29238136 (P.T.A.B. Nov. 6, 2014)

Dorman Products, Inc.v.Paccar Inc.

Patent Trial and Appeal BoardNov 6, 2014

29238136 (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 IPR2014-00555 Patent D526,429 S _______________ Before JAMES T. MOORE, PHILLIP J. KAUFFMAN, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 37 C.F.R. § 42.71 Case IPR2014-00555 Patent D526,429 S 2 I. INTRODUCTION Petitioner, Dorman Products, Inc., filed a Petition requesting review of the sole claim of US Patent No. D526,429 S (Ex. 1001, “the ’429 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 1–12. We analyze Petitioner’s contentions below with regard to the Primary Reference. A. 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, and the curved bezel. Req. Reh’g 4. To begin, Petitioner alleged only once that the trapezoidal (or cat eye) shape of the headlamp is functional. See Pet. 12. Contrary to Petitioner’s Case IPR2014-00555 Patent D526,429 S 3 remarks in the Request for Rehearing (see Req. Reh’g 4), Petitioner did not submit sufficient evidence or argument to establish that the overall shape is functional. Instead, Petitioner argued that US D498,859 S to Kobayashi (Ex. 1009), US Des. 421,817 to Tucker (Ex. 1011), the Chrysler Sebring Convertible Brochure (Ex. 1013), and US Des. 426,905 to Cook (Ex. 1010) each show a headlight with a trapezoidal or cat eye shape that is basically the same as the claimed design. See Pet. 18, 26–27, 35–36, 43–44. Thus, Petitioner also did not establish that the overall shape of the headlamp is “purely functional,” as is required to remove consideration of the overall shape from the obviousness analysis. See, 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 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 this reason, Petitioner did not demonstrate adequately that the overall shape of the headlamp should not be included in an obviousness analysis. Petitioner similarly did not demonstrate that the curved bezel should be omitted from the obviousness analysis. Although Petitioner argued that the curved bezel is “functional” (see Pet. 12, 20–26, 28–35, 37–43, 46–52), Petitioner did not establish that the curved bezel is “purely functional.” Case IPR2014-00555 Patent D526,429 S 4 B. 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.