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,
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
Case: 21-2348 Document: 86 Page: 4 Filed: 06/30/2023
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,’”
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?
Case: 21-2348 Document: 86 Page: 5 Filed: 06/30/2023
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
