PTAB

PGR2020-00024

LKQ Corp v. GM Global Technology Operations LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Vehicle Tailgate
  • Brief Description: The ’253 patent claims the ornamental design for a vehicle tailgate. The design features a primarily unadorned vertical surface with a contoured, protruding upper portion, a horizontal crease across the lower portion, and a slight overall convex curvature.

3. Grounds for Unpatentability

Ground 1: Invalidity as an Improper Partial-Product Patent

  • Core Argument for this Ground: Petitioner argued that the single claim of the ’253 patent is unpatentable because it is directed to a "partial-product" rather than a complete "article of manufacture" as required by 35 U.S.C. §171. The petition asserted that granting design patents on individual component parts of a larger functional whole, like a vehicle, improperly subverts the patent exhaustion doctrine and a customer's right to repair. By patenting a component, the Patent Owner can prevent consumers from repairing their vehicles with aftermarket parts, effectively forcing them to compensate the patent owner twice for the same patented article. Petitioner contended that this use of design patents goes against the original intent of the law and serves to impermissibly restrain the aftermarket for repair parts.

Ground 2: The claim is obvious over the 2015 Chevrolet Colorado, optionally in view of O'Donnell

  • Prior Art Relied Upon: 2015 Chevrolet Colorado (a publicly available vehicle review from Automobile magazine) and O’Donnell (Patent D710,283).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the 2015 Chevrolet Colorado (the "2015 Colorado") is a proper primary reference because its tailgate design creates basically the same overall visual impression as the ’253 patent. The 2015 Colorado was alleged to disclose the same overall shape and dimensions, a horizontal top planar surface, a contoured protruding upper portion, an unadorned primary face, a lower horizontal crease, and a convex curvature. Petitioner identified only two minor differences: the ’253 patent’s top protrusion is slightly thicker near the center, and its horizontal lower crease is slightly thinner than that of the 2015 Colorado.
    • Motivation to Combine (for §103 grounds): Petitioner argued these differences are de minimis and represent insubstantial changes that would have been obvious to a designer of ordinary skill. A designer would be motivated to slightly increase the thickness of the top protrusion to aesthetically and proportionally accommodate a handle insert. The secondary reference, O’Donnell, which discloses another truck tailgate design, was cited as suggesting the use of a thinner horizontal crease.
    • Expectation of Success (for §103 grounds): Because the modifications involved simple, routine aesthetic choices common in automotive design and suggested by closely related prior art, a designer would have had a high expectation of success in achieving the final claimed design.

Ground 3: The claim is obvious over the 2015 GMC Canyon, optionally in view of O'Donnell

  • Prior Art Relied Upon: 2015 GMC Canyon (publicly available vehicle brochures and reviews) and O’Donnell (Patent D710,283).
  • Core Argument for this Ground:
    • Prior Art Mapping: Similar to the argument in Ground 2, Petitioner asserted that the 2015 GMC Canyon serves as a primary reference because its tailgate possesses basically the same overall visual impression as the claimed design. The petition mapped the same key features—overall shape, top planar surface, contoured upper portion, lower crease, and convex curvature—from the 2015 GMC Canyon to the ’253 patent’s claim. The same two minor differences were identified: a slightly thicker top protrusion and a thinner lower crease in the claimed design compared to the 2015 GMC Canyon.
    • Motivation to Combine (for §103 grounds): The motivation arguments mirrored those in Ground 2. A designer of ordinary skill would have found it obvious to thicken the top protrusion to better accommodate a handle and would have been motivated by the O'Donnell design to narrow the lower crease to achieve a different but well-understood visual effect. The petition emphasized that O'Donnell is "so related" to the 2015 GMC Canyon (both being modern GM truck tailgates) that applying its features would be a natural design step.
    • Expectation of Success (for §103 grounds): The arguments for an expectation of success were identical to those presented in Ground 2, focusing on the predictability of making minor aesthetic adjustments to a pre-existing design.

4. Key Claim Construction Positions

  • Petitioner provided a verbal construction of the claimed design to identify the key features material to the overall visual impression. This construction was used as the basis for its prior art mapping arguments and included:
    • A horizontal top planar surface.
    • A contoured upper portion protruding from the top surface, which first slopes down and away from the tailgate face before sloping down and toward it.
    • A primarily unadorned vertical exterior face featuring a horizontal crease in the lower portion.
    • An overall convex curvature to the tailgate.

5. Relief Requested

  • Petitioner requested that the Board institute a Post Grant Review (PGR) and cancel the single claim of the ’253 patent as unpatentable.