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UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

LKQ CORPORATION AND KEYSTONE 

AUTOMOTIVE INDUSTRIES, INC.,

 

 Plaintiffs,

 v.

GENERAL MOTORS COMPANY, GM

GLOBAL TECHNOLOGY OPERATIONS, LLC,

AND GENERAL MOTORS, LLC,

 Defendants.

No. 20 C 02753

Judge Thomas M. Durkin

MEMORANDUM OPINION AND ORDER

Plaintiffs LKQ Corporation and Keystone Automotive Industries, Inc. 

(collectively, “LKQ”) sued Defendants (collectively, “GM”), seeking a declaratory 

judgment that LKQ was not infringing certain GM patents, and GM countersued, 

claiming that LKQ was infringing those patents. After over a year of highly contested

discovery, LKQ now seeks default judgment1 against GM under Fed. R. Civ. P. 37(b)

to sanction GM for its alleged failure to follow a court order regarding discovery. In 

the alternative, LKQ seeks default judgment against GM or adverse inference 

instructions under Rule 37(e) for GM’s alleged spoliation of evidence. LKQ’s motion, 

R. 212, is denied with further instructions.

1 LKQ seeks either a default judgment that each patent at issue is totally invalid or 

seeks a more limited default judgment that LKQ did not infringe the patents.

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Background

LKQ, through its subsidiary, Keystone, sells aftermarket automotive 

replacement parts, including for most makes and models of GM automotives. R. 34 ¶ 

20. LKQ and GM had a confidential Design Patent Licensing Agreement under which 

LKQ held a license to a number of GM design patents in exchange for royalties. Id. ¶ 

22. The parties’ relationship began to deteriorate when, on March 1, 2019, GM sent 

a letter to Certified Collateral Corporation (“CCC”), a third-party website that carried 

LKQ products, alleging that certain LKQ aftermarket replacement parts infringed 

GM patents. Id. ¶¶ 26–27. GM again allegedly contacted CCC about the infringing 

parts in December 2019. Id. ¶ 30. In response, CCC sent a letter to LKQ in March 

2020, advising it to remove the allegedly offending products from CCC’s website and 

to reach out to GM for further information. Id. ¶ 31. 

LKQ filed its Complaint in this case on May 6, 2020, seeking a declaratory 

judgment that it either was not infringing the contested design patents, or that the 

patents were invalid in the first place, R. 1, while GM counterclaimed that LKQ 

infringed those same patents. R. 36. One theory of LKQ’s invalidity assertion is the 

on-sale bar defense to patentability. See R. 215 at 5. The on-sale bar defense 

invalidates a patent where the patenting party makes an offer of sale of the invention 

to a third party more than one year before the patent application filing date (the “precritical date”). See 35 U.S.C. § 102(a)(1).

Over a year of contentious discovery followed the pleadings, including at least 

eight discovery motions filed by Plaintiff alone. See R. 68, 99, 110, 101, 111, 112, 113, 

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114, 115, 116, 150, 151, 152,171, 172, 173, 187, 188, 212, 213. In Magistrate Judge 

Cole’s words, “one could not, without a trial and testimony from all the attorneys 

involved, get through to what has actually gone on amongst the lawyers in discovery 

in this case.” R. 190. 

On September 10, 2021, in resolving one of the discovery motions, Magistrate 

Judge Cole ordered GM to produce “all documents and things constituting, referring, 

or relating to communications or contracts with any third-party manufacturers 

and/or suppliers of any GM part that embodies and/or practices each of the patentsin-suit, relating to any such part, occurring prior to the critical date2 of each patentin-suit,” and to put forth a good faith effort to retrieve certain development and design

documents from one-time GM subsidiary, Opel. R. 146 (the “September 10 Order” or 

“Order”).

LKQ first contends that GM either engaged in spoliation or violated this Order

by refusing to produce development and design documents and documentation of 

communications with Opel relating to the ‘825 patent for the 2018 Buick Regal hood.

Second, LKQ claims that GM violated the Court’s Order and engaged in spoliation by 

deleting responses from third-party Lacks to requests for quotation (“RFQs”) relating 

to the ‘743 patent for the lower grille of the 2017 Cadillac XT5. Similarly, LKQ alleges 

GM engaged in sanctionable spoliation of an RFQ and responses to and from third 

party Norplas regarding the ‘285 patent for the grille bezel of the 2019 Chevrolet 

2 The “critical date” is one year prior to the patent application filing date. 35 U.S.C. 

§ 102.

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Camaro. Finally, GM should be sanctioned for violating the September 10 Order, 

according to LKQ, because GM refuses to produce communications with third party 

component manufacturers related to the ‘532 patent for the hood of the 2017 

Chevrolet Trax. The Court addresses each argument in turn.

Legal Standards

Under Federal Rule of Civil Procedure 37(b)(2)(A), sanctions are appropriate 

when a party “fails to obey an order to provide or permit discovery.” Among the 

remedies the court may fashion are “prohibiting the disobedient party from 

supporting or opposing designated claims or defenses, . . . dismissing the action or 

proceeding in whole or in part, . . . [or] rendering a default judgment against the 

disobedient party.” Fed. R. Civ. P. 37(b)(2)(A)(ii)-(vi). Trial judges enjoy considerable 

discretion to fashion sanctions that serve as “both specific and general deterrents.” 

Charter House Ins. Brokers, Ltd. v. New Hampshire Ins. Co., 667 F.2d 600, 605 (7th 

Cir. 1981). Even though Rule 37(b) does not specify a requisite mental state, “the 

court must find that the party against whom sanctions are imposed displayed 

willfulness, bad faith or fault.” In re Golant, 239 F.3d 931, 936 (7th Cir. 2001); see 

also Brown v. Columbia Sussex Corp., 664 F.3d 182, 191 (7th Cir. 2011). The facts 

underlying a district court’s decision to grant sanctions need only be established by a 

preponderance of the evidence. Ramirez v. T&H Lemont, Inc., 845 F.3d 772, 781 (7th 

Cir. 2016).

Rule 37(e), meanwhile, governs sanctions for spoliation of electronically stored 

evidence. Available sanctions in response to spoliation include default judgment and 

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an adverse inference instruction, which allows the court to instruct the jury that it 

“may or must presume the [missing] information was unfavorable to the party” who 

destroyed it. Fed. R. Civ. P. 37(e). To find spoliation sanctions appropriate, the Court 

must determine that: (1) there was a duty to preserve the evidence due to actual or 

anticipated litigation; (2) the evidence was lost because the party “failed to take 

reasonable steps to preserve it;” (3) the evidence is unable to be restored or replaced

through additional discovery; (4) the party “acted with the intent to deprive [the 

opposing party] of the information’s use in litigation;” and (5) the other party was 

prejudiced. Fed. R. Civ. P. 37(e); see DR Distributors, LLC v. 21 Century Smoking, 

Inc., 513 F. Supp. 3d 839, 977–82 (N.D. Ill. 2021).

The fourth element is key. “[D]estruction of or inability to produce a document, 

standing alone, does not warrant” a sanction. Park v. City of Chicago, 297 F.3d 606, 

615 (7th Cir. 2002). Rather, “[t]he crucial element is . . . the reason for the 

destruction.” Id. (quoting S.C. Johnson & Son, Inc. v. Louisville & Nashville R.R. Co., 

695 F.2d 253, 258 (7th Cir. 1982)). Spoliation sanctions are warranted only where a 

party destroys the evidence in bad faith, or with the intent to deprive the other party 

of the information. See Bracey v. Grondin, 712 F.3d 1012, 1018–19 (7th Cir. 2013); In 

re Text Messaging Antitrust Litig., 46 F. Supp. 3d 788, 798 (N.D. Ill. 2014), aff'd, 782 

F.3d 867 (7th Cir. 2015) (finding that, in the Seventh Circuit, “a showing of bad faith 

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is required to succeed on a motion requesting an adverse inference [instruction] based

on spoliation.”).3

If the court finds that the party intended to deprive the other party of the use 

of the information, prejudice is presumed. See Fed. R. Civ. P. 37(e), Advisory 

Committee Notes, 2015, Amendments; Williams v. Am. Coll. of Educ., Inc., No. 16 CV 

11746, 2019 WL 4412801, at *10 (N.D. Ill. Sept. 16, 2019). If the court finds no bad 

faith intent but all the other elements of spoliation have been met, the Court may 

still order curative measures “no greater than necessary” to cure any prejudice to the 

other party by the loss of the information. Fed. R. Civ. P. 37(e); Jones v. Bremen High 

Sch. Dist. 228, No. 08 C 3548, 2010 WL 2106640, at *5 (N.D. Ill. May 25, 2010) (“if a 

lesser sanction can accomplish the same goal, the Court must award the lesser 

sanction.”).

Whether granted under Rule 37(b) or 37(e), default judgment is a “severe 

penalty” because it “effectively terminates a party’s ability to prevail on the merits.” 

In re Golant, 239 F.3d at 936. Because “public policy favors decisions being made on 

the merits,” rather than on procedural violations, DR Distributors, 513 F. Supp. 3d 

at 983, and because it is considered a “draconian” measure, the court must be 

“vigilant” in its consideration of a default judgment sanction. Maynard v. Nygren, 

332 F.3d 462, 467 (7th Cir. 2003). Thus, this “extreme” sanction should only be 

3 The cases cited by LKQ to support its argument that the court may impose sanctions 

for lesser levels of fault were not decided under Rule 37(e). See Pillay v. Millard 

Refrigerated Servs., Inc., 2013 WL 2251727, at *4 (N.D. Ill. May 22, 2013); Marrocco 

v. General Motors Corp., 966 F.2d 220, 224 (7th Cir. 1992); Dewan v. Univ. Granite & 

Marble, Inc., 2009 WL 10696069, at *2 (N.D. Ill. Mar. 30, 2009). 

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imposed “when there is a clear record of delay or contumacious conduct, or when other 

less drastic sanctions have proven unavailable.” Rice v. City of Chicago, 333 F.3d 780, 

785–86 (7th Cir. 2003) (quoting Grun v. Pneumo Abex Corp., 163 F.3d 411, 425 (7th 

Cir. 1998).

Discussion

I. Documents Regarding the ‘825 Patent

Niels Loeb, an employee of GM subsidiary Opel, completed the design work for 

the Buick Regal hood encompassed by the ‘825 patent. R. 155 ¶ 3. After he completed

that work, GM sold its Opel division to Peugeot S.A. (“Peugeot”) in March 2017. Id. 

GM’s purchase agreement with Peugeot provided GM with a contractual right to 

“reasonable access” of records. R. 146 at 2. Mr. Loeb continued to work for 

Opel/Peugeot after the sale.

In this litigation, GM produced some documents in response to LKQ’s requests

for documents “generally relating to the development of the vehicle and the design 

that led to the ‘825 patent”—in particular, image files, consumer clinic studies, and 

development records. R. 230-2. But LKQ claimed there were many more documents 

relating to the development and design of the hood that GM had not produced, 

including manufacturing cost documents. See R. 216-2 at 31:11–19 (GM’s 30(b)(6) 

witness stated, “Opel was a GM entity, so I suspect that there may have been 

information regarding the costs of making the goods . . . [T]here would have been 

likely documentation as to the cost of manufacturing . . . .”). GM asserted that the 

additional documents LKQ sought resided with Opel, that its efforts to retrieve those 

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documents from Opel had been exhausted, and that it lacked a contractual right to 

the documents. R. 113-4; R. 130 at 5. In the September 10 Order, Magistrate Judge 

Cole disagreed, pointing out GM’s contractual right to reasonable access of records. 

R. 146 at 3–4. Further, he found there was “certainly no evidence” that GM had 

exhausted its efforts to retrieve the documents from Opel, and ordered GM “to make 

a concerted, good faith effort to retrieve the documents.” Id. Magistrate Judge Cole 

further ordered GM to “report those efforts back to plaintiff and the court in two 

weeks.” Id. at 4.

In its report, GM detailed and attached proof of ongoing email and phone 

conversations between GM and Opel. R. 155-1. In an email sent October 7, 2021, 

Opel/Peugeot’s attorney stated that “it appears that at the moment of the sale of 

OPEL by GM, GM kept all documentation (through 2DAM tool for all visuals and 

sketches ad [sic] 3Data). Should Opel would [sic] like to keep some relevant 

documentation, it had to ask a specific authorization to GM to do so.” R. 216-1 at 1.

GM claims it has produced all design and development documents in its system. GM 

also states that, to the extent any design documents are missing, GM does not know 

where they are or does not have access to them because they are Mr. Loeb’s personal 

files. GM’s document retention policy requires it to retain copies of documentation of 

the development of contracts for the purchase of parts from manufacturers for the life 

of the part plus six or ten years. R. 216-2 at 130:15, 149:17–151:24, 163:11–17; R. 216-

9.

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GM hints that it does have other additional documents regarding the Buick 

Regal hood, including communications to and from Opel (more specifically, a request 

for quotation (“RFQ”), or a document seeking quotes for manufacture of certain parts).

See, e.g., R. 216-2 at 27:22–31:19.4 LKQ claims that, by withholding these documents, 

GM is also violating the Order’s provision requiring GM to produce documentation of 

pre-critical date communications with third-party vendors.

a. Analysis

i. Sanctions Not Justified Due to the Loss of the

Development and Design Documents

The Court declines to impose sanctions under Rule 37(b) or 37(e) as to the Opel 

development and design documents. GM has made a good faith effort to locate them, 

and there is no evidence that GM has engaged in deception. There also is no evidence 

of spoliation, as LKQ cannot show that GM had a duty to preserve the documents, 

nor that GM intentionally destroyed them in bad faith. 

First, LKQ asserts that GM should be sanctioned because it has violated the 

September 10 Order by not producing the design and development documents for the 

2018 Buick Regal hood that LKQ seeks. But the Order does not require GM to produce 

documents it cannot find. Rather, so long as GM made “a concerted, good faith effort 

to retrieve” the documents, it is not in violation of the Order. R. 146 at 4. The evidence 

shows that one of GM’s attorneys diligently inquired with Opel/Peugeot’s counsel via 

4 GM’s 30(b)(6) witness stated that “when Opel was divested . . . , there may have 

been documentation or discussion that . . . would be a request . . . I know we received 

a response for pricing for this product on July 25, 2017 . . . . And it was I believe in 

email form.”).

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email at least ten times, and via phone at least once. R. 216-1. He confirmed and 

clarified multiple times that Opel did not have the documents. See, e.g., id. at 4 (“I 

wanted to confirm . . . do you mean that Opel does not have the requested 

documentation in its possession?”). GM’s attorney also detailed steps he took to 

attempt to locate any further pre-critical date documents within GM. R. 177 ¶¶ 5–7.

This constitutes a good faith effort to comply with the September 10 Order. 

But LKQ argues that the statement from Opel/Peugeot’s counsel that GM kept 

all documentation at the time of sale shows that GM actually knows where the 

relevant documents are and is lying about its good faith efforts to find them. It is, of 

course, concerning that GM told the Court that Opel has additional documents, while

Opel claims that GM has them. And it also seems reasonably likely from the nonexclusive language of the October 7, 2021 email that GM originally kept more than 

just the drawing files it already produced in this action. R. 216-1 at 1 (“GM kept all 

documentation (through 2DAM tool for all visuals and sketches . . .)”).

Nevertheless, the Court does not find GM engaged in willful deception. Rather, 

the communications and evidence in the record indicate that there is confusion 

between GM and Opel as to what documents were created and who kept them after 

Opel’s spin-off from GM. Without Opel and Mr. Loeb’s cooperation, we may never 

receive clarification.5 And this confusion is not surprising given the likely-chaotic 

5 Opel and Mr. Loeb are both European and, as LKQ learned, outside the subpoena 

power of this Court.

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circumstances surrounding a multi-billion-dollar divestiture.6 LKQ’s conclusory 

statements to the contrary, there is not enough evidence that GM intentionally or 

nefariously withheld any design documents to justify the “draconian” sanction of 

default judgment. Norman-Nunnery, 625 F.3d 422, 429–30 (7th Cir. 2010). 

Nor does the court find that sanctionable spoliation of the development and 

design documents has occurred. Chiefly, LKQ has not proved that GM had a duty to 

preserve the documents in anticipation of litigation. LKQ claims that GM’s internal 

document retention policy requires it to preserve evidence for a certain number of 

years, and that, under Park v. City of Chicago, the violation of this policy 

automatically creates a presumption that the evidence was adverse. 297 F.3d 606, 

615 (7th Cir. 2002). But a document retention policy is only a relevant consideration 

where litigation is already anticipated, and the destruction was in bad faith. See 

Latimore v. Citibank Fed. Sav. Bank, 151 F.3d 712, 716 (7th Cir. 1998) (“inadvertent 

failure to comply with [document retention] regulation” did not require adverse 

inference sanction); Trask-Morton v. Motel 6 Operating L.P., 534 F.3d 672, 681 (7th 

Cir. 2008) (“courts have found a spoliation sanction to be proper only where a party 

has a duty to preserve evidence because it knew, or should have known, that litigation

was imminent.”). 

LKQ here has provided no evidence that GM had a duty to preserve the 

documents because it anticipated litigation. At the time the documents were lost or 

6 GM to Sell Opel to Peugeot for $2.33 Billion, Car & Bike Mag. (Mar. 6, 2017, 7:04 

PM), https://www.carandbike.com/news/gm-to-sell-opel-to-peugeot-for-2-33-billion1666748. 

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destroyed—likely in 2017—this lawsuit could not have been anticipated. LKQ has 

also not provided any evidence that GM intentionally destroyed the documents in a 

bad faith attempt to deprive LKQ of any information. Rather, as discussed, LKQ can 

only point to confusion between GM and Opel as to what documents exist and who 

possesses them. See Park, 297 F.3d at 615–16 (district court’s refusal to apply adverse 

inference was reasonable where there was no evidence of bad faith). Thus, the Court 

denies LKQ’s motion for sanctions as to the development and design documents. 

ii. Sanctions Not Justified as to Withholding of 

Communications with Opel

Alternatively, LKQ argues that GM should be sanctioned for violating the part 

of the September 10 Order which mandates the production of communications with 

third party vendors because GM has refused to produce documentation of its 

communications with Opel, including a post-critical date RFQ and response from 

Opel. GM has continued to maintain that because Opel was a wholly-owned GM 

subsidiary, “there simply [are] no relevant documents . . . [T]he parts were 

manufactured by GM, not a third party, and no other third-parties were quoted.” R. 

190 at 12. It is true that the September 10 Order mandated that GM turn over 

documents in response to LKQ’s request for any communications “with any thirdparty manufacturers or suppliers . . . occurring prior to the critical date of each patentin-suit.” R. 146 at 5–6 (emphasis added). And it was only after the critical date of the 

‘846 patent that GM apparently sent the RFQ and began purchasing the hood from 

Opel as a third party. R. 177 ¶¶ 5–7. Therefore, GM argues, communications with 

Opel before the critical date are not encompassed by the September 10 Order because 

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Opel was not a third party at that time. And communications after the critical date 

are expressly excluded by the Order.

So long as GM is not using these arguments to conceal any development and 

design documents7 (which GM has clearly been ordered to produce regardless of 

whether Opel was or was not a third party at the time), GM’s reading of the 

September 10 Order, though somewhat narrow, is at least reasonable. The Court will 

not impose sanctions on a party due to its reasonable interpretation of a court order.

To the extent LKQ believes its reading of the September 10 Order is the right one, it 

can file a motion with Magistrate Judge Cole for further clarification of that Order.

II. Documents Regarding the ‘743 Patent

The 2017 Cadillac XT5 grille that is governed by the ‘743 patent is 

manufactured for GM by third-party Lacks Enterprises (“Lacks”). LKQ claims that, 

prior to the critical date of the ‘743 patent, GM sent requests for quotations (“RFQs”), 

which are documents seeking quotes for the manufacture of the grille, to Lacks, and 

that Lacks responded with price quotations. According to LKQ, the RFQs and 

responses may show that GM made a pre-critical date invalidating offer for sale of 

the grille, which supports LKQ’s on-sale bar defense to the ‘743 patent.

GM has admitted it sent pre-critical date RFQs to Lacks regarding the grille’s 

manufacture and that it received responses from Lacks in return. R. 216-2 at 66:2–

7 LKQ argues that this is exactly what GM is doing as to the manufacturing cost 

documents. But GM’s deponent only speculated that such documents existed at one 

time, and there is no evidence that GM is currently withholding them. Rather, these

documents seem to be encompassed in the earlier-discussed missing development and 

design documents.

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70:2; 90:24–92:13. GM claims that it searched diligently and produced the only 

relevant document in its system, and that this is the RFQ. R. 216-4; R. 177 ¶¶ 8–13.

However, LKQ alleges it is missing Lacks’ responses. R. 177 ¶ 13. Lacks admitted to 

the existence of the RFQs and responses via third party discovery, but it also has not 

produced the responses. R. 216-2 at 25:11–26:4. GM says that the responses were not 

properly entered into its system and, to the extent any documents were deleted, it 

happened in March 2019 when the employee who oversaw the part left GM and his 

emails and computer were routinely wiped. R. 230-3 at 34:3–14, 54:14–55:4. 

a. Analysis

i. Default Judgment and Adverse Inference Sanctions 

Not Justified

The Court declines to grant sanctions under Rule 37(b) for violating a court 

order as to the Lacks documents because GM cannot find the missing documents. And 

despite unreasonably failing to preserve the documents when it had a duty to do so, 

Rule 37(e) sanctions are not justified because there is no evidence that GM acted with 

anything more than gross negligence. The Court will, however, consider alternative 

jury instructions to alleviate any prejudice to LKQ.

First, GM is not violating the September 10 Order by failing to produce the 

Lacks RFQ responses. GM has described its diligent search efforts to attempt to find 

the documents, and that the documents were not in its system. GM cannot be 

sanctioned for failing to produce documents that no longer exist. See Little v. JB 

Pritzker for Governor, No. 18 C 6954, 2020 WL 13189999, at *2 (N.D. Ill. Mar. 26, 

2020) (quoting Sonnino v. Univ. Kansas Hosp. Auth., 220 F.R.D. 633, 640 (D. Kan. 

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2004) (“[A] Court cannot compel a party to produce documents that do not exist or 

that are not in that party's possession, custody, or control.”). Thus, GM’s failure to 

produce the RFQ responses after entry of the September 10 Order does not merit a 

default judgment under Rule 37(b). 

Neither does GM’s conduct merit sanctions under Rule 37(e) for spoliation. 

True, the Court agrees with LKQ that GM had a duty to preserve evidence at the 

time GM allegedly deleted the responses. Though the Complaint in this case was filed 

in May 2020, GM sent the letter alleging that LKQ was infringing its patents on 

March 1, 2019, before the employee in charge of the grille encompassed by the ‘743 

patent left GM. See In re Kmart Corp., 371 B.R. 823, 842 (Bankr. N.D. Ill. 

2007) (quoting Cohn v. Taco Bell Corp., 1995 WL 519968, at *5 (N.D. Ill. August 30, 

1995)) (“[T]he obligation to preserve evidence may arise prior to the filing of a 

complaint where a party is on notice that litigation is likely to commence.”); TraskMorton, 534 F.3d at 681 (demand letter from an attorney prior to litigation triggered

the duty to preserve evidence). GM’s claim that it did not anticipate litigation in 

March 2019 is not believable because its own conduct—sending warning letters to a 

third party contending that LKQ was infringing the ‘743 patent—should have

reasonably put it on notice of anticipated litigation (whether initiated by itself or by 

LKQ) regarding the infringement of that patent as of March 1, 2019.

Further, GM acted unreasonably in not preserving the RFQ responses as 

potentially relevant evidence. “The duty to preserve evidence includes any relevant 

evidence over which the nonpreserving entity had control and reasonably knew or 

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could reasonably foresee was material to a potential legal action.” China Ocean 

Shipping (Grp.) Co. v. Simone Metals Inc., No. 97 C 2694, 1999 WL 966443, at *3 

(N.D. Ill. Sept. 30, 1999) (citing Langley v. Union Elec. Co., 107 F.3d 510, 514 (7th Cir 

1997)). Indeed, the scope of the duty to preserve is as broad as whatever discovery is

permissible under the federal rules. China Ocean Shipping, 1999 WL 966443, at *3.

Here, the RFQ responses were pre-critical date offers from a third party to 

manufacture the part governed by the patent at issue. These documents were at one 

time in the custody and control of the GM employee in charge of the part. And GM 

was already alleging at the time of deletion that LKQ was infringing the patent. Thus, 

the employee’s documents were foreseeably relevant to patent litigation such that it 

was unreasonable to not place those employee’s documents under a litigation hold.

In addition, the RFQ responses cannot be restored or replaced through 

additional discovery. LKQ has exhausted third party discovery with Lacks, and GM 

has detailed that its attempts to locate the documents internally have been fruitless. 

However, despite the duty to preserve, the evidence does not show that GM 

acted in bad faith by deleting the RFQ responses with the intent to deprive LKQ of

the information. LKQ points to GM’s deletion of the documents in contravention of 

its own internal document retention policies as evidence of bad faith. It is unclear 

whether that is true. On one hand, GM’s document retention policy is to preserve 

documents that relate to the development of contracts for the purchase of parts for 

the life of the part plus six or ten years. See R. 216-2 at 130:15, 149:17–151:24, 

163:11–17; R. 216-9. On the other hand, it apparently is also GM’s policy to 

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automatically wipe an employee’s computer files and emails when the person departs 

GM. R. 216-2 at 37:13–17. GM offers no explanation of how these policies can be 

reconciled.

Either way, LKQ has not carried its burden to prove that the deletion of the 

employee’s emails and files was an intentional act aimed at depriving LKQ of 

information. There is no indication that GM’s policy of wiping outgoing employees’ 

computer files and emails is intended to destroy relevant evidence in future lawsuits. 

See, e.g., Jones, 2010 WL 2106640, at *8 (deletion of emails in violation of document 

retention policy, though grossly negligent given the defendant’s knowledge of possible 

litigation, were not part of a deliberate effort to conceal harmful evidence); 

Latimore, 151 F.3d at 716 (where party destroyed files inadvertently in violation of 

document retention regulation, presumption of bad faith did not attach). Given its 

letters alleging that LKQ was infringing the ‘743 patent, GM should have 

implemented a litigation hold and was grossly negligent in not doing so. But evidence 

of bad faith is required for the Court to enter a default judgment or give an adverse 

inference instruction under Rule 37(e). Here, there is no evidence that GM’s actions 

were anything more than a negligently-applied routine policy of wiping ex-employees’ 

emails and files when they leave GM. Thus, this Court will not impose the harsh 

sanctions of default judgment or adverse inference instructions as to the Lacks RFQ 

responses.

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ii. Lesser Sanctions May Be Appropriate to Alleviate 

Prejudice to LKQ

It may be necessary to explain to a jury that LKQ is missing certain evidence 

because of GM’s negligent conduct. Langley, 107 F.3d at 515 (“Substantive prejudice 

occurs when the lost evidence prevents the other party the use of ‘crucial’ evidence to 

their underlying claim.”).

At this juncture, LKQ has not explained why it is prejudiced by the deletion of 

the RFQ responses. LKQ has the RFQ and acknowledgments by both GM and Lacks 

that Lacks sent responses. This may allow LKQ to assert its on-sale bar defense. But, 

if LKQ can show that it is substantively prejudiced by the loss of the RFQ responses, 

it may request a jury instruction explaining that the responses are missing because 

of GM’s negligence. YCB Int’l, Inc. v. UCF Trading Co., No. 09-CV-7221, 2012 WL 

3069683, at *15 (N.D. Ill. June 12, 2012), report and recommendation adopted, 2012 

WL 3069526 (N.D. Ill. July 25, 2012) (where there was evidence of gross negligence 

but not bad faith, court instructed jury that defendant had deleted documents in 

violation of document retention policy, but declined to give adverse inference 

instruction); Jones, 2010 WL 2106640, at *9 (same); Danis, 2000 WL 1694325, at *6 

(where party destroyed documents in violation of Federal Rules but did so 

unintentionally, court instructed jury that party failed to preserve evidence); see also 

DR Distributors, 513 F. Supp. 3d at 983 (where reasonable minds could differ as to 

whether evidence was destroyed intentionally or not, the court left it to the jury to 

decide). 

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III. Documents Regarding the ‘285 Patent

The 2019 Chevrolet Camaro grille bezel encompassed by the ‘285 patent is 

manufactured by Norplas Industries (a division of Magna International) (“Norplas”). 

Before the critical date of the ‘285 patent, GM sent an RFQ to Norplas, who responded 

with two price quotations. Like the Lacks RFQ and responses, LKQ claims the 

Norplas RFQ and responses support its on-sale bar defense.

When LKQ initially requested pre-critical date exchanges between GM and 

Norplas, GM alleged that there were none and that production was complete. R. 214-

11; 216-5 at 1. But LKQ later received documents from Norplas in response to a 

subpoena that indicated Norplas had received an RFQ from GM and had responded 

with two price quotations prior to the critical date. R. 216-11 at ¶¶ 6–8. GM later 

admitted that it sent an RFQ and received price quotations from Norplas, but that it

had searched for and could not find the documents. R. 216-2 at 35:16–39:15. After the 

September 10 Order mandated GM to produce vendor communications, GM produced 

two amendments to purchase contracts with Norplas for the grille bezel covered by 

the patent, but it has not produced the actual contract that was amended nor the 

RFQ or responses.

GM states that it has located no further responsive documents. R. 177 ¶¶ 14–

17; R. 178 ¶¶ 12–13. Like the Lacks documents, GM speculates that the reason it 

cannot find any further communications with Norplas is because the employee who 

oversaw this part left GM in March 2020, and that his emails and computer were 

wiped. R. 230-3 at 34:15, 54:15. However, GM’s deponent testified they did not know 

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why the Norplas documents were unavailable. R. 214-2 at 39:6–9, 196:9–15. The 

deponent stated that “[i]nasmuch as the RFQ was left on the computer of the 

[employee] when he departed, then it would have been . . . destroyed with the 

retention policies, but . . . I can’t state that with certainty.” Id. at 36:23–37:3. 

a. Analysis

The Court’s analysis here is nearly identical to its analysis of the destruction 

of the Lacks RFQ responses. First, GM is not violating the September 10 Order by 

failing to produce the Norplas RFQ and responses. And second, sanctions under 37(e) 

are not appropriate because of a lack of evidence of bad faith. But because GM was 

grossly negligent in allowing the documents to be lost or deleted when it had notice 

of potential litigation, a tailored jury instruction may be warranted.

First, GM has described its diligent search efforts to attempt to find the 

documents, and that the documents were not in its system. R. 177 ¶ 14; R. 178 ¶¶ 

12–13. LKQ, however, argues that GM should be sanctioned because it originally 

stated that there were no pre-critical date communications between it and Norplas, 

and that the Norplas subpoena responses proved this untrue. GM claims it was telling 

the truth at the time—based on its search, it could not find any communications in 

its system. LKQ also points out GM’s delay in producing the contract amendments. 

Though GM may have delayed or perhaps applied criteria that were too narrow in 

searching for responsive documents, there is not enough of a record of delay or 

contumacious conduct to support a default judgment. Brown, 664 F.3d at 191. And 

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again, GM cannot be sanctioned under Rule 37(b) for failing to produce documents

that no longer exist. 

Similarly, GM’s loss or destruction of the Norplas RFQ and responses does not 

merit default judgment or an adverse inference instruction under Rule 37(e) for 

spoliation. GM does not know what happened to the documents and only speculates 

that they may have been on the computer of the employee who left GM in March 2020. 

If true, GM had a duty to preserve evidence at the time of the alleged deletion—at 

that point, GM had been alleging LKQ was infringing the ‘285 patent for a year and 

had taken multiple steps to stop LKQ, including sending letters to and meeting with 

a third-party distributor and discussing the infringement with LKQ itself. Even more

so than the Lacks documents, GM should have been on notice of likely litigation in 

March 2020 and should have preserved relevant evidence related to the manufacture 

of the ‘285 patent part, like the RFQ and responses. See Does 1-5 v. Cty. of Chicago, 

2019 WL 2994532, at *4. These documents cannot be restored or replaced through 

additional discovery, as Norplas has not produced them, and GM has exhausted its 

search. 

But, like the Lacks RFQ responses, the evidence does not show that GM acted 

with a bad faith intent when it lost or destroyed the Norplas RFQ and responses. 

Though LKQ argues the documents should have been retained under GM’s document 

retention policy, there is no proof that the loss or deletion of the documents was 

anything more than inadvertent. Thus, GM was grossly negligent, given its notice of 

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potential litigation, but there is no evidence of bad faith to support a default judgment 

or adverse inference instruction sanction. See Jones, 2010 WL 2106640, at *8.

And again, LKQ has not discussed why the exact language of the RFQ and 

responses is “crucial” to LKQ’s on-sale bar defense, Langley, 107 F.3d at 515. Indeed, 

the fact that GM sent a pre-critical date RFQ to Norplas and that it received 

responses may allow for LKQ to assert an on-sale bar defense. But if LKQ can show 

substantive prejudice, it may request a jury instruction explaining that the Norplas

RFQ and responses are missing because of GM’s negligence. 

IV. Documents Regarding the ‘532 Patent

The 2017 Chevrolet Trax hood governed by the ‘532 patent is assembled by GM 

in its San Luis Potosi facility. R. 178 at 4. GM has asserted that it has never 

submitted RFQs to any third party regarding the manufacture of the hood as a whole. 

Id. However, LKQ alleges that at least three third-party manufacturers make 

component parts GM uses to produce this hood: NS Auto Tech makes the

reinforcement parts for the front panel of the hood, Pyeong Hwa produces latches, 

and Hankook Pelzer manufactures the insulators. R. 216-12. LKQ claims that, under 

the September 10 Order, it is entitled to any pre-critical date RFQs for these 

component parts. LKQ also claims that GM’s deponents have refused to testify 

regarding the design and development of these component parts and any vendor 

communications regarding them. R. 216-2 at 21:6–23:23; R. 216-8 at 140:1–20.

During discovery, the parties disagreed over whether these documents should have 

been produced, but LKQ never filed a motion to compel. R. 230-4. 

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a. Analysis

LKQ’s arguments here are better suited for a motion to compel, which LKQ 

had ample opportunity to file. It now alleges for the first time before this Court that 

GM should have produced communications with component parts manufacturers. 

But the standard for levying sanctions under Rule 37(b) asks whether GM acted in 

bad faith by refusing to comply with an existing court order. The September 10 Order 

mandated that GM produce documents in response to a request for all 

communications “with any third-party manufacturers and/or suppliers of any GM 

part that embodies and/or practices each of the patents-in-suit . . . .” R. 146 at 5 

(cleaned up) (emphasis added). The component parts are not visible or labeled on the 

‘532 patent application. R. 216-6. GM’s position, then, that the component parts do 

not “embody and/or practice” the patent is at least reasonable. The Court will not 

impose harsh sanctions on a party due to its reasonable interpretation of a Court 

Order. And again, to the extent LKQ believes its reading of the September 10 Order 

is the right one, it can file a motion for further clarification before Magistrate Judge 

Cole.

Conclusion

In sum, this Court declines to grant default judgment against GM as to all four 

patents. It also declines to give an adverse inference instruction as a sanction as to 

the categories of documents LKQ claims GM is withholding or deleted. LKQ’s request 

for attorney’s fees and costs is thus denied. However, if LKQ can show substantive

prejudice because of the missing Lacks and Norplas RFQs and/or responses, this 

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Court would consider a jury instruction narrowly tailored to alleviate that prejudice. 

LKQ may include a motion for such an instruction in its motions in limine prior to 

trial.

ENTERED:

__________________________________

Honorable Thomas M. Durkin

United States District Judge

Dated: October 25, 2022

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