Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper 37
`Entered: October 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`C&D ZODIAC, INC.,
`Petitioner,
`
`v.
`
`B/E AEROSPACE, INC.,
`Patent Owner.
`____________
`
`PGR2017-00019
`Patent D764,031 S
`____________
`
`Before JENNIFER S. BISK, SCOTT A. DANIELS, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Post-grant Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`

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`PGR2017-00019
`Patent D764,031 S
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`I.
`
`INTRODUCTION
`
`A. Background
`C&D Zodiac, Inc. (“Petitioner”) filed a Petition to institute a
`post-grant review of the sole claim of U.S. Design Patent No. D764,031 S
`(“the ’031 patent”). Paper 1 (“Pet.”). An issue in this case is the priority
`claim of the ’031 patent. Id. The ’031 patent asserts priority to the filing
`date, April 18, 2011, of U.S. Patent Application No. 13/089,063, (“the ’063
`application”), which became U.S. Patent. No. 8,590,838 (“the ’838 patent”).1
`Id.
`
`Petitioner relies on the testimony of Mr. Ronald Kemnitzer (Ex. 1003)
`in support of its Petition. We instituted post-grant review (Paper 12, “Inst.
`Dec.”) of the ’031 patent on the grounds that the claim is indefinite under
`35 U.S.C. § 112(b) and unpatentable under 35 U.S.C. § 102(a)(1) because
`Petitioner had shown that it was more likely than not that the ’031 patent
`was not entitled to the filing date of the ’063 application, and the claimed
`lavatory was therefore on sale and in public use prior to the effective filing
`date. Paper 12, 26.
`Following the Institution Decision, B/E Aerospace, Inc. (“Patent
`Owner”) filed a Patent Owner’s Response. Paper 19 (“PO Resp.”). Patent
`Owner relies on the testimony of Dr. Adam Dershowitz (Ex. 2104) in its
`Response. Subsequently, Petitioner filed a Reply to Patent Owner’s
`Response. Paper 26 (“Reply”).
`Patent Owner also filed a Motion to Exclude Evidence. Paper 31
`(“Mot.”). Petitioner filed an Opposition to the Motion to Exclude Evidence
`
`1 Unless otherwise noted, we refer to the ’063 application, as opposed to the
`’838 patent, as the initial priority document and parent application of the
`’031 patent throughout our Decision.
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`(Paper 33, “Opp. Mot.”), and Patent Owner filed a Reply (Paper 34, “Reply
`Opp. Mot.”). Patent Owner filed several unopposed Motions to Seal.
`Papers 8, 20, 28.
`An oral hearing was held on August 3, 2018 and the transcript of that
`hearing (Paper 36, “Tr.”) has been entered into the record of this proceeding.
`For the reasons discussed below, Petitioner has shown by a
`preponderance of the evidence that the sole claim of the ’031 patent is
`unpatentable under 35 U.S.C. § 102(a)(1) because possession of the aircraft
`lavatory claimed in the ’031 patent is not shown as of the filing date of the
`’063 application and the claimed lavatory was on sale and in public use prior
`to the effective filing date. Because the § 102(a)(1) ground is dispositive as
`to the sole challenged claim, we need not reach the indefiniteness
`ground. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a
`petitioner “is entitled to a final written decision addressing all of the claims
`it has challenged”).
`B. Additional Proceedings
`The parties state that the ’031 patent and other related patents, U.S.
`Patent Nos. 9,073,641, 9,365,292, 9,434,476, and 9,440,742, are asserted
`against Petitioner in B/E Aerospace, Inc. v. Zodiac Aerospace, Inc., No.
`2:14-cv-01417 in the United States District Court, Eastern District of Texas
`and that this underlying district court litigation is currently stayed. Pet. 2–3;
`PO Resp. 2.
`Each of the four related patents identified above is the subject of a
`petition for an inter partes review filed by Petitioner. See Cases IPR2017-
`01273 (involving Patent 9,434,476); IPR2017-01274 (involving Patent
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`Patent D764,031 S
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`9,365,292); IPR2017-01275 (involving Patent 9,073,641); and IPR2017-
`01276 (involving Patent 9,440,742).
`As explained above, the ’031 patent claims priority, ultimately, to the
`’838 patent, a utility patent which was the subject of Case IPR2014-00727
`between Petitioner and Patent Owner. In the final written decision in that
`case, the Board held certain claims had been proven unpatentable, and other
`claims had not been proven unpatentable. IPR2014-00727, Paper 65. Both
`sides appealed, and the Court of Appeals for the Federal Circuit affirmed.
`See B/E Aerospace, Inc. v. C&D Zodiac, Inc., 709 F. App’x 687 (Fed. Cir.
`Oct. 3, 2017).
`C. The ’031 Patent and Claim
`The ’031 patent (Ex. 1001), titled “Aircraft Interior Lavatory,”
`includes two figures, reproduced below, claiming a design for an aircraft
`lavatory.
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`Patent D764,031 S
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`
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`Figure 1 of the ’031 patent illustrates “a front side view” of an aircraft
`lavatory. Ex. 1001, Written Desc.
`
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`Figure 2 of the ’031 patent depicts “a front perspective view” of the aircraft
`lavatory. Id.
`The “DESCRIPTION” of the ’031 patent identifies these two views,
`which include broken lines indicating that certain portions of the aircraft
`lavatory form no part of the claimed design. See In re Owens, 710
`F.3d 1362, 1367 n.1 (Fed. Cir. 2013) (“[I]t is appropriate to disclaim certain
`design elements using broken lines, provided the application makes clear
`what has been claimed.”).
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`
`II.
`CLAIM CONSTRUCTION
`With regard to design patents, it is well-settled that a design is
`represented better by an illustration than a description. Egyptian Goddess,
`Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing
`Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although preferably a design
`patent claim is not construed by providing a detailed verbal description, it
`may be “helpful to point out . . . various features of the claimed design as
`they relate to the . . . prior art.” Egyptian Goddess, 543 F.3d at 679–80; cf.
`High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314–15
`(Fed. Cir. 2013) (remanding to district court, in part, for a “verbal
`description of the claimed design to evoke a visual image consonant with
`that design”).
`In the Petition, Petitioner proposed a written claim construction for
`the claimed lavatory design that relates element names to certain portions of
`the design, including, for example, “a forward wall,” “a rectangular door
`opening,” and “a recessed depression.” Pet. 45. Patent Owner asserts that
`the figures “are plain and do not require an express construction.” PO Resp.
`2. In its Reply, Petitioner states “that a written construction is not necessary
`to address the issues raised in this proceeding.” Reply, n. 1. Petitioner’s
`counsel confirmed during the oral hearing that no claim construction is
`necessary. Tr. 97:22–98:4.
`We agree with the parties that no written claim construction is
`necessary. Observing Figures 1 and 2 in their entirety, we are not persuaded
`that a construction applying specific nomenclature to elements of the design
`provides any clarity to either a designer of skill in the art, or to an ordinary
`observer, that is not self-evident by simply observing the overall appearance
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`of the design itself. We determine that the scope of the claimed design
`protects the ornamental aspects of an aircraft lavatory including a forward
`wall and an inboard wall as shown in Figures 1 and 2 of the ’031 patent.
`III. ANALYSIS
`
`A. Prosecution History
`The ’031 patent issued from a division of U.S. design application No.
`29/469,502, filed October 10, 2013, now U.S. Patent No. Des. 749,709 (“the
`’709 patent”). Ex. 1001, Related Appl’n Data. The ’709 patent in turn
`issued from a division of the ’063 application, filed April 18, 2011, now the
`’838 patent. Id. The divisional application that issued as the ’031 patent
`contains a specific reference to the earlier filed ’063 application. Ex. 1002,
`1 (“This is a divisional of USSN 29/469,502, filed on October 10, 2013,
`which is a divisional of USSN 13/089,063, filed April 18, 2011, USPN
`8,590,838, issued November 26, 2013, which are hereby incorporated by
`reference as if set forth in full herein.”).
`Thus, the ’031 patent expressly claims priority back to the ’063
`application and the challenged claim is potentially entitled to an effective
`filing date of April 18, 2011, under 35 U.S.C. § 120.
`B. The Designer of Ordinary Skill in the Art
`Petitioner’s declarant, Mr. Kemnitzer, asserts that “one of ordinary
`skill in the art would be a designer having a year or more experience
`designing interior components and structures for mass transportation
`vehicles.” Ex. 1003 ¶ 6. Patent Owner’s declarant, Dr. Dershowitz, argues
`that in addition to an engineering or similar degree and several years of work
`experience in a related field, “a designer of ordinary skill would have
`knowledge and familiarity of aircraft interior design environments and
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`concepts and with general aviation principles applicable to interior
`components such as lavatories.” Ex. 2104 ¶¶ 60, 55.
`Although their specific definitions of a designer of ordinary skill in
`the art differ, both declarants offer compelling professional background
`information and technical skills that lend credence to their assertions that
`their testimony should be considered as that of a person, and designer, of
`ordinary skill in the art. Compare Ex. 1003 ¶ 6 (Mr. Kemnitzer testifies that
`“[b]ased on my background and experience in industrial design, I believe
`that I am qualified to testify as an expert with respect to the ornamental and
`functional designs of aircraft interior walls.”), with Ex. 2104 ¶ 57
`(discussing the person of ordinary skill in the art, Dr. Dershowitz states that
`“regarding my background and qualifications, I have at least this level of
`skill, but certainly in my assessment regarding obviousness and claim
`construction I have viewed the Challenged Patents and the prior art through
`the lens of one of ordinary skill in the art.”).
`There is no substantive dispute between the parties that both
`Mr. Kemnitzer and Dr. Dershowitz are capable of opining from the position
`of a designer of ordinary skill. See PO Response 15 (“As the experts agree,
`there is no specific shape or structural design required to fill the cut-out
`depicted in Figure 2 of the ‘031 patent.”) (citing Ex. 2080, 32:1–10, 37:21–
`38:8; Ex. 2104 ¶ 183). Having reviewed Mr. Kemnitzer’s and
`Dr. Dershowitz’s substantial educational, technical, and engineering design
`backgrounds, we are persuaded that both declarants have at least a level of
`expertise, education and experience that qualifies them to testify in this
`proceeding from the standpoint of a designer of ordinary skill in the art.
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`
`To the extent that a level of skill in the art needs to be specified, and
`having also reviewed the patents and related prosecution history, as well as
`other litigation related documents and asserted prior art in this and related
`proceedings, we determine that the education and experience of a designer
`of ordinary skill in the art would include criteria and backgrounds proffered
`by both declarants, namely a person having at least an undergraduate degree
`in a mechanical or aeronautical engineering, industrial design, or another
`relevant technical degree, and several years of work experience applying
`their education and experience in engineering and industrial design projects
`including experience in the design and manufacture of transportation vehicle
`interiors such as aircraft, rail cars and passenger cars.
`C. Priority to Earlier Filed ’063 Application and Eligibility for
`Post-Grant Review
`In our Institution Decision, we determined that Petitioner had shown a
`reasonable likelihood that the ’031 patent claim was not entitled to priority
`to the ’063 application due to a lack of written description support for the
`claimed design in the ’031 patent. Inst. Dec. 19–25 (citing, inter alia,
`35 U.S.C. § 100(i)(1)(A)-(B)). We determined, therefore, that the
`’031 patent was eligible for post-grant review because the ’031 patent, filed
`September 18, 2015, has an effective filing date on or after March 16, 2013.
`See id. The Petition in this proceeding was filed April 10, 2017, within the 9
`months of the August 16, 2016 grant date of the ’031 patent, as required by
`35 U.S.C. § 321.
`Petitioner argues that the ’063 application fails to provide written
`description support for the claim of the ’031 patent and is therefore not
`entitled to claim priority to the ’063 application. Pet. 28–43. If Petitioner
`cannot show that the ’063 application lacks written description, then the
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`’031 patent is not eligible for post-grant review, and Petitioner’s challenges
`must fail.
`Patent Owner contends that “the ‘031 patent properly claims priority
`to B/E’s prior ‘838 patent” and that the claim of the ’031 patent is entitled to
`an effective filing date of April 18, 2011––the filing date of the ’063
`application. PO Resp. 1. As Patent Owner points out, the appropriate
`analysis hinges on whether “the written description requirement of 35
`U.S.C. § 112, first paragraph, is satisfied as required under 35 U.S.C. §
`120.” Id. at 4 (citing MPEP § 1504.20 (“Where the conditions of . . . [§] 120
`are met, a design application may be considered a continuing application of
`an earlier utility application.”)).
`To be entitled to a parent’s effective filing date under 35 U.S.C.
`§ 120, a continuation must comply with the written description requirement.
`Owens, 710 F.3d at 1366.
`The test for sufficiency of the written description, which is the
`same for either a design or a utility patent, has been expressed as
`“whether the disclosure of the application relied upon reasonably
`conveys to those skilled in the art that the inventor had
`possession of the claimed subject matter as of the filing date.”
`Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`(Fed. Cir. 2010) (en banc)).
`In the context of design patents, the drawings provide the written
`description of the invention. Thus, when an issue of priority
`arises under § 120 in the context of design patent prosecution,
`one looks to the drawings of the earlier application for disclosure
`of the subject matter claimed in the later application.
`Owens, 710 F.3d at 1366 (citations omitted).
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`
`Petitioner’s challenge is based on the differences in the wall shape,
`structure, and ornamentation between Figure 2 of the ’063 application (the
`’838 patent) and Figures 1 and 2 of the ’031 patent, reproduced below.
`
`
`
`
`Figure 2 of the ’063 application, above, on the left, depicts a cross-section of
`an aircraft lavatory forward wall defining an upper recess, for
`accommodating the seat back of a passenger seat and a lower recess for
`receiving a foot of the passenger seat. Figures 1 and 2 of the ’031 patent are
`shown, above, on the right.
`Here, based on our review of the relevant figures, we determine that
`the claimed design in the ’031 patent includes a wall that is different in
`several respects from that disclosed in the ’063 application. Comparing the
`immediately adjacent side-views, (1) the claimed wall of the ’031 patent has
`a smooth profile defining the upper recess, whereas the ’063 application
`illustrates sharply angled intersections between various planar wall portions
`forming the upper recess; (2) below the upper recess, the profile of the
`’031 patent includes a lower-most vertical wall portion perpendicularly
`intersecting the floor as opposed to an angled lower-most wall portion as
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`seen in the ’063 application; (3) the angled lower-most wall portion,
`apparently accommodating a foot of passenger chair 14 in Figure 2 of the
`’063 application, is entirely missing in both Figures 1 and 2 of the ’031
`patent claim, but the claim does show the front wall having a vertical panel,
`albeit with an unclaimed recess, intersecting the floor, which is not shown in
`the ’063 application; and (4) both parties agree that Figure 2 of the ’063
`application is a cross-section and thus, the entire inboard wall and rounded
`corner detail between the inboard and the forward wall shown in the ’031
`patent is absent in Figure 2 of the ’063 application.2 Compare Tr. 10:19–
`11:18, with id. at 87:2–4.
`Patent Owner makes several arguments to support its position that,
`essentially, the differences are inconsequential and the ’063 application
`provides adequate written description for the ’031 patent claim because it
`“‘reasonably conveys’ that [Applicant] had possession of the design of the
`’031 patent” by April 18, 2011. PO Resp. 8. Patent Owner first asserts that
`the ’031 patent “applies to a full height lavatory . . . depicted in [the
`’063 application] Figure 2.” Id. Second, Patent Owner argues specifically
`that the written description of the ’063 application “reasonably conveys” the
`design claimed in the ’031 patent because it describes “having a forward
`wall portion . . . shaped to include a recess 34.” Id. at 8–9 (citing Ex. 1006,
`
`
`2 We do not agree with Patent Owner’s counsel’s characterization, made
`during the oral hearing, that Figure 1 of the ’063 application, labeled “Prior
`Art,” or the written description in the ’838 utility patent generally describing
`a lavatory as having “one or more walls” and a “rectangular door,” therefore
`shows sufficient description of the specific inboard wall claimed in the ’031
`patent. See Tr. 87:8–20; see also PO Resp. 12–13 (Patent Owner explains
`that “[t]hose of skill in the art understand that lavatories must have doors.”
`(citing Ex. 2104)).
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`2:35–37, 4:25–26; Ex. 2080, 38:25–39:23, 41:11–18). Third, referring to
`the lower-most angled wall portion shown in the cross-section of Figure 2 in
`the ’063 application, Patent Owner argues that
`the forward wall allows the foot of a passenger seat to closely
`nestle into it, because the foot extends further aft than the rest of
`the seat support. This creates a more compact and appealing
`design because the structures appear more closely integrated,
`exactly as required by the claimed design.
`Id. at 10. Patent Owner’s declarant, Dr. Dershowitz, reiterates that the
`features in the ’031 patent, specifically, “a full height lavatory,” “a
`substantially not flat, or contoured . . . forward wall,” that is “an efficient use
`of space” and “aesthetically appealing,” are design features that are
`“reasonably conveyed in the [’063] application.” Ex. 2104 ¶ 180 (citing
`Ex. 1017 2:35–37, 4:25–26; Ex 2102; Ex 2103). Based on these arguments
`and testimony, Patent Owner concludes that “the exact size, shape, and
`location of the various recesses are simply not a part of the claim. As such,
`any differences in these aspects of the drawing are not relevant.” PO
`Resp. 10.
`Petitioner disagrees, contending that Patent Owner’s arguments
`misstate design patent law and attempt to read clearly visual elements out of
`the ’031 design patent claim, thus abrogating the legal standard for written
`description. Reply 4–9. Petitioner asserts that the proper focus in
`determining the scope of a design patent claim “must be ‘on actual
`appearances, rather than ‘design concepts.’’” Id. at 7 (citing In re Harvey,
`12 F.3d 1061, 1064 (Fed. Cir. 1993)). Addressing Patent Owner’s position
`that visual elements of the claimed design itself, “are simply not part of the
`claims,” Petitioner argues that the correct precedent is that “‘[d]esign patents
`have almost no scope’ and are ‘limited to what is shown in the application
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`drawings.’” Id. at 17 (citing In re Mann, 861 F.2d 1581, 1582 (Fed. Cir.
`1988)). Contrary to Dr. Dershowitz’s comparison, Petitioner’s declarant,
`Mr. Kemnitzer, states that the visual differences “are significant enough, in
`my opinion, that the ’838 Patent and its application(s) fail to disclose the
`claimed subject matter of the ’031 Patent.” Ex. 1003 ¶ 61.
`For priority under 35 U.S.C. § 120, and to meet the requirements of
`35 U.S.C. § 112, first paragraph, in the case of a design it is “simply a
`question of whether the earlier application contains illustrations, whatever
`form they may take, depicting the ornamental design illustrated in the later
`application and claimed therein.” Racing Strollers, Inc. v. TRI Indus., Inc.,
`878 F.2d 1418, 1420 (Fed. Cir. 1989).
`We are presented with conflicting testimony from the parties’
`declarant’s regarding whether a person of skill in the art, i.e. a designer of
`ordinary skill in the art, would find the claimed design of the ’031 patent
`depicted in the ’063 application. Explaining what he perceives in the
`claimed design, Patent Owner’s declarant, Dr. Dershowitz, states that
`“[f]irst, the claimed design applies to a full height lavatory[;] . . . [s]econd,
`the design includes a substantially not flat, or contoured, portion in the
`middle of the forward wall[;] . . . [t]hird, the design includes a lower portion
`of the wall that accommodates a closely nestled seat foot.” Ex. 2104 ¶ 180.
`According to Dr. Dershowitz, these features are also shown in Figures 1 and
`2 of the ’063 application, which disclose a full height lavatory, a “recess,”
`where “the forward wall portion is shaped to substantially conform to the
`shape of the exterior aft surface of the aircraft cabin structure,” e.g., where
`the cabin structure is, for example, a passenger seat. Id. (citing Ex 1017,
`2:35–37). Dr. Dershowitz testifies also that shown in Figure 2 of the
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`’063 application is a “wall/seat interface” where the “the forward wall
`allows the foot of a passenger seat to closely nestle into it, because the foot
`extends further aft than the rest of the seat support.” Id. Dr. Dershowitz
`concludes, based on his comparisons, that “the ’838 patent reasonably
`conveys to one of skill in the art that B/E had possession of the claimed
`design as of April 18, 2011.” Id. ¶ 181.
`Petitioner’s declarant, Mr. Kemnizter, testifies that “neither figure of
`the ’031 patent physically appears in the [’063 application] or are disclosed
`in the [’063 application’s] detailed description.” Ex. 1003 ¶ 49. Comparing
`Figure 2 of the ’063 application side-by-side with Figure 1 of the ’031
`patent, Mr. Kemnizter explains that “Fig. 2 of the ’838 Patent does not show
`rounded corners between any panels of the forward wall.” Id. ¶ 52. In
`addition, Mr. Kemnitzer states that “Figure 1 of the ’031 Patent also claims a
`flat, vertical bottom panel to the forward wall, while Figure 2 of the ’838
`Patent depicts an aft-extending panel similar to a flange or recess.” Id. ¶ 53.
`Comparing the lower-most wall panel of the ’031 design claim, including
`the recess or opening defined by the dashed lines, to the cross-section in
`Figure 2 of the ’063 application, Mr. Kemnitzer observes that “[t]he ’838
`Patent does not disclose or suggest any discontinuity to the base panel of the
`forward wall.” Id. ¶ 57. Pointing to the intersection of the inboard wall and
`the forward wall of the claimed design shown in Figure 2 in the ’031 patent,
`Mr. Kemnizter testifies that
`Figure 2 of the [’063 application] also provides no indication of
`how the forward wall and the inboard wall intersect (assuming
`the [’063 application] even discloses an inboard wall), while
`Figure 2 of the ’031 Patent shows the intersection as a
`continuously radiused edge along the entire length of the corner.
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`Id. ¶ 56. Based on his comparisons, Mr. Kemnizter testifies that “the
`differences . . . are significant enough, in my opinion, that the [’063
`application] fail[s] to disclose the claimed subject matter of the ’031 Patent.”
`Id. ¶ 61.
`There is no dispute between the declarants that the drawings of the
`claimed design are not the same as Figures 1 and 2 in the asserted parent
`’063 application. See Ex. 1031, 106:20–107:5. We agree, to an extent, with
`Dr. Dershowitz that the concept of “a substantially not flat, or contoured,
`portion in the middle of the forward wall,” i.e., a recess formed in a forward
`wall for receiving a portion of a passenger seat is shown in Figure 2 of the
`’063 application. See Ex. 2104 ¶ 180. Where we part ways with
`Dr. Dershowitz and Patent Owner’s analysis is their position that the
`disclosure of a “substantially not flat, or contoured” wall conveys to an
`ordinary designer that the ornamental design of the aircraft lavatory shown
`and claimed in the ’031 patent was depicted in the ’063 application. See In
`re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) (“Thus when an issue of
`priority arises under § 120, one looks to the drawings of the earlier
`application for disclosure of the subject matter claimed in the later
`application.”).
`Although the ’063 application illustrates in cross-section an aircraft
`lavatory having a forward wall with an upper recess, the cross-section of
`Figure 2 does not disclose a wall profile defining an upper recess with the
`same smooth contours as illustrated in the ’031 patent, or that the claimed
`profile includes a lower-most vertical wall panel perpendicularly intersecting
`the floor. Compare Ex. 1001, Fig. 1, with Ex. 1006, Fig. 2. In addition, the
`cross-section of the forward wall in Figure 2 of the ’063 application does not
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`disclose any aspect of the claimed inboard wall and the rounded corner
`detail that is visually apparent as connecting the inboard wall and the
`forward wall in the ’031 patent. Id. The lower recess formed by the angled
`panel in Figure 2 of the ’063 application may be consistent in function with
`the unclaimed recess of Figure 2 in the ’031 patent, but it is not consistent in
`form. See Ex. 2104 ¶ 180 (“[T]he design includes a lower portion of the
`wall that accommodates a closely nestled seat foot.”).
`From a comparison of the ’063 application’s Figure 2, including the
`relevant written description, with the claimed design as a whole in Figures 1
`and 2 of the ’031 patent, it is readily observable that certain features such as
`the horizontal panel transitions, i.e., smooth as opposed to sharply cornered
`transitions, are different in visual appearance, thus dictating overall visually
`distinct profiles of the upper recesses. It is also readily apparent that
`elements and features in the claimed design, such as the convex transitioning
`corner between the forward wall and inboard wall, as well as the lower panel
`of the forward wall, are simply not found in any written or illustrative
`disclosure of the ’063 application.
`Patent Owner argues that the design elements which are not shown in
`the ’063 application, but are now claimed in the ’031 patent, fall within the
`holding of In re Daniels “because the ’838 figures allow persons of ordinary
`skill in the art to recognize the claimed design.” Reply 7. We disagree.
`Daniels does not stand for the proposition that a designer of ordinary skill in
`the art may broadly “recognize” the claimed design to procure the
`appropriate level of written description support. In Daniels there were no
`newly added claimed, unclaimed, or even slightly altered claim elements,
`but the complete removal of a surface ornamental design element. See
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`Daniels, 144 F.3d at 1457 (Despite the removal of a leaf design “[t]he
`leecher as an article of manufacture is clearly visible in the earlier design
`application, demonstrating to the artisan viewing that application that
`Mr. Daniels had possession at that time of the later claimed design of that
`article.”).
`In view of the overall visually apparent differences from the
`’063 application, including new and altered elements in the claimed design
`that are part and parcel of the ornamental appearance of the design as a
`whole, we are not persuaded that the ornamental design illustrated in the
`’031 patent is depicted in the ’063 application. We determine that Petitioner
`has shown by a preponderance of the evidence that a person of ordinary skill
`in the art would not understand the inventors to have possession of the
`ornamental design claimed in the ’031 patent at the time of filing of the ’063
`application, and therefore, the ’031 patent claim is not entitled to the benefit
`of the filing date of the ’063 application. Accordingly, Petitioner has
`demonstrated that the ’031 patent is eligible for post-grant review.
`D. Whether Spacewall, the Alleged Commercial Embodiment of the
`Claimed Design in the ’031 Patent, Was Sold or in Public Use
`Prior to the Effective Filing Date of the ’031 patent
`Petitioner asserts that the sole claim of the ’031 patent is subject to
`post-AIA 35 U.S.C. § 102(a)(1) and thus, unpatentable, because Patent
`Owner’s “Spacewall,” the alleged commercial embodiment of the claimed
`design, was sold and in public use prior to the ’031 patent’s effective filing
`date of October 10, 2013. Pet. 46.
`Patent Owner does not substantively address this issue in its
`Response. See PO Resp. 26 (relying mainly on the asserted priority date of
`April 18, 2011). Patent Owner does contest, in its Motion to Exclude, the
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`admissibility of certain evidence relied upon by Petitioner to show that
`Spacewall was sold or in public use.
`Based on our determination, above, that the ’031 patent is not entitled
`to priority from the April 18, 2011 filing date of the ’063 application, and
`where the effective filing date of the ’031 patent is no earlier than October
`10, 2013, and for the reasons below, Petitioner has established by a
`preponderance of the evidence that the sole claim of the ’031 patent is
`unpatentable.
`1. Spacewall and the Investor Day Presentation
`Petitioner asserts that Patent Owner has admitted that “Spacewall,”
`the alleged commercial embodiment of the design depicted in the
`’031 patent, “was offered for sale, and in fact sold to Boeing, Delta Airlines,
`and United Airlines, prior to the earliest effective filing date of October 10,
`2013.” Pet. 46. Petitioner points to evidence from a slide-show presentation
`titled “B/E Aerospace Investor Day” (“Investor Day Presentation”), which
`apparently occurred on March 12, 2012, and included the following slide.
`Ex. 1009, 1, 16.
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`The slide 16, above, titled “Boeing 737 Modular Lavatory Systems,” and
`describing “B/E Aerospace, patent pending, Spacewall® technology,”
`includes an image of a portion of an aircraft lavatory including an inboard
`wall and a profile view of a nonplanar front wall defining a recess into
`which a portion of a passenger chair seat back extends. Id.
`Another slide, slide 9, from Investor Day Presentation, reproduced
`below, is titled “Market Successes in 2011” and touts an $800 million
`contract with Boeing for the “Spacewall™ technology lavatory structure.”
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`Slide 9, above, describes a “sole-source contract” with Boeing, apparently
`from 2011, relating to the Spacewall lavatory structure as well as awards
`from Star Alliance, a network of 28 member airlines. Id. at 9.
`Investor Day Presentation is corroborated by a B/E Aerospace news
`release, dated February 22, 2012, advertising the date and time, March 12,
`2012, 9:00 am, and including a URL link to the live audio broadcast of the
`presentation. See Ex. 1023. Further corroborating the evidence of an
`existing contract and sale, a little more than a year later, a further B/E
`Aerospace news release, dated September 30, 2013,
`announced the first delivery by Boeing to Delta Air Lines of a
`Boeing Next-Generation 737-900ER (Extended Range) airplane.
`The airplane is configured with the B/E Aerospace modular
`advanced lavatory system . . . [t]he lavatory incorporates B/E’s
`patent pending Spacewall techno