IP Law Daily Court comfortable with PTAB’s obviousness invalidations of mattress designs
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Wednesday, August 26, 2020

Court comfortable with PTAB’s obviousness invalidations of mattress designs

By Thomas Long, J.D.

Once patent owner’s proposed construction of the contrast claimed in its designs was rejected, substantial evidence supported the view that prior art and claimed designs were "basically the same."

The single claims of two design patents for mattresses were unpatentable for obviousness, the U.S. Court of Appeals for the Federal Circuit has held in two nonprecedential opinions, affirming decisions of the Patent Trial and Appeal Board. The court rejected the patent owner’s argument that the drawings in the patents indicated to skilled artisans that a high level of visual contrast was claimed, and that prior art "monochromatic" designs were therefore too different to serve as primary references in the obviousness analysis. The court also held that the Board properly weighed secondary considerations of nonobviousness in reaching its conclusion that the two design patents were invalid (Sealy Technology, LLC v. SSB Manufacturing Co. and Sealy Technology, LLC v. SSB Manufacturing Co., August 26, 2020, Prost, S.).

Owned by Sealy Technology, LLC, the patents at issue were No. D622,088 ("the ’088 patent"), titled "Mattress Design," and No. D622,531 ("the ’531 patent"), titled "Euro-top Mattress Design." Both patents included 10 figures. In January and February 2011, respectively, SSB Manufacturing Co. ("Simmons") sought inter partes reexamination of the ’088 patent and the ’531 patent. In both cases, upon granting reexamination, the USPTO examiner agreed that Simmons presented newly found prior art. With respect to the ’088 patent, the examiner entered a single rejection but declined to adopt any other rejections based on the references presented by Simmons. With respect to the ’531 patent, the examiner declined to adopt any of Simmons’s requested anticipation and obviousness rejections. Simmons appealed both cases to the Board. For the ’088 patent, the Board reversed the examiner’s rejection but also entered two new grounds of rejection that a combination of three prior art references rendered the claimed design obvious. For the ’531 patent, the Board adopted the examiner’s description of the claimed design and entered new grounds of rejection based on obviousness, ultimately deciding to invalidate the patent. Sealy appealed both decisions to the Federal Circuit.

Construction—claimed contrast. In both cases, Sealy challenged the Board’s construction of contrast claimed in the designs. The Board had found that the only contrast claimed was "one of differing appearance from the rest of the mattress." Sealy contended that the Board’s view of contrast was too broad and effectively read out any contrast from the claimed designs. Sealy proposed that the proper interpretation of contrast, as invoked in the figures of both patents patent, required "contrasting value and/or color." According to Sealy, such contrast would require there to be "something that causes the edge to stand out or to be strikingly different and distinct from the rest of the design to be considered in contrast." The court agreed with the Board’s interpretation of the level of contrast claimed. Neither patent provided textual description about the claimed contrast, and the court disagreed with Sealy’s argument that design patent drawing conventions made it clear that contrast could be shown via line shading and stippling. In the court’s view, the question was not whether line shading and stippling indicated contrast, but whether it indicated contrast only to the degree Sealy preferred—that is, "strikingly different." Sealy had cited a section of the Manual of Patent Examining Procedure, but the court pointed out that that section provided that the claim will "broadly cover contrasting surfaces un-limited by colors," and that the "claim would not be limited to specific material." Therefore, in both cases, the court agree with the Board that the only contrast required in each patent was one of differing appearance, which may be achieved by such means as "contrasting fabric, contrasting color, contrasting pattern, and contrasting texture."

Obviousness—’088 patent. The Board had determined that a combination of three prior art designs—"Somma Nouveau," "Ad Trends," and "Art Van"—rendered the design of the ’088 would have been obvious to a mattress designer of ordinary skill. Sealy challenged the Board’s treatment of Somma Nouveau as a primary reference. To qualify as a primary reference for a design patent obviousness analysis, the prior art design must create "basically the same" visual impression as the claimed design. The court concluded that substantial evidence supported the Board’s determination that Somma Nouveau was "basically the same" as the design of the ’088 patent. The presence of duvet fasteners on handles in Somma Nouveau was only a "slight difference" from the handles in the claimed design. Also, Sealy’s argument that the Somma Nouveau mattress’s monochromatic design lacked the contrast needed to create the same visual impression as the ’088 patent’s design was rejected, given the court’s agreement with the Board’s construction of the patent’s claimed contrast.

Sealy also argued that the Board erred in finding that Somma Nouveau with the two secondary references were "so related that the appearance of certain ornamental features in one would suggest the application of those features to the other." In particular, Sealy contended that the Board failed to establish the requisite motivation to combine the prior art. The court again agreed with the Board, holding that substantial evidence supported the Board’s finding of similarity in appearance between Somma Nouveau and Ad Trends/Art Van, as well as its finding that a designer of ordinary skill would have been motivated to incorporate the enhanced contrast from Ad Trends/Art Van to Somma Nouveau.

Finally, Sealy challenged the Board’s findings regarding secondary considerations of nonobviousness. In the Federal Circuit’s view, to the extent that Sealy argued that the Board improperly evaluated its evidence of commercial success and industry praise, Sealy failed to explain in its briefing how its evidence of these secondary considerations was the direct result of the unique characteristics of the claimed design. Additionally, the court agreed with the examiner and the Board that evidence of copying by third parties did not make the ’088 patent less obvious in light of prior art.

Accordingly, the court affirmed the Board’s decision on the ’088 patent.

Obviousness—’531 patent. Sealy challenged the Board’s factual findings regarding whether the prior art constituted proper primary references. The court concluded that substantial evidence supported the Board’s finding that the prior art "Aireloom Heritage" design was "basically the same" as the ’531 patent’s design because it contained all six of the elements of the claimed design. Sealy again argued that the Aireloom Heritage mattress lacked sufficient contrast to resemble the ’531 design, but this contention was rejected due to the claim construction affirmed by the court.

The court also rejected Sealy’s arguments about secondary considerations, including copying, for similar reasons to those it expressed regarding the ’088 patent.

The cases are No. 19-1872 and No. 19-1874.

Attorneys: Steven Moore (Kilpatrick Townsend & Stockton LLP) for Sealy Technology, LLC. Jon Steven Baughman (Paul, Weiss, Rifkind, Wharton & Garrison LLP) for SSB Manufacturing Co.

Companies: Sealy Technology, LLC; SSB Manufacturing Co.

MainStory: TopStory Patent GCNNews FedCirNews

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