B/E Aerospace, Inc. v. C&D Zodiac, Inc.
| Decision Date | 26 June 2020 |
| Docket Number | 2019-1935, 2019-1936 |
| Citation | 962 F.3d 1373 |
| Parties | B/E AEROSPACE, INC., Appellant v. C&D ZODIAC, INC, Appellee |
| Court | U.S. Court of Appeals — Federal Circuit |
Morgan Chu, Irell & Manella LLP, Los Angeles, CA, for appellant. Also represented by Michael Richard Fleming.
John C. Alemanni, Kilpatrick Townsend & Stockton LLP, Raleigh, NC, for appellee. Also represented by Michael T. Morlock, David A. Reed, Atlanta, GA; Steven Moore, San Francisco, CA; Andrew William Rinehart, Winston-Salem, NC.
Before Lourie, Reyna, and Hughes, Circuit Judges.
B/E Aerospace, Inc. appeals a final written decision of the Patent Trial and Appeal Board that found certain claims of B/E's aircraft lavatory-related patents obvious. B/E contends that the Board's decision is erroneous because the Board incorporated a claim limitation that is not present in the prior art. B/E also contends that the Board erred by relying on printed matter that does not qualify as prior art under 35 U.S.C. § 311(b). We conclude that the Board's final determination of obviousness is correct, and we do not reach the § 311(b) issue. On that basis we affirm the Board's final written decision.
This appeal arises from an inter partes review ("IPR") proceeding. Petitioner, C&D Zodiac, Inc. ("Zodiac"), challenged two patents owned by B/E Aerospace, Inc. ("B/E"), U.S. Patent No. 9,073,641 ("the ’641 patent") and U.S. Patent No. 9,440,742 ("the ’742 patent") (collectively, "the challenged patents").
The technology involved in this appeal is simple. The challenged patents relate to space-saving technologies for aircraft enclosures such as lavatory enclosures, closets, and galleys. C&D Zodiac, Inc. v. B/E Aerospace, Inc., No. IPR2017-01275 at 4 (P.T.A.B. Oct. 23, 2018). Each patent contains a two-page written description that teaches an enclosure with contoured walls designed to "reduce or eliminate the gaps and volumes of space required between lavatory enclosures and adjacent structures." ’641 patent at 1:52-56. In other words, the patents are directed to space-saving modifications to the walls of aircraft enclosures; they are not directed to the structures contained within those walls. Id.; see IPR2017-01275 at 15.
The parties agree that, for purposes of this appeal, the challenged patents and claims are not materially different and that claim 1 of the ’641 patent is representative of the challenged claims.
Claim 1 of the ’641 patent provides:
’641 patent at 4:63-5:17 (emphases added).
This appeal focuses on the "first recess" and "second recess" limitations, labeled as elements 34 and 100, respectively, in Figure 2 below. ’641 patent at Fig. 2.
Zodiac's petition asserted two grounds of unpatentability. The Board instituted on both grounds. During the proceeding, Zodiac requested a partial adverse judgment, which the Board granted. This left only one instituted ground: that the challenged claims were obvious over the so-called "Admitted Prior Art" and U.S. Patent No. 3,738,497 ("Betts").
In its petition, Zodiac defined the "Admitted Prior Art" as certain portions of the challenged patents, including Figure 1. See ’641 patent at 1:65-67. As shown below, Figure 1 of the Admitted Prior Art discloses a flat, forward-facing lavatory wall immediately behind a passenger seat that has a rear seat leg extending toward the back of the plane (referred to as an "aft-extending seat support").
Betts discloses an airplane passenger seat with a tilting backrest. Behind the seat is a coat closet that has luggage space along the floor and an overhead coat compartment. Betts at 2:8—14. Rather than a flat forward-facing wall, Betts discloses a contoured forward-facing wall to receive the tilted backrest. Id. at 2:19—24. The "lower portion 30 of the coat compartment 18" of Betts "slants rearwardly to provide a space for seatback 12 to be tilted rearwardly." Id. The "top 32 of storage space 16 also slants rearwardly so as not to interfere with seatback 12 when tilted." Id.
In its final written decision, the Board concluded that Zodiac had proven that the challenged claims would have been "obvious over the Admitted Prior Art and Betts." IPR2017-01275 at 39. The Board determined that Betts's contoured wall design met the "first recess" claim limitation. Id. at 17 (citing Betts at 2:19-24).1 The Board also found that skilled artisans (airplane interior designers) would have been motivated to modify the flat forward-facing wall of the lavatory in the Admitted Prior Art with Betts's contoured, forward-facing wall because skilled artisans were interested in adding space to airplane cabins, and Betts's design added space by permitting the seat to be moved further aft. Id. at 14-17.
The Board found that a skilled artisan would have found it "obvious to further modify the Admitted Prior Art/Betts combination to include the ‘second recess’ to receive passenger seat supports." Id. at 22. The Board used two separate approaches presented by Zodiac to reach that conclusion.2
First, Zodiac argued that "the logic of using a recess to receive the seat back applies equally to using another recess to receive the aft extending seat support." Id. At 18. The Board found Zodiac's arguments and testimony "credible and convincing."
Id. at 22. The Board agreed with Zodiac that creating a recess in the wall to receive the seat support was an obvious solution to a known problem. The Board relied on the testimony of Zodiac's expert, Mr. Anderson, who opined that the addition of a second recess "is nothing more than the application of a known technology (i.e., Betts) for its intended purpose with a predictable result (i.e., to position the seat as far back as possible). Id. at 18, 23. Mr. Anderson explained that a skilled artisan "would be motivated to modify an enclosure, such as a lavatory, to include a second recess to receive aft facing seat supports"; that this "modification is nothing more than the application of known technology for its intended purpose"; and that the "result of such a modification is predictable, allowing the seat to be positioned further aft in an aircraft." J.A. 1850 ¶ 191; see also IPR2017-01275 at 23, 26.
Second, the Board found that Zodiac "established a strong case of obviousness based on the Admitted Prior Art and Betts, coupled with common sense and the knowledge of a person of ordinary skill in the art." IPR2017-01275 at 34. Relying on the testimony of Mr. Anderson, the Board found that recesses configured to receive seat supports "were known in the art" and that "it would have been a matter of common sense" to incorporate a second recess in the Admitted Prior Art/Betts combination. Id. at 26.
Zodiac attached to its petition three "design drawings" that undisputedly depict "enclosures that include a lower recess to receive a seat support," i.e., a "second recess." Id. at 19. Zodiac did not identify these design drawings as prior art references for any of the enumerated grounds of unpatentability. Instead, Zodiac asserted the drawings as evidence that lower recesses to receive a seat support were "known in the art." Id. at 21.
B/E moved to exclude the design drawings and the related testimony on the basis that Zodiac had not shown that the drawings were "patents" or "printed publications" within the meaning of 35 U.S.C. § 311(b). J.A. 513-18. Section 311(b) provides that, in an IPR proceeding, claims may be cancelled as unpatentable only on the basis of prior art consisting of "patents or printed publications."
The Board denied the motion to exclude. IPR2017-01275 at 22-23, 40-41. The Board determined that two of the designs, the SAS MD-90 and the 737 Storage, were in public use or on sale prior to the critical date of the challenged patents. Id. But the Board explained that it considered the design drawings only for the purpose of "identifying], specifically, the knowledge of those skilled in the art." Id. at 24. When used for those purposes, the Board explained, the drawings "need not be ‘printed publication’ prior art." Id. at 41-42; see also id. at 24.
B/E requested a rehearing of the Board's determination regarding the design drawings. B/E argued that the Board "misapprehended and/or overlooked the statute defining the scope of IPRs, 35 U.S.C. § 311(b)." J.A. 652. B/E argued that the design drawings and the related testimony "fall[ ] outside the scope of IPRs, which are instituted only on the basis of prior art consisting of patents or printed publications." Id. B/E also challenged the Board's reliance on "common sense" in finding obviousness. The Board denied the request for rehearing.
B/E timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
We review final written decisions of the Board in accordance with the Administrative Procedure Act, 5 U.S.C. § 706(2) (2012).
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