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.
Case: 21-2348     Document: 86      Page: 2     Filed: 06/30/2023




 2                                      LKQ CORPORATION v.
                       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.
                 ______________________

     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



     *   Circuit Judge Cunningham did not participate.
Case: 21-2348    Document: 86      Page: 3    Filed: 06/30/2023




 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, 

 (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.,
               

 (2007), overrule or abrogate In
               re Rosen, 

 (CCPA 1982), and
               Durling v. Spectrum Furniture Co., Inc., 

 (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,” 

, and adopting “an ex-
               pansive and flexible approach,” 

,
               should cause us to eliminate or modify: (a)
               Durling’s requirement that “[b]efore one can
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 4                                     LKQ CORPORATION v.
                      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,’” 

 (quoting Rosen, 

); 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, 

 (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?
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 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