centria v atas intl - motion to stay
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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
|CENTRIA, |
| Civil Action No. 2:13-cv-00309-NBFPlaintiff and Counterclaim-Defendant; |
|
v. |
| JUDGE FISCHER
ATAS INTERNATIONAL, INC., |
|
Defendant and Counterclaim-Plaintiff. |
|
[PROPOSED] ORDER GRANTING JOINT MOTION TO STAY
PENDINGINTER PARTES REVIEW OF THE PATENT IN SUIT
AND NOW, this ________ day of ________________, 2013, upon the parties JOINT
MOTION TO STAY PENDINGINTER PARTESREVIEW OF THE PATENT IN SUIT
[Document No. __], it is hereby ORDERED that the Motion is GRANTED. The above-
captioned case is hereby stayed pending the conclusion of proceedings, including any appeals, in
Defendants petition forinter partes review of U.S. Patent No. D527,834, Case No. IPR2013-
00259 before the United States Patent Trial and Appeal Board.
BY THE COURT:
________________________
Nora Barry FischerUnited States District Judge
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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
|CENTRIA, |
| Civil Action No. 2:13-cv-00309-NBF
Plaintiff and Counterclaim-Defendant; ||
v. |
| JUDGE FISCHER
ATAS INTERNATIONAL, INC., |
|
Defendant and Counterclaim-Plaintiff. |
|
JOINT MOTION TO STAY PENDING
INTER PARTES REVIEW OF THE PATENT IN SUIT
Plaintiff/Counterclaim-Defendant Centria (hereinafter Plaintiff) and
Defendant/Counterclaim-Plaintiff ATAS International, Inc. (hereinafter Defendant), by and
through their respective counsel, hereby jointly move this Court to the above-captioned case until
the conclusion ofinter partes review proceedings before the United States Patent Trial and
Appeal Board, case no. IPR2013-00259, pertaining to the patent-in-suit, U.S. Design Patent No.
D527,834 (hereafter the 834 Patent).
On April 30, 2013, Defendant filed a petition forinter partes review of the 834 Patent.
A copy of the petition is attached as Exhibit A to this motion. In the petition, Defendant asserts
that the sole claim of the 834 Patent should be canceled on grounds that it is invalid under 35
U.S.C. 102 and/or 103 based on the prior art references identified in the petition. Plaintiff
disputes this position and asserts that the sole claim of the 834 Patent is valid and should be
confirmed.
If the 834 Patent is invalidated as a result of the inter partes review, such invalidation
would resolve all claims between the parties that are the subject of this lawsuit. If validity of the
834 Patent is confirmed as a result of the inter partes review proceedings, such confirmation
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will significantly reduce the issues in dispute in this lawsuit and will significantly increase the
likelihood of the parties reaching an amicable settlement.
Upon entry of an Order staying this case, Defendant hereby agrees that it will suspend
and refrain from all manufacture, sales, offers to sell, and importation of the accused products,
namely ATAS wall panel model nos. MFR-161 and MFR-162, until the conclusion ofinter
partes review proceedings for case no. IPR2013-00259. Defendants agreement to suspend and
refrain from this activity will continue for the duration of any appeals filed by Defendant of the
decision in the inter partes review proceedings for case no. IPR2013-00259, but will not extend
to any appeals filed by Plaintiff. Plaintiffs agreement to join this motion is conditioned upon the
Defendants agreement to suspend and refrain from its activity with respect to the accused
products as set forth in this paragraph.
For the reasons set forth above, the parties respectfully request that the Court grant the
present Motion. A proposed Order is submitted herewith.
Respectfully submitted,
DATED: May 8, 2013 s/ Damon A. NeagleDamon A. NeagleDESIGN IP, P.C.Commerce Corporate Center5100 W. Tilghman StreetSuite 205Allentown, PA 18104Tel.: 610-395-4900Fax: 610-680-3312E-mail: [email protected]
Attorneys for Defendant-Counterclaim
Plaintiff ATAS International, Inc.
ADMITTED PRO HAC VICE
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s/ Richard L. ByrneRichard L. Byrne, Esq. (PA ID No. 27913)[email protected] H. Brean, Esq. (PA ID No. 208711)[email protected] Martinchek, Esq. (PA ID No. 311471)
THE WEBB LAW FIRMOne Gateway Center420 Fort Duquesne Blvd., Suite 1200Pittsburgh, PA 15222(412) 471-8815
Counsel for Plaintiff/Counterclaim
Defendant Centria
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CERTIFICATE OF SERVICE
Pursuant to Local Rule of Court 5.5, I hereby certify that on this day the foregoingJoint
Motion to Stay Pending Inter Partes Review of the Patent in Suitwas electronically filed with the
Clerk of Court for the United States District Court for the Western District of Pennsylvania usingthe Courts electronic case filing (ECF) system.
Dated: May 8, 2013 /s/ Damon A. Neagle
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Exhibit
A
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
PETITION FORINTER PARTES
REVIEW OF U.S. PATENT NO. D527,834
PURSUANT TO 35 U.S.C. 311 AND 37
C.F.R. 42.100
Application/Control
Number
TBD
Patent For WhichInterPartes Review is Presently
Requested
D527,834
Filing Date April 20, 2004
First Named Inventor Thimons et al.
Title BUILDING PANEL
Confirmation Number TBD
Group Art Unit TBD
Examiner Name TBD
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TABLE OF CONTENTSI. INTRODUCTION .............................................................................................................. 6II. NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. 42.8(b)(1) ................. 6III. NOTICE OF RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2) ............................. 6IV. NOTICE OF LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. 42.8(b)(3) ......... 6V. NOTICE OF SERVICE INFORMATION UNDER 37 C.F.R. 42.8(b)(4) ..................... 6VI. CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R. 42.104(a) ... 7VII. CERTIFICATION OF SERVICE UNDER 37 C.F.R. 42.6(e)(4) AND 42.105(a) ....... 7VIII. STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R. 42.22(a)(1)
AND 42.104(b)(1)-(2) ......................................................................................................... 7IX. STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R.
42.104(b)(3) ........................................................................................................................ 9X. SUMMARY OF PRIOR ART PRINTED PUBLICATIONS RELIED UPON IN THE
PRESENT PETITION FOR INTER PARTES REVIEW ................................................ 11A. ATAS, Inc. Model MPS120 Panel ........................................................................ 11
1. Introduction ............................................................................................ 112. ATAS Web Page (www.atas.com) ......................................................... 113. 2002 Sweets Catalog File, Volume 4 .................................................... 124. 2002 ATAS Metal Wall Panels Brochure .............................................. 13
B. ATAS, Inc. RIGID-Wall Panel ......................................................................... 141.
Introduction ............................................................................................ 14
2. 2002 Sweets Catalog File, Volume 4 .................................................... 143. 2002 ATAS Metal Wall Panels Brochure .............................................. 14
C. Centria Model IW60A Panel ................................................................................ 15D. ATAS, Inc. Model MPH080 Panel ....................................................................... 15E. Centria Model FWDS-59 Panel ............................................................................ 16
XI. OVERVIEW OF THE 834 PATENT .............................................................................. 16A. Background ........................................................................................................... 16B. Prosecution and Enforcement History .................................................................. 16
XII. STATEMENT OF REASON FOR THE RELIEF REQUESTED UNDER 37 C.F.R. 42.22(a)(2) AND 42.104(b)(4), SHOWING THAT THERE IS A REASONABLE
LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C. 314 18A. The Applicable Legal Standards ........................................................................... 18
1. Obviousness ........................................................................................... 18
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2. Anticipation ............................................................................................ 223. Multiple Embodiments ........................................................................... 22
B. There is a Reasonable Likelihood that the Petitioner Will Prevail UponConsideration of Its Proposed Grounds of Rejection Based on any of the MPS120
Publications in view of any of the BKR160 Publications..................................... 221. MPS120 Panel as compared to FIGS. 37-41 of the 834 Patent ............ 232. Any of the MPS120 Publications, which show the MPS120 Panel, is a
suitable primary reference, having the same basic design characteristics
as the claimed desig ................................................................................ 273. Any of the BKR160 Publications, which show the BKR160 Panel, is a
suitable secondary reference for modifying any of the MPS120
Publications ............................................................................................ 294.
The 834 Patent is unpatentable under 35 U.S.C. 103(a) over theMPS120 Panel in view of the BKR160 Panel ........................................ 30
C. There is a Reasonable Likelihood that the Petitioner Will Prevail UponConsideration of Its Proposed Grounds of Rejection Based on any of the MPS120
Publications in view of the IW60A Panel ............................................................. 31D. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160
Publications (Anticipation) ................................................................................... 321. The BKR160 Panel as compared to FIGS. 37-41 of the 834 Patent ..... 332. The 834 Patent is unpatentable under 35 U.S.C. 102(b) as being
anticipated by the BKR160 Panel, as shown in any of the BKR160
Publications ............................................................................................ 35E. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160
Publications (Obviousness) ................................................................................... 37F. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160
Publications in view of any of the MPS120 Publications ..................................... 39G. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the MPH080
Publications in view of any of the BKR160 Publications..................................... 411. The MPH080 Panel as compared to FIGS. 37-41 of the 834 Patent .... 41
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Table of Exhibits
Exhibit A U.S. Design Patent No. D527,834
Exhibit B Prosecution history of U.S. Design Patent No. D527,834
Exhibit C ATAS Website content from December 3, 2000 showing ATAS MPS120 Panel
Exhibit D 2002 Sweets Catalog, including ATAS Wall Panels product brochure showing
ATAS MPS120, MPH080, and RIGID-WALL (BKR160) Panels and Centria
product brochure showing FWDS-59 Panel
Exhibit E Declaration of Noah A. Sharkan; Summer 2000 Sweets CD, showing ATAS
MPS120 and MPH080 Panels
Exhibit F Declaration of Theodorus Bus
Exhibit G Commercial & Industrial Metal Wall Systems Robertson Product Brochure(dated 1994) showing IW60A Panel (prior art of record from D527,834)
Exhibit H Centria Technical Data Manual dated December 1996 showing IW60A Panel
Exhibit I Admitted Art Not Considered By Examiner
Exhibit J Canceled Original Figures 31-36 of U.S. Design Patent No. D527,834
Exhibit K ATAS Website content from August 15, 2000 showing Sweets CD information
Exhibit L Declaration of Teresa Warmkessel
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I. INTRODUCTION
The present document is a petition (hereinafter Petition) forinter partes review of the
sole claim of U.S. Design Patent No. D527,834 (hereafter the 834 Patent), issued on
September 5, 2006 to Thimons et al. The assignee of record for the 834 Patent is Centria, of
Moon Township, Pennsylvania. A copy of the 834 Patent is provided as Exhibit A to this
Petition. The fee for this Petition, pursuant to 37 C.F.R. 42.103, is submitted herewith.
II. NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. 42.8(b)(1)
For petitioner, the real party in interest is ATAS International, Inc., a corporation
organized under the laws of the state of New York and having its corporate headquarters and
principal place of business in Allentown, Pennsylvania.
III.NOTICE OF RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2)
The patent owner has sued the petitioner in the United States District Court for the
Western District of Pennsylvania, alleging infringement of U.S. Design Patent No. D527,834.
The case is captioned Centria v. ATAS International, Inc., 2:13-cv-309.
IV.NOTICE OF LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. 42.8(b)(3)
Lead counsel for the petitioner is Damon A. Neagle of Design IP, P.C., USPTO
Registration No. 44,964. Backup counsel for petitioner is James J. Aquilina of Design IP, P.C.,
USPTO Registration No. 63,550.
V. NOTICE OF SERVICE INFORMATION UNDER 37 C.F.R. 42.8(b)(4)
Petitioner may be served as follows:
DESIGN IP, P.C.
Commerce Corporate Center
5100 W. Tilghman St., Suite 205
Allentown, PA 18104
phone: 610-395-4900
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fax: 610-680-3312
VI.CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R. 42.104(a)
Petitioner hereby certifies that U.S. Design Patent No. D527,834 is available for inter partes
review and that it is not barred or stopped from requesting an inter partes review challenging the
claim of the 834 Patent on the grounds identified in this petition.
VII.CERTIFICATION OF SERVICE UNDER 37 C.F.R. 42.6(e)(4) AND 42.105(a)
Petitioner hereby certifies that a copy of this Petition and all Exhibits has been served in
its entirety on the Patent Owners counsel of record at the following address, pursuant to 37
C.F.R. 42.6(e)(3) and 42.105(a):
Buchanan Ingersoll & Rooney PC
P.O. Box 1404
Alexandria, VA 22313-1404
Service of the present Petition was also effected on Patent Owners counsel of record in
the related district court litigation at the following address, pursuant to 37 C.F.R. 42.105(a):
Richard L. Byrne, Esq.
The Webb Law Firm, P.C.One Gateway Center
420 Fort Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222
An appropriate certificate of service, in accordance with 37 C.F.R. 42.6(e)(4), is
included herewith.
VIII. STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R.
42.22(a)(1) AND 42.104(b)(1)-(2)
The 834 Patent is a design patent, and thus has a single claim. In regard to the 834 Patent,
Petitioner respectfully requests the following relief:
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(1)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the MPS120 Publications, as defined below, in view of any
one of the BKR160 Publications, as defined below;
(2)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the MPS120 Publications, as defined below, in view of any
one of the IW60A Publications, as defined below;
(3)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b)as anticipated by any one of the BKR160 Publications, as defined below;
(4)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)
as obvious over any one of the BKR160 Publications, as defined below, in view of
common knowledge to one having ordinary skill in the art;
(5)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the BKR160 Publications, as defined below, in view of any
one of the MPS120 Publications, as defined below;
(6)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the MPH080 Publications, as defined below, in view of any
one of the BKR160 Publications, as defined below;
(7)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the MPH080 Publications, as defined below, in view of any
one of the IW60A Publications, as defined below;
(8)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b)as anticipated by any one of the FWDS-59 Publications, as defined below; and/or
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(9)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the FWDS-59 Publications, as defined below, in view of
any one of the BKR160 Publications, as defined below.
IX. STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R.
42.104(b)(3)
Given the recognized difficulties entailed in trying to describe a design in words, the
preferable course ordinarily will be [to not] attempt to construe a design patent claim by
providing a detailed verbal description of the claimed design. Egyptian Goddess, Inc. v. Swisa,
Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). However, it may be helpful to point out various
features of the claimed design as they relate to the prior art. Id. at 680.
Petitioner notes some inconsistencies in the the drawings of each of the embodiments of
the 834 Patent. Specifically, a bent portion of each of the embodiments is shown in solid
lines (claimed) in the respective side view figure, but in broken lines (disclaimed) in the two
respective perspective view figures. An annotated image of portions of FIGS. 1, 2, and 6 of the
834 Patent, showing these drawing inconsistencies, is provided below. These drawing
inconsistencies are present in the sets of drawings for each of the embodiments of the 834
Patent.
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Since the majority of the drawings of each of the embodiments of the design shown in the
834 Patent show this bent portion disclaimed, Petitioner submits that the claim of the 834
Patent should be construed to exclude this bent portion (i.e., consider it unclaimed subject
matter).
Moreover, many figures of the 834 Patent show the drawing convention for a design
having indeterminate length, and the special description of the 834 Patent likewise describes the
design of the building panel to be of indeterminate length. Petitioner submits that the claim of
the 834 Patent should be construed to include a building panel as shown and described in the
drawings of the 834 Patent having any length.
A perspective view of each of the embodiments of the 834 Patent is provided in which
the applicant displayed that multiple units of the wall panels shown in the 834 Patent were
designed to be interlocked adjacently to one another in order to form a wall panel sheet
comprised of multiple wall panels. These perspective views (see, e.g., FIG. 6) make clear that
portions of the claimed design are more clearly visible than others when installed on a wall
surface, and that the design of the wall panel as shown and described in the 834 Patent is very
likely to be viewed by an ordinary observer in a repeating fashion (for example, while installed
on a wall surface).
Finally, the 834 Patent comprises a claimed design having seven embodiments. Multiple
embodiments may be included in the same design patent only if they are patentably indistinct.
SeeIn re Rubinfield, 270 F.2d 391 (CPA 1959). Unlike during litigation, the scope of the claim
of the 834 Patent must be given its broadest reasonable scope before the USPTO,Atlantic
Thermoplastics Co., Inc. v. Faytex Corp., 970 F.2d 834, 846 (Fed. Cir. 1992), it being
understood that a determination by the Board that a single embodiment of the 834 Patent is
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unpatentable would render every embodiment of the 834 Patent unpatentable. In re Klein, 987
F.2d 1569, 1570 (Fed. Cir. 1993).
X. SUMMARY OF PRIOR ART PRINTED PUBLICATIONS RELIED UPON IN
THE PRESENT PETITION FOR INTER PARTES REVIEW
Inter partes review of the claim of the 834 Patent is requested in view of the following
printed publications:
A. ATAS, Inc. Model MPS120 Panel
1. IntroductionAs explained in greater detail below, the ATAS, Inc. model MPS120 panel (hereafter the
MPS120 Panel) appears in multiple prior art printed publications cited in this Petition. These
publications are collectively referred to hereinafter as the MPS120 Publications.
2. ATAS Web Page (www.atas.com)The MPS120 Panel appears on a web page published on the Internet at URL
http://www.atas.com/SpecSheets/TechSheet_Multi.htm (hereinafter the ATAS Web Page),
which was publically available at least as early as December 3, 2000. An archived copy of the
ATAS Web Page is provided by the Wayback Machine and attached hereto as Exhibit C. The
URL of the Wayback Machine archive is provided in Exhibit C.
An electronic publication, including an on-line database or Internet publication, is
considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a) and 102(b)
provided that the publication was accessible to persons concerned with the art to which the
document relates. MPEP 2128. Archived content provided by the Wayback Machine has long
been acknowledged by the USPTO as a proper means for establishing website content as prior
art. See Wynn W. Coggins,Prior Art in the Field of Business Method Patents When is an
Electronic Document a Printed Publication for Prior Art Purposes?, Fall 2002,
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http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp (Websites can be used as
references if posting dates can be found, and those posting dates predate the invention. ...
Examiners utilize commercial databases and the Wayback Machine to help establish website
posting dates in order to qualify the website as prior art). In addition, the Declaration of
Theodorus Bus (attached hereto as Exhibit F; hereinafter Bus Declaration) also establishes that
the ATAS Web Page was publicly available via the Internet at least as early as December 2000.
Based on the foregoing, the ATAS Web Page was available on a publicly accessible
website at least as early as December 3, 2000. The earliest priority date for the 834 Patent is
April 20, 2004. The ATAS Web Page, as shown in the archived content, therefore qualifies as a
printed publication and is available as prior art under 35 U.S.C. 102(b).
3. 2002 Sweets Catalog File, Volume 4The MPS120 Panel also appears in Volume 4 of the 2002 Sweets Catalog File
(hereinafter 2002 Sweets Catalog), attached hereto in pertinent part as Exhibit D. The 2002
Sweets Catalog included an ATAS, Inc. Wall Panels product brochure showing the MPS120
Panel (see pages 5-7 and 9) and is available as prior art under 35 U.S.C. 102(b).
The 2002 Sweets Catalog is a printed publication upon a satisfactory showing that the
Sweets Catalog File has been disseminated or otherwise made available to the extent that
persons interested and ordinarily skilled in the subject matter or art, exercising reasonable
diligence, can locate it. In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981); MPEP 2128. As
reflected in the Bus Declaration (Exhibit F), the 2002 Sweets Catalog is the most widely-used
building material product data reference for roof and wall panels and was made available in 2002
to over 60,000 industry professionals (Bus Declaration 5 and 10; see also 2002 Sweets
Catalog at page 4). Further, the same ATAS, Inc. Wall Panels product brochure that is featured
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in the 2002 Sweets Catalog was also distributed to ATAS customers (Bus Declaration 13), and
was made available without restriction at multiple industry trade shows between January 1, 2002
and December 31, 2002 (Bus Declaration 14). In addition, as reflected in the Declaration of
Teresa Warmkessel and attachments thereto (Exhibit L, hereinafter Warmkessel Declaration),
the 2002 Sweets Catalog is in the collection and listed in the card catalog of least five (5) major
public libraries (Warmkessel Declaration 6). As further set forth in the Warmkessel
Declaration, the 2002 Sweets Catalog was added to the card catalog of the Free Library of
Philadelphia on May 25, 2002 (Warmkessel Declaration 2-5). Based on the foregoing, the
2002 Sweets Catalog was clearly disseminated and made available to the extent that persons
interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence,
could have located it prior to December 31, 2002.
The foregoing establishes that the 2002 Sweets Catalog was a printed publication at
least as early as December 31, 2002, which is more than one year prior to the effective filing date
of the 834 Patent. Accordingly, the 2002 Sweets Catalog is prior art to the 834 Patent under
35 U.S.C. 102(b).
4. 2002 ATAS Metal Wall Panels BrochureThe MPS120 Panel also appears on pages 3 and 8 of the 2002 ATAS Metal Wall Panels
Brochure (hereinafter ATAS Brochure), which is attached hereto as Exhibit D (see pp. 5-7 and
9 of Exhibit D). The ATAS Brochure is available as prior art under 35 U.S.C. 102(b).
The ATAS Brochure is a printed publication upon a satisfactory showing that the ATAS
Brochure has been disseminated or otherwise made available to the extent that persons interested
and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.
In re Wyer, 655 F.2d at 226; MPEP 2128. As reflected in the Bus Declaration (Exhibit F), the
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ATAS Brochure was also widely distributed to ATAS customers (Bus Declaration 13), and was
made available without restriction at multiple industry trade shows between January 1, 2002 and
December 31, 2002 (Bus Declaration 14). Based on the foregoing, the ATAS Brochure was
clearly disseminated and made available to the extent that persons interested and ordinarily
skilled in the subject matter or art, exercising reasonable diligence, could have located it prior to
December 31, 2002.
The foregoing establishes that the ATAS Brochure was a printed publication at least as
early as December 31, 2002, which is more than one year prior to the effective filing date of the
834 Patent. Accordingly, the ATAS Brochure is prior art to the 834 Patent under 35 U.S.C.
102(b).
B. ATAS, Inc. RIGID-Wall Panel
1. IntroductionAs explained in greater detail below, the ATAS, Inc. model RIGID-Wall / BKR160 panel
(hereafter BKR160 Panel) appears in multiple prior art publications cited in this Petition.
These publications are collectively referred to hereinafter as the BKR160 Publications.
2. 2002 Sweets Catalog File, Volume 4The BKR160 Panel appears in the 2002 Sweets Catalog (Exhibit D, see pp. 10 and 11),
which, as set forth above in Section X.A.3., is prior art to the 834 Patent under 35 U.S.C.
102(b).
3. 2002 ATAS Metal Wall Panels BrochureThe BKR160 Panel appears on page 6 of the ATAS Brochure (Exhibit D, see pp. 10 and
11), which, as set forth above in Section X.A.4., is prior art to the 834 Patent under 35 U.S.C.
102(b).
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C. Centria Model IW60A Panel
The Centria model IW60A Panel (hereafter IW60A Panel) is prior art of record for the
834 Patent (see Exhibit B, p. 106). The IW60A Panel was disclosed on page 9 of the
Commercial & Industrial Metal Wall Systems Robertson Product Brochure (1994) (hereinafter
Robertson Brochure), which is attached hereto as Exhibit G.
D. ATAS, Inc. Model MPH080 Panel
The ATAS, Inc. model MPH080 panel (hereafter MPH080 Panel) is shown in the 2002
Sweets Catalog (Exhibit D, pp. 5, 6, and 8) and the ATAS, Inc. Wall Panels Brochure (Exhibit
D, see pp. 5, 6, and 8). As set forth above in sections X.A.3. and X.A.4., respectively, the 2002
Sweets Catalog and ATAS Brochure are prior art to the 834 Patent under 35 U.S.C. 102(b).
In addition, the MPH080 Panel is shown on the Summer 2000 Sweets CD (hereafter
Sweets CD), screenshots of which are attached hereto as Exhibit E. As reflected in the
declaration of Noah A. Sharkan, attached hereto as part of Exhibit E, the screenshots included in
Exhibit E are true and accurate representations of the images accessible via the Sweets CD on a
Windows-based personal computer. The Sweets CD software includes, among other things, a
CAD illustration of the MPH080 Panel (see Exhibit E, p. 14) and a CAD file of the MPH080
Panel that can be saved and opened in CAD software (see Exhibit E, pp. 15 and 16).
Images taken of the Sweets CD and product packaging (Exhibit E, pp. 1-9) indicate that
the Sweets CD was distributed by Sweets Group, a division of McGraw Hill, via US mail with
a mailing permit. Further, Sweets Internet webpage
http://www.sweets.com/topic/swprod.htm, as archived by the Wayback Machine on August
15, 2000 and attached hereto as Exhibit K, indicates that the Sweets CD is updated and
distributed quarterly. As reflected in the Bus Declaration (Exhibit F), the 2000 Sweets CD was
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even more widely distributed than the 2002 Sweets Catalog, which, as discussed above, was
made available in 2002 to over 60,000 industry professionals (Bus Declaration 8 and 10-11).
Accordingly, Petitioner respectfully submits that the Sweets CD was also disseminated and
made available to the extent that persons interested and ordinarily skilled in the subject matter or
art, exercising reasonable diligence, could have located it more than one year prior to the
effective filing date of the 834 Patent. Therefore, the Sweets CD, and the representations of the
MPH080 Panel appearing therein, are prior art to the 834 Patent under 35 U.S.C. 102(b).
The portions of the 2002 Sweets Catalog, ATAS Brochure, and Sweets CD showing the
MPH080 Panel are referred to herein as the MPH080 Publications.
E. Centria Model FWDS-59 Panel
The Centria Model FWDS-59 panel (hereafter FWDS-59 Panel) is shown in the 2002
Sweets Catalog and the ATAS Brochure (Exhibit D, see pp. 12 and 13). As set forth above in
Sections X.A.3. and X.A.4, respectively, the 2002 Sweets Catalog and the ATAS Brochure are
prior art to the 834 Patent under 35 U.S.C. 102(b). Therefore, the FWDS-59 Panel, as it
appears in these publications, is prior art to the 834 Patent under 35 U.S.C. 102(b).
XI.OVERVIEW OF THE 834 PATENT
A. Background
The 834 Patent claims [t]he ornamental design for a building panel, as shown and
described. The 834 Patent discloses seven embodiments of a building panel design.
B. Prosecution and Enforcement History
U.S. Design Patent Application No. 29/203,806 was filed on April 4, 2004 with 54
figures consisting of eighteen (18) embodiments of a design for a wall panel.
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A restriction requirement was mailed on August 25, 2005 (hereinafter Restriction
Requirement), requiring restriction to one of the inventions of Group I, Group II, Group III, and
Group IV. Group III included embodiment 13 disclosed in original figures 37-41.
A response to the Restriction Requirement was filed on September 15, 2005, in which
Applicants elected the invention of Group I with traverse, arguing that Group I and Group II
should be combined.
A Notice of Allowability was mailed on November 29, 2005, which included an
Examiners amendment and comment. The Notice of Allowability states that a telephone
interview occurred on November 28, 2005, during which the Applicants and Examiner agreed to
combine Groups I and II, consisting of original figures 1-36 and 43 through 54, and Applicants
agreed to place the additional attached panel in broken lines in the appropriate figures. In view of
the telephone interview, Groups III and IV, consisting of figures 37 through 42, were canceled,
and the figure designations and descriptions were adjusted accordingly. The embodiment of
canceled Group III was filed on February 10, 2006 as divisional U.S. Design Patent Application
No. 29/253,797, which later issued on March 20, 2007 as U.S. Design Patent No. D538,948.
An Amendment After Notice of Allowance was filed on February 2, 2006. Applicants
submitted amendments to the specification and drawings to make corrections requested in the
Notice of Allowability. Concurrently therewith, Applicants submitted a Supplemental IDS citing
new prior art, which is attached as Exhibit I hereto, and canceled original figures 31-36 in view
of that newly submitted prior art reference. Canceled original figures 31-36 are attached hereto
as Exhibit J.
The Issue Fee was paid on February 28, 2006.
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On July 6, 2006, a Response to Rule 312 Communication was mailed, in which the
Examiner entered the Amendment After Notice of Allowance. The Examiner indicated that the
prior art submitted by the Applicant on February 2, 2006 had not been considered.1
On August 16, 2006, Applicants filed a payment authorization for a large entity fee,
stating that they had inadvertently claimed small entity status when filing the application. A
Petition Decision was mailed on March 13, 2008, accepting the fee deficiency submission.
On September 18, 2012, a Report on the Filing or Determination of an Action Regarding
Patent or Trademark was entered, identifying U.S. Design Patent Nos. D527,834 and D538,948
as the subject of an infringement action filed by Centria against Cleburne Sheet Metal in the
United States District Court for the Western District of Pennsylvania.
XII. STATEMENT OF REASON FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
42.22(a)(2) AND 42.104(b)(4), SHOWING THAT THERE IS A REASONABLE
LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C.
314
A. The Applicable Legal Standards
1. ObviousnessProposed rejections set forth below represent a finding of obviousness under 35 U.S.C.
103(a). In the context of a design patent, the fact finder employs a two step process to
determine whether one of ordinary skill would have combined teachings of the prior art to create
the same overall visual appearance as the claimed design:
First, "one must find a single reference, 'asomething in existence, the design
characteristics of which are basically the same as the claimeddesign.'"Durling,
101 F.3d [100,] 103 [(Fed. Cir. 1996)] (quotingIn re Rosen, 673 F.2d 388, 391
(CCPA 1982). Second, "other references may be used to modify [the primary
1 The Applicant Admitted Prior Art, therefore, should not be considered as being of record for purposes of
evaluating whether the USPTO has previously considered any grounds of rejection under 35 U.S.C. 102 or 103
relating to this reference.
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reference] to create a design that has the same overall visual appearance as the
claimed design."Id. However, the 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 features in one would suggest the
application of those features to the other.Id., quotingIn re Borden, 90 F.3d 1570,
1575 (Fed. Cir. 1996).
Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329-31 (Fed. Cir. 2012).
The Federal Circuits decision in Titan Tire Corp. v. Case New Holland, 566 F.3d 1372
(Fed. Cir. 2009), is one of the most recent Federal Circuit opinions applying the basically the
same standard and provides a helpful illustration of the Federal Circuits view on the acceptable
degree of difference between the claimed design and potential primary references. In Titan Tire,
the court held that the District Court did not abuse its discretion in concluding that each of three
prior art references were basically the same as the patent in question, US Patent No. D360,862.
Idat 1381-83. The designs at issue in the Titan Tire case are reproduced below with the claimed
design on the left and the three prior art references on the right.
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FIG. 1 of the 862
Patent
FIG. 2A of the 683
Patent
FIG. 2 of the 814
Patent
As is clear from a comparison of the drawings, there are differences between the claimed design
and the prior art, including, for example, the overall height-to width ratio of the tires, the depth
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of the treads, the width of the lugs, the spacing of the lugs, the angle of the lugs, changes in
curvature of the lugs along their length, and the shape of the outer edge of each lug. Despite
these differences, the Federal Circuit concluded that the design characteristics of each of the
three prior art references was basically the same as the claimed design, and therefore, all three
references were appropriate primary references for purposes of a potential 103 rejection. Idat
1381.
If a hypothetical prior art reference is created through combination of one or more
secondary references and the primary reference, the prior art reference and the claimed design
are then analyzed from the point of view of the ordinary observer. Int'l Seaway Trading Corp. v.
Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) (For design patents, the role of one
skilled in the art in the obviousness context lies only in determining whether to combine earlier
references to arrive at a single piece of art for comparison with the potential design or to modify
a single prior art reference. Once that piece of prior art has been constructed, obviousness, like
anticipation, requires application of the ordinary observer test, not the view of one skilled in the
art).
The ordinary observer test looks at whether an ordinary observer, familiar with the prior
art, would be deceived into believing that the prior art reference and the claimed design are the
same. Crocs, Inc. v. Intl Trade Comn, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (citingEgyptian
Goddess v. Swisa, 534 F.3d 665, 681 (Fed. Cir. 2008)). The ordinary observer test requires
consideration of the prior art and claimed design as a whole. See Egyptian Goddess, 534 F.3d at
675.
The mere presence of inconsequential orde minimis differences between the claimed
design and the hypothetical prior art reference created through combination of one or more
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secondary references and the primary reference is insufficient to overcome a finding that the
claimed design is unpatentable under 35 U.S.C. 103(a). In re Lamb, 286 F.2d 610, 611-12
(CCPA 1961); MPEP 1504.03(B)
2. AnticipationSome of the proposed grounds of rejection set forth below request a finding of
anticipation under 35 U.S.C. 102(b). In the context of a design patent, the ordinary observer
test discussed above is the sole test for determining anticipation.Int'l Seaway Trading Corp. v.
Walgreens Corp., 589 F.3d at 1240. A prior art reference therefore anticipates a claimed design
under 35 U.S.C. 102(b) if an ordinary observer, familiar with the prior art, would be deceived
into believing the prior art reference and the claimed design are the same. Crocs, Inc. v. Intl
Trade Comn, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (citingEgyptian Goddess v. Swisa, 534 F.3d
665, 681 (Fed. Cir. 2008)).
3. Multiple EmbodimentsThe 834 Patent comprises a claimed design having seven embodiments. Multiple
embodiments may be included in the same design patent only if they are patentably indistinct.
SeeIn re Rubinfield, 270 F.2d 391 (CPA 1959). Accordingly, each proposed ground of rejection
in the Petition will hereafter focus on a single embodiment of the claimed design of the 834
Patent, it being understood that a determination that one embodiment of the 834 Patent is
unpatentable would render the entire 834 Patent unpatentable. In re Klein, 987 F.2d 1569, 1570
(Fed. Cir. 1993).
B. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the
MPS120 Publications in view of any of the BKR160 Publications
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The MPS120 Panel, as shown in the MPS120 Publications (Exhibits C and D), and the
BKR160 Panel, as shown in the BKR160 Publications (Exhibit D), are prior art under 35 U.S.C.
102(b), as previously discussed above. Neither the MPS120 Panel nor the BKR160 Panel was
considered by the Examiner during examination of the 834 Patent. The MPS120 Panel, as
shown in the MPS120 Publications, in view of the BKR160 Panel, as shown in the BKR160
Publications, is more similar in overall visual appearance than the references cited during
prosecution of the 834 Patent and is non-cumulative.2
As discussed in the detailed analysis below, the MPS120 Panel, as shown in any of the
MPS120 Publications, is a suitable primary reference having design characteristics that are
basically the same as the claimed design of the 834 Patent. Durling, 101 F.3d at 103. One of
ordinary skill in the art would look to the BKR160 Panel, as shown in any of the BKR160
Publications, to modify the MPS120 Panel because both references are metal wall panels. All
non-de minimis differences between the claimed design and the MPS120 Panel are shown in the
BKR160 Panel. From the point of view of an ordinary observer, a hypothetical prior art
reference created by modifying the MPS120 Panel as shown by the BKR160 Panel would have
the same overall visual appearance as the claimed design of the 834 Patent. Therefore, the
claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious over the
MPS120 Panel in view of the BKR160 Panel.
1. MPS120 Panel as compared to FIGS. 37-41 of the 834 PatentThe ATAS Web Page prior art reference (Exhibit C) and the 2002 Sweets Catalog and
ATAS Brochure prior art references (Exhibit D, pp. 5-7 and 9) show the MPS120 Panel in
2 Petitioner notes that the BKR160 Panel is similar to the design of the IW60A Panel, which was disclosed in areference considered by the Examiner during prosecution of the 834 Patent. The BKR160 Panel is believed to be
closer in overall visual appearance to the claimed design of the 834 Patent because, as discussed in greater detail
later in this Petition, it has an overall length and length-to-depth ratio that is more similar to the claimed design.
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axonometric, partially extruded views. Petitioner respectfully submits that one of ordinary skill
in the art could easily understand and visualize the appearance of other views of the MPS120
Panel from these axonometric, partially extruded views, and/or from profile views. In fact, until
recently, the profile view was often the only technical drawing provided on product data sheets.
See, e.g., Exhibit H (Centria Technical Data Manual dated December, 1996, showing IW60A
Panel and additional panels in profile view). In order to assist in comparing the MPS120 Panel
to all of the views of the seventh embodiment of the claimed design, Petitioner has prepared
drawings showing perspective, profile, front, top and bottom views which accurately depict the
MPS120 Panel design to scale and were created from the drawings appearing in the MPS120
Publications. These drawings are shown below, side-by-side with the corresponding figures of
the claimed design. Any difference in width between the MPS120 Panel and FIGS. 37 and 39-41
of the claimed design are irrelevant, as the claimed design is broken on the left side to indicate
indefinite length.
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2. Any of the MPS120 Publications, which show the MPS120 Panel, is asuitable primary reference, having the same basic design characteristics as
the claimed design
As shown, the design of the MPS120 Panel, which appears in all of the MPS120
Publications, is a suitable primary reference because it has the same basic design characteristics
as the seventh embodiment of the claimed design. Apple, Inc., 678 F.3d at 1329-30. The
MPS120 Panel and the seventh embodiment of the claimed
design share the following visual features:
1. planar upper and lower faces that arecoplanar and are roughly equal in height;
2. a U-shaped central recess, protrudinginwardly from the upper and lower faces
and having a planar floor connected to the
upper and lower faces by linear upper and
lower recess legs, respectfully;
3. an upper end having a planar floor that iscoplanar with the floor of the central recess
and is connected to the upper face by a
linear upper end leg;
4. a lower end having a linear lower end legthat extends outwardly from the lower face
and a inwardly curved tip located at the end
of the lower end leg that curls upwardly;
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5. the lower recess leg intersects the lower face at the same angle as the upper endleg intersects the upper face and the angle at which the upper recess leg intersects
the upper face is the same as the angle at which the lower end leg intersects lower
upper face; and
6. when connected to another panel, the upper and lower ends combine to create arecess that is very similar in shape to the central recess (see FIG. 42).
The MPS120 Panel has the following differences from the seventh embodiment of the
claimed design:
1.
the central recess of the MPS120 Panel has a symmetrical shape, whereas the
central recess of the claimed design has an asymmetrical shape in which the lower
recess leg intersects the lower face at a shallower angle that the upper leg
intersects the upper face; and
2. the ratio of the depth D of the central recess and the upper end floor to the overalllength L of the panel is less in the MPS120 Panel than in the claimed design.
The differences between the claimed design and the MPS120 Panel do not result in an
overall appearance that is substantially different and patentably distinct from the MPS120 Panel.
Presence of invention is as essential to granting of design patent as to granting of mechanical
patent; obvious changes in arrangement and proportioning are no more patentable in one case
than in the other. In re Stevens, 173 F.2d 1015, 1019 (CPA 1949).
Further, the differences between the claimed design and the MPS120 Panel must be
evaluated based on all of the views of the claimed design. Egyptian Goddess, Inc., 534 F.3d at
675. Although the above-described differences are discernible in the side view (FIG. 38), the
designs are much less distinguishable from one another in the other views.
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In addition, by virtue of the restriction requirement set forth in the Office Action mailed
on August 25, 2005 and the Reply submitted to the Office on September 15, 2005 during
examination of the 834 Patent, both the Patentee and the Examiner acknowledged that all
claimed differences between the seven embodiments of the claimed design of the 834 Patent are
patentably indistinct. In re Rubinfield, 270 F.2d 391 (CPA 1959) (multiple embodiments may be
included in the same design patent only if they are patentably indistinct). Accordingly, it is
respectfully submitted that the degree of similarity required to conclude that the design
characteristics of the prior art are basically the same as the claimed design should be less
stringent in this case.
For all of the reasons set forth above, the MPS120 Panel clearly has design characteristics
that are basically the same as the claimed design, and therefore any of the MPS120
Publications is a proper primary reference.
3. Any of the BKR160 Publications, which show the BKR160 Panel, is a suitablesecondary reference for modifying any of the MPS120 Publications
The BKR160 Panel, which appears in all of the BKR160 Publications, is a suitable
secondary reference for modifying the MPS120 Panel, which is shown in all of the MPS120
Publications, to create a design that has the same overall visual appearance as the claimed
design. The BKR160 Panel and the MPS120 Panel are both designs for building panels, and
both designs have an overall planar shape with two opposed ends for interlocking with additional
building panels. As shown below, the panel design of the BKR160 Panel includes certain
ornamental features, such as recessed regions having a particular shape and size, opposed ends
having a particular shape, and a particular overall length. The BKR160 Panel, which is shown in
all of the BKR160 Publications, is a suitable secondary reference because it is so related to the
MPS120 Panel that the appearance of these recessed regions, opposed ends, and overall
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dimensions of the BKR160 Panel would suggest the application of those features to the MPS120
Panel. Apple, Inc., 678 F.3d at 1329-30.
4. The 834 Patent is unpatentable under 35 U.S.C. 103(a) over the MPS120 Panelin view of the BKR160 Panel
The claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious
over the MPS120 Panel, as shown in any of the MPS120 Publications, in view of the BKR160
Panel, as shown in any of the BKR160 Publications, because the MPS120 Panel modified by the
BKR160 Panel has the same overall visual appearance as the seventh embodiment of the claimed
design, and an ordinary observer, familiar with the prior art, would be deceived into believing the
seventh embodiment of the claimed design is the same as the MPS120 Panel modified by the
BKR160 Panel. Crocs, Inc.,598 F.3d at 1303.
As previously discussed, the appearance of the MPS120 Panel differs from the
appearance of the seventh embodiment of the claimed design in only two significant respects:
(a) the precise shape of the central recess, and (b) the ratio of the depth of the central recess to
the overall length of the panel. The BKR160 Panel, as shown in all of the BKR160 Publications
(Exhibit D, pp. 10 and 11) includes recessed portions that are virtually identical to the central
recess of the claimed design and has a depth-to-length ratio that is also virtually identical to the
claimed design, as shown below.
Therefore, the MPS120 Panel, modified with the ornamental features of the BKR160
Panel, including the shape and size of the recessed regions, the shape of the opposed ends, and
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the overall length of the panel, creates a building panel design that has the same overall visual
appearance as the seventh embodiment of the claimed design. In addition, the overall
appearance of the BKR160 Panel is sufficiently similar to the MPS120 Panel such that the
appearance of certain ornamental features in the BKR160 Panel would suggest the application of
those features to the MPS120 Panel. It is respectfully submitted that any differences between the
claimed design and the MPS120 Panel modified by the BKR160 Panel are de minimis and would
be imperceptible to an ordinary observer familiar with the prior art.
Accordingly, the MPS120 Panel modified by the BKR160 Panel has the same overall
visual appearance as the seventh embodiment of the claimed design, and an ordinary observer,
familiar with the prior art, would be deceived into believing the seventh embodiment of the
claimed design is the same as the MPS120 Panel modified by the BKR160 Panel. The claim of
the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the
MPS120 Panel in view of the BKR160 Panel.
Based on the foregoing arguments, Petitioner has established that there is a reasonable
likelihood that it will prevail upon consideration of this proposed ground of rejection.
C. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the
MPS120 Publications in view of the IW60A Panel
The MPS120 Panel, as shown in any of MPS120 Publications (Exhibits C and D), and the
IW60A Panel, as shown in the Robertson Brochure (Exhibit G) are prior art under 35 U.S.C.
102(b), as previously discussed above. The IW60A Panel was disclosed in a reference cited
during prosecution of the 834 Patent (the Robertson Brochure, Exhibit G, p. 9), but the MPS120
Panel, as disclosed in any of the MPS120 Publications, was not considered by the Examiner
during examination of the 834 Patent.
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As discussed above in Section XII.B., the MPS120 Panel, as shown in any of the
MPS120 Publications, is a suitable primary reference. Further, the design features of the IW60A
Panel, including the size and shape of the recess portions, are substantially the same as those of
the BKR160 Panel. The overall length of the IW60A Panel is shorter than that of the BKR160
Panel, however Petitioner respectfully submits that this and any other differences between the
IW60A Panel and the BKR160 Panel are de minimis.
Accordingly, Petitioner respectfully submits that the remarks made above in Section
XII.B. with regard to the MPS120 Panel modified by the BKR160 Panel are equally applicable
to the MPS120 Panel modified by the IW60A Panel. For these reasons, the IW60A Panel is a
suitable secondary reference, and the MPS120 Panel modified by the IW60A Panel has the same
overall visual appearance as the seventh embodiment of the claimed design. An ordinary
observer, familiar with the prior art, would be deceived into believing the seventh embodiment of
the claimed design is the same as the MPS120 Panel modified by the IW60A Panel. The claim
of the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the
MPS120 Panel in view of the IW60A Panel.
Based on the foregoing arguments, Petitioner has established that there is a reasonable
likelihood that it will prevail upon consideration of this proposed ground of rejection.
D. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the
BKR160 Publications (Anticipation)
The BKR160 Panel, as shown in all of the BKR160 Publications (Exhibit D), is prior art
under 35 U.S.C. 102(b), as previously discussed above. The BKR160 Panel was not
considered by the Examiner during examination of the 834 Patent. The BKR160 panel is more
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similar in overall visual appearance than the references cited during prosecution of the 834
Patent and is non-cumulative.
As discussed in the detailed analysis below, from the point of view of an ordinary
observer familiar with the prior art, the BKR160 Panel has the same overall visual appearance as
the claimed design and the ordinary observer would be deceived into believing the BKR160
Panel and the claimed design are the same. Therefore, the claim of the 834 Patent is
unpatentable under 35 U.S.C. 102(b) as being anticipated by the BKR160 Panel, as shown in
any of the BKR160 Publications.
1.
The BKR160 Panel as compared to FIGS. 37-41 of the 834 Patent
The 2002 Sweets Catalog and ATAS Brochure prior art references (Exhibit D, pp. 10
and 11) show profile and axonometric views of the BKR160 Panel. As previously discussed,
Petitioner respectfully submits that one of ordinary skill in the art could easily understand and
visualize the appearance of other views of the BKR160 Panel from these views. In order to
assist in comparing the BKR160 Panel to the claimed design, Petitioner has prepared drawings
showing perspective, profile, front, top and bottom views which accurately depict the BKR160
Panel design to scale. These drawings are shown below, side-by-side with the corresponding
figures of the claimed design. Any difference in width between the BKR160 Panel and FIGS. 37
and 39-41 of the claimed design are irrelevant, as the claimed design is broken on the left side to
indicate indefinite length.
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2. The 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipatedby the BKR160 Panel, as shown in any of the BKR160 Publications
The design of the BKR160 Panel has the same basic design characteristics as the seventh
embodiment of the claimed design. Most notably, the BKR160 Panel includes recessed portions
that are virtually identical to the recesses of the claimed design and has a depth-to-length ratio
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that is also virtually identical to the claimed design. As shown below, the BKR160 Panel shares
these same design characteristics with many of the embodiments of the claimed design.
As shown, the primary differences between the third through seventh embodiments of the
claimed design and the BKR160 Panel are the numbers and locations of the recessed regions.
However, by virtue of the restriction requirement set forth in the Office Action mailed on August
25, 2005 and Reply submitted to the Office on September 15, 2005, both the Patentee and the
Examiner acknowledged that all claimed differences between all seven embodiments of the
claimed design of the 834 Patent are patentably indistinct. In re Rubinfield, 270 F.2d 391 (CPA
1959) (multiple embodiments may be included in the same design patent only if they are
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patentably indistinct). Therefore, both the Patentee and Examiner acknowledged that the
different numbers and locations of the recessed regions among the embodiments are patentably
indistinct variations of the same claimed design. Stated another way, the patentee has admitted
that a panel having one recessed region is patentably indistinct from a panel having two recessed
regions. Petitioner respectfully submits that a panel having three recessed regions (i.e., the
BKR160 Panel) is also a patentably indistinct variation of the claimed design. In fact, due to the
positions taken by the patentee during examination of the 834 Patent, petitioner respectfully
submits that patentee should be stopped from arguing that the BKR160 Panel is patentably
distinct from the claimed design of the 834 Patent.
Based on the foregoing, an ordinary observer, familiar with the prior art, would be
deceived into believing the BKR160 Panel and the claimed design, which Petitioner submits
includes the patentably indistinct variant having a third recessed region, are the same. Therefore,
the claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the
BKR160 Panel, as shown in any of the BKR160 Publications. Therefore, Petitioner has
established that there is a reasonable likelihood that it will prevail upon consideration of this
proposed ground of rejection.
E. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the
BKR160 Publications (Obviousness)
In the event that the design of the BKR160 Panel is found to not anticipate the claimed
design under 35 U.S.C. 102(b), the claimed design is also unpatentable under 35 U.S.C.
103(a) as being obvious over the BKR160 Panel, as shown in any of the BKR160 Publications,
alone.
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As discussed above, both the Patentee and Examiner acknowledged that the different
numbers and locations of the recessed regions among the embodiments of the claimed design are
patentably indistinct variations of the same claimed design. As can be seen, the removal or
rearrangement of recessed regions from embodiments of the claimed design results in other
embodiments of the claimed design (e.g., removing the right recessed region from the fifth
embodiment results in the seventh embodiment; removing the center recessed region from the
fifth embodiment results in the sixth embodiment).
Petitioner respectfully submits that simply removing one or two recessed regions from
the design of the BKR160 Panel results in all of the embodiments of the claimed design, and that
so removing one or two recessed regions from the design of the BKR160 Panel is an obvious
modification that does not create a patentable distinction, just as the removal or rearrangement of
recessed regions amongst the embodiments of the claimed design are patentably indistinct
modifications. For example, removing the right recessed region of the BKR160 Panel results in
the third embodiment; removing the left recessed region of the BKR160 Panel results in the fifth
embodiment; removing the center recessed region of the BKR160 Panel results in the fourth
embodiment; and removing the left and right recessed regions of the BKR160 Panel results in the
seventh embodiment. Again, obvious changes in arrangement and proportioning are no more
patentable in design patents than they are in mechanical patents. In re Stevens, 173 F.2d 1015,
1019 (CPA 1949).
An ordinary observer, familiar with the prior art, would be deceived into believing the
design of the BKR160 Panel, which Petitioner submits includes the obvious and patentably
indistinct variants having one or two of the recessed regions removed, and the claimed design,
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are the same. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as
being obvious over the BKR160 Panel, as shown in any of the BKR160 Publications.
Based on the foregoing arguments, Petitioner has established that there is a reasonable
likelihood that it will prevail upon consideration of this proposed ground of rejection.
F. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the
BKR160 Publications in view of any of the MPS120 Publications
The MPS120 Panel, as shown in any of the MPS120 Publications (Exhibits C and D), and
the BKR160 Panel, as shown in any of the BKR160 Publications (Exhibit D), are prior art under
35 U.S.C. 102(b), as previously discussed above in Section XII.B. Neither the BKR160 Panel
or the MPS120 Panel was considered by the Examiner during examination of the 834 Patent.
The BKR160 Panel in view of the MPS120 Panel is more similar in overall visual appearance
than the references cited during prosecution of the 834 Patent and is non-cumulative.
The BKR160 Panel, as shown in any of the BKR160 Publications, is a suitable primary
reference for the reasons discussed above with regard to the claim of the 834 Patent being
anticipated by the BKR160 Panel. Similarly, the MPS120 Panel, as shown in any of the
MPS120 Publications, is a suitable secondary reference for modifying the MPS120 Panel to
create a design that has the same overall visual appearance as the claimed design. The BKR160
Panel and the MPS120 Panel are both designs for building panels, and both designs have an
overall planar shape with two opposed ends for interlocking with additional building panels. As
previously shown, the design of the MPS120 Panel includes certain ornamental features, such as
a single, centrally located recessed region. The MPS120 Panel is a suitable secondary reference
because it is so related to the BKR160 Panel that the appearance of the single, centrally located
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recessed region would suggest the application of that feature to the BKR160 Panel. Apple, Inc.,
678 F.3d at 1329-30.
The claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious
over the BKR160 Panel, as shown in any of the BKR160 Publications, in view of MPS120, as
shown in any of the MPS120 Publications, because the BKR160 Panel modified by the MPS120
Panel to have a single, centrally located recessed region instead of three recessed regions has the
same overall visual appearance as the seventh embodiment of the claimed design. It is
respectfully submitted that any differences between the claimed design and the BKR160 Panel
modified by the MPS120 Panel are de minimis and would be imperceptible to an ordinary
observer familiar with the prior art, and the ordinary observer would be deceived into believing
the seventh embodiment of the claimed design is the same as the BKR160 Panel modified by the
MPS120 Panel. Crocs, Inc.,598 F.3d at 1303. The claim of the 834 Patent is therefore
unpatentable under 35 U.S.C. 103(a) as being obvious over the BKR160 Panel, as shown in
any of the BKR160 Publications, in view of the MPS120 panel, as shown in any of the MPS120
Publications.
Based on the foregoing arguments, Petitioner has established that there is a reasonable
likelihood that it will prevail upon consideration of this proposed ground of rejection.
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G. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on any of the
MPH080 Publications in view of any of the BKR160 Publications
The MPH080 Panel, as shown in any of the MPH080 Publications (Exhibits D and E),
and the BKR160 Panel, as shown in any of the BKR160 Publications (Exhibit D), are prior art
under 35 U.S.C. 102(b), as previously discussed above. Neither the MPH080 Panel or the
BKR160 Panel was considered by the Examiner during examination of the 834 Patent. The
MPH080 Panel, as shown in any of the MPH080 Publications, in view of the BKR160 Panel, as
shown in any of the BKR160 Publications, is more similar in overall visual appearance than the
references cited during prosecution of the 834 Patent and is non-cumulative.
As discussed below, the MPH080 Panel, as shown in any of the MPH080 Publications, is
a suitable primary reference having design characteristics that are basically the same as the
claimed design of the 834 Patent. Durling, 101 F.3d at 103. One of ordinary skill in the art
would look to the BKR160 Panel, as shown in any of the BKR160 Publications, to modify the
MPH080 Panel because both references are metal wall panels. All non-de minimis differences
between the claimed design and the MPH080 Panel are shown in the BKR160 Panel. From the
point of view of an ordinary observer, a hypothetical prior art reference created by modifying the
MPH080 Panel as shown by the BKR160 Panel would have the same overall visual appearance
as the claimed design. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C.
103(a) as being obvious over the MPH080 Panel in view of the BKR160 Panel.
1. The MPH080 Panel as compared to FIGS. 37-41 of the 834 PatentThe MPH080 Panel shows a profile of an extruded wall panel. As previously discussed
with respect to the MPS120 Panel, Petitioner respectfully submits that one of ordinary skill in the
art could easily understand and visualize the appearance of other views of the MPH080 panel
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from the profile view. In addition, Petitioner respectfully submits that one of ordinary skill in the
art could easily understand and visualize the appearance of two (or more) interlocked MPH080
Panels, a point that is also demonstrated by the inclusion of such views for each embodiment of
the 834 Patent (i.e., FIGS. 6, 12, 18, 24, 30, and 42).
Petitioner further submits that such interlocked panels represent the overall visual
appearance of the MPH080 Panel as envisioned by one of ordinary skill in the art and as they
would actually appear when installed on a building wall. In order to assist in comparing the
design of the MPH080 Panel to the claimed design, Petitioner has prepared drawings showing
perspective, front, rear, top and bottom views which accurately depict two interlocked MPH080
Panels to scale. These drawings are shown below, side-by-side with the corresponding figures of
the claimed design. Again, any differences in length between the MPS120 Panel and FIGS. 37
and 39-41 of the claimed design are irrelevant, as the claimed design is broken on the left side to
indicate indefinite length.
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2. Any of the MPH080 Publications, which show the MPH080 Panel, is asuitable primary reference, having the same basic design characteristics as the
claimed design
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As shown, the design of the MPH080 Panel, which appears in all of the MPH080
Publications, is a suitable primary reference because when two MPH080 Panels are
interlockeda configuration that one of ordinary skill in the art would readily envision and in
which the panels are ultimately installed on a building
wallthey have the same basic design characteristics as
the seventh embodiment of the claimed design. Apple,
Inc., 678 F.3d at 1329-30. Specifically, two interlocked
MPH080 Panels and the seventh embodiment of the
claimed design share the following visual features, again
with reference to the annotated FIG. 38:
1. planar upper and lower faces that arecoplanar and are roughly equal in height;
2. a U-shaped central recess, protrudinginwardly from the upper and lower faces
and having a planar floor connected to the
upper and lower faces by linear upper and
lower recess legs, respectfully;
3. an upper end having a planar floor that iscoplanar with the floor of the central recess
and is connected to the upper face by a
linear upper end leg;
4. a lower end having a linear lower end leg that extends outwardly from the lowerface and a inwardly curved tip located at the end of the lower end leg;
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5. the lower recess leg intersects the lower face at the same angle as the upper endleg intersects the upper face and the angle at which the upper recess leg intersects
the upper face is the same as the angle at which the lower end leg intersects lower
upper face; and
6. when connected to another panel, the upper and lower ends combine to create arecess that is very similar in shape to the central recess (see FIG. 42).
The MPH080 Panel has the following differences from the seventh embodiment of the
claimed design:
1.
the central recess of the two interlocked MPH080 Panels has a symmetrical shape,
whereas the central recess of the claimed design has an asymmetrical shape in
which the lower recess leg intersects the lower face at a shallower angle that the
upper leg intersects the upper face;
2. the ratio of the depth D of the central recess and the upper end floor to the overalllength L of the two interlocked MPH080 Panels is greater than in the claimed
design; and
3. the lower side of the central recess of the two interlocked MPH080 Panelsincludes additional structure that enables the two panels to interlock.
As previously discussed, in view of the many embodiments included in the 834 Patent,
Petitioner respectfully submits that the degree of similarity required to conclude that the design
characteristics of the prior art are basically the same as the claimed design should be less
stringent in this case. Also, the differences between the claimed design and the MPH080 Panel
must be evaluated based on all of the views of the claimed design,Egyptian Goddess, Inc., 534
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F.3d at 675, and the designs are much less distinguishable from one another in views other than
the profile view.
For all of the reasons set forth above, MPH080 clearly has design characteristics that are
basically the same as the claimed design, and therefore, is a proper primary reference.
3. Any of the BKR160 Publications, which show the BKR160 panel, is a suitablesecondary reference for modifying any of the MPH080 Publications
The BKR160 Panel, which appears in all of the BKR160 Publications, is a suitable
secondary reference for modifying the MPH080 Panel, which is shown in all of the MPH080
Publications, to create a design that has the same overall visual appearance as the claimed
design. The MPH080 Panel and the BKR160 Panel are both designs for building panels, and
both designs have an overall planar shape with two opposed ends for interlocking with additional
building panels. As previously discussed, the panel design of the BKR160 Panel includes certain
ornamental features, such as recessed regions having a particular shape and size, opposed ends
having a particular shape, and a particular overall length. The BKR160 Panel, which is shown in
all of the BKR160 Publications, is a suitable secondary reference because it is so related to the
MPH080 Panel that the appearance of these recessed regions, opposed ends, and overall
dimensions of the BKR160 Panel would suggest the application of those features to the MPH080
Panel. Apple, Inc., 678 F.3d at 1329-30.
4. The 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over theMPH080 Panel in view of the BKR160 Panel
The claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious
over the MPH080 Panel, as shown in any of the MPH080 Publications, in view of the BKR160
Panel, as shown in any of the BKR160 Publications, because the MPH080 Panel modified by the
BKR160 Panel has the same overall visual appearance as the seventh embodiment of the claimed
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design, and an ordinary observer, familiar with the prior art, would be deceived into believing the
seventh embodiment of the claimed design is the same as the MPH080 Panel modified by the
BKR160 Panel. Crocs, Inc.,598 F.3d at 1303.
As previously discussed, the appearance of the two interlocked MPH080 Panels differs
from the appearance of the seventh embodiment of the claimed design in only three significant
respects. Two of these differences, (a) the precise shape of the recess that is formed by the two
interlocked panels, and (b) the ratio of the depth of the recess to the overall length of the two
interlocked panels, are taught by the BKR160 Panel. As explained above, the BKR160 Panel
includes recessed portions that are virtually identical to the central recess of the claimed design
and has a depth-to-length ratio that is also virtually identical to the claimed design.
With regard to the third difference, the additional structure on the lower side of the
central recess of the two interlocked MPH080 Panels, Petitioner respectfully submits that the
additional structure would be treated as de minimis by an ordinary observer because this
additional structure is hidden when the panels are installed on a building, and therefore, would be
visually unimportant to an ordinary observer. Examples of installations of MPH080 Panels and
Centria model CS-620 panels, which are believed to be a commercial product based on the
seventh embodiment of the claimed design, are shown below:
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The argument that the structures used to connect the panels together should be treated as de
minimis is further supported by the fact that these same structures are disclaimed in the claimed
design of the 834 Patent and the fact that every embodiment of the claimed panel is shown in a
view in which it is interlocked with a second panel (see, e.g., FIG. 42 of Exhibit A).
Therefore, the MPH080 Panel, modified with the ornamental features of the BKR160
Panel, including the shape and size of the recessed regions, the shape of the opposed ends, and
the overall length of the panel, creates a building panel design that has the same overall visual
appearance as the seventh embodiment of the claimed design. In addition, the overall
appearance of the BKR160 Panel is sufficiently similar to the MPH080 Panel such that the
appearance of certain ornamental features in the BKR160 Panel would suggest the application of
those features to the MPH080 Panel. It is respectfully submitted that any differences between
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the claimed design and the MPH080 Panel modified by the BKR160 Panel are de minimis and
would be imperceptible to an ordinary observer familiar with the prior art.
Accordingly, the MPH080 Panel modified by the BKR160 Panel has the same overall
visual appearance as the seventh embodiment of the claimed design, and an ordinary observer,
familiar with the prior art, would be deceived into believing the seventh embodiment of the
claimed design is the same as the MPH080 Panel modified by the BKR160 Panel. The claim of
the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the
MPH080 Panel in view of the BKR160 Panel.
Based on the foregoing arguments, Petitioner has established that there is a reasonable
likelihood that it will prevail upon consideration of this proposed ground of rejection.
H. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
Consideration of Its Proposed Grounds of Rejection Based on Any of the
MPH080 Publications in View of the IW60A Panel
The MPH080 Panel, as shown in the MPH080 Publications (Exhibits D and E), and the
IW60A Panel, as shown in the Robertson Brochure (Exhibit G, p. 9) are prior art under 35
U.S.C. 102(b), as discussed above. The IW60A Panel was disclosed in a reference cited during
prosecution of the 834 Patent (the Robertson Brochure, Exhibit G, p. 9), but the MPH080 Panel,
as disclosed in any of the MPH080 Publications, was not considered by the Examiner during
examination of the 834 Patent. The MPH080 Panel in view of the IW60A Panel is more similar
in overall visual appearance than the references cited during prosecution of the 834 Patent and is
non-cumulative.
As discussed above, the MPH080 Panel is a suitable primary reference. Further, the
design features of the IW60A Panel, including the size and shape of the recess portions, are
substantially the same as those of the BKR160 Panel. The overall length of the IW60A Panel is
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shorter than th