centria v atas intl - motion to stay

7/30/2019 Centria v Atas Intl - Motion to Stay

1/63

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF PENNSYLVANIA

|CENTRIA, |

| Civil Action No. 2:13-cv-00309-NBFPlaintiff and Counterclaim-Defendant; |

|

v. |

| JUDGE FISCHER

ATAS INTERNATIONAL, INC., |

|

Defendant and Counterclaim-Plaintiff. |

|

[PROPOSED] ORDER GRANTING JOINT MOTION TO STAY

PENDINGINTER PARTES REVIEW OF THE PATENT IN SUIT

AND NOW, this ________ day of ________________, 2013, upon the parties JOINT

MOTION TO STAY PENDINGINTER PARTESREVIEW OF THE PATENT IN SUIT

[Document No. __], it is hereby ORDERED that the Motion is GRANTED. The above-

captioned case is hereby stayed pending the conclusion of proceedings, including any appeals, in

Defendants petition forinter partes review of U.S. Patent No. D527,834, Case No. IPR2013-

00259 before the United States Patent Trial and Appeal Board.

BY THE COURT:

________________________

Nora Barry FischerUnited States District Judge

Case 2:13-cv-00309-NBF Document 17 Filed 05/08/13 Page 1 of 5


2/63

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF PENNSYLVANIA

|CENTRIA, |

| Civil Action No. 2:13-cv-00309-NBF

Plaintiff and Counterclaim-Defendant; ||

v. |

| JUDGE FISCHER

ATAS INTERNATIONAL, INC., |

|

Defendant and Counterclaim-Plaintiff. |

|

JOINT MOTION TO STAY PENDING

INTER PARTES REVIEW OF THE PATENT IN SUIT

Plaintiff/Counterclaim-Defendant Centria (hereinafter Plaintiff) and

Defendant/Counterclaim-Plaintiff ATAS International, Inc. (hereinafter Defendant), by and

through their respective counsel, hereby jointly move this Court to the above-captioned case until

the conclusion ofinter partes review proceedings before the United States Patent Trial and

Appeal Board, case no. IPR2013-00259, pertaining to the patent-in-suit, U.S. Design Patent No.

D527,834 (hereafter the 834 Patent).

On April 30, 2013, Defendant filed a petition forinter partes review of the 834 Patent.

A copy of the petition is attached as Exhibit A to this motion. In the petition, Defendant asserts

that the sole claim of the 834 Patent should be canceled on grounds that it is invalid under 35

U.S.C. 102 and/or 103 based on the prior art references identified in the petition. Plaintiff

disputes this position and asserts that the sole claim of the 834 Patent is valid and should be

confirmed.

If the 834 Patent is invalidated as a result of the inter partes review, such invalidation

would resolve all claims between the parties that are the subject of this lawsuit. If validity of the

834 Patent is confirmed as a result of the inter partes review proceedings, such confirmation



3/63

2

will significantly reduce the issues in dispute in this lawsuit and will significantly increase the

likelihood of the parties reaching an amicable settlement.

Upon entry of an Order staying this case, Defendant hereby agrees that it will suspend

and refrain from all manufacture, sales, offers to sell, and importation of the accused products,

namely ATAS wall panel model nos. MFR-161 and MFR-162, until the conclusion ofinter

partes review proceedings for case no. IPR2013-00259. Defendants agreement to suspend and

refrain from this activity will continue for the duration of any appeals filed by Defendant of the

decision in the inter partes review proceedings for case no. IPR2013-00259, but will not extend

to any appeals filed by Plaintiff. Plaintiffs agreement to join this motion is conditioned upon the

Defendants agreement to suspend and refrain from its activity with respect to the accused

products as set forth in this paragraph.

For the reasons set forth above, the parties respectfully request that the Court grant the

present Motion. A proposed Order is submitted herewith.

Respectfully submitted,

DATED: May 8, 2013 s/ Damon A. NeagleDamon A. NeagleDESIGN IP, P.C.Commerce Corporate Center5100 W. Tilghman StreetSuite 205Allentown, PA 18104Tel.: 610-395-4900Fax: 610-680-3312E-mail: [email protected]

Attorneys for Defendant-Counterclaim

Plaintiff ATAS International, Inc.

ADMITTED PRO HAC VICE



4/63

3

s/ Richard L. ByrneRichard L. Byrne, Esq. (PA ID No. 27913)[email protected] H. Brean, Esq. (PA ID No. 208711)[email protected] Martinchek, Esq. (PA ID No. 311471)

[email protected]

THE WEBB LAW FIRMOne Gateway Center420 Fort Duquesne Blvd., Suite 1200Pittsburgh, PA 15222(412) 471-8815

Counsel for Plaintiff/Counterclaim

Defendant Centria



5/63

CERTIFICATE OF SERVICE

Pursuant to Local Rule of Court 5.5, I hereby certify that on this day the foregoingJoint

Motion to Stay Pending Inter Partes Review of the Patent in Suitwas electronically filed with the

Clerk of Court for the United States District Court for the Western District of Pennsylvania usingthe Courts electronic case filing (ECF) system.

Dated: May 8, 2013 /s/ Damon A. Neagle



6/63

Exhibit

A

Case 2:13-cv-00309-NBF Document 17-1 Filed 05/08/13 Page 1 of 58


7/63

1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PETITION FORINTER PARTES

REVIEW OF U.S. PATENT NO. D527,834

PURSUANT TO 35 U.S.C. 311 AND 37

C.F.R. 42.100

Application/Control

Number

TBD

Patent For WhichInterPartes Review is Presently

Requested

D527,834

Filing Date April 20, 2004

First Named Inventor Thimons et al.

Title BUILDING PANEL

Confirmation Number TBD

Group Art Unit TBD

Examiner Name TBD



8/63

2

TABLE OF CONTENTSI. INTRODUCTION .............................................................................................................. 6II. NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. 42.8(b)(1) ................. 6III. NOTICE OF RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2) ............................. 6IV. NOTICE OF LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. 42.8(b)(3) ......... 6V. NOTICE OF SERVICE INFORMATION UNDER 37 C.F.R. 42.8(b)(4) ..................... 6VI. CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R. 42.104(a) ... 7VII. CERTIFICATION OF SERVICE UNDER 37 C.F.R. 42.6(e)(4) AND 42.105(a) ....... 7VIII. STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R. 42.22(a)(1)

AND 42.104(b)(1)-(2) ......................................................................................................... 7IX. STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R.

42.104(b)(3) ........................................................................................................................ 9X. SUMMARY OF PRIOR ART PRINTED PUBLICATIONS RELIED UPON IN THE

PRESENT PETITION FOR INTER PARTES REVIEW ................................................ 11A. ATAS, Inc. Model MPS120 Panel ........................................................................ 11

1. Introduction ............................................................................................ 112. ATAS Web Page (www.atas.com) ......................................................... 113. 2002 Sweets Catalog File, Volume 4 .................................................... 124. 2002 ATAS Metal Wall Panels Brochure .............................................. 13

B. ATAS, Inc. RIGID-Wall Panel ......................................................................... 141.

Introduction ............................................................................................ 14

2. 2002 Sweets Catalog File, Volume 4 .................................................... 143. 2002 ATAS Metal Wall Panels Brochure .............................................. 14

C. Centria Model IW60A Panel ................................................................................ 15D. ATAS, Inc. Model MPH080 Panel ....................................................................... 15E. Centria Model FWDS-59 Panel ............................................................................ 16

XI. OVERVIEW OF THE 834 PATENT .............................................................................. 16A. Background ........................................................................................................... 16B. Prosecution and Enforcement History .................................................................. 16

XII. STATEMENT OF REASON FOR THE RELIEF REQUESTED UNDER 37 C.F.R. 42.22(a)(2) AND 42.104(b)(4), SHOWING THAT THERE IS A REASONABLE

LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C. 314 18A. The Applicable Legal Standards ........................................................................... 18

1. Obviousness ........................................................................................... 18



9/63

3

2. Anticipation ............................................................................................ 223. Multiple Embodiments ........................................................................... 22

B. There is a Reasonable Likelihood that the Petitioner Will Prevail UponConsideration of Its Proposed Grounds of Rejection Based on any of the MPS120

Publications in view of any of the BKR160 Publications..................................... 221. MPS120 Panel as compared to FIGS. 37-41 of the 834 Patent ............ 232. Any of the MPS120 Publications, which show the MPS120 Panel, is a

suitable primary reference, having the same basic design characteristics

as the claimed desig ................................................................................ 273. Any of the BKR160 Publications, which show the BKR160 Panel, is a

suitable secondary reference for modifying any of the MPS120

Publications ............................................................................................ 294.

The 834 Patent is unpatentable under 35 U.S.C. 103(a) over theMPS120 Panel in view of the BKR160 Panel ........................................ 30

C. There is a Reasonable Likelihood that the Petitioner Will Prevail UponConsideration of Its Proposed Grounds of Rejection Based on any of the MPS120

Publications in view of the IW60A Panel ............................................................. 31D. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon

Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160

Publications (Anticipation) ................................................................................... 321. The BKR160 Panel as compared to FIGS. 37-41 of the 834 Patent ..... 332. The 834 Patent is unpatentable under 35 U.S.C. 102(b) as being

anticipated by the BKR160 Panel, as shown in any of the BKR160

Publications ............................................................................................ 35E. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon


Publications (Obviousness) ................................................................................... 37F. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon


Publications in view of any of the MPS120 Publications ..................................... 39G. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon

Consideration of Its Proposed Grounds of Rejection Based on any of the MPH080

Publications in view of any of the BKR160 Publications..................................... 411. The MPH080 Panel as compared to FIGS. 37-41 of the 834 Patent .... 41



10/63


11/63

5

Table of Exhibits

Exhibit A U.S. Design Patent No. D527,834

Exhibit B Prosecution history of U.S. Design Patent No. D527,834

Exhibit C ATAS Website content from December 3, 2000 showing ATAS MPS120 Panel

Exhibit D 2002 Sweets Catalog, including ATAS Wall Panels product brochure showing

ATAS MPS120, MPH080, and RIGID-WALL (BKR160) Panels and Centria

product brochure showing FWDS-59 Panel

Exhibit E Declaration of Noah A. Sharkan; Summer 2000 Sweets CD, showing ATAS

MPS120 and MPH080 Panels

Exhibit F Declaration of Theodorus Bus

Exhibit G Commercial & Industrial Metal Wall Systems Robertson Product Brochure(dated 1994) showing IW60A Panel (prior art of record from D527,834)

Exhibit H Centria Technical Data Manual dated December 1996 showing IW60A Panel

Exhibit I Admitted Art Not Considered By Examiner

Exhibit J Canceled Original Figures 31-36 of U.S. Design Patent No. D527,834

Exhibit K ATAS Website content from August 15, 2000 showing Sweets CD information

Exhibit L Declaration of Teresa Warmkessel



12/63

6

I. INTRODUCTION

The present document is a petition (hereinafter Petition) forinter partes review of the

sole claim of U.S. Design Patent No. D527,834 (hereafter the 834 Patent), issued on

September 5, 2006 to Thimons et al. The assignee of record for the 834 Patent is Centria, of

Moon Township, Pennsylvania. A copy of the 834 Patent is provided as Exhibit A to this

Petition. The fee for this Petition, pursuant to 37 C.F.R. 42.103, is submitted herewith.

II. NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. 42.8(b)(1)

For petitioner, the real party in interest is ATAS International, Inc., a corporation

organized under the laws of the state of New York and having its corporate headquarters and

principal place of business in Allentown, Pennsylvania.

III.NOTICE OF RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2)

The patent owner has sued the petitioner in the United States District Court for the

Western District of Pennsylvania, alleging infringement of U.S. Design Patent No. D527,834.

The case is captioned Centria v. ATAS International, Inc., 2:13-cv-309.

IV.NOTICE OF LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. 42.8(b)(3)

Lead counsel for the petitioner is Damon A. Neagle of Design IP, P.C., USPTO

Registration No. 44,964. Backup counsel for petitioner is James J. Aquilina of Design IP, P.C.,

USPTO Registration No. 63,550.

V. NOTICE OF SERVICE INFORMATION UNDER 37 C.F.R. 42.8(b)(4)

Petitioner may be served as follows:

DESIGN IP, P.C.

Commerce Corporate Center

5100 W. Tilghman St., Suite 205

Allentown, PA 18104

[email protected]

phone: 610-395-4900



13/63

7

fax: 610-680-3312

VI.CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R. 42.104(a)

Petitioner hereby certifies that U.S. Design Patent No. D527,834 is available for inter partes

review and that it is not barred or stopped from requesting an inter partes review challenging the

claim of the 834 Patent on the grounds identified in this petition.

VII.CERTIFICATION OF SERVICE UNDER 37 C.F.R. 42.6(e)(4) AND 42.105(a)

Petitioner hereby certifies that a copy of this Petition and all Exhibits has been served in

its entirety on the Patent Owners counsel of record at the following address, pursuant to 37

C.F.R. 42.6(e)(3) and 42.105(a):

Buchanan Ingersoll & Rooney PC

P.O. Box 1404

Alexandria, VA 22313-1404

Service of the present Petition was also effected on Patent Owners counsel of record in

the related district court litigation at the following address, pursuant to 37 C.F.R. 42.105(a):

Richard L. Byrne, Esq.

The Webb Law Firm, P.C.One Gateway Center

420 Fort Duquesne Blvd., Suite 1200

Pittsburgh, PA 15222

An appropriate certificate of service, in accordance with 37 C.F.R. 42.6(e)(4), is

included herewith.

VIII. STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R.

42.22(a)(1) AND 42.104(b)(1)-(2)

The 834 Patent is a design patent, and thus has a single claim. In regard to the 834 Patent,

Petitioner respectfully requests the following relief:



14/63

8

(1)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the MPS120 Publications, as defined below, in view of any

one of the BKR160 Publications, as defined below;

(2)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the MPS120 Publications, as defined below, in view of any

one of the IW60A Publications, as defined below;

(3)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b)as anticipated by any one of the BKR160 Publications, as defined below;

(4)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)

as obvious over any one of the BKR160 Publications, as defined below, in view of

common knowledge to one having ordinary skill in the art;

(5)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the BKR160 Publications, as defined below, in view of any

one of the MPS120 Publications, as defined below;

(6)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the MPH080 Publications, as defined below, in view of any

one of the BKR160 Publications, as defined below;

(7)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the MPH080 Publications, as defined below, in view of any

one of the IW60A Publications, as defined below;

(8)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b)as anticipated by any one of the FWDS-59 Publications, as defined below; and/or



15/63

9

(9)a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a)as obvious over any one of the FWDS-59 Publications, as defined below, in view of

any one of the BKR160 Publications, as defined below.

IX. STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R.

42.104(b)(3)

Given the recognized difficulties entailed in trying to describe a design in words, the

preferable course ordinarily will be [to not] attempt to construe a design patent claim by

providing a detailed verbal description of the claimed design. Egyptian Goddess, Inc. v. Swisa,

Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). However, it may be helpful to point out various

features of the claimed design as they relate to the prior art. Id. at 680.

Petitioner notes some inconsistencies in the the drawings of each of the embodiments of

the 834 Patent. Specifically, a bent portion of each of the embodiments is shown in solid

lines (claimed) in the respective side view figure, but in broken lines (disclaimed) in the two

respective perspective view figures. An annotated image of portions of FIGS. 1, 2, and 6 of the

834 Patent, showing these drawing inconsistencies, is provided below. These drawing

inconsistencies are present in the sets of drawings for each of the embodiments of the 834

Patent.



16/63

10

Since the majority of the drawings of each of the embodiments of the design shown in the

834 Patent show this bent portion disclaimed, Petitioner submits that the claim of the 834

Patent should be construed to exclude this bent portion (i.e., consider it unclaimed subject

matter).

Moreover, many figures of the 834 Patent show the drawing convention for a design

having indeterminate length, and the special description of the 834 Patent likewise describes the

design of the building panel to be of indeterminate length. Petitioner submits that the claim of

the 834 Patent should be construed to include a building panel as shown and described in the

drawings of the 834 Patent having any length.

A perspective view of each of the embodiments of the 834 Patent is provided in which

the applicant displayed that multiple units of the wall panels shown in the 834 Patent were

designed to be interlocked adjacently to one another in order to form a wall panel sheet

comprised of multiple wall panels. These perspective views (see, e.g., FIG. 6) make clear that

portions of the claimed design are more clearly visible than others when installed on a wall

surface, and that the design of the wall panel as shown and described in the 834 Patent is very

likely to be viewed by an ordinary observer in a repeating fashion (for example, while installed

on a wall surface).

Finally, the 834 Patent comprises a claimed design having seven embodiments. Multiple

embodiments may be included in the same design patent only if they are patentably indistinct.

SeeIn re Rubinfield, 270 F.2d 391 (CPA 1959). Unlike during litigation, the scope of the claim

of the 834 Patent must be given its broadest reasonable scope before the USPTO,Atlantic

Thermoplastics Co., Inc. v. Faytex Corp., 970 F.2d 834, 846 (Fed. Cir. 1992), it being

understood that a determination by the Board that a single embodiment of the 834 Patent is



17/63

11

unpatentable would render every embodiment of the 834 Patent unpatentable. In re Klein, 987

F.2d 1569, 1570 (Fed. Cir. 1993).

X. SUMMARY OF PRIOR ART PRINTED PUBLICATIONS RELIED UPON IN

THE PRESENT PETITION FOR INTER PARTES REVIEW

Inter partes review of the claim of the 834 Patent is requested in view of the following

printed publications:

A. ATAS, Inc. Model MPS120 Panel

1. IntroductionAs explained in greater detail below, the ATAS, Inc. model MPS120 panel (hereafter the

MPS120 Panel) appears in multiple prior art printed publications cited in this Petition. These

publications are collectively referred to hereinafter as the MPS120 Publications.

2. ATAS Web Page (www.atas.com)The MPS120 Panel appears on a web page published on the Internet at URL

http://www.atas.com/SpecSheets/TechSheet_Multi.htm (hereinafter the ATAS Web Page),

which was publically available at least as early as December 3, 2000. An archived copy of the

ATAS Web Page is provided by the Wayback Machine and attached hereto as Exhibit C. The

URL of the Wayback Machine archive is provided in Exhibit C.

An electronic publication, including an on-line database or Internet publication, is

considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a) and 102(b)

provided that the publication was accessible to persons concerned with the art to which the

document relates. MPEP 2128. Archived content provided by the Wayback Machine has long

been acknowledged by the USPTO as a proper means for establishing website content as prior

art. See Wynn W. Coggins,Prior Art in the Field of Business Method Patents When is an

Electronic Document a Printed Publication for Prior Art Purposes?, Fall 2002,



18/63

12

http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp (Websites can be used as

references if posting dates can be found, and those posting dates predate the invention. ...

Examiners utilize commercial databases and the Wayback Machine to help establish website

posting dates in order to qualify the website as prior art). In addition, the Declaration of

Theodorus Bus (attached hereto as Exhibit F; hereinafter Bus Declaration) also establishes that

the ATAS Web Page was publicly available via the Internet at least as early as December 2000.

Based on the foregoing, the ATAS Web Page was available on a publicly accessible

website at least as early as December 3, 2000. The earliest priority date for the 834 Patent is

April 20, 2004. The ATAS Web Page, as shown in the archived content, therefore qualifies as a

printed publication and is available as prior art under 35 U.S.C. 102(b).

3. 2002 Sweets Catalog File, Volume 4The MPS120 Panel also appears in Volume 4 of the 2002 Sweets Catalog File

(hereinafter 2002 Sweets Catalog), attached hereto in pertinent part as Exhibit D. The 2002

Sweets Catalog included an ATAS, Inc. Wall Panels product brochure showing the MPS120

Panel (see pages 5-7 and 9) and is available as prior art under 35 U.S.C. 102(b).

The 2002 Sweets Catalog is a printed publication upon a satisfactory showing that the

Sweets Catalog File 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. In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981); MPEP 2128. As

reflected in the Bus Declaration (Exhibit F), the 2002 Sweets Catalog is the most widely-used

building material product data reference for roof and wall panels and was made available in 2002

to over 60,000 industry professionals (Bus Declaration 5 and 10; see also 2002 Sweets

Catalog at page 4). Further, the same ATAS, Inc. Wall Panels product brochure that is featured



19/63

13

in the 2002 Sweets Catalog was also distributed to ATAS customers (Bus Declaration 13), and

was made available without restriction at multiple industry trade shows between January 1, 2002

and December 31, 2002 (Bus Declaration 14). In addition, as reflected in the Declaration of

Teresa Warmkessel and attachments thereto (Exhibit L, hereinafter Warmkessel Declaration),

the 2002 Sweets Catalog is in the collection and listed in the card catalog of least five (5) major

public libraries (Warmkessel Declaration 6). As further set forth in the Warmkessel

Declaration, the 2002 Sweets Catalog was added to the card catalog of the Free Library of

Philadelphia on May 25, 2002 (Warmkessel Declaration 2-5). Based on the foregoing, the

2002 Sweets Catalog was clearly disseminated and made available to the extent that persons

interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence,

could have located it prior to December 31, 2002.

The foregoing establishes that the 2002 Sweets Catalog was a printed publication at

least as early as December 31, 2002, which is more than one year prior to the effective filing date

of the 834 Patent. Accordingly, the 2002 Sweets Catalog is prior art to the 834 Patent under

35 U.S.C. 102(b).

4. 2002 ATAS Metal Wall Panels BrochureThe MPS120 Panel also appears on pages 3 and 8 of the 2002 ATAS Metal Wall Panels

Brochure (hereinafter ATAS Brochure), which is attached hereto as Exhibit D (see pp. 5-7 and

9 of Exhibit D). The ATAS Brochure is available as prior art under 35 U.S.C. 102(b).

The ATAS Brochure is a printed publication upon a satisfactory showing that the ATAS

Brochure 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.

In re Wyer, 655 F.2d at 226; MPEP 2128. As reflected in the Bus Declaration (Exhibit F), the



20/63

14

ATAS Brochure was also widely distributed to ATAS customers (Bus Declaration 13), and was

made available without restriction at multiple industry trade shows between January 1, 2002 and

December 31, 2002 (Bus Declaration 14). Based on the foregoing, the ATAS Brochure was

clearly disseminated and made available to the extent that persons interested and ordinarily

skilled in the subject matter or art, exercising reasonable diligence, could have located it prior to

December 31, 2002.

The foregoing establishes that the ATAS Brochure was a printed publication at least as

early as December 31, 2002, which is more than one year prior to the effective filing date of the

834 Patent. Accordingly, the ATAS Brochure is prior art to the 834 Patent under 35 U.S.C.

102(b).

B. ATAS, Inc. RIGID-Wall Panel

1. IntroductionAs explained in greater detail below, the ATAS, Inc. model RIGID-Wall / BKR160 panel

(hereafter BKR160 Panel) appears in multiple prior art publications cited in this Petition.

These publications are collectively referred to hereinafter as the BKR160 Publications.

2. 2002 Sweets Catalog File, Volume 4The BKR160 Panel appears in the 2002 Sweets Catalog (Exhibit D, see pp. 10 and 11),

which, as set forth above in Section X.A.3., is prior art to the 834 Patent under 35 U.S.C.

102(b).

3. 2002 ATAS Metal Wall Panels BrochureThe BKR160 Panel appears on page 6 of the ATAS Brochure (Exhibit D, see pp. 10 and

11), which, as set forth above in Section X.A.4., is prior art to the 834 Patent under 35 U.S.C.

102(b).



21/63

15

C. Centria Model IW60A Panel

The Centria model IW60A Panel (hereafter IW60A Panel) is prior art of record for the

834 Patent (see Exhibit B, p. 106). The IW60A Panel was disclosed on page 9 of the

Commercial & Industrial Metal Wall Systems Robertson Product Brochure (1994) (hereinafter

Robertson Brochure), which is attached hereto as Exhibit G.

D. ATAS, Inc. Model MPH080 Panel

The ATAS, Inc. model MPH080 panel (hereafter MPH080 Panel) is shown in the 2002

Sweets Catalog (Exhibit D, pp. 5, 6, and 8) and the ATAS, Inc. Wall Panels Brochure (Exhibit

D, see pp. 5, 6, and 8). As set forth above in sections X.A.3. and X.A.4., respectively, the 2002

Sweets Catalog and ATAS Brochure are prior art to the 834 Patent under 35 U.S.C. 102(b).

In addition, the MPH080 Panel is shown on the Summer 2000 Sweets CD (hereafter

Sweets CD), screenshots of which are attached hereto as Exhibit E. As reflected in the

declaration of Noah A. Sharkan, attached hereto as part of Exhibit E, the screenshots included in

Exhibit E are true and accurate representations of the images accessible via the Sweets CD on a

Windows-based personal computer. The Sweets CD software includes, among other things, a

CAD illustration of the MPH080 Panel (see Exhibit E, p. 14) and a CAD file of the MPH080

Panel that can be saved and opened in CAD software (see Exhibit E, pp. 15 and 16).

Images taken of the Sweets CD and product packaging (Exhibit E, pp. 1-9) indicate that

the Sweets CD was distributed by Sweets Group, a division of McGraw Hill, via US mail with

a mailing permit. Further, Sweets Internet webpage

http://www.sweets.com/topic/swprod.htm, as archived by the Wayback Machine on August

15, 2000 and attached hereto as Exhibit K, indicates that the Sweets CD is updated and

distributed quarterly. As reflected in the Bus Declaration (Exhibit F), the 2000 Sweets CD was



22/63

16

even more widely distributed than the 2002 Sweets Catalog, which, as discussed above, was

made available in 2002 to over 60,000 industry professionals (Bus Declaration 8 and 10-11).

Accordingly, Petitioner respectfully submits that the Sweets CD was also disseminated and

made available to the extent that persons interested and ordinarily skilled in the subject matter or

art, exercising reasonable diligence, could have located it more than one year prior to the

effective filing date of the 834 Patent. Therefore, the Sweets CD, and the representations of the

MPH080 Panel appearing therein, are prior art to the 834 Patent under 35 U.S.C. 102(b).

The portions of the 2002 Sweets Catalog, ATAS Brochure, and Sweets CD showing the

MPH080 Panel are referred to herein as the MPH080 Publications.

E. Centria Model FWDS-59 Panel

The Centria Model FWDS-59 panel (hereafter FWDS-59 Panel) is shown in the 2002

Sweets Catalog and the ATAS Brochure (Exhibit D, see pp. 12 and 13). As set forth above in

Sections X.A.3. and X.A.4, respectively, the 2002 Sweets Catalog and the ATAS Brochure are

prior art to the 834 Patent under 35 U.S.C. 102(b). Therefore, the FWDS-59 Panel, as it

appears in these publications, is prior art to the 834 Patent under 35 U.S.C. 102(b).

XI.OVERVIEW OF THE 834 PATENT

A. Background

The 834 Patent claims [t]he ornamental design for a building panel, as shown and

described. The 834 Patent discloses seven embodiments of a building panel design.

B. Prosecution and Enforcement History

U.S. Design Patent Application No. 29/203,806 was filed on April 4, 2004 with 54

figures consisting of eighteen (18) embodiments of a design for a wall panel.



23/63

17

A restriction requirement was mailed on August 25, 2005 (hereinafter Restriction

Requirement), requiring restriction to one of the inventions of Group I, Group II, Group III, and

Group IV. Group III included embodiment 13 disclosed in original figures 37-41.

A response to the Restriction Requirement was filed on September 15, 2005, in which

Applicants elected the invention of Group I with traverse, arguing that Group I and Group II

should be combined.

A Notice of Allowability was mailed on November 29, 2005, which included an

Examiners amendment and comment. The Notice of Allowability states that a telephone

interview occurred on November 28, 2005, during which the Applicants and Examiner agreed to

combine Groups I and II, consisting of original figures 1-36 and 43 through 54, and Applicants

agreed to place the additional attached panel in broken lines in the appropriate figures. In view of

the telephone interview, Groups III and IV, consisting of figures 37 through 42, were canceled,

and the figure designations and descriptions were adjusted accordingly. The embodiment of

canceled Group III was filed on February 10, 2006 as divisional U.S. Design Patent Application

No. 29/253,797, which later issued on March 20, 2007 as U.S. Design Patent No. D538,948.

An Amendment After Notice of Allowance was filed on February 2, 2006. Applicants

submitted amendments to the specification and drawings to make corrections requested in the

Notice of Allowability. Concurrently therewith, Applicants submitted a Supplemental IDS citing

new prior art, which is attached as Exhibit I hereto, and canceled original figures 31-36 in view

of that newly submitted prior art reference. Canceled original figures 31-36 are attached hereto

as Exhibit J.

The Issue Fee was paid on February 28, 2006.



24/63

18

On July 6, 2006, a Response to Rule 312 Communication was mailed, in which the

Examiner entered the Amendment After Notice of Allowance. The Examiner indicated that the

prior art submitted by the Applicant on February 2, 2006 had not been considered.1

On August 16, 2006, Applicants filed a payment authorization for a large entity fee,

stating that they had inadvertently claimed small entity status when filing the application. A

Petition Decision was mailed on March 13, 2008, accepting the fee deficiency submission.

On September 18, 2012, a Report on the Filing or Determination of an Action Regarding

Patent or Trademark was entered, identifying U.S. Design Patent Nos. D527,834 and D538,948

as the subject of an infringement action filed by Centria against Cleburne Sheet Metal in the

United States District Court for the Western District of Pennsylvania.

XII. STATEMENT OF REASON FOR THE RELIEF REQUESTED UNDER 37 C.F.R.

42.22(a)(2) AND 42.104(b)(4), SHOWING THAT THERE IS A REASONABLE

LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C.

314

A. The Applicable Legal Standards

1. ObviousnessProposed rejections set forth below represent a finding of obviousness under 35 U.S.C.

103(a). In the context of a design patent, the fact finder employs a two step process to

determine whether one of ordinary skill would have combined teachings of the prior art to create

the same overall visual appearance as the claimed design:

First, "one must find a single reference, 'asomething in existence, the design

characteristics of which are basically the same as the claimeddesign.'"Durling,

101 F.3d [100,] 103 [(Fed. Cir. 1996)] (quotingIn re Rosen, 673 F.2d 388, 391

(CCPA 1982). Second, "other references may be used to modify [the primary

1 The Applicant Admitted Prior Art, therefore, should not be considered as being of record for purposes of

evaluating whether the USPTO has previously considered any grounds of rejection under 35 U.S.C. 102 or 103

relating to this reference.



25/63

19

reference] to create a design that has the same overall visual appearance as the

claimed design."Id. However, the secondary references may only be used to

modify the primary reference if they are so related to the primary reference that

the appearance of certain ornamental features in one would suggest the

application of those features to the other.Id., quotingIn re Borden, 90 F.3d 1570,

1575 (Fed. Cir. 1996).

Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329-31 (Fed. Cir. 2012).

The Federal Circuits decision in Titan Tire Corp. v. Case New Holland, 566 F.3d 1372

(Fed. Cir. 2009), is one of the most recent Federal Circuit opinions applying the basically the

same standard and provides a helpful illustration of the Federal Circuits view on the acceptable

degree of difference between the claimed design and potential primary references. In Titan Tire,

the court held that the District Court did not abuse its discretion in concluding that each of three

prior art references were basically the same as the patent in question, US Patent No. D360,862.

Idat 1381-83. The designs at issue in the Titan Tire case are reproduced below with the claimed

design on the left and the three prior art references on the right.



26/63

20

FIG. 1 of the 862

Patent

FIG. 2A of the 683

Patent

FIG. 2 of the 814

Patent

As is clear from a comparison of the drawings, there are differences between the claimed design

and the prior art, including, for example, the overall height-to width ratio of the tires, the depth



27/63

21

of the treads, the width of the lugs, the spacing of the lugs, the angle of the lugs, changes in

curvature of the lugs along their length, and the shape of the outer edge of each lug. Despite

these differences, the Federal Circuit concluded that the design characteristics of each of the

three prior art references was basically the same as the claimed design, and therefore, all three

references were appropriate primary references for purposes of a potential 103 rejection. Idat

1381.

If a hypothetical prior art reference is created through combination of one or more

secondary references and the primary reference, the prior art reference and the claimed design

are then analyzed from the point of view of the ordinary observer. Int'l Seaway Trading Corp. v.

Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) (For design patents, the role of one

skilled in the art in the obviousness context lies only in determining whether to combine earlier

references to arrive at a single piece of art for comparison with the potential design or to modify

a single prior art reference. Once that piece of prior art has been constructed, obviousness, like

anticipation, requires application of the ordinary observer test, not the view of one skilled in the

art).

The ordinary observer test looks at whether an ordinary observer, familiar with the prior

art, would be deceived into believing that the prior art reference and the claimed design are the

same. Crocs, Inc. v. Intl Trade Comn, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (citingEgyptian

Goddess v. Swisa, 534 F.3d 665, 681 (Fed. Cir. 2008)). The ordinary observer test requires

consideration of the prior art and claimed design as a whole. See Egyptian Goddess, 534 F.3d at

675.

The mere presence of inconsequential orde minimis differences between the claimed

design and the hypothetical prior art reference created through combination of one or more



28/63

22

secondary references and the primary reference is insufficient to overcome a finding that the

claimed design is unpatentable under 35 U.S.C. 103(a). In re Lamb, 286 F.2d 610, 611-12

(CCPA 1961); MPEP 1504.03(B)

2. AnticipationSome of the proposed grounds of rejection set forth below request a finding of

anticipation under 35 U.S.C. 102(b). In the context of a design patent, the ordinary observer

test discussed above is the sole test for determining anticipation.Int'l Seaway Trading Corp. v.

Walgreens Corp., 589 F.3d at 1240. A prior art reference therefore anticipates a claimed design

under 35 U.S.C. 102(b) if an ordinary observer, familiar with the prior art, would be deceived

into believing the prior art reference and the claimed design are the same. Crocs, Inc. v. Intl

Trade Comn, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (citingEgyptian Goddess v. Swisa, 534 F.3d

665, 681 (Fed. Cir. 2008)).

3. Multiple EmbodimentsThe 834 Patent comprises a claimed design having seven embodiments. Multiple

embodiments may be included in the same design patent only if they are patentably indistinct.

SeeIn re Rubinfield, 270 F.2d 391 (CPA 1959). Accordingly, each proposed ground of rejection

in the Petition will hereafter focus on a single embodiment of the claimed design of the 834

Patent, it being understood that a determination that one embodiment of the 834 Patent is

unpatentable would render the entire 834 Patent unpatentable. In re Klein, 987 F.2d 1569, 1570

(Fed. Cir. 1993).

B. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon

Consideration of Its Proposed Grounds of Rejection Based on any of the

MPS120 Publications in view of any of the BKR160 Publications



29/63

23

The MPS120 Panel, as shown in the MPS120 Publications (Exhibits C and D), and the

BKR160 Panel, as shown in the BKR160 Publications (Exhibit D), are prior art under 35 U.S.C.

102(b), as previously discussed above. Neither the MPS120 Panel nor the BKR160 Panel was

considered by the Examiner during examination of the 834 Patent. The MPS120 Panel, as

shown in the MPS120 Publications, in view of the BKR160 Panel, as shown in the BKR160

Publications, is more similar in overall visual appearance than the references cited during

prosecution of the 834 Patent and is non-cumulative.2

As discussed in the detailed analysis below, the MPS120 Panel, as shown in any of the

MPS120 Publications, is a suitable primary reference having design characteristics that are

basically the same as the claimed design of the 834 Patent. Durling, 101 F.3d at 103. One of

ordinary skill in the art would look to the BKR160 Panel, as shown in any of the BKR160

Publications, to modify the MPS120 Panel because both references are metal wall panels. All

non-de minimis differences between the claimed design and the MPS120 Panel are shown in the

BKR160 Panel. From the point of view of an ordinary observer, a hypothetical prior art

reference created by modifying the MPS120 Panel as shown by the BKR160 Panel would have

the same overall visual appearance as the claimed design of the 834 Patent. Therefore, the

claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious over the

MPS120 Panel in view of the BKR160 Panel.

1. MPS120 Panel as compared to FIGS. 37-41 of the 834 PatentThe ATAS Web Page prior art reference (Exhibit C) and the 2002 Sweets Catalog and

ATAS Brochure prior art references (Exhibit D, pp. 5-7 and 9) show the MPS120 Panel in

2 Petitioner notes that the BKR160 Panel is similar to the design of the IW60A Panel, which was disclosed in areference considered by the Examiner during prosecution of the 834 Patent. The BKR160 Panel is believed to be

closer in overall visual appearance to the claimed design of the 834 Patent because, as discussed in greater detail

later in this Petition, it has an overall length and length-to-depth ratio that is more similar to the claimed design.



30/63

24

axonometric, partially extruded views. Petitioner respectfully submits that one of ordinary skill

in the art could easily understand and visualize the appearance of other views of the MPS120

Panel from these axonometric, partially extruded views, and/or from profile views. In fact, until

recently, the profile view was often the only technical drawing provided on product data sheets.

See, e.g., Exhibit H (Centria Technical Data Manual dated December, 1996, showing IW60A

Panel and additional panels in profile view). In order to assist in comparing the MPS120 Panel

to all of the views of the seventh embodiment of the claimed design, Petitioner has prepared

drawings showing perspective, profile, front, top and bottom views which accurately depict the

MPS120 Panel design to scale and were created from the drawings appearing in the MPS120

Publications. These drawings are shown below, side-by-side with the corresponding figures of

the claimed design. Any difference in width between the MPS120 Panel and FIGS. 37 and 39-41

of the claimed design are irrelevant, as the claimed design is broken on the left side to indicate

indefinite length.



31/63

25



32/63

26



33/63

27

2. Any of the MPS120 Publications, which show the MPS120 Panel, is asuitable primary reference, having the same basic design characteristics as

the claimed design

As shown, the design of the MPS120 Panel, which appears in all of the MPS120

Publications, is a suitable primary reference because it has the same basic design characteristics

as the seventh embodiment of the claimed design. Apple, Inc., 678 F.3d at 1329-30. The

MPS120 Panel and the seventh embodiment of the claimed

design share the following visual features:

1. planar upper and lower faces that arecoplanar and are roughly equal in height;

2. a U-shaped central recess, protrudinginwardly from the upper and lower faces

and having a planar floor connected to the

upper and lower faces by linear upper and

lower recess legs, respectfully;

3. an upper end having a planar floor that iscoplanar with the floor of the central recess

and is connected to the upper face by a

linear upper end leg;

4. a lower end having a linear lower end legthat extends outwardly from the lower face

and a inwardly curved tip located at the end

of the lower end leg that curls upwardly;



34/63

28

5. the lower recess leg intersects the lower face at the same angle as the upper endleg intersects the upper face and the angle at which the upper recess leg intersects

the upper face is the same as the angle at which the lower end leg intersects lower

upper face; and

6. when connected to another panel, the upper and lower ends combine to create arecess that is very similar in shape to the central recess (see FIG. 42).

The MPS120 Panel has the following differences from the seventh embodiment of the

claimed design:

1.

the central recess of the MPS120 Panel has a symmetrical shape, whereas the

central recess of the claimed design has an asymmetrical shape in which the lower

recess leg intersects the lower face at a shallower angle that the upper leg

intersects the upper face; and

2. the ratio of the depth D of the central recess and the upper end floor to the overalllength L of the panel is less in the MPS120 Panel than in the claimed design.

The differences between the claimed design and the MPS120 Panel do not result in an

overall appearance that is substantially different and patentably distinct from the MPS120 Panel.

Presence of invention is as essential to granting of design patent as to granting of mechanical

patent; obvious changes in arrangement and proportioning are no more patentable in one case

than in the other. In re Stevens, 173 F.2d 1015, 1019 (CPA 1949).

Further, the differences between the claimed design and the MPS120 Panel must be

evaluated based on all of the views of the claimed design. Egyptian Goddess, Inc., 534 F.3d at

675. Although the above-described differences are discernible in the side view (FIG. 38), the

designs are much less distinguishable from one another in the other views.



35/63

29

In addition, by virtue of the restriction requirement set forth in the Office Action mailed

on August 25, 2005 and the Reply submitted to the Office on September 15, 2005 during

examination of the 834 Patent, both the Patentee and the Examiner acknowledged that all

claimed differences between the seven embodiments of the claimed design of the 834 Patent are

patentably indistinct. In re Rubinfield, 270 F.2d 391 (CPA 1959) (multiple embodiments may be

included in the same design patent only if they are patentably indistinct). Accordingly, it is

respectfully submitted that the degree of similarity required to conclude that the design

characteristics of the prior art are basically the same as the claimed design should be less

stringent in this case.

For all of the reasons set forth above, the MPS120 Panel clearly has design characteristics

that are basically the same as the claimed design, and therefore any of the MPS120

Publications is a proper primary reference.

3. Any of the BKR160 Publications, which show the BKR160 Panel, is a suitablesecondary reference for modifying any of the MPS120 Publications

The BKR160 Panel, which appears in all of the BKR160 Publications, is a suitable

secondary reference for modifying the MPS120 Panel, which is shown in all of the MPS120

Publications, to create a design that has the same overall visual appearance as the claimed

design. The BKR160 Panel and the MPS120 Panel are both designs for building panels, and

both designs have an overall planar shape with two opposed ends for interlocking with additional

building panels. As shown below, the panel design of the BKR160 Panel includes certain

ornamental features, such as recessed regions having a particular shape and size, opposed ends

having a particular shape, and a particular overall length. The BKR160 Panel, which is shown in

all of the BKR160 Publications, is a suitable secondary reference because it is so related to the

MPS120 Panel that the appearance of these recessed regions, opposed ends, and overall



36/63

30

dimensions of the BKR160 Panel would suggest the application of those features to the MPS120

Panel. Apple, Inc., 678 F.3d at 1329-30.

4. The 834 Patent is unpatentable under 35 U.S.C. 103(a) over the MPS120 Panelin view of the BKR160 Panel

The claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious

over the MPS120 Panel, as shown in any of the MPS120 Publications, in view of the BKR160

Panel, as shown in any of the BKR160 Publications, because the MPS120 Panel modified by the

BKR160 Panel has the same overall visual appearance as the seventh embodiment of the claimed

design, and an ordinary observer, familiar with the prior art, would be deceived into believing the

seventh embodiment of the claimed design is the same as the MPS120 Panel modified by the

BKR160 Panel. Crocs, Inc.,598 F.3d at 1303.

As previously discussed, the appearance of the MPS120 Panel differs from the

appearance of the seventh embodiment of the claimed design in only two significant respects:

(a) the precise shape of the central recess, and (b) the ratio of the depth of the central recess to

the overall length of the panel. The BKR160 Panel, as shown in all of the BKR160 Publications

(Exhibit D, pp. 10 and 11) includes recessed portions that are virtually identical to the central

recess of the claimed design and has a depth-to-length ratio that is also virtually identical to the

claimed design, as shown below.

Therefore, the MPS120 Panel, modified with the ornamental features of the BKR160

Panel, including the shape and size of the recessed regions, the shape of the opposed ends, and



37/63

31

the overall length of the panel, creates a building panel design that has the same overall visual

appearance as the seventh embodiment of the claimed design. In addition, the overall

appearance of the BKR160 Panel is sufficiently similar to the MPS120 Panel such that the

appearance of certain ornamental features in the BKR160 Panel would suggest the application of

those features to the MPS120 Panel. It is respectfully submitted that any differences between the

claimed design and the MPS120 Panel modified by the BKR160 Panel are de minimis and would

be imperceptible to an ordinary observer familiar with the prior art.

Accordingly, the MPS120 Panel modified by the BKR160 Panel has the same overall

visual appearance as the seventh embodiment of the claimed design, and an ordinary observer,

familiar with the prior art, would be deceived into believing the seventh embodiment of the

claimed design is the same as the MPS120 Panel modified by the BKR160 Panel. The claim of

the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the

MPS120 Panel in view of the BKR160 Panel.

Based on the foregoing arguments, Petitioner has established that there is a reasonable

likelihood that it will prevail upon consideration of this proposed ground of rejection.

C. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon


MPS120 Publications in view of the IW60A Panel

The MPS120 Panel, as shown in any of MPS120 Publications (Exhibits C and D), and the

IW60A Panel, as shown in the Robertson Brochure (Exhibit G) are prior art under 35 U.S.C.

102(b), as previously discussed above. The IW60A Panel was disclosed in a reference cited

during prosecution of the 834 Patent (the Robertson Brochure, Exhibit G, p. 9), but the MPS120

Panel, as disclosed in any of the MPS120 Publications, was not considered by the Examiner

during examination of the 834 Patent.



38/63

32

As discussed above in Section XII.B., the MPS120 Panel, as shown in any of the

MPS120 Publications, is a suitable primary reference. Further, the design features of the IW60A

Panel, including the size and shape of the recess portions, are substantially the same as those of

the BKR160 Panel. The overall length of the IW60A Panel is shorter than that of the BKR160

Panel, however Petitioner respectfully submits that this and any other differences between the

IW60A Panel and the BKR160 Panel are de minimis.

Accordingly, Petitioner respectfully submits that the remarks made above in Section

XII.B. with regard to the MPS120 Panel modified by the BKR160 Panel are equally applicable

to the MPS120 Panel modified by the IW60A Panel. For these reasons, the IW60A Panel is a

suitable secondary reference, and the MPS120 Panel modified by the IW60A Panel has the same

overall visual appearance as the seventh embodiment of the claimed design. An ordinary

observer, familiar with the prior art, would be deceived into believing the seventh embodiment of

the claimed design is the same as the MPS120 Panel modified by the IW60A Panel. The claim

of the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the

MPS120 Panel in view of the IW60A Panel.



D. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon


BKR160 Publications (Anticipation)

The BKR160 Panel, as shown in all of the BKR160 Publications (Exhibit D), is prior art

under 35 U.S.C. 102(b), as previously discussed above. The BKR160 Panel was not

considered by the Examiner during examination of the 834 Patent. The BKR160 panel is more



39/63

33

similar in overall visual appearance than the references cited during prosecution of the 834

Patent and is non-cumulative.

As discussed in the detailed analysis below, from the point of view of an ordinary

observer familiar with the prior art, the BKR160 Panel has the same overall visual appearance as

the claimed design and the ordinary observer would be deceived into believing the BKR160

Panel and the claimed design are the same. Therefore, the claim of the 834 Patent is

unpatentable under 35 U.S.C. 102(b) as being anticipated by the BKR160 Panel, as shown in

any of the BKR160 Publications.

1.

The BKR160 Panel as compared to FIGS. 37-41 of the 834 Patent

The 2002 Sweets Catalog and ATAS Brochure prior art references (Exhibit D, pp. 10

and 11) show profile and axonometric views of the BKR160 Panel. As previously discussed,

Petitioner respectfully submits that one of ordinary skill in the art could easily understand and

visualize the appearance of other views of the BKR160 Panel from these views. In order to

assist in comparing the BKR160 Panel to the claimed design, Petitioner has prepared drawings

showing perspective, profile, front, top and bottom views which accurately depict the BKR160

Panel design to scale. These drawings are shown below, side-by-side with the corresponding

figures of the claimed design. Any difference in width between the BKR160 Panel and FIGS. 37

and 39-41 of the claimed design are irrelevant, as the claimed design is broken on the left side to

indicate indefinite length.



40/63

34



41/63

35

2. The 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipatedby the BKR160 Panel, as shown in any of the BKR160 Publications

The design of the BKR160 Panel has the same basic design characteristics as the seventh

embodiment of the claimed design. Most notably, the BKR160 Panel includes recessed portions

that are virtually identical to the recesses of the claimed design and has a depth-to-length ratio



42/63

36

that is also virtually identical to the claimed design. As shown below, the BKR160 Panel shares

these same design characteristics with many of the embodiments of the claimed design.

As shown, the primary differences between the third through seventh embodiments of the

claimed design and the BKR160 Panel are the numbers and locations of the recessed regions.

However, by virtue of the restriction requirement set forth in the Office Action mailed on August

25, 2005 and Reply submitted to the Office on September 15, 2005, both the Patentee and the

Examiner acknowledged that all claimed differences between all seven embodiments of the

claimed design of the 834 Patent are patentably indistinct. In re Rubinfield, 270 F.2d 391 (CPA

1959) (multiple embodiments may be included in the same design patent only if they are



43/63

37

patentably indistinct). Therefore, both the Patentee and Examiner acknowledged that the

different numbers and locations of the recessed regions among the embodiments are patentably

indistinct variations of the same claimed design. Stated another way, the patentee has admitted

that a panel having one recessed region is patentably indistinct from a panel having two recessed

regions. Petitioner respectfully submits that a panel having three recessed regions (i.e., the

BKR160 Panel) is also a patentably indistinct variation of the claimed design. In fact, due to the

positions taken by the patentee during examination of the 834 Patent, petitioner respectfully

submits that patentee should be stopped from arguing that the BKR160 Panel is patentably

distinct from the claimed design of the 834 Patent.

Based on the foregoing, an ordinary observer, familiar with the prior art, would be

deceived into believing the BKR160 Panel and the claimed design, which Petitioner submits

includes the patentably indistinct variant having a third recessed region, are the same. Therefore,

the claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the

BKR160 Panel, as shown in any of the BKR160 Publications. Therefore, Petitioner has

established that there is a reasonable likelihood that it will prevail upon consideration of this

proposed ground of rejection.

E. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon


BKR160 Publications (Obviousness)

In the event that the design of the BKR160 Panel is found to not anticipate the claimed

design under 35 U.S.C. 102(b), the claimed design is also unpatentable under 35 U.S.C.

103(a) as being obvious over the BKR160 Panel, as shown in any of the BKR160 Publications,

alone.



44/63

38

As discussed above, both the Patentee and Examiner acknowledged that the different

numbers and locations of the recessed regions among the embodiments of the claimed design are

patentably indistinct variations of the same claimed design. As can be seen, the removal or

rearrangement of recessed regions from embodiments of the claimed design results in other

embodiments of the claimed design (e.g., removing the right recessed region from the fifth

embodiment results in the seventh embodiment; removing the center recessed region from the

fifth embodiment results in the sixth embodiment).

Petitioner respectfully submits that simply removing one or two recessed regions from

the design of the BKR160 Panel results in all of the embodiments of the claimed design, and that

so removing one or two recessed regions from the design of the BKR160 Panel is an obvious

modification that does not create a patentable distinction, just as the removal or rearrangement of

recessed regions amongst the embodiments of the claimed design are patentably indistinct

modifications. For example, removing the right recessed region of the BKR160 Panel results in

the third embodiment; removing the left recessed region of the BKR160 Panel results in the fifth

embodiment; removing the center recessed region of the BKR160 Panel results in the fourth

embodiment; and removing the left and right recessed regions of the BKR160 Panel results in the

seventh embodiment. Again, obvious changes in arrangement and proportioning are no more

patentable in design patents than they are in mechanical patents. In re Stevens, 173 F.2d 1015,

1019 (CPA 1949).

An ordinary observer, familiar with the prior art, would be deceived into believing the

design of the BKR160 Panel, which Petitioner submits includes the obvious and patentably

indistinct variants having one or two of the recessed regions removed, and the claimed design,



45/63

39

are the same. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as

being obvious over the BKR160 Panel, as shown in any of the BKR160 Publications.



F. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon


BKR160 Publications in view of any of the MPS120 Publications

The MPS120 Panel, as shown in any of the MPS120 Publications (Exhibits C and D), and

the BKR160 Panel, as shown in any of the BKR160 Publications (Exhibit D), are prior art under

35 U.S.C. 102(b), as previously discussed above in Section XII.B. Neither the BKR160 Panel

or the MPS120 Panel was considered by the Examiner during examination of the 834 Patent.

The BKR160 Panel in view of the MPS120 Panel is more similar in overall visual appearance

than the references cited during prosecution of the 834 Patent and is non-cumulative.

The BKR160 Panel, as shown in any of the BKR160 Publications, is a suitable primary

reference for the reasons discussed above with regard to the claim of the 834 Patent being

anticipated by the BKR160 Panel. Similarly, the MPS120 Panel, as shown in any of the

MPS120 Publications, is a suitable secondary reference for modifying the MPS120 Panel to

create a design that has the same overall visual appearance as the claimed design. The BKR160

Panel and the MPS120 Panel are both designs for building panels, and both designs have an

overall planar shape with two opposed ends for interlocking with additional building panels. As

previously shown, the design of the MPS120 Panel includes certain ornamental features, such as

a single, centrally located recessed region. The MPS120 Panel is a suitable secondary reference

because it is so related to the BKR160 Panel that the appearance of the single, centrally located



46/63

40

recessed region would suggest the application of that feature to the BKR160 Panel. Apple, Inc.,

678 F.3d at 1329-30.


over the BKR160 Panel, as shown in any of the BKR160 Publications, in view of MPS120, as

shown in any of the MPS120 Publications, because the BKR160 Panel modified by the MPS120

Panel to have a single, centrally located recessed region instead of three recessed regions has the

same overall visual appearance as the seventh embodiment of the claimed design. It is

respectfully submitted that any differences between the claimed design and the BKR160 Panel

modified by the MPS120 Panel are de minimis and would be imperceptible to an ordinary

observer familiar with the prior art, and the ordinary observer would be deceived into believing

the seventh embodiment of the claimed design is the same as the BKR160 Panel modified by the

MPS120 Panel. Crocs, Inc.,598 F.3d at 1303. The claim of the 834 Patent is therefore

unpatentable under 35 U.S.C. 103(a) as being obvious over the BKR160 Panel, as shown in

any of the BKR160 Publications, in view of the MPS120 panel, as shown in any of the MPS120

Publications.





47/63

41

G. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon


MPH080 Publications in view of any of the BKR160 Publications

The MPH080 Panel, as shown in any of the MPH080 Publications (Exhibits D and E),

and the BKR160 Panel, as shown in any of the BKR160 Publications (Exhibit D), are prior art

under 35 U.S.C. 102(b), as previously discussed above. Neither the MPH080 Panel or the

BKR160 Panel was considered by the Examiner during examination of the 834 Patent. The

MPH080 Panel, as shown in any of the MPH080 Publications, in view of the BKR160 Panel, as

shown in any of the BKR160 Publications, is more similar in overall visual appearance than the

references cited during prosecution of the 834 Patent and is non-cumulative.

As discussed below, the MPH080 Panel, as shown in any of the MPH080 Publications, is

a suitable primary reference having design characteristics that are basically the same as the

claimed design of the 834 Patent. Durling, 101 F.3d at 103. One of ordinary skill in the art

would look to the BKR160 Panel, as shown in any of the BKR160 Publications, to modify the

MPH080 Panel because both references are metal wall panels. All non-de minimis differences

between the claimed design and the MPH080 Panel are shown in the BKR160 Panel. From the

point of view of an ordinary observer, a hypothetical prior art reference created by modifying the

MPH080 Panel as shown by the BKR160 Panel would have the same overall visual appearance

as the claimed design. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C.

103(a) as being obvious over the MPH080 Panel in view of the BKR160 Panel.

1. The MPH080 Panel as compared to FIGS. 37-41 of the 834 PatentThe MPH080 Panel shows a profile of an extruded wall panel. As previously discussed

with respect to the MPS120 Panel, Petitioner respectfully submits that one of ordinary skill in the

art could easily understand and visualize the appearance of other views of the MPH080 panel



48/63

42

from the profile view. In addition, Petitioner respectfully submits that one of ordinary skill in the

art could easily understand and visualize the appearance of two (or more) interlocked MPH080

Panels, a point that is also demonstrated by the inclusion of such views for each embodiment of

the 834 Patent (i.e., FIGS. 6, 12, 18, 24, 30, and 42).

Petitioner further submits that such interlocked panels represent the overall visual

appearance of the MPH080 Panel as envisioned by one of ordinary skill in the art and as they

would actually appear when installed on a building wall. In order to assist in comparing the

design of the MPH080 Panel to the claimed design, Petitioner has prepared drawings showing

perspective, front, rear, top and bottom views which accurately depict two interlocked MPH080

Panels to scale. These drawings are shown below, side-by-side with the corresponding figures of

the claimed design. Again, any differences in length between the MPS120 Panel and FIGS. 37

and 39-41 of the claimed design are irrelevant, as the claimed design is broken on the left side to

indicate indefinite length.



49/63

43



50/63

44

2. Any of the MPH080 Publications, which show the MPH080 Panel, is asuitable primary reference, having the same basic design characteristics as the

claimed design



51/63

45

As shown, the design of the MPH080 Panel, which appears in all of the MPH080

Publications, is a suitable primary reference because when two MPH080 Panels are

interlockeda configuration that one of ordinary skill in the art would readily envision and in

which the panels are ultimately installed on a building

wallthey have the same basic design characteristics as

the seventh embodiment of the claimed design. Apple,

Inc., 678 F.3d at 1329-30. Specifically, two interlocked

MPH080 Panels and the seventh embodiment of the

claimed design share the following visual features, again

with reference to the annotated FIG. 38:

1. planar upper and lower faces that arecoplanar and are roughly equal in height;

2. a U-shaped central recess, protrudinginwardly from the upper and lower faces

and having a planar floor connected to the

upper and lower faces by linear upper and

lower recess legs, respectfully;

3. an upper end having a planar floor that iscoplanar with the floor of the central recess

and is connected to the upper face by a

linear upper end leg;

4. a lower end having a linear lower end leg that extends outwardly from the lowerface and a inwardly curved tip located at the end of the lower end leg;



52/63

46

5. the lower recess leg intersects the lower face at the same angle as the upper endleg intersects the upper face and the angle at which the upper recess leg intersects

the upper face is the same as the angle at which the lower end leg intersects lower

upper face; and

6. when connected to another panel, the upper and lower ends combine to create arecess that is very similar in shape to the central recess (see FIG. 42).

The MPH080 Panel has the following differences from the seventh embodiment of the

claimed design:

1.

the central recess of the two interlocked MPH080 Panels has a symmetrical shape,

whereas the central recess of the claimed design has an asymmetrical shape in

which the lower recess leg intersects the lower face at a shallower angle that the

upper leg intersects the upper face;

2. the ratio of the depth D of the central recess and the upper end floor to the overalllength L of the two interlocked MPH080 Panels is greater than in the claimed

design; and

3. the lower side of the central recess of the two interlocked MPH080 Panelsincludes additional structure that enables the two panels to interlock.

As previously discussed, in view of the many embodiments included in the 834 Patent,

Petitioner respectfully submits that the degree of similarity required to conclude that the design

characteristics of the prior art are basically the same as the claimed design should be less

stringent in this case. Also, the differences between the claimed design and the MPH080 Panel

must be evaluated based on all of the views of the claimed design,Egyptian Goddess, Inc., 534



53/63

47

F.3d at 675, and the designs are much less distinguishable from one another in views other than

the profile view.

For all of the reasons set forth above, MPH080 clearly has design characteristics that are

basically the same as the claimed design, and therefore, is a proper primary reference.

3. Any of the BKR160 Publications, which show the BKR160 panel, is a suitablesecondary reference for modifying any of the MPH080 Publications

The BKR160 Panel, which appears in all of the BKR160 Publications, is a suitable

secondary reference for modifying the MPH080 Panel, which is shown in all of the MPH080

Publications, to create a design that has the same overall visual appearance as the claimed

design. The MPH080 Panel and the BKR160 Panel are both designs for building panels, and

both designs have an overall planar shape with two opposed ends for interlocking with additional

building panels. As previously discussed, the panel design of the BKR160 Panel includes certain

ornamental features, such as recessed regions having a particular shape and size, opposed ends

having a particular shape, and a particular overall length. The BKR160 Panel, which is shown in

all of the BKR160 Publications, is a suitable secondary reference because it is so related to the

MPH080 Panel that the appearance of these recessed regions, opposed ends, and overall

dimensions of the BKR160 Panel would suggest the application of those features to the MPH080

Panel. Apple, Inc., 678 F.3d at 1329-30.

4. The 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over theMPH080 Panel in view of the BKR160 Panel


over the MPH080 Panel, as shown in any of the MPH080 Publications, in view of the BKR160

Panel, as shown in any of the BKR160 Publications, because the MPH080 Panel modified by the

BKR160 Panel has the same overall visual appearance as the seventh embodiment of the claimed



54/63

48

design, and an ordinary observer, familiar with the prior art, would be deceived into believing the

seventh embodiment of the claimed design is the same as the MPH080 Panel modified by the

BKR160 Panel. Crocs, Inc.,598 F.3d at 1303.

As previously discussed, the appearance of the two interlocked MPH080 Panels differs

from the appearance of the seventh embodiment of the claimed design in only three significant

respects. Two of these differences, (a) the precise shape of the recess that is formed by the two

interlocked panels, and (b) the ratio of the depth of the recess to the overall length of the two

interlocked panels, are taught by the BKR160 Panel. As explained above, the BKR160 Panel

includes recessed portions that are virtually identical to the central recess of the claimed design

and has a depth-to-length ratio that is also virtually identical to the claimed design.

With regard to the third difference, the additional structure on the lower side of the

central recess of the two interlocked MPH080 Panels, Petitioner respectfully submits that the

additional structure would be treated as de minimis by an ordinary observer because this

additional structure is hidden when the panels are installed on a building, and therefore, would be

visually unimportant to an ordinary observer. Examples of installations of MPH080 Panels and

Centria model CS-620 panels, which are believed to be a commercial product based on the

seventh embodiment of the claimed design, are shown below:



55/63

49

The argument that the structures used to connect the panels together should be treated as de

minimis is further supported by the fact that these same structures are disclaimed in the claimed

design of the 834 Patent and the fact that every embodiment of the claimed panel is shown in a

view in which it is interlocked with a second panel (see, e.g., FIG. 42 of Exhibit A).

Therefore, the MPH080 Panel, modified with the ornamental features of the BKR160

Panel, including the shape and size of the recessed regions, the shape of the opposed ends, and

the overall length of the panel, creates a building panel design that has the same overall visual

appearance as the seventh embodiment of the claimed design. In addition, the overall

appearance of the BKR160 Panel is sufficiently similar to the MPH080 Panel such that the

appearance of certain ornamental features in the BKR160 Panel would suggest the application of

those features to the MPH080 Panel. It is respectfully submitted that any differences between



56/63

50

the claimed design and the MPH080 Panel modified by the BKR160 Panel are de minimis and

would be imperceptible to an ordinary observer familiar with the prior art.

Accordingly, the MPH080 Panel modified by the BKR160 Panel has the same overall

visual appearance as the seventh embodiment of the claimed design, and an ordinary observer,

familiar with the prior art, would be deceived into believing the seventh embodiment of the

claimed design is the same as the MPH080 Panel modified by the BKR160 Panel. The claim of

the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the

MPH080 Panel in view of the BKR160 Panel.



H. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon

Consideration of Its Proposed Grounds of Rejection Based on Any of the

MPH080 Publications in View of the IW60A Panel

The MPH080 Panel, as shown in the MPH080 Publications (Exhibits D and E), and the

IW60A Panel, as shown in the Robertson Brochure (Exhibit G, p. 9) are prior art under 35

U.S.C. 102(b), as discussed above. The IW60A Panel was disclosed in a reference cited during

prosecution of the 834 Patent (the Robertson Brochure, Exhibit G, p. 9), but the MPH080 Panel,

as disclosed in any of the MPH080 Publications, was not considered by the Examiner during

examination of the 834 Patent. The MPH080 Panel in view of the IW60A Panel is more similar

in overall visual appearance than the references cited during prosecution of the 834 Patent and is

non-cumulative.

As discussed above, the MPH080 Panel is a suitable primary reference. Further, the

design features of the IW60A Panel, including the size and shape of the recess portions, are

substantially the same as those of the BKR160 Panel. The overall length of the IW60A Panel is



57/63

51

shorter than th

centria v atas intl - motion to stay

Documents