29238135 (P.T.A.B. Nov. 6, 2014)

Dorman Products, Inc.v.Paccar Inc.

Patent Trial and Appeal BoardNov 6, 2014

29238135 (P.T.A.B. Nov. 6, 2014)

Trials@uspto.gov Paper 12 Tel: 571-272-7822 Entered: November 6, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ DORMAN PRODUCTS, INC., Petitioner, v. PACCAR, INC., Patent Owner. _______________ Case IPR2014-00542 Patent D525,731 S _______________ Before JAMES T. MOORE, PHILLIP J. KAUFFMAN, and PHILIP J. HOFFMANN, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 37 C.F.R. § 42.71 Case IPR2014-00542 Patent D525,731 S 2 I. INTRODUCTION Petitioner, Dorman Products, Inc., filed a Petition requesting review of the sole claim of US Patent No. D525,731 S (Ex. 1001, “the ’731 patent”). See Paper 1 (“Pet.”). Patent Owner, PACCAR, Inc., filed a Preliminary Response. Paper 9. The Board denied institution of an inter partes review. Paper 10 (“Decision”). Petitioner filed a Request for Rehearing asking that the Board reconsider its Decision not to institute. Paper 11 (“Req. Reh’g”). We have considered the Request for Rehearing and decline to modify the Decision. II. ANALYSIS Petitioner contends that our Decision is based upon the erroneous conclusion of law that functional elements of a design must be considered part of the “claimed design.” Req. Reh’g 2. According to Petitioner, had our Decision ignored the functional features of the design, we would have instituted inter partes review. Id. at 1–13. We analyze Petitioner’s contentions with regard to the Secondary References and the Primary Reference. A. Secondary References As explained in our Decision, even if Kobayashi were a valid primary reference, the modification proposed by Petitioner in each ground of Case IPR2014-00542 Patent D525,731 S 3 unpatentability1 would not result in the same overall appearance as the claimed design. Dec. 12–13; see also Pet. 13 (acknowledging that the claimed design covers the turn signal indicator). Petitioner does not challenge this determination of our Decision. See Req. Reh’g 1–13. For this reason alone Petitioner’s request is unpersuasive. B. Primary Reference Petitioner contends that the following elements of the claimed headlamp are functional and do not form part of the claimed design: the overall trapezoidal (or cat eye) shape of the headlamp, the curved bezel (Bezel E), and the interior facets and striations. Req. Reh’g 4. To begin, with the possible exception of the facets, Petitioner asserts only that these elements are functional, and does not explain how these elements are “purely functional.”2 See Pet. 12, 15–17, 21, 22, 24–26; see also, e.g., Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293-94 (Fed. Cir. 2010) (factoring out purely functional aspects of a design patent from an obviousness analysis); Egyptian Goddess, Inc., v. Swisa, Inc., 543 F.3d 665, 679, 680 (Fed. Cir. 2008) (en banc) (“other issues that bear on the scope of the claim . . . include . . . distinguishing between those features of the 1 As detailed in our Decision, each of Petitioner’s grounds of unpatentability proposes to modify the primary reference (Kobayashi) to include a turn signal indicator (“Lamp D”) as disclosed by various secondary references. See Dec. 3, 6, 9, 12–13. 2 Petitioner asserts the Patent Owner’s choice of the facet configuration and promoting this feature was “purely functional.” Pet. 31–32. The context seems to be that the choice was purely function, and not the facets themselves. Case IPR2014-00542 Patent D525,731 S 4 claimed design that are ornamental and those that are purely functional”); In re Garbo, 287 F.2d 192, 194 (CCPA 1961) (“the design must have an unobvious appearance distinct from that dictated solely by functional considerations”). For that reason, Petitioner did not demonstrate adequately that these elements should not be included in an obviousness analysis. Even assuming Petitioner demonstrated adequately that the enumerated features should not be considered in an obviousness analysis, for the reasons that follow, Petitioner has not demonstrated that our Decision should be modified. As Petitioner conceded, the design of the ’731 patent covers the positioning of the fish eye headlight (Lamp B), the regular headlight (Lamp A), the indicator light (Lamp C), and the turn signal indicator (Lamp D). Pet. 13. With regard to these features, the claimed headlamp differs from Kobayashi’s headlamp as detailed in our Decision. Dec. 8–12. For example, Kobayashi’s headlamp does not include Lamp D, Petitioner did not address the difference in position and shape of Lamp C, and the full circular shape of Kobayashi’s Lamp A is not visible. Id. Further, the Petition did not address Frame G of the ’731 patent, an element not present in Kobayashi. Dec. 9. Petitioner’s contentions regarding Frame G (Req. Reh’g 11–12) were not included in the Petition and are not considered here. For these reasons, considering the visual impression created by the patented design as a whole, the design characteristics of Kobayashi’s headlamp are not basically the same as the claimed design. See Dec. 7 (regarding the first step of obviousness inquiry). For this additional reason Petitioner’s request is unpersuasive. Case IPR2014-00542 Patent D525,731 S 5 C. Conclusion Consequently, we are not persuaded of an abuse of discretion. III. ORDER Accordingly, it is ORDERED that the Request for Rehearing is denied. FOR PETITIONER: Anthony Volpe Melissa Thompson Volpe and Koenig, P.C. avolpe@vklaw.com mthompson@vklaw.com FOR PATENT OWNER: John D. Denkenberger Brandon C. Stallman Christensen O’Connor Johnson Kindness PLLC denkenberger@cojk.com brandon.stallman@cojk.com bar

Dorman Products, Inc. v. Paccar Inc.