Petition for Inter Partes Review of a Design Patent Denied in IPR2013-00259 of D527,834 for a “Building Panel”

September 25th, 2013

On September 24, 2013, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a decision denying inter partes review of Centria’s U.S. Design Patent No. D527,834 directed to a design for building panels. The petition for inter partes review was filed on April 30, 2013 by ATAS International. The petition and mandatory notices cited related litigation in the U.S. District Court for the Western District of Pennsylvania where Centria filed a complaint alleging patent infringement against ATAS on March 1, 2013. See Centria v. Atas International, Inc., Western District of Pennsylvania (PAWD), Case No: 2:13-cv-00309-NBF.

In its petition, ATAS asserted nine grounds of unpatentability based on anticipation and obviousness, each ground challenging the sole claim of the ‘834 patent. ATAS asserted, as prior art, five building panels depicted in various publications. On July 24, 2013, Centria filed a preliminary response arguing that ATAS had not shown a reasonable likelihood of prevailing on any ground. After reviewing ATAS’s petition and Centria’s preliminary response, the Board concluded that ATAS had not satisfied its burden to show, under 35 U.S.C. § 314(a), that there is a reasonable likelihood of prevailing with respect to the ’834 patent’s single claim. In a detailed decision, the Board denied the petition for inter partes review and declined to institute trial on the challenged claim. (Decision, available here).

A decision by the Board on whether to institute a trial is final and nonappealable. 35 U.S.C., § 324(e) and 37 C.F.R. § 42.71(c). However, a party dissatisfied with a decision not to institute trial may file a request for rehearing without prior authorization from the Board within 30 days of the decision. 37 C.F.R. § 42.71(d)(2). When rehearing a decision on petition, a panel of PTAB judges reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).

ATAS’s petition is the second of five pending inter partes review proceedings on design patents. The first petition for inter partes review against a design patent was filed December 15, 2012 and instituted on April 25, 2013. (See IPR2013-00072 involving D617,465 directed to a drinking cup). Recently, the patent owner in the ‘072 proceeding filed a response and motion to amend. The remaining petitions were filed by Sensio against three related design patents assigned to Select Brands directed to designs for multiple crock buffet servers. (See U.S. Design Patent No. D686,447, IPR2013-00580; D699,731, IPR2013-00500); D675,864, IPR2013-00501).

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