DCT

1:21-cv-03166

LKQ Corp v. Kia Motors America Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:21-cv-03166, N.D. Ill., 11/10/2022
  • Venue Allegations: Plaintiff alleges venue is proper because a substantial portion of the events giving rise to the claims occurred in the district and Defendants are subject to personal jurisdiction there.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its aftermarket automotive lamps do not infringe numerous design patents held by Defendant and, further, that those patents are invalid as obvious, anticipated by public use, and directed to unpatentable subject matter.
  • Technical Context: The case concerns the automotive aftermarket industry, which provides consumers with competitive, non-OEM replacement parts for vehicle repair and maintenance.
  • Key Procedural History: This declaratory judgment action arises from affirmative measures taken by Kia, including a January 20, 2021 letter accusing LKQ of infringement and a subsequent U.S. International Trade Commission investigation (Inv. No. 337-TA-1291) initiated by Kia alleging infringement of many of the same design patents.

Case Timeline

Date Event
2008-07-14 ’773 Patent Priority Date
2009-05-19 ’773 Patent Issue Date
2009-12-08 ’506 Patent Priority Date
2010-02-26 ’701 Patent Priority Date
2011-01-17 ’931 Patent Priority Date
2011-04-05 ’701 Patent Issue Date
2011-04-19 ’506 Patent Issue Date
2011-12-20 ’931 Patent Issue Date
2012-04-18 ’933, ’218, & ’219 Patents Priority Date
2012-05-30 ’963 Patent Priority Date
2013-02-21 ’975, ’976, & ’977 Patents Priority Date
2013-06-11 ’871 & ’873 Patents Priority Date
2013-12-17 ’933 Patent Issue Date
2014-03-25 ’989 Patent Priority Date
2014-05-27 ’963 Patent Issue Date
2014-07-15 ’218 & ’219 Patents Issue Date
2014-10-07 ’975, ’976, & ’977 Patents Issue Date
2015-01-06 ’871 & ’873 Patents Issue Date
2015-02-16 ’222 & ’223 Patents Priority Date
2015-07-16 ’311 & ’471 Patents Priority Date
2015-09-16 ’836 Patent Priority Date
2015-09-23 ’833 Patent Priority Date
2016-02-16 ’757, ’762, & ’764 Patents Issue Date
2016-12-13 ’222 & ’223 Patents Issue Date
2017-01-10 ’311 Patent Issue Date
2017-03-14 ’471 Patent Issue Date
2017-05-02 ’833 & ’836 Patents Issue Date
2017-07-25 ’989 Patent Issue Date
2021-01-20 Kia sends letter to LKQ alleging infringement
2021-12-15 Kia files ITC Complaint against LKQ
2022-01-18 U.S. ITC institutes investigation based on Kia's complaint
2022-11-10 LKQ files Amended Complaint for Declaratory Judgment

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

U.S. Design Patent No. D592,773 - "Vehicle Head Lamp"

  • The Invention Explained:
    • Problem Addressed: Design patents do not articulate a technical problem in a background section. The implicit problem is the need for a new, original, and ornamental design for an article of manufacture, in this case, a vehicle headlamp. (Compl. ¶29; D’773 Patent, CLAIM).
    • The Patented Solution: The patent claims the specific aesthetic appearance of the vehicle headlamp as depicted in its seven figures, which show the article from perspective, front, rear, left, right, top, and bottom views. (D’773 Patent, DESCRIPTION, FIG. 1-7).
    • Technical Importance: The design of vehicle components like headlamps is a key element of a vehicle's overall brand identity and aesthetic appeal. (Compl. ¶11).
  • Key Claims at a Glance:
    • Design patents contain a single claim.
    • The asserted claim is for: “The ornamental design for a vehicle head lamp, as shown and described.” (Compl. ¶29; D’773 Patent, CLAIM).

U.S. Design Patent No. D635,701 - "Headlamp for Automobiles"

  • The Invention Explained:
    • Problem Addressed: The patent addresses the need for a novel ornamental design for an automotive headlamp. (Compl. ¶34; D’701 Patent, CLAIM).
    • The Patented Solution: The ’701 Patent protects the specific visual appearance of the headlamp illustrated in the patent’s figures, defining its shape, configuration, and surface ornamentation. (D’701 Patent, DESCRIPTION, FIG. 1-7).
    • Technical Importance: The unique appearance of components like headlamps serves to differentiate vehicle models in a competitive market and contribute to the overall design language of the vehicle. (Compl. ¶11).
  • Key Claims at a Glance:
    • Design patents contain a single claim.
    • The asserted claim is for: “The ornamental design for headlamp for automobiles, as shown and described.” (Compl. ¶34; D’701 Patent, CLAIM).

Multi-Patent Capsule: U.S. Design Patent No. D636,506 - "Head Lamp for Automobiles"

  • Patent Identification: D636,506, “Head Lamp for Automobiles,” issued April 19, 2011. (Compl. ¶38).
  • Technology Synopsis: The patent claims the ornamental design for an automotive headlamp, protecting its specific aesthetic features as shown in the patent's drawings. (Compl. ¶39).
  • Asserted Claims: The single claim for the ornamental design for a headlamp for automobiles, as shown and described. (Compl. ¶39).
  • Accused Features: The design of LKQ aftermarket replacement headlamp, part number KI2502184C. (Compl. ¶¶ 27, 40).

Multi-Patent Capsule: U.S. Design Patent No. D650,931 - "Head Lamp for Automobiles"

  • Patent Identification: D650,931, “Head Lamp for Automobiles,” issued December 20, 2011. (Compl. ¶41).
  • Technology Synopsis: The patent claims the specific ornamental appearance of an automotive headlamp, as depicted in the patent's figures. (Compl. ¶42).
  • Asserted Claims: The single claim for the ornamental design for a headlamp for automobiles, as shown and described. (Compl. ¶42).
  • Accused Features: The designs of LKQ aftermarket replacement headlamps, part numbers KI2502152, KI2502152C, KI2503152, and KI2503152C. (Compl. ¶¶ 27, 43-44).

This report omits individual analysis for the 19 additional design patents-in-suit listed in the complaint for brevity (D695,933; D705,963; D709,218; D709,219; D714,975; D714,976; D714,977; D720,871; D720,873; D749,757; D749,762; D749,764; D774,222; D774,223; D776,311; D781,471; D785,833; D785,836; and D792,989). The core allegations of non-infringement and invalidity for these patents follow the same patterns as those analyzed for the lead patents.

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are aftermarket automotive replacement headlamps and rear combination lamps manufactured, imported, and sold by LKQ. (Compl. ¶¶ 1, 17). The complaint identifies specific accused product part numbers corresponding to each asserted patent. (Compl. ¶27).
  • Functionality and Market Context: The products are designed to be direct replacements for damaged or worn original equipment manufacturer (OEM) parts. (Compl. ¶8). The complaint alleges that the aftermarket industry provides a crucial source of competition for replacement parts, which would otherwise be a "captive and monopolized market" controlled by OEMs like Kia. (Compl. ¶10). LKQ positions its products as high-quality alternatives that meet or exceed the quality of the OEM parts they replace. (Compl. ¶18).

IV. Analysis of Non-Infringement Allegations

This is a declaratory judgment action where the Plaintiff, LKQ, alleges non-infringement. The analysis is based on LKQ's assertions.

Claim Element (from sole claim) Asserted Non-Infringing Design (LKQ Part KI2503141C) Complaint Citation Patent Citation
The ornamental design for a vehicle head lamp, as shown and described. The complaint presents a photograph of the LKQ Part KI2503141C, arguing that its design is not substantially the same as the patented design when viewed as a whole. (Compl. ¶30). ¶30, ¶31 FIG. 1

The complaint provides a side-by-side visual comparison of the patented design and the accused LKQ part. (Compl. ¶30). LKQ's core non-infringement argument is that "an ordinary observer would not believe the design of KI2503141C is substantially the same, when viewed as a whole, to the design of the ’773 Patent to induce purchase of one believing it to be the other." (Compl. ¶31).

Claim Element (from sole claim) Asserted Non-Infringing Design (LKQ Part KI2502157C) Complaint Citation Patent Citation
The ornamental design for headlamp for automobiles, as shown and described. The complaint presents a photograph of the LKQ Part KI2502157C, arguing that its overall appearance is not substantially the same as that claimed in the patent. (Compl. ¶35). ¶35, ¶36 FIG. 1

Similar to the ’773 Patent, the complaint provides a visual comparison of the patented line drawing and a photograph of the LKQ part. (Compl. ¶35). LKQ alleges that the design of its part is not substantially the same as the patented design under the ordinary observer test. (Compl. ¶36).

  • Identified Points of Contention:
    • Factual Question: The central dispute is factual: would an ordinary observer, in the context of the marketplace, be deceived by the similarity between the LKQ parts and the patented designs? The litigation will focus on comparing the overall visual impression of the designs, not on minor differences.
    • Evidentiary Question: A key issue will be how the designs are compared. The complaint contrasts line drawings from the patents with photographs of the physical accused parts, which raises questions about how differences in lighting, angle, and medium (drawing vs. photo) might influence the "ordinary observer" analysis. For example, the visual comparison for the '773 patent shows the patented design as a line drawing and the accused product as a full-color photograph, which may highlight or obscure certain design features. (Compl. ¶30).

V. Key Claim Terms for Construction

  • The Term: "article of manufacture"
  • Context and Importance: This term is central to a fundamental validity challenge that applies to all asserted patents. Practitioners may focus on this term because LKQ alleges that the patented designs for vehicle lights are merely "component parts that have no independent functionality" and therefore do not qualify as patentable "articles of manufacture" under 35 U.S.C. § 171. (Compl. ¶¶ 524, 529). If this argument were successful, it could invalidate not only the patents-in-suit but also a wide range of design patents on other replacement parts.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The complaint does not present evidence for a broad interpretation. A defendant in this position would likely argue that decades of USPTO practice and case law have treated components like lamps as proper "articles of manufacture."
    • Evidence for a Narrower Interpretation: LKQ argues that the original meaning of "article of manufacture" at the time of the statute's enactment "was an article that was complete in itself, and not a part or sub-part of something that needed further assembly to be functional." (Compl. ¶526). LKQ supports this with a citation to a legal academic paper, suggesting an argument based on statutory originalism. (Compl. ¶526, fn. 1).

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

  1. A core issue will be one of statutory scope: Can an ornamental design for a vehicle component part, which has no independent use apart from the vehicle as a whole, be validly claimed as an "article of manufacture" under 35 U.S.C. § 171, or does this practice improperly extend design patent protection to sub-parts of a larger item?

  2. A second central issue will be one of visual comparison: Applying the ordinary observer test, are the overall ornamental designs of the accused LKQ aftermarket lamps "substantially the same" as the designs claimed in Kia's patents, such that a purchaser would be induced to buy one thinking it was the other?

  3. A third key question will be one of obviousness: Are the claimed Kia designs merely obvious variations of prior art designs from other automotive manufacturers, such as the headlamps of the 2006 Honda Civic or 2009 Honda Odyssey, as alleged in the complaint?