UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION

LKQ CORPORATION, AND KEYSTONE 

AUTOMOTIVE INDUSTRIES, INC.,

Plaintiffs and Counter-Defendants,

v.

GENERAL MOTORS COMPANY, GM

GLOBAL TECHNOLOGY OPERATIONS, LLC,

AND GENERAL MOTORS, LLC,

Defendants and Counter-Plaintiffs.

NO. 20 C 2753

Judge Thomas M. Durkin

MEMORANDUM OPINION AND ORDER

LKQ Corporation and Keystone Automotive Industries bring this action 

seeking a declaratory judgment that LKQ does not infringe on four GM design 

patents. GM brought a counterclaim alleging that LKQ infringes the four patents. 

GM seeks leave to amend its infringement contentions to add an additional infringing 

part. For the reasons that follow, GM’s motion, R. 88, is granted. 

Background

LKQ sells various automotive parts such as replacement grilles, fenders, and 

bumpers. LKQ distributes its parts to third parties and advertises through thirdparty platforms. Certified Collateral Corporation (“CCC”) is one such platform. In 

March 2013, GM and LKQ entered into a Patent License Agreement (“Agreement”) 

granting LKQ a license to manufacture and sell parts based on certain GM design 

patents. The Agreement is set to expire in early 2022, so in 2017, the parties began 

negotiating a new one. Negotiations apparently broke down. LKQ filed this suit on 

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May 6, 2020, alleging GM’s ’532, ’743, ’285, and ’825 patents (“challenged patents”)—

patents not included in the parties’ Agreement—are invalid as anticipated or obvious 

and seeking a declaratory judgment that LKQ is not infringing them. R. 1. GM filed 

a counterclaim on September 11, 2020, alleging LKQ was infringing the challenged 

patents. R. 36. Discovery commenced, and GM propounded its first set of requests for 

production on LKQ. In it, GM defined “Accused Products” as follows: 

“Accused Products” includes at least LKQ part numbers: GM1036176, 

GM1038243, GM1039243, GM1230456C, GM1230456, and GM1230463, 

and including any other versions of these products (including but not 

limited to versions that are the same design or product but correspond 

to a different year, different orientation (i.e., right versus left), different 

material, supersession by another part number) that may have been 

given different LKQ part numbers, and any other LKQ product 

subsequently accused of infringement in this litigation. 

R. 88 at 2. Several of GM’s requests for production pertained to the Accused Products, 

including requests for samples of each Accused Product and documents related to the 

design of each Accused Product. Id. LKQ’s responses included only information

related to the specific LKQ part numbers named in GM’s definition. Id. 

Relevant to the instant motion, LKQ produced discovery relating to 

GM1036176, an LKQ part correlating to GM’s Cadillac XT5 lower grille and one of 

the Accused Products. Based on that discovery, GM identified GM1036176 in its 

January 29, 2021 infringement contentions. GM then learned LKQ may have been 

selling a variation of the Cadillac XT5 lower grille under a slightly different part 

number—GM1036175. Just over two weeks after serving its infringement 

contentions, on February 16, 2021, GM sent a letter to LKQ detailing what GM 

believed to be deficient production. R. 88 at 3-4. LKQ produced a physical sample of 

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GM1036175 on April 6, 2021. GM prepared amended infringement contentions and 

filed its motion for leave to file them on April 14, 2021. Id. 

Legal Standard

Pursuant to this Court’s Scheduling Order, R. 60, the parties may amend their 

contentions after the initial deadline upon a showing of good cause. To demonstrate 

good cause to amend infringement or invalidity contentions, a party must 

demonstrate “that it acted diligently and that the accused infringer would suffer no 

unfair prejudice if the moving party were permitted to amend.” Peerless Industries, 

Inc. v. Crimson AV, LLC, 2013 WL 6197096, at *5 (N.D. Ill. Nov. 27, 2013) (collecting 

cases). When good cause is shown, courts liberally grant leave to amend. Thermapure, 

Inc. v. Giersten Co. of Ill., 2012 WL 6196912, at *1 (N.D. Ill. Dec. 11, 2012). 

Analysis

I. Diligence

GM was diligent in seeking to amend its infringement contentions. GM’s 

broadly worded discovery requests sought to encompass “any other versions” of the 

named LKQ part numbers. R. 88 at 2. LKQ contends it did not provide, in its 

responses to the discovery requests, information relating to GM1036175 because it 

believed it to be outside the scope of discovery. GM points the Court to various district 

court opinions supporting its argument that, in this scenario, the scope of discovery 

should not be limited to products identified in the preliminary infringement 

contentions. Id. at n.5 (citing epicRealm Licensing LLC v. Autoflex Leasing, Inc., 2007 

WL 2580969, at *3 (E.D. Tex. Aug. 27, 2007); Honeywall Intern. Inc. v. Acer. America 

Corp., 655 F. Supp. 2d 650, 655 (E.D. Tex. 2009); Dr. Systems, Inc. v. Fujifilm Medical 

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Systems USA, Inc., 2008 WL 1734241, at *12-13 (S.D. Cal. Apr. 10, 2008)).1 The Court 

generally agrees that GM’s discovery request properly included part GM1036175. But 

regardless of whether LKQ should have earlier provided information regarding the 

part at issue, GM filed its motion to amend just eight days after LKQ provided it. 

This prompt course of action, as well as GM’s timely attempt to address the alleged 

deficient production with LKQ (18 days after receiving responses), supports a finding 

that GM acted with diligence in filing its motion. 

LKQ argues GM had the information supporting its proposed infringement 

amendment as early as March 15, 2019, because GM had access to the CCC platform 

at that time and the GM1036175 part was on the platform. R. 93 at 4-5. GM sent CCC 

a letter on March 1, 2019, stating that certain products were available on CCC’s 

platform which infringed GM’s intellectual property. R. 96 at 3. Attached to the letter 

was a list of GM’s design patents identifying each patent number and informing CCC 

whether LKQ had a license for it (as discussed above, LKQ had licenses to sell certain 

of GM’s products, but not all). Id. The list then provided the GM part number that 

corresponded to GM’s design patents. Id. GM’s communication with CCC included 

1 LKQ cites a single case from the Northern District of California to support its 

argument that a discovery request should not include products not at issue in the 

infringement suit. R. 93 at n.4 (citing Mediatek v. Freescale Semiconductor, Inc., 2013 

WL 588760, at *4 (N.D. Cal. 2013)). Mediatek involved a court denying a motion to 

compel discovery responses related to products not specifically identified as accused 

products in the preliminary infringement contentions. Mediatek, 2013 WL 588760, at 

*1. Unlike here, Mediatek’s discovery request only included the numbers of the 

accused products, not any broader language which may have encompassed related 

infringing products. Id. at *2. The Court held Mediatek needed to first seek leave to 

amend its infringement contentions to include the new accused products, which is 

precisely what GM is doing here.

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only GM identifiers and no LKQ part numbers. On March 4, 2020, CCC (not GM, as 

argued in LKQ’s Response) sent LKQ a letter with a table correlating GM’s design 

patents and part numbers to LKQ’s part numbers for parts LKQ sold on the CCC 

platform. Id. at 4. Importantly, CCC uses its own numbering system, not GM’s, so the 

correlations here are made without GM’s own part numbers. Id. Thus, it was CCC, 

not GM, that identified the LKQ parts that CCC believed corresponded to GM’s 

design patents, and CCC did not even identify the part GM is now trying to add to its 

infringement contentions. Id. 

LKQ’s argument that it was GM that linked the patents to their corresponding 

parts has no support in the record—it was CCC. Similarly, LKQ’s argument that GM 

knew how to determine if third-party parts corresponding to GM parts were being 

sold is weakened, if not completely negated, by the fact that GM only communicated 

with CCC using its own patents and part numbers, not any of LKQ’s products or part 

numbers. GM has established that it did not know about GM1036175 in March 2019. 

GM has demonstrated its diligence in seeking to amend its infringement 

contentions, establishing good cause to amend unless the Court finds unfair prejudice 

to LKQ. 

II. Unfair Prejudice

In its Response, LKQ conflates the prejudice it may face if its pending motion 

to supplement invalidity contentions, R. 84, is denied, with the prejudice it may face 

if GM’s instant motion is granted. R. 93 at 10-11. The motions are not related.

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With regard to the instant motion, LKQ’s only argument is that it will have to 

“re-open document production to search for a new part.” Id. at 10. This argument is 

not convincing. See, e.g., Karl Storz Endoscopy-Am., Inc. v. Stryker, 2016 WL 

2855260, at *9 (N.D. Cal. 2016) (“At bottom, [nonmovant’s] prejudice arguments boil 

down to a complaint that the amendment will cause [nonmovant] to perform more 

work than it would have to perform otherwise... but that is not prejudice.”). The 

question is “not whether [LKQ] would be required to engage in additional work,” but 

rather, what prejudice “results from the delay in asserting those claims.” Trans Video 

Elecs, Ltd. V. Sony Elec., Inc., 278 F.R.D. 505, 510 n.2 (N.D. Cal. 2011). Here, GM’s 

delay in asserting its claim was one week after receiving a requested sample from 

LKQ. GM has established that LKQ will not face unfair prejudice.

Conclusion

For the foregoing reasons, GM’s motion to amend its infringement contentions, 

R. 88, is granted. 

ENTERED:

______________________________

Honorable Thomas M. Durkin

Dated: December 13, 2021 United States District Judge

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