On October 23rd, the Patent Trial and Appeal Board issued a final written decision terminating a post-grant review (PGR) proceeding finding petitioner C&D Zodiac had proven by a preponderance of the evidence that the sole claim of a design patent owned by B/E Aerospace was unpatentable under 35 U.S.C. § 102(a)(1) grounds. The PTAB determined that the claimed design was unpatentable because both possession of the claimed invention wasn’t shown as of the filing date of the patent application and the claimed invention was on sale and in public use prior to the effective filing date.
The patent-at-issue in this PGR proceeding was U.S. Patent No. D764031, titled Aircraft Interior Lavatory, issued to B/E Aerospace in August 2016. The patent asserted priority to April 18, 2011, the filing date of the patent application which resulted in the issue of B/E Aerospace’s U.S. Patent 8590838, same title as the ‘031 design patent. The claimed aircraft lavatory included design elements providing a visual perception of space within the lavatory.
The ‘031 design patent was one of a series of patents-in-suit that B/E Aerospace asserted against French aircraft systems and equipment provider Zodiac Aerospace and various subsidiaries in a patent infringement suit filed in the Eastern District of Texas back in December 2016. In its complaint, B/E Aerospace alleged that aircraft interior components manufactured by Zodiac, including waste systems and lavatories, infringed on the asserted patents which covered B/E Aerospace’s own aircraft lavatory commercialized under the trade name “Spacewall.”
Despite the April 2011 priority date asserted for the ‘031 design patent, the PTAB found in its institution decision that the ‘031 patent wasn’t entitled to the priority date for the patent application resulting in the ‘838 patent because of a lack of written description support for the design claimed in the ‘031 patent. In the context of design patents, the written description requirement for claiming priority to an earlier patent application requires an analysis of the figures attached to the design patent and the application. The PTAB found several differences between the design claimed in the ‘031 patent and the relevant figures from the patent application, including a smooth profile for the upper wall in the ‘031 patent compared with the angular profile found in the patent application as well as differences in how the lower-most vertical wall portion intersects with the floor. In finding that the ‘031 design patent wasn’t entitled to the earlier priority date, the PTAB determined that the design patent was eligible for PGR review as its effective filing date was after March 2013.
The later priority date also helped C&D Zodiac succeed on its argument that the commercial embodiment depicted in the figures of the ‘031 design patent were offered for sale prior to the earliest effective filing date. C&D Zodiac had provided evidence from a slide-show presentation shown at a B/E Aerospace Investor Day event in March 2012 which included slides (see left) depicting the Spacewall technology covered by the ‘031 patent as well as commercial success including an $800 million contract with Boeing signed in 2011.
Having determined that the Spacewall technology was at least offered for sale prior to the effective date, the PTAB then determined that the invention was also ready for patenting at that time, satisfying another condition of the on-sale bar codified in Section 102(a)(1). This determination was based on a comparison of the Investor Day slide-show presentation depicting an image of the Spacewall technology with the figures attached to the ‘031 design patent.
Information collected through Lex Machina shows that, while this was the only PGR proceeding petitioned by C&D Zodiac against a B/E Aerospace patent, C&D Zodiac has challenged each of the B/E Aerospace patents asserted against it in district court at the PTAB. An inter partes review (IPR) challenge of the ‘838 patent resulted in a mixed claim finding knocking out 29 claims from that patent. Four other IPR petitions filed by C&D Zodiac led to two final written decisions that invalided all challenged claims of B/E Aerospace’s patents asserted against C&D Zodiac in district court.