Paper 9
`Trials@uspto.gov
`571-272-7822 Entered: July 26, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`SATTLER TECH CORP.,
`Petitioner,
`
`v.
`
`
`
`
`HUMANCENTRIC VENTURES, LLC,
`Patent Owner.
`_____________
`
`Case PGR2019-00030
`Patent D823,093 S
`_____________
`
`
`Before SCOTT A. DANIELS, BART A. GERSTENBLITH, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 26, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`SATTLER TECH CORP.,
`Petitioner,
`
`v.
`
`
`
`
`HUMANCENTRIC VENTURES, LLC,
`Patent Owner.
`_____________
`
`Case PGR2019-00030
`Patent D823,093 S
`_____________
`
`
`Before SCOTT A. DANIELS, BART A. GERSTENBLITH, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`PGR2019-00030
`Patent D823,093 S
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Sattler Tech Corp. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting institution of a post-grant review of the design claim of
`U.S. Patent No. D823,093 S (Ex. 1001, “the ’093 patent”). Humancentric
`Ventures, LLC (“Patent Owner”) did not file a preliminary response.
`We review the Petition under 35 U.S.C. § 324(a), which provides that
`a post-grant review may not be instituted unless “it is more likely than not
`that at least 1 of the claims challenged in the petition is unpatentable.”
`35 U.S.C. § 324(a). Upon consideration of the present record and for the
`reasons explained below, we determine Petitioner has satisfied its burden
`under § 324. Thus, we institute a post-grant review.
`
`Related Proceedings
`B.
`The parties indicate the sole related matter involving the ’093 patent is
`Case No. 2:18-cv-093321-PSG-JPR (N.D. Cal.). Pet. 3; Paper 6, 2.
`
`Real Parties in Interest
`C.
`Petitioner identifies itself as the sole real party in interest. Pet. 2.
`Patent Owner similarly identifies itself as the sole real party in interest.
`Paper 6, 1.
`
`The ’093 Patent
`D.
`The ’093 patent is titled “VESA MOUNT ADAPTER BRACKET”
`and claims “[t]he ornamental design for a VESA mount adapter bracket, as
`shown and described.” Ex. 1001, [54], [57]. The ’093 patent includes six
`
`
`1 Patent Owner mistakenly identifies the case number as “2:18-cv-09322” in
`its Mandatory Notice. Paper 6, 2.
`
`
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`2
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`Patent D823,093 S
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`figures, each of which is reproduced below. The ’093 patent explains that
`“[t]he broken lines [in the figures] represent portions of the article and form
`no part of the claimed design.” Id. at DESCRIPTION.
`
`
`Figure 1, reproduced above, shows “a perspective view of a VESA mount
`adapter bracket.” Id.
`
`Figure 2, reproduced above, shows “a front view.” Id.
`
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`Figure 3, reproduced above, shows “a back view.” Id.
`
`
`
`
`Figure 4, reproduced above, shows “a right side view.” Id. The ’093 patent
`explains that “the left side view” is “a mirror image of FIG. 4.” Id.
`
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`4
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`Figure 5, reproduced above, shows “a top view.” Id.
`
`
`
`
`
`Figure 6, reproduced above, shows “a bottom view.” Id.
`As reflected in the figures above, the claimed portions of the design
`include: (1) top and bottom tabs and (2) eight raised grommets arranged in
`diagonal pairs toward the four corners of the plate.2
`
`The Asserted Ground of Unpatentability
`E.
`Petitioner’s sole challenge as set forth in the Petition is that the claim
`of the ’093 patent is unpatentable under 35 U.S.C. § 171 for lacking
`ornamentality. Pet. 3, 17.
`
`
`2 The plate is the portion of the adapter bracket shown in broken lines and,
`thus, is not part of the claimed design.
`
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`
`ELIGIBILITY OF PATENT FOR POST-GRANT REVIEW
`II.
`The post-grant review provisions of section six of the Leahy-Smith
`America Invents Act (“AIA”), Pub L. No. 112-29, 125 Stat. 284 (2011),
`apply only to patents subject to the first inventor to file provisions of the
`AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to file provisions
`apply to any application for patent, and to any patent issuing thereon, that
`contains or contained at any time a claim to a claimed invention that has an
`effective filing date on or after March 16, 2013. AIA § 3(n)(1).
`Furthermore, “[a] petition for a post-grant review may only be filed not later
`than the date that is 9 months after the date of the grant of the patent or of
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`see also 37 C.F.R. § 42.202(a) (setting forth the same).
`The ’093 patent issued on July 17, 2018. Ex. 1001, [45]. The Petition
`was filed on January 15, 2019. Paper 3, 1. Therefore, the Petition was filed
`within nine months of the ’093 patent issuance.
`Additionally, the earliest effective filing date for the ’093 patent is
`February 17, 2017. Ex. 1001, [22]. Therefore, the ’093 patent is subject to
`the first inventor to file provisions of the AIA.
`Petitioner certifies that the ’093 patent “is available for post-grant
`review and that Petitioner is not barred or estopped from requesting a
`post-grant review of the ’093 Patent.” Pet. 1. At this stage of the
`proceeding, Patent Owner has not challenged Petitioner’s contentions as to
`the eligibility of the ’093 patent for post-grant review.
`On this record, we agree with Petitioner that the ’093 patent is eligible
`for post-grant review.
`
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`
`III. ANALYSIS
`
`Legal Standard
`A.
`Section 171(a) of Title 35 of the United States Code provides:
`“Whoever invents any new, original and ornamental design for an article of
`manufacture may obtain a patent therefor, subject to the conditions and
`requirements of this title.” 35 U.S.C. § 171(a) (2018) (emphasis added).
`“[A] design patent can be declared invalid if the claimed design is primarily
`functional rather than primarily ornamental, i.e., if the claimed design is
`dictated by the utilitarian purpose of the article.” High Point Design LLC v.
`Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (internal
`quotations and citations omitted). “An article of manufacture necessarily
`serves a utilitarian purpose, and the design of a useful article is deemed to be
`functional when the appearance of the claimed design is dictated by the use
`or purpose of the article.” L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.3d
`1117, 1123 (Fed. Cir. 1993) (citation omitted). “If the particular design is
`essential to the use of the article, it can not [sic] be the subject of a design
`patent.” Id. “While analyzing elements of the design may be appropriate in
`some circumstances, the determination of whether the patented design is
`dictated by the function of the article of manufacture must ultimately rest on
`an analysis of its overall appearance.” Berry Sterling Corp. v. Pescor
`Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997).
`The U.S. Court of Appeals for the Federal Circuit has explained that
`although there is no “particular test for determining whether a claimed
`design is dictated by its function[,] [the court] has often focused . . . on the
`availability of alternative designs as an important—if not dispositive—factor
`in evaluating the legal functionality of a claimed design.” Ethicon Endo-
`
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`Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1329–30 (Fed. Cir. 2015); see
`PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1367 (Fed. Cir. 2006)
`(“When there are several ways to achieve the function of an article of
`manufacture, the design of the article is more likely to serve a primarily
`ornamental purpose.” (quoting Rosco, Inc. v. Mirror Lite Co., 304 F.3d
`1373, 1378 (Fed. Cir. 2002))). “[A] full inquiry with respect to alleged
`alternative designs includes a determination as to whether the alleged
`‘alternative designs would adversely affect the utility of the specified
`article,’ such that they are not truly ‘alternatives’ within the meaning of [the
`Federal Circuit’s] case law.” PHG, 469 F.3d at 1367 (quoting Rosco, 304
`F.3d at 1378).
`In Berry Sterling, the Federal Circuit provided additional factors to
`consider in a situation “where the existence of alternative designs is not
`dispositive of the invalidity inquiry.” Ethicon, 796 F.3d at 1330. Those
`factors include:
`[1] whether the protected design represents the best design;
`[2] whether alternative designs would adversely affect the utility
`of the specified article;
`[3] whether there are any concomitant utility patents;
`[4] whether the advertising touts particular features of the design
`as having specific utility; and
`[5] whether there are any elements in the design or an overall
`appearance clearly not dictated by function.
`Berry Sterling, 122 F.3d at 1456, quoted in PHG, 469 F.3d at 1366–67. The
`Federal Circuit, however, explained that although evaluating these other
`factors “‘might’ be relevant to assessing whether the overall appearance of a
`claimed design is dictated by functional considerations. . . .[,] an inquiry into
`whether a claimed design is primarily functional should begin with an
`
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`inquiry into the existence of alternative designs.” Ethicon, 796 F.3d at 1330
`(citations omitted).
`
`B. Discussion
`Petitioner explains that VESA mount adapter brackets are used in
`connection with “the Video Electronics Standards Association (VESA) Flat
`Display Mounting Interface Standard, Copyright 2006” (“the VESA FDMI
`Standard”). Pet. 9 (citing Ex. 1002). As Petitioner explains, the purpose of
`the VESA FDMI Standard is “to provide industry standard mounting
`interfaces for Flat Displays (FDs) such as flat panel monitors, flat displays
`and flat TVs.” Ex. 1002, 1; see Pet. 9. Petitioner contends the claimed
`VESA mount adapter bracket “is designed specifically to fit onto the back of
`certain video monitors so they can attach to VESA [monitor] mount systems
`[i.e., using the VESA FDMI standard,] instead of a stand that came with the
`monitors.” Pet. 9.
`
`Functionality of the Claimed Design
`1.
`Petitioner argues that the appearance of several, if not all, components
`of the claimed adapter bracket are dictated by their use and purpose, and,
`therefore, the claimed design is, as a whole, functional. Id. at 10–17. In
`particular, Petitioner discusses the tabs and the grommets.
`
`Tabs
`a.
`Petitioner contends that the top tab of the VESA mount adapter
`bracket “fits atop a lower bulge on the back of a video monitor to secure the
`top tab via screw to the video monitor.” Id. at 10. Petitioner provides the
`following pictures to illustrate this arrangement from the Amazon.com
`webpage (https://www.amazon.com/dp/B01DNCP7HW) where an alleged
`
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`commercial embodiment of the VESA mount adapter bracket design of the
`’093 patent is offered for sale. Id. (citing Ex. 1004, 1; Ex. 1005, 1).
`
`
`The two pictures reproduced above show the top tab of the VESA mount
`adapter bracket connected to the back of a video monitor via a screw. See
`Ex. 1004, 1; Ex. 1005, 1.
`Petitioner contends the bottom tabs of the VESA mount adapter
`bracket of the ’093 patent “fit into preexisting slots on the back of a video
`monitor,” as shown in the picture below from the same Amazon.com
`webpage. Pet. 12 (citing Ex. 1003, 6).
`
`
`The picture reproduced above shows the bottom tabs of the VESA mount
`adapter bracket inserted into slots in the back of a video monitor. See
`Ex. 1003, 6.
`
`
`
`10
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`
`Petitioner asserts “the tabs must be positioned and sized as they are –
`else they won’t fit the monitor.” Pet. 12. Petitioner contends “[t]he top tab
`is shaped as minimally as possible to provide support for the bracket of the
`’093 Patent.” Id.
`
`Grommets
`b.
`Petitioner contends that at least three features of the grommets are
`dictated primarily by function: (a) spacing, (b) size, and (c) raised edges.
`Id. at 13–17. Petitioner asserts that the VESA FDMI Standard dictates the
`claimed spacing and size of the grommets as discussed below. Id. at 13–16.
`
`Grommet Spacing
`i.
`Petitioner asserts that the grommets of the VESA mount adapter
`bracket of the ’093 patent “are shown to be VESA standardly-spaced (via
`the manufacturer’s blue notations in the below figure) to fit for mounting at
`the back of a video monitor.” Id. at 13.
`
`
`The picture reproduced above shows that one set of four grommets is
`positioned 75 mm x 75 mm apart, whereas the other set of four grommets is
`positioned 100 mm x 100 mm apart. Ex. 1003, 3.
`
`
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`11
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`
`Petitioner explains that Section 5.2.1 of the VESA FDMI Standard
`describes the same two patterns for the “Screw Mounting Interface
`Dimensions” on the back of a monitor: (1) 100 mm x 100 mm, for displays
`weighing up to 14 kg; and (2) 75 mm x 75 mm, for smaller displays,
`weighing less than 8 kg. Pet. 13–14 (quoting Ex. 1002, 28).
`
`Grommet Size
`ii.
`Petitioner asserts that the size of the grommets of the VESA mount
`adapter bracket of the ’093 patent are also “dictated by VESA Standards.”
`Id. at 15. Petitioner points to the following chart from Section 5.6 of the
`VESA FDMI Standard, which indicates a 5 mm hole size in the plate3:
`
`
`
`Ex. 1002, 32. Thus, Petitioner contends that the grommets “must be
`standardly-sized – else they won’t confirm to VESA standards.” Pet. 16.
`
`Grommet Raised Edges
`iii.
`Petitioner asserts that “[h]aving raised edges for grommets is known
`to increase the strength of the sheet to which the grommets are attached.”
`Id. Petitioner quotes a paper from the 17th International Conference on
`
`3 Petitioner refers to this structure as a “plate” (see Pet. 9), whereas the
`VESA FDMI Standard refers to it as a “pad” (see Ex. 1002, 32). For
`consistency with the Petition, we refer to the structure as a “plate.”
`
`
`
`12
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`Metal Forming that states: “For the purposes of improving fatigue strength
`of the steel sheet, the edge of the hole was thicken[ed]. Thus[,] the fatigue
`strength was improved as compared to the normal piercing hole without
`thickening.” Id. (quoting Ex. 1006, 5). Accordingly, Petitioner contends
`“the grommets [of the ’093 patent] have raised edges as reinforcement so the
`sheet to which the grommets are attached will not break under heavy
`monitor weight.” Id. at 17.
`
`Availability of Alternative Designs
`2.
`Petitioner contends that, in addition to the design being dictated by the
`functionality discussed above, alternative VESA mount adapter brackets “all
`have the same design or appearance as the black-lined portions of the figures
`of the ’093 Patent.” Id. at 20 (emphasis omitted). Petitioner asserts:
`This is because the black-lined portions of the figures of the
`’093 Patent are necessary for the bracket to function. The black-
`lined portions of the figures of the ’093 Patent are not anything
`but the functional requirements that are common to similarly
`marketed brackets for the same function – this is because to
`function, the bracket of [the] claimed design of the ’093 Patent
`must have tabs and grommets that meet VESA standards and are
`sized and positioned for a specific line of flat panel displays.
`
`Id.
`
`Petitioner provides two examples of other VESA mount adapter
`brackets. First, Petitioner points to an “HP Pavilion Monitor VESA
`Adapter,” from Gladiator Joe, that Petitioner asserts is “identical, but for
`raised grommet edges, to the bracket protected by the ’093 Patent.” Id.; see
`Ex. 1007, 1. The Petition includes side-by-side images of Gladiator Joe’s
`product and Figure 1 of the ’093 patent, which are reproduced below.
`Pet. 21.
`
`
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`13
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`Patent D823,093 S
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`
`
`Gladiator Joe’s product (on the left) is shown next to Figure 1 of the
`’093 patent (on the right). Id.
`Second, Petitioner points to a VESA Adapter for certain HP monitors
`made by VIVO. Id. at 21–23 (citing Exs. 1008 and 1009). Petitioner asserts
`that the VIVO product has the same tabs and grommets as those shown in
`the ’093 patent. Id. at 21. The Petition includes side-by-side images of
`VIVO’s product and Figure 1 of the ’093 patent, which are reproduced
`below. Id. at 22; see Ex. 1008.
`
`
`VIVO’s product (on the left) is shown next to Figure 1 of the ’093 patent (on
`the right). Petitioner further points to VIVO’s identification of the “exact
`spacing/ positioning of grommets as the bracket of the ’093 Patent,” which
`
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`“match[] the VESA standard measurements,” as shown below. Pet. 22
`(citing Ex. 1009, 1).
`
`
`VIVO’s product is shown above in two images: the first (on the left) shows a
`side view and indicates the vertical dimension of the bracket and length of
`the bottom tabs, the second (on the right) shows a front/back view and
`indicates the width of the bracket and the spacing between the grommets,
`which are shown as 75 mm x 75 mm and 100 mm x 100 mm. See id. (citing
`Ex. 1009, 1).
`Additionally, Petitioner contends that Patent Owner’s webpage
`offering for sale an alleged commercial embodiment of the design claimed in
`the ’093 patent similarly indicates that the product comports with “Standard
`VESA Hole Patterns: 75 mm x 75 mm, 100 mm x 100 mm.” Id. at 24–25
`(citing Ex. 1010, 1 (emphasis omitted)). Petitioner asserts the product
`description of the alleged commercial embodiment further indicates that it
`
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`fits the same HP monitors as the VIVO product. Compare Ex. 1008, with
`Pet. 25.4
`Petitioner contends that the overall appearance of the patented bracket
`is the same as the other bracket products because the overall appearance is
`dictated by the functional requirements of the VESA FDMI Standard.
`Pet. 25–26. Petitioner asserts:
`The grommets of the ’093 Patent are required by VESA
`standards . . . ; and the tabs of the ’093 Patent are required to be
`angled at roughly ninety degrees to fit onto (in the case of the top
`tab) and into (in the case of the bottom tabs) the back of the flat
`panel which the bracket of the ’093 Patent supports.
`Id. Petitioner further contends that “the bottom tabs are required to be
`shaped in such a way in order to interlock with the slots in the back of the
`flat panel into which the bracket of the ’093 Patent supports.” Id. at 26.
`And, Petitioner again explains that raised edges for grommets was “known
`to increase the strength of the sheet to which the grommets are attached.”
`Id.
`
`In light of the discussion above, Petitioner contends that “there is no
`availability of alternative designs because [the] claimed design of the
`’093 [patent] is dictated by VESA standards and needing to fit on and into
`monitors made by Hewlett Packard.” Id. Additionally, Petitioner asserts
`that the overall appearance of the article, i.e., the claimed design viewed in
`its entirety, is similarly dictated by function because “there does not appear
`
`
`4 Petitioner omits the HP Pavilion 24 cw monitor from its list of monitors
`compatable with VIVO’s product. See Pet. 21. VIVO’s product description
`on ebay.com, however, includes the HP Pavilion 24 cw monitor. See
`Ex. 3001, 2. Thus, we agree that the two products have the same
`compatabilities.
`
`
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`to be anything that is not dictated [by] VESA standards and the Hewlett
`Packard monitors that it is designed to fit.” Id. Accordingly, Petitioner
`contends:
`
`In short, if the claimed design of the ’093 Patent did not
`have the overall appearance that it does, then the claimed design
`of the ’093 Patent would not function. The elements of the
`claimed design of the ’093 Patent – viewed in isolation as well
`as together – must appear as they do so that the bracket of the
`’093 Patent can function. Without the elements of the claimed
`design of the ’093 Patent – viewed in isolation as well as together
`– the claimed design of the ’093 Patent would not fit the very
`standard monitors that it must fit to function.
`Id. at 26–27 (emphasis omitted); see id. at 29 (“The tabs and grommets are
`disposed where they are and positioned where they are because of functional
`– not ornamental – considerations. Nothing about the overall shape or the
`design and placement of individual elements, for instance, can serve an
`ornamental purpose because they are dictated by a functional purpose.”).
`Thus, Petitioner asserts “the claimed design is primarily functional and
`cannot be the subject of a design patent.” Id. at 29.
`
`Analysis
`3.
`On the record before us, we find that Petitioner has shown that it is
`more likely than not that the challenged claim of the ’093 patent is
`unpatentable. First, the claimed portions of the design include the tabs and
`the grommets. Petitioner explained in detail how the spacing, size, shape,
`and angle of the tabs are dictated by their function to attach to the back of
`certain monitors. Petitioner further explained how the spacing, size, and
`shape of the grommets are similarly dictated by their function and the VESA
`FDMI Standard. On this record, we agree with and adopt Petitioner’s
`reasoning as to these elements as our findings. The only design element that
`
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`appears to be optional, i.e., not required to perform the mounting function, is
`the raised edges of the grommets. Petitioner, however, sufficiently supports
`its argument that it was known that raising the edges of grommets increases
`their strength, and, therefore, provides a functional (not ornamental) benefit.
`Therefore, on the present record before us, we find that each of the
`individual elements of the claimed design appears to be dictated solely by
`function.
`Second, focusing on the overall appearance of the article, see Berry
`Sterling, 122 F.3d at 1456, we are persuaded that, on the present record, the
`claimed design for the adapter bracket as a whole appears primarily
`functional, rather than primarily ornamental. Of particular significance is
`Petitioner’s evidence that other mounting brackets contain the same
`individual elements of the claimed design as well as the same overall
`appearance of the bracket. Any differences, besides the raised grommets,
`between the other bracket designs known in the art and that of the design
`claimed in the ’093 patent appear to lie solely in unclaimed features, e.g., the
`specific shape of the bracket plate’s perimeter. See, e.g., Pet. 22 (showing
`the side-by-side pictures of VIVO’s bracket and Figure 1 of the ’093 patent).
`Thus, on this record, there appears to be a lack of alternative designs, which
`weighs strongly in Petitioner’s favor.
`Accordingly, on this record, we determine that the particular design is
`“essential to the use of the article,” L.A. Gear, 988 F.3d at 1123, and, thus,
`primarily functional.
`
`
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`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has shown that it is more likely
`than not that the challenged claim of the ’093 patent is unpatentable for
`lacking ornamentality. 35 U.S.C. § 324(a). At this stage of the proceeding,
`however, we have not made a final determination as to the unpatentability of
`the challenged claim or any underlying factual or legal issue.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 324(a), a post-grant review
`of the claim of the ’093 patent according to the ground raised in the Petition
`is hereby instituted; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 324(d) and
`37 C.F.R. § 42.4, a post-grant review of the ’093 patent will commence on
`the entry date of this Decision, and notice is hereby given of the institution
`of a trial.
`
`
`
`
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`For PETITIONER:
`
`Michael L. Greenberg
`GREENBERG & LIEBERMAN, LLC
`michael@aplegal.com
`
`
`For PATENT OWNER:
`
`James M. Heintz
`Dale S. Lazar
`DLA PIPER LLP
`jim.heintz@dlapiper.com
`dale.lazar@dlapiper.com
`
`
`
`20
`
`
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