DCT
1:21-cv-05854
LKQ Corp v. General Motors Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: LKQ Corporation and Keystone Automotive Industries, Inc. (Delaware)
- Defendant: General Motors Company, GM Global Technology Operations, LLC, and General Motors LLC (Delaware)
- Plaintiff’s Counsel: Irwin IP LLC
- Case Identification: 1:21-cv-05854, N.D. Ill., 01/14/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because a substantial part of the events giving rise to the claim occurred in the district, including Defendants’ alleged infringement accusations directed at Plaintiff, whose corporate office is in Chicago.
- Core Dispute: Plaintiff, an automotive aftermarket parts supplier, seeks a declaratory judgment that its replacement vehicle fenders do not infringe Defendant's design patents and that those patents are invalid.
- Technical Context: The dispute concerns the intellectual property protection for ornamental designs of automotive replacement parts, a key area of competition between original equipment manufacturers (OEMs) and the aftermarket industry.
- Key Procedural History: The complaint states that the parties previously had a confidential Design Patent License Agreement (DPLA), which GM allegedly allowed to terminate by refusing to add new patents, including those now in suit. The action was precipitated by GM allegedly sending letters to third-party parts-ordering platforms asserting that any non-GM parts corresponding to the patents-in-suit are "unauthorized and therefore infringing," which Plaintiff contends was an indirect accusation against its products.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-14 | U.S. Patent No. D818,406 Priority Date (Filing Date) |
| 2017-06-29 | U.S. Patent No. D828,256 Priority Date (Filing Date) |
| 2018-05-22 | U.S. Patent No. D818,406 Issue Date |
| 2018-09-11 | U.S. Patent No. D828,256 Issue Date |
| 2019-03-01 | GM allegedly sends patent assertion letters to third-party platforms |
| 2020-03-04 | Third-party platform CCC allegedly sends letter to LKQ requesting removal of parts |
| 2021-11-01 | LKQ first received the accused parts |
| 2022-01-01 | Accused parts were first ready to be sold by LKQ |
| 2022-01-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D818,406 - Vehicle front fender
- Patent Identification: U.S. Design Patent No. D818406, Vehicle front fender, issued May 22, 2018.
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems but protect ornamental designs. The commercial context described in the complaint is the desire by an OEM to protect the unique aesthetic of its vehicle components and, as alleged by Plaintiff, to control the market for replacement parts (Compl. ¶¶ 12-13).
- The Patented Solution: The patent protects the specific, non-functional, ornamental appearance of a vehicle's right-sided front fender (’406 Patent, Claim). The visual design is defined by the solid lines in the patent's figures, which depict the fender's shape, contours, and character lines, while broken lines illustrate the surrounding environment and form no part of the claimed design ('406 Patent, Figs. 1-4; Description).
- Technical Importance: The complaint alleges that OEMs secure design patents on individual exterior components, such as fenders, that are likely to be damaged in an accident, as part of a strategy to exclude aftermarket competition (Compl. ¶¶ 13-14).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a vehicle front fender, as shown and described." ('406 Patent, Claim).
- The scope of this claim is defined by the visual representations in Figures 1-4 of the patent.
U.S. Design Patent No. D828,256 - Vehicle fender
- Patent Identification: U.S. Design Patent No. D828256, Vehicle fender, issued September 11, 2018.
The Invention Explained
- Problem Addressed: Similar to the '406 Patent, this patent seeks to protect the unique ornamental appearance of a vehicle component part (Compl. ¶¶ 12-13).
- The Patented Solution: The patent claims the ornamental design for a vehicle fender as depicted in its drawings (’256 Patent, Claim). The description notes that the figures show a first embodiment, and a second embodiment, which is not shown, is a mirror image of the first ('256 Patent, Description). The claimed design consists of the shape and surface contours illustrated by the solid lines in Figures 1-4 ('256 Patent, Figs. 1-4).
- Technical Importance: As with the '406 Patent, the complaint frames the patenting of such designs as a key element of the OEM's strategy to control the lucrative market for collision repair parts (Compl. ¶¶ 13-14).
Key Claims at a Glance
- The single asserted claim is: "The ornamental design for a vehicle fender, as shown and described." ('256 Patent, Claim).
- The claim's scope is defined by the drawings and covers both the illustrated embodiment and its mirror image.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are aftermarket replacement vehicle fenders manufactured for and sold by LKQ (Compl. ¶¶ 8, 20). The complaint specifically identifies LKQ Part # GM1240409 and # GM1241409 as the products corresponding to the '406 Patent, and LKQ Part # GM1240413 and # GM1241413 as the products corresponding to the '256 Patent (Compl. ¶52).
Functionality and Market Context
The accused products are newly manufactured replacement parts intended to replace damaged or worn original equipment fenders on certain GM vehicles, thereby returning the vehicle to its original condition (Compl. ¶8). LKQ alleges it is a national leader in the automotive replacement parts market and that it has taken all necessary steps to begin selling the accused parts, with sales planned for the first quarter of 2022 (Compl. ¶¶ 21, 45).
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action, the following summarizes Plaintiff LKQ's arguments for non-infringement.
D818,406 Infringement Allegations
| Claim Element (Feature of the Patented Design) | LKQ's Stated Non-Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall ornamental design for a right-sided vehicle fender | The accused LKQ Part # GM1240409 is a left-sided fender, which is not claimed by the patent. | ¶63 | '406 Patent, Fig. 1 |
| Design line extending from the headlight area | The LKQ parts allegedly have a "different design line underneath the line that extends from the headlight." | ¶62 | '406 Patent, Fig. 1 |
- Identified Points of Contention:
- Scope Questions: A primary issue is whether a design patent claiming an ornamental design for a right-sided fender can be infringed by the sale of a left-sided fender. The complaint provides a side-by-side visual comparing the left-sided LKQ part to the right-sided fender shown in the patent's Figure 1 (Compl. p. 22).
- Technical Questions: The infringement analysis will depend on whether the differences in character lines asserted by LKQ are significant enough to prevent an ordinary observer from finding the designs substantially similar. The complaint highlights this alleged difference in a visual comparison (Compl. p. 21).
D828,256 Infringement Allegations
| Claim Element (Feature of the Patented Design) | LKQ's Stated Non-Infringing Feature | Complaint Citation | Patent Citation |
|---|---|---|---|
| Crease lines on the fender body | The accused LKQ parts allegedly do not have "an extra crease claimed by the '256 Patent." | ¶69 | '256 Patent, Fig. 1 |
| Design line around the wheel arch | The design line around the wheel arch on the LKQ part allegedly "does not terminate at around the mid-point," unlike the line in the patented design. | ¶69 | '256 Patent, Fig. 1 |
- Identified Points of Contention:
- Scope Questions: The central question is whether an ordinary observer, comparing the accused LKQ fenders to the patented design, would be deceived into thinking they are the same.
- Technical Questions: The dispute will likely focus on the visual significance of the specific differences alleged by LKQ. The complaint provides a visual aid with red boxes highlighting the allegedly missing crease and the different termination point of the wheel arch line on the LKQ part compared to the patent drawing (Compl. p. 24).
V. Key Claim Terms for Construction
For design patents, the "claim" is the drawing, but certain statutory terms defining the scope of patentable subject matter can be dispositive.
- The Term: "article of manufacture"
- Context and Importance: Plaintiff alleges the patents are invalid because the claimed fender is a "component part" rather than a patent-eligible "article of manufacture" under 35 U.S.C. § 171 (Compl. ¶¶ 101, 105). Practitioners may focus on this term because if a court were to agree that a replacement fender lacks a standalone ornamental identity separate from the vehicle as a whole, the patents could be held invalid.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Defendants will likely argue that a fender is a distinct article of manufacture that is sold separately and has an ornamental design visible during its normal life. The patent titles (Vehicle front fender, Vehicle fender) and claims (claiming the design for a fender) support the view that the fender itself is the relevant article ('406 Patent, Title; '256 Patent, Title).
- Evidence for a Narrower Interpretation: Plaintiff may argue that the fender has no commercial or aesthetic life apart from the vehicle to which it is attached. The complaint's focus on the parts' purpose to "return the vehicle to its original condition" suggests their design identity is inseparable from the whole vehicle (Compl. ¶8).
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement by GM. Rather, it details GM's actions that give rise to the declaratory judgment action, which include sending letters to third-party parts distributors (Compl. ¶¶ 26, 28-29). These letters allegedly state that non-GM parts are "unauthorized and therefore infringing," which forms the basis of GM's threat and LKQ's apprehension of being sued for direct infringement (for making/selling) and potentially indirect infringement (for inducing infringement by repair shops).
- Willful Infringement: The complaint seeks to preempt a future claim of willful infringement by GM (Compl. ¶51). It notes that GM has accused LKQ of willful infringement in prior litigation over different design patents, establishing what LKQ portrays as a pattern of conduct and making a future willfulness claim a credible threat (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
A threshold legal question will be one of statutory subject matter: does a replacement vehicle fender, whose aesthetic is integrated into a larger vehicle, qualify as a patentable "article of manufacture" under 35 U.S.C. § 171, or is it an unpatentable component part?
A core infringement question will be one of visual perception: for the purposes of the "ordinary observer" test, are the specific design differences identified by LKQ—such as the absence of a crease line or a modified character line—sufficiently substantial to distinguish the accused fenders from the patented designs?
A central validity question will be one of obviousness: would a designer of ordinary skill in the automotive field have been motivated to combine the designs of prior art vehicles, as alleged in the complaint, to create designs with the same overall visual appearance as those claimed in the '406 and '256 patents?