LKQ Corporation and its subsidiary Keystone Automotive Industries filed a petition to institute an inter partes review of GM”™s vehicle front upper bumper design patent.
An inter partes review would require the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) to construe the claim or patent in the same manner as a civil action. To be granted such a review, 35 U.S.C. § 314(a) requires demonstration of a reasonable likelihood that the petitioner would prevail. Here, petitioners failed to meet this standard and therefore the request for inter partes review is denied.
In their analysis, the PTAB applied the ”ordinary observer” test for anticipation of a design patent. This test questions whether if, in the eyes of an ordinary observer, the resemblance between the patented design and the alleged anticipatory reference is enough to induce them to purchase one supposing it to be the other. If it is, then the one that held a patent first has been infringed. Here, the two parties offer different definitions of the ordinary observer. However, the PTAB found that under either definition, the evidence demonstrates that there are distinct characteristics that would be obvious to either ordinary observer.
The second challenge to a design patent is obviousness, which tests whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. This involves finding a primary reference and modifying that reference to create a design that has the same overall visual appearance as the claimed design. Using photos from both parties, the PTAB concluded that the petitioners failed to pass either the obviousness test.
Overall, because the petitioners failed to demonstrate a reasonable likelihood of prevailing with respect to its challenge to the patentability of the bumper design patent in question, inter partes review is denied.