LKQ, GM patent case moves forward on willful infringement question

Recent court documents leave in question whether LKQ willfully infringed General Motors’ patents.

LKQ sued GM in November 2021, arguing that it doesn’t infringe two of GM’s fender design patents. GM countersued, alleging that LKQ had infringed the patents.

“GM argued that its patent design was obvious — essentially that the idea behind it wasn’t already familiar to experts and the general public and, as a result, should be protected as intellectual property,” writes U.S. District Judge Jorge L. Alonso in a Sept. 28 memorandum opinion and order.

In May 2024, a federal appellate court overturned a 2023 decision in GM’s favor. In July 2025, the case moved forward with rulings on patentability, obviousness, and invalidity.

Earlier this week, Alonso ruled that GM can’t recover infringement damages from before it filed its April 2022 counterclaims. However, he declined to dismiss GM’s claims that LKQ willfully infringed its patents or to prevent GM from seeking profits tied to the alleged infringement.

A Sept. 28 memorandum opinion and order from Alonso states that the parties don’t dispute that GM failed to mark its product.

Under applicable law, the patented products must be properly marked, and if there is suspicion of infringement, proper steps must be taken to notify the infringer, according to the memorandum.

The parties agree that notice was received, but dispute when.

“GM’s filing of its counterclaims provided LKQ with actual notice as a matter of law… but the parties dispute whether LKQ received actual notice earlier, either through GM’s March 1, 2019 letter or LKQ’s declaratory judgment action,” Alonso writes.

He adds that no reasonable jury could find GM provided actual notice to LKQ via GM’s March 1, 2019 letter or LKQ’s Nov. 2, 2021 declaratory judgment action, and that LKQ’s declaratory judgment action can’t constitute actual notice. The memorandum notes that on March 13, 2020, LKQ informed CCC that it had obtained GM’s March 1, 2019 letter to CCC. GM filed counterclaims on April 25, 2022.

Citing case law, Alonso writes that a declaratory judgment is not a “‘proposal to abate the infringement, but rather a statement of intent by the party filing the action to continue the activity in question.'”

“LKQ argues that GM did not provide actual notice until the filing of its counterclaims because GM represented to LKQ and the court that ‘GM has made no claim of infringement to LKQ relating to the patents-in-suit,'” Alonso writes. “But the Federal Circuit clarified in Gart [case law] that, ‘as long as the communication from the patentee provides sufficient specificity regarding its belief that the recipient may be an infringer, the statutory requirement of actual notice is met. Thus, the requirement of ‘a specific charge of infringement’ set forth in Amsted does not mean the patentee must make an ‘unqualified charge of infringement.’” …a reasonable jury could not find that GM’s letter to CCC constitutes actual notice.

“Even assuming, but not deciding, that the contents of the March 1, 2019 letter were indeed sufficiently specific, that specificity was lost in transmission: CCC’s email does not identify any of GM’s patents nor any of LKQ’s parts… If GM wished to simply notify the public writ large about its patents, it should have marked its products; but because it did not, it was obligated to provide actual notice to LKQ.”

Alonso ruled that GM didn’t give actual notice of infringement until it filed its counterclaims on April 25, 2022, and as a result GM isn’t entitled to damages before April 25, 2022.

Regarding willful infringement, Alonso writes in the memorandum that, “A jury may consider whether the alleged infringer: intentionally copied a product covered by a patent-in-suit; reasonably believed it did not infringe or that the patent was valid, including its reliance on an opinion of counsel; made a good faith effort to avoid infringing; and/or tried to cover up its infringement.”

He notes that LKQ leadership was informed by its outside counsel, Reid Huefner, that “the ’406 Patent was obvious over the 2016 Mitsubishi Pajero and/or a combination of the 2016 Mitsubishi Pajero with the 2015 Toyota Tundra; and that the ’256 Patent was obvious over the 2015 Chevy Colorado and/or a combination of the 2015 Chevy Colorado and U.S. Patent No. D614, 100.”

However, LKQ argues it’s entitled to summary judgment of no pre-suit willful infringement because it didn’t sell the accused products before the filing of its declaratory judgment action. Alonso disagrees.

GM also wants to strike certain opinions of “LKQ’s damages expert,” based on purported discovery disclosure violations by the other party, according to the memorandum. Alonso denied the request. Both parties sought to exclude various expert testimony, and Alonso ruled he will allow some of it.

By Oct. 12, LKQ and GM must submit a joint status report to propose next steps in the case, according to the memorandum.

Earlier this year, GM filed a separate suit against the parts companies for the same cause. The case was stayed in April pending a U.S. International Trade Commission investigation.

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