IP Law Daily Utility, design patents for decorative laminate architectural panels are invalid
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Thursday, February 2, 2017

Utility, design patents for decorative laminate architectural panels are invalid

By Thomas Long, J.D.

Both a utility patent and a design patent related to decorative laminate panels containing compressed natural objects were invalid and could not be the basis of infringement claims brought by patent-holder 3form, Inc. against competitor Lumicor, Inc., the U.S. Court of Appeals for the Federal Circuit has held. Although the appellate court disagreed with some of the district court’s claim constructions for the utility patent, the Federal Circuit agreed with the district court’s conclusion that 3form’s utility patent was invalid as anticipated and obvious over prior art. The design patent at issue—for an architectural panel with thatch reed design—was rendered obvious by one of Lumicor’s products, even though the Lumicor product’s design used beach grass instead of reeds (3form, Inc. v. Lumicor, Inc., February 2, 2017, Stoll, K.).

Patents-in-suit. Both 3form and Lumicor sold decorative laminate architectural panels with natural objects—such as twigs, reeds, and bamboo—encased within them. 3form sued Lumicor for allegedly infringing a utility patent, U.S. Patent No. 7,008,700 ("the ’700 patent"), and a design patent, U.S. Patent No. D621,068 ("the D’068 patent"). The ’700 utility patent described a process for making decorative laminate panels having "compressible objects embedded inside, wherein the compressible objects would be flattened in unnatural shapes under conventional processes." Claim 1—representative of the ’700 patent’s claims—involved using various pressures in a thermosetting process, with at least one of the pressures being equal to or greater than a critical pressure sufficient to compress the objects to an "unnatural appearing conformation," but with the objects maintaining a "substantially natural appearing conformation" between two formed resin sheets. The D’068 patent claimed the ornamental design for an architectural panel with thatch reed design. The district court entered summary judgment in Lumicor’s favor, holding that 3form’s asserted patents were invalid over the prior art.

Claim construction. The district court construed the term "unnatural appearing conformation" as "an object that has compressed in an amount equal to or greater than 75% of its thickness in one direction," and it construed the term "substantially natural appearing conformation" as "any conformation where the object has experienced compression of less than 75% of its thickness in one direction." The Federal Circuit modified the district court’s construction of the terms. With respect to the first term, the appellate court adopted 3form’s proposed construction of "unnatural appearing conformation" to mean "the appearance of an object when its structural integrity collapses, such that the object splits, cracks, or substantially deforms." With respect to the second, the appellate court adopted 3form’s proposed construction of "substantially natural conformation" to mean "[t]he appearance of an object in a relatively uncompressed or natural state, even if not perfectly natural or uncompressed."

Validity of utility patent. Although the district court erred in construing these two claim terms, the Federal Circuit affirmed its summary judgment of invalidity because the ’700 patent was also invalid under the correct claim constructions. A prior art patent ("Schober") recited most of the ’700 patent’s independent claims expressly and inherently disclosed the others. Although Schober disclosed the use of non-compressible objects, it also described its method as capable for use with twigs, including those from reed and bamboo. This disclosure was sufficient to satisfy the "compressible objects" limitation of the ’700 patent, the court said. The Schober two-step method included a first, low-pressure encasing step, which was intended to maintain the integrity of the encased object, which indicated that the Schober method would necessarily maintain "substantially natural appearing conformation" of compressible objects. In addition, Lumicor’s expert used the method described in Schober to create test panels that maintained such a conformation. Therefore, Schober anticipated claims 1 and 19 of the ’700 patent. The remaining claims were either anticipated by Schober or were obvious in light of a combination of Schober and two other patents ("Eckart"), the Federal Circuit held. The Eckart patents disclosed using certain types of resins—disclosed in the ’700 patent claims—in decorative laminate panels. Expert testimony showed that a person of ordinary skill in the art would know that these resins would work in the Schober method.

Obviousness of design patent. The district court invalidated the D’068 patent primarily on the basis of a panel produced by Lumicor, which used beach grass, whereas the D’068 patent used reeds. Because Schober described using reeds in place of grass in decorative panels, the district court concluded that a designer of ordinary skill would have been motivated to substitute Exhibit 5’s beach grass with Schober’s reeds and that this combination rendered the D’068 patent obvious. The Federal Circuit agreed that a person of ordinary skill in the art would consider reeds to be an acceptable substitute for grass. Therefore, the invalidity determination was affirmed.

The case is No. 2016-1535.

Attorneys: Samuel C. Straight (Ray Quinney & Nebeker P.C.) for 3form, Inc. Lawrence D. Graham (Lowe Graham Jones) for Lumicor, Inc.

Companies: 3form, Inc.; Lumicor, Inc.

MainStory: TopStory Patent FedCirNews

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