DCT
1:21-cv-03167
LKQ Corp v. Hyundai Electronics Industries Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: LKQ Corporation and Keystone Automotive Industries, Inc. (Delaware/Illinois)
- Defendant: Hyundai Motor America, Inc. and Hyundai Motor Company (California/Republic of Korea)
- Plaintiff’s Counsel: Irwin IP LLP
- Case Identification: 1:21-cv-03167, N.D. Ill., 07/12/2023
- Venue Allegations: Plaintiff alleges venue is proper based on Defendants' continuous and systematic contacts with Illinois and because Defendants directed infringement accusations at Plaintiff in the district.
- Core Dispute: Plaintiff, a distributor of aftermarket automotive parts, seeks a declaratory judgment that its products do not infringe numerous Hyundai design patents and that those patents are invalid.
- Technical Context: The case concerns the ornamental designs of automotive headlamps and taillamps within the competitive multi-billion dollar U.S. automotive aftermarket repair parts industry.
- Key Procedural History: The action follows a letter from Hyundai to LKQ on February 4, 2021, accusing LKQ of infringing certain design patents. Hyundai also initiated a related proceeding at the U.S. International Trade Commission. This Amended Complaint for Declaratory Judgment follows an original complaint filed by LKQ on June 11, 2021.
Case Timeline
| Date | Event |
|---|---|
| 2009-07-22 | Earliest Priority Date ('583 Patent) |
| 2009-12-01 | Earliest Priority Date ('478, '8835 Patents) |
| 2009-12-11 | Earliest Priority Date ('836 Patent) |
| 2010-03-29 | Earliest Priority Date ('319 Patent) |
| 2010-04-26 | Earliest Priority Date ('812 Patent) |
| 2010-06-08 | U.S. Patent No. D617,478 Issues |
| 2010-06-29 | U.S. Patent Nos. D618,835 and D618,836 Issue |
| 2010-07-17 | Earliest Priority Date ('5835 Patent) |
| 2010-10-26 | Earliest Priority Date ('743 Patent) |
| 2010-11-26 | Earliest Priority Date ('474 Patent) |
| 2011-01-25 | U.S. Patent No. D631,583 Issues |
| 2011-05-03 | U.S. Patent No. D637,319 Issues |
| 2011-05-10 | U.S. Patent No. D637,743 Issues |
| 2011-06-28 | U.S. Patent No. D640,812 Issues |
| 2011-07-29 | Earliest Priority Date ('690 Patent) |
| 2012-03-13 | U.S. Patent No. D655,835 Issues |
| 2012-03-14 | Earliest Priority Date ('217 Patent) |
| 2012-05-22 | U.S. Patent No. D660,474 Issues |
| 2012-07-31 | U.S. Patent No. D664,690 Issues |
| 2013-07-10 | Earliest Priority Date ('003, '057, '574, '063 Patents) |
| 2014-02-17 | Earliest Priority Date ('980, '436 Patents) |
| 2014-07-15 | U.S. Patent No. D709,217 Issues |
| 2015-01-30 | Earliest Priority Date ('865, '864 Patents) |
| 2015-08-11 | U.S. Patent No. D736,436 Issues |
| 2015-09-01 | U.S. Patent No. D738,003 Issues |
| 2015-09-15 | U.S. Patent No. D739,057 Issues |
| 2015-09-22 | U.S. Patent No. D739,574 Issues |
| 2015-10-13 | U.S. Patent No. D740,980 Issues |
| 2015-10-29 | Earliest Priority Date ('292, '351 Patents) |
| 2015-11-10 | U.S. Patent No. D743,063 Issues |
| 2016-06-21 | U.S. Patent Nos. D759,864 and D759,865 Issue |
| 2016-11-08 | U.S. Patent No. D771,292 Issues |
| 2017-01-20 | Earliest Priority Date ('163 Patent) |
| 2017-02-03 | Earliest Priority Date ('947 Patent) |
| 2017-02-17 | Earliest Priority Date ('225 Patent) |
| 2017-02-28 | U.S. Patent No. D780,351 Issues |
| 2018-05-15 | U.S. Patent No. D818,163 Issues |
| 2018-10-02 | U.S. Patent No. D829,947 Issues |
| 2018-11-20 | U.S. Patent No. D834,225 Issues |
| 2021-02-04 | Hyundai sends letter to LKQ alleging infringement |
| 2021-06-11 | LKQ files initial Declaratory Judgment action |
| 2021-12-16 | Hyundai files ITC complaint |
| 2023-07-12 | LKQ files Amended Complaint |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D740,980 - "Head lamp for automobiles"
- The Invention Explained:
- Problem Addressed: The complaint does not describe a technical problem in the traditional sense; rather, the patent protects a specific aesthetic choice for automotive components, seeking to distinguish a vehicle's appearance from competitors. (Compl. ¶11).
- The Patented Solution: The ’980 Patent claims the specific ornamental appearance of a vehicle headlamp assembly. The design is defined entirely by the shapes, contours, and arrangement of features depicted in its drawings, such as the overall housing shape and the configuration of internal elements. (D740,980 Patent, FIG. 1-7).
- Technical Importance: The ornamental design of components like headlamps is a key part of a vehicle's overall brand identity and styling, differentiating it in the marketplace. (Compl. ¶11).
- Key Claims at a Glance:
- The single claim asserted is for: "The ornamental design for a head lamp for automobiles, as shown and described." (Compl. ¶28).
U.S. Design Patent No. D637,319 - "Head lamp for automobiles"
- The Invention Explained:
- Problem Addressed: The patent addresses the need for unique and protectable aesthetic designs for automotive components to establish a distinct visual identity for a vehicle model. (Compl. ¶11).
- The Patented Solution: The ’319 Patent claims the ornamental design of a vehicle headlamp, characterized by the visual features shown in its figures. This includes the specific sweeping shape of the housing and the arrangement of the primary projector lamp and other internal reflective surfaces. (D637,319 Patent, FIG. 1-7).
- Technical Importance: As with the '980 Patent, the design of a headlamp contributes significantly to the vehicle's "face" and overall styling, which is a critical factor for consumers. (Compl. ¶11).
- Key Claims at a Glance:
- The single claim asserted is for: "The ornamental design for a head lamp for automobiles, as shown and described." (Compl. ¶34).
Multi-Patent Capsule: U.S. Patent No. D736,436
- Patent Identification: D736,436, "Rear combination lamp for automobiles," issued August 11, 2015.
- Technology Synopsis: The patent protects the specific ornamental design of a vehicle taillamp assembly. The design is characterized by its overall shape and the internal arrangement of light-emitting and reflective surfaces.
- Asserted Claims: The ornamental design for a rear combination lamp for automobiles, as shown and described. (Compl. ¶110).
- Accused Features: The design of LKQ's aftermarket replacement taillamp, part number HY2805129C, is alleged to be substantially similar to the patented design. (Compl. ¶9, ¶111).
Multi-Patent Capsule: U.S. Patent No. D660,474
- Patent Identification: D660,474, "Head lamp for automobiles," issued May 22, 2012.
- Technology Synopsis: The patent protects the specific aesthetic appearance of a vehicle headlamp. The design is defined by its particular contours and the layout of its internal lighting elements.
- Asserted Claims: The ornamental design for a head lamp for automobiles, as shown and described. (Compl. ¶40).
- Accused Features: The design of LKQ's aftermarket replacement headlamp, part number HY2503168OE, is alleged to be substantially similar to the patented design. (Compl. ¶9).
Note: The complaint asserts an additional 20 design patents which follow the same pattern of protecting the ornamental design of a specific headlamp or taillamp. These are U.S. Patent Nos. D709,217; D618,836; D640,812; D738,003; D739,057; D637,743; D739,574; D743,063; D655,835; D631,583; D759,865; D617,478; D618,835; D664,690; D759,864; D771,292; D780,351; D818,163; D829,947; and D834,225. (Compl. ¶5).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are numerous aftermarket automotive replacement parts, specifically headlamps and taillamps, sold by LKQ under various catalog part numbers (e.g., HY2503183C, HY2502177C). (Compl. ¶24, ¶29, ¶35).
- Functionality and Market Context: The accused products are newly manufactured parts designed to replace damaged or worn original equipment manufacturer (OEM) parts on Hyundai vehicles. (Compl. ¶8). The complaint alleges that LKQ and the broader aftermarket industry provide a crucial source of competition to the OEM, which would otherwise be a "monopolized market" for replacement parts. (Compl. ¶10). LKQ's parts are intended to meet or exceed the quality of the OEM parts they replace. (Compl. ¶18). The complaint includes a side-by-side comparison image showing an accused LKQ headlamp next to the patented design from the ’980 Patent. (Compl. p. 10, Ex. 5).
IV. Analysis of Infringement Allegations
D740,980 Infringement Allegations
| Claim Element (from the single claim) | Alleged Non-Infringing Design Features | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a head lamp for automobiles, as shown and described. | Plaintiff LKQ alleges its part is not substantially similar, pointing to specific differences: the accused part has a lens that is not fully transparent, contains horizontal striations on one light, and features textured checkerboard patterns on a lower section, all of which are absent from the patented design. | ¶31 | ’980 Patent, FIG. 1-7 |
D637,319 Infringement Allegations
| Claim Element (from the single claim) | Alleged Non-Infringing Design Features | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a head lamp for automobiles, as shown and described. | Plaintiff LKQ alleges its part is visually distinct, citing features such as a non-transparent lens, different striation patterns in the housing, a turn signal located on the right side instead of the left, and a lower inner portion with a curved peak pointing in the opposite direction of the patented design. | ¶37 | ’319 Patent, FIG. 1-7 |
- Identified Points of Contention:
The core of a design patent infringement analysis is the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The complaint raises several points of contention by highlighting specific visual differences.- Materiality of Surface Details: A primary question will be whether the alleged differences in lens transparency, surface textures (e.g., "striations," "checkerboard patterns"), and finishes are significant enough to create a different overall visual impression, or if an ordinary observer would consider them minor details that do not alter the design's fundamental appearance. (Compl. ¶31, ¶37). The complaint provides a visual comparison of the accused LKQ part and the design of the '836 Patent, where differences in lens transparency are a key issue. (Compl. p. 13, Ex. 12).
- Component Arrangement and Shape: The complaint frequently alleges that the location and shape of internal components differ, such as the placement of a turn signal or the shape of an inner reflective portion. (Compl. ¶37, ¶59, ¶65). The court may need to determine if these alleged differences in the "visual grammar" of the lamps are sufficient to distinguish the overall designs. A visual comparison for the '436 Patent shows an accused LKQ part with visible internal components allegedly not claimed in the patent's design. (Compl. p. 23, Ex. 32).
- Scope of the Claimed Design: A recurring issue may be the scope of what the patent figures actually "show and describe." For example, line-drawing figures in patents may be interpreted as claiming only shape and contour, not specific material properties like transparency or color. LKQ’s arguments often rely on such properties. (Compl. ¶31, ¶37, ¶53).
V. Key Claim Terms for Construction
The patents-in-suit are design patents, which claim an overall ornamental design as depicted in their figures rather than discrete textual elements. Therefore, an analysis of specific claim terms for construction is not applicable to this dispute. The central issue is the overall visual appearance of the claimed design compared to the accused product.
VI. Other Allegations
The complaint is a declaratory judgment action and does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action will likely focus on the scope and validity of design patents for component parts in the automotive aftermarket. The central questions for the court appear to be:
- A question of visual perception: For each of the 24 asserted patents, would an ordinary observer, giving such attention as a purchaser usually gives, find the overall visual appearance of the accused LKQ replacement part to be substantially the same as the patented Hyundai design? The case may turn on whether the specific differences in lens texture, transparency, and internal component layout alleged by LKQ are sufficient to create a distinct visual impression.
- A foundational question of patentability: The complaint raises the legal question of whether a design patent can validly cover an ornamental design for a component part, like a lamp, which has no independent function apart from the vehicle and is not typically sold to end-users as a standalone "article of manufacture." LKQ argues that such patents impermissibly restrict the right to repair a larger, purchased article (the vehicle), presenting a fundamental challenge to the patents' validity. (Compl. ¶474-479).
- An evidentiary question of obviousness: For each patent, LKQ has presented prior art references (often a combination of an earlier automotive design and another patent) that it argues would have made the patented design obvious to a designer of ordinary skill. A key issue will be whether the visual similarities between the asserted prior art and the patented designs are strong enough to support a finding of obviousness. (Compl. ¶169-473).