Another Fender-Bender between LKQ and GM

By John Evans and Tanvi Kumar* –

We have covered the LKQ v. GM design patent disputes from the PTAB decision through appeal and en banc rehearing.  And now we report on yet another chapter in the saga between these parties.

Background.  LKQ and GM took an earlier dispute all the way to the en banc Federal Circuit, who changed long-settled design patent obviousness law by overruling the decades-old Rosen-Durling test for obviousness and replacing it with a more flexible standard under KSR v. Teleflex and Graham v. John Deere.  Whether and how the new LKQ standard impacts the obviousness analysis remains a developing area of law as courts apply the new rules. And a recent summary judgment decision that arose in another LKQ v. GM dispute highlights some of the contours of the new doctrine, particularly in the automotive design space.

The district court decision.  The court denied summary judgment motions concerning obviousness and anticipation and granted summary judgment as to patentability of partial designs in LKQ v. GM, 21-cv-5854 (N.D. Ill.).  Interestingly, the obviousness analysis turned on whether there was a record-supported reason (without hindsight) that a designer of ordinary skill in the art would have modified alleged primary references with features from secondary references to create substantially the same overall appearance as the claimed design.

In its motivation-to-combine analysis, the court considered the asserted primary and secondary references, which were all front fender designs.  The court found that a “mere similarity in appearance” between all the various fenders at issue was enough to create a “suggestion” that, if not rebutted, was sufficient to survive a summary judgment challenge.  In doing so, the court cited pre-LKQ precedents holding that similarity in appearance, without more, can support motivation to combine.  The court reckoned that these old cases remained good law, even if they arose under the old, more restrictive Rosen-Durling standards, because LKQ ostensibly made the current obviousness analysis standards more flexible, as opposed to more stringent.

The court also denied the plaintiff’s request for summary judgment that alleged prior art disclosures in customer-survey clinics qualified as prior art under 35 U.S.C. § 102(a)(1).  It found a genuine fact dispute over whether the surveys were “commercial exploitation,” and thus, prior art.  The court was persuaded by GM’s claims that the clinics were not primarily or dominantly for commercial purposes, given that the vehicles were not for sale, their prices were not even discussed, and that the purpose of the clinics was to get feedback on design themes for future design and development efforts.

The court also brushed aside the plaintiff’s challenge to the patentability of the claimed fender designs under 35 U.S.C. § 171.  (Section 171 is the design patent analog to 35 U.S.C. § 101, which provides patentability requirements for utility patents.)  The court rejected the theory that the invention and “article of manufacture” must be defined as a complete vehicle, as opposed to a fender, rejecting the challenges because they made “the same critical and flawed assumption:  that a design patent is invalid as to a component part.”

Takeaways.  This decision illustrates how pre-LKQ obviousness precedents still offer some guidance even under the current, more flexible legal framework.  Future cases may delve deeper into how “similar” the designs shown in primary and secondary references really need to be to support motivation-to-combine.  Finally, proving prior-art commercial exploitation remains challenging, and patentability challenges to partial designs even more so.

*Tanvi was a Summer Associate in Jones Day’s Cleveland Office.