Lkq Corporation v. Gm Global Technology Operations LLC

Case: 21-2348 Document: 86 Page: 1 Filed: 06/30/2023

United States Court of Appeals for the Federal Circuit

______________________

LKQ CORPORATION, KEYSTONE AUTOMOTIVE

INDUSTRIES, INC.,

Appellants v.

GM GLOBAL TECHNOLOGY OPERATIONS LLC,

Appellee ______________________

2021-2348 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2020- 00534.

______________________

ON PETITION FOR REHEARING EN BANC

______________________ BARRY IRWIN, Irwin IP LLP, Chicago, IL, filed a peti- tion for panel rehearing and rehearing en banc for appel- lants. Also represented by ANDREW HIMEBAUGH, IFTEKHAR ZAIM, Chicago, IL; MARK A. LEMLEY, MARK P MCKENNA, Lex Lumina PLLC, New York, NY.

JOSEPH HERRIGES, JR., Fish & Richardson PC, Minne- apolis, MN, filed a response to the petition for appellee. Also represented by JOHN A. DRAGSETH; NITIKA GUPTA FIORELLA, Wilmington, DE.

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GM GLOBAL TECHNOLOGY OPERATIONS LLC JOHN LOUIS CORDANI, Robinson & Cole LLP, Hartford,

CT, for amici curiae American Property Casualty Insur- ance Association, National Association of Mutual Insur- ance Companies. Also represented by BENJAMIN M.

DANIELS; KYLE GLENDON HEPNER, Washington, DC.

ROBERT GLENN OAKE, JR., Oake Law Office, Allen, TX, for amicus curiae Automotive Body Parts Association.

PHILLIP R. MALONE, Juelsgaard Intellectual Property and Innovation Clinic, Mills Legal Clinic, Stanford Law School, Stanford, CA, for amici curiae Mark Bartholomew, Amy L. Landers, Ana Santos Rutschman, Sharon K.

Sandeen, Joshua D. Sarnoff.

CHRISTOPHER T. HOLLAND, Holland Law LLP, San Francisco, CA, for amici curiae TYC Americas, TYC Brother Industrial Co., Ltd. Also represented by LORI HOLLAND.

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Before MOORE, Chief Judge, NEWMAN, LOURIE, DYK, PROST, REYNA, TARANTO, CHEN, HUGHES, STOLL, and

STARK, Circuit Judges. *

PER CURIAM.

ORDER

Appellants LKQ Corporation and Keystone Automo- tive Industries, Inc. (collectively, “LKQ”) filed a petition for rehearing en banc. A response to the petition was invited by the court and filed by Appellee GM Global Technology Operations LLC (“GM”). The court also accepted amicus briefs filed by TYC Americas and YC Brother Industrial Co. Ltd; Mark Bartholomew, Amy L. Landers, Ana Santos LKQ CORPORATION v. 3 GM GLOBAL TECHNOLOGY OPERATIONS LLC Rutschman, Sharon K. Sandeen, and Joshua D. Sarnoff; American Property Casualty Insurance Association and National Association of Mutual Insurance Companies; and Automotive Body Parts Association.

The petition was referred to the circuit judges in regu- lar active service. A poll was requested and taken, and the court decided that the appeal warrants en banc considera- tion.

Accordingly, IT IS ORDERED THAT: (1) The petition for rehearing en banc is granted. (2) The panel opinion in LKQ Corp. v. GM Global Tech- nology Operations LLC, No. 2021-2348, 2023 WL 328228 (Fed. Cir. Jan. 20, 2023) is vacated, and the appeal is rein- stated.

(3) The parties are requested to file new briefs, which shall address the following questions:

A. Does KSR International Co. v. Teleflex Inc.,

550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)? B. Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and sug- gest the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR’s statements faulting “a rigid rule that limits the obviousness in- quiry,” 550 U.S. at 419, and adopting “an ex- pansive and flexible approach,” id. at 415, should cause us to eliminate or modify: (a) Durling’s requirement that “[b]efore one can

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GM GLOBAL TECHNOLOGY OPERATIONS LLC begin to combine prior art designs . . . one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design,’” 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling’s require- ment that secondary references “may only be used to modify the primary reference if they are ‘so related to the primary reference that the appearance of certain ornamental fea- tures in one would suggest the application of those features to the other,’” id. at 103 (quot- ing In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).

C. If the court were to eliminate or modify the

Rosen-Durling test, what should the test be for evaluating design patent obviousness chal- lenges?

D. Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.

E. Given the length of time in which the Rosen-

Durling test has been applied, would eliminat- ing or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?

F. To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?

LKQ CORPORATION v. 5 GM GLOBAL TECHNOLOGY OPERATIONS LLC

(4) While the issues of anticipation and forfeiture are preserved, the court does not require additional briefing on them.

(5) LKQ’s en banc opening brief is due 45 days from the date of this order. GM’s en banc response is due within 45 days of service of LKQ’s en banc opening brief, and LKQ’s reply brief within 30 days of service of the response brief. The parties may file a supplemental appendix, if nec- essary to cite to additional material, within 7 days after service of the reply brief. The parties’ briefs must comply with Fed. Cir. R. 32(b)(1).

(6) The court invites the views of the United States as amicus curiae. Any other briefs of amicus curiae may be filed without consent and leave of the court. Any amicus brief supporting LKQ’s position or supporting neither posi- tion must be filed within 14 days after service of LKQ’s en banc opening brief. Any amicus brief supporting GM’s po- sition must be filed within 14 days after service of the GM’s response brief. Amicus briefs must comply with Fed. Cir. R. 29(b).

(7) Oral argument will be held at a time and date to be announced later.

FOR THE COURT June 30, 2023 /s/ Jarrett B. Perlow

Date Jarrett B. Perlow

Acting Clerk of Court