Trials@uspto.gov
`571.272.7822
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` Paper 31
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` Date: July 1, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAN WAH HOLDINGS LIMITED,
`Petitioner,
`
`v.
`
`RAFFEL SYSTEMS, LLC,
`Patent Owner.
`____________
`
`PGR2019-00029
`Patent D821,986 S
`____________
`
`
`
`Before GRACE K. OBERMANN, CHRISTOPHER G. PAULRAJ, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Challenged Claim Unpatentable
`35 U.S.C. § 328(a)
`
`
`
`
`
`

`

`PGR2019-00029
`Patent D821,986 S
`
`
`I.
`
`INTRODUCTION
`
`Raffel Systems, LLC (“Patent Owner” or “Raffel”) is the owner of
`
`U.S. Patent No. D821,986 S to Kenneth G. Seidl et al. (Ex. 1001, “the D’986
`
`patent”). Man Wah Holdings Limited (“Petitioner” or “Man Wah”) filed a
`
`Petition requesting post-grant review of the claim of the D’986 patent.
`
`Paper 3 (“Pet.”). We instituted trial on July 10, 2019. Paper 9 (“Institution
`
`Decision”). Patent Owner filed a Response to the Petition. Paper 15 (“PO
`
`Resp.”). Petitioner responded with a Reply (Paper 20 (“Pet. Reply”)), to
`
`which Patent Owner responded with a Sur-reply (Paper 21 (“PO Sur-
`
`reply”)). A hearing was conducted on April 2, 2020, where the parties
`
`presented oral argument. See Paper 30 (“Hr’g Tr.”).
`
`After considering the parties’ arguments and supporting evidence, we
`
`conclude that Petitioner has proved by a preponderance of the evidence that
`
`the claim of the D’986 patent is unpatentable. 35 U.S.C. § 326(e).
`
`A.
`
`REAL PARTIES-IN-INTEREST
`
`II. BACKGROUND
`
`Petitioner states that the Real Party-in-Interest is “Man Wah Holdings
`
`Limited.” Pet. 1. Patent Owner states that the Real Party-in-Interest is
`
`“Raffel Systems, LLC.” Paper 4.
`
`B.
`
`RELATED MATTERS
`
`Petitioner has disclosed, “[t]he ’986 patent is presently at issue in the
`
`action titled Raffel Systems, LLC v. Man Wah Holdings LTD Inc et al., Case
`
`2:18-cv-01765 (WIED).” Pet. 1. Patent Owner identifies the same related
`
`matter. See Paper 4.
`
`2
`
`

`

`PGR2019-00029
`Patent D821,986 S
`
`C.
`
`THE D’986 PATENT
`
`The D’986 patent is a design patent and the invention is an
`
`“ornamental design for a switch, as shown and described” in the patent.
`
`Ex. 1001, code (57) (claim). The D’986 patent indicates that it issued July
`
`3, 2018, from US application 29/592,595, which was filed January 31, 2017.
`
`Id. at code (45), (21), (22). No other date for priority is indicated on the face
`
`of the D’986 patent. Id. Petitioner contends that January 31, 2017 is,
`
`therefore, the priority date for the D’986 patent against which prior art and
`
`patentability are measured. Pet. 3. Patent Owner agrees. PO Resp. 2.
`
`As its claimed design (and disclosure), the D’986 patent includes six
`
`(6) drawings. The D’986 patent states:
`
`FIG. 1 is a three-quarter perspective view showing our new
`design of a switch;
`
`FIG. 2 is a front elevational view thereof, the rear elevational
`view being identical;
`
`FIG. 3 is a left side elevational view thereof,
`
`FIG. 4 is a right side elevational view thereof,
`
`FIG. 5 is a top plan view thereof; and,
`
`FIG. 6 is a bottom plan view thereof.
`
`The broken lines shown in FIGS. 1 through 6 are for the purpose
`of illustrating environment, and form no part of the claimed
`design.
`
`Ex. 1001, 1 (Description). The D’986 drawings are reproduced below:
`
`The D’986 patent’s Figure 1 is reproduced immediately below.
`
`3
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`

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`PGR2019-00029
`Patent D821,986 S
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`
`
`
`Figure 1, above, shows a perspective view of the claimed switch design from
`
`above, looking over one rounded corner. Ex. 1001, Fig. 1, code (57). The
`
`D’986 patent’s Figure 5 is reproduced immediately below.
`
`
`
`
`Figure 5, above, shows a top view of the claimed switch design. Id. at Fig.
`
`5, code (57). The D’986 patent’s Figure 2 is reproduced immediately below.
`
`4
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`

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`PGR2019-00029
`Patent D821,986 S
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`
`
`
`Figure 2, above, shows a side view of the claimed switch design, along a
`
`longer edge of the switch. Id. at Fig. 2, code (57). The D’986 patent’s
`
`Figures 3 and 4 are reproduced immediately below.
`
`
`
`
`Figures 3 and 4, above left and right, respectively, each show side views of
`
`the claimed design along shorter edges of the switch; Figure 3 shows the
`
`switch from one end and Figure 4 shows the switch from the opposite end.
`
`Id. at Figs. 3, 4, code (57). The D’986 patent’s Figure 6 is reproduced
`
`immediately below.
`
`5
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`

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`PGR2019-00029
`Patent D821,986 S
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`
`
`
`Figure 6, above, shows a bottom view of the claimed switch design. Id. at
`
`Fig. 6, code (57).
`
`Patent Owner concedes that this patented design is embodied in the
`
`component labeled “CTR UR2 08” in Raffel_sample (Ex. 1004; Ex. 1005),
`
`which is discussed infra. Hr’g Tr. 45:14–21.
`
`D.
`
`PETITIONER’S ASSERTED GROUNDS FOR UNPATENTABILITY
`
`Petitioner asserts two (2) grounds for unpatentability, one under
`
`35 U.S.C. § 102(a)(1) for anticipation and on-sale bar, and the other
`
`35 U.S.C. § 103 for obviousness, as follows. Pet. 3, 23–32.
`
`6
`
`

`

`PGR2019-00029
`Patent D821,986 S
`
`
`
`GROUND
`
`CLAIM
`CHALLENGED
`
`35 U.S.C. §
`
`REFERENCE(S)/BASIS
`
`1
`
`2
`
`1
`
`1
`
`102(a)(1)
`
`Anticipation or On-Sale Bar
`(as evidenced by
`Raffel_sample1)
`
`103
`
`Kintec Solution,2 Hua-Dali3
`
`
`In support of these grounds for unpatentability, Petitioner submitted, inter
`
`alia, a First Declaration4 and a Second Declaration5 of Linhua Huang and a
`
`Declaration of Mingshao Zhang.6 Patent Owner relies, inter alia, upon a
`
`Declaration of Richard Weeden7 and a Declaration of Paul Stangl.8
`
`
`1 Nov. 17, 2015 email from “Ben Song <bsong@faffel.com>” to, among
`others, “Manwah-Huang Linhua <307429367@qq.com>,” including a PDF
`file attachment (Ex. 1004 and Ex. 1005 (English Translation), collectively
`“Raffel_sample”).
`2 EUIPO Design Registration 001863556-0004 (registered and published
`June 6, 2011) (Ex. 1006, “Kintec Solution”).
`3 CN Industrial Design Registration 303948579 (published Nov. 30, 2016)
`(Ex. 1007, “Hua-Dali”).
`4 Declaration of Linhua Huang (Ex. 1010, “First Huang Declaration”).
`Ms. Huang authenticates the Raffel_sample email (Exs. 1004 and 1005) and
`its attachment as true and correct copies received by her on November 17,
`2015. Id. ¶¶ 3–5.
`5 Declaration of Linhua Huang in Support of Petitioner’s Reply (Ex. 1013,
`“Second Huang Declaration”).
`6 Declaration of Mingshao Zhang in Support of Man Wah Holdings
`Limited’s Petition for Post Grant Review of U.S. Patent No. D821,986
`(Ex. 1011, “Zhang Declaration”).
`7 Declaration of Richard Weeden in Support of Patent Owner’s Response
`(Ex. 2001, “Weeden Declaration”).
`8 Declaration of Paul Stangl in Support of Patent Owner’s Response
`(Ex. 2010, “Stangl Declaration”).
`
`7
`
`

`

`PGR2019-00029
`Patent D821,986 S
`
`E.
`
`RAFFEL_SAMPLE
`
`For the first ground presented in its Petition, Petitioner contends that
`
`the D’986 patent is unpatentable under 35 U.S.C. §102(a)(1), as being
`
`anticipated or subject to the on-sale bar, as evidenced by the Raffel_sample
`
`email. Raffel_sample is an email dated November 17, 2015, indicating that
`
`it was sent by “Ben Song <bsong@raffel.com>” to “Manwah-Manager Chen
`
`<chenjj@manwahgroup.com>; Manwah-Huang Linhua
`
`<307429367@qq.com>; [and] Paul Stangl <pstangl@weimerbearing.com>,”
`
`and copying “Richard Weeden <rweeden@raffel.com>; [and] Ken Seidl
`
`<kseidl@raffel.com>.” Ex. 1004; Ex. 1005. The email is also copied to
`
`“Richard Weeden <rweeden@raffel.com>” and “Ken Seidl
`
`<kseidl@raffel.com>” as “Cc” recipients. Id. Exhibit 1004 is the original
`
`email and is written primarily in Chinese characters. Ex. 1004. Exhibit
`
`1005 is an English translation of Exhibit 1004. The parties agree that
`
`Exhibit 1005 is an accurate translation. Hr’g Tr. 6:9–12, 45:4–13.
`
`The Raffel_sample email included a PDF attachment entitled “Power
`
`Recline and Headrest by Paul 11.16.15.pdf.” Ex. 1004; Ex. 1005. Herein,
`
`we refer to the Raffel_sample’s email portion as “Raffel_sample email” and
`
`its attachment portion as “Raffel_sample attachment,” and will primarily
`
`discuss the English translation. The body of the Raffel_sample email states:
`
`Dear Manager Huang, Mr. Chen,
`
`This is Ben from Xiamen Raffel, Mr. Song.
`
`I want to express my gratitude for the opportunity to visit with
`Manwah and the warm reception we received. I invite you to
`come visit Xiamen when you have the time, and I look forward
`to having the honor of hosting you here.
`
`Attached you will find an offer for exclusive pricing on the CTR
`Series that Manwah asked about during our American leaders’
`
`8
`
`

`

`PGR2019-00029
`Patent D821,986 S
`
`
`visit to your company yesterday afternoon. The pricing includes
`shipping fees. Please take a look at your convenience.
`
`attached pricing for some of the 4 button controls (with
`and without USB) and for the CTR UR1 04 (two button with
`USB).
`
`Also, this pricing is delivered to Manwah (we pay the
`freight charges to Manwah).
`
`Regarding the comment yesterday about the central positioning
`of the USB port, this symmetry allows for the switch to be used
`on either side of the sofa and eliminates the need for two different
`switches.
`
`This makes this switch symmetric so that it can be used on
`either side of a sofa without having to have two different
`switches.
`
`I look forward to receiving your feedback. Should you have any
`needs or questions, please do not hesitate to call me. We are
`looking forward to the opportunity of taking our partnership to
`the next level. Thank you!
`
`Ex. 1005. There is no dispute that the email, with its attachment, was sent
`
`by Patent Owner’s representative to Petitioner’s representatives on
`
`November 17, 2015. Hr’g Tr. 6:14–19; PO Resp. 10, 14–17 (discussing the
`
`Song email of Raffel_sample, but not contesting its authenticity).9
`
`The Raffel_sample attachment includes five (5) images of “ManWah
`
`– Power Recline and Headrest Controls” with respective accompanying
`
`information relating to the “item,” “Raffel P/N” (understood to mean
`
`product number), “Price” understood to be in Chinese Yuan (RMB)
`
`currency, “VAT (17%),” “RMB & VAT,” “Min Qty” understood to mean
`
`
`9 The signature of the email refers to “Ben Stiller,” but there appears to be
`no issue or dispute about who sent the email on behalf of Patent Owner.
`Ex. 1005.
`
`9
`
`

`

`PGR2019-00029
`Patent D821,986 S
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`minimum quantity for purchase, and “Total Price.” Ex. 1004. We note,
`
`Patent Owner has labeled these products “ManWah,” using Petitioner’s
`
`name to identify the products. Id. Like the body of the email, the
`
`Raffel_sample attachment indicates its listed prices are “** Delivered
`
`Pricing**.” Id. The second-listed item in the Raffel_sample attachment is
`
`reproduced below:
`
`
`
`* * *
`
`
`Ex. 1004 (annotated to show headings and discussed item). The listing
`
`reproduced above has an image of a switch plate, with four domed, round
`
`buttons arranged in a regular, rectangular pattern and a fifth, smaller,
`
`cylindrical, domed button in the center of the four other buttons. Id. This
`
`arrangement of buttons is centered along a long edge of the switch plate and
`
`off-set along its shorter edges. Id. The switch plate is rectangular and has
`
`rounded corners and rounded, beveled edges. Id. There are two small,
`
`through-holes, each centered along the short end of the rectangular switch
`
`plate. Id. There is also a rectangular opening in the switch plate, centered
`
`thereon along a long edge of the plate with the five above-discussed buttons;
`
`the opening appears to house a USB port. Id. The image also shows a base
`
`10
`
`

`

`PGR2019-00029
`Patent D821,986 S
`
`portion below the switch plate’s surface and what appears to be an electrical
`
`cord extending therefrom. Id.
`
`The Raffel_sample attachment listing reproduced above indicates that
`
`the product of the image is called “Rectangular 5-Button Power Recline and
`
`Headrest with USB and Home Button” and indicates it is “Available in black
`
`or silver finish.” Ex. 1004 (“Item” description). This listing further
`
`indicates that the Raffel product number for this item is “CTR UR2 08,” that
`
`its price is “57.49,” that its VAT is “9.77,” that the sum of these cost is
`
`“67.26,” that the minimum quantity (for purchase) is “1,” and that the total
`
`price is “67.26.” Id.
`
`The Raffel_sample attachment concludes with the following
`
`statements:
`
`All sales are subject to Raffel System’s (i) standard terms and
`conditions of sale and (ii) warranty.
`
`These documents are available at www.raffel.com.
`
`*NOTE: Small quantities of all items are available on demand.
`If large quantities are needed, there may be as much as a 10 week
`lead time for production. Quantities and lead times vary by item;
`detailed information is available upon request.
`
`to product specifications will result
`Changes
`modifications.
`
`in price
`
`Id.
`
`F.
`
`KINTEC SOLUTION
`
`Kintec Solution is a European Union Intellectual Property Office
`
`“RCD file information” for design number “001863556-0004.” Ex. 1006, 1.
`
`The exhibit itself indicates it is “Man Wah Exhibit 1005,” but we understand
`
`this is an error; the exhibit is filed in this proceeding as Exhibit 1006.
`
`11
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`

`

`PGR2019-00029
`Patent D821,986 S
`
`
`Kintec Solution indicates an RCD application was “received on May
`
`13, 2011” and was “Registered and fully published” on June 6, 2011. Id. at
`
`1, 2. Kintec Solution includes six (6) photograph images, which are
`
`reproduced below:
`
`
`
`
`
`
`Ex. 1006, 1–2. The six figures above show a switch device from various
`
`perspectives, including from each side, from directly above, and from a
`
`perspective view above one longer side with the device slightly rotated.
`
`This last-described photograph image is reproduced again below, enlarged:
`
`12
`
`

`

`PGR2019-00029
`Patent D821,986 S
`
`
`
`
`Id. at 1. The image above shows a switch having a rectangular plate with a
`
`brushed-aluminum or stainless steel appearance and rounded corners. Id.
`
`The plate has straight-edged sides and four oval-shaped buttons in oval
`
`openings in the plate, arranged in a regular rectangular configuration in the
`
`center of the plate. Id. Each button appears to have a substantially flat, but
`
`possibly slightly curved surface. Id. Each opening has a beveled lip
`
`protruding from the top of the surface of the plate, where each button
`
`extends slightly above these edges. Id. In the center of the rectangular
`
`configuration of these four buttons is a circular component having a circular
`
`opening defined by a circular lip. Id. The image also shows that the switch
`
`has a black base portion below its plate and what appears to be an electrical
`
`cord extending from the base. Id.
`
`G. HUA-DALI
`
`Hua-Dali is a Chinese design patent having registration number
`
`303948579, indicated as filed on May 11, 2016, and as registered and
`
`published on November 30, 2016. Ex. 1007, 3–4. Hua-Dali states:
`
`13
`
`

`

`PGR2019-00029
`Patent D821,986 S
`
`
`1. The title of the appearance design: Four-way button switch.
`2, Intended use of the appearance design: This product of the
`appearance design is used for electrical equipment switch. 3, The
`key points of the appearance design: The illustrated shape. 4,
`Drawings or photographs to embody the key points of the
`appearance design: Stereo Fig. 1.
`
`Id. at 4.
`
`Hua-Dali includes eight (8), unlabeled drawings, which are
`
`reproduced below:
`
`
`
`
`Id. at 1–3. The eight figures above show a switch device from each side,
`
`from the top and bottom, from a perspective view from above one corner of
`
`the switch, and from a perspective view from below one corner of the
`
`switch. Id.
`
`14
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`

`

`PGR2019-00029
`Patent D821,986 S
`
`
`The switch design has an oblong cover plate with a series of beveled
`
`edges and bowed-out sides. Id. In the center of the plate is a large, convex
`
`circular button-like component having four triangles pointing outwardly
`
`toward each side of the switch, a small central circle, and a circular border.
`
`Id. To one side of the circle and nearer to one shorter side of the plate is a
`
`rectangular opening, which runs parallel to that shorter side of the plate. Id.
`
`To the opposite side of the circle from the rectangular opening is a small
`
`circle (about the same size as the circle in the center of the circular button).
`
`Id. The switch has a base below its plate. Id.
`
`III. DISCUSSION
`
`A. ORDINARY LEVEL OF SKILL IN THE ART
`
`Petitioner contends “[a] Designer Having Ordinary Skill In The Art
`
`(DHOSITA) would generally have had either (i) a degree in Industrial
`
`Engineering or Mechanical Engineering [including] product design courses
`
`or (ii) two years of work experience creating industrial designs.” Pet. 16
`
`(citing Zhang Declaration, Ex. 1011 ¶ 20).
`
`Patent Owner asserts
`
`The appropriate Designer Having Ordinary Skill In The
`Art (“DHOSITA”) here is “a designer of furniture or furniture
`components (including electronic switches for use in powered
`motion furniture), one who either (i) earned a degree in Industrial
`Engineering or Mechanical Engineering, or (ii) has at several
`years of relevant experience in such designs.
`
`PO Resp. 4. Patent Owner argues that Petitioner’s proposed definition of the
`
`skilled designer is “overbroad and contrary to established case law because it
`
`does not include any reference to the type of article being designed.” Id. at
`
`5.
`
`15
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`

`PGR2019-00029
`Patent D821,986 S
`
`
`Petitioner’s definition of the designer’s level of ordinary skill in the
`
`art is supported by the Zhang Declaration. Ex. 1011 ¶ 20. Patent Owner
`
`fails to cite any support in the record for its proposed definition. Although
`
`we agree that obviousness of a design patent must be assessed from the
`
`perspective of “a designer of ordinary skill who designs articles of the type
`
`involved,” we are not persuaded that the designer must have specific
`
`experience in designing furniture or furniture components (including
`
`electronic switches for use in powered motion furniture). See Durling v.
`
`Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). Therefore, we
`
`accept and use Petitioner’s above-quoted definition of the skilled designer.
`
`However, we note that our ultimate decision here would not be affected
`
`regardless of which party’s definition we use.
`
`B.
`
`CLAIM CONSTRUCTION
`
`Based on the filing date of the Petition (Jan. 1, 2019), the Board
`
`interprets claim terms in a post-grant review (“PGR”) using the same claim
`
`construction standard that is used to construe claims in a civil action in
`
`federal district court. See Changes to the Claim Construction Standard for
`
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`
`Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018) (amending
`
`37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
`
`37 C.F.R. § 42.100(b) (2019)). However, the claim of the D’986 patent does
`
`not require express construction for the purposes of this decision. See, e.g.,
`
`PO Resp. 5. On that point, we observe that Figures 1–6 of the D’986 patent
`
`(Ex. 1001) reflect the scope of the patented design. See Egyptian Goddess,
`
`Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (“[A] design is better
`
`represented by an illustration ‘than it could be by any description and a
`
`16
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`

`PGR2019-00029
`Patent D821,986 S
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`description would probably not be intelligible without the illustration.’”
`
`(quoting Dobson v. Dornan, 118 U.S. 10, 14 (1886)) (en banc).
`
`To the extent any explanation of that scope is necessary to this
`
`decision, we provide it below in our analysis of the asserted challenge.
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d
`
`1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in
`
`controversy, and only to the extent necessary to resolve the controversy’”
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999)).
`
`C.
`
`APPLICABLE LEGAL STANDARDS FOR UNPATENTABILITY
`
`The Leahy–Smith America Invents Act (AIA) bars a person from
`
`receiving a patent on an invention that was “in public use, on sale, or
`
`otherwise available to the public before the effective filing date of the
`
`claimed invention.” 35 U.S.C. § 102(a)(1).
`
`When considering whether a claimed design is anticipated over a prior
`
`art disclosure the factual inquiry is the same as in utility patent applications,
`
`that is, the reference “must be identical in all material respects,” or put
`
`another way, the claimed design and the prior art design must be
`
`substantially the same. Hupp v. Siroflex of America Inc., 122 F.3d 1456,
`
`1461 (Fed. Cir. 1997); Door-Master Corp. v. Yorktowne, Inc., 256 F.3d
`
`1308, 1313 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511,
`
`528 (1871)). A printed publication can anticipate a patent’s claim and our
`
`reviewing court has interpreted Section 102
`
`in light of its purpose “to prevent withdrawal by an inventor . . .
`of that which was already in the possession of the public.”
`Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)
`(alteration in original) (quoting In re Wyer, 655 F.2d 221, 226
`(CCPA 1981)). “Because there are many ways in which a
`
`17
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`
`reference may be disseminated to the interested public, ‘public
`accessibility’ has been called the touchstone in determining
`whether a reference constitutes a ‘printed publication’ . . . .” In
`re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference is
`considered publicly accessible “upon a satisfactory showing that
`such document has been disseminated or otherwise made
`available to the extent that persons interested and ordinarily
`skilled in the subject matter or art, exercising reasonable
`diligence, can locate it.” Wyer, 655 F.2d at 226. “If accessibility
`is proved, there is no requirement to show that particular
`members of the public actually received the information.”
`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569
`(Fed. Cir. 1988).
`
`Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355–56 (Fed.
`
`Cir. 2018). Public accessibility to online material is sufficient for such
`
`material to be a “printed publication.” Id. at 1356–60.
`
`The test for anticipation of a design claim is the “ordinary observer
`
`test.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240
`
`(Fed. Cir. 2009). Two designs are substantially the same under the ordinary
`
`observer test if, in the eye of an ordinary observer, giving such attention as a
`
`purchaser usually gives and being familiar with prior art designs, the
`
`resemblance is such as to deceive such an observer, inducing her to purchase
`
`one supposing it to be the other. Gorham, 81 US 511; Richardson v. Stanley
`
`Works, 597 F.3d 1295 (Fed. Cir. 2010). The “ordinary observer test requires
`
`consideration of the design as a whole.” See Int’l Seaway, 589 F.3d at 1243;
`
`Egyptian Goddess, 543 F.3d at 677.
`
`The “on-sale” bar under Section 102 applies to design patents.
`
`Continental Plastic Containers v. Owens Brockway Plastic Products, Inc.,
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`141 F.3d 1073, 1077 (Fed. Cir. 1998). The Supreme Court has held that
`
`the pre-AIA on-sale bar applies “when two conditions are
`satisfied” more than a year before an inventor files a patent
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`application. Pfaff [v. Wells Electronics, Inc.], 525 U.S. [55], at
`67 . . . [(1998)]. “First, the product must be the subject of a
`commercial offer for sale.” Ibid. “Second, the invention must
`be ready for patenting,” which we explained could be shown by
`proof of “reduction to practice” or “drawings or other
`descriptions of the invention that were sufficiently specific to
`enable a person skilled in the art to practice the invention.” Id.,
`at 67–68 . . . .
`
`Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 628, 633
`
`(2019). The AIA has done away with the statutory language requiring that
`
`the offer for sale be in the United States, but, otherwise, the AIA did not
`
`alter the meaning of the “on sale” bar from pre-AIA law. Id. “[A]
`
`commercial sale [triggering the on-sale bar] is one that bears the general
`
`hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial
`
`Code,” which states that “[a] ‘sale’ consists in the passing of title [i.e.,
`
`ownership,] from the seller to the buyer for a price.” Medicines Co. v.
`
`Hospira, Inc., 827 F.3d 1363, 1365 (Fed. Cir. 2016); U.C.C. § 2-106 (AM.
`
`LAW INST. & UNIF. LAW COMM’N 2012).
`
`Turning to obviousness, “[i]n determining the patentability of a
`
`design, it is the overall appearance, the visual effect as a whole of the design,
`
`which must be taken into consideration.” See In re Rosen, 673 F.2d 388,
`
`390 (CCPA 1982). The standard is whether the design would have been
`
`obvious to a designer of ordinary skill who designs articles of the type
`
`involved, and it is from this “designer of ordinary skill” perspective, as
`
`opposed to anticipation’s ordinary observer, from which obviousness is
`
`determined. See In re Nalbandian, 661 F.2d 1214, 1217 (CCPA 1981).
`
`To make out a successful obviousness challenge, one must identify “a
`
`reference, a something in existence, the design characteristics of which are
`
`basically the same as the claimed design . . . . Such a reference is necessary
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`whether the holding is based on the basic reference alone or on the basic
`
`reference in view of modifications suggested by secondary references.”
`
`Rosen, 673 F.2d at 391. Accordingly, “the first step in an obviousness
`
`analysis for a design patent requires a search of the prior art for a primary
`
`reference,” which requires the tribunal “to: (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.” Durling, 101 F.3d at 103. Obviousness may be concluded if a
`
`designer of ordinary skill would have been motivated to modify such a
`
`primary reference by modifying, adding, or deleting features thereof in view
`
`of a pertinent secondary reference.
`
`In order for secondary references to be considered in an obviousness
`
`analysis, “there must be some suggestion . . . to modify the basic design with
`
`features from the secondary references.” See In re Borden, 90 F.3d 1570,
`
`1574 (Fed. Cir. 1996). The long-standing test for properly combining
`
`references has been “whether they are so related that the appearance of
`
`certain ornamental features in one would suggest the application of those
`
`features to the other.” See In re Glavas, 230 F.2d 447, 450 (CCPA 1956).
`
`With these standards in mind, we address Petitioner’s challenges
`
`below.
`
`D.
`
`THE CLAIM IS UNPATENTABLE UNDER THE ON-SALE BAR OF
`35 U.S.C. § 102(a)(1)10
`
`Petitioner relies upon, for its first ground for unpatentability, the
`
`“[c]ertified Raffel’s on sale product description for a power recline and
`
`
`10 Although we noted in our Institution Decision that it was somewhat
`unclear whether Petitioner intended for its first ground “to be premised upon
`classical anticipation over a prior art publication, or upon the on-sale bar, or
`
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`headrest control. (‘Raffel_sample’).” Pet. 2. Petitioner asserts that
`
`“Raffel_sample qualifies as prior art because it was on sale to the public
`
`before the effective filing date of January 31, 2017 for the ’986 patent.” Id.
`
`at 8 (citing Ex. 1004; Ex. 1005; Ex. 1010.). Petitioner further asserts that
`
`“[o]n November 17, 2015, Raffel’s wholly owned subsidiary Xiamen Raffel
`
`communicated an offer via email to sell products to Man Wah. See
`
`Ex. 1004. As stated in the November 17, 2015 email, a document is
`
`attached to the email. Id. In the attached document of the November 17,
`
`2015 email, Raffel_sample is included[ ]. See Ex. 1010.” Id.
`
`Regarding the similarities between the Raffel_sample and the patented
`
`design, Petitioner asserts:
`
`Raffel_sample anticipates the ornamental designed [sic] claimed
`in the ’986 patent because it discloses the each and every element
`of the design claimed in the ’986 patent including: (a) a four-
`sided surface with four corners rounded; (b) four rounded
`buttons; (c) a rounded central component in the middle of the
`four rounded buttons; and (d) a rectangular hole away from the
`four-button group. Demonstratives showing where elements (a),
`(b), (c) and (d) are located in both Raffel_sample and in the ’986
`patent are provided in the sections below.
`
`Id. at 23 (citing Ex. 1011 ¶ 45). Petitioner provides the following side-by-
`
`side comparison between Figure 1 of the D’986 patent and an image of a
`
`product reproduced from the PDF attachment of “Raffel_sample”:
`
`
`upon both” (Inst. Dec. 15), we focus on the on-sale bar with respect to this
`ground as it is dispositive for our unpatentability determination.
`
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`
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`
`
`Id. at 24. The image above-left shows Figure 1 from the D’986 patent and
`
`the image above-right shows a product from the PDF attachment to the Song
`
`email, which the PDF attachment identifies as “Rectangular 5-Button Power
`
`Recline and Headrest with USB and Home Button” and Raffel P/N (product
`
`number) “CTR UR2 08.” Ex. 1001, Fig. 1; Ex. 1004 (attachment).
`
`Regarding the above side-by-side image comparison, Petitioner states, “[a]s
`
`shown above, each and every element of the design claimed in [D]’986
`
`patent is present in Raffel_sample.” Pet. 24; Ex. 1011, ¶ 45.
`
`Patent Owner does not contest the authenticity of the Raffel_sample
`
`email or attachment. See generally PO Resp.; PO Sur-reply. Patent Owner
`
`concedes that this product set forth in Raffel_sample attachment and
`
`discussed in Raffel_sample email embodies the patented design of the D’986
`
`patent. Hr’g Tr. 45:14–21.
`
`In discussing the Raffel_sample, Petitioner’s witness, Mingshao
`
`Zhang, states:
`
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`
`It is my understanding that, on November 17, 2015,
`Raffel’s wholly owned subsidiary Xiamen Raffel communicated
`an offer via email to sell products to Man Wah. As stated in the
`November 17, 2015 email, a document is attached to the email.
`In the attached document of the November 17, 2015 email,
`Raffel_sample [(CTR UR2 08)] is included. It is stated in the
`attached document that “[t]hese documents are available on
`www.raffel.com.”
`
`Ex. 1011 ¶ 25 (emphasis added). Mr. Zhang goes on to state:
`
`It is my understanding and as shown above, Raffel offers
`to sell Man Wah the highlighted Raffel_sample product [(CTR
`UR2 08)]. The offer includes the product description, price and
`taxes. Additionally, it is stated in the attached document that
`“[t]hese documents are available on www.raffel.com.” No
`passwords and/or special links are provided in the attached
`document for accessing www.raffel.com, thus, in my opinion,
` Therefore,
`www.raffel.com can be publicly accessible.
`Raffel_sample [(CTR UR2 08)] is on sale to the public at least
`on November 17, 2015, which is fourteen (14) months before
`January 31, 2017 for the ’986 patent.
`
`Ex. 1011 ¶ 26 (emphasis added).
`
`Mr. Zhang’s statements regarding the product shown in
`
`Raffel_sample being on sale are further supported by the testimony of
`
`Petitioner’s witness, Linhua Huang. See Ex. 1013 (“Second Huang
`
`Declaration”). Ms. Huang states that she has “work[ed] in Man Wah’s
`
`purchasing department since September, 2014” and “was promoted to be a
`
`manager in October 2015 and [ ] became deputy director of the purchasing
`
`department in April 2019.” Ex. 1013 ¶ 1. Ms. Huang states that Raffel
`
`Systems (Patent Owner) is a parts supplier under her management, including
`
`“the product at issue in this proceeding.” Id. ¶ 2. Ms. Huang further states:
`
`On November 17, 2015, I received an email from Ben
`Song (bsong@raffel.com) offering certain Raffel CTR series
`switches for sale at particular prices (the “Song email”).
`
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`
`Attached to the Song email was a document titled “Man Wah-
`Power Recline and Headrest Controls,” which was dated
`November 16,