Trials@uspto.

gov Paper 12
571-272-7822 Entered: October 31, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

C&D ZODIAC, INC.,

Petitioner,

v.

B/E AEROSPACE, INC.,

Patent Owner.
____________

Case PGR2017-00019
Patent D764,031 S
____________

Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and

SCOTT A. DANIELS, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION
Institution of Post-Grant Review
37 C.F.R. 42.108
PGR2017-00019
Patent D764,031 S
I. INTRODUCTION
A. Background
C&D Zodiac, Inc. (Petitioner) filed a Petition to institute a post-
grant review of the sole claim of U.S. Patent Design Patent No. D764,031 S
(the 031 patent). Paper 1. B/E Aerospace, Inc. (Patent Owner) filed a
Preliminary Response. Paper 7 (Prelim. Resp.). 1 Applying the standard
set forth in 35 U.S.C. 324(a), which requires demonstration that it is more
likely than not that at least one challenged claim is unpatentable, we grant
Petitioners request and institute post-grant review of the challenged claim.
B. Related Proceeding
Petitioner states that the 031 patent and other related patents, are
asserted against Petitioner in B/E Aerospace, Inc. v. Zodiac Aerospace, Inc.,
No. 2:14-cv-01417 in the United States District Court, Eastern District of
Texas. Pet. 23. The 031 patent claims priority, ultimately, to a utility
patent, U.S. Patent. No. 8,590,838 (the 838 patent), which was the subject
of Case IPR2014-00727 between Petitioner and Patent Owner. In the final
written decision in that case, the Board held certain claims had been proven
unpatentable, and other claims had not been proven unpatentable. IPR2014-
00727, Paper 65. Both sides appealed, and the Court of Appeals for the
Federal Circuit affirmed. See B/E Aerospace, Inc. v. C&D Zodiac, Inc.,
2017 WL 4387223 (Fed. Cir. Oct. 3, 2017).

1
Patent Owner filed a redacted version of its Preliminary Response as Paper
7, and a sealed version, Paper 8. Unless otherwise noted in this Decision we
refer to the publically available redacted version, Paper 7.
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C. The 031 Patent and Challenged Claim

The 031 patent (Ex. 1001), issued August 16, 2016, and is titled
Aircraft Interior Lavatory. The 031 patent includes two figures, Figures 1
and 2, both reproduced below, claiming a design for an aircraft lavatory.

Figure 1 of the 031 patent illustrates a front side view of an aircraft

lavatory. Ex. 1001, Written Desc.

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Figure 2 of the 031 patent depicts a front perspective view of the aircraft
lavatory. Id.
D. Asserted Grounds of Unpatentablity
Along with its contention that the 031 patent is available for post-
grant review, Petitioner asserts essentially three grounds of unpatentability.
Pet. 6. Petitioner contends that the challenged claim is unpatentable under
35 U.S.C. 171 as lacking ornamentality and 35 U.S.C. 112(b) as
indefinite. Id. Petitioner contends also that the patent is invalid under 35
U.S.C. 102(a)(1), alleging that the illustrated lavatory was on sale and in

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public use prior to the effective filing date. Id. Importantly, Petitioners
arguments rely fundamentally on the assertion that the 031 patent is
available for post-grant review because it is not entitled to the filing date of
the 838 patent and its respective patent application, application No.
13/089,063 (the 063 application), which was filed April 18, 2011. See 35
U.S.C. 100(i)(1)(A)-(B); see also Ex. 1001, 1. Petitioner supports its
arguments with a declaration by Ronald Kemnitzer (Kemnitzer Decl.), an
industrial designer. Ex. 1003.
In its Preliminary Response, Patent Owner contests mainly the issue
of the filing date of the 031 patent. Patent Owner argues that the 031
patent clearly states on the face page of the patent that it is a division of
application 13/089,063, arguing that the 063 application provides
sufficient written description support for the design patent. Prelim. Resp.
1429. Therefore, Patent Owner contends, the 031 patent is entitled to the
filing date of the 063 application and is not eligible for post-grant review
because it was not filed subject to the first-inventor-to-file provisions of the
LeahySmith America Invents Act (AIA). Id. at 14.
E. Real Parties in Interest
Section 322(a)(2) of Title 35 states that a petition to institute a post-
grant review may be considered only if . . . (2) the petition identifies all
real parties in interest. 35 U.S.C. 322(a)(2). Invoking this statute, Patent
Owner asserts: A PGR petitioner is required to identify all real-parties-in-
interest (RPII) to the petition, as well as all privies of the petitioner. Pet. 3
(emphasis added). The statute, however, does not require the identification
of privies, and Patent Owner has not persuaded us that the Petition fails to
identify a real party in interest.

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The Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764
(Aug. 14, 2012) (Practice Guide) explains that [w]hether a party who is
not a named participant in a given proceeding nonetheless constitutes a real
party-in-interest . . . to that proceeding is a highly fact-dependent question.
77 Fed. Reg. at 48,759. The Practice Guide provides guidance regarding
factors to consider in determining whether a party is a real party-in-interest.
Considerations may include whether a non-party exercises control over a
Petitioners participation in a proceeding. Other considerations may include
whether a non-party, in conjunction with control, is funding the proceeding
and directing the proceeding. 77 Fed. Reg. at 48,75960.
Patent Owner contends that it is litigating infringement suits against,
inter alia, Petitioner C&D Zodiac, parent company Zodiac Aerospace, and
other related subsidiaries Zodiac Water and Waste (a.k.a. MAG Aerospace
Industries, LLC), Zodiac Northwest Aerospace Technologies, and Zodiac
Heath Tecna, Inc. Prelim. Resp. 4. Patent Owners unilateral charges of
infringement against related companies to C&D Zodiac, Inc., do not
however, make the related companies real parties in interest. Cf. 77 Fed.
Reg. at 48,760. ([I]f Trade Association X files an IPR petition, Party A
does not become a real party-in-interest or a privy of the Association
simply based on its membership in the Association.).
We have reviewed also the various documents which Patent Owner
relies upon as evidence of alleged control by Zodiac Aerospace over C&D
Zodiac, Inc. and acknowledge that there is certainly evidence of a corporate
relationship, e.g., that C&D Zodiac is a wholly owned subsidiary of Zodiac
Aerospace. See Ex. 2024, 104 (Corporate financial statement indicates
Zodiac Aerospace % interest of C&D Zodiac Inc, is 100.00). We note

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also that certain evidence appears to show that Zodiac Aerospace provides
some level of corporate oversight and internal control over its subsidiaries.
See Ex. 2024, 115; Ex. 2029, 110. This evidence, however, lacks
substantive detail as to how, where, or when Zodiac Aerospace provides
actual control over, or directs, any commercial decision making process of
C&D Zodiac and other subsidiaries. See Ex. 2024, 115 (The Zodiac
Aerospace 2015/2016 Annual Report describes a plan for Back to Basics
operational procedures, a more effective supply chain and inventory
management, and better integrated sales and operations planning.).
Importantly, none of the documents referred to by Patent Owner detail any
ability, requirement, or right of Zodiac Aerospace to direct the funding and
decision making process of its subsidiaries in litigation or other legal
proceedings, such as this PGR. See Prelim. Resp. 69 (citing Exs. 2008,
2009, 2010, 2011, 2012, 2020, 2021, 2022, 2023, 2024, 2028, 2029).
Although Zodiac Aerospace may hold itself out on its website as the
parent company, with worldwide presence, (See, e.g., Ex. 2010), this
evidence tells us nothing about specific corporate control by Zodiac
Aerospace over any of its subsidiaries nor does it describe any type of
funding of subsidiaries for litigation or this PGR. See Exs. 20082012. As
part of its corporate oversight responsibilities, Zodiac Aerospace
promulgates certain standards that are apparently required for suppliers to its
subsidiaries. See Ex. 2021, 1 (Titled, Requirements Applicable to
Suppliers, [t]his document defines the requirements applicable to the
ZODIAC AEROSPACE Group suppliers.). These supplier standards
appear intended to ensure a baseline supply format for subsidiaries such as
C&D Zodiac, but are mainly an example of corporate efficiency and

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organizational consistency that expressly does not limit subsidiaries from

prescribing additional requirements. See id. (Supplementary specific
requirements can be included in contracts or purchase orders.). The
supplier requirements document itself may be an example of an internal
control that ensures uniformity of goods or service from the groups
suppliers, but it is not particularly probative evidence showing specific
decision making or financial control by Zodiac Aerospace over any
subsidiary in the Zodiac Aerospace group. For instance, the subsidiaries
appear free to use any supplier they choose, as long as the supplier abides by
the baseline requirements in this document. See id. at 2 (This document
applies to all aerospace, defense and space products purchased by the
ZODIAC AEROSPACE Group entities.).
The 2014/2015 Zodiac Aerospace Report of the Chairman of the
Supervisory Board (the Report) explains that
[p]ursuant to the operations defined by the Zodiac Aerospace
Executive Board and which fall under its control, each subsidiary
assumes all company duties and responsibilities in the legal,
commercial, technical, industrial, economic, financial, tax and
social areas, except those centralized at Group level as defined
below.
Ex. 2029, 110. Although the centralized list of responsibilities referred to
in the Report includes a somewhat contradictory statement regarding
pooled services such as financing, IT, legal affairs, human resources and
industrial operations, there is no clarification or description of any scope of
legal affairs that is, or would be, undertaken by the parent company on
behalf of C&D Zodiac. Id.
We are apprised of no persuasive evidence that the limited role of
governance, risk management and monitoring of Group companies

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ascribed to Zodiac Aerospace in this Report is sufficient to show that any

party other than C&D Zodiac precipitated, controls or is funding this PGR.
Id. Therefore, we have no reason to doubt that Petitioner has satisfied its
obligation to name any and all real parties in interest.
II. CLAIM CONSTRUCTION
A. Legal Standard
With regard to design patents, it is well-settled that a design is
represented better by an illustration than a description. Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing
Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although 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. Egyptian Goddess, 543 F.3d at 67980; cf.
High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 131415
(Fed. Cir. 2013) (remanding to district court, in part, for a verbal
description of the claimed design to evoke a visual image consonant with
that design).
Petitioner proposes a claim construction for the claimed lavatory
design that relates element names to certain portions of the design, including
for example, a forward wall, a rectangular door opening, and a
recessed depression. Pet. 45. Patent Owner asserts that the figures are
plain and do not require an express construction. Prelim. Resp. 13. We
agree with Patent Owner.
Observing Figures 1 and 2 in their entirety, we are not persuaded at
this point in the proceeding that applying specific nomenclature to aspects of
the design provides any clarity to either a designer of skill in the art, or to an

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ordinary observer, that is not self-evident by simply observing the overall

appearance of the design itself. We determine that the scope of the claimed
design protects the ornamental aspects of an aircraft lavatory including a
wall defining a recess as shown in Figures 1 and 2.
III. ANALYSIS
A. The Effective Filing Date of the Sole Claim of the 031 patent
The parties dispute the effective filing date of the 031 patent.
Compare Pet. 28 (Petitioner asserts that [t]he 031 patent is not entitled to
an effective filing date any earlier than October 10, 2013 and is therefore
eligible for post-grant review.), with Prelim. Resp. 19 (Patent Owner argues
that [Patent Owner] had possession of the claimed design as of April 18,
2011.). To be eligible for post-grant review, the 031 patent must have an
effective filing date on or after March 16, 2013. This is a threshold issue
with respect to post-grant review which we address at the outset. See 35
U.S.C. 100(i)(1)(A)-(B).
The 031 patent issued from a division of U.S. Design Application
No. 29/469,502, filed October 10, 2013, now U.S. Patent No. Des. 749,709
(the 709 patent). Ex. 1001, Related Appln Data. The 709 patent in turn
issued from a division of the 063 application, filed April 18, 2011, now the
838 patent. Id. The divisional application that issued as the 031 patent
contained a specific reference to the earlier filed 063 application. Ex. 1002,
1 (This is a divisional of USSN 29/469,502, filed on October 10, 2013,
which is a divisional of USSN 13/089,063, filed April 18, 2011, USPN
8,590,838, issued November 26, 2013, which are hereby incorporated by
reference as if set forth in full herein.). Thus, the 031 patent might be
entitled to an effective filing date of April 18, 2011, under 35 U.S.C. 120.

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See 35 U.S.C. 120 (requiring for benefit of an earlier filed application that
the latter application, among other things, contain[] or [be] amended to
contain a specific reference to the earlier filed application).
In order for the 031 patent to be entitled to an effective filing of April
18, 2011, the invention it claims must be adequately described and enabled
in the earlier filed 063 application. 35 U.S.C. 120 (requiring compliance
with 35 U.S.C. 112(a)); 2 In re Owens, 710 F.3d 1362, 1366 (Fed. Cir.
2013). The test for sufficiency of the written description, which is the same
for either a design or a utility patent, has been expressed as whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date. In re Owens, 710 F.3d at 1366 (quoting Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). In
the context of design patents, the drawings provide the written description of
the invention. Thus, when an issue of priority arises under 120 in the
context of design patent prosecution, one looks to the drawings of the earlier
application for disclosure of the subject matter claimed in the later
application. Owens, 710 F.3d at 1366 (citations omitted).

2
The written description requirement, which is now found at 35 U.S.C.
112(a), was codified previously at 35 U.S.C. 112, 1 (1975).

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Petitioner argues that the 063 application, which became the 838
utility patent, does not provide written description support for the claim of
the 031 patent. Pet. 2843. Figures 1 and 2 of the 063 application are
reproduced below.

Figure 1, above, illustrates a prior art installation of a lavatory immediately

aft of and adjacent to an aircraft passenger seat. Figure 2 depicts a

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lavatory according to the present invention immediately aft of and adjacent

to or abutting an aircraft cabin passenger seat. Ex. 1007 1718.
Figure 2 of the 063 application does not show the same ornamental
design as claimed in the 031 patent, as shown by comparison with Figures 1
and 2 of the 031 patent supra. For example, Figure 2 of the 063
application depicts a front wall profile of a lavatory defining a lower recess
formed by an angled lower portion of the wall extending rearward relative to
passenger seat 16 to meet the floor. The angled lower portion of the wall
and lower recess apparently facilitate a rear leg of seat 16 extending
rearwardly beyond the forward most vertical portions of the wall 28, to
allow the installation of an increased number of passenger seats. Ex. 1001,
2:67. The angled lower portion of the wall and recess are entirely absent
from the 031 patent. Figures 1 and 2 of the 031 patent illustrate a vertical
wall portion intersecting the floor, and an opening in the vertical wall
portion. Ex. 1001, Fig. 2. Figure 2 of the 063 application does not disclose
certain other aesthetic elements claimed in the 031 patent; for instance the
063 application illustrates sharply angled intersections between the various
planar wall portions forming the upper and lower recesses, whereas the 031
patent claims smoothly rounded intersections between horizontally adjacent
wall portions as well as certain curved wall portions. A side-by-side
comparison of Figure 2 of the 063 application and Figures 1 and 2 of the
031 patent is provided below.

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Above, Figure 2 of the 063 application is shown on the left, in comparison

with Figures 1 and 2 from the 031 patent shown in the middle and on the
right, respectively.
Giving a patent application the benefit of the earlier filing date of
another earlier filed application has a statutory basis and does not rest on the
mere claim or recitation of the applicant. Nor is the mere labeling of an
application a division enough. Racing Strollers, Inc. v. TRI Indus., Inc.,
878 F.2d 1418, 1419 (Fed. Cir. 1989). Comparing Figure 2 in the 063
application with the lavatory design embodied in the 031 patent drawings,
we determine that at least the above discussed aesthetic features of the
claimed design are absent in the 063 application, and therefore, possession
of the aesthetic ornamental appearance of the claimed design illustrated in
the 031 patent is not shown as of the filing date of the 063 application.
Based on the present record, the 031 patent is eligible for post-grant
review because the challenged claim is not entitled to the benefit of the filing
date of the 063 Application. See In re Salmon, 705 F.2d 1579, 1581 (Fed.
Cir. 1983) ([F]or section 120 to apply, the first application must disclose
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the invention claimed in the second application. With respect to the design
patent involved in this case, those provisions require that the stool design
claimed in the second application must be the same design disclosed in the
parent application.) (citations omitted).
We take a moment to address In re Daniels, 144 F.3d at 1452 (Fed.
Cir. 1998), as Patent Owner relies upon Daniels to support its position that
the 063 application, reasonably conveys to the artisan that the inventor
had possession at that time of the later claimed subject matter. Prelim.
Resp. 15 (citing Daniels, 144 F.3d at 1456). In Daniels, the applicant to a
continuation application for a leecher did not include a decorative leaf
pattern on the leecher that was present in the originally filed drawings in the
parent application. 144 F.3d at 145455. The Board of Patent Appeals and
Interferences subsequently denied the applicant benefit of the filing date of
the parent application because the change in the drawings defeats
compliance with the written description requirement of the first paragraph of
35 U.S.C. 112. Id. at 1455.
The Federal Circuit reversed the Boards decision, determining that
the change in Daniels did not alter the design of the claimed article of
manufacture itself, i.e., the leecher, but merely removed surface indicia, leaf
ornamentation, from the leecher. See id. at 1457 (explaining that this was
reasonable because [t]he leaf ornamentation did not obscure the design of
the leecher, all details of which are visible in the drawings of the earlier
application).
In the present case, the difference is not one of simply eliminating
surface indicia, but that visually distinctive elements of the claimed lavatory,

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elements, which contribute significantly to the overall appearance of the

design itself, are not present in the 063 application.
B. Whether Spacewall, the Alleged Commercial Embodiment of the
Claimed Design in the 031 Patent, was Sold or in Public Use
Prior to the Effective Filing Date of the 031 patent
Petitioner asserts that the sole claim of the 031 patent is subject to
post-AIA 35 U.S.C. 102(a)(1) and thus, invalid, because Patent Owners
Spacewall, the alleged commercial embodiment of the claimed design,
was sold and in public use prior to the 031 patents effective filing date of
October 10, 2013. Patent Owner does not substantively address this issue in
its Preliminary Response. For the reasons below, Petitioner has established
that it is more likely than not that the sole claim of the 031 patent is invalid.
1. Spacewall and the Investor Day Presentation
Petitioner asserts that Patent Owner has admitted that Spacewall was
offered for sale, and in fact sold to Boeing, Delta Airlines, and United
Airlines, prior to the earliest effective filing date of October 10, 2013. Pet.
47. By way of example, Petitioner points to a slide-show presentation titled
Investor Day, (Investor Day Presentation), which occurred apparently
on March 12, 2012, and included the following slide.

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The slide, above, titled Boeing 737 Modular Lavatory Systems, includes
an image of a portion of an aircraft lavatory and a profile view of a non-
planar front wall defining a recess into which a portion of a passenger chair
seat back extends. Ex. 1009, 16.
Another slide from the Investor Day Presentation, shown below, is
titled Market Successes in 2011 and touts an $800 million contract with
Boeing for the Spacewall technology lavatory structure.

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The slide, above, describes a sole-source contract with Boeing, apparently

from 2011, relating to Spacewall lavatory structure as well as other awards
from Star Alliance, a network of 28 member airlines. Id. at 9. The
authenticity of the Investor Day Presentation is supported by a B/E
Aerospace news release, dated February 22, 2012, advertising the date and
time, March 12, 2012, 9:00 am, and including a URL link to the live audio
broadcast of the presentation. See Ex. 1023. A little more than a year later,
a further B/E Aerospace news release, dated September 30, 2013,
announced the first delivery by Boeing to Delta Air Lines of a
Boeing Next-Generation 737-900ER (Extended Range) airplane.
The airplane is configured with the B/E Aerospace modular
advanced lavatory system . . . [t]he lavatory incorporates B/Es
patent pending Spacewall technology, which frees up floor space
in the cabin, creating the opportunity to add up to six incremental
passenger seats per airplane.

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Ex. 1018, 1.
2. AIA 35 U.S.C. 102(a)(1)
AIA 35 U.S.C. 102(a)(1) states
A person shall be entitled to a patent unless
the claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available to
the public before the effective filing date of the claimed
invention;
According to the B/E Aerospace Investor Day Presentation, by at least
March 12, 2012, there existed a contract between B/E Aerospace and Boeing
for Spacewall lavatory structures. Ex. 1009, 9. The existence of a contract
between B/E Aerospace and Boeing infers strongly that there was an offer
for sale. See Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361,
1365 (Fed. Cir. 2008) ([A]n attempt to sell is sufficient if it rises to an offer
upon which a contract can be made merely by accepting it.).
The above evidence appears also to be corroborated by a declaration
from Mitchell Freeman, a Corporate Account Executive at B/E Aerosopace.
Ex. 1016 1. Mr. Freemans declaration was submitted during prosecution
of apparently related patent applications and states that [a]fter our
demonstrations of functional mock-ups of the Spacewall system to Boeing
. . . B/E Aerospace became the exclusive supplier for all lavatory structure
for Boeings next-generation 737 aircraft. Id. 56. Whether or not the
Spacewall mock-ups described by Mr. Freeman are the same as the above
Spacewall system image is not clear at this point, but the timing described
by Mr. Freeman, and the filing dates of the related patent applications,
appears generally consistent with the timeline of the Investor Day
Presentation evidence above. On the record before us, we are persuaded that

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Petitioner has presented evidence sufficient for purposes of institution, of a

commercial offer for sale, and potentially a sale, at least to Boeing, of the
Spacewall lavatory design shown in the Boeing 737 Modular Lavatory
Systems slide above.
Having determined on the evidence before us that Spacewall was
subject at least to a commercial offer for sale prior to the effective date, we
must determine whether the invention was also ready for patenting. See
Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). We are persuaded that
this condition of the on-sale bar is satisfied because B/E Aerospace
presented at least an image of Spacewall to investors in the March 12, 2012
Investor Day presentation. And, observing a side-by-side comparison of
the overall appearances of Spacewall, as shown in the image from Investors
Day Presentation, next to Figure 1 of the claimed design, below, we are
persuaded that Spacewall as depicted in the image of Investors Day
Presentation substantially discloses the design claimed in the 031 patent.

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The image on the left, above, from Inventors Day Presentation is a portion
of an aircraft lavatory and a profile view of a non-planar front wall having a
recess into which a portion of a passenger chair seat back is received. Ex.
1009, 16. Figure 1 of the 031 patent, on the right, illustrates a front side
view of an aircraft lavatory with a non-planar front wall having a recess.
Ex. 1001, Written Desc.
We are persuaded on the evidence presented at this point in the
proceeding that Petitioner has shown that it is more likely than not that the
claimed design for a lavatory was the subject of at least an offer for sale, and
potentially a sale, prior to October 10, 2013, the effective filing date of the
031 patent.

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C. Whether the 031 Patent is Indefinite

Petitioner argues that Figures 1 and 2 of the 031 patent are
incongruous. Pet. 5465. We agree, to an extent, with Petitioner that there
are inconsistencies between Figures 1 and 2 of the 031 patent. See Pet. 59.
For example, the length and curvature of certain portions of the profile view
of the upper portion of the forward wall and recess in Figure 1 do not appear
entirely consistent with the perspective view in Figure 2. Id. (citing Ex 1003
64). Also, Figure 2 illustrates lines which do not appear to consistently
converge at a single horizon point as generally expected in a perspective
view. Id. at 61 (citing Ex 1003 68).
Our review of the figures reveals, on the other hand, that the figures
are generally consistent, having many substantial overall visual similarities
depicting corresponding elements of the claimed aircraft interior lavatory. It
is only upon a more scrutinizing assessment and comparison of the figures
that the inconsistencies noted by Petitioner become apparent. Observing the
overall appearance of the design, it may also be that any inconsistencies are
not so ambiguous that the scope of protection sought from the claim cannot
be determined. See MPEP 1504.04 ([I]f the appearance and shape or
configuration of the design for which protection is sought cannot be
determined or understood due to an inadequate visual disclosure, then the
claim, which incorporates the visual disclosure, fails to particularly point out
and distinctly claim the subject matter the inventor(s) regard as their
invention, in violation of the second paragraph of 35 U.S.C. 112(b)).
Petitioner has presented testimony from Mr. Ronald Kemnitzer
alleging that [g]iven that these figures do not convey accurate,
corresponding information between the views, it would be impossible for a

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designer of ordinary skill to accurately reproduce the intended design. Ex.

1003 70. We give some weight, at least initially, to Mr. Kemnitzers
testimony. But we also maintain a certain skepticism as to whether or not
the various drawing discrepancies pointed out in his declaration truly rise to
a level which would inhibit a designer of skill in the art from resolving such
discrepancies so as to reproduce the claimed design. For example, to the
extent Figure 2 shows slightly different curvatures or planes of certain
panels relative to Figure 1, it is well settled that an application to a single
claim may include minor variations on a single basic design. See In re
Klein, 987 F.2d 1569, 1570 n.1 (Fed. Cir. 1993).
Overall, our observation of the claimed design as a whole reveals
competing paths into the copse of design patent indefiniteness. The proper
path cannot reasonably be ascertained at his early stage of the proceeding
without allowing a substantive response from Patent Owner and assessing
additional evidence that may be developed during a trial. Based on the
inaccuracies which we observe between Figures 1 and 2, and the
contradictions between the figures alleged by Mr. Kemnitzer, we determine
that there is a reasonable question whether the drawings, viewed in light of
the specification and prosecution history, inform those skilled in the art
about the scope of the invention with reasonable certainty. Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014); cf. In re Packard,
751 F.3d 1307, 1313 (Fed. Cir. 2014) (claims are required to be cast in
clearas opposed to ambiguous, vague, indefiniteterms. It is the claims
that notify the public of what is within the protections of the patent, and
what is not.). On the evidence before us at this point in the proceeding, we

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are persuaded that Petitioner has shown that it is more likely than not that
the sole claim of the 031 patent is indefinite.
D. Whether the claimed design in the 031 Patent is Purely
Functional
It is well-settled that an article having an ornamental design that is an
aesthetic design choice may perform an inherent function and yet also be
properly the subject of a design patent. See Ethicon Endo-Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015) (Articles of
manufacture necessarily serve a utilitarian purpose, but design patents are
directed to ornamental designs of such articles.). On the other hand, an
article having an ornamental design that is primarily functional rather than
primarily ornamental may not properly be the subject of a design patent.
See 35 U.S.C. 171; High Point Design LLC v. Buyers Direct, Inc., 730
F.3d 1301, 1315 (Fed. Cir. 2013). If a design is dictated by the utilitarian
purpose of the article, it is not primarily ornamental and may be declared
invalid under 35 U.S.C. 171. High Point Design, 730 F.3d at 1315.
The inquiry into whether a claimed design is primarily functional
should begin by assessing the availability of alternative designsan
importantif not dispositive factor in evaluating the legal functionality of a
claimed design. Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d
1312, 132930 (Fed. Cir. 2015). Further, a proper inquiry assesses the
overall appearance of the articlethe claimed design viewed in its
entirety, not the functionality of elements of the claimed design viewed in
isolation. Id. at 1329 (emphasis added).
Here, Petitioner primarily focuses on the utility of the wall shape, for
example as described apparently in Patent Owners other utility patents and
commercial advertising to substantially conform to the back of an aircraft

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passenger seat located immediately forward of the lavatory. Pet. 6670

(citing Ex. 1003 7778; Ex. 1013, 4:2428, 3143; Ex. 1016 11; Ex.
1017, 2). This is not the relevant inquiry. L.A. Gear, Inc. v. Thom McAn
Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993); see also High Point Design,
LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1316 (Fed. Cir. 2013) (reversing
district courts summary judgment of invalidity where the district court
applied the incorrect standard and various catalogs show numerous
alternative slipper and shoe designs that adequately perform the goal of
warming a foot). Petitioner does not sufficiently address the relevance of
the existence and availability of alternative designs, such as that shown in
Figure 2 of the 838 patent, illustrating and describing a wall which
substantially conform[s] to the shape of the exterior aft surface of the
aircraft cabin structure. Ex. 1006, 2:3637. As discussed above, we
determined that the 063 application, which issued as the 838 patent, does
not provide sufficient disclosure to support a claim to priority by the 031
patent. It is undisputed that these different designs accomplish the same or
similar function. Thus, these visually different designs are evidence
indicating that the 031 patents design is primarily ornamental.
IV. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
established that it is more likely than not that it will prevail under AIA 35
U.S.C. 102(a)(1) and 35 U.S.C. 112(b) on its challenges to the sole claim
of the 031 patent as having been the subject of an offer for sale and in
public use and, being indefinite. The Board has not made a final
determination on the patentability of the challenged claim.

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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that pursuant to 35 U.S.C. 324(a), a post-grant review
of the sole claim of the 031 patent is hereby instituted commencing on the
entry date of this Order, and pursuant to 35 U.S.C. 324(d) and 37 C.F.R.
42.4, notice is hereby given of the institution of a trial; and
FURTHER ORDERED that the trial is limited to the following
grounds: (1) the claimed invention was the subject of a commercial offer for
sale and in public use prior to the effective filing date of the 031 patent, and
(2) the sole claim of the 031 patent is indefinite.

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PETITIONER:
John Alemanni
Dean Russell
David Reed
Andrew Rinehart
Michael Morlock
jalemanni@kilpatricktownsend.com
drussell@kilpatricktownsend.com
dreed@kilpatricktownsend.com
arinehart@kilpatricktownsend.com
mmorlock@kilpatricktownsend.com

PATENT OWNER:
Michael R. Fleming
Benjamin Haber
IRELL & MANELLA LLP
mfleming@irell.com
bhaber@irell.com

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