Caterpillar Inc.v.null

Patent Trial and Appeal Board

Jun 14, 2016

29377589 (P.T.A.B. Jun. 14, 2016)

Trials@uspto.gov Paper 7
571-272-7822 Entered: June 14, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CATERPILLAR, INC.,
Petitioner,

v.

MILLER INTERNATIONAL, LTD.,
Patent Owner.
____________

Case IPR2015-00416
Patent D673,982 S
____________

Before HYUN J. JUNG, SCOTT A. DANIELS, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
A. Background
Caterpillar, Inc. (“Petitioner”) filed a Petition to institute an inter
partes review of the sole claim of U.S. Design Patent No. D673,982 S (“the
’982 patent”). Paper 2 (“Pet.”). Miller International Ltd. (“Miller” or
“Patent Owner”) did not file a Preliminary Response. We instituted trial for
the sole claim of the ’982 patent on certain grounds of unpatentability
alleged in the Petition. Paper 4 (“Decision to Institute” or “Inst. Dec.”).
In the Scheduling Order, which sets times for taking action in this
proceeding, we notified the parties that “any arguments for patentability not
raised in the [Patent Owner] response will be deemed waived.” See Paper 5,
4. Additionally, the Board’s Trial Practice Guide states that the Patent
Owner Response “should identify all the involved claims that are believed to
be patentable and state the basis for that belief.” Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
Patent Owner did not file a Patent Owner Response within the time
period set forth in the Scheduling Order. Patent Owner neither sought
authorization to file a Patent Owner Response after the deadline, nor
indicated that it wished to file such a Response or any further papers in this
proceeding. We have before us, therefore, unrebutted argument and
evidence as set forth in the Petition. Notably, there is no appearance by
counsel for Patent Owner in this proceeding.
Because the Patent Owner has not entered an appearance in this
proceeding, the Board conducted a conference call on April 7, 2016, with
counsel for Petitioner in this proceeding and counsel for Patent Owner,
Miller, in Cases IPR2015-00433, IPR2015-00434, and IPR2015-00435.
Paper 6, 2. The utility patents at issue in IPR2015-00433 through -00435 are
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unrelated to the ’982 patent except that the utility patents address generally
similar subject matter to the ’982 patent, and the dispute over those patents
involves the same parties. IPR2015-00433 through -00435 differ from this
proceeding, in that Patent Owner has entered an appearance in those utility
patent proceedings. Id. During the conference call, counsel for both parties
in the utility patent proceedings communicated Miller’s apparent intention
not to participate in this proceeding.1 Id.
In general, the lack of any appearance or communication by Patent
Owner in a proceeding will constitute abandonment of the contest and will
be construed by the Board as a request for adverse judgement under
37 C.F.R. 42.73(b)(4). In this proceeding, however, because no meaningful
communication indicating abandonment of the contest was received until
after all trial due dates had passed, we determine that the appropriate course
of action is to readdress the merits of the Petition.
Thus, although Patent Owner has not entered an appearance or filed
any papers in this proceeding, Petitioner still bears the burden to show, by a
preponderance of the evidence, that the challenged claims are unpatentable.
For the reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that the sole claim of the ’982 patent is
unpatentable.

1 For purposes of communication and notice of this Decision to Miller, we
include as the correspondence addressees in this proceeding, Patent Owner’s
Counsel of record in IPR2015-00433 through -00435 as well as Mr. Justin
Swindells of Nixon Peabody, LLP, Patent Owner’s counsel of record during
prosecution of the application that lead to the issuance of the ’982 patent.
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B. Additional Proceedings
Petitioner states that it is unaware of any other related matter
involving the ’982 patent. Pet. 5.
C. The ’982 Patent
The ’982 patent (Ex. 1001), titled “Operator-Visible Warning Symbol
on a Coupler,” relates to the design of a warning symbol affixed to a coupler
mechanism of an earth moving machine. Ex. 1001, 1 (Figure Description).
Figures 1 and 3 of the ’982 patent, illustrating perspective views of the
warning symbol, are reproduced below.

Figure 1 is a “perspective view of
an operator visible warning
symbol on a coupler.” Id. (Figure
Description).
Figure 3 is “an enlarged perspective
view” of the operator visible warning
symbol on a coupler. Id. (Figure
Description).

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D. The Instituted Grounds of Unpatentability
We instituted this inter partes review on the following specific
grounds.

References Basis
Coupler Manual2 in view of Hub § 103
Coupler Manual in view of Hub and Teo3 § 103

Petitioner supports these challenges with a Declaration of Mr. Alan
Ball, B.I.D., (Ex. 1013) (“Ball Declaration”).
II. CLAIM CONSTRUCTION
A. Legal Standard
In an inter partes review, “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b). With respect 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 679–80; cf. High Point Design LLC v. Buyers
Direct, Inc., 730 F.3d 1301, 1314–15 (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”).

2 Ex. 1005, Caterpillar, Operation and Maintenance Manual: Cast Manual
Pin Grabber Coupler (2007) (“Coupler Manual”).
3 Ex. 1012, WO 02/090144 A1 published Nov. 14, 2002 (“Teo”).
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In our Decision to Institute we determined a construction consistent
with the broadest reasonable construction and followed the applicable
guidance from the Federal Circuit, discussed above, relating to claim
construction for design patent claims. Inst. Dec. 4–5. Accordingly, the
following claim construction applies to this Decision:
Figure 3 Construction

The ornamental design of the operator
visible warning symbol, as illustrated in
Figures 1–7, except that the broken lines
form no part of the claimed design, and the
ornamental design includes an equilateral
triangle with rounded corners and a
horizontal base that is shaped as if projected
onto a laterally extruded “S”-shaped
surface, as shown in the solid lines in Figs.
1–7 of the ’982 patent.

III. ANALYSIS
A. Principles of Law
In a challenge to a design patent based on obviousness under
35 U.S.C. § 103, the ultimate inquiry is “whether the claimed design would
have been obvious to a designer of ordinary skill who designs articles of the
type involved.” Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329
(Fed. Cir. 2012) (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100,
103 (Fed. Cir. 1996)).
The obviousness inquiry consists of two steps. Apple, 678 F.3d at
1329. In the first step, a primary reference (sometimes referred to as a
“Rosen reference”) must be found, “the design characteristics of which are
basically the same as the claimed design.” Id. (quoting In re Rosen, 673
F.2d 388, 391 (CCPA 1982)). This first step is itself a two-part inquiry
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under which “a court must both ‘(1) discern the correct visual impression
created by the patented design as a whole; and (2) determine whether there is
a single reference that creates ‘basically the same’ visual impression.’”
High Point Design, 730 F.3d at 1311–12 (quoting Durling, 101 F.3d at 103).
In the second step, the primary reference may be modified by
secondary references “to create a design that has the same overall visual
appearance as the claimed design.” Id. at 1311. However, the “secondary
references may only be used to modify the primary reference if they are ‘so
related [to the primary reference] that the appearance of certain ornamental
features in one would suggest the application of those features to the other.’”
Durling, 101 F.3d at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed.
Cir. 1996)).
B. Designer of Ordinary Skill
Petitioner asserts that the relevant designer of ordinary skill is
“someone with a background and training in the design of earth-moving
equipment and who is presumed to have knowledge of prior art equipment,
including couplers . . . that includes familiarity with international design
symbols, including the ISO 3864 and ISO 7100.” Pet. 23 (citing Ex. 1013
¶¶ 13–18, 20).
Petitioner provided the Declaration of Mr. Alan Ball in support of its
obviousness contentions. See Pet. 1; Ex. 1013. We find Mr. Ball’s
testimony, as an industrial designer with approximately 30 years of design
experience in a broad range of construction and industrial product fields,
persuasive as to the level of ordinary skill in the art of designing and
labeling products for user interface and safety. Ex. 1013 ¶¶ 5–6. Based on
Mr. Ball’s testimony we determine that a designer of ordinary skill in the art
would have, inter alia, been a designer with “at least five years of
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experience working in the heavy construction industry designing products . .
. familiar with relevant industry standards such as those published by
standards organizations such as the ISO or ANSI and the techniques for
applying a two-dimensional design to a three-dimensional surface.” Id. at ¶
20.
C. Obviousness – Coupler Manual and Hub
Petitioner alleges that “the Coupler Manual is a suitable primary
reference, because it discloses a coupler with a triangular-shaped warning
symbol.” Pet. 44–45. Illustration 1 of the Coupler Manual (Ex. 1005) is
reproduced below.

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Illustration 1 depicts, by exploded view, a triangular warning symbol affixed
on the side of a coupler. The warning symbol disclosed by the Coupler
Manual at reference numeral 1 includes an equilateral triangle with rounded
corners as defined by a black border. The only difference, Petitioner argues,
between the claimed design and the Coupler Manual warning symbol is that
the Coupler Manual warning symbol is affixed to a flat surface, and is thus
basically the same as the claimed design. See Pet. 45. Below, is a side-by-
side comparison of Figure 7 of the ’982 patent with an enlarged view of the
triangular portion of the coupler manual triangle warning symbol.

Above is Figure 7 of the ’982
patent illustrating the claimed
operator visible warning symbol.
Above is the triangular warning
symbol shown in the Coupler
Manual.

We are persuaded by Petitioner’s evidence that the Coupler Manual is
a suitable primary reference because the Coupler Manual warning symbol
gives the same overall visual impression when compared to the claimed
warning symbol design as a whole. Ex. 1013 ¶ 31, and see Durling, 101
F.3d at 103. We are further persuaded that any apparent minor differences
in the designs are of little, if any, significance to the ordinary observer
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because the well-known equilateral triangular warning symbol, shown
below, is an international standard and would have been universally
understood by a person of skill in the art.

Ex. 1008, 10. The General warning sign, above, is illustrated by an
exclamation point within a yellow triangle and black triangular border. The
requirement that the design characteristics of the proposed primary reference
be the same as the claimed design does not imply that the appearance of the
prior art article must be identical to the claimed design. Cf. In re Lamb, 286
F.2d 610, 611 (CCPA 1961) (“[T]he mere fact that there are differences over
the prior art structures is not alone sufficient to justify a holding that the
design is patentable.”).
Based on the evidence presented we determine that the Coupler
Manual equilateral triangle warning symbol is basically the same as the
claimed design and, therefore, a valid primary reference.
Hub discloses a coupler having a curved surface facing an operator
(Ex. 1010, 6), and is combined by Petitioner as a secondary reference with
the Coupler Manual. The Hub coupler is shown, below, with the curved
surface above the open attachment jaw and facing the reader.
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The figure from Hub, above, shows in a perspective view the curved
surface on the portion of the coupler viewable by an operator.
We are persuaded by Petitioner’s evidence that Hub is a suitable
secondary reference because Hub, like the Coupler Manual, also discloses a
coupler for an earthmoving machine. Compare Ex. 1010, 6, with Ex. 1005,
Illustration 1. Petitioner’s reasoning and reliance on Mr. Ball’s testimony
are also persuasive that one of ordinary skill in the art would look to the
curved portion of Hub’s coupler facing the operator “as the reasonable
location for moving the warning symbol disclosed in the Coupler Manual”
because, in this location on the coupler, the symbol would be “readily visible
to the operator of the earth-moving equipment.” Pet. 46–47 (citing Ex. 1013
¶ 31).
For the foregoing reasons, we agree with, and adopt as our own,
Petitioner’s analysis under Durling and the combination of the Coupler
Manual and Hub. Based on that analysis, we conclude that Petitioner has
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demonstrated by a preponderance of the evidence that the sole claim of the
’982 patent is obvious over the Coupler Manual and Hub.
D. Obviousness – Coupler Manual, Hub, and Teo
Petitioner asserts an additional secondary reference, Teo (Ex. 1012),
in combination with the Coupler Manual and Hub, as suggesting affixing a
warning symbol to a curved surface. Pet. 48–50.
Teo discloses that a triangular warning symbol made of a flexible
magnetic material can be applied to a curved surface of a vehicle. Id. at 47
(citing Ex. 1012, 2:29–30). Petitioner asserts that Teo is a valid secondary
reference related to Hub and the Coupler Manual because Teo discloses a
triangle-shaped warning symbol with rounded corners applied to a curved
surface of a vehicle. Id. at 49 (citing In re Borden, 90 F.3d at 1574–75).
We determine that Teo, as it discloses a warning symbol affixed or
supported on a curved vehicle component, is so related to the Coupler
Manual that the appearance of features in Teo would suggest the application
of those features to the Coupler Manual.
Petitioner contends specifically that a designer of ordinary skill in the
art would have accomplished the application of a warning symbol on the
curved surface shown in the Coupler Manual, because,
[i]n particular, Teo discloses a triangle with rounded corners
and an exclamation point shown molded to the curved surface
of a vehicle, and Hub discloses the operating-facing portion of a
coupler with an “S”-shaped surface that matches the curved
shape of the claimed design.

Pet. 49 (citing Ex. 1013 ¶ 32). Our review of Teo is consistent with
Petitioner’s position. Teo states that
[t]he key aspect of the present invention is the combination of
the general magnetic properties of the warning sign so as to make
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it affixable to a ferromagnetic surface, the use of a flexible
magnetic material for the entire warning sign 1 permitting
attachment of the warning sign 1 to a curved surface.
Ex. 1012, 6:10–13.
We are persuaded that Petitioner has identified evidence and analysis
supporting the combination of the Coupler Manual, Hub, and Teo. We are
also persuaded that Petitioner has explained by sufficient reasoning and
evidence, including the testimony of Mr. Ball, that a designer of ordinary
skill would, as described in Teo, apply the warning symbol to a curved
surface such as Hub. Ex. 1013 ¶ 32. Accordingly, we determine that
Petitioner has shown by a preponderance of the evidence that the sole claim
of the ’982 patent would have been obvious over the Coupler Manual, Hub,
and Teo.
For the foregoing reasons, we agree with, and adopt as our own,
Petitioner’s analysis under Durling and the combination of the Coupler
Manual, Hub, and Teo. We further determine that Petitioner has
demonstrated by a preponderance of the evidence that the sole claim of the
’982 patent is obvious over the Coupler Manual, Hub, and Teo.
IV. SUMMARY
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that the sole claim of the
’982 patent is unpatentable under 35 U.S.C. § 103 in view of the
combination of Coupler Manual and Hub, and the combination of Coupler
Manual, Hub, and Teo.
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V. ORDER
For the reasons given, it is
ORDERED that the sole claim of the ’982 patent is held unpatentable;
and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

Mark D. Sweet
Timothy McAnulty
Elizabeth Ferrill
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
mark.sweet@finnegan.com
timothy.mcanulty@finnegan.com
elizabeth.ferrill@finnegan.com

For PATENT OWNER:

John E. Thomas
Harter Secrest & Emery LLP
jthomas@hselaw.com

Justin Swindells
NIXON PEABODY, LLP
300 S. Riverside Plaza, 16th Floor
Chicago, IL 60606-6613