DCT

2:21-cv-08210

American Honda Motor Co Inc v. LKQ Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:21-cv-08210, C.D. Cal., 10/15/2021
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant LKQ maintains multiple regular and established places of business within the district, and a substantial part of the alleged infringing acts occurred there.
  • Core Dispute: Plaintiff alleges that Defendants’ aftermarket automobile wheels infringe nine of Plaintiff's U.S. design patents covering the ornamental designs of its original-equipment wheels.
  • Technical Context: The dispute concerns the ornamental appearance of wheels in the highly competitive automotive original equipment and aftermarket parts industries, where unique design is a key market differentiator.
  • Key Procedural History: The operative complaint is a First Amended Complaint filed on August 26, 2022. The complaint notes that the asserted patents represent a subset of patents identified in a "Joint Stipulation Streamlining the Case" entered on June 23, 2022, indicating the scope of the dispute has been narrowed during litigation. Plaintiff also alleges providing pre-suit notice of infringement to Defendant LKQ via a letter dated April 1, 2021.

Case Timeline

Date Event
2011-08-15 Priority Date for U.S. Patent No. D653,597
2011-11-04 Priority Date for U.S. Patent No. D674,330
2012-02-07 Issue Date for U.S. Patent No. D653,597
2012-11-09 Priority Date for U.S. Patent No. D729,720
2013-01-15 Issue Date for U.S. Patent No. D674,330
2013-03-26 Priority Date for U.S. Patent No. D741,237
2013-10-07 Priority Date for U.S. Patent No. D748,034
2014-11-19 Priority Date for U.S. Patent No. D767,467
2015-02-20 Priority Date for U.S. Patent No. D769,172
2015-05-19 Issue Date for U.S. Patent No. D729,720
2015-10-20 Issue Date for U.S. Patent No. D741,237
2016-01-26 Issue Date for U.S. Patent No. D748,034
2016-03-22 Priority Date for U.S. Patent No. D798,216
2016-09-27 Issue Date for U.S. Patent No. D767,467
2016-09-30 Priority Date for U.S. Patent No. D827,545
2016-10-18 Issue Date for U.S. Patent No. D769,172
2017-09-26 Issue Date for U.S. Patent No. D798,216
2018-08-28 Issue Date for U.S. Patent No. D827,545
2021-04-01 Plaintiff sends pre-suit notice letter to Defendant LKQ
2021-10-15 Original Complaint Filing Date
2022-06-23 Court enters Joint Stipulation Streamlining the Case
2022-08-26 First Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D674,330 - Wheel for an automobile

  • Patent Identification: U.S. Patent No. D674330 S, Wheel for an automobile, issued January 15, 2013.
  • The Invention Explained:
    • Problem Addressed: The patent does not articulate a specific problem, which is typical for design patents. The implicit goal is the creation of a new, original, and ornamental design for an automobile wheel to distinguish a vehicle's appearance. (D’330 Patent, Claim).
    • The Patented Solution: The patent discloses an ornamental wheel design characterized by ten spokes arranged as five sets of V-shaped pairs. (D’330 Patent, FIG. 2). Each spoke has a sculpted, slightly twisted surface that creates a dynamic, pinwheel-like visual effect radiating from the central hub. (D’330 Patent, FIG. 1). The design as a whole presents a complex and aggressive aesthetic.
    • Technical Importance: In the automotive industry, unique wheel designs are critical for establishing brand identity and differentiating vehicle models, directly influencing consumer appeal and purchasing decisions. (Compl. ¶8-9).
  • Key Claims at a Glance:
    • The patent contains a single claim for "The ornamental design for, a wheel for an automobile, as shown and described." (D’330 Patent, Claim).
    • The claimed design consists of the visual characteristics of the wheel as depicted in the patent's figures, including:
      • A configuration of ten spokes.
      • The arrangement of the spokes into five V-shaped pairs.
      • The specific three-dimensional contour and surface curvature of each individual spoke.
      • The overall visual impression created by the combination of these elements.

U.S. Design Patent No. D729,720 - Wheel

  • Patent Identification: U.S. Patent No. D729720 S, Wheel, issued May 19, 2015.
  • The Invention Explained:
    • Problem Addressed: The patent seeks to provide a novel ornamental design for an automobile wheel, distinct from prior art designs. (D’720 Patent, Claim).
    • The Patented Solution: The design features ten spokes that appear to sweep outward from the wheel's center in a gentle spiral. (D’720 Patent, FIG. 2). The spokes have a distinctive profile, widening as they approach the rim, and feature a surface treatment, suggested by shading in the drawings, that creates a two-tone or machined-face appearance. (D’720 Patent, FIG. 1-2). This combination of shape and finish creates a modern and high-contrast look.
    • Technical Importance: The use of multi-tone finishes and complex spoke geometry allows manufacturers to create premium-looking designs that enhance a vehicle's perceived value and style. (Compl. ¶8-9).
  • Key Claims at a Glance:
    • The patent contains a single claim for "The ornamental design for a wheel, as shown and described." (D’720 Patent, Claim).
    • The claimed design consists of the visual characteristics of the wheel as depicted in the patent's figures, including:
      • A configuration of ten spokes with a sweeping, directional orientation.
      • The specific profile and contour of the spokes.
      • The contrasting surface appearances as indicated by the line shading in the figures.
      • The overall aesthetic impression resulting from these features.

U.S. Patent No. D767,467 - Wheel

  • Patent Identification: U.S. Patent No. D767467 S, Wheel, issued September 27, 2016.
  • Technology Synopsis: This patent protects an ornamental design for a wheel featuring ten thin, relatively flat spokes arranged in five diverging pairs. The design creates a lightweight and open appearance.
  • Asserted Claims: The single claim for the ornamental design for a wheel as shown and described.
  • Accused Features: The design of Defendants' aftermarket wheel with product number ALY64088U10N is alleged to infringe. (Compl. ¶46).

U.S. Patent No. D769,172 - Wheel for an automobile

  • Patent Identification: U.S. Patent No. D769172 S, Wheel for an automobile, issued October 18, 2016.
  • Technology Synopsis: This patent covers a wheel design with five thick, U-shaped spokes that create a robust and substantial visual impression. The spokes have a complex, twisted surface that interacts with light to create a sense of motion.
  • Asserted Claims: The single claim for the ornamental design for a wheel as shown and described.
  • Accused Features: The design of Defendants' aftermarket wheel with product number ALY64083U45N is alleged to infringe. (Compl. ¶51).

U.S. Patent No. D827,545 - Wheel for an automobile

  • Patent Identification: U.S. Patent No. D827545 S, Wheel for an automobile, issued August 28, 2018.
  • Technology Synopsis: The patent protects a wheel design with five pairs of thin, aggressively angled spokes. The spokes twist sharply as they extend from the hub to the rim, creating a highly dynamic and vortex-like effect.
  • Asserted Claims: The single claim for the ornamental design for a wheel for an automobile as shown and described.
  • Accused Features: The design of Defendants' aftermarket wheel with product number ALY64126U30N is alleged to infringe. (Compl. ¶56).

U.S. Patent No. D741,237 - Wheel

  • Patent Identification: U.S. Patent No. D741237 S, Wheel, issued October 20, 2015.
  • Technology Synopsis: This patent covers a wheel design with ten broad, gently curving spokes. The spokes have a smooth, flowing surface that gives the wheel a refined and elegant appearance.
  • Asserted Claims: The single claim for the ornamental design for a wheel as shown and described.
  • Accused Features: The design of Defendants' aftermarket wheel with product number ALY64057U15N is alleged to infringe. (Compl. ¶61).

U.S. Patent No. D653,597 - Wheel

  • Patent Identification: U.S. Patent No. D653597 S, Wheel, issued February 7, 2012.
  • Technology Synopsis: The patent protects an ornamental design for a wheel characterized by ten paired spokes. Each spoke in a pair is parallel to the other, creating a distinctive "tuning fork" look for each of the five pairs.
  • Asserted Claims: The single claim for the ornamental design for a wheel as shown and described.
  • Accused Features: The design of Defendants' aftermarket wheel with product number ALY64037U15N is alleged to infringe. (Compl. ¶66).

U.S. Patent No. D748,034 - Wheel

  • Patent Identification: U.S. Patent No. D748034 S, Wheel, issued January 26, 2016.
  • Technology Synopsis: This patent covers a complex wheel design with ten directionally swept spokes featuring a two-tone finish. The spokes appear to interlock and overlap near the hub, creating a sense of depth and technical sophistication.
  • Asserted Claims: The single claim for the ornamental design for a wheel as shown and described.
  • Accused Features: The design of Defendants' aftermarket wheel with product number ALY71827U30N is alleged to infringe. (Compl. ¶71).

U.S. Patent No. D798,216 - Wheel

  • Patent Identification: U.S. Patent No. D798216 S, Wheel, issued September 26, 2017.
  • Technology Synopsis: The patent covers a five-spoke wheel design where each spoke is broad and has a prominent, raised central spine. This creates a simple, clean, yet powerful and muscular aesthetic.
  • Asserted Claims: The single claim for the ornamental design for a wheel as shown and described.
  • Accused Features: The designs of Defendants' aftermarket wheels with product numbers ALY64119U20N and ALY64119U35N are alleged to infringe. (Compl. ¶76).

III. The Accused Instrumentality

Product Identification

The Accused Products are aftermarket automobile wheels imported, manufactured, offered for sale, and/or sold by Defendants LKQ and Keystone. (Compl. ¶20). Specific products are identified by part numbers, such as "ALY64048U35N for 2013 Honda Accord." (Compl. ¶21).

Functionality and Market Context

The Accused Products function as replacement wheels for specific Honda and Acura vehicle models. (Compl. ¶21-26). The complaint alleges that Defendants market these products as "replicas" of Honda's original-equipment wheels and sell them at a lower price point than Honda's authorized dealers. (Compl. ¶29, 34). This positions them as direct competitors to Plaintiff's own parts, allegedly capitalizing on the goodwill and design investment associated with the Honda brand. (Compl. ¶4, 34). The complaint includes a screenshot of an online product listing for an accused wheel, explicitly described as a "REPLICA" with a "MACHINED AND GRAY" finish. (Compl. ¶29).

IV. Analysis of Infringement Allegations

The infringement theory for each design patent is that the overall ornamental appearance of the corresponding Accused Product is "substantially the same" as the patented design, such that it would deceive an ordinary observer into believing the accused wheel is the patented one. (Compl. ¶27).

D674,330 Infringement Allegations

Claim Element (from the ornamental design shown in the figures) Alleged Infringing Functionality Complaint Citation Patent Citation
The overall visual appearance of the claimed wheel design. The complaint presents a side-by-side visual comparison, arguing that the accused wheel is a copy of Honda's design. This image shows the patented design drawing next to a photograph of the accused wheel. ¶21 D'330 Patent, FIG. 2
A configuration of ten spokes arranged in five distinct V-shaped pairs radiating from a central hub. The Accused Product (ALY64048U35N) features ten spokes arranged in five V-shaped pairs, which the complaint alleges creates a virtually identical configuration. ¶21 D'330 Patent, FIG. 2
Each spoke possessing a complex, sculpted, and slightly twisted surface contour. The spokes on the Accused Product display a similar sculpted and twisted surface, which is alleged to mimic the dynamic visual effect of the patented design. ¶21 D'330 Patent, FIG. 1

D729,720 Infringement Allegations

Claim Element (from the ornamental design shown in the figures) Alleged Infringing Functionality Complaint Citation Patent Citation
The overall visual appearance of the claimed wheel design. The complaint does not provide a specific side-by-side image for this patent but alleges infringement by Accused Product ALY71820U35N. The general allegation is that the accused products "are substantially the same as the ornamental designs claimed in the patents-in-suit." ¶27, 41 D'720 Patent, FIG. 2
A configuration of ten spokes that sweep directionally outward from the center. The complaint alleges that the Accused Product ALY71820U35N embodies a design that would appear to an ordinary observer to be substantially the same as the claimed design. ¶41-42 D'720 Patent, FIG. 1
A contrasting two-tone or machined-face surface appearance, as suggested by shading in the figures. The complaint does not provide sufficient detail for analysis of this specific element for this patent, but infringement of the overall design is alleged. ¶41-42 D'720 Patent, FIG. 2

Identified Points of Contention

  • Scope Questions: A central question for the court will be the scope of each design patent. A dispute may arise over whether the patents cover only the exact literal embodiment shown in the drawings or if they cover any design with a "substantially similar" overall visual impression.
  • Technical Questions: The infringement analysis will turn on a visual comparison. Defendants may argue that minor differences in spoke thickness, edge sharpness, surface curvature, or hub configuration between the patented designs and the accused wheels are significant enough to create a different overall visual appearance for the ordinary observer. The side-by-side comparison for the '330 patent, for example, shows a patented design with sharp line drawings and an accused product with softer, photographed edges, which may be a point of argument. (Compl. ¶21).

V. Key Claim Terms for Construction

In design patent litigation, formal claim construction of written terms is rare; the claim is understood to be the design itself as shown in the drawings. However, the scope of that claim is the central issue.

  • The Term: "The ornamental design for a wheel... as shown and described."
  • Context and Importance: This phrase constitutes the entirety of the claim in each asserted patent. The interpretation of its scope is dispositive for infringement. The core dispute is not over the meaning of a word, but over the visual boundaries of the claimed design and how much variation from the drawings is permissible before a design is no longer "as shown."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Plaintiff may argue that the "as shown and described" language should be interpreted to protect the overall visual impression of the design, not just the hyper-specific details. The solid lines used in all figures (e.g., D’330 Patent, FIG. 1-2) indicate that the entire shape and configuration shown contribute to the claimed design, and any "replica" that captures this overall aesthetic infringes.
    • Evidence for a Narrower Interpretation: Defendants may argue that the claim is strictly limited to the precise article and design depicted in the drawings. Any deviation in proportion, surface contour, or edge treatment would place an accused product outside the scope of the claim. The fact that the patents claim a "wheel for an automobile" may be argued to limit the design to the specific context and proportions shown.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement. The basis for this allegation is that Defendants supply the accused wheels to third-party vendors, such as Summit Racing Equipment, along with "information from the manufacturer, and advertising and promotional materials," thereby actively encouraging and enabling the resale of infringing products. (Compl. ¶30-31).
  • Willful Infringement: The willfulness claim is supported by two primary allegations. First, the complaint alleges that Honda put LKQ on direct notice of its infringement claims through a letter sent on April 1, 2021, which identified the specific patents and accused products. (Compl. ¶28). Second, the complaint alleges that Defendants' own marketing of the Accused Products as "replicas" of Honda wheels demonstrates a clear intent to copy Honda's patented designs and trade on their popularity, which may support a finding of willful misconduct. (Compl. ¶29).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of visual comparison: For each of the nine asserted design patents, are the accused "replica" wheels substantially the same in overall ornamental appearance as the patented designs, such that an ordinary observer would be deceived, or are the differences in detail sufficient to distinguish them?
  • A key evidentiary question will concern intent and willfulness: What weight will be given to the defendants’ alleged pre-suit knowledge of the patents from Honda’s notice letter and, more significantly, their own marketing of the accused products using the term "replica"? This could heavily influence potential damages.
  • The case also raises a question of market reality: In a market where consumers actively seek out "replica" wheels, how does the "ordinary observer" test apply? Does the consumer's potential awareness that they are buying a copy, rather than an original, affect the legal analysis of whether the design itself is deceptively similar?