Decision Date: September 24, 2013 and January 8, 2014

Court: Patent Trial and Appeal Board

Patents: D527,834

Holding: ATAS’s petition to institute inter partes review is DENIED; Request for rehearing DENIED.

Opinion:

ATAS International, Inc. filed a petition for inter partes review of U.S. Design Patent No. D527,834, entitled Building Panel and assigned to Centria. Litigation was pending between the parties in the U.S. District Court for the Western District of Pennsylvania concerning the patent. The petition asserted that the patent is unpatentable under either 35 U.S.C. §§ 102 and/ or 103. ATAS did not meet its burden of showing a reasonable likelihood of prevailing under 35 U.S.C. § 314(a), therefore, the Patent Trial and Appeal Board (“PTAB”) denied the petition. During prosecution, the patent was restricted to seven embodiments of a building panel design. In its claim construction, the PTAB concluded that 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. All panels have either one or two recessed well-type areas. 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. Together, the PTAB concluded, these characteristics result in each of the seven embodiments having an overall asymmetric and irregular appearance.

ATAS argued that because the patent has embodiments with both one and two recessed areas, the “patentee has admitted that a panel having one recessed region is patently indistinct from a panel having two recessed regions,” thus, the number and placement of the recessed areas cannot affect patentability. The PTAB disagreed. While more than one embodiment may be patented in a single design patent if they are obvious variants of each other, see Apple Inc. v. Samsung Elecs. Co., F.3d 1314, 1329-30 (Fed. Cir. 2012), the PTAB found no support for ATAS’s broad generalization. The prosecution history does not give any reason for keeping the seven embodiments in one patent. Additionally, the PTAB found that the number and location of the recessed areas could affect patentability because placing more recessed areas along different locations of the panel could cause its overall asymmetric appearance to change.

As to patentability, ATAS argued that two references anticipated the patent. A design patent is anticipated by a reference if, “in the eye of the ordinary observer . . . [the] two designs are substantially the same” such that a purchaser would be induced to buy one “supposing it to be the other.” Gorham Co. v. White, 81 U.S. 511, 528 (1871). As to the ordinary observer, the PTAB noted that the panels at issue are used in commercial buildings, thus the ordinary observer is the sophisticated buyer, like a commercial architect or an engineer. The PTAB found no likelihood of anticipation because the prior art panel designs were either symmetric or had an overall solid form and flat back and therefore, were not substantially the same as the claimed design.

There are two steps to show obviousness of a design patent. First, there must be a primary reference that creates basically the same visual impression as the claimed design. See High Point Design LLC v. Buyer’s Direct, Inc., No. 2012-1455, slip op. at *12 (Fed. Cir. Sept. 11, 2013). Second, the primary reference may be modified by secondary references to create a design with the same overall visual appearance of the claimed design if the secondary reference is “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.” In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996).

ATAS relied on four primary references for the first step. With one reference, ATAS did not rely on the panel as it was disclosed in the reference (as a single unit), but relied on interlocked repeating units of the panel together. ATAS argued that that the interlocking panels is how the reference would be envisioned by one of ordinary skill in the art and how the panel would appear on a building wall. To support its position, ATAS included in its Petition several “prepared drawings” that show perspective, profile, front, top and bottom views which allegedly depicted the asserted prior art designs “to scale” and were “created from the drawings appearing” in the prior art.

According to the PTAB, these drawings were not evidence themselves and that because ATAS did not reveal who created the drawings or provide any persuasive evidence that the drawings were accurate representations of the prior art, they did not rely on them in deciding whether to grant the Petition, As a result, the PTAB found that ATAS did not meet the first step: the references did not create the same basic visual impression as the patent because they were either symmetric or had an overall solid form and flat back.

The board also disagreed with ATAS’s reading of In re Stevens, 173 F.2d 1015, 1019 (CCPA 1949) as providing a hard and fast rule that all changes in arrangement and proportion in design patents are per se unpatentable advances. Atlas argued that removing one or two recessed regions of the prior art to arrive at the claimed design was supported by Stevens because arrangement and proportion advances are per se unpatentable. Instead, according to the PTAB, the court in Stevens made it clear that the changes in proportions involved in that case did not result in a substantially different overall appearance. 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 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, the PTAB was not persuaded that removing recessed areas from the prior art was an obvious modification.

ATAS requested a rehearing of the board’s decision, arguing that the board mischaracterized the claimed design of ‘834 patent, failed to properly assess the visual impression of the prior art, and improperly focused on the differences between the prior art and the claimed design, ignoring the similarities. The board was not persuaded by these arguments.

ATAS also argued that, in light of High Point Design LLC v. Buyer’s Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013), the board applied the wrong legal standard to determine obviousness when it used the viewpoint of an ordinary observer instead of an ordinary designer. ATAS failed to point to any argument or evidence that addressed the characteristics of an ordinary observer or an ordinary designer, thus, there was no indication that the results of the obviousness analysis would change depending on the particular vantage point from which it is accessed. The board was also not persuaded that any alleged distinction between the two vantage points would affect patentability in this case, and denied ATAS’s request for rehearing.