PTAB Flushes Airplane Lavatory Patent On On-Sale Bar

Author:Mr S. Christian Platt, John C. Evans and Kerry A. Barrett
Profession:Jones Day

On October 23, 2018, the PTAB found unpatentable B/E Aerospace's U.S. Design Patent No. D764,031 ("'031 patent"). C&D Zodiac, Inc. v. B/E Aerospace, Inc., PGR2017-00019, Paper 37 (PTAB Oct. 23, 2018). The '031 patent claimed a partial design for a space-saving airplane lavatory wall, shown below:

The '031 patent application, filed on September 18, 2015, was a divisional of a parent design application filed on October 10, 2013 that expressly claimed priority to U.S. Patent Application No. 13/089,063 ("'063 application"), filed on April 18, 2011. The '031 patent claim relied on the alleged priority drawing from the '063 application shown below:

The Petitioner filed a petition for post-grant review ("PGR"). Unlike Inter Partes Review proceedings, which are limited to invalidity grounds based on patents and printed publications, PGR proceedings provide significantly broader grounds for invalidity, including the on-sale and public use bars. PGR petitions, however, are only available for patent applications filed on or after March 16, 2013. Despite the '031 patent's express claim to an earlier priority date, the Petitioner argued that the claimed '063 priority application did not provide written description support for the claimed design in the '031 patent. If the '031 patent was not entitled to the April 18, 2011 priority date, then its earliest possible date of priority would be October 10, 2013—after the March 16, 2013 date for applications subject to post-grant review. In its Institution Decision, the PTAB found there was a reasonable likelihood that the '031 patent claim was not entitled to priority to the '063 application due to a lack of written description support for the claimed design in the '031 patent. As a result, the '031 patent was eligible for post-grant review, which was critical, given the Petitioner's reliance on the on-sale and public use bar, discussed below.

Had the patent's priority claim been upheld—with an earlier effective filing date—then the PTAB would have denied institution of PGR. Due to the later effective filing date, the PTAB instituted PGR and intervening evidence showed that a product embodying the claimed lavatory wall design was on sale and in public use, see below:

In its Final Written Decision, the PTAB explained that to be entitled to an earlier effective filing date under 35 U.S.C. § 120, a continuation application must comply with the written description requirement under 35 U.S.C. § 112. Generally...

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