Trials@uspto.gov
`Tel: 571-272-7822
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`
`Paper 11
`Entered: September 24, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ATAS INTERNATIONAL, INC.
`Petitioner
`
`v.
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`CENTRIA
`Patent Owner
`_______________
`
`Case IPR2013-00259
`Patent D527834 S
`_______________
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`
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and TRENTON A. WARD,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: September 24, 2013
`
`
`
`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 S
`_______________
`
`
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and TRENTON A. WARD,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
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`Case IPR2013-00259
`Patent D527834 S
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`I. INTRODUCTION
`A. Background
`ATAS International, Inc. (“ATAS”) filed a petition (Paper 2) to institute an
`inter partes review of Patent D527,834 (the “’834 patent”) pursuant to 35 U.S.C.
`§ 311 et seq. Subsequently, ATAS filed a replacement petition. Paper 7 (“Pet.”).
`Centria filed a preliminary response. Paper 10 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314. We conclude that ATAS has not satisfied the
`burden to show, under 35 U.S.C. § 314(a), that there is a reasonable likelihood that
`it would prevail with respect to the ’834 patent’s single claim. Therefore, the
`petition is denied.
`B. Related Proceedings
`The parties identify pending litigation in the United States District Court for
`the Western District of Pennsylvania concerning the ’834 patent styled Centria v.
`ATAS International, Inc., currently stayed. 2:13-cv-309 (W.D. Pa. May 16, 2013).
`C. The Challenged Patent
`The ’834 patent (Ex. 1001), entitled “Building Panel,” issued on September
`5, 2006, and is assigned to Centria. The claim of the ’834 patent recites “[t]he
`ornamental design for a building panel as shown and described.” The ’834 patent
`includes 42 figures in total: seven embodiments made up of six figures each. The
`Petition and Preliminary Response focus on the seventh embodiment (Figures 37-
`42)1, reproduced below.
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`1 For convenience in presentation, some of the Figures from the ’834 patent were
`reduced in size.
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`Figure 37 is a perspective view of a seventh embodiment of the claimed
`building panel design. Ex. 1001 at 27. Figures 38-41 show left, front, bottom, and
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`top views, respectively, of the building panel design. Id. at 28-29. Figure 42 is a
`perspective view of two building panels attached together. Id. at 30.
`D. Asserted Grounds of Unpatentability
`ATAS asserts, as prior art, five building panels depicted in various
`publications. ATAS contends that the ’834 patent’s claim is unpatentable under 35
`U.S.C. §§ 102 and/or 103 based on those five panels as follows (Pet. 3-4):
`Reference[s]2
`
`Basis
`MPS120 + BKR160
`§ 103
`MPS120 + IW60A
`§ 103
`BKR160
`§ 102
`BKR160
`§ 103
`BKR160 + MPS120
`§ 103
`MPH080 + BKR160
`§ 103
`MPH080 + IW60A
`§ 103
`FWDS-59
`§ 102
`FDWS-59 + BKR160
`§ 103
`
`2 “MPS120” refers to a building panel that ATAS alleges appeared (1) on an
`Internet web page at least as early as December 3, 2000 (Ex. 1003) and (2) in a
`2002 ATAS Metal Wall Panels Brochure included in the 2002 edition of Sweet’s
`Catalog of building materials (Ex. 1004 at 5-7, 9). “BKR160” refers to a building
`panel that ATAS alleges appeared in a 2002 ATAS Metal Wall Panels Brochure
`included in the 2002 edition of Sweet’s Catalog of building materials (Ex. 1004 at
`10-11). “IW60A” refers to a panel that ATAS alleges appeared in a 1994 brochure
`named “Commercial & Industrial Metal Wall Systems” (Ex. 1007). “MPH080”
`refers to a panel that ATAS alleges appeared (1) in a 2002 ATAS Metal Wall
`Panels Brochure included in the 2002 edition of Sweet’s Catalog of building
`materials (Ex. 1004 at 5-6, 8) and (2) on a CD of CAD illustrations published by
`Sweet in the summer of 2000 (Ex. 1005 at 14-16). “FDS-59” refers to a panel that
`ATAS alleges appeared in a 2002 ATAS Metal Wall Panels Brochure included in
`the 2002 edition of Sweet’s Catalog of building materials (Ex. 1004 at 12-13).
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`II. PRINCIPLES OF LAW
`A. Anticipation
`The sole test for anticipation of a design patent is the same as that used for
`infringement—the ordinary observer test. Int’l Seaway Trading Corp. v.
`Walgreens Corp., 589 F.3d 1233, 1240 (2009). The only difference between the
`test when applied to anticipation and infringement is that in the case of
`infringement, courts compare the patented design with the accused design, and in
`the case of anticipation, the patented design is compared with the alleged
`anticipatory reference. Id. at 1238.
`The “ordinary observer” test was first enunciated by the Supreme Court in
`Gorham Co. v. White, 81 U.S. 511 (1871), as a test for infringement of a design
`patent and was stated as follows:
`[I]f, in the eye of an ordinary observer, giving such attention as a
`purchaser usually gives, two designs are substantially the same, if the
`resemblance is such as to deceive such an observer, inducing him to
`purchase one supposing it to be the other, the first one patented is
`infringed by the other.
`
`Id. at 528. The ordinary observer test requires consideration of the prior art and
`claimed design as a whole. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d
`665, 681 (Fed. Cir. 2008). “[T]he ordinary observer is a person who is either a
`purchaser of, or sufficiently interested in, [the asserted prior art designs] and who
`has the capability of making a reasonably discerning decision when observing the
`accused item’s design whether the accused item is substantially the same as the
`item claimed in the design patent.” Arminak and Assocs., Inc. v. Saint-Gobain
`Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007).
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`B. Obviousness
`The ultimate inquiry in addressing a claim of obviousness in a design patent
`is “whether the claimed design would have been obvious to a designer of ordinary
`skill who designs articles of the type involved.” Apple, Inc. v. Samsung Elecs. Co.,
`Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (quoting Durling v. Spectrum Furniture
`Co., 101 F.3d 100, 103 (Fed.Cir.1996)). This inquiry consists of two steps. Id.
`First, a primary reference must be found “the design characteristics of which are
`basically the same as the claimed design.” Id. (quoting In re Rosen, 673 F.2d 388,
`391 (CCPA 1982)). “Under the first step, a court must both ‘(1) discern the correct
`visual impression created by the patented design as a whole; and (2) determine
`whether there is a single reference that creates “basically the same” visual
`impression.’” High Point Design LLC v. Buyer’s Direct, Inc., slip op at *12 (Fed.
`Cir. Sept. 10, 2013).
`Second, the primary reference may be modified by secondary references “to
`create a design that has the same overall visual appearance as the claimed design.”
`Id. (citing Durling 101 F.3d at 103). “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 Durling, 101 F.3d at
`103) (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996))).
`The role of the designer of ordinary skill “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.” Int’l Seaway, 589
`F.3d at 1240. “Once that piece of prior art has been constructed, obviousness, like
`anticipation, requires application of the ordinary observer test[.]” Id.
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`III. ANALYSIS
`A. Claim Construction
`As a step in our analysis for determining whether to institute a trial, we
`determine the meaning of the claims. Consistent with the statute and the
`legislative history of the Leahy-Smith America Invents Act (“AIA”), the Board
`will interpret claims using the broadest reasonable construction. See Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 CFR
`§ 42.100(b).
`Design patents typically are claimed as shown in drawings, and claim
`construction is adapted accordingly. Egyptian Goddess, 543 F.3d at 679. A
`detailed verbal description of the claim, as is done often in the case of utility
`patents, is not needed. Id. (citing Contessa Food Prods., Inc. v. Conagra, Inc.,
`282 F.3d 1370, 1377 (Fed. Cir. 2002)). Indeed, “the preferable course ordinarily
`will be for [us] not to attempt to ‘construe’ a design patent claim by providing a
`detailed verbal description of the claimed design.” Egyptian Goddess, 543 F.3d at
`679.
`
`The claim of the ’834 patent recites “[t]he ornamental design for a building
`panel, as shown and described.” The ’834 patent shows seven embodiments of a
`building panel. The left side elevational view of each embodiment (Figures 2, 8,
`14, 20, 26, 32, and 38) is reproduced below for comparison.
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`The “DESCRIPTION” portion of the ’834 patent identifies the various
`views of the building panel embodiments depicted in the figures, and additionally
`states that “[t]he broken lines are for illustrative purposes only and form no part of
`the claimed design” and that “[t]he claimed design is broken on one side to
`indicate indefinite length.” Ex. 1001 at 2. We construe the claim to be the
`ornamental design of the building panel, as illustrated in Figures 1-42, except that
`the broken lines do not form part of the claimed design.
`Additionally, we find it helpful to describe verbally certain features of the
`claim. See Egyptian Goddess, 543 F.3d at 680 (“While it may be unwise to
`attempt a full description of the claimed design, a court may find it helpful to point
`out . . . various features of the claimed design as they relate to the accused design
`and the prior art.”); see also High Point Design at *16 (holding that a district court
`erred by failing to translate the design into a verbal description for purposes of an
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`non-obviousness analysis). The seven embodiments of the patented design share
`several common characteristics. All seven have both raised and recessed areas
`along the length of the panels. See Prelim. Resp. 4. All panels have either one or
`two recessed well-type areas. Id. at 5. Each of the recessed well-type areas is
`bounded by angled portions having differing angles. All panels have two or three
`raised areas. The width of at least one of the raised areas is at least twice as wide
`as any of the recessed areas. Id. at 5. Together, these characteristics result in each
`of the seven embodiments having an overall asymmetric and irregular appearance.
`B. The Ordinary Observer
`The ’834 patent is directed to the design of a building panel. Ex. 1001. In
`general, the building panels are designed to be connected to one another. See, e.g.,
`Ex. 1001 Fig. 42. The panels generally are used in commercial buildings. Prelim.
`Resp. 2-3; see also Pet. 10 (citing Ex. 1006) (stating that the prior art Sweet’s
`Catalog is a comprehensive series of indexed commercial catalogs for building
`materials). Thus, a typical purchaser of such a building panel would be a
`sophisticated buyer—a commercial architect, contractor, engineer, and/or project
`manager.
`C. ATAS’s Prepared Drawings
`ATAS includes in its Petition several “prepared drawings” that show
`“perspective, profile, front, top and bottom views which accurately depict” the
`asserted prior art designs “to scale” and are “created from the drawings appearing”
`in the prior art. Pet. 23-24; see, e.g., 34, 44. These drawings are not evidence
`themselves. Moreover, ATAS does not reveal who created the drawings or
`provide any persuasive evidence that these drawings are accurate representations
`of the prior art. Thus, in deciding whether to grant this Petition, we have not relied
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`on the “prepared drawings” used throughout the Petition. Instead, we rely solely
`on the prior art submitted in the form of Exhibits.
`D. Prosecution History
`ATAS argues that Centria should be “stopped from arguing” that some of
`the prior art is patentably distinct from the claimed design of the ’834 patent based
`on positions taken by the patentee during examination. Pet. 37. Specifically,
`according to ATAS the original application included 18 embodiments of a design
`for a wall panel. On August 25, 2005, a restriction requirement was mailed
`requiring restriction to one of four groups. Pet. 14. In response, patentee elected
`Group I and argued that Group II should be combined with Group I. Id. at 15. A
`Notice of Allowability followed, agreeing to allow the combined Groups I and II.
`Id. Groups III and IV were canceled and Group III was filed as a divisional
`application, which later issued as U.S. Patent D538,948. Id.
`Based on the fact that Groups I and II remained in the same patent, ATAS
`argues that “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.” Id. at 37 (citing In re Rubinfield, 270 F.2d 391
`(CCPA 1959)). According to ATAS, this means that “the patentee has admitted
`that a panel having one recessed region is patentably indistinct from a panel having
`two recessed regions.” Id.
`ATAS’s logic is faulty. It is true that more than one embodiment may be
`presented in a design patent only if those embodiments are patentably indistinct
`according to the standard of obviousness-type double patenting. Rubinfield,
`270 F.2d at 393. However, ATAS has not shown how the prosecution history
`sheds any light on the basis for maintaining the seven embodiments in a single
`application. In determining whether multiple embodiments may be retained in a
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`single application, the test is obviousness—whether the overall appearance is
`basically the same and whether the differences are either minor between the
`embodiments or obvious to a designer of ordinary skill in view of the analogous
`prior art. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329-30 (Fed. Cir.
`2012).
`As discussed above, all seven embodiments of the ’834 patent have an
`overall asymmetric and irregular appearance. It is true that some embodiments
`have one recessed area and some have two and the position of those recessed areas
`varies. However, it is not the case that any number of recessed areas can be placed
`anywhere along the panel without causing the overall appearance to change. Thus,
`ATAS’s conclusion that the patentee admitted that the number and placement of
`recessed areas does not affect patentability is incorrect. We are not persuaded that
`Centria is estopped from making certain arguments based on the prosecution
`history.
`E. Grounds Based on the BKR160 Panel
`1. Description of the BKR160 Panel
`The prior art drawings on which ATAS relies to show BKR160 are
`reproduced below. Three images are reproduced from Exhibit 1004 below.
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`Ex. 1004 at 10-11. The three images reproduced above from Exhibit 1004 appear
`to be (1) an elevational view drawing of the BRK160 panel, (2) several BKR160
`panels connected and rotated for horizontal installation, and (3) several BKR160
`panels connected and rotated for vertical installation. Ex. 1004 at 11. A fourth
`image from Exhibit 1004 is reproduced below (image has been cropped and rotated
`for convenience).
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`The drawing from page 11 of Exhibit 1004, reproduced above, appears to be
`a magnified version of the drawing on page 10 of Exhibit 1004. ATAS does not
`indicate the amount of magnification.
`Each of the four depictions of BKR160 shows a building panel with both
`raised and recessed areas along its length. Ex. 1004 at 11. The panel has three
`recessed well-type areas. Each of the recessed well-type areas is bounded by
`angled portions having differing angles. The panel has four raised areas. Each of
`the raised areas appears to be of substantially the same width, that width being only
`slightly larger than the width of the bottom of the well-type areas. The elevational
`view indicates that from the beginning of the bottom of one well-type area to the
`next is four inches. Although within a well-type area, the angles of the two walls
`differ from each other, and together the characteristics of the panel result in an
`overall symmetric and regularly repeating appearance.
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`2. Anticipation by BKR160
`ATAS asserts that the design of the BKR160 panel has the same basic
`design characteristics as the seventh embodiment of the claimed design. Pet. 36.
`The seventh embodiment is shown in Figure 38, reproduced below and rotated to
`display the figure horizontally. BKR160 is reproduced just below for ease of
`comparison.
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`ATAS asserts that the recessed portions of BKR160 are “virtually identical to the
`recesses of the claimed design,” and that BKR160 has “a depth-to-ratio that is also
`virtually identical to the claimed design.” Id. ATAS concedes that there are
`differences between BKR160 and the claimed design in the numbers and locations
`of the recessed regions. ATAS, however, argues that based on the prosecution
`history, Centria is estopped from arguing that these differences make the claimed
`design patentably distinct from BKR160. Pet. 37. As discussed above, we are not
`persuaded by this argument.
`We are not persuaded that an ordinary purchaser of commercial building
`panels would find BKR160 so similar in appearance to the claimed design that they
`would be deceived into thinking the prior art design is the patented one. See
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`Gorham, 81 U.S. at 528. The overall appearance of the two panels exhibit
`noticeable differences. For example, BKR160 has an overall symmetric and
`regularly repeating appearance, while the claimed design has an overall
`asymmetric and irregular appearance. On this record, we are not persuaded that
`ATAS has shown a reasonable likelihood of prevailing on anticipation by
`BKR160.
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`3. Obviousness with BKR160 as the Sole Reference
`ATAS also asserts that the claimed design is unpatentable under § 103(a) as
`being obvious over the BKR160 panel alone. Again, ATAS bases this argument
`on its conclusion that “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.”
`Pet. 38. According to ATAS, “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 because such removal is an obvious modification, the BKR160 panel
`renders the claimed design obvious. Pet. 39 (citing In re Stevens, 173 F.2d 1015,
`1019 (CCPA 1949)).
`We are not persuaded by ATAS’s arguments. First, as discussed above, we
`do not agree with ATAS’s assertion that the patentee acknowledged that different
`numbers and location of recessed regions are patentably indistinct. Second, we are
`not persuaded by ATAS’s reliance on Stevens for a hard and fast rule that all
`changes in arrangement and proportion in design patents are per se unpatentable
`advances. Instead, the Court in Stevens made it clear that the changes in
`proportions involved in that case did not result in an overall appearance that was
`substantially different. 173 F.2d at 1019. Instead, there are no portions of a design
`which are “immaterial” or “not important.” In re Blum, 374 F.2d 904, 907 (CCPA
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`1967). The appearance of the design as a whole must be considered, and therefore,
`to the extent that proportions and shape of a design contribute to the overall visual
`effect, they must be taken into consideration. Cf. Lee v. Dayton-Hudson Corp.,
`838 F.2d 1186, 1188 (Fed. Cir. 1988). Thus, we are not persuaded that removing
`recessed areas from BKR160 is an obvious modification. Third, ATAS identifies
`no reason or motivation why any designer would find it obvious to make any
`particular one of the embodiments of the ’834 patent from the BKR160 panel by
`removing recessed areas.
`On this record, we are not persuaded that ATAS has shown a reasonable
`likelihood of prevailing on obviousness over BKR160.
`4. Obviousness with BKR160 as the Primary Reference
`ATAS asserts that the BKR160 panel combined with the MPS120 panel
`renders obvious the claimed invention. Pet. 40. To show that BKR160 is a
`suitable primary reference, to be used in step one of analyzing the potential
`obviousness of the design, ATAS relies on the same arguments it relies upon to
`show that BKR160 anticipates the claimed design. Id.
`We are not persuaded that BKR160 is a suitable primary reference for
`obviousness purposes. As discussed above, the overall appearance of the two
`panels is noticeably different because BKR160 is symmetric and regularly
`repeating, while the claimed design is asymmetric and irregular. We are, therefore,
`not persuaded that BKR160 is “basically the same” as the claimed design. See
`High Point Design at *12; Rosen, 673 F.2d at 391.
`On this record, we are not persuaded that ATAS has shown a reasonable
`likelihood of prevailing on obviousness over BKR160 combined with MPS120.
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`F. Grounds based on the MPS120 Panel
`1. Description of the MPS120 Panel
`The prior art drawings ATAS relies on to show MPS120 are reproduced
`below. Two images from Exhibit 1003 and an image from Exhibit 1004 are
`reproduced below.
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`Ex. 1003 at 1; Ex. 1004 at 6 (cropped and rotated for convenience).
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`Ex. 1004 at 9. Each of the three depictions of MPS120, reproduced above, shows a
`building panel that is generally flat with a single small v-shaped recessed area
`directly in the center of two raised areas of equal length. The recessed area is v-
`shaped because the angles on either side are equal and has a relatively small length
`in comparison to the overall length of the panel. Together the characteristics of the
`panel result in an overall flat, symmetric appearance with a v-shape recess at the
`center.
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`2. Obviousness with MPS120 as the Primary Reference
`ATAS asserts that the MPS120 panel combined with either the BKR160
`panel or the IW60A panel renders the claimed design obvious. Pet. 22, 31. ATAS
`argues that MPS120 is a suitable primary reference because it shares the same
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`basic design characteristics as the seventh embodiment of the claimed design. Pet.
`25-28. The seventh embodiment is shown in Figure 38, reproduced below and
`rotated to display the figure horizontally. MPS120 is reproduced just below for
`ease of comparison.
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`ATAS describes six design features that the seventh embodiment, shown in
`Figure 38 above, and MPS120, also shown above, share. Pet. 26-27. ATAS also
`concedes that the MPS120 panel differs in two ways from the claimed design:
`(1) the central recess of MPS120 is symmetrical, and (2) the ratio of the depth of
`the central recess to the overall length of the panel is less in MPS120 than in the
`claimed design. Id. at 27. ATAS argues that these differences, however, do not
`result in an overall appearance that is substantially different. Id. ATAS also
`argues that because of the prosecution history, discussed in detail above, “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.” Id. at 28.
`We are not persuaded that MPS120 is a suitable primary reference for
`obviousness purposes. The overall appearance of the two panels is very different
`because MPS120 is flat and symmetric with a v-shape recess at the center while
`the claimed design is asymmetric and irregular. We are, therefore, not persuaded
`that MPS120 is “basically the same” as the claimed design. And for the reasons
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`discussed above, we are not persuaded that the test for whether prior art is a
`suitable primary reference should be less stringent in this case based on the
`prosecution history.
`On this record, we are not persuaded that ATAS has shown a reasonable
`likelihood of prevailing on obviousness over MPS120 combined with BKR160 or
`IW60A.
`G. Grounds based on the MPH080 Panel
`1. Description of the MPH080 Panel
`The prior art drawings ATAS relies on to show MPH080 are reproduced
`below.
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`Ex. 1004 at 6.
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`Ex. 1005 at 17. Each of the two depictions of MPH080 shows a building panel
`that has no recessed areas and only a single raised area. It has symmetrical angles.
`ATAS does not present MPH080 as prior art based on a single panel.
`Instead, ATAS asserts that “one of ordinary skill in the art could easily understand
`and visualize the appearance of two (or more) interlocked MPH080 Panels” and
`“submits that such interlocked panels represent the overall visual appearance of the
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`MPH080 Panel as envisioned by one of ordinary skill in the art and as they would
`actually appear when installed on a building wall.” Pet. 43-44. ATAS, however,
`does not provide evidence to support this conclusion. ATAS also does not provide
`any actual evidence of the appearance of several interlocked MPH080 panels.
`Thus, we rely solely on the prior art submitted in the form of Exhibits, and not the
`drawings of several interlocked MPH080 panels presented by ATAS in its Petition.
`2. Obviousness with MPH080 as the Primary Reference
`ATAS asserts that the MPH080 panel combined with either the BKR160
`panel or the IW60A panel will render the claimed design obvious. Pet. 42, 53.
`ATAS argues that MPH080 is a suitable primary reference because, when two
`MPH080 panels are interlocked, they share the same basic design characteristics as
`the seventh embodiment of the claimed design. Pet. 46-47. The seventh
`embodiment is shown in Figure 38, reproduced below and rotated to display the
`figure horizontally. MPH080 is reproduced just below for ease of comparison.
`
`
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`
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`ATAS describes six design features that the seventh embodiment, shown in
`Figure 38 above, and MPH080, also shown above, share. Pet. 46-47. ATAS also
`
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`concedes that the MPH080 panel differs in three ways from the claimed design:
`(1) the central recess of the interlocked MPH080 is symmetrical; (2) the ratio of
`the depth of the central recess to the overall length of the panel is far greater in the
`interlocked MPH080 panels than in the claimed design; and (3) the lower side of
`the central recess in the interlocked MPH080 panels includes additional structure.
`Id. at 47-48. ATAS argues that these differences, however, do not result in an
`overall appearance that is substantially different. Id. at 48. ATAS also argues that
`because of the prosecution history, discussed in detail above, “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.” Id.
`We are not persuaded that MPS080 is a suitable primary reference for
`obviousness purposes, whether viewed as two interlocked panels or as a single
`panel. Either way, the overall appearance of the MPH080 is very different from
`the prior art because MPH080 is symmetric while the claimed design is
`asymmetric and irregular. We, therefore, are not persuaded that MPS120 is
`“basically the same” as the claimed design. And for the reasons discussed above,
`we are not persuaded that the test for whether prior art is a suitable primary
`reference should be less stringent in this case based on the prosecution history.
`On this record, we are not persuaded that ATAS has shown a reasonable
`likelihood of prevailing on obviousness over MPH080 combined with BKR160 or
`IW60A.
`H. Grounds based on the FWDS-59 Panel
`1. Description of the FWDS-59 Panel
`The prior art drawing ATAS relies on to show FWDS-59 are reproduced
`below.
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`Ex. 1004 at 13. The depiction of FWDS-59 shows a building panel with a flat
`back and all recessed portions removed from the otherwise solid material. It has a
`single recessed area having asymmetrical angles.
`2. Anticipation by FWDS-59
`ATAS does not compare the FWDS-59 panel to any of the embodiments of
`the ’834 patent. See Pet. 55-58. Instead, ATAS asserts that during prosecution of
`the ’834 patent, patentee cancelled an embodiment in view of an admitted prior art
`reference. Pet. 55. ATAS concludes, without citation to authority, that “any prior
`art reference or combination of references that anticipates or renders obvious” that
`cancelled embodiment “must also anticipate or render obvious the claimed design
`of the ’834 patent.” Pet. 56. ATAS then bases the entirety of its argument for
`anticipation on the assertion that the FWDS-59 panel has the same basic design
`characteristics as the patentably indistinct embodiment of the claimed design
`showing in the canceled embodiment. Id.
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`However, even if we were to compare the FWDS-59 to an actual
`embodiment of the ’834 patent, we are not persuaded that an ordinary purchaser of
`commercial building panels would find FWDS-59 so similar in appearance to the
`claimed design that they would be deceived into thinking the prior art design is the
`patented one. See Gorham, 81 U.S. at 528. The overall appearance of the two
`panels is very different. FWDS-59 has an overall solid form and flat back, which
`is different than the claimed design.
`On this record, we are not persuaded that ATAS has shown a reasonable
`likelihood of prevailing on anticipation by FWDS-59.
`3. Obviousness with FWDS-59 as the Primary Reference
`ATAS asserts that the FWDS-59 panel combined with the BKR160 panel
`renders obvious the claimed invention. Pet. 58. To show that FWDS-59 is a
`suitable primary reference, ATAS relies on the same arguments it relies upon to
`show that FWDS-59 anticipates the claimed design. Id.
`We are not persuaded that FWDS-59 is a suitable primary reference for
`obviousness purposes. As discussed above, the overall appearance of the two
`panels is very different because FWDS-59 has an overall solid form and flat back.
`We, therefore, are not persuaded that FWDS-59 is “basically the same” as the
`claimed design. See Rosen, 673 F.2d at 391.
`On this record, we are not persuaded that ATAS has shown a reasonable
`likelihood of prevailing on obviousness over FWDS-59 combined with BKR160.
`
`IV. CONCLUSION
`Upon consideration of the Petition and Preliminary Response, we are not
`persuaded that there is a reasonable likelihood that ATAS will prevail on at least
`one alleged ground of unpatentability with respect to the claim of the ’834 patent.
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`We, therefore, deny the petition for inter partes review and decline to institute trial
`on any of the asserted grounds as to any of the challenged claims. 37 C.F.R.
`§ 42.108.
`
`V. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
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`
`
`
`PETITIONER:
`Damon Neagle
`James Aquilina
`patent@designip.com
`
`PATENT OWNER:
`Richard Byrne
`rbyrne@webblaw.com
`
`Daniel Brean
`dbrean@webblaw.com
`
`
`
`
`24
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