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Sattler v. HumanCentric - Petition For PGR (D823,093)
Sattler v. HumanCentric - Petition For PGR (D823,093)
________________
________________
SATTLER
TECH CORP.
Petitioner
v.
Patent Owner
________________
________________
TABLE OF CONTENTS
Table of Authorities
Table of Exhibits
I. INTRODUCTION ………………………………………………………………….……...………… Page 1
II. STANDING AND PROCEDURAL STATEMENTS ……………………….………….…… Page 1
III. MANDATORY NOTICES .........................................................................................................Page 2
A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) .................................................................Page 2
B. Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................................................Page 2
C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) .......................................................Page 2
D. Service Information (37 C.F.R. § 42.8(b)(4)) .....................................................................Page 3
IV. STATEMENT OF PRECISE RELIEF REQUESTED ......................................................................Page 3
V. ’093 PATENT BACKGROUND AND RELEVANT FIELD ............................................................Page 3
A. Overview of the ’093 Patent ................................................................................................Page 3
B. Relevant Field ............................................................................................................................Page 9
1. Tabs ................................................................................................................................Page 10
2. Grommet Spacing .................................................................................................... Page 13
3. Grommet Size ............................................................................................................ Page 15
4. Grommet Raised Edges ......................................................................................... Page 16
VI. CLAIM CONSTRUCTION ....................................................................................................................Page 17
VII. DETAILED EXPLANATION OF INVALIDITY ............................................................................Page 17
A. Lack of Ornamentality ........................................................................................................Page 18
1. Applicable Law Regarding Invalidity Regarding Ornamentality …….…. Page 18
2. The Design of the 093 Patent is Primarily Functional ……………………… Page 19
3. Claim: The Ornamental Design for a VESA Mount Adapter Bracket, as Shown
and Described……….......................................................................................................Page 27
VIII. CONCLUSION .................................................................................................................................,....Page 30
Table of Authorities
Statutes
35 U.S.C. § 171 ...........................................................................................................1, 3, 17, 18, 19
37 C.F.R. § 42.208 ........................................................................................................................... 1
37 C.F.R. § 42.204(a) .................................................................................................................... 1,7
37 C.F.R. § 42.206(a) .................................................................................................................... 1,7
37 C.F.R. § 10(b)…………………………………………………………………………………………………………………………1
37 C.F.R. § 42.63(e)………………………………………………………………………………………………………………...…1
37 C.F.R. § 42.8(b)(1)....................................................................................................................... 2
37 C.F.R. § 42.8(b)(2)....................................................................................................................... 2
37 C.F.R. § 42.8(b)(3)....................................................................................................................... 2
37 C.F.R. § 42.8(b)(4)....................................................................................................................... 3
37 C.F.R. § 42.22(a) ......................................................................................................................... 3
37 C.F.R. § 42.100(b) ............................................................................................................... 17, 18
M.P.E.P. § 1504.01(c) .................................................................................................................... 18
37 C.F.R. § 42.200(b) ..................................................................................................................... 18
Cases
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,2140‐45 (2016) .......................................... 17, 18
High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) ..................... 18
L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) .............................. 18
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,679 (Fed. Cir. 2008) ..................................... 19
Dobson v. Dornan, 118 U.S. 10, 14 (1886) .................................................................................... 19
Power Controls Corp. v. Hybrinetics, Inc., 806 F.3d 234,238‐39 (Fed. Cir. 1986) ......................... 19
Hupp v. Sirojlex of Am., Inc., 122 F.3d 1456, 1460 (Fed. Cir. 1997) .............................................. 19
Ethicon Endo‐Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312,1329‐30 (Fed. Cir. 2015) ................. 19
PGR 2016‐00021 ........................................................................................................................... 18
TABLE OF EXHIBITS
Patent Is Sold
Patent Is Sold
Metal Forming
I. INTRODUCTION
claim of U.S. Patent No. D 823,093 (Ex. 1001, “the ’093 Patent”), and cancellation of the
claim as unpatentable under 35 U.S.C. § 171 for lacking ornamentality. This Petition
demonstrates that it is more likely than not that the claim of the ’093 Patent is
As an initial matter, the design claimed by the ’093 Patent lacks ornamentality, as it
was dictated entirely by functional considerations and is primarily functional. The claim of
the ’093 Patent is therefore not directed at patentable subject matter. It should be
Petitioner certifies pursuant to 37 C.F.R. section 42.204(a) that the ’093 Patent is
available for post-grant review and that Petitioner is not barred or estopped from
requesting post-grant review of the ’093 Patent. This Petition is also filed within nine
months from the July 17, 2018 issue date of the ’093 Patent.
and files concurrently with this petition a Power of Attorney and an Exhibit List
1
III. MANDATORY NOTICES
On information and belief, the sole judicial or administrative matters involving the
’093 Patent is Case No. 2:18-cv-09332-PSG-JPR in the United States District Court, Northern
District of California.
Stevan Lieberman
GREENBERG & LIEBERMAN, LLC
1775 Eye Street, NW
Suite 1150
Washington, DC 20006
Telephone: (202) 625-7000
Facsimile: (202) 625-7001
stevan@aplegal.com
2
D. Service Information (37 C.F.R. § 42.8(b)(4))
above.
Pursuant to 37 C.F.R. section 42.22(a), Petitioner states that the claim of the
’093 Patent is unpatentable under 35 U.S.C. section 171 for lacking ornamentality.
Petitioner seeks cancellation of the claim. Petitioner’s full statement of the reasons for the
The ’093 Patent (Ex. 1001) is entitled “VESA MOUNT ADAPTER BRACKET.” It issued
on July 17, 2018, from Application Ser. No. 29/594,376 (“the ’376 Application”), filed
February 17, 2017. The ’093 Patent claims what it purports to be an ornamental design for
3
(Ex. 1001 at 3.) The ’093 Patent contains 5 other figures, FIGS. 2-6, directed at front, back,
right, top, and bottom perspectives of the claimed design. FIG. 2 is a front view of the
claimed design:
4
(Ex. 1001 at 4.) A back view of the claimed design is shown in FIG. 3:
5
(Ex. 1001 at 5.) FIG. 4 is a right-side view:
6
(Ex. 1001 at 6.) FIGS. 5 and 6 are a top view and a bottom view, respectively:
7
(Ex. 1001 at 7.) As seen in the Figures, there are parts of figures that are shown in broken
lines. As noted in the patent itself: “The broken lines represent portions of the article and
form no part of the claimed design.” The only solid-lined parts of the design – or in other
8
words, the claimed design -- are essentially a (1) the top and bottom tabs and (2) the
grommets arranged in diagonal pairs toward the four corners of the plate of the design. As
demonstrated below, the look of those individual elements—as well as the look of those
B. Relevant Field
which is claimed in the ’093 Patent – is used in connection with the Video Electronics
Standards Association (VESA) Flat Display Mounting Interface Standard, Copyright 2006.
(Ex. 1002). As noted on the first page, “This proposal is to provide industry standard
mounting interfaces for Flat Displays (FDs) such as flat panel monitors, flat displays and
The VESA mount adapter bracket of the ‘093 Patent is designed specifically to fit
onto the back of certain video monitors so they can attach to VESA mount systems instead
of a stand that came with the monitors. Specifically, the typical consumer would attach the
VESA mount adapter bracket of the ‘093 Patent to a monitor in place of a stand that was
As shown in the following figure found on the Amazon page on which the
9
1. Tabs
As shown in the following two additional figures found on the Amazon page
on which the VESA mount adapter bracket of the ‘093 Patent is sold,
tab of the VESA mount adapter bracket of the ‘093 Patent fits atop a lower bulge on the
back of a video monitor to secure the top tab via screw to the video monitor. There is
already a hole in the monitor to receive a screw through the top tab of the bracket of the
‘093 Patent. Note that the bracket of the ‘093 Patent (as shown in the following several
images) is sandwiched between the monitor and support arm – so that no one is going to
see much of the bracket of the ‘093 Patent once the bracket of the ‘093 Patent has been
installed.
10
11
As shown in the following figure found on the Amazon page on which the VESA
VESA mount adapter bracket of the ‘093 Patent fit into preexisting slots on the back of a
video monitor.
So, in short, the tabs must be positioned and sized as they are – else they won’t fit the
monitor. The top tab is shaped as minimally as possible to provide support for the bracket
12
2. Grommet Spacing
As shown in the following figure found on the Amazon page on which the
mount adapter bracket of the ‘093 Patent are shown to be VESA standardly-spaced (via the
manufacturer’s blue notations in the below figure) to fit for mounting at the back of a video
monitor.
As noted on page 18, Section 5.2.1 of the VESA Flat Display Mounting Interface
13
(30.8 lbs.)
o See Illustration: Paragraph 5.2.4.1.
• Alternate, center located mounting interface implementation for smaller displays
o 75 mm x 75 mm hole spacing may be used for smaller displays, typically
weighing less than 8 kg (17.6 lbs.)
o See Illustration: Paragraph 5.2.4.2.
And here are the corresponding illustrations that are referenced per that VESA Standard as
found on pages 19 and 20, Section 5.2.4.1 and Section 5.2.4.2 of the VESA Flat Display
14
So, in short, the grommets must be spaced as they are – else they won’t meet VESA
standards.
3. Grommet Size
Even the grommet size is dictated by VESA Standards, as noted on page 22,
Section 5.6 of the VESA Flat Display Mounting Interface (FDMI™) Standard (Ex. 1002 at
32.),:
15
Pad size 115 mm x 115 mm (4.527”),
6 mm R (4)
90 mm x 90 mm (3.543”),
6 mm R (4)
Flat mounting area required 117 mm x 117 mm (4.606”),
0 – 7 mm R (4)
92 mm x 92 mm (3.622”),
0 – 7 mm R (4)
Pad thickness 2.6 mm or 12 GA (0.102”-0.105”) 2.6 mm or 12 GA (0.102”-0.105”)
Hole size in pad (4 ea.) 5 mm ø (0.197"ø) 5 mm ø (0.197"ø)
Pad material Steel * Steel *
Mounting screws (4 ea.) 4 mm ø, .7 pitch x 10 mm long ** 4 mm ø, .7 pitch x 10 mm long **
So, in short, the grommets must be standardly-sized -- else they won’t conform to
VESA standards.
Having raised edges for grommets is known to increase the strength of the
sheet to which the grommets are attached. The bracket of the ‘093 Patent has raised
https://reader.elsevier.com/reader/sd/pii/S2351978918309818?token=186A3C95214FB
D7FFAF2696FF0C729BA9898C083389382871689FDD15BF37C4AF2430D508B0F199C10
improving tensile fatigue strength of thick sheet.” In particular, that paper, from the 17th
International Conference on Metal Forming, Metal Forming 2018, 16-19 September 2018,
Toyohashi, Japan, states in the second paragraph on page 5 of the 7 page PDF (or the page
“For the purpose of improving fatigue strength of the steel sheet, the edge of the
hole was thicken. Thus the fatigue strength was improved as compared to the normal
piercing hole without thickening. …The result shows that the punch holes including
16
thickening with compressed rollover at the holes edge of thick steel sheet are effective in
So to support heavy monitors to which the bracket of the ‘093 Patent attaches, the
grommets have raised edges as reinforcement so the sheet to which the grommets are
given its broadest reasonable construction in light of the specification of the patent
in which it appears.” See also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271,
The language of the challenged claim does not need to be construed for
purposes of the invalidity ground set forth in this petition. The claim language
should therefore be given its plain meaning to a person of ordinary skill in the art.
The claim of the ’093 Patent is unpatentable under 35 U.S.C. section 171 for lacking
ornamentality.
The claim of the ’093 Patent is therefore not directed at patentable subject matter,
17
A. Lack of Ornamentality
ornamental.” See M.P.E.P. § 1504.01(c). That is, it must have been “created for
‘the claimed design is ‘dictated by’ the utilitarian purpose of the article.’” High Point Design
LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013)
(citations omitted).
ornamental the claimed design is viewed in its entirety, for the ultimate question is
not the functional or decorative aspect of each separate feature, but the overall
the utilitarian purpose of the article.” See L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d
patent shall be given its broadest reasonable construction in light of the specification of the
patent in which it appears." 37 C.F.R. § 42.200(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S.
exercise of the rulemaking authority that Congress delegated to the ... Office"). With regard
18
than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,679 (Fed. Cir. 2008)
(en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)). The Board found that the
The Board went on to note that under 35 U.S.C. § 171, a design patent may be
granted only for a "new, original, and ornamental design." "If the patented design is
primarily functional rather than ornamental, the patent is invalid." Power Controls Corp. v.
Hybrinetics, Inc., 806 F.3d 234,238-39 (Fed. Cir. 1986) (vacating a preliminary injunction
"[i]n view of the strong and clear showing of functionality" made by a declarant). However,
''the fact that the article of manufacture serves a function is a prerequisite of design
patentability, not a defeat thereof. The function of the article itself must not be confused
with 'functionality' of the design of the article." Hupp v. Sirojlex of Am., Inc., 122 F.3d 1456,
1460 (Fed. Cir. 1997). The inquiry into whether a claimed design is primarily functional
dispositive factor in evaluating the legal functionality of a claimed design." Ethicon Endo‐
Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312,1329-30 (Fed. Cir. 2015). Further, a proper
inquiry assesses "the overall appearance of the article-the claimed design viewed in its
entirety," "not the functionality of elements of the claimed design viewed in isolation." Id. at
In the present case, the fact that the VESA standards dictate the claimed design
of the ‘093 Patent have been shown above in the “Relevant Field” Section. And the
raised grommets of the claimed design of the ‘093 Patent acting to functionally
19
reinforce has been shown above. In addition, assessing the availability of alternative
designs to ascertain whether the claimed design of the ‘093 Patent is primarily
functional shows that there are a variety of brackets to perform the same function as
the bracket protected by the ‘093 Patent ‐‐ and they all have the same design or
This is because the black-lined portions of the figures of the ‘093 Patent are
necessary for the bracket to function. The black-lined portions of the figures of the ‘093
Patent are not anything but the functional requirements that are common to similarly
marketed brackets for the same function – this is because to function, the bracket of
claimed design of the ‘093 Patent must have tabs and grommets that meet VESA standards
and are sized and positioned for a specific line of flat panel displays.
As one example showing that there is not any availability of alternative designs
because the design is dictated by the bracket’s function, Gladiator Joe makes an HP Pavilion
Monitor VESA Adapter for CVB100 Kit Hp 25xw 25cw 27xw 27cw that is identical, but for
raised grommet edges, to the bracket protected by the ‘093 Patent. See
https://www.ebay.com/itm/HP-Pavilion-Monitor-VESA-Adapter-for-CVB100-Kit-Hp-
25xw-25cw-27xw-
27cw/191976160276?epid=5016453995&hash=item2cb2abbc14:g:H5AAAOSw8S9a0K15:
rk:1:pf:0 (Ex. 1007 at 1.) The tabs and the grommets are the same as those of the bracket
of the ‘093 Patent, as shown in the below figures, the Gladiator Joe product shown first, and
20
As a second example showing that there is not any availability of alternative designs
because the design is dictated by the bracket’s function, VIVO makes a VESA Adapter for HP
27xw, 25xw, 24xw, 23xw, 22xw, 22cwa, 27cw, 25cw, 23cw, 22cw that is identical to the
bracket protected by the ‘093 Patent, but for raised grommet edges. See
https://www.ebay.com/itm/VESA-Adapter-for-HP-27xw-25xw-24xw-23xw-22xw-22cwa-
27cw-25cw-23cw-
22cw/362116029052?hash=item544fcc1a7c:g:1uYAAOSwZW5aAdjf:sc:USPSPriority!9458
7!US!-1:rk:3:pf:0 (Ex. 1008 at 1.) The tabs and the grommets are the same as those of the
bracket of the ‘093 Patent, as shown in the below figures, the VIVO product shown first, and
21
Telling is that the VIVO product also has the below side and back side views showing the
exact spacing/ positioning of grommets as the bracket of the ‘093 Patent matching the
VESA standard measurements (both views below are of the VIVO product) (Ex. 1009 at 1.):
22
And, from the owner of the ‘093 Patent, here is the bracket of the ‘093 Patent with VESA
https://www.humancentric.com/products/vesa-adapter-bracket-for-hp-pavilion-cw-xw-
23
Even the length of the tabs is roughly the same because they must interlock into slots on an
HP monitor. Moreover, even the below product description, appearing next to the above
image at the following link, by the owner of the ‘093 Patent, notes the VESA standards that
24
PRODUCT DESCRIPTION
Bought an HP Pavilion monitor and disappointed that you can't VESA mount it? Unable to
find the HP L6V75AA (CVB100 VESA Mount Adapter Kit)? This bracket enables you to
mount select HP Pavilion monitors to a desk mount, articulating arm, or any other VESA
mounting system.
Pavilion 22cw
Pavilion 22cwa
Pavilion 22xw
Pavilion 23cw
Pavilion 23xw
Pavilion 24cw
Pavilion 24xw
Pavilion 25cw
Pavilion 25xw
Pavilion 27cw
Pavilion 27xw
**DOES NOT FIT ANY OTHER BRANDS OR MODELS. Check to make sure your monitor is
listed before ordering! **
Included are nuts to secure the bracket to the VESA mount, and the only tool required for
installation is a screwdriver that fits the screws that came with your VESA mount.
A VESA mount can be used to save desk space or provide additional viewing flexibility by
mounting the monitor on a stand, movable arm, multiple-monitor mount, or a wall mount.
Thus, the overall appearance of the bracket of the ‘093 Patent is the same as
similarly marketed brackets because the overall appearance of the bracket of the ‘093
Patent is not a design choice – but rather a functional requirement dictated by needing to
fit a monitor and meeting VESA standards -- and needing to fit (as the owner of the ‘093
Patent notes above) VESA mounts. The grommets of the ‘093 Patent are required by VESA
standards as aforementioned; and the tabs of the ‘093 Patent are required to be angled at
25
roughly ninety degrees to fit onto (in the case of the top tab) and into (in the case of the
bottom tabs) the back of the flat panel which the bracket of the ‘093 Patent supports.
Moreover, the bottom tabs are required to be shaped in such a way in order to interlock
with the slots in the back of the flat panel into which the bracket of the ‘093 Patent
supports. As noted previously, having raised edges for grommets is known to increase the
Applying the Board’s guidance as noted above, the inquiry into whether the claimed
design of the ‘093 Patent is primarily functional should begin by assessing the availability
functionality of a claimed design. In the case of the claimed design of the ‘093 Patent, there
VESA standards and needing to fit on and into monitors made by Hewlett Packard. Further,
as the Board noted above, a proper inquiry assesses "the overall appearance of the article-
the claimed design viewed in its entirety," "not the functionality of elements of the claimed
design viewed in isolation." And when the claimed design of the ‘093 Patent is viewed in its
entirety, there does not appear to be anything that is not dictated VESA standards and the
Hewlett Packard monitors that it is designed to fit. Even the raised edges for the grommets
is known to increase the strength of sheet to which the grommets are attached.
In short, if the claimed design of the ‘093 Patent did not have the overall appearance
that it does, then the claimed design of the ‘093 Patent would not function. The elements
of the claimed design of the ‘093 Patent – viewed in isolation as well as together –
must appear as they do so that the bracket of the ‘093 Patent can function. Without
the elements of the claimed design of the ‘093 Patent – viewed in isolation as well as
26
together – the claimed design of the ‘093 Patent would not fit the very standard
Thus, it is more likely than not that Petitioner should prevail on a ground of
The claim of the ’093 Patent should be invalidated since the claimed design
in the claimed design indicating that a design choice was made for the purpose of
ornamenting. In fact, the obverse is true: each of the design choices, taken individually --
As noted before, the claimed design is the only solid-lined parts of the design, which
are (1) the top and bottom tabs and (2) the grommets arranged in diagonal pairs toward
the four corners of the plate. This can easily be seen in the following figure from US D
27
There are several prominent design features in US D 823,093:
(1) US D 823,093 shows a top tab and two bottom tabs relatively perpendicular to
the backplate. This is not a design choice for ornamental purposes, but purely
functional as the top tab must be positioned in such a way to fit and screw onto a
bump in the specific flat panels to which it can attach. And this is not a design
choice for ornamental purposes, but purely functional, as the bottom tabs must
28
be positioned is such a way to fit into pre-existing slots in the specific flat panels
to which it can attach.
(2) US D 823,093 shows grommets in a spaced pattern that is also not a design
choice for ornamental purposes, but purely functional as the grommets must be
positioned in such a way to match VESA standards for flat panel mounts. As
aforementioned, the grommet spacing / positioning meets a VESA standard that
is not a design choice. And the size of the grommets also meets a VESA standard
that is not a design choice. Even the raised grommet edges are known, in the
metal forming industry, to increase the strength of the sheet to which the
grommets are attached.
The look of those individual elements—as well as the look of the entire claimed
design – is dictated by its functionality. The tabs and grommets are disposed where they
are and positioned where they are because of functional – not ornamental – considerations.
Nothing about the overall shape or the design and placement of individual elements, for
instance, can serve an ornamental purpose because they are dictated by a functional
purpose. Change any design elements and the design of the ‘093 patent simply won’t
functionally work. Therefore, the claimed design is primarily functional and cannot be the
29
VIII. CONCLUSION
For all of the foregoing reasons, Petitioner respectfully requests post-grant review of the
Respectfully submitted,
1/15/2019
Date: _____________ /mlg/
_______________________________
GREENBERG & LIEBERMAN, LLC Michael L. Greenberg
1775 Eye Street, NW Registration No. 47312
Suite 1150 Attorney for Petitioner
Washington, DC 20006 Sattler Tech Corp.
Telephone: (202) 625-7000
Facsimile: (202) 625-7001
30
CERTIFICATE OF SERVICE
The undersigned hereby certifies that (1) the above captioned PETITION
will be served via FedEx on January __16_____, 2019 at the official correspondence address
for the attorney of record for U.S. Patent No. D 823,093 as shown in the USPTO PAIR
system: