Decision Date: September 24, 2013 -

Court: Patent Trial and Appeal Board -

Patents: D527,834 -

Holding: ATAS’s petition to institute inter partes review is DENIED.

Opinion:

ATAS International, Inc. filed a petition for inter partes review of U.S. Design Patent No. D527,834, entitled Building Panel and assigned to Centria. Litigation was pending between the parties in the U.S. District Court for the Western District of Pennsylvania concerning the patent. The petition asserted that the patent is unpatentable under either 35 U.S.C. §§ 102 and/ or 103. ATAS did not meet its burden of showing a reasonable likelihood of prevailing under 35 U.S.C. § 314(a), therefore, the Patent Trial and Appeal Board (“PTAB”) denied the petition. During prosecution, the patent was restricted to seven embodiments of a building panel design. In its claim construction, the PTAB concluded that the seven embodiments of the patented design share several common characteristics. All seven have both raised and recessed areas along the length of the panels. All panels have either one or two recessed well-type areas. Each of the recessed well-type areas is bounded by angled portions having differing angles. All panels have two or three raised areas. The width of at least one of the raised areas is at least twice as wide as any of the recessed areas. Together, the PTAB concluded, these characteristics result in each of the seven embodiments having an overall asymmetric and irregular appearance.

ATAS argued that because the patent has embodiments with both one and two recessed areas, the “patentee has admitted that a panel having one recessed region is patently indistinct from a panel having two recessed regions,” thus, the number and placement of the recessed areas cannot affect patentability. The PTAB disagreed. While more than one embodiment may be patented in a single design patent if they are obvious variants of each other, see Apple Inc. v. Samsung Elecs. Co., F.3d 1314, 1329-30 (Fed. Cir. 2012), the PTAB found no support for ATAS’s broad generalization. The prosecution history does not give any reason for keeping the seven embodiments in one patent. Additionally, the PTAB found that the number and location of the recessed areas could affect patentability because placing more recessed areas along different locations of the panel could cause its overall asymmetric appearance to change.