IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ATAS INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`CENTRIA,
`Patent Owner.
`
`
`Case Number: IPR2013-00259
`Patent D527,834
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`
`PRELIMINARY RESPONSE TO PETITION
`BY PATENT OWNER CENTRIA
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`TABLE OF CONTENTS
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`INTRODUCTION ...........................................................................................1
`I.
`THE ’834 PATENT.........................................................................................2
`II.
`III. THE ASSERTED PRIOR ART ......................................................................6
`A. THE MPS 120 PANEL........................................................................................6
`B. THE MPH 080 PANEL.......................................................................................7
`C. THE BKR 160 PANEL .......................................................................................9
`D. THE IW-60A PANEL .........................................................................................9
`E. CENTRIA’S ADMITTED PRIOR ART / THE FWDS-59 PANEL............................11
`IV. LEGAL PRINCIPLES AT ISSUE ................................................................13
`A. ANTICIPATION AND THE ORDINARY OBSERVER..............................................14
`B. OBVIOUSNESS .................................................................................................17
`V. ATAS HAS FAILED TO SHOW A REASONABLE LIKELIHOOD OF
`SUCCESS IN PROVING INVALIDITY OF THE ’834 PATENT ON ANY
`GROUND RAISED IN ITS PETITION .......................................................21
`A. THE PATENTED DESIGN IS NONOBVIOUS OVER THE MPS 120 PANEL IN VIEW
`OF THE BKR 160 PANEL .................................................................................22
`1. The MPS 120 Panel is Not a Suitable Primary Reference to
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`the ’834 Patent ...........................................................................................22
`2. The BKR 160 Panel is Not a Proper Secondary Reference.......................25
`3. The Combination of the MPS 120 and BKR 160 Panels Does Not
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`Render the ’834 Patent Obvious ................................................................27
`B. THE PATENTED DESIGN IS NONOBVIOUS OVER THE MPS 120 PANEL IN VIEW
`OF THE IW-60A PANEL...................................................................................31
`C. THE PATENTED DESIGN IS NOVEL OVER THE BKR 160 PANEL ......................32
`D. THE PATENTED DESIGN IS NONOBVIOUS OVER THE BKR 160 PANEL............37
`E. THE PATENTED DESIGN IS NONOBVIOUS OVER THE BKR 160 PANEL IN VIEW
`OF THE MPS 120 PANEL .................................................................................41
`F. THE PATENTED DESIGN IS NONOBVIOUS OVER THE MPH 080 PANEL IN VIEW
`
`OF THE BKR 160 PANEL .................................................................................42
`1. The MPH 080 Panel is Not a Proper Primary Reference .........................43
`2. The BKR 160 Panel is Not a Suitable Secondary Reference .....................45
`3. The Combination of the MPH 080 and BKR 160 Panels Does Not
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`Render the ’834 Patent Obvious ................................................................47
`G. THE PATENTED DESIGN IS NONOBVIOUS OVER THE MPH 080 PANEL IN VIEW
`OF THE IW-60A PANEL...................................................................................51
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`H. THE PATENTED DESIGN IS NOVEL OVER THE FWDS-59 PANEL.....................52
`I. THE PATENTED DESIGN IS NONOBVIOUS OVER THE FWDS-59 PANEL IN VIEW
`OF THE BKR 160 PANEL .................................................................................56
`VI. CONCLUSION..............................................................................................58
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`ii
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`TABLE OF AUTHORITIES
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`Cases
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`Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) ............... passim
`Arminak & Associates, Inc. v. Saint-Gobain Calmar, Inc.,
` 501 F.3d 1314 (Fed. Cir. 2007) ............................................................................15
`Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) .......................17
`Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008)....................14
`Gorham Mfg. Co. v. White, 81 U.S. 511 (1871) ......................................................14
`In re Borden, 90 F.3d 1570 (Fed. Cir. 1996).............................................. 17, 20, 25
`In re Harvey 12 F.3d 1061 (Fed. Cir. 1993)..................................................... 20, 21
`In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009)...........................................................31
`In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) ...........................................................13
`In re Mann, 861 F.2d at 1582 ..................................................................................16
`In re Rosen, 673 F.2d 388 (CCPA 1982)......................................................... passim
`In re Rubinfield, 270 F.2d 391 (CCPA 1959)................................................... 12, 34
`In re Stevens, 173 F.2d 1015 (CCPA 1949) ............................................................39
`Int’l Seaway Trading Corp. v. Walgreens Corp.,
` 589 F.3d 1233 (Fed. Cir. 2009) ............................................................................14
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................28
`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012)..............................40
`Munchkin, Inc. v. Luv’n Care, Ltd, Case No. IPR2013-00072
` (PTAB April 25, 2013).........................................................................................14
`Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009)........17
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`Statutes and Regulations
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`35 U.S.C. § 102................................................................................................. 14, 22
`35 U.S.C. § 103........................................................................................................14
`35 U.S.C. § 311(b) ...................................................................................................13
`37 C.F.R. § 1.152 .......................................................................................................2
`37 C.F.R. § 42.107 .....................................................................................................1
`37 C.F.R. § 42.107(b) ................................................................................................1
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`Other Authorities
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`Manual of Patent Examining Procedure § 1404.05.................................................34
`Manual of Patent Examining Procedure § 1503.02...................................................2
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Centria (“Centria”) hereby
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`submits this Preliminary Response to Petitioner ATAS International Inc.’s
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`(“ATAS”) Petition for Inter Partes Review of U.S. Design Patent No. D527,834
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`(“the ’834 Patent”). Under 37 C.F.R. § 42.107(b), this Preliminary Response is
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`timely filed within three months of the May 7, 2013 Notice of Filing Date
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`According to Petition and Time for Filing Patent Owner Preliminary Response.
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`I.
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`INTRODUCTION
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`Petitioner ATAS makes no fewer than nine independent and distinct
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`attempts to demonstrate to this Board that there is a reasonable likelihood the
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`claimed design of the ’834 patent is invalid. This approach highlights the
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`weakness of each argument standing alone. Every argument made by ATAS is
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`fatally flawed because none of the prior art asserted in its Petition looks
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`sufficiently close to any embodiment of the ’834 Patent to render obvious, let alone
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`anticipate, the claimed design. Moreover, nowhere does ATAS explain why or
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`how the combinations of references and the precise alleged modifications for
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`obviousness purposes would have occurred.
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`A serious threshold issue with ATAS’s Petition is that the Petition makes
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`various representations about the prior art in the form of visual depictions that are
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`not images from the prior art printed publications being relied on by ATAS. See,
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`e.g., Petition at 25-26, 34-35, 43-44 (submitting “prepared drawings” such as
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`perspective views that are not contained in the prior art printed publications). Such
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`drawings, which are assumed based on single end views in the actual prior art
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`publications, run the risk of distorting the appearance of various features of the
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`prior art panels. Indeed, this risk of misperception is precisely why the United
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`States Patent and Trademark Office requires design patent applications to include
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`“a sufficient number of views to constitute a complete disclosure of the appearance
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`of the design.” 37 C.F.R. § 1.152; see also Manual of Patent Examining Procedure
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`§ 1503.02 (“[I]t is of the utmost importance . . . that nothing regarding the design
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`sought to be patented is left to conjecture.”). Because these “prepared drawings”
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`are not prior art, and no evidence (only attorney argument) has been presented by
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`ATAS that the “prepared drawings” are fair and accurate without relying on
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`conjecture, Centria respectfully requests that the Board disregard the prepared
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`drawings and rely solely on the prior art itself. Throughout the remainder of this
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`Preliminary Response, Centria will rely only on the prior art as shown in the
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`printed publications relied on by ATAS.
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`II. THE ’834 PATENT
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`The ’834 Patent is directed to various embodiments of a building panel. See
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`generally Ex. 1001. In general, these building panels are ornamental architectural
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`products designed to be connected to one another (see, e.g., Ex. 1001 at 42) and
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`envelop a building or a portion of a building. These kinds of panels are generally
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`used in commercial, not residential, buildings. Thus, the typical purchasers of such
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`building panels are highly sophisticated and discerning purchasers such as
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`commercial architects, contractors, engineers, and/or project managers. Moreover,
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`for such panels, subtle differences in sizes, positions, dimensions, and angles can
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`be of great importance to such purchasers, for example, due to how such
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`differences will affect the look of the completed panel assembly and the way the
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`light will hit and reflect off of the panel and create shadows in different lighting
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`conditions to give an enveloped building the desired appearance.
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`ATAS’s Petition focuses on embodiment 7 (Figs. 37-42) of the ’834 Patent:
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`Ex. 1001, at 27-28. The various embodiments of the patented design share some
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`common characteristics that result in a consistent asymmetric and irregular
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`appearance:
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`Ex. 1001, at 4, 8, 12, 16, 20, 24, 28. Specifically, all of the embodiments have
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`both raised and recessed areas of contrasting proportions along the length of the
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`panel—i.e., the width of at least one of the raised areas is at least twice as wide as
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`any of the recessed areas. No embodiment has more than one or two recessed
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`areas. As shown above, the raised and recessed areas are also bounded by angled
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`portions having differing angles.
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`More specifically, when going from top to bottom of these side views, the
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`angled portions A (shown below) are more obtuse when sloping toward the front1
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`of the panel and the angled portions B (shown below) are more acute when sloping
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`toward the back2 of the panel, resulting in an overall asymmetry and irregularity of
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`the panel:
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`A
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`A
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`B
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`B
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`1 The front of each panel depicted above is the right side of each figure.
`2 The front of each panel depicted above is the left side of each figure.
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`The obtuse angles A are both equal, as are the acute angles B. The precise sizes,
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`positions, dimensions, and angles of the recesses of the panels claimed in the ’834
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`Patent give the panel designs a distinctive appearance not shown or suggested by
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`any of the prior art.
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`III. THE ASSERTED PRIOR ART
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`A.
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`The MPS 120 Panel
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`ATAS relies on three separate publications of the MPS 120 Panel in support
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`of its Petition:
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`ATAS’s Website, Ex. 1003.
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`The 2002 Sweet’s Catalog, Ex. 1004, at 7.
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`Ex. 1004, at 9. As can be seen from the three figures above, other than the
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`interlocking end portions, the MPS 120 is generally flat with a single small v-
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`shaped recessed area directly in the center of two equal raised portions. All of the
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`angles coming up and down from the raised portions are equal, yielding a perfectly
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`symmetrical profile. The recessed area comprises a small portion of the overall
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`length of the panel.
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`A similarly symmetrical panel with a v-shaped recess was contained in the
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`Robertson Brochure that was submitted during prosecution:
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`See Ex. 1007 at 12 (L-11 Panel).
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`B.
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`The MPH 080 Panel
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`ATAS relies on the MPH 080 Panel as shown in the Sweet’s Catalog in
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`support of its Petition:
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`Ex. 1004, at 8; Ex. 1005 at 17. The panel is also shown in Ex. 1003. The MPH
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`080 Panel includes only a single raised area at one end and has no intervening
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`recessed areas. The angled portions leading up to and down from the raised area
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`are equal, resulting in a symmetrical appearance.
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`Importantly, the MPH 080 Panel shown in Ex. 1004 is not tantamount to the
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`depictions of the MPH 080 panel in ATAS’s Petition:
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`Petition, at 43-44. These prepared drawings are admitted by ATAS to “depict two
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`interlocked MPH 080 Panels.” Id. at 42 (emphasis added). Regarding the number
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`of raised and recessed areas, the MPH 080 Panel thus comprises only half of what
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`is shown in ATAS’s Petition. To present two MPH 080 Panels juxtaposed with a
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`single ’843 Patent panel is highly misleading and presents and inaccurate and
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`unfair comparison. Even if ATAS is correct that “one of ordinary skill in the art
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`could easily understand and visualize the appearance of the two (or more)
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`interlocked MPH 080 Panels,” this does nothing to address the fact that the prior
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`art does not disclose any single panel that looks like the two interlocked MPH 080
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`Panels. Id. at 42.
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`Two other panels having a single raised area and no recesses were contained
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`in the Robertson Brochure that was submitted during prosecution:
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`See Ex. 1007 at 9 (IW-20A and IW-30A Panels).
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`C.
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`The BKR 160 Panel
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`ATAS relies on the 2002 Sweet’s Catalog to show the BKR160 panel:
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`Ex. 1004, at 11. The BKR 160 Panel has a series of three asymmetrically angled
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`recessed areas spaced equally apart between raised portions of equal length. The
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`recessed areas are each approximately 50% longer than the raised portions.
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`D.
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`The IW-60A Panel
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`The IW-60A Panel was submitted to the Examiner during prosecution of
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`the ’834 Patent. Ex. 1002, at 120-21. ATAS admits that this panel was prior art of
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`record. Petition, at 15. It appeared in the Robertson Brochure:
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`Ex. 1007, at 9. The same panel also appears in Ex. 1008:
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`Essentially, the IW-60A Panel has a series of two asymmetrically angled recessed
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`areas spaced equally apart between raised portions of equal length. The recessed
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`areas are each approximately 50% longer than the raised portions.
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`Other than the number of recessed portions (three versus two) and the
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`resulting difference in overall length, the IW-60A panel is virtually identical to the
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`BKR 160 Panel. Given the purpose for which the BKR 160 Panel is used in the
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`Petition—namely, only to teach the shape of the recessed areas and the possibility
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`of including multiple recessed areas (discussed further below)—the BKR 160
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`Panel is wholly cumulative of the IW-60A reference submitted during prosecution.
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`ATAS does not dispute that the prior art of record IW-60A Panel is
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`“substantially the same” in appearance to the BKR 160 Panel that ATAS now cites.
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`Petition, at 32 (“The overall length of the IW60A Panel is shorter than that of the
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`BKR160 Panel, however Petitioner respectfully submits that this and any other
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`differences between the IW60A Panel and the BKR160 Panel are de minimis.”).
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`E.
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`Centria’s Admitted Prior Art / The FWDS-59 Panel
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`ATAS relies on Centria’s admitted prior art during prosecution, as well as
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`the 2002 Sweet’s Catalog to establish that the following panels are prior art:
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`Ex. 1009; Ex. 1004, at 13. These panels, unlike all those discussed above, are solid
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`panels appearing to have a flat back with all recessed and interlocking portions
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`removed from the otherwise solid material. These panels contain a single recessed
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`area having asymmetrical angles. The interlocking portions at the top and bottom
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`have irregular shapes, where the bottom interlocking portion generally extends
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`toward the front of the panel and abruptly terminates instead of sloping back
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`toward the rear of the panel as in all the panels discussed above.
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`While ATAS attempts to conflate the admitted prior art/FWDS-59 Panel and
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`the contemporaneously cancelled Figs. 31-36 (Ex. 1010), Centria’s cancellation of
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`figures upon the submission of the prior art panels does not somehow convert the
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`figures into prior art that invalidate the ’834 Patent. ATAS’s logical fallacy is as
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`follows:
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`1.
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`The cancelled embodiment (Ex. 1010) was maintained in a
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`single application with the other embodiments;
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`2.
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`The cancelled embodiment is therefore deemed patentably
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`indistinct from the other embodiments (citing In re Rubinfield,
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`270 F.2d 391 (CCPA 1959));
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`3.
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`Centria cancelled the embodiment when it submitted the
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`admitted prior art (Ex. 1009);
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`4.
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`The cancelled embodiment was invalid over the admitted prior
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`art;
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`5.
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`“Therefore, any prior art reference or combination of references
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`that anticipates or renders obvious the Canceled Embodiment
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`must also anticipate or render obvious the claimed design of
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`the ’834 Patent.”
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`Petition, at 52-54. Step 4 of this fallacy is a legal conclusion without merit that is
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`disputed below because the cancelled figures cannot serve as a proper § 102 or
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`§ 103 reference. The cancellation of figures was not an admission of invalidity—
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`in fact, Centria expressly stated that “this is not an admission that these Figures,
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`nor any other Figures in the application, are rendered unpatentable over the
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`admitted prior art.” EX. 1002 at 64 (maintaining that “the admitted prior art is
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`substantially different from the Building Panel as shown and described in the
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`Figures”).
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`Step 5 effectively attempts to retroactively put back the cancelled
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`embodiment so as to invalidate it and thereby invalidate the ’834 Patent. But
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`ATAS’s burden is to invalidate the claimed design, not cancelled non-prior art
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`embodiments that are not part of the patent. Thus, Centria respectfully requests
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`that the Board reject ATAS’s muddled attempt to invalidate the ’834 Patent by
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`proxy instead of satisfying its statutory burden to prove invalidity “only on a
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`ground that could be raised under section 102 or 103 and only on the basis of prior
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`art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
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`IV. LEGAL PRINCIPLES AT ISSUE
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`The scope of a design patent is deemed to be the overall appearance of the
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`design, and is dictated by the drawings in the patent. In re Mann, 861 F.2d 1581,
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`1582 (Fed. Cir. 1988). At issue in this proceeding is whether ATAS has proven
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`there is a reasonable likelihood that the claimed design of the ’834 Patent is invalid
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`for anticipation under 35 U.S.C. § 102 or obviousness under 35 U.S.C. § 103. See
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`Munchkin, Inc. v. Luv’n Care, Ltd, Case No. IPR2013-00072 (PTAB April 25,
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`2013) (applying “reasonable likelihood” standard in design patent petition).
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`A. Anticipation and the Ordinary Observer
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`Whether a claimed design is anticipated is determined by applying what is
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`called the “ordinary observer test.” Int’l Seaway Trading Corp. v. Walgreens
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`Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009). In general, the ordinary observer test
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`is expressed as follows: “if, in the eye of an ordinary observer, giving such
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`attention as a purchaser usually gives, two designs are substantially the same, if the
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`resemblance is such as to deceive such an observer, inducing him to purchase one
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`supposing it to be the other . . . .” Gorham Mfg. Co. v. White, 81 U.S. 511, 528
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`(1871). The Federal Circuit, sitting en banc, recently clarified that the ordinary
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`observer is deemed to be “familiar with the prior art.” Egyptian Goddess, Inc. v.
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`Swisa, Inc., 543 F.3d 665, 682-83 (Fed. Cir. 2008). “An ordinary observer,
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`comparing the claimed and accused designs in light of the prior art, will attach
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`importance to differences between the claimed design and the prior art depending
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`on the overall effect of those differences on the design.” Id. at 677.
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`The ordinary observer is also deemed to be the ordinary purchaser of the
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`product in which the design is embodied. Arminak & Associates, Inc. v. Saint-
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`Gobain Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007) (holding that the
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`ordinary observer was a sophisticated industrial buyer, not an end user/consumer).
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`As explained above, in this case the ordinary observer would be a purchaser such
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`as a commercial architect, contractor, engineer, and/or project manager. Such
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`purchasers are highly sophisticated and discerning, and are likely to pay close
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`attention to detail given the importance and impact that small changes in a building
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`panel can have on the appearance of the building envelope.
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`The Federal Circuit recently found one of the Apple iPhone design patents
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`(below, left) novel over a Japanese patent reference (below, right), holding:
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`When the claimed portion of the side view is taken into account, the
`differences between the arched, convex front of the ’638 reference
`distinguish it from the perfectly flat front face of the D’087 patent.
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`Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1326-27 (Fed. Cir. 2012).
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`Given the relatively focused scope of design patent protection, In re Mann, 861
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`F.2d at 1582, Apple shows that a reference must be very close to a patented
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`design—virtually identical—before a finding of anticipation can stand. Moreover,
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`it should be noted that the products involved in Apple were consumer electronics,
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`where the ordinary observer is the ordinary consumer, not a particularly
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`sophisticated purchaser. If an ordinary consumer would discern differences of the
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`type shown above in the Apple case, surely a more sophisticated professional buyer
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`could not be deceived by that degree of similarity.
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`B. Obviousness
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`The Federal Circuit recently summarized the obviousness analysis as
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`follows:
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`In addressing a claim of obviousness in a design patent, “the ultimate
`inquiry . . . is whether the claimed design would have been obvious to
`a designer of ordinary skill who designs articles of the type involved.”
`[Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375
`(Fed. Cir. 2009)], quoting Durling v. Spectrum Furniture Co., 101
`F.3d 100, 103 (Fed. Cir. 1996). 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,” id. at 1381,
`the finder of fact must employ a two-step process. First, “one must
`find a single reference, ‘a something in existence, the design
`characteristics of which are basically the same as the claimed
`design.’” Durling, 101 F.3d at 103, quoting In re Rosen, 673 F.2d 388,
`391 (CCPA 1982). Second, “other references may be used to modify
`[the primary 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., quoting In re Borden,
`90 F.3d 1570, 1575 (Fed. Cir. 1996).
`Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329-30 (Fed. Cir. 2012).
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`In Apple, the Federal Circuit clarified that a primary or Rosen reference
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`cannot be deemed basically the same due to shared “design concepts” or high level
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`similarity. What matters is whether the appearance of the prior art reference is
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`“basically the same,” which is an inquiry that cannot be done correctly at “too high
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`a level of abstraction.” Id. at 1331-1332. In considering Apple’s design patent
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`covering its iPad product, the Federal Circuit flatly rejected the district court’s
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`deeming another tablet, Fidler, as a primary reference “simply by disclosing a
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`rectangular tablet with four evenly rounded corners and a flat back.” Id. at 1332
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`(citing Durling, 101 F.3d at 104 (“The error in the district court’s approach is that
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`it construed [the] claimed design too broadly.”).
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`In deciding that the Fidler reference could not serve as a primary reference, the
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`Federal Circuit contrasted the symmetry of Apple’s design with the asymmetry of
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`the Fidler reference, as well as the more prominently delineated and sunken
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`“picture frame” effect of Fidler compared with the edge to edge glass of the Apple
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`design. Id. at 1330-31 (pointing out additional noticeable differences).
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`
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`Assuming, arguendo, that Fidler was a proper primary reference, the Federal
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`Circuit also rejected the district court’s reliance on another tablet, the TC1000, as a
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`secondary reference to be combined with Fidler.
`
`
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`
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`Id. at 1329. The TC1000 was relied on by the district court for its “flat glass
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`screen and the thin rim that surrounds the front face of the device,” which was
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`lacking in Fidler. Id. at 1330. But the Federal Circuit said that the TC1000 was
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`not eligible to be used as a secondary reference—it “could not bridge the gap
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`between Fidler and the D’889 design” because “[t]he TC1000 is so different in
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`visual appearance from the Fidler reference that it does not qualify as a comparison
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`reference under that standard.” Id. at 1331 (emphasizing the flat glass front, gray
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`surrounding area, metallic rim, and indicator lights as visually significant
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`differences between Fidler and TC1000) (citing In re Borden, 90 F.3d at 1575
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`(“[T]he teachings of prior art designs may be combined only when the designs are
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`so related that the appearance of certain ornamental features in one [design] would
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`suggest the application of those features to the other.”) and In re Rosen, 673 F.2d
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`at 391 (rejecting the primary reference where “modifications of [it] necessary to
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`achieve [the patented] design would destroy the fundamental characteristics” of
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`that reference)).
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`In re Harvey provides additional clarity as to when a design may be a proper
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`Rosen reference and when a combination or modification may be considered
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`obvious. 12 F.3d 1061 (Fed. Cir. 1993). The claimed designs in Harvey were
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`directed to “vase[s] formed by the intersection of two geometric solids”:
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`Id. at 1062, 1067-68. The prior art included an earlier design made by Harvey
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`having a spherical vase with a superimposed cube:
`
`
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`Id. at 1062, 1067. The Federal Circuit held that significant modifications would be
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`required to produce the claimed design from the prior art design, and so the
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`reference could not be used as a primary reference. Id. at 1063, 1065. Harvey
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`ultimately held the design to be nonobvious, explaining that “if prior art designs
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`are to be modified in more than one respect to render a claimed design obvious,
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`then those modifications must be ‘de minimis’ in nature and unrelated to the
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`overall aesthetic appearance of the design.” Id. at 1065.
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`
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`
`
`V. ATAS HAS FAILED TO SHOW A REASONABLE LIKELIHOOD OF
`SUCCESS IN PROVING INVALIDITY OF THE ’834 PATENT ON ANY
`GROUND RAISED IN ITS PETITION
`
`For convenience, the prior art panel publications below will each be
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`identified collectively simply by reference to the panel number—e.g., “MPS 120
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`Panel” will refer to the prior art publications shown in Exhibits 1003 and 1004.
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`Centria does not admit or concede that these prior art printed publications represent
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`21
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`actual products that were used, sold, or offered for sale so as to otherwise qualify
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`as prior art under 35 U.S.C. § 102.
`
`
`
`A.
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`The Patented Design is Nonobvious Over The MPS 120 Panel
`In View of the BKR 160 Panel
`
`1.
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`The MPS 120 Panel is Not a Suitable Primary Reference
`To the ’834 Patent
`
`
`A primary reference must be “basically the same” in appearance as the
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`patented design. In re Rosen, 673 F.2d 388, 391 (CCPA 1982). The MPS 120 is
`
`not. Overall, the ’834 Patented embodiments are noticeably asymmetrical,
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`whereas the MPS 120 Panel is symmetrical. Since ATAS focuses on the seventh
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`embodiment (Figs. 37-42) of the ’834 Patent, Centria will as well. As discussed
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`above in Part II, the raised and recessed areas of the patented panel are bounded by
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`angled portions having differing angles, resulting in an overall asymmetry and
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`irregularity of the panel:
`
`
`
`
`
`
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`In stark contrast, the MPS 120 Panel has raised areas bounded by angled portions
`
`at each end of the panel, the raised areas being separated by a recessed area with
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`sidewalls that slant down and in at the same angle, creating an entirely symmetrical
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`profile with a symmetrical “v” shape in the center:
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`22
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`
`This fundamental symmetry/asymmetry difference in the overall appearances of
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`
`
`the two panels should alone disqualify the MPS 120 Panel as a primary reference.
`
`But there is another major difference in the overall appearances of these two
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`panels that even further removes the MPS 120 Panel from the patented design—the
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`MPS 120 Panel generally looks much more flat than the seventh embodiment of
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`the ’834 Patent. In short, the MPS 120 Panel has significantly wider raised areas
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`and a significantly shorter and more shallow recessed area. See Exs. 1003; 1004,
`
`at 7 (showing measurements).
`
`The flatness in the MPS 120 Panel is most directly due to the fact that the
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`MPS 120 Panel’s raised areas are proportionately much wider than those of
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`the ’834 Patent as compared with the overall length of the panels. The raised areas
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`of the MPS 120 Panel comprise approximately 83% of the overall length, whereas
`
`in the seventh embodiment of the ’834 Patent the raised areas comprise
`
`approximately 70% of the overall length.
`
`This greater degree of flatness of the MPS 120 Panel is further accentuated
`
`by the comparatively small width of the recessed area in the MPS 120 Panel. The
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`23
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`recessed area of the MPS 120 Panel comprises only about 8% of the overall length,
`
`whereas the recessed area of the seventh embodiment of the ’834 Patent is nearly
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`twice as wide proportionally—14% of the overall length. Moreover, as ATAS
`
`concedes (see Petition, at 30), the depth of the central recess in the MPS 120 Panel
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`is proportionally shallower than the recessed area of the seventh embodiment of
`
`the ’834 Patent. Specifically, the depth of the recessed area in the MPS 120 Panel
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`is approximately 3% of the overall length of the panel and the depth of the recessed
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`area of the seventh embodiment of the ’834 Patent is approximately 5% of the
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`overall length.
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`Altogether, the seventh embodiment of the ’834 Patent has a pronounced
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`irregular undulating look, as opposed to the MPS 120 Panel’s general flatness with
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`a small v-shaped notch in the middle. This, especially when combined with the
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`stark contrast in symmetries between the two panels, removes any possibility that
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`these panels might have overall appearances that are “basically the same.” As in
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`Apple, only if one were to erroneously evaluate the design at some inappropriately
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`high level of abstraction—e.g., “building panels with a recessed area in between
`
`two raised areas”—would one be able to deem such a panel as “basically the same”
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`as ATAS has done. 678 F.3d at 1332 (rejecting the finding that a reference could
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`be a proper primary reference “simply