Common Sense Prevails

B/E Aerospace, Inc. appealed a final written decision of the Patent Trial and Appeal Board (PTAB) that found certain claims of B/E's aircraft lavatory-related patents obvious.

B/E contended that the Board's decision is erroneous because the Board incorporated a claim limitation that is not present in the prior art. Ultimately, the Federal Circuit affirmed the Board's findings holding the patents invalid.

Background

This appeal arises from an inter partes review ("IPR") proceeding in which C&D Zodiac, Inc. ("Zodiac") challenged two patents owned by B/E Aerospace, Inc. ("B/E"): U.S. Patent Nos. 9,073,641 and 9,440,742. The '742 patent is a continuation of the '641 patent.

The challenged patents relate to space-saving technologies for aircraft enclosures such as lavatory enclosures, closets, and galleys. Each patent contains a two-page written description that teaches an enclosure with contoured walls designed to "reduce or eliminate the gaps and volumes of space required between lavatory enclosures and adjacent structures." In other words, the patents are directed to space-saving modifications to the walls of aircraft enclosures; they are not directed to the structures contained within those walls.

Figures 1-2 of the patents are reproduced below, and illustrate the prior art vs. the invention.

For the IPRs, Claim 1 of the '641 patent was representative of the challenged claims, and provides:

1. An aircraft lavatory for a cabin of an aircraft of a type that includes a forward-facing passenger seat that includes an upwardly and aftwardly inclined seat back and an aft-extending seat support dis-posed below the seat back, the lavatory comprising:
a lavatory unit including a forward wall portion and defining an enclosed interior lavatory space, said forward wall portion configured to be disposed proximate to and aft of the passenger seat and including an exterior surface having a shape that is substantially not flat in a vertical plane; and
wherein said forward wall portion is shaped to substantially conform to the shape of the upwardly and aftwardly inclined seat back of the passenger seat, and includes a first recess configured to receive at least a portion of the upwardly and aftwardly inclined seat back of the passenger seat therein, and further includes a second recess configured to receive at least a portion of the aft-extending seat support therein when at least a portion of the upwardly and aftwardly inclined seat back of the passenger seat is received within the first recess.

This appeal focused on the "first recess" and "second recess" limitations, labeled as elements 34 and 100, respectively, in Figure 2 above.

In its petition, Zodiac defined the "Admitted Prior Art" as certain portions of the challenged patents, including Figure 1, which discloses a flat, forward-facing lavatory wall immediately behind a passenger seat that has a rear seat leg extending toward the back of the plane (referred to as an "aft-extending seat support").

The Board found that a skilled artisan would have found it obvious to further modify the Admitted Prior Art in view of U.S. Patent No. 3,738,497 ("Betts") to include the "second recess" to receive passenger seat supports.

Zodiac argued that the logic of using a recess to receive the seat back applies equally to using another recess to receive the aft extending seat support.

Zodiac's expert opined that the addition of a second recess "is nothing more than the application of a known technology (i.e., Betts) for its intended purpose with a predictable result (i.e., to position the seat as far back as possible). Zodiac's expert explained that a skilled artisan "would be motivated to modify an enclosure, such as a lavatory, to include a second recess to receive aft facing seat supports"; that this "modification is nothing more than the application of known technology for its intended purpose"; and that the "result of such a modification is predictable, allowing the seat to be positioned further aft in an aircraft."

Second, the Board found that Zodiac "established a strong case of obviousness based on the Admitted Prior Art and Betts, coupled with common sense and the knowledge of a person of ordinary skill in the art."

On appeal, the Court found that there is no dispute that the prior art reference to Betts, which describes a contoured wall design, meets the "first recess" claim limitation. Only the "second recess" limitation was at issue.

The Federal Circuit ultimately agreed with the Board's conclusion that it would have been obvious to further modify the Admitted Prior Art/Betts combination to include the claimed "second recess" to receive passenger seat supports.

First, the Federal Circuit found that such a modification recess was nothing more than the predictable application of known technology. The prior art yields a predictable result, the "second recess," because a person of skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so.

Zodiac's expert found that as the seat is moved aft the feet of the seat support may come into contact with the lower section of the wall, and creating one or more recesses to accommodate whatever portion(s) of the seat support that would contact the forward wall of the enclosure is the obvious solution to this known problem.

The Federal Circuit also noted that it would have been a matter of common sense to incorporate a second recess in the Admitted Prior Art/Betts combination. Common sense teaches that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.

Common sense cannot be used as a "wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified. Here, the Board's invocation of common sense was properly accompanied by reasoned analysis and evidentiary support. Here, the evidence shows that the technology of the claimed invention is simple, and the missing claim limitation (the "second recess") involves repetition of an existing element (the "first recess") until success is achieved.

In sum, the Federal Circuit found no error in the Board's conclusion that a skilled artisan would have used common sense to incorporate a second recess in the Admitted Prior Art/Betts combination, and therefore, affirmed the Board's obviousness conclusion.

B/E Aerospace, Inc. v. C&D Zodiac, Inc. (Fed. Cir. 2020)
Panel: Circuit Judges Lourie, Reyna, and Hughes
Opinion by Circuit Judge Reyna