LKQ v. GM patent infringement case district judge rules on summary judgment motions

A patent infringement suit against General Motors by LKQ and Keystone Automotive Industries moves forward with rulings on patentability, obviousness, and invalidity.

LKQ sued in November 2021, stating that it does not infringe two of GM’s fender design patents. GM countersued, alleging that LKQ had infringed the at-issue patents.

GM argued that its patent design wasn’t 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.

In May 2024, a federal appellate court overturned a 2023 decision in favor of GM.

Now, an Illinois District judge has granted GM’s motions for summary judgment on the issue of patentability, denied GM’s motion for summary judgment on the issue of obviousness, and denied LKQ’s motion for summary judgment on the issue of invalidity. Summary judgment is granted upon a party’s motion when there is no issue of material fact.

GM asked the court to grant summary judgment on LKQ’s “article of manufacture” and “fragment of a design” challenges to the patentability of the at-issue patents, according to the June 30 order.

LKQ argued that the patents are invalid because the design is not applied to an “article of manufacture,” that is, GM designs vehicles as a whole without designing fenders independently. Because GM invented a full car, the patents referencing only the fender don’t disclose all material aspects of the company’s invented design, but only a “fragment of a design,” according to LKQ’s arguments.

“Both arguments make the same critical and flawed assumption: that a design patent is invalid as to a component part,” wrote U.S. District Judge Jorge Alonso. “The Supreme Court has held that the fact that a component is later ‘integrated into a larger product’ does not mean that it is not an article of manufacture.”

According to U.S. patent code, there is no text that “even arguably creates such a limitation on patentability,” Alonso wrote.

He added, “The Federal Circuit has explained, in the context of automobile design, ‘Ford could properly have claimed its designs as applied to the entire [truck] or as applied to the hood and headlamp’ and that ‘Ford chose to claim designs as applied to portions of particular components, and the law permits it to do so.’ Auto. Body Parts Ass’n v. Ford Glob. Techs.”

Regarding the issue of obviousness — that it should be obvious the patents were infringed, Alonso noted Sealy Tech., LLC v. SSB Mfg. Co. in which it was found, in the context of demonstrating a motivation to combine primary and secondary references to reach a claimed design, that “the mere similarity in appearance” between primary and secondary references “itself provides the suggestion that one should apply certain features to another design” and can demonstrate a motivation to combine.

“Here, LKQ’s expert Jason Hill identified primary references and secondary references which he alleges, taken together, would create the same overall visual impressions as the at-issue patents,” Alonso wrote. ” GM has provided no argument that the primary and secondary references, all of which are front vehicle fenders, are not so related to themselves establish a motivation to combine… Accordingly, GM’s motion for summary judgment is denied.”

According to the order, LKQ argues it’s entitled to summary judgment on the validity of the at-issue patents under 35 USC § 102(a)(1) because the designs claimed were in public use for over a year before the effective dates of the patents through commercial exploitation at GM’s consumer clinics.

GM argues that the clinics weren’t used to sell vehicles, financial terms weren’t discussed for its vehicles, the vehicles weren’t for sale, and that the clinics were used to “to measure participants’ reactions to design themes in support of its product development efforts, and keeps detailed records that are fed back to the designers,” the order states.

“…there is no binding law indicating that GM’s clinics are commercial exploitation as a matter of law and that, as such, the determination is best left to the finder of fact,” Alonso wrote. “Indeed, binding law shows that for a use to constitute commercial exploitation, the primary or principal purpose of the use must have been commercialization. …factual disputes exist as to the primary purpose of GM’s clinic. Accordingly, the Court denies LKQ’s motion for summary judgment.”

A motion by LKQ to disqualify GM’s counsel remains pending.

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