Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 12
`Entered: October 31, 2017
`
`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.
`____________
`
`Case PGR2017-00019
`Patent D764,031 S
`____________
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Post-Grant Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`Paper 12
`Entered: October 31, 2017
`
`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.
`____________
`
`Case PGR2017-00019
`Patent D764,031 S
`____________
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Post-Grant Review
`37 C.F.R. § 42.108
`
`
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`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. Patent Design Patent No. D764,031 S
`(“the ’031 patent”). Paper 1. B/E Aerospace, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”).1 Applying the standard
`set forth in 35 U.S.C. § 324(a), which requires demonstration that it is more
`likely than not that at least one challenged claim is unpatentable, we grant
`Petitioner’s request and institute post-grant review of the challenged claim.
`B. Related Proceeding
`Petitioner states that the ’031 patent and other related patents, 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. Pet. 2–3. The ’031 patent claims priority, ultimately, to a utility
`patent, U.S. Patent. No. 8,590,838 (“the ’838 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.,
`2017 WL 4387223 (Fed. Cir. Oct. 3, 2017).
`
`
`
`1 Patent Owner filed a redacted version of its Preliminary Response as Paper
`7, and a sealed version, Paper 8. Unless otherwise noted in this Decision we
`refer to the publically available redacted version, Paper 7.
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`C. The ’031 Patent and Challenged Claim
`The ’031 patent (Ex. 1001), issued August 16, 2016, and is titled
`“Aircraft Interior Lavatory.” The ’031 patent includes two figures, Figures 1
`and 2, both reproduced below, claiming a design for an aircraft lavatory.
`
`
`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.
`D. Asserted Grounds of Unpatentablity
`Along with its contention that the ’031 patent is available for post-
`grant review, Petitioner asserts essentially three grounds of unpatentability.
`Pet. 6. Petitioner contends that the challenged claim is unpatentable under
`35 U.S.C. § 171 as lacking ornamentality and 35 U.S.C. § 112(b) as
`indefinite. Id. Petitioner contends also that the patent is invalid under 35
`U.S.C. § 102(a)(1), alleging that the illustrated lavatory was on sale and in
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`public use prior to the effective filing date. Id. Importantly, Petitioner’s
`arguments rely fundamentally on the assertion that the ’031 patent is
`available for post-grant review because it is not entitled to the filing date of
`the ’838 patent and its respective patent application, application No.
`13/089,063 (“the ’063 application”), which was filed April 18, 2011. See 35
`U.S.C. § 100(i)(1)(A)-(B); see also Ex. 1001, 1. Petitioner supports its
`arguments with a declaration by Ronald Kemnitzer (“Kemnitzer Decl.”), an
`industrial designer. Ex. 1003.
`In its Preliminary Response, Patent Owner contests mainly the issue
`of the filing date of the ’031 patent. Patent Owner argues that the ’031
`patent clearly states on the face page of the patent that it is a “division of
`application 13/089,063,” arguing that the ’063 application provides
`sufficient written description support for the design patent. Prelim. Resp.
`14–29. Therefore, Patent Owner contends, the ’031 patent is entitled to the
`filing date of the ’063 application and “is not eligible for post-grant review
`because it was not filed subject to the first-inventor-to-file provisions of the
`Leahy–Smith America Invents Act (AIA).” Id. at 14.
`E. Real Parties in Interest
`Section 322(a)(2) of Title 35 states that a petition to institute a post-
`grant review “may be considered only if— . . . (2) the petition identifies all
`real parties in interest.” 35 U.S.C. 322(a)(2). Invoking this statute, Patent
`Owner asserts: “A PGR petitioner is required to identify all real-parties-in-
`interest (RPII) to the petition, as well as all privies of the petitioner.” Pet. 3
`(emphasis added). The statute, however, does not require the identification
`of privies, and Patent Owner has not persuaded us that the Petition fails to
`identify a real party in interest.
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`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764
`(Aug. 14, 2012) (“Practice Guide”) explains that “[w]hether a party who is
`not a named participant in a given proceeding nonetheless constitutes a ‘real
`party-in-interest’ . . . to that proceeding is a highly fact-dependent question.”
`77 Fed. Reg. at 48,759. The Practice Guide provides guidance regarding
`factors to consider in determining whether a party is a real party-in-interest.
`Considerations may include whether a non-party exercises control over a
`Petitioner’s participation in a proceeding. Other considerations may include
`whether a non-party, in conjunction with control, is funding the proceeding
`and directing the proceeding. 77 Fed. Reg. at 48,759–60.
`Patent Owner contends that it is litigating infringement suits against,
`inter alia, Petitioner C&D Zodiac, parent company Zodiac Aerospace, and
`other related subsidiaries Zodiac Water and Waste (a.k.a. MAG Aerospace
`Industries, LLC), Zodiac Northwest Aerospace Technologies, and Zodiac
`Heath Tecna, Inc.” Prelim. Resp. 4. Patent Owner’s unilateral charges of
`infringement against related companies to C&D Zodiac, Inc., do not
`however, make the related companies real parties in interest. Cf. 77 Fed.
`Reg. at 48,760. (“[I]f Trade Association X files an IPR petition, Party A
`does not become a ‘real party-in-interest’ or a ‘privy’ of the Association
`simply based on its membership in the Association.”).
`We have reviewed also the various documents which Patent Owner
`relies upon as evidence of alleged control by Zodiac Aerospace over C&D
`Zodiac, Inc. and acknowledge that there is certainly evidence of a corporate
`relationship, e.g., that C&D Zodiac is a wholly owned subsidiary of Zodiac
`Aerospace. See Ex. 2024, 104 (Corporate financial statement indicates
`Zodiac Aerospace “% interest” of C&D Zodiac Inc, is 100.00). We note
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`also that certain evidence appears to show that Zodiac Aerospace provides
`some level of corporate oversight and internal control over its subsidiaries.
`See Ex. 2024, 115; Ex. 2029, 110. This evidence, however, lacks
`substantive detail as to how, where, or when Zodiac Aerospace provides
`actual control over, or directs, any commercial decision making process of
`C&D Zodiac and other subsidiaries. See Ex. 2024, 115 (The Zodiac
`Aerospace 2015/2016 Annual Report describes a plan for “‘Back to Basics’
`operational procedures, a more effective supply chain and inventory
`management, and better integrated sales and operations planning.”).
`Importantly, none of the documents referred to by Patent Owner detail any
`ability, requirement, or right of Zodiac Aerospace to direct the funding and
`decision making process of its subsidiaries in litigation or other legal
`proceedings, such as this PGR. See Prelim. Resp. 6–9 (citing Exs. 2008,
`2009, 2010, 2011, 2012, 2020, 2021, 2022, 2023, 2024, 2028, 2029).
`Although Zodiac Aerospace may hold itself out on its website as the
`parent company, with “worldwide presence,” (See, e.g., Ex. 2010), this
`evidence tells us nothing about specific corporate control by Zodiac
`Aerospace over any of its subsidiaries nor does it describe any type of
`funding of subsidiaries for litigation or this PGR. See Exs. 2008–2012. As
`part of its corporate oversight responsibilities, Zodiac Aerospace
`promulgates certain standards that are apparently required for suppliers to its
`subsidiaries. See Ex. 2021, 1 (Titled, “Requirements Applicable to
`Suppliers, “[t]his document defines the requirements applicable to the
`ZODIAC AEROSPACE Group suppliers.”). These supplier standards
`appear intended to ensure a baseline supply format for subsidiaries such as
`C&D Zodiac, but are mainly an example of corporate efficiency and
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`organizational consistency that expressly does not limit subsidiaries from
`prescribing additional requirements. See id. (“Supplementary specific
`requirements can be included in contracts or purchase orders.”). The
`supplier requirements document itself may be an example of an internal
`control that ensures uniformity of goods or service from the groups’
`suppliers, but it is not particularly probative evidence showing specific
`decision making or financial control by Zodiac Aerospace over any
`subsidiary in the Zodiac Aerospace group. For instance, the subsidiaries
`appear free to use any supplier they choose, as long as the supplier abides by
`the baseline requirements in this document. See id. at 2 (“This document
`applies to all aerospace, defense and space products purchased by the
`ZODIAC AEROSPACE Group entities.”).
`The 2014/2015 Zodiac Aerospace “Report of the Chairman of the
`Supervisory Board” (“the Report”) explains that
`[p]ursuant to the operations defined by the Zodiac Aerospace
`Executive Board and which fall under its control, each subsidiary
`assumes all company duties and responsibilities in the legal,
`commercial, technical, industrial, economic, financial, tax and
`social areas, except those centralized at Group level as defined
`below.
`Ex. 2029, 110. Although the “centralized” list of responsibilities referred to
`in the Report includes a somewhat contradictory statement regarding
`“pooled services such as financing, IT, legal affairs, human resources and
`industrial operations,” there is no clarification or description of any scope of
`legal affairs that is, or would be, undertaken by the parent company on
`behalf of C&D Zodiac. Id.
`We are apprised of no persuasive evidence that the limited role of
`“governance, risk management and monitoring of Group companies”
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`ascribed to Zodiac Aerospace in this Report is sufficient to show that any
`party other than C&D Zodiac precipitated, controls or is funding this PGR.
`Id. Therefore, we have no reason to doubt that Petitioner has satisfied its
`obligation to name any and all real parties in interest.
`CLAIM CONSTRUCTION
`II.
`A. Legal Standard
`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”).
`Petitioner proposes a 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.” Prelim. Resp. 13. We
`agree with Patent Owner.
`Observing Figures 1 and 2 in their entirety, we are not persuaded at
`this point in the proceeding that applying specific nomenclature to aspects of
`the design provides any clarity to either a designer of skill in the art, or to an
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`ordinary observer, that is not self-evident by simply observing the overall
`appearance of the design itself. We determine that the scope of the claimed
`design protects the ornamental aspects of an aircraft lavatory including a
`wall defining a recess as shown in Figures 1 and 2.
`III. ANALYSIS
`A. The Effective Filing Date of the Sole Claim of the ’031 patent
`The parties dispute the effective filing date of the ’031 patent.
`Compare Pet. 28 (Petitioner asserts that “[t]he ’031 patent is not entitled to
`an effective filing date any earlier than October 10, 2013 and is therefore
`eligible for post-grant review.”), with Prelim. Resp. 19 (Patent Owner argues
`“that [Patent Owner] had possession of the claimed design as of April 18,
`2011.”). To be eligible for post-grant review, the ’031 patent must have an
`effective filing date on or after March 16, 2013. This is a threshold issue
`with respect to post-grant review which we address at the outset. See 35
`U.S.C. § 100(i)(1)(A)-(B).
`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
`contained 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 might be
`entitled to an effective filing date of April 18, 2011, under 35 U.S.C. § 120.
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`See 35 U.S.C. § 120 (requiring for benefit of an earlier filed application that
`the latter application, among other things, “contain[] or [be] amended to
`contain a specific reference to the earlier filed application”).
`In order for the ’031 patent to be entitled to an effective filing of April
`18, 2011, the invention it claims must be adequately described and enabled
`in the earlier filed ’063 application. 35 U.S.C. § 120 (requiring compliance
`with 35 U.S.C. § 112(a));2 In re Owens, 710 F.3d 1362, 1366 (Fed. Cir.
`2013). “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.’” In re Owens, 710 F.3d at 1366 (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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`2 The written description requirement, which is now found at 35 U.S.C.
`§ 112(a), was codified previously at 35 U.S.C. § 112, ¶ 1 (1975).
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`Petitioner argues that the ’063 application, which became the ’838
`utility patent, does not provide written description support for the claim of
`the ’031 patent. Pet. 28–43. Figures 1 and 2 of the ’063 application are
`reproduced below.
`
`
`Figure 1, above, illustrates “a prior art installation of a lavatory immediately
`aft of and adjacent to an aircraft passenger seat.” Figure 2 depicts “a
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`lavatory according to the present invention immediately aft of and adjacent
`to or abutting an aircraft cabin passenger seat.” Ex. 1007 ¶¶ 17–18.
`Figure 2 of the ’063 application does not show the same ornamental
`design as claimed in the ’031 patent, as shown by comparison with Figures 1
`and 2 of the ’031 patent supra. For example, Figure 2 of the ’063
`application depicts a front wall profile of a lavatory defining a lower recess
`formed by an angled lower portion of the wall extending rearward relative to
`passenger seat 16 to meet the floor. The angled lower portion of the wall
`and lower recess apparently facilitate a rear leg of seat 16 extending
`rearwardly beyond the forward most vertical portions of the wall 28, “to
`allow the installation of an increased number of passenger seats.” Ex. 1001,
`2:6–7. The angled lower portion of the wall and recess are entirely absent
`from the ’031 patent. Figures 1 and 2 of the ’031 patent illustrate a vertical
`wall portion intersecting the floor, and an opening in the vertical wall
`portion. Ex. 1001, Fig. 2. Figure 2 of the ’063 application does not disclose
`certain other aesthetic elements claimed in the ’031 patent; for instance the
`’063 application illustrates sharply angled intersections between the various
`planar wall portions forming the upper and lower recesses, whereas the ’031
`patent claims smoothly rounded intersections between horizontally adjacent
`wall portions as well as certain curved wall portions. A side-by-side
`comparison of Figure 2 of the ’063 application and Figures 1 and 2 of the
`’031 patent is provided below.
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`Above, Figure 2 of the ’063 application is shown on the left, in comparison
`with Figures 1 and 2 from the ’031 patent shown in the middle and on the
`right, respectively.
`“Giving a patent application the benefit of the earlier filing date of
`another earlier filed application has a statutory basis and does not rest on the
`mere claim or recitation of the applicant. Nor is the mere labeling of an
`application a ‘division’ enough.” Racing Strollers, Inc. v. TRI Indus., Inc.,
`878 F.2d 1418, 1419 (Fed. Cir. 1989). Comparing Figure 2 in the ’063
`application with the lavatory design embodied in the ’031 patent drawings,
`we determine that at least the above discussed aesthetic features of the
`claimed design are absent in the ’063 application, and therefore, possession
`of the aesthetic ornamental appearance of the claimed design illustrated in
`the ’031 patent is not shown as of the filing date of the ’063 application.
`Based on the present record, the ’031 patent is eligible for post-grant
`review because the challenged claim is not entitled to the benefit of the filing
`date of the ’063 Application. See In re Salmon, 705 F.2d 1579, 1581 (Fed.
`Cir. 1983) (“[F]or section 120 to apply, the first application must disclose
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`‘the invention’ claimed in the second application. With respect to the design
`patent involved in this case, those provisions require that the stool design
`claimed in the second application must be the same design disclosed in the
`parent application.”) (citations omitted).
`We take a moment to address In re Daniels, 144 F.3d at 1452 (Fed.
`Cir. 1998), as Patent Owner relies upon Daniels to support its position that
`the ’063 application, “reasonably conveys to the artisan that the inventor
`had possession at that time of the later claimed subject matter.” Prelim.
`Resp. 15 (citing Daniels, 144 F.3d at 1456). In Daniels, the applicant to a
`continuation application for a leecher did not include a decorative leaf
`pattern on the leecher that was present in the originally filed drawings in the
`parent application. 144 F.3d at 1454–55. The Board of Patent Appeals and
`Interferences subsequently denied the applicant benefit of the filing date of
`the parent application because “the change in the drawings defeats
`compliance with the written description requirement of the first paragraph of
`35 U.S.C. § 112.” Id. at 1455.
`The Federal Circuit reversed the Board’s decision, determining that
`the change in Daniels did not alter the design of the claimed article of
`manufacture itself, i.e., the leecher, but merely removed surface indicia, leaf
`ornamentation, from the leecher. See id. at 1457 (explaining that this was
`reasonable because “[t]he leaf ornamentation did not obscure the design of
`the leecher, all details of which are visible in the drawings of the earlier
`application”).
`In the present case, the difference is not one of simply eliminating
`surface indicia, but that visually distinctive elements of the claimed lavatory,
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`elements, which contribute significantly to the overall appearance of the
`design itself, are not present in the ’063 application.
`B. 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, invalid, 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. Patent Owner does not substantively address this issue in
`its Preliminary Response. For the reasons below, Petitioner has established
`that it is more likely than not that the sole claim of the ’031 patent is invalid.
`1. Spacewall and the Investor Day Presentation
`Petitioner asserts that Patent Owner has admitted that Spacewall “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.
`47. By way of example, Petitioner points to a slide-show presentation titled
`“Investor Day,” (“Investor Day Presentation”), which occurred apparently
`on March 12, 2012, and included the following slide.
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`The slide, above, titled “Boeing 737 Modular Lavatory Systems,” includes
`an image of a portion of an aircraft lavatory and a profile view of a non-
`planar front wall defining a recess into which a portion of a passenger chair
`seat back extends. Ex. 1009, 16.
`Another slide from the Investor Day Presentation, shown 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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`The slide, above, describes a “sole-source contract” with Boeing, apparently
`from 2011, relating to Spacewall lavatory structure as well as other awards
`from Star Alliance, a network of 28 member airlines. Id. at 9. The
`authenticity of the Investor Day Presentation is supported 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. 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 technology, which frees up floor space
`in the cabin, creating the opportunity to add up to six incremental
`passenger seats per airplane.
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`Ex. 1018, 1.
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`2. AIA 35 U.S.C. § 102(a)(1)
`AIA 35 U.S.C. § 102(a)(1) states
`A person shall be entitled to a patent unless —
`the claimed invention was patented, described in a printed
`publication, or in public use, on sale, or otherwise available to
`the public before the effective filing date of the claimed
`invention;
`According to the B/E Aerospace Investor Day Presentation, by at least
`March 12, 2012, there existed a contract between B/E Aerospace and Boeing
`for Spacewall lavatory structures. Ex. 1009, 9. The existence of a contract
`between B/E Aerospace and Boeing infers strongly that there was an offer
`for sale. See Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361,
`1365 (Fed. Cir. 2008) (“[A]n attempt to sell is sufficient if it rises to an offer
`upon which a contract can be made merely by accepting it.”).
`The above evidence appears also to be corroborated by a declaration
`from Mitchell Freeman, a Corporate Account Executive at B/E Aerosopace.
`Ex. 1016 ¶ 1. Mr. Freeman’s declaration was submitted during prosecution
`of apparently related patent applications and states that “[a]fter our
`demonstrations of functional mock-ups of the Spacewall™ system to Boeing
`. . . B/E Aerospace became the exclusive supplier for all lavatory structure
`for Boeing’s next-generation 737 aircraft.” Id. ¶¶ 5–6. Whether or not the
`Spacewall “mock-ups” described by Mr. Freeman are the same as the above
`Spacewall system image is not clear at this point, but the timing described
`by Mr. Freeman, and the filing dates of the related patent applications,
`appears generally consistent with the timeline of the Investor Day
`Presentation evidence above. On the record before us, we are persuaded that
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`Petitioner has presented evidence sufficient for purposes of institution, of a
`commercial offer for sale, and potentially a sale, at least to Boeing, of the
`Spacewall lavatory design shown in the Boeing 737 Modular Lavatory
`Systems slide above.
`Having determined on the evidence before us that Spacewall was
`subject at least to a commercial offer for sale prior to the effective date, we
`must determine whether the invention was also ready for patenting. See
`Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). We are persuaded that
`this condition of the on-sale bar is satisfied because B/E Aerospace
`presented at least an image of Spacewall to investors in the March 12, 2012
`“Investor Day” presentation. And, observing a side-by-side comparison of
`the overall appearances of Spacewall, as shown in the image from Investor’s
`Day Presentation, next to Figure 1 of the claimed design, below, we are
`persuaded that Spacewall as depicted in the image of Investor’s Day
`Presentation substantially discloses the design claimed in the ’031 patent.
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`The image on the left, above, from Inventor’s Day Presentation is a portion
`of an aircraft lavatory and a profile view of a non-planar front wall having a
`recess into which a portion of a passenger chair seat back is received. Ex.
`1009, 16. Figure 1 of the ’031 patent, on the right, illustrates “a front side
`view” of an aircraft lavatory with a non-planar front wall having a recess.
`Ex. 1001, Written Desc.
`We are persuaded on the evidence presented at this point in the
`proceeding that Petitioner has shown that it is more likely than not that the
`claimed design for a lavatory was the subject of at least an offer for sale, and
`potentially a sale, prior to October 10, 2013, the effective filing date of the
`’031 patent.
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`C. Whether the ’031 Patent is Indefinite
`Petitioner argues that Figures 1 and 2 of the ’031 patent are
`incongruous. Pet. 54–65. We agree, to an extent, with Petitioner that there
`are inconsistencies between Figures 1 and 2 of the ’031 patent. See Pet. 59.
`For example, the length and curvature of certain portions of the profile view
`of the upper portion of the forward wall and recess in Figure 1 do not appear
`entirely consistent with the perspective view in Figure 2. Id. (citing Ex 1003
`¶ 64). Also, Figure 2 illustrates lines which do not appear to consistently
`converge at a single horizon point as generally expected in a perspective
`view. Id. at 61 (citing Ex 1003 ¶ 68).
`Our review of the figures reveals, on the other hand, that the figures
`are generally consistent, having many substantial overall visual similarities
`depicting corresponding elements of the claimed aircraft interior lavatory. It
`is only upon a more scrutinizing assessment and comparison of the figures
`that the inconsistencies noted by Petitioner become apparent. Observing the
`overall appearance of the design, it may also be that any inconsistencies are
`not so ambiguous that the scope of protection sought from the claim cannot
`be determined. See MPEP 1504.04 (“[I]f the appearance and shape or
`configuration of the design for which protection is sought cannot be
`determined or understood due to an inadequate visual disclosure, then the
`claim, which incorporates the visual disclosure, fails to particularly point out
`and distinctly claim the subject matter the inventor(s) regard as their
`invention, in violation of the second paragraph of 35 U.S.C. 112(b)”).
`Petitioner has presented testimony from Mr. Ronald Kemnitzer
`alleging that “[g]iven that these figures do not convey accurate,
`corresponding information between the views, it would be impossible for a
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`designer of ordinary skill to accurately reproduce the intended design.” Ex.
`1003 ¶ 70. We give some weight, at least initially, to Mr. Kemnitzer’s
`testimony. But we also maintain a certain skepticism as to whether or not
`the various drawing discrepancies pointed out in his declaration truly rise to
`a level which would inhibit a designer of skill in the art from resolving such
`discrepancies so as to reproduce the claimed design. For example, to the
`extent Figure 2 shows slightly different curvatures or planes of certain
`panels relative to Figure 1, it is well settled that an application to a single
`claim may include minor variations on a single basic design. See In re
`Klein, 987 F.2d 1569, 1570 n.1 (Fed. Cir. 1993).
`Overall, our observation of the claimed design as a whole reveals
`competing paths into the copse of design patent indefiniteness. The proper
`path cannot reasonably be ascertained at his early stage of the proceeding
`without allowing a substantive response from Patent Owner and assessing
`additional evidence that may be developed during a trial. Based on the
`inaccuracies which we observe between Figures 1 and 2, and the
`contradictions between the figures alleged by Mr. Kemnitzer, we determine
`that there is a reasonable question whether the drawings, “viewed in light of
`the specification and prosecution history, inform those skilled in the art
`about the scope of the invention with reasonable certainty.” Nautilus, Inc. v.
`Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014); cf. In re Packard,
`751 F.3d 1307, 1313 (Fed. Cir. 2014) (“claims are required to be cast in
`clear—as opposed to ambiguous, vague, indefinite—terms. It is the claims
`that notify the public of what is within the protections of the patent, and
`what is not.”). On the evidence before us at this point in the proceeding, we
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`are persuaded that Petitioner has shown that it is more likely than not that
`the sole claim of the ’031 patent is indefinite.
`D. Whether the claimed design in the ’031 Patent is Purely
`Functional
`It is well-settled that an article having an ornamental design that is an
`aesthetic design choice may perform an inherent function and yet also be
`properly the subject of a design patent. See Ethicon Endo-Surgery, Inc. v.
`Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015) (“Articles of
`manufacture necessarily serve a utilitarian purpose, but design patents are
`directed to ornamental designs of such articles.”). On the other hand, an
`article having an ornamental design that is “primarily functional” rather than
`“primari
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