McDermott Will & Emery

In a rare inter partes review (IPR) decision involving a challenge to a design patent, the Patent Trial and Appeal Board (PTAB) issued a final decision finding that the petitioner had not shown that a sole claim of a design patent, in this case directed to insulation having a cloud-like appearance with a swirl pattern including colors and a variety of hues, is unpatentable. Johns Manville Corporation, et al. v. Knauf Insulation, Inc., et al., Case No. IPR2015-01453 (PTAB, Jan. 11, 2017) (Daniels, APJ).

Johns Manville Corporation filed a petition to institute an IPR of a design patent directed to the appearance of mineral fiber insulation. In its petition, Manville relied on several articles and advertisements depicting insulation that it asserted anticipated or at least rendered the claimed design obvious. After institution, Knauf Insulation, the patent owner, argued that the declarations Manville submitted to support the prior art status of the articles and advertisements did not evidence personal knowledge of the prior art status of the documents (which were therefore not properly authenticated). Knauf also argued distinctions between the claimed design and the designs depicted in the articles and advertisements.

The PTAB started from the well-settled premise that a design is represented better by an illustration than a description. Citing Egyptian Goddess, the PTAB noted that “[a]lthough preferably a design patent claim is not construed by providing a detailed verbal description, it may be ‘helpful to point out . . . various features of the claimed design as they relate to the . . . prior art.’” In that regard, in its institution decision, the PTAB determined that the claimed design includes the features shown in the sole figure of the patent and “that color is an element of the claimed design; this element includes colors that sufficiently impart or convey a variation of distinct hues, but is not limited to ‘brown and cream.’” The PTAB noted, however, that the figure (depicting “material having a cloud-like appearance with variations in a swirl pattern”) lacks clear structure, form and environment, and the PTAB provided a verbal claim construction to compare the claimed design to the prior art. The PTAB further explained that specific colors and hues cannot be precisely articulated in a verbal claim construction (“a single color can be described by a variety of names, and a variety of colors can be described by a single name”), and thus, the claimed design was interpreted as including colors (not limited to brown and cream) and a “variation of distinct hues” as shown in the sole figure of the patent.

The PTAB agreed with Manville that the articles and advertisements it relied on qualified as prior art. However, the PTAB agreed with Knauf that an “ordinary observer” would not have found the patented design to have been anticipated by the prior art pink-colored insulation depicted in the primary reference relied on by Manville.

In terms of obviousness, the PTAB looked to the “designer of ordinary skill” and the two-step analysis comprising (1) an evaluation of the primary reference in terms of its design characteristics that are the same as the claimed design, then (2) a determination whether it would have been obvious to a designer of ordinary skill to have modified the primary reference by a secondary reference to create a design having the same overall appearance as the claimed design. After considering various possible combinations of primary and secondary references, the PTAB concluded that the prior art, while depicting a similar fiber insulation pattern as the claimed design, did not show “the swirling variation in distinct colors, or hues, including brown and cream” of the Knauf patent. The PTAB therefore concluded that Manville failed to show by a preponderance of the evidence that the claimed design would have been obvious, because a designer of skill, viewing the prior art from the vantage of the “ordinary observer,” would not have combined references to create the claimed combination of “brown, chocolate, coffee, beige or almond.”