Alberts v. Kappos

• Decision Date: 18 January 2013
• Docket Number: Civil Action No. 10–1727 (JEB).
• Parties: Audrey M. ALBERTS, Plaintiff, v. Hon. David J. KAPPOS, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant.
• Court: U.S. District Court — District of Columbia

917 F.Supp.2d 94

Audrey M. ALBERTS, Plaintiff,

v.Hon. David J. KAPPOS, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant.

Civil Action No. 10–1727 (JEB).

United States District Court,

District of Columbia.

Jan. 18, 2013.

Harold Lewis Novick, Novick Kim & Lee, PLLC, Vienna, VA, Wesley W. Monroe, Pasadena, CA, for Plaintiff.

Fred Elmore Haynes, U.S. Attorney's Office, Washington, DC, for Defendant.

MEMORANDUM OPINION

JAMES E. BOASBERG, District Judge.

Plaintiff Audrey M. Alberts filed a patent application at the U.S. Patent and Trademark Office for the invention of a carpet-tile area rug, but the PTO rejected a number of her claims as obvious. After exhausting the PTO's administrative-appeal process, Plaintiff brought this civil action under 35 U.S.C. § 145, seeking a judgment that she is entitled to a patent on the rejected claims. The parties have now cross-moved for summary judgment on the issue of patentability. Because there is no genuine dispute of material fact with the PTO's prior determination of obviousness, the Court will grant judgment for Defendant.

I. BackgroundA. Plaintiff's Claimed Invention

Plaintiff's invention discloses a “carpet-tile area rug,” which is composed of an arrangement of multiple carpet tiles laid adjacent to each other, secured to the floor without adhesive, such that the carpet tiles collectively form an “area rug” of a convex shape. Specifically, the Court treats claim 1 of Plaintiff's patent application as representative:

A modular area rug to cover a floor surface comprising: only a plurality of carpet tiles covering only a portion of the floor surface; wherein no adhesive is used to secure the carpet tiles to the floor surface; and wherein an edge of each carpet tile abuts an edge of at least one adjacent carpet tile such that a perimeter of the modular area rug forms a convex figure.

Defendant's Statement of Undisputed Material Facts (DSUMF), ¶ 12.

Although laypersons should comprehend the majority of claim 1's terms, the term “convex figure” may not be so apparent. Plaintiff's patent application defined convex as “pertaining to a region for which a straight line segment between any two points of the region is entirely within the region. In other words, a convex figure is one which does not include any interior angles of greater than 180 degrees.” DSUMF, ¶ 31 (citation omitted). Most commonly known shapes— e.g., ovals, squares, rectangles, circles, pentagons, and octagons—are convex. For additional clarity, the Court has provided two illustrations below, which demonstrate the distinction between convex and non-convex shapes.

IMAGE

B. Prior Art

In its subsequent analysis of obviousness, the Court will be comparing Plaintiff's claimed invention to what is called “prior art.” Prior art may be defined as “knowledge that is available, including what would be obvious from it, at a given time, to a person of ordinary skill in the art.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed.Cir.1997) (citation omitted). The Court will look first at general carpet-tile prior art and then explain the prior art contained in a specific catalog of Interface-brand carpet tiles.

1. General Carpet–Tile Prior Art

Plaintiff does not deny that other carpet-tile area rugs existed prior to her claimed invention. See Pl. Mot. at 3. Among the prior art, an issued patent disclosed a carpet-tile area rug akin to Plaintiff's claimed invention, but its carpet tiles were glued to a plastic mat, as opposed to being adhesive free. Id. Another patent application disclosed a carpet-tile area rug where carpet tiles were secured without adhesive within an outer frame. Id. “Free-lay” carpet tiles, additionally, were long sold for the purpose of “wall-to-wall installation where at least the non-border carpet tiles were not attached to the subfloor with adhesives.” Id. Area rugs, moreover, “come in a variety of shapes and sizes, including common rectangular or square shapes, oval and round shapes, and runner styles.” DSUMF, ¶ 35.

2. Interface–Brand Carpet–Tile Prior Art

The parties' summary-judgment papers chiefly zero in on a single prior-art reference—an eight-page excerpt from a 150–page “printed marketing publication for Interface brand modular carpet tiles” that Plaintiff disclosed to the PTO during patent prosecution (“Interface Excerpt”). See DSUMF, ¶¶ 14, 63–64; see also Plaintiff's Statement of Undisputed Material Facts (PSUMF), ¶¶ 3, 8. The Interface Excerpt consists of the front and back covers of the full catalog and six pages featuring full-page photographs of unconventional depictions or arrangements of carpet tiles. See A82–89 (Interface Excerpt). ¹ Most significantly, one of the photographs displays an arrangement of Interface's carpet tiles laid contiguously on a partial segment of a floor to collectively form a non-convex shape. This “Interface photo” is reproduced here.

IMAGE

The caption in the bottom right corner of the photograph reads:

When you put it down, it picks you up.

Interface invented glue-free carpet tile, then discovered how much fun it was to play with it.

Transform an empty space into a world all your own.

Just because a floor isn't round doesn't mean The tiles have to be square.

The options are limited only to your imagination.

Let the game begin.

A83. The main point of contention between the parties is the interpretation of this Interface photo.

During patent prosecution, Plaintiff submitted only the eight-page Interface Excerpt to the PTO, but has since obtained the full-length sales catalog from which the excerpt was extracted. See A75, 77, 82–89 (Information Disclosure Statement); Def. Rep., Exh. 1 (Full Interface Catalog). The majority of the full catalog conventionally displays Interface's various carpet-tile product lines and summarizes ordering logistics. It also, however, contains assorted full-page photographs that playfully display Interface's carpet tiles in unconventional configurations. One of the full-page photographs, for example, exhibits the carpet tiles in an arrangement akin to a hopscotch board, while another shows the carpet tiles in a configuration resembling a lane in a bowling alley. See Full Interface Catalog at ECF pp. 99, 156. The contested Interface photo and the hopscotch photo were present in the Interface Excerpt submitted to the PTO, but other imaginative full-page photographs of carpet-tile arrangements, such as the bowling-alley photo, only appear in the recently submitted complete Interface catalog.

C. Procedural History

On August 20, 2004, Plaintiff filed a patent application at the PTO for a “Carpet Tile Area Rug,” which claimed the benefit of an earlier provisional application filed August 21, 2003. See Compl., ¶¶ 5, 8; DSUMF, ¶¶ 1–2; PSUMF, ¶ 1. After more than three years of patent prosecution, the examiner issued a final rejection of Plaintiff's patent claims. See A267–77 (Examiner's Second Final Rejection).

Of note, claim 1 of Plaintiff's patent application did not initially contain a “convex-figure” limitation. During patent prosecution, however, the examiner rejected a previous form of the claim as anticipated by the Interface photo and the hopscotch photo. See A164, 169 (Examiner's First Final Rejection), 272–73. In an effort to overcome the rejection, Plaintiff amended claim 1 to add the present convex-figure limitation. See DSUMF, ¶ 30. The examiner subsequently withdrew her anticipation rejection, but found that a mere change in shape was an obvious variation upon those photos. See A272–73. Aside from the newly added convex-figure limitation, claim 1's wording is, in all relevant aspects, otherwise identical to what the examiner previously rejected as anticipated. See DSUMF, ¶ 30.

Plaintiff subsequently appealed to the PTO's Board of Patent Appeals and Interferences (BPAI). See A292 (Plaintiff's Notice of Appeal to BPAI). There, she argued that the Interface photo merely demonstrated an “artistic configuration[ ],” rather than suggesting a “utilitarian usage,” such as an area rug. See A297, 309 (Plaintiff's BPAI Appeal Brief). Plaintiff argued, moreover, that the examiner improperly relied upon hindsight to determine that the Interface photo was an area rug rather than an artistic configuration. See A310. The BPAI rejected those arguments and ultimately affirmed rejections of claims 1–6, 11–18, and 23–25 as obvious over prior art. See A398, 408–09 (BPAI Decision). Thereafter, the BPAI granted Plaintiff's request for rehearing, but did not alter its decision. See A419, 421 (BPAI Decision on Rehearing). Plaintiff then brought the instant civil action pursuant to 35 U.S.C. § 145.

II. Legal Standard

Summary judgment may be granted if “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Holcomb v. Powell, 433 F.3d 889, 895 (D.C.Cir.2006). A fact is “material” if it is capable of affecting the substantive outcome of the litigation. Holcomb, 433 F.3d at 895;Liberty Lobby, Inc., 477 U.S. at 248, 106 S.Ct. 2505. A dispute is “genuine” if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. See Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007); Liberty Lobby, Inc., 477 U.S. at 248, 106 S.Ct. 2505;Holcomb, 433 F.3d at 895. “A party asserting that a fact cannot be or is genuinely disputed must support the assertion by citing to particular parts of materials in the record.” Fed.R.Civ.P. 56(c)(1)(A).

When a motion for summary judgment is under consideration, “[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor.” Liberty Lobby, Inc., 477 U.S. at 255, 106 S.Ct. 2505;see also Mastro v. PEPCO, 447 F.3d 843, 850 (D.C.Cir.2006);...