UNITED STATES PATENT AND TRADEMARK OFFICE
`---------------------
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`---------------------
`
`ATAS INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`CENTRIA
`Patent Owner
`
`---------------------
`Case IPR2013-00259
`Patent D527834
`---------------------
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. D527,834
`PURSUANT TO 35 U.S.C. § 311 AND 37 C.F.R. § 42.100
`
`(REPLACEMENT FILING DATED MAY 10, 2013)
`
`
`
`
`
`

`

`
`
`IX. 
`
`X. 
`
`TABLE OF CONTENTS
`INTRODUCTION .............................................................................................................. 1 
`I. 
`NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. § 42.8(b)(1) ................. 1 
`II. 
`NOTICE OF RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) ............................. 1 
`III. 
`NOTICE OF LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(b)(3) ......... 1 
`IV. 
`NOTICE OF SERVICE INFORMATION UNDER 37 C.F.R. § 42.8(b)(4) ..................... 1 
`V. 
`CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ... 2 
`VI. 
`VII.  CERTIFICATION OF SERVICE UNDER 37 C.F.R. §§ 42.6(e)(4) AND 42.105(a) ....... 2 
`VIII.  STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R. §§ 42.22(a)(1)
`AND 42.104(b)(1)-(2) ......................................................................................................... 2 
`STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R. §
`42.104(b)(3) ........................................................................................................................ 4 
`SUMMARY OF PRIOR ART PRINTED PUBLICATIONS RELIED UPON IN THE
`PRESENT PETITION FOR INTER PARTES REVIEW .................................................. 6 
`A. 
`ATAS, Inc. Model MPS120 Panel .......................................................................... 7 
`1. 
`Introduction .............................................................................................. 7 
`2. 
`ATAS Web Page (www.atas.com) ........................................................... 7 
`3. 
`2002 Sweet’s Catalog File, Volume 4 ...................................................... 8 
`4. 
`2002 ATAS Metal Wall Panels Brochure .............................................. 10 
`ATAS, Inc. RIGID-Wall™ Panel ......................................................................... 11 
`1. 
`Introduction ............................................................................................ 11 
`2. 
`2002 Sweet’s Catalog File, Volume 4 .................................................... 11 
`3. 
`2002 ATAS Metal Wall Panels Brochure .............................................. 11 
`Centria Model IW60A Panel ................................................................................ 12 
`C. 
`ATAS, Inc. Model MPH080 Panel ....................................................................... 12 
`D. 
`Centria Model FWDS-59 Panel ............................................................................ 14 
`E. 
`OVERVIEW OF THE ‘834 PATENT .............................................................................. 14 
`A. 
`Background ........................................................................................................... 14 
`B. 
`Prosecution and Enforcement History .................................................................. 14 
`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
`
`B. 
`
`XI. 
`
`XII. 
`
`
`
`ii
`
`

`

`B. 
`
`3. 
`
`4. 
`
`LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C.
`§ 314.................................................................................................................................. 16 
`A. 
`The Applicable Legal Standards ........................................................................... 17 
`1. 
`Obviousness ........................................................................................... 17 
`2. 
`Anticipation ............................................................................................ 21 
`3. 
`Multiple Embodiments ........................................................................... 21 
`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..................................... 22 
`1. 
`MPS120 Panel as compared to FIGS. 37-41 of the ‘834 Patent ............ 23 
`2. 
`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 ................................................................................ 25 
`Any of the BKR160 Publications, which show the BKR160 Panel, is a
`suitable secondary reference for modifying any of the MPS120
`Publications ............................................................................................ 29 
`The ‘834 Patent is unpatentable under 35 U.S.C. § 103(a) over the
`MPS120 Panel in view of the BKR160 Panel ........................................ 29 
`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 ............................................................. 31 
`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) ................................................................................... 33 
`1. 
`The BKR160 Panel as compared to FIGS. 37-41 of the ‘834 Patent ..... 34 
`2. 
`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 ............................................................................................ 36 
`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) ................................................................................... 38 
`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 ..................................... 40 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`
`
`iii
`
`

`

`G. 
`
`3. 
`
`4. 
`
`2. 
`
`3. 
`
`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..................................... 42 
`1. 
`The MPH080 Panel as compared to FIGS. 37-41 of the ‘834 Patent .... 43 
`2. 
`Any of the MPH080 Publications, which show the MPH080 Panel, is a
`suitable primary reference, having the same basic design characteristics
`as the claimed design .............................................................................. 46 
`Any of the BKR160 Publications, which show the BKR160 panel, is a
`suitable secondary reference for modifying any of the MPH080
`Publications ............................................................................................ 49 
`The ‘834 Patent is unpatentable under 35 U.S.C. § 103(a) as obvious
`over the MPH080 Panel in view of the BKR160 Panel ......................... 49 
`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 ............................................ 53 
`There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
`Consideration of Its Proposed Grounds of Rejection Based on the FWDS-59
`Panel (Anticipation) .............................................................................................. 54 
`Patentably indistinct embodiment later canceled by Patentee should be
`1. 
`considered for anticipation and obviousness analysis ............................ 55 
`The FWDS-59 Panel as compared to patentably indistinct embodiment
`later canceled by Patentee ...................................................................... 56 
`The ‘834 Patent is unpatentable under 35 U.S.C. § 102(b) as being
`anticipated by the FWDS-59 Panel ........................................................ 57 
`There is a Reasonable Likelihood that the Petitioner Will Prevail Upon
`Consideration of Its Proposed Grounds of Rejection Based on the FWDS-59
`Panel in view of any one of the BKR160 Publications ......................................... 58 
`XIII.  CONCLUSION ................................................................................................................. 60 
`
`
`H. 
`
`I. 
`
`J. 
`
`
`
`iv
`
`

`

`Table of Exhibits
`
`Exhibit 1001
`
`U.S. Patent No. D527,834
`
`Exhibit 1002
`
`Prosecution history of U.S. Patent No. D527,834
`
`Exhibit 1003
`
`Exhibit 1004
`
`ATAS Website content from December 3, 2000 showing ATAS
`MPS120 Panel
`
`2002 Sweet’s 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 1005
`
`Declaration of Noah A. Sharkan; Summer 2000 Sweet’s CD,
`showing ATAS MPS120 and MPH080 Panels
`
`Exhibit 1006
`
`Declaration of Theodorus Bus
`
`Exhibit 1007
`
`“Commercial & Industrial Metal Wall Systems” Robertson
`Product Brochure (dated 1994) showing IW60A Panel (prior art
`of record from D527,834)
`
`Exhibit 1008
`
`Centria Technical Data Manual dated December 1996 showing
`IW60A Panel
`
`Exhibit 1009
`
`Admitted Art Not Considered By Examiner
`
`Exhibit 1010
`
`Canceled Original Figures 31-36 of U.S. Patent No. D527,834
`
`Exhibit 1011
`
`ATAS Website content from August 15, 2000 showing Sweet’s
`CD information
`
`Exhibit 1012
`
`Declaration of Teresa Warmkessel
`
`
`
`v
`
`

`

`I. INTRODUCTION
`The present document is a petition (hereinafter “Petition”) for inter partes
`
`
`
`review of the sole claim of U.S. 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 1001 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. 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)
`
`
`
`1
`
`

`

`Petitioner may be served as follows:
`
`DESIGN IP, P.C.
`5100 W. Tilghman St., Suite 205
`Allentown, PA 18104
`
`VI. CERTIFICATION OF GROUNDS FOR STANDING UNDER 37
`C.F.R. § 42.104(a)
`Petitioner hereby certifies that U.S. Patent No. D527,834 is available for inter
`
`e-mail: damonneagle@designip.com
`phone: 610-395-4900
`fax: 610-680-3312
`
`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 Owner’s counsel of record at the following
`
`address, pursuant to 37 C.F.R. §§ 42.6(e)(3) and 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)
`
`
`
`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:
`
`(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;
`
`
`
`3
`
`

`

`(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
`
`(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,
`
`
`
`4
`
`

`

`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.
`
`
`
`
`
`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.
`
`
`
`5
`
`

`

`
`
`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. See In 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
`
`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
`
`
`
`6
`
`

`

`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. Introduction
`
`As 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 1003. The URL of the Wayback Machine archive is
`
`provided in Exhibit 1003.
`
`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
`
`
`
`7
`
`

`

`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,
`
`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 1006; 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 Sweet’s Catalog File, Volume 4
`
`The MPS120 Panel also appears in Volume 4 of the 2002 Sweet’s Catalog
`
`File (hereinafter “2002 Sweet’s Catalog”), attached hereto in pertinent part as
`
`Exhibit 1004. The 2002 Sweet’s Catalog included an ATAS, Inc. Wall Panels
`
`
`
`8
`
`

`

`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 Sweet’s Catalog is a printed publication upon a satisfactory
`
`showing that the Sweet’s 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 1006), the 2002 Sweet’s 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 Sweet’s Catalog at page 4). Further, the same ATAS, Inc. Wall Panels
`
`product brochure that is featured in the 2002 Sweet’s 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 1012, hereinafter
`
`“Warmkessel Declaration”), the 2002 Sweet’s 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
`
`Sweet’s Catalog was added to the card catalog of the Free Library of Philadelphia
`
`
`
`9
`
`

`

`on May 25, 2002 (Warmkessel Declaration ¶¶2-5). Based on the foregoing, the
`
`2002 Sweet’s 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 Sweet’s 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 Sweet’s
`
`Catalog is prior art to the ‘834 Patent under 35 U.S.C. § 102(b).
`
`4. 2002 ATAS Metal Wall Panels Brochure
`
`The 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 1004 (see pp. 5-7 and 9 of Exhibit 1004). 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 1006), the 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,
`
`
`
`10
`
`

`

`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. Introduction
`
`As 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 Sweet’s Catalog File, Volume 4
`
`The BKR160 Panel appears in the 2002 Sweet’s Catalog (Exhibit 1004, 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 Brochure
`
`
`
`11
`
`

`

`The BKR160 Panel appears on page 6 of the ATAS Brochure (Exhibit 1004,
`
`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).
`
`C. Centria Model IW60A Panel
`
`The Centria model IW60A Panel (hereafter “IW60A Panel”) is prior art of
`
`record for the ‘834 Patent (see Exhibit 1002, 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 1007.
`
`D. ATAS, Inc. Model MPH080 Panel
`
`The ATAS, Inc. model MPH080 panel (hereafter “MPH080 Panel”) is
`
`shown in the 2002 Sweet’s Catalog (Exhibit 1004, pp. 5, 6, and 8) and the ATAS,
`
`Inc. Wall Panels Brochure (Exhibit 1004, see pp. 5, 6, and 8). As set forth above
`
`in sections X.A.3. and X.A.4., respectively, the 2002 Sweet’s 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 Sweet’s CD
`
`(hereafter “Sweet’s CD”), screenshots of which are attached hereto as Exhibit
`
`1005. As reflected in the declaration of Noah A. Sharkan, attached hereto as part
`
`of Exhibit 1005, the screenshots included in Exhibit 1005 are true and accurate
`
`representations of the images accessible via the Sweet’s CD on a Windows-based
`
`
`
`12
`
`

`

`personal computer. The Sweet’s CD software includes, among other things, a
`
`CAD illustration of the MPH080 Panel (see Exhibit 1005, p. 14) and a CAD file of
`
`the MPH080 Panel that can be saved and opened in CAD software (see Exhibit
`
`1005, pp. 15 and 16).
`
`Images taken of the Sweet’s CD and product packaging (Exhibit 1005, pp.
`
`1-9) indicate that the Sweet’s CD was distributed by Sweet’s Group, a division of
`
`McGraw Hill, via US mail with a mailing permit. Further, Sweet’s Internet
`
`webpage “http://www.sweets.com/topic/swprod.htm”, as archived by the Wayback
`
`Machine on August 15, 2000 and attached hereto as Exhibit 1011, indicates that
`
`the Sweet’s CD is updated and distributed quarterly. As reflected in the Bus
`
`Declaration (Exhibit 1006), the 2000 Sweet’s CD was even more widely
`
`distributed than the 2002 Sweet’s 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 Sweet’s 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 Sweet’s CD, and the representations of the MPH080 Panel
`
`appearing therein, are prior art to the ‘834 Patent under 35 U.S.C. § 102(b).
`
`
`
`13
`
`

`

`The portions of the 2002 Sweet’s Catalog, ATAS Brochure, and Sweet’s 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 Sweet’s Catalog and the ATAS Brochure (Exhibit 1004, see pp. 12 and
`
`13). As set forth above in Sections X.A.3. and X.A.4, respectively, the 2002
`
`Sweet’s 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. 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.
`
`
`
`A restriction requirement was mailed on August 25, 2005 (hereinafter
`
`“Restriction Requirement”), requiring restriction to one of the inventions of Group
`
`
`
`14
`
`

`

`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 Examiner’s 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. Patent Application No. 29/253,797, which later issued on March 20, 2007 as
`
`U.S. 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
`
`
`
`15
`
`

`

`Exhibit 1009 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 1010.
`
`
`
`
`
`The Issue Fee was paid on February 28, 2006.
`
`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. 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
`
`
`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.
`
`
`
`16
`
`

`

`THERE IS A REASONABLE LIKELIHOOD THAT THE
`REQUESTER WILL PREVAIL UNDER 35 U.S.C. § 314
`A. The Applicable Legal Standards
`
`1. Obviousness
`
`Proposed rejections set forth below represent a