Raffel Systems, LLC

Patent Trials and Appeals Board

Jul 1, 2020

PGR2019-00029 (P.T.A.B. Jul. 1, 2020)

Trials@uspto.gov Paper 31
571.272.7822 Date: July 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MAN WAH HOLDINGS LIMITED,
Petitioner,

v.

RAFFEL SYSTEMS, LLC,
Patent Owner.
____________

PGR2019-00029
Patent D821,986 S
____________

Before GRACE K. OBERMANN, CHRISTOPHER G. PAULRAJ, and
RYAN H. FLAX, Administrative Patent Judges.

FLAX, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Challenged Claim Unpatentable
35 U.S.C. § 328(a)

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I. INTRODUCTION
Raffel Systems, LLC (“Patent Owner” or “Raffel”) is the owner of
U.S. Patent No. D821,986 S to Kenneth G. Seidl et al. (Ex. 1001, “the D’986
patent”). Man Wah Holdings Limited (“Petitioner” or “Man Wah”) filed a
Petition requesting post-grant review of the claim of the D’986 patent.
Paper 3 (“Pet.”). We instituted trial on July 10, 2019. Paper 9 (“Institution
Decision”). Patent Owner filed a Response to the Petition. Paper 15 (“PO
Resp.”). Petitioner responded with a Reply (Paper 20 (“Pet. Reply”)), to
which Patent Owner responded with a Sur-reply (Paper 21 (“PO Sur-
reply”)). A hearing was conducted on April 2, 2020, where the parties
presented oral argument. See Paper 30 (“Hr’g Tr.”).
After considering the parties’ arguments and supporting evidence, we
conclude that Petitioner has proved by a preponderance of the evidence that
the claim of the D’986 patent is unpatentable. 35 U.S.C. § 326(e).
II. BACKGROUND
A. REAL PARTIES-IN-INTEREST
Petitioner states that the Real Party-in-Interest is “Man Wah Holdings
Limited.” Pet. 1. Patent Owner states that the Real Party-in-Interest is
“Raffel Systems, LLC.” Paper 4.
B. RELATED MATTERS
Petitioner has disclosed, “[t]he ’986 patent is presently at issue in the
action titled Raffel Systems, LLC v. Man Wah Holdings LTD Inc et al., Case
2:18-cv-01765 (WIED).” Pet. 1. Patent Owner identifies the same related
matter. See Paper 4.
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C. THE D’986 PATENT
The D’986 patent is a design patent and the invention is an
“ornamental design for a switch, as shown and described” in the patent.
Ex. 1001, code (57) (claim). The D’986 patent indicates that it issued July
3, 2018, from US application 29/592,595, which was filed January 31, 2017.
Id. at code (45), (21), (22). No other date for priority is indicated on the face
of the D’986 patent. Id. Petitioner contends that January 31, 2017 is,
therefore, the priority date for the D’986 patent against which prior art and
patentability are measured. Pet. 3. Patent Owner agrees. PO Resp. 2.
As its claimed design (and disclosure), the D’986 patent includes six
(6) drawings. The D’986 patent states:
FIG. 1 is a three-quarter perspective view showing our new
design of a switch;
FIG. 2 is a front elevational view thereof, the rear elevational
view being identical;
FIG. 3 is a left side elevational view thereof,
FIG. 4 is a right side elevational view thereof,
FIG. 5 is a top plan view thereof; and,
FIG. 6 is a bottom plan view thereof.
The broken lines shown in FIGS. 1 through 6 are for the purpose
of illustrating environment, and form no part of the claimed
design.
Ex. 1001, 1 (Description). The D’986 drawings are reproduced below:
The D’986 patent’s Figure 1 is reproduced immediately below.
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Figure 1, above, shows a perspective view of the claimed switch design from
above, looking over one rounded corner. Ex. 1001, Fig. 1, code (57). The
D’986 patent’s Figure 5 is reproduced immediately below.

Figure 5, above, shows a top view of the claimed switch design. Id. at Fig.
5, code (57). The D’986 patent’s Figure 2 is reproduced immediately below.
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Figure 2, above, shows a side view of the claimed switch design, along a
longer edge of the switch. Id. at Fig. 2, code (57). The D’986 patent’s
Figures 3 and 4 are reproduced immediately below.

Figures 3 and 4, above left and right, respectively, each show side views of
the claimed design along shorter edges of the switch; Figure 3 shows the
switch from one end and Figure 4 shows the switch from the opposite end.
Id. at Figs. 3, 4, code (57). The D’986 patent’s Figure 6 is reproduced
immediately below.
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Figure 6, above, shows a bottom view of the claimed switch design. Id. at
Fig. 6, code (57).
Patent Owner concedes that this patented design is embodied in the
component labeled “CTR UR2 08” in Raffel_sample (Ex. 1004; Ex. 1005),
which is discussed infra. Hr’g Tr. 45:14–21.
D. PETITIONER’S ASSERTED GROUNDS FOR UNPATENTABILITY
Petitioner asserts two (2) grounds for unpatentability, one under
35 U.S.C. § 102(a)(1) for anticipation and on-sale bar, and the other
35 U.S.C. § 103 for obviousness, as follows. Pet. 3, 23–32.
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GROUND
CLAIM
CHALLENGED
35 U.S.C. § REFERENCE(S)/BASIS
1 1 102(a)(1)
Anticipation or On-Sale Bar
(as evidenced by
Raffel_sample1)
2 1 103 Kintec Solution,2 Hua-Dali3

In support of these grounds for unpatentability, Petitioner submitted, inter
alia, a First Declaration4 and a Second Declaration5 of Linhua Huang and a
Declaration of Mingshao Zhang.6 Patent Owner relies, inter alia, upon a
Declaration of Richard Weeden7 and a Declaration of Paul Stangl.8

1 Nov. 17, 2015 email from “Ben Song ” to, among
others, “Manwah-Huang Linhua <307429367@qq.com>,” including a PDF
file attachment (Ex. 1004 and Ex. 1005 (English Translation), collectively
“Raffel_sample”).
2 EUIPO Design Registration 001863556-0004 (registered and published
June 6, 2011) (Ex. 1006, “Kintec Solution”).
3 CN Industrial Design Registration 303948579 (published Nov. 30, 2016)
(Ex. 1007, “Hua-Dali”).
4 Declaration of Linhua Huang (Ex. 1010, “First Huang Declaration”).
Ms. Huang authenticates the Raffel_sample email (Exs. 1004 and 1005) and
its attachment as true and correct copies received by her on November 17,
2015. Id. ¶¶ 3–5.
5 Declaration of Linhua Huang in Support of Petitioner’s Reply (Ex. 1013,
“Second Huang Declaration”).
6 Declaration of Mingshao Zhang in Support of Man Wah Holdings
Limited’s Petition for Post Grant Review of U.S. Patent No. D821,986
(Ex. 1011, “Zhang Declaration”).
7 Declaration of Richard Weeden in Support of Patent Owner’s Response
(Ex. 2001, “Weeden Declaration”).
8 Declaration of Paul Stangl in Support of Patent Owner’s Response
(Ex. 2010, “Stangl Declaration”).
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E. RAFFEL_SAMPLE
For the first ground presented in its Petition, Petitioner contends that
the D’986 patent is unpatentable under 35 U.S.C. §102(a)(1), as being
anticipated or subject to the on-sale bar, as evidenced by the Raffel_sample
email. Raffel_sample is an email dated November 17, 2015, indicating that
it was sent by “Ben Song ” to “Manwah-Manager Chen
; Manwah-Huang Linhua
<307429367@qq.com>; [and] Paul Stangl ,”
and copying “Richard Weeden ; [and] Ken Seidl
.” Ex. 1004; Ex. 1005. The email is also copied to
“Richard Weeden ” and “Ken Seidl
” as “Cc” recipients. Id. Exhibit 1004 is the original
email and is written primarily in Chinese characters. Ex. 1004. Exhibit
1005 is an English translation of Exhibit 1004. The parties agree that
Exhibit 1005 is an accurate translation. Hr’g Tr. 6:9–12, 45:4–13.
The Raffel_sample email included a PDF attachment entitled “Power
Recline and Headrest by Paul 11.16.15.pdf.” Ex. 1004; Ex. 1005. Herein,
we refer to the Raffel_sample’s email portion as “Raffel_sample email” and
its attachment portion as “Raffel_sample attachment,” and will primarily
discuss the English translation. The body of the Raffel_sample email states:
Dear Manager Huang, Mr. Chen,
This is Ben from Xiamen Raffel, Mr. Song.
I want to express my gratitude for the opportunity to visit with
Manwah and the warm reception we received. I invite you to
come visit Xiamen when you have the time, and I look forward
to having the honor of hosting you here.
Attached you will find an offer for exclusive pricing on the CTR
Series that Manwah asked about during our American leaders’
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visit to your company yesterday afternoon. The pricing includes
shipping fees. Please take a look at your convenience.
attached pricing for some of the 4 button controls (with
and without USB) and for the CTR UR1 04 (two button with
USB).
Also, this pricing is delivered to Manwah (we pay the
freight charges to Manwah).
Regarding the comment yesterday about the central positioning
of the USB port, this symmetry allows for the switch to be used
on either side of the sofa and eliminates the need for two different
switches.
This makes this switch symmetric so that it can be used on
either side of a sofa without having to have two different
switches.
I look forward to receiving your feedback. Should you have any
needs or questions, please do not hesitate to call me. We are
looking forward to the opportunity of taking our partnership to
the next level. Thank you!
Ex. 1005. There is no dispute that the email, with its attachment, was sent
by Patent Owner’s representative to Petitioner’s representatives on
November 17, 2015. Hr’g Tr. 6:14–19; PO Resp. 10, 14–17 (discussing the
Song email of Raffel_sample, but not contesting its authenticity).9
The Raffel_sample attachment includes five (5) images of “ManWah
– Power Recline and Headrest Controls” with respective accompanying
information relating to the “item,” “Raffel P/N” (understood to mean
product number), “Price” understood to be in Chinese Yuan (RMB)
currency, “VAT (17%),” “RMB & VAT,” “Min Qty” understood to mean

9 The signature of the email refers to “Ben Stiller,” but there appears to be
no issue or dispute about who sent the email on behalf of Patent Owner.
Ex. 1005.
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minimum quantity for purchase, and “Total Price.” Ex. 1004. We note,
Patent Owner has labeled these products “ManWah,” using Petitioner’s
name to identify the products. Id. Like the body of the email, the
Raffel_sample attachment indicates its listed prices are “** Delivered
Pricing**.” Id. The second-listed item in the Raffel_sample attachment is
reproduced below:

Ex. 1004 (annotated to show headings and discussed item). The listing
reproduced above has an image of a switch plate, with four domed, round
buttons arranged in a regular, rectangular pattern and a fifth, smaller,
cylindrical, domed button in the center of the four other buttons. Id. This
arrangement of buttons is centered along a long edge of the switch plate and
off-set along its shorter edges. Id. The switch plate is rectangular and has
rounded corners and rounded, beveled edges. Id. There are two small,
through-holes, each centered along the short end of the rectangular switch
plate. Id. There is also a rectangular opening in the switch plate, centered
thereon along a long edge of the plate with the five above-discussed buttons;
the opening appears to house a USB port. Id. The image also shows a base
* * *
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portion below the switch plate’s surface and what appears to be an electrical
cord extending therefrom. Id.
The Raffel_sample attachment listing reproduced above indicates that
the product of the image is called “Rectangular 5-Button Power Recline and
Headrest with USB and Home Button” and indicates it is “Available in black
or silver finish.” Ex. 1004 (“Item” description). This listing further
indicates that the Raffel product number for this item is “CTR UR2 08,” that
its price is “57.49,” that its VAT is “9.77,” that the sum of these cost is
“67.26,” that the minimum quantity (for purchase) is “1,” and that the total
price is “67.26.” Id.
The Raffel_sample attachment concludes with the following
statements:
All sales are subject to Raffel System’s (i) standard terms and
conditions of sale and (ii) warranty.
These documents are available at www.raffel.com.
*NOTE: Small quantities of all items are available on demand.
If large quantities are needed, there may be as much as a 10 week
lead time for production. Quantities and lead times vary by item;
detailed information is available upon request.
Changes to product specifications will result in price
modifications.
Id.
F. KINTEC SOLUTION
Kintec Solution is a European Union Intellectual Property Office
“RCD file information” for design number “001863556-0004.” Ex. 1006, 1.
The exhibit itself indicates it is “Man Wah Exhibit 1005,” but we understand
this is an error; the exhibit is filed in this proceeding as Exhibit 1006.
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Kintec Solution indicates an RCD application was “received on May
13, 2011” and was “Registered and fully published” on June 6, 2011. Id. at
1, 2. Kintec Solution includes six (6) photograph images, which are
reproduced below:

Ex. 1006, 1–2. The six figures above show a switch device from various
perspectives, including from each side, from directly above, and from a
perspective view above one longer side with the device slightly rotated.
This last-described photograph image is reproduced again below, enlarged:
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Id. at 1. The image above shows a switch having a rectangular plate with a
brushed-aluminum or stainless steel appearance and rounded corners. Id.
The plate has straight-edged sides and four oval-shaped buttons in oval
openings in the plate, arranged in a regular rectangular configuration in the
center of the plate. Id. Each button appears to have a substantially flat, but
possibly slightly curved surface. Id. Each opening has a beveled lip
protruding from the top of the surface of the plate, where each button
extends slightly above these edges. Id. In the center of the rectangular
configuration of these four buttons is a circular component having a circular
opening defined by a circular lip. Id. The image also shows that the switch
has a black base portion below its plate and what appears to be an electrical
cord extending from the base. Id.
G. HUA-DALI
Hua-Dali is a Chinese design patent having registration number
303948579, indicated as filed on May 11, 2016, and as registered and
published on November 30, 2016. Ex. 1007, 3–4. Hua-Dali states:
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1. The title of the appearance design: Four-way button switch.
2, Intended use of the appearance design: This product of the
appearance design is used for electrical equipment switch. 3, The
key points of the appearance design: The illustrated shape. 4,
Drawings or photographs to embody the key points of the
appearance design: Stereo Fig. 1.
Id. at 4.
Hua-Dali includes eight (8), unlabeled drawings, which are
reproduced below:

Id. at 1–3. The eight figures above show a switch device from each side,
from the top and bottom, from a perspective view from above one corner of
the switch, and from a perspective view from below one corner of the
switch. Id.
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The switch design has an oblong cover plate with a series of beveled
edges and bowed-out sides. Id. In the center of the plate is a large, convex
circular button-like component having four triangles pointing outwardly
toward each side of the switch, a small central circle, and a circular border.
Id. To one side of the circle and nearer to one shorter side of the plate is a
rectangular opening, which runs parallel to that shorter side of the plate. Id.
To the opposite side of the circle from the rectangular opening is a small
circle (about the same size as the circle in the center of the circular button).
Id. The switch has a base below its plate. Id.
III. DISCUSSION
A. ORDINARY LEVEL OF SKILL IN THE ART
Petitioner contends “[a] Designer Having Ordinary Skill In The Art
(DHOSITA) would generally have had either (i) a degree in Industrial
Engineering or Mechanical Engineering [including] product design courses
or (ii) two years of work experience creating industrial designs.” Pet. 16
(citing Zhang Declaration, Ex. 1011 ¶ 20).
Patent Owner asserts
The appropriate Designer Having Ordinary Skill In The
Art (“DHOSITA”) here is “a designer of furniture or furniture
components (including electronic switches for use in powered
motion furniture), one who either (i) earned a degree in Industrial
Engineering or Mechanical Engineering, or (ii) has at several
years of relevant experience in such designs.
PO Resp. 4. Patent Owner argues that Petitioner’s proposed definition of the
skilled designer is “overbroad and contrary to established case law because it
does not include any reference to the type of article being designed.” Id. at
5.
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Petitioner’s definition of the designer’s level of ordinary skill in the
art is supported by the Zhang Declaration. Ex. 1011 ¶ 20. Patent Owner
fails to cite any support in the record for its proposed definition. Although
we agree that obviousness of a design patent must be assessed from the
perspective of “a designer of ordinary skill who designs articles of the type
involved,” we are not persuaded that the designer must have specific
experience in designing furniture or furniture components (including
electronic switches for use in powered motion furniture). See Durling v.
Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). Therefore, we
accept and use Petitioner’s above-quoted definition of the skilled designer.
However, we note that our ultimate decision here would not be affected
regardless of which party’s definition we use.
B. CLAIM CONSTRUCTION
Based on the filing date of the Petition (Jan. 1, 2019), the Board
interprets claim terms in a post-grant review (“PGR”) using the same claim
construction standard that is used to construe claims in a civil action in
federal district court. See Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
37 C.F.R. § 42.100(b) (2019)). However, the claim of the D’986 patent does
not require express construction for the purposes of this decision. See, e.g.,
PO Resp. 5. On that point, we observe that Figures 1–6 of the D’986 patent
(Ex. 1001) reflect the scope of the patented design. See Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (“[A] design is better
represented by an illustration ‘than it could be by any description and a
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description would probably not be intelligible without the illustration.’”
(quoting Dobson v. Dornan, 118 U.S. 10, 14 (1886)) (en banc).
To the extent any explanation of that scope is necessary to this
decision, we provide it below in our analysis of the asserted challenge.
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy’”
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999)).
C. APPLICABLE LEGAL STANDARDS FOR UNPATENTABILITY
The Leahy–Smith America Invents Act (AIA) bars a person from
receiving a patent on an invention that was “in public use, on sale, or
otherwise available to the public before the effective filing date of the
claimed invention.” 35 U.S.C. § 102(a)(1).
When considering whether a claimed design is anticipated over a prior
art disclosure the factual inquiry is the same as in utility patent applications,
that is, the reference “must be identical in all material respects,” or put
another way, the claimed design and the prior art design must be
substantially the same. Hupp v. Siroflex of America Inc., 122 F.3d 1456,
1461 (Fed. Cir. 1997); Door-Master Corp. v. Yorktowne, Inc., 256 F.3d
1308, 1313 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511,
528 (1871)). A printed publication can anticipate a patent’s claim and our
reviewing court has interpreted Section 102
in light of its purpose “to prevent withdrawal by an inventor . . .
of that which was already in the possession of the public.”
Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)
(alteration in original) (quoting In re Wyer, 655 F.2d 221, 226
(CCPA 1981)). “Because there are many ways in which a
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reference may be disseminated to the interested public, ‘public
accessibility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’ . . . .” In
re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference is
considered publicly accessible “upon a satisfactory showing that
such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily
skilled in the subject matter or art, exercising reasonable
diligence, can locate it.” Wyer, 655 F.2d at 226. “If accessibility
is proved, there is no requirement to show that particular
members of the public actually received the information.”
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569
(Fed. Cir. 1988).
Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355–56 (Fed.
Cir. 2018). Public accessibility to online material is sufficient for such
material to be a “printed publication.” Id. at 1356–60.
The test for anticipation of a design claim is the “ordinary observer
test.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240
(Fed. Cir. 2009). Two designs are substantially the same under the ordinary
observer test if, in the eye of an ordinary observer, giving such attention as a
purchaser usually gives and being familiar with prior art designs, the
resemblance is such as to deceive such an observer, inducing her to purchase
one supposing it to be the other. Gorham, 81 US 511; Richardson v. Stanley
Works, 597 F.3d 1295 (Fed. Cir. 2010). The “ordinary observer test requires
consideration of the design as a whole.” See Int’l Seaway, 589 F.3d at 1243;
Egyptian Goddess, 543 F.3d at 677.
The “on-sale” bar under Section 102 applies to design patents.
Continental Plastic Containers v. Owens Brockway Plastic Products, Inc.,
141 F.3d 1073, 1077 (Fed. Cir. 1998). The Supreme Court has held that
the pre-AIA on-sale bar applies “when two conditions are
satisfied” more than a year before an inventor files a patent
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application. Pfaff [v. Wells Electronics, Inc.], 525 U.S. [55], at
67 . . . [(1998)]. “First, the product must be the subject of a
commercial offer for sale.” Ibid. “Second, the invention must
be ready for patenting,” which we explained could be shown by
proof of “reduction to practice” or “drawings or other
descriptions of the invention that were sufficiently specific to
enable a person skilled in the art to practice the invention.” Id.,
at 67–68 . . . .
Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 628, 633
(2019). The AIA has done away with the statutory language requiring that
the offer for sale be in the United States, but, otherwise, the AIA did not
alter the meaning of the “on sale” bar from pre-AIA law. Id. “[A]
commercial sale [triggering the on-sale bar] is one that bears the general
hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial
Code,” which states that “[a] ‘sale’ consists in the passing of title [i.e.,
ownership,] from the seller to the buyer for a price.” Medicines Co. v.
Hospira, Inc., 827 F.3d 1363, 1365 (Fed. Cir. 2016); U.C.C. § 2-106 (AM.
LAW INST. & UNIF. LAW COMM’N 2012).
Turning to obviousness, “[i]n determining the patentability of a
design, it is the overall appearance, the visual effect as a whole of the design,
which must be taken into consideration.” See In re Rosen, 673 F.2d 388,
390 (CCPA 1982). The standard is whether the design would have been
obvious to a designer of ordinary skill who designs articles of the type
involved, and it is from this “designer of ordinary skill” perspective, as
opposed to anticipation’s ordinary observer, from which obviousness is
determined. See In re Nalbandian, 661 F.2d 1214, 1217 (CCPA 1981).
To make out a successful obviousness challenge, one must identify “a
reference, a something in existence, the design characteristics of which are
basically the same as the claimed design . . . . Such a reference is necessary
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whether the holding is based on the basic reference alone or on the basic
reference in view of modifications suggested by secondary references.”
Rosen, 673 F.2d at 391. Accordingly, “the first step in an obviousness
analysis for a design patent requires a search of the prior art for a primary
reference,” which requires the tribunal “to: (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.” Durling, 101 F.3d at 103. Obviousness may be concluded if a
designer of ordinary skill would have been motivated to modify such a
primary reference by modifying, adding, or deleting features thereof in view
of a pertinent secondary reference.
In order for secondary references to be considered in an obviousness
analysis, “there must be some suggestion . . . to modify the basic design with
features from the secondary references.” See In re Borden, 90 F.3d 1570,
1574 (Fed. Cir. 1996). The long-standing test for properly combining
references has been “whether they are so related that the appearance of
certain ornamental features in one would suggest the application of those
features to the other.” See In re Glavas, 230 F.2d 447, 450 (CCPA 1956).
With these standards in mind, we address Petitioner’s challenges
below.
D. THE CLAIM IS UNPATENTABLE UNDER THE ON-SALE BAR OF
35 U.S.C. § 102(a)(1)10
Petitioner relies upon, for its first ground for unpatentability, the
“[c]ertified Raffel’s on sale product description for a power recline and

10 Although we noted in our Institution Decision that it was somewhat
unclear whether Petitioner intended for its first ground “to be premised upon
classical anticipation over a prior art publication, or upon the on-sale bar, or
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headrest control. (‘Raffel_sample’).” Pet. 2. Petitioner asserts that
“Raffel_sample qualifies as prior art because it was on sale to the public
before the effective filing date of January 31, 2017 for the ’986 patent.” Id.
at 8 (citing Ex. 1004; Ex. 1005; Ex. 1010.). Petitioner further asserts that
“[o]n November 17, 2015, Raffel’s wholly owned subsidiary Xiamen Raffel
communicated an offer via email to sell products to Man Wah. See
Ex. 1004. As stated in the November 17, 2015 email, a document is
attached to the email. Id. In the attached document of the November 17,
2015 email, Raffel_sample is included[ ]. See Ex. 1010.” Id.
Regarding the similarities between the Raffel_sample and the patented
design, Petitioner asserts:
Raffel_sample anticipates the ornamental designed [sic] claimed
in the ’986 patent because it discloses the each and every element
of the design claimed in the ’986 patent including: (a) a four-
sided surface with four corners rounded; (b) four rounded
buttons; (c) a rounded central component in the middle of the
four rounded buttons; and (d) a rectangular hole away from the
four-button group. Demonstratives showing where elements (a),
(b), (c) and (d) are located in both Raffel_sample and in the ’986
patent are provided in the sections below.
Id. at 23 (citing Ex. 1011 ¶ 45). Petitioner provides the following side-by-
side comparison between Figure 1 of the D’986 patent and an image of a
product reproduced from the PDF attachment of “Raffel_sample”:

upon both” (Inst. Dec. 15), we focus on the on-sale bar with respect to this
ground as it is dispositive for our unpatentability determination.
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Id. at 24. The image above-left shows Figure 1 from the D’986 patent and
the image above-right shows a product from the PDF attachment to the Song
email, which the PDF attachment identifies as “Rectangular 5-Button Power
Recline and Headrest with USB and Home Button” and Raffel P/N (product
number) “CTR UR2 08.” Ex. 1001, Fig. 1; Ex. 1004 (attachment).
Regarding the above side-by-side image comparison, Petitioner states, “[a]s
shown above, each and every element of the design claimed in [D]’986
patent is present in Raffel_sample.” Pet. 24; Ex. 1011, ¶ 45.
Patent Owner does not contest the authenticity of the Raffel_sample
email or attachment. See generally PO Resp.; PO Sur-reply. Patent Owner
concedes that this product set forth in Raffel_sample attachment and
discussed in Raffel_sample email embodies the patented design of the D’986
patent. Hr’g Tr. 45:14–21.
In discussing the Raffel_sample, Petitioner’s witness, Mingshao
Zhang, states:
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It is my understanding that, on November 17, 2015,
Raffel’s wholly owned subsidiary Xiamen Raffel communicated
an offer via email to sell products to Man Wah. As stated in the
November 17, 2015 email, a document is attached to the email.
In the attached document of the November 17, 2015 email,
Raffel_sample [(CTR UR2 08)] is included. It is stated in the
attached document that “[t]hese documents are available on
www.raffel.com.”
Ex. 1011 ¶ 25 (emphasis added). Mr. Zhang goes on to state:
It is my understanding and as shown above, Raffel offers
to sell Man Wah the highlighted Raffel_sample product [(CTR
UR2 08)]. The offer includes the product description, price and
taxes. Additionally, it is stated in the attached document that
“[t]hese documents are available on www.raffel.com.” No
passwords and/or special links are provided in the attached
document for accessing www.raffel.com, thus, in my opinion,
www.raffel.com can be publicly accessible. Therefore,
Raffel_sample [(CTR UR2 08)] is on sale to the public at least
on November 17, 2015, which is fourteen (14) months before
January 31, 2017 for the ’986 patent.
Ex. 1011 ¶ 26 (emphasis added).
Mr. Zhang’s statements regarding the product shown in
Raffel_sample being on sale are further supported by the testimony of
Petitioner’s witness, Linhua Huang. See Ex. 1013 (“Second Huang
Declaration”). Ms. Huang states that she has “work[ed] in Man Wah’s
purchasing department since September, 2014” and “was promoted to be a
manager in October 2015 and [ ] became deputy director of the purchasing
department in April 2019.” Ex. 1013 ¶ 1. Ms. Huang states that Raffel
Systems (Patent Owner) is a parts supplier under her management, including
“the product at issue in this proceeding.” Id. ¶ 2. Ms. Huang further states:
On November 17, 2015, I received an email from Ben
Song (bsong@raffel.com) offering certain Raffel CTR series
switches for sale at particular prices (the “Song email”).
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Attached to the Song email was a document titled “Man Wah-
Power Recline and Headrest Controls,” which was dated
November 16, 2015. Among the switch designs listed was a
switch entitled “Rectangular 5-Button Power Recline and
Headrest with USB and Home Button.” My understanding is that
this switch was listed as being for sale at the quoted price.
The Song email was comparable to other supplier emails
that I have received in my position as manager of Man Wah’s
purchasing department including from Raffel.
Id. ¶¶ 3–4. Ms. Huang further states:
Accordingly, upon receiving an email such as the Song email, it
would be my full expectation that Man Wah would have been
able to order at least a small number of the products being offered
for commercial evaluation according to the offered prices and
terms, and that Raffel was also offering to supply the listed
products at the quoted prices.
Id. ¶ 4.
Patent Owner argues the Raffel_sample email and attachment was not
an offer for sale for the product embodying the patented design. PO Resp.
10. Patent Owner takes the position that the Raffel_sample email constitutes
only an offer for exclusive pricing for the products listed in the
Raffel_sample attachment. Id. at 14. As already noted, Patent Owner does
not dispute the content of the Raffel_sample email and attachment or its
authenticity. Rather, it is Patent Owner’s position that the email must be
contextually interpreted to be merely an initial maneuver in “preliminary
negotiations” for a “Supply Agreement” between the parties, as understood
to be customary practice in the furniture industry commercial community.
Id. at 14–17. More specifically, it is Patent Owner’s position that the
Raffel_sample (Ex. 1004; Ex. 1005) email and attachment constituted, at
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most, an invitation for an offer because “the only legal offer comes via
purchase order from Man Wah.” Id. at 15.
Patent Owner submits and cites the Stangl Declaration as supporting
its position. Id. (citing Ex. 2010 ¶¶ 12–19). Mr. Stangl states that he is the
Vice Chairman of Raffel and has been with the company for 11 years (as of
his declaration). Ex. 2010 ¶ 1. In relevant part, Mr. Stangl takes the
position that
The Song e-mail and attached Raffel_sample publication do not
evidence a commercial offer to sell in the furniture industry.
Instead, as described below, the email and attachment are the first
step in a discussion that might or might not lead to an offer, not
an offer to sell by Raffel, but rather an offer to purchase by a
manufacturer such as Man Wah.
Id. ¶ 12. Mr. Stangl states that the custom in the furniture industry is that
component suppliers and furniture manufacturers (Raffel and Man Wah,
respectfully) communicate and negotiate with one another before any formal
offer to purchase by the manufacturer, which occurs via a purchase order,
and which can be accepted or rejected by the supplier. Id. ¶ 13. Mr. Stangl
states that the Raffel_sample email and attachment was merely a part of
negotiations that culminated in a Supply Agreement, which then dictated the
buying and selling between the parties. Id. ¶ 14 (citing Exs. 2002–2003 (a
Supply Agreement contract and an English Translation thereof)).
Having considered Petitioner’s and Patent Owner’s contentions and
evidence, we find that Petitioner’s evidence supports a finding that on
November 17, 2015, i.e., more than a year prior to January 31, 2017, there
was a concrete offer for the sale of the product shown in the Raffel_sample
attachment, called “Rectangular 5-Button Power Recline and Headrest with
USB and Home Button CTR UR2 08,” which, as discussed above and
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shown once more below (D’986 patent Fig. 1 and CTR UR2 08 of Ex. 1004
are reproduced below), has a design identical to that claimed in the D’986
patent. See Pet. 8; Ex. 1011 ¶¶ 26–28, 45 (Mr. Zhang describing the product
for sale in Raffel_sample as that of the design claimed in the D’986 patent).

Ex. 1001, Fig. 1; Ex. 1004 (attachment). The D’986 patent’s Figure 1 and
Raffel_sample figure, reproduced above, have been discussed above herein.
It is readily discernable, and Patent Owner has conceded (Hr’g Tr.
45:14–21 (PANEL: Regarding “Raffel Part Number CTR 19 UR2 08,
you’re not, you’re also not contesting that that embodies the patented design
are you?” PATENT OWNER: “No we’re not.”)), that the Raffel_sample
has a design identical to that claimed in the D’986 patent. We conclude that
an ordinary observer and a designer having ordinary skill in the art would
have found these two designs to be identical and, therefore, that the product
identified in the Raffel_sample as CTR UR2 08 was the patented design of
the D’986 patent.
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There is no dispute that the Raffel_sample email was sent by Patent
Owner to Petitioner on November 17, 2015, which is more than one year
prior to the D’986 patent’s filing date of January 31, 2017. Ex. 1004;
Ex. 1005; Ex. 1001, code (22); see generally PO Resp.; Ex. 2001 (Weeden
Declaration); Ex. 2010 (Stangl Declaration) (none of which contest the
authenticity of the Raffel_sample email and attachment or the dates
indicated thereon). Ms. Huang confirms that the Raffel_sample email and
attachment was received by her, from Ben Song of Raffel, on November 17,
2015. Ex. 1010 ¶ 3; Ex. 1013 ¶ 3.
The Federal Circuit, in Hamilton Beach Brands, Inc. v. Sunbeam
Products, Inc., explained the application of the on-sale bar, under Supreme
Court and the Federal Circuit’s own precedent, as follows:
The on-sale bar applies when two conditions are satisfied before
the critical date: (1) the claimed invention must be the subject of
a commercial offer for sale; and (2) the invention must be ready
for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 119
S.Ct. 304, 142 L.Ed.2d 261 (1998). An actual sale is not required
for the activity to be an invalidating commercial offer for sale.
Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361,
1365 (Fed.Cir.2008). An attempt to sell is sufficient so long as
it is “sufficiently definite that another party could make a binding
contract by simple acceptance.” Id. (citing Netscape Commc’ns
Corp. v. Konrad, 295 F.3d 1315, 1323 (Fed.Cir.2002)). “In
determining such definiteness, we review the language of the
proposal in accordance with the principles of general contract
law.” Id.
Hamilton Beach, 726 F.3d 1370, 1374–75 (Fed. Cir. 2013). Here, there is
no dispute that the invention, i.e., the claimed design, was ready for
patenting and that it is embodied in the Raffel_sample (Ex. 1004). Thus, we
concern our analysis with whether the Raffel_sample email and attachment
constituted a commercial offer for sale. See, e.g., Merck & Cie v. Watson
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Labs., 822 F.3d 1347, 1351 (Fed. Cir. 2016) (“because Merck does not
challenge the district court's determination that ‘MTHF was . . . ready for
patenting by September 1998,’ . . . our focus is on whether there was an
invalidating commercial offer to sell the product prior to the critical date”).
In Hamilton Beach, the patent owner issued a purchase order to a
supplier, which was directed to the patented invention, listed a shipping
address, a billing address, and a quantity of units. Hamilton Beach, 726 F.3d
at 1375. The supplier confirmed receipt of and responded to this order via
email with an indication that it would begin production of the units upon
receiving a release from the patent owner. Id. The evidence indicated that
this was typically the way such transactions were handled in the industry.
Id. at 1376. The Federal Circuit held that the moment the supplier
responded that it would produce the products for the patent owner if the
patent owner responded with a release, a commercial offer for sale was
made––an offer for the invention that could be accepted was extended. Id. at
1377. The Federal Circuit found that other surrounding circumstances, such
as the requirement for a “release” before production would begin and a
separate “corporate purchase agreement” between the parties requiring
“certified review and approval” of final products by the patent owner, were
not determinative of whether there was an offer for sale. Id. The Federal
Circuit made very clear that an offer for sale foreclosing patentability need
not amount to a contract, but only requires an offer that could be accepted.
Id.
In Merck, the Federal Circuit held that where language of an alleged
offer for sale is unambiguous, it is not overruled by subsequent testimony
from witnesses as to surrounding circumstances regarding the seller’s intent,
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or that a sale would not have actually been completed. Merck, 822 F.3d at
1354. In Merck, after some back-and-forth interactions between the parties,
a “not . . . unsolicited” communication (a fax) was provided by the patent
owner to the would-be-purchaser, which included an identification of the
product, an amount, a price, and information on delivery and payment, with
no qualifications by the patent owner. Id. at 1349–52. The Federal Circuit
held that this, on its face, qualified as a commercial offer for sale, rendering
the patent-at-issue invalid under the on-sale bar. Id. at 1351, 1355.
The circumstances here are similar to and as clear as, if not more-so,
those of Hamilton Beach and Merck. The Raffel_sample unambiguously
states, “[a]ttached you will find an offer for exclusive pricing on the CTR
Series that Manwah asked about during our American leaders’ visit to your
company yesterday afternoon.” Ex. 1005 (emphasis added). The “exclusive
pricing” expressly offered did not exist as merely a hypothetical, but rather,
prices were quoted for the purchase of the specifically listed goods. Ex.
1004. Furthermore, the Raffel_sample email and attachment: (1) identifies
the patented product––“CTR UR2 08”; (2) is a not-unsolicited offer––
“Attached you will find an offer for exclusive pricing on the CTR Series that
Manwah asked about during our American Leader’s visit to your company
yesterday afternoon.”; (3) includes a set price––“67.26” RMB per unit;
(4) indicates the price included costs for the product be “delivered to
Manwah”; and (5) also identifies the quantity of product available for
purchase––“Min Qty” was “1.” Ex. 1004; Ex. 1005. In view of these terms,
all that was required for Man Wah to complete the sale would have been for
it to order a switch under these “exclusive” terms for such “ManWah”
products.
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Thus, we find that the Raffel_sample email and attachment constitute
a concrete offer by Patent Owner to sell the product identified as “CTR UR2
08,” i.e., the patented design of the D’986 patent, to Petitioner, more than a
year before the effective filing date of the claimed invention. See Group
One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001)
(“[A] commercial offer for sale” is “one which the other party could make
into a binding contract by simple acceptance (assuming consideration).”).
We are not persuaded by Patent Owner’s arguments or evidence. The
above-discussed offer for sale applies to any amount of products with the
patented design, but at a minimum just one.
Patent Owner proffers as evidence a Supply Agreement between Man
Wah Furniture Manufacturing Huizhou Co., Ltd. and Xiamen Raffel
Electronic Trading Co., Ltd. for the period January 1, 2016 to December 31,
2016. Ex. 2003. On its face, this Supply Agreement contemplates the
establishment of “a strategic business partnership” and purchases “equal to
or greater than RMB 1 million,” at “the most favorable price” for Petitioner.
Id. at 1, 3. As such, the Supply Agreement appears wholly unrelated to the
terms and conditions contemplated in the Raffel_sample email and
attachment, which refer to the purchase of one unit by Petitioner for a price
less than 70 RMB, shipped and delivered. The “Supply Agreement,” its
terms, and any negotiations relating thereto, does not change the fact that the
Raffel_sample email itself constituted an offer for sale. Regardless of what
might be specifically included as part of a later-formed Supply Agreement,
or whether such Supply Agreements were standard practice for interactions
and relationships between parties in the furniture industry, it is clear by the
terms of the Raffel_sample email that Petitioner could have purchased at
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least a single unit of the CTR UR2 08 product at the price indicated in the
November 17, 2015 email. Ex. 1005. Beyond this Supply Agreement,
Patent Owner does not point to any evidence as to the “standard practice in
the furniture industry.” Ex. 2010 ¶¶ 18–19; Hr’g Tr. 34:21–35:22
(acknowledging that Patent Owner’s only evidence of how furniture dealers
allegedly conduct offers for sale is the Stangl Declaration testimony, which
we find conclusory and, therefore, unpersuasive).
For the reasons above, we find Petitioner has proven by a
preponderance of the evidence that the claim challenged in the Petition is
unpatentable under 35 U.S.C. § 102 under the on-sale bar.
E. PETITIONER HAS NOT PROVEN THAT THE ATTACHMENT TO
RAFFEL_SAMPLE IS PUBLISHED PRIOR ART
Petitioner also separately asserts that Raffel_sample is an anticipating
prior art publication because it is stated in the attached document that
“[t]hese documents are available on www.raffel.com,” and no passwords
and/or special links were provided in the Raffel_sample attachment
document for accessing www.raffel.com. Pet. 8 (citing Ex. 1011 ¶ 26);
Ex. 1004. Petitioner cites the Zhang Declaration as support for the
proposition that Raffel_sample’s attachment was an anticipatory publication,
wherein Mr. Zhang opined that the “CTR UR2 08” product was published
and available for sale to the public via the raffle.com website, with no access
restrictions, on November 17, 2015, based on the Raffel_sample
attachment’s statement “[t]hese documents are available [at]
www.raffel.com.” Ex. 1011, ¶¶ 25–26.
We find this to be insufficient evidence that the Raffel_sample was
publicly available on the raffle.com website.
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“Because there are many ways in which a reference may be
disseminated to the interested public, ‘public accessibility’ has
been called the touchstone in determining whether a reference
constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).”
In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference
will be considered publicly accessible if it was “disseminated or
otherwise made available to the extent that persons interested and
ordinarily skilled in the subject matter or art exercising
reasonable diligence, can locate it.” Kyocera Wireless Corp. v.
Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016).
In Blue Calypso, the Federal Circuit found the record devoid of evidence
that the skilled artisan would have known of a webpage alleged to have
provided access to an alleged prior art publication or even that an online
search engine query using any combination of search words before the
critical date would reveal the webpage. Id. at 1349–50. Based on this, and
the lack of further evidence establishing the alleged publication was
publically accessible, the Federal Circuit held the proffering party failed to
carry its burden of proving public accessibility of the reference and affirmed
the Board’s rejection of arguments relying on the reference. Id. at 1350–51.
Here, Petitioner relies only on the conclusion of its witness Mr. Zhang
that the information relating to the patented design shown in Raffel_sample
was publically available. Pet. 8. Mr. Zhang, himself, relies only on his
interpretation of the statement on the Raffel_sample attachment that
documents were available on a website, as noted above. Ex. 1011 ¶¶ 25–26.
Mr. Zhang offers no proof of actual publication.
Patent Owner argues that Petitioner did not demonstrate the necessary
public accessibility. PO Resp. 7. Patent Owner submits the declaration of
Mr. Weeden, who stated that the images and product descriptions of the
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Raffel_sample were not available on the Raffel website, as alleged by
Petitioner, on or before January 31, 2016. See Ex. 2001 ¶ 6. Mr. Weeden
states that the first time the switch designated as “Rectangular 5 Button
power and Headrest with USB and Home Button,” i.e., CTU UR2 08, was
published on Patent Owner’s website was November 14, 2017. Id. ¶ 6.
Patent Owner also submits evidence in the form of the Affidavit of
Christopher Butler and accompanying screen shots obtained using the “Way-
Back-Machine.” Ex. 2012; Ex. 2006–2009. Mr. Butler states that, as the
Office Manager at the Internet Archive, which provides a service known as
the Wayback Machine,” the images of Exhibit A of his Affidavit, which are
Ex. 2006–2009, respectively, show true and correct images of the identified
website on the dates reflected in their footers, i.e., raffel.com/Home/Products
on January 14, 2016 (Ex. 2006; Ex. 2007), and on November 18, 2016
(Ex. 2008; Ex. 2009). Ex. 2012 ¶¶ 3–6. Patent Owner argues that this
proves its website did not link to or image, or otherwise publish, the switch
at issue. PO Resp. 8, note 1.
Patent Owner argues Mr. Zhang’s testimony amounts to mere
speculation that the Raffel_sample switch was published before January 31,
2017. Id. at 8–10. Patent Owner asserts that Mr. Zhang did not know nor
attempt to confirm that there was a publication as alleged. Id. Mr. Zhang
confirmed this as true during his deposition. Ex. 2011, 45:1–46:20.
We agree with Patent Owner’s reading the portion of the
Raffel_sample attachment stating:
All sales are subject to Raffel System’s (i) standard terms and
conditions of sale and (ii) warranty.
These documents are available at www.raffel.com.
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*NOTE: Small quantities of all items are available on demand.
If large quantities are needed, there may be as much as a 10 week
lead time for production. Quantities and lead times vary by item;
detailed information is available upon request.
Changes to product specifications will result in price
modifications.
Ex. 1004; see also PO Resp. 9–10 (“the documents referenced as
available on the website are Raffel Systems’ standard terms and conditions
of sale and warranty, and not the Raffel_sample PDF or in any way related
to the switch at issue in this matter.”). In its full context, as set forth above,
the statement “[t]hese documents are available at www.raffel.com” does not
read as indicating the products of the attachment are accessible or published
on the website. Ex. 1004. Rather, the plain reading of this language
indicates that Raffel’s “standard terms and conditions” and “warranty” were
available on its website, with no direct relation to the products shown above
in the document above the statement. Id. We agree with Patent Owner that
this is the correct reading of the language. PO Resp. 9–10.
Petitioner, neither in its Petition nor Reply, offers any persuasive
argument or evidence tending to show that our and Patent Owner’s reading
of this language is incorrect. Petitioner offers no other evidence that the
products in the Raffel_sample were publically accessible.
For the reasons above, we find Petitioner has not proven by a
preponderance of the evidence that the claimed design is anticipated by a
prior publication.
F. PETITIONER’S OBVIOUSNESS CASE IS NOT PERSUASIVE
Petitioner contends “Kintec_Solution provides ‘basically the same
visual impression’ as the design claimed in the ’986 patent,” “[a]s illustrated
[by a visual comparison of] Kintec_Solution and the ’986 patent depict[ing]
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a switch with buttons on a surface. Ex. 1011, ¶ 47.” Pet. 24–25. Petitioner
reproduced the D’986 patent’s Figure 5 and an image of Kintec Solution, as
follows:

Id. at 25. The D’986 patent’s Figure 5 is shown above-left and Kintec
Solution image, which is a photograph of a faceplate with four centered and
equally spaced in a rectangular configuration, oval-shaped buttons
protruding from openings therein, surrounding some feature at the
centermost point of the faceplate, is shown above-right. Ex. 1001, Fig. 5;
Ex. 1006, 2.
Petitioner concedes that there are design differences between the
patented design and Kintec Solution (identifying that Kintec Solution’s
buttons are not circular and the face plate has no rectangular hole, e.g., for a
USB plug), but contends that the designer of ordinary skill would
nonetheless consider the two designs to create basically the same visual
impression. Pet. 25–27 (citing In re Nalbandian, 661 F.2d 1214, 1215
(CCPA 1981)). Thus, Petitioner contends Kintec Solution is a primary
reference, which conveys basically the same design as claimed, but which
could be modified in view of pertinent secondary references to fully teach or
suggest the claimed design.
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Petitioner argues it would have been obvious to add a rectangular hole
on the switch as claimed in the D’986 patent in view of CN204315857
(Exhibit 1008, “CN’857”). Pet. 27–28. Petitioner contends CN’857 shows
a hole in a switch face plate for a USB plug and “difference here involves
merely adding a rectangular hole apart from the four-button group on the
surface of a button switch.” Id. at 28. The CN’857 reference is not,
however, expressly combined with Kintec Solution by Petitioner under
Ground 2. CN’857 is merely cited as evidence that adding a rectangular
hole would be an obvious modification to Kintec Solution. Petitioner does
expressly combine Hua-Dali with Kintec Solution for this purpose, however.
Pet. 30. Petitioner contends:
Hua-Dali discloses the design of the button switch that has four
outside components, one central component, and a rectangular
hole on the surface that is away from the button group. Ex. 1011,
¶ 58. A comparison of the design of the ’986 patent and Hua-
Dali is provided below:

Id. The D’986 Figure 1 is shown above-left and the 7th figure of Hua-Dali is
shown above-right. Ex. 1007, 3. Petitioner contends “[a] DHOSITA would
have found it obvious to add the rectangular hole on the surface taught by
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Hua-Dali in the design of the primary reference Kintec_Solution. Ex. 1011,
¶ 59.” Pet. 31 (citing Zhang Declaration ¶ 59).
As for the differently shaped buttons of the Kintec Solution compared
to the claimed design, Petitioner contends:
A DHOSITA would have found it obvious to alter the oval
shaped buttons of Kintec_Solution to different shapes. Ex. 1011,
¶ 55. Both the oval shaped button and the circular button are
rounded buttons. Id. As such, the circular rounded button for a
switch is a de minimis obvious design variation of
Kintec_Solution. Id. Accordingly, it would have been
immediately apparent and well within the knowledge and skill of
a DHOSITA to alter the oval shaped buttons in Kintec_Solution
to arrive the claimed design of the ’986 patent. Id.
Pet. 29.
In our Institution Decision, we found Petitioner’s obviousness
arguments and evidence lacking. See Institution Decision, 20–26. In its
Response, Patent Owner adopts our understanding of these designs as set
forth in our Institution Decision. See PO Resp. 17–19. As explained below,
having considered the complete trial record, nothing has changed the
conclusion set forth in our Institution Decision.
A visual comparison of Kintec Solution’s product design and Figure 1
of the D’986 patent sufficiently shows that the two designs are quite
different. We reproduce the relevant images side-by-side below:
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Ex. 1001, Fig. 1; Ex. 1006, 1. The D’986 patent’s Figure 1 is shown above-
left and the second image of Kintec Solution is shown above-right. We find
several significant differences, which, considering the two designs each as a
whole, illustrate that the Kintec Solution design is not basically the same as
the claimed design.
The shape of the faceplate portion of the two designs is not the same.
The claimed design shows more rounded corners than the Kintec Solution
design and the claimed design’s face plate has a rounded-beveled edge,
while the Kintec Solution’s faceplate has straight-sided edges. The
dominant button-like features of the claimed design are shown as not only
circular, but domed. The buttons of Kintec Solution, conceded by Petitioner
to not be circular, also do not appear to be domed as in the claimed design.
The claimed design includes a central button-like feature having the same
overall elevation as the surrounding four, larger button-like features, but is
smaller and has a straighter edged perimeter than the surrounding four
buttons. It is unclear what the central-most feature shown in Kintec Solution
is, but it does not appear to be a button or button-shaped and is certainly not
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shaped like the respective feature of the claimed design. Before even
considering the lack of a rectangular hole, we find these difference to be
significant enough that Kintec Solution does not show the same basic design
or create the same visual impression as the claimed design so as to be a
proper primary reference, i.e., a “Rosen” reference. See Apple, Inc., v.
Samsung Electronics Co., Ltd., 678 F.3d 1314, 1332 (Fed. Cir. 2012) (“The
offered designs do not create the same visual impression as Apple’s claimed
design and thus do not qualify as primary references.”). Mr. Zhang states
that the Kintec Solution device present basically the same visual impression
as the claimed design; however, he does not account for the differences we
identified above. See Ex. 1011 ¶ 46; see also Pet. Reply 14–15 (also not
substantively addressing these differences). Thus, we are not persuaded by
Mr. Zhang’s testimony.
Even were Kintec Solution a proper primary reference, we also find
that it would not have been obvious to modify its design to have a
rectangular opening like the claimed design, e.g. for a USB plug. Petitioner
bases the proposed modification to Kintec Solution’s design on the drawings
of Hua-Dali; however, the Hua-Dali design does not position its rectangular
opening similarly to the claimed design. Rather than position the
rectangular opening along a long-edge of the face plate, so that its
configuration with the five button-like features is centrally located on the
faceplate feature, as claimed, Hua-Dali positions its rectangular opening
more along a short-edge of its face plate, which is a 90° rotation of the
rectangular opening of the claimed design and along a different side of the
operational buttons’ configuration of the claimed design, and not centered as
a group. Thus, even were Kintec Solution and Hua-Dali properly combined,
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the result would not be the claimed design. We see no reason why it would
have been obvious to alter the proposed Kintec Solution-Hua-Dali
combination to achieve the claimed design.
In view of the legal standards discussed above, we find Kintec
Solution and Hua-Dali would not have rendered the claimed design obvious.
Therefore, we find Petitioner has not proven by a preponderance of the
evidence that the claim challenged in the Petition is unpatentable under
Section 103.
IV. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
the claim of the D’986 patent is unpatentable under the on-sale bar. In
summary, on Petitioner’s unpatentability challenges:11

11 Should Patent Owner wish to pursue amendment of the challenged claim
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, see the April 2019 Notice Regarding Options for Amendments by
Patent Owner Through Reissue or Reexamination During a Pending AIA
Trial Proceeding. See 84 Fed. Reg. 16654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of the
challenged patent, Patent Owner has a continuing obligation to notify the
Board in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1 102 On-sale bar 1
1 102
Raffel_sample
publication
1
1 103
Kintec
Solution, Hua-
Dali
1
Overall
Outcome
1
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Patent D821,986 S

41

ORDER
Accordingly, it is hereby:
ORDERED that Petitioner has demonstrated by a preponderance of
the evidence that the sole claim of the D’986 patent is unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
any party to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PGR2019-00029
Patent D821,986 S

42
For PETITIONER:

Shen Wang
Hao Tan
ARCH & LAKE LLP
shenwang@archlakelaw.com
haotan@archlakelaw.com

Gary M. Hnath
Clark Bakewell
MAYER BROWN LLP
cbakewell@mayerbrown.com

For PATENT OWNER:

David A. Casimir, Ph.D.
Tyler J. Sisk, Ph.D.
J. Mitchell Jones, Ph.D.
CASIMIR JONES S.C.
docketing@casimirjones.com
dacasimir@casimirjones.com
tjsisk@casimirjones.com
jmjones@casimirjones.com

John C. Scheller
MICHAEL BEST & FRIEDRICH LLP
JCScheller@michaelbest.com