Pet. Reply 10.

of the design claim. We do not find this testimony persuasive because it is a
method to, at best, roughly estimate curvature, depth, and volume.
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LKQ’s annotated Figure 2 compared to Exhibit 1007, both showing the four
recess portions in purple shading. Pet. 49. We agree with Mr. Hill that the
cardinal feature of each design are the prominent recesses. Ex. 1028 ¶ 22.
The recesses have similar positive space between each in both designs. Each
recess has a horizontal top edge and a first downward slanted side edge that
is visible in the produced images of the Leopaard. See Pet. Reply 10. Other
comparisons of the two designs show that the central portion of recesses
have a rearward slope between the front-facing surface and the lower
surface. Each design also has a portion of the front surface visible at the top
of each recess.
Other similarities are also present in each design. Both the ’508
patent and the Leopaard have a rearwardly sloping lower surface of the skid
bar that is of a slight arcuate contour as seen in green shading in each image
below.

LKQ’s comparison of Figure 2 with Exhibit 1010 adding a green shading to
the rearwardly sloping surface of the skid bar in both designs.
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These similarities are, however, overshadowed by the differences in
the overall ornamental designs. Numerous features in the ’508 patent’s
design are simply not persuasively disclosed by the Leopaard, including its
substantial vertical front surface, top and side surfaces, significant curvature,
the entire bottom portion, and the shape and positioning of four recesses as
they extend deeply into the skid bar. See, e.g., Ex. 2004 ¶¶ 10–17, 28–43.
The claimed design has a prominent nearly vertical front surface that
visibly distinguishes the overall appearance of the ’508 patent’s design from
the Leopaard. Ex. 2004 ¶ 52 (describing “substantial height,” “nearly
vertical orientation,” and “nearly perpendicular relationship with side and
top surfaces of the skid bar.”). The front surface includes three distinct
features significant to the design’s overall appearance that are not found in
the Leopaard: (1) a substantial height, (2) a nearly vertical orientation, and
(3) a nearly perpendicular relationship with side and top surfaces of the skid
bar, as compared below. See id.

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A table comparison of Figure 1 (upper left with red shading within the front
surface), the Leopaard at Exhibit 1010 (upper right), Figure 3 (lower left
with blue shading within the front surface), and Exhibit 1006 (lower right
also with blue shading within the front surface).
We find persuasive Mr. Peters’ testimony that the claimed front
surface accounts for more than 1/3 of the overall height of the skid bar, as
seen above in the red and blue shaded regions on the left. See Ex. 2004
¶¶ 53–54. Further, as also seen, the angled relationship of the front surface
relative to top and side surfaces accentuates an outwardly-protruding
appearance of the front surface, while the Leopaard has no such features,
and the Leopaard’s front surface accounts for only a small fraction of the
overall height. See Ex. 2004 ¶¶ 53–54. These differences are readily
apparent to the ordinary observer and designer of ordinary skill, in part
because of the “bumper-like” overall appearance that results from these
claimed features. Id. ¶ 57. The visual impression is notably different than
the overall appearance of the Leopaard design, which is dominated by its
rearward-sloping bottom surface. Id.
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We do not find persuasive LKQ’s argument these differences in the
front surface are simply a “slight difference of degree.” Pet. Reply 17.
Instead, we are persuaded by Mr. Peters’ testimony and the images
themselves that establish a cohesive relationship with other features of the
’508 patent’s design in orientation (e.g., nearly perpendicular to side
surfaces) and in proportions (e.g., more than 1/3 of the overall height). See
PO Sur-Reply 10. The ’508 patent’s design provides specific relationships,
proportions, and scale directly contributing to the outwardly-protruding and
bumper-like overall appearance that is absent in the design of the Leopaard.
Id.
LKQ also has not persuasively shown that the Leopaard has the same
ornamental appearance that is claimed in the side view of the ’508 patent.
More specifically, the ’508 patent’s design has an overall appearance in
which its significant curvature renders a substantial portion of the skid bar
visible from the side view, including two complete recesses and space
between these recesses. See Ex. 2004 ¶¶ 70–72. The Petition’s unsupported
assumptions regarding these readily visible features of the claimed design
would require us to speculate as to actual design, thus we do not find them
persuasive. See Pet. 48. We agree with Mr. Hill that “both the Leopaard
and the ‘508 patent have curvature from side to side,” (Ex. 1028 ¶ 43)
however, the curvature depicted in Figure 3 of the ’508 patent is pronounced
and significant enough to view interior side surfaces of the recesses.
Ex. 2004 ¶ 41 (“significant curvature that is particularly prominent when
viewed from the side”), ¶ 70 (“the middle portion of the skid bar projects
substantially forwardly relative to the sides”), ¶ 72 (“the Leopaard lacks an
appearance in which two recesses are visible when viewed from the side”).
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We also agree with Mr. Hill when he testified that he “can’t tell how much”
the middle of the Leopaard’s skid bar extends forward of the sides of the
skid bar. Ex. 2006, 88:22–89:6. The exact curvature of the Leopaard is
impossible to ascertain from the views produced, but we agree more with
Mr. Peters that the curvature is not as pronounced as the claimed design as
seen in the comparison of Figure 3 of the ’508 patent with a photograph of
the Leopold vehicle showing a perspective view of the front skid bar as
shown below.

GM provides annotated Figure 3 (side view) with red shading in the recesses
compared a perspective view of the Leopaard (Ex. 1010). PO Resp. 37. We
agree with Mr. Peters that “[t]he Leopaard has an appearance that lacks
significant curvature and that does not depict a middle portion that extends
significantly forwardly relative to the sides,” and also “lacks the significant
depth of the claimed skid bar between the central, leading edge to the rear-
most portion when viewed from the side.” Ex. 2004 ¶ 72.
The Petition and Reply omit any image showing a complete bottom
perimeter portion of the Leopaard from which reasoned comparison can be
made with the ’508 patent’s bottom design. Mr. Hill never disputes that the
lower edge of the recesses, bottom edge of the skid bar, and continuous
surface that separates these features are all visible in the ’508 patent’s design
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when viewed from the front (Fig. 2) and side (Fig. 3) but not visible in the
Leopaard exhibits. See, e.g., Ex. 2006, 109:22–112:1; see also id. at 77:13–
21, 79:13–80:8. The Petition does not include any image of the bottom
portion of the Leopaard skid bar. We find persuasive Mr. Peters’ testimony
that by omitting certain comparisons, such as the bottom view, “the
Petition’s analysis is inconsistent with how an ‘ordinary observer’ would
have viewed the claimed design, the Leopaard, and the Equinox.” Ex. 2004
¶ 47.
As seen in GM’s annotated Figures 2 and 3 below, there is a
prominent continuous surface below the recesses and the recesses are
separated from the bottom edge by this continuous surface.

GM relies on annotated Figures 2 and 3 with red lines and arrows added to
the continuous surface below the recesses, which is also labeled by red text.
PO Sur-Reply 11 (citing Ex. 2004 ¶ 59). LKQ has not produced any image
of the Leopaard that persuasively indicates where the recesses end and
whether there is any surface under the recesses. See Ex. 2006, 77:2–5;
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77:13–21. LKQ speculates that the Leopaard’s recesses must either carry
through the terminating edge creating a clear serrated or toothed look or
separate the recesses from the rear edge as is seen in the Leopaard. Pet.
Reply 19. Yet, there is simply no support in the record for this speculation
and LKQ ignores possible configurations in which the depth of the recesses
decrease from top to bottom until there is zero depth where the recesses meet
the bottom edge. See PO Sur-Reply 14.
We are also persuaded by Mr. Hill’s cross-examination testimony
where he admitted that he could not accurately describe where the bottom
portion of the recess of the Leopaard ends:
Q. And you can’t see anything on Exhibit 1010 below that
side vertical portion for these recessed segments, right?
A. I can see that it carries down the surface to -- to -- to
the -- what appears to be the bottom edge, but I’m not -- I can’t
determine exactly where -- where the return would be and where
-- where it would -- where it ends.
Ex. 2006, 79:5–12. LKQ has failed to produce persuasive evidence showing
the bottom areas of the Leopaard, and this failure impacts both the ordinary
observer and designer of ordinary skill analysis.
The claimed top and side surfaces that project the front surface
forwardly are also not found in the Leopaard, creating an overall distinct
appearance in the two designs. See Ex. 2004 ¶¶ 65–67. LKQ’s Reply does
not dispute the impact of the significant depth of the top and side surfaces on
the overall appearance of the ’508 patent’s design. These differences,
compared below, are not just a matter of degree—the substantial thickness
of the top surface coordinates with similar thickness of the side surfaces, as
well as a similar depth of the recesses. See id.
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GM’s comparison of annotated Figures 3 and 1 (top), both with red shading
along the top and side edges with Exhibit 1010 (bottom). PO Sur-Reply 15–
16 (citing Ex. 2004 ¶ 65). These features, highlighted above, work in
concert, creating a set of relative proportions between these respective
features that contribute to the ’508 patent’s overall appearance, and which
are lacking in the Leopaard. Ex. 2004 ¶¶ 65–67.
The Leopaard’s purported top surface is substantially narrower and,
based on the poor image quality, we cannot accurately discern if the top
surface has a substantially perpendicular relationship with the front surface.
See Ex. 2004 ¶ 68 (“I also note that the Petition does not address the
substantially perpendicular relationship between the top and front surface.”).
We find unpersuasive LKQ’s arguments that the ordinary observer “is
capable of gauging perspective to see that the Leopaard discloses a
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substantial top surface presenting a horizontal or substantially horizontal,
light catching plane.” Pet. Reply 21. Based on the quality of the images
produced, this is speculation at best. Further, even if true (which is not
evident from LKQ’s images), LKQ’s assertion does not demonstrate a
substantially similar overall appearance to the ’508 patent’s design. PO Sur-
Reply 17.
It is undisputed that the Leopard also does not show the claimed side
surfaces highlighted in Figures 1 and 3 above. See Ex. 2006, 90:15–91:1 (Q:
“That end surface shown in figure 1 is not visible in the Leopaard vehicle,
right?” . . . A: “Yeah, I stated that it’s not visible in the embodiment. . . .
And then to -- and it’s clearly not shown in the Leopaard as -- at -- at that --
that end surface.”); Ex. 2004 ¶ 67 (“The Leopaard does not include side
surfaces at all. Instead, the front surface interfaces directly with other trim
components.”). Mr. Hill can only “infer from the Leopaard that it has
similar side portions.” Ex. 1028 ¶ 41. The ’508 patent’s side surfaces, or
portions, not only provide a substantial claimed surface, but are angled
outwardly and have a cohesive relationship with the top surface and side
surfaces of the recesses that contribute to the outwardly protruding and
overall ornamental appearance. See Ex. 2004 ¶¶ 66–69; Pet. 10–11 (“small
side portions that angle backward”). As Mr. Peters testifies, “[t]he Leopaard
lacks these features and its overall appearance would have immediately been
perceived as different by the ordinary observer.” Ex. 2004 ¶ 67.
LKQ does not dispute that the Leopaard lacks the side surface feature.
Instead, LKQ alleges for the first time in its Reply that, despite not being
shown, the ordinary observer “would be able to understand” butted side
portions of the Leopaard to be similar to those of the ’508 patent. Pet.
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Reply 22. Mr. Hill testifies that “the ordinary observer would infer from the
Leopaard that it has similar side portions.” Ex. 1028 ¶ 41 (“most likely that
the Leopaard has similar butted side portions”). Again, LKQ fails to
produce any supporting evidence that identifies any image showing the
purported “butted side portions,” or even that “butted side portions” exist in
the Leopaard. We reject the “finite number of ways” approach to design
analysis argued by LKQ, especially for anticipation. See Pet. Reply 22
(“making butted side portion most likely”). Further, LKQ’s new theory that
the ’508 patent is “cut with butted ends” contradicts its own construction in
the Petition as having side portions that “angle backwards.” Compare Pet.
11 (“side portions that angle backward”) with Pet. Reply 10 (“cut with
butted ends”). We find LKQ’s new arguments unpersuasive.
The side portions are claimed by the ’508 patent and visible from
every perspective view—their appearance is not a matter of “vehicle
mounting position” (Pet. Reply 22) as LKQ alleges. See Ex. 1001, Figs. 1–
4; Ex. 2004 ¶ 65. Even when assembled, the side portions are readily
visible, consistent with the claimed design, and thus are significant to overall
appearance regardless of whether the skid bar is viewed in isolation or
installed on a vehicle. Ex. 2004 ¶ 65 (“The top and side surfaces of the ’508
Patent significantly impact the character and visual impression of the
claimed skid bar.”), ¶ 66 (“I additionally note that the side surfaces are
prominently visible whether the skid bar is viewed alone, or when
assembled.”); see also Ex. 1005, 6–7 (depicting the claimed skid bar
mounted on the Silverado). In both the ordinary observer analysis and the
designer of ordinary skill analysis, we view the patented skid bar design in
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its entirety, as it is claimed, and the side portions are part of that claimed
design.
Finally, although the recesses of the claimed design and the Leopaard
have similar aspects discussed above, there are some notable differences in
the specific shapes and proportions of the recesses. The claimed recesses
include parallel top and bottom edges of nearly identical width, and three
side-edge segments that first angle outwardly from the top edge and then
angle back towards the bottom edge.

GM’s annotated Figure 2 with red line tracing along the three side-edge
segments of the recess that first angle outwardly from the top edge and then
angle back towards the bottom edge. PO Sur-Reply 20; Ex. 2004 ¶ 74.
Although the Leopaard has a similar top recess edge and perhaps the first
side edge that angles outwardly, it is impossible to see the bottom edge in
detail. As Mr. Peters testifies, the sidewalls of the recesses have substantial
depth that coordinates with the outer side surfaces of the skid bar, promoting
an appearance of substantial thickness, as depicted below. Ex. 2004 ¶¶ 74–
78. The Leopaard does not garner a similar visual impression, but instead
the Leopaard’s recesses include angled segments extending outwardly from
a top edge, and generally vertical portions extending down from the angled
segments, as seen below. See Ex. 2006, 78:23–79:12; Ex. 2004 ¶ 74.
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GM’s annotated Figure 3 with red shading along the side edges of the two
visible recesses compared with Exhibit 1010 of the Leopaard showing a
perspective view.
As seen above, certain features of the claimed design, including a
bottom edge and side edges that angle inwardly towards the bottom edge, are
not depicted by the Leopaard. Ex. 2004 ¶ 74. The Leopaard lacks the
distinctive recess shape having side edges made up of three segments. Also
shown in annotated Figure 3 above is the substantial depth of the recesses
that conveys thickness. Id. ¶ 75. The deep shape of the ’508 patent’s
recesses is further accentuated by the relatively narrow width of the recesses
relative to the overall width of the skid bar. Id. These features are readily
visible in the claimed design and, according to Mr. Peters, would have been
significant to the ordinary observer. Id. ¶¶ 74, 75. Although the recesses
have similar qualities and spacing as noted above, the smaller differences
detailed above would have also been noticeable to both the ordinary
observer and the designer of ordinary skill in the art. Id. ¶¶ 74–78.
We do not find persuasive LKQ’s contention that “neither GM nor its
declarant, Peters, compare the designs as a whole or consider the
similarities.” Pet. Reply 2. To the contrary, GM and Mr. Peters repeatedly
discuss how the features of the ’508 patent create a unique and cohesive
overall impression, and compared the overall impression with that of the
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Leopaard. See, e.g., PO Resp. 18 (“significant to the design’s overall
appearance”), 20 (“cohesive overall appearance”), 22, 27, 30, 34–35, 37–38,
40. Likewise, Mr. Peters was also consistent in his focus on overall
appearance during cross-examination. Ex. 1026, 33:17, 34:6–7 (“all of them
work in concert to create that overall impression”), 35:9–11, 36:9–10 (“I’m
looking at it from an overall view of the part”), 72:18 (“overall impression”),
205:2–6 (“I evaluated what was similar, what was different, just side by side,
the overall impression of the two designs”).
We also do not find persuasive LKQ’s argument that Mr. Peters, and
GM, required “perfect identity” in order to find similarity. Pet. Reply 8.
LKQ’s purported evidence of this is an altered quote from Mr. Peters that
LKQ appends to a different question. Id. A review of the transcript pages
cited by LKQ, however, reveals that Mr. Peters never equated the “basically
the same” standard with “perfect identity”—Mr. Peters was discussing what
it meant to be “the same.” Ex. 1026, 80–85. LKQ’s omission of an
intervening question, without any notation or annotation, fails to support its
incorrect assertion and contradicts Mr. Peters’ actual testimony. See PO
Sur-Reply 4.
As determined above, the two skid bar designs have some similarities.
The upper shape of the recesses and their spacing is very similar and these
recesses are an important feature of the design. Examining the claimed
designs as a whole, there are several other aspects of the claimed design that
make up its overall appearance are absent from the Leopaard, including the
claimed design’s substantial vertical front face, bottom surface and edge
(continuous surface below the recesses), outwardly projecting top and side
surfaces, curvature from side-to-side, deep recesses entirely visible from the
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front, and outer perimeter shape. See Ex. 2004 ¶¶ 49, 52–81. The features
of the claimed design that are missing from the Leopaard are significant in
the aggregate, and contribute to its rugged, chiseled, three-dimensional
overall appearance that contrasts with the Leopaard’s appearance dominated
by a rearward sloping lower surface and relatively shallow recesses. See id.
¶¶ 28–43. LKQ’s anticipation theory assumes “only” one difference
exists (Pet. 51) between the claimed design and the Leopaard, failing to even
acknowledge multiple other differences—all of which contribute to the
significantly different overall appearance of the claimed design in the eyes
of the ordinary observer. Based on the final record before us, including the
evidentiary shortcomings discussed above, the two designs are not
substantially the same, and accordingly, the Leopaard fails to anticipate the
’508 patent.
As for obviousness based on the Leopaard alone, we are also not
persuaded that a designer of ordinary skill would have viewed the Leopaard
to have design characteristics which are basically the same as the claimed
design of the ’508 patent. Thus, we determine that the Leopaard is not a
proper Rosen reference.
As noted above, the Petition recognizes only “one” difference
between the design of the ’508 patent and the Leopaard. See Pet. 51 (“The
vehicle skid bar of the ’508 Patent has side edges that are vertical rather than
slightly angled out in a horizontal direction.”). The Petition goes on to
describe how “[a] designer of ordinary skill would have been motivated to
straighten the side edges of the skid bar to allow the bar to be affixed cleanly
between straight-lined accent features on vehicles (rather than the angled
accent feature that surrounds the skid bar on the Leopaard).” Pet. 55. The
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Petition does propose any other modifications to the Leopaard. LKQ’s
obviousness analysis failed to address the differences that contribute to the
overall appearance of the ’508 patent’s design. As discussed above, the
evidence shows multiple readily apparent differences between the claimed
design and the Leopaard. We agree with Mr. Peters that “[t]he differences I
discussed above in the context of the ordinary observer are just as significant
to the ordinary designer, who would likewise have recognized these readily
visible features.” Ex. 2004 ¶ 86. These same differences in the aggregate
create an overall ornamental design that is not basically the same between
the claimed design of the ’508 patent and the Leopaard. Accordingly, the
Leopaard is not a proper Rosen reference.
Even before modifications may be considered, LKQ has the burden to
show that the Leopaard, as it currently is “in existence,” has design
characteristics of which are basically the same as the claimed design. High
Point Design, 730 F.3d at 1311. Considering the Leopaard before any
proposed modifications, it is not a proper Rosen reference. Ex. 2004 ¶ 84.
The Leopaard does not give basically the same visual impression as the
patented design because the Leopaard does not teach a substantial vertical
front face, bottom surface and edge (continuous surface below the recesses),
outwardly projecting top and side surfaces, curvature from side-to-side, deep
recesses entirely visible from the front, and outer perimeter shape. See id.
¶¶ 49, 52–85. As Mr. Peters testifies, the Leopaard does not have
substantially the same overall appearance because “the respective designs
include numerous fundamentally different design characteristics,” which
“[t]he Petition does not specifically address.” Id. ¶¶ 83, 84. Without
accounting for these differences—and particularly, the significance of these
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differences to the designer of ordinary skill in the art—the Petition lacks
sufficient evidence that the Leopaard is “a single reference that creates
basically the same visual impression” as the claimed design. Indeed, the
differences described above in the context of the ordinary observer are just
as significant to the ordinary designer, who is aware of readily apparent
differences when assessing the visual impression of designs. Ex. 2004
¶¶ 25, 84–86. Thus, we are not persuaded that a designer of ordinary skill
would have viewed the Leopaard to give basically the same visual
impression as the ’508 patent.
In its Reply, LKQ has gone from recognizing only “one” difference,
to proposing new modifications to the Leopaard. See Pet. Reply 22. LKQ’s
new obviousness theories propose modifications to the Leopaard to create
side portions to include a “butted or backturned side portion” in order “to
accommodate this surrounding chrome ring trim” (id.), and changing
features to create a “proud configuration” in which side portions are visible
when mounted (id. at 23). See also Ex. 1028 ¶¶ 38–42. These new theories
to further modify the Leopaard, introduced for the first time in the Reply,
were not presented in the Petition. We decline to consider these new
arguments that are outside the scope of LKQ’s Petition and that fail to give
Patent Owner a meaningful opportunity to respond with new evidence and
testimony. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324,
1330–31 (Fed. Cir. 2019) (“an IPR petitioner may not raise in reply ‘an
entirely new rationale’ for why a claim would have been obvious”); 35
U.S.C. § 312(a).
Finally, even if we were to consider LKQ’s new modifications to the
Leopaard, LKQ still fails to illustrate that a skilled designer would have
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modified multiple features of the Leopaard in precisely the manner LKQ
proposes, or that such modifications would have resulted in a design that has
the same visual appearance as the ’508 patent’s design. As Mr. Peters
persuasively explains, “the art of vehicle design is not one in which the
designer simply picks and chooses from a menu of options to create the
design,” but instead “the designer must create the design in view of the
overall theme of the vehicle.” Ex. 2004 ¶ 17. The Petition’s incomplete
analysis highlights LKQ’s impermissible reliance on hindsight in using the
’508 patent as a roadmap in proposing specific modifications to arrive at the
claimed design. For example, LKQ’s reasoning for a “butted or backturned
side portion” is “to accommodate this surrounding chrome ring trim.” Pet.
Reply 22. However, LKQ’s additional modification to create a “proud”
configuration purportedly results in the side portions being exposed—not
“butted” with the surrounding chrome ring trim. PO Sur-Reply 24. The side
areas of the claimed design are distinctly impacted by surrounding trim and
LKQ has not shown how its proposed modifications make sense in the
Leopard. Instead, the modifications appear driven by hindsight.
For the reasons set forth above, the Leopaard does not anticipate the
design of the ’508 patent, and the Leopaard would also not have been a
proper Rosen reference. There are simply too many aspects of the claimed
design that are not adequately disclosed by the images of the Leopard.
Further, both LKQ’s anticipation and obviousness theories are based on
speculation and conjecture about certain features that might be present in the
Leopaard’s skid bar but are not shown in the exhibits. Finally, LKQ’s
proposed modifications are not grounded in the appearance of certain
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ornamental features found in the Leopaard, but instead are based on
hindsight driven changes to arrive at the claimed design.
C. The Alleged Obviousness of the Claim Over the Leopaard and the 2012
Chevrolet Equinox
LKQ contends that the single claim of the ’508 Patent is unpatentable
as obvious over the Leopaard and the 2012 Chevrolet Equinox. Pet. 56–59.
GM contends that for much of the same reasons detailed above that the
Leopaard is not a proper primary reference and the Petition’s proposed
modifications are directed only to modifying the Leopaard’s skid bar to have
the vertical side edges of the Equinox –– the Petition ignores the numerous
other differences. PO Resp. 42–51.
For the reasons set forth above, the Leopaard is not a proper Rosen
reference, and therefore the design claim would not have been obvious over
the Leopaard and Equinox. Below, we provide additional analysis
reiterating why the Leopaard is not a proper Rosen reference.
1. 2012 Chevrolet Equinox
Petitioner articulates the secondary reference for this ground in the
alternative as both the “Patent Owner’s 2012 Chevrolet Equinox and its
brochure.” Pet. 15. The 2012 Chevrolet Equinox (“Equinox”) is depicted in
the photograph below, and specially the front skid bar.
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The 2012 Chevrolet Equinox as depicted in Exhibit 1011, page 1, and
Exhibit 1012, page 3.
2. Analysis
Petitioner relies on the Equinox as teaching only the vertical side
edges shown in the ’508 patent. Pet. 56–59. The Petition summarily asserts
that “[a]ny difference between the Leopaard and the claimed design of the
’508 Patent are taught by the Equinox.” Pet. 56. Critically, however, the
Petition’s proposed modifications are here again directed only to modifying
the Leopaard’s skid bar “to have the vertical side edges” of the Equinox.
Pet. 58. LKQ’s analysis ignores the numerous other differences between the
Leopaard and the ’508 patent’s design that are significant to the overall
appearance in the eyes of the designer of ordinary skill. See also Ex. 2004
¶¶ 86, 87. Even considering certain similarities in design, the multiple
differences in the aggregate produce a distinct overall ornamental
appearance in the designs, as detailed above. As a result, LKQ has not
persuasively proven that the Leopaard would have an overall appearance
“basically the same” as the claimed design and thus be a proper Rosen
reference. See PO Resp. 44; PO Sur-Reply 22.
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We find persuasive Mr. Peters’ testimony “that the overall appearance
of the claimed design is different compared to the Leopaard due to numerous
features that differ,” and [t]he differences I discussed above in the context of
the ordinary observer are just as significant to the ordinary designer, who
would likewise have recognized these readily visible features.” Ex. 2004
¶ 86. The Petition simply does not properly account for many of the
differences in the Leopaard and their significance to the ordinary designer.
In Reply, LKQ argues that “a DOSA’s imagination, knowledge, and
skill was sufficient to bridge the gap” to make the Leopaard a proper
primary reference. Pet. Reply 29–32; Ex. 1028 ¶¶ 24, 48, 66. These
arguments ignore the fact that the Petition is completely silent as to most of
the differences between the Leopaard and the claimed design. Apart from
suggesting straightening the sides of the Leopaard to arrive at the claimed
design, the Petition completely ignores numerous actual “gaps” and offers
no insight as to how “a DOSA’s imagination” would bridge such gaps.
Pet. 54–55; Pet. Reply 30.
Accordingly, LKQ has not persuasively shown that the Leopaard is “a
single reference that creates basically the same visual impression” as the
claimed design. As such, LKQ has not proven by a preponderance of the
evidence that ’508 patent design claim would have been obvious over the
Leopaard and the Equinox.
III. CONCLUSION
For the reasons expressed above, we determine that LKQ has not
proven by a preponderance of the evidence that the ’508 patent design claim
is anticipated by the Leopaard. We determine that LKQ has not proven by a
preponderance of the evidence that the ’508 patent design claim would have
PGR2020-00055
Patent D855,508 S

64
been obvious over the Leopaard. Likewise, LKQ has not proven by a
preponderance of the evidence that the ’508 patent design claim would have
been obvious over the Leopaard in combination with the Equinox.

Claims
35
U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1 102 Leopaard 1
1 103 Leopaard 1
1 103 Leopaard and
Equinox
1
Overall Outcome
1

IV. ORDER
For the reasons given, it is
ORDERED that, based on a preponderance of the evidence, the claim
of the ’508 patent has not been shown to be unpatentable; and
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.

PGR2020-00055
Patent D855,508 S

65
PETITIONER:
Barry F. Irwin, P.C.
Reid Huefner
IRWIN IP LLC
birwin@irwinip.com
rhuefner@irwinip.com

PATENT OWNER:
Dorothy P. Whelan
Jennifer J. Huang
Craig A. Deutsch
Grace J. Kim
Joseph A. Herriges
FISH & RICHARDSON P.C.
PTABInbound@fr.com
whelan@fr.com
jjh@fr.com
deutsch@fr.com
gkim@fr.com
herriges@fr.com