Alberts v. Kappos , 917 F. Supp. 2d 94 ( 2013 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AUDREY M. ALBERTS,
Plaintiff,
v. Civil Action No. 10-1727 (JEB)
HON. DAVID J. KAPPOS,
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark
Office,
Defendant.
MEMORANDUM OPINION
Plaintiff Audrey M. Alberts filed a patent application at the U.S. Patent and Trademark
Office for the invention of a carpet-tile area rug, but the PTO rejected a number of her claims as
obvious. After exhausting the PTO’s administrative-appeal process, Plaintiff brought this civil
action under 35 U.S.C. § 145, seeking a judgment that she is entitled to a patent on the rejected
claims. The parties have now cross-moved for summary judgment on the issue of patentability.
Because there is no genuine dispute of material fact with the PTO’s prior determination of
obviousness, the Court will grant judgment for Defendant.
I. Background
A. Plaintiff’s Claimed Invention
Plaintiff’s invention discloses a “carpet-tile area rug,” which is composed of an
arrangement of multiple carpet tiles laid adjacent to each other, secured to the floor without
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adhesive, such that the carpet tiles collectively form an “area rug” of a convex shape.
Specifically, the Court treats claim 1 of Plaintiff’s patent application as representative:
A modular area rug to cover a floor surface comprising: only a
plurality of carpet tiles covering only a portion of the floor surface;
wherein no adhesive is used to secure the carpet tiles to the floor
surface; and wherein an edge of each carpet tile abuts an edge of at
least one adjacent carpet tile such that a perimeter of the modular
area rug forms a convex figure.
Defendant’s Statement of Undisputed Material Facts (DSUMF), ¶ 12.
Although laypersons should comprehend the majority of claim 1’s terms, the term
“convex figure” may not be so apparent. Plaintiff’s patent application defined convex as
“pertaining to a region for which a straight line segment between any two points of the region is
entirely within the region. In other words, a convex figure is one which does not include any
interior angles of greater than 180 degrees.” DSUMF, ¶ 31 (citation omitted). Most commonly
known shapes – e.g., ovals, squares, rectangles, circles, pentagons, and octagons – are convex.
For additional clarity, the Court has provided two illustrations below, which demonstrate the
distinction between convex and non-convex shapes.
B. Prior Art
In its subsequent analysis of obviousness, the Court will be comparing Plaintiff’s claimed
invention to what is called “prior art.” Prior art may be defined as “knowledge that is available,
including what would be obvious from it, at a given time, to a person of ordinary skill in the art.”
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed. Cir. 1997) (citation omitted).
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The Court will look first at general carpet-tile prior art and then explain the prior art contained in
a specific catalog of Interface-brand carpet tiles.
1. General Carpet-Tile Prior Art
Plaintiff does not deny that other carpet-tile area rugs existed prior to her claimed
invention. See Pl. Mot. at 3. Among the prior art, an issued patent disclosed a carpet-tile area
rug akin to Plaintiff’s claimed invention, but its carpet tiles were glued to a plastic mat, as
opposed to being adhesive free. Id. Another patent application disclosed a carpet-tile area rug
where carpet tiles were secured without adhesive within an outer frame. Id. “Free-lay” carpet
tiles, additionally, were long sold for the purpose of “wall-to-wall installation where at least the
non-border carpet tiles were not attached to the subfloor with adhesives.” Id. Area rugs,
moreover, “come in a variety of shapes and sizes, including common rectangular or square
shapes, oval and round shapes, and runner styles.” DSUMF, ¶ 35.
2. Interface-Brand Carpet-Tile Prior Art
The parties’ summary-judgment papers chiefly zero in on a single prior-art reference – an
eight-page excerpt from a 150-page “printed marketing publication for Interface brand modular
carpet tiles” that Plaintiff disclosed to the PTO during patent prosecution (“Interface Excerpt”).
See DSUMF, ¶¶ 14, 63-64; see also Plaintiff’s Statement of Undisputed Material Facts
(PSUMF), ¶¶ 3, 8. The Interface Excerpt consists of the front and back covers of the full
catalog and six pages featuring full-page photographs of unconventional depictions or
arrangements of carpet tiles. See A82-89 (Interface Excerpt). 1 Most significantly, one of the
photographs displays an arrangement of Interface’s carpet tiles laid contiguously on a partial
1
The administrative record (ECF 34) filed with the summary-judgment motions contains pages marked A1-422.
3
segment of a floor to collectively form a non-convex shape. This “Interface photo” is
reproduced here.
The caption in the bottom right corner of the photograph reads:
When you put it down, it picks you up.
Interface invented glue-free carpet tile,
then discovered how much fun it was to play with it.
Transform an empty space into a world all your own.
Just because a floor isn’t round doesn’t mean
The tiles have to be square.
The options are limited only to your imagination.
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Let the game begin.
A83. The main point of contention between the parties is the interpretation of this Interface
photo.
During patent prosecution, Plaintiff submitted only the eight-page Interface Excerpt to
the PTO, but has since obtained the full-length sales catalog from which the excerpt was
extracted. See A75, 77, 82-89 (Information Disclosure Statement); Def. Rep., Exh. 1 (Full
Interface Catalog). The majority of the full catalog conventionally displays Interface’s various
carpet-tile product lines and summarizes ordering logistics. It also, however, contains assorted
full-page photographs that playfully display Interface’s carpet tiles in unconventional
configurations. One of the full-page photographs, for example, exhibits the carpet tiles in an
arrangement akin to a hopscotch board, while another shows the carpet tiles in a configuration
resembling a lane in a bowling alley. See Full Interface Catalog at ECF pp. 99, 156. The
contested Interface photo and the hopscotch photo were present in the Interface Excerpt
submitted to the PTO, but other imaginative full-page photographs of carpet-tile arrangements,
such as the bowling-alley photo, only appear in the recently submitted complete Interface
catalog.
C. Procedural History
On August 20, 2004, Plaintiff filed a patent application at the PTO for a “Carpet Tile
Area Rug,” which claimed the benefit of an earlier provisional application filed August 21, 2003.
See Compl., ¶¶ 5, 8; DSUMF, ¶¶ 1-2; PSUMF, ¶ 1. After more than three years of patent
prosecution, the examiner issued a final rejection of Plaintiff’s patent claims. See A267-77
(Examiner’s Second Final Rejection).
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Of note, claim 1 of Plaintiff’s patent application did not initially contain a “convex-
figure” limitation. During patent prosecution, however, the examiner rejected a previous form of
the claim as anticipated by the Interface photo and the hopscotch photo. See A164, 169
(Examiner’s First Final Rejection), 272-73. In an effort to overcome the rejection, Plaintiff
amended claim 1 to add the present convex-figure limitation. See DSUMF, ¶ 30. The examiner
subsequently withdrew her anticipation rejection, but found that a mere change in shape was an
obvious variation upon those photos. See A272-73. Aside from the newly added convex-figure
limitation, claim 1’s wording is, in all relevant aspects, otherwise identical to what the examiner
previously rejected as anticipated. See DSUMF, ¶ 30.
Plaintiff subsequently appealed to the PTO’s Board of Patent Appeals and Interferences
(BPAI). See A292 (Plaintiff’s Notice of Appeal to BPAI). There, she argued that the Interface
photo merely demonstrated an “artistic configuration[],” rather than suggesting a “utilitarian
usage,” such as an area rug. See A297, 309 (Plaintiff’s BPAI Appeal Brief). Plaintiff argued,
moreover, that the examiner improperly relied upon hindsight to determine that the Interface
photo was an area rug rather than an artistic configuration. See A310. The BPAI rejected those
arguments and ultimately affirmed rejections of claims 1-6, 11-18, and 23-25 as obvious over
prior art. See A398, 408-09 (BPAI Decision). Thereafter, the BPAI granted Plaintiff’s request
for rehearing, but did not alter its decision. See A419, 421 (BPAI Decision on Rehearing).
Plaintiff then brought the instant civil action pursuant to 35 U.S.C. § 145.
II. Legal Standard
Summary judgment may be granted if “the movant shows that there is no genuine dispute
as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986); Holcomb v.
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Powell, 433 F.3d 889, 895 (D.C. Cir. 2006). A fact is “material” if it is capable of affecting the
substantive outcome of the litigation. Holcomb, 433 F.3d at 895; Liberty Lobby, Inc., 477 U.S.
at 248. A dispute is “genuine” if the evidence is such that a reasonable jury could return a
verdict for the nonmoving party. See Scott v. Harris, 550 U.S. 372, 380 (2007); Liberty Lobby,
Inc., 477 U.S. at 248; Holcomb, 433 F.3d at 895. “A party asserting that a fact cannot be or is
genuinely disputed must support the assertion by citing to particular parts of materials in the
record.” Fed. R. Civ. P. 56(c)(1)(A).
When a motion for summary judgment is under consideration, “[t]he evidence of the non-
movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Liberty
Lobby, Inc., 477 U.S. at 255; see also Mastro v. PEPCO, 447 F.3d 843, 850 (D.C. Cir. 2006);
Aka v. Wash. Hosp. Ctr., 156 F.3d 1284, 1288 (D.C. Cir. 1998) (en banc). On a motion for
summary judgment, the Court must “eschew making credibility determinations or weighing the
evidence.” Czekalski v. Peters, 475 F.3d 360, 363 (D.C. Cir. 2007).
The nonmoving party’s opposition, however, must consist of more than mere
unsupported allegations or denials and must be supported by affidavits, declarations, or other
competent evidence, setting forth specific facts showing that there is a genuine issue for trial.
Fed. R. Civ. P. 56(e); Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). The nonmovant is
required to provide evidence that would permit a reasonable jury to find in its favor. Laningham
v. United States Navy, 813 F.2d 1236, 1242 (D.C. Cir. 1987). If the nonmovant’s evidence is
“merely colorable” or “not significantly probative,” summary judgment may be granted. Liberty
Lobby, Inc., 477 U.S. at 249-50.
On obviousness determinations in patent cases, “a district court can properly grant, as a
matter of law, a motion for summary judgment on [patentability] when the factual inquiries into
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obviousness present no genuine issue of material facts.” Ryko Mfg. Co. v. Nu-Star, Inc., 950
F.2d 714, 716 (Fed. Cir. 1991). “[T]he mere incantation of fact findings listed in [Graham v.
John Deere Co., 383 U.S. 1 (1966)] cannot establish the impropriety of issuing a summary
judgment when there is no material issue of fact requiring a trial to resolve, and the facts of
record require a holding of [unpatentability].” Union Carbide Corp. v. Am. Can Co., 724 F.2d
1567, 1571 (Fed Cir. 1984) (quoting Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d
774, 778-79 (Fed. Cir 1983)). Therefore, “it is incumbent on the trial judge to look beyond mere
denials or arguments with respect to [the factual inquiries underlying obviousness
determinations]. On the other hand, the court must resolve all doubt respecting the presence or
absence of factual issues in favor of the one against whom summary judgment is sought.” Id.III. Analysis
Section 145 of the Patent Act states:
An applicant dissatisfied with the decision of [the BPAI] may . . .
have remedy by civil action against the [PTO] Director in the
United States District Court for the District of Columbia . . . . 2 The
court may adjudge that such applicant is entitled to receive a patent
for his invention, as specified in any of his claims involved in the
decision of the [BPAI], as the facts in the case may appear and
such adjudication shall authorize the Director to issue such patent .
...
35 U.S.C. § 145 (2010). An appeal from the PTO’s BPAI to a district court under § 145 is a
unique “‘hybrid of an appeal and a trial de novo.’” Hitachi Koki Co. v. Dudas, 556 F. Supp. 2d
41, 46 (D.D.C. 2008) (emphasis deleted) (quoting Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1345 (Fed. Cir. 2000)). The Court makes a “de novo determination” on the ultimate legal
question of patentability. Newmann v. Quigg, 877 F.2d 1575, 1579 (Fed. Cir. 1989); see also
2
On the filing date of this case, § 145 named the U.S. District Court for the District of Columbia as the venue for
such civil actions. Due to the 2011 passage of the America Invents Act, the current version of the statute now places
venue in the Eastern District of Virginia. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 9, 125
Stat. 284, 316 (2011).
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Burlington Indus., Inc. v. Quigg, 822 F.2d 1581, 1584 (Fed. Cir. 1987) (“Determinations not in
accordance with law must be reversed . . . .”). A disappointed applicant is, additionally, “free to
introduce new evidence . . . subject only to the . . . Federal Rules of Evidence and the Federal
Rules of Civil Procedure.” Kappos v. Hyatt, 132 S. Ct. 1690, 1700 (2012) (citation omitted).
Where such new evidence is presented, the Court must make “a de novo finding [that] take[s]
such evidence into account together with the evidence before the board.” Id. (citation omitted).
If the parties do not submit new evidence during a § 145 proceeding, “the reviewing court must
[instead] apply the APA’s substantial evidence standard to Patent Office fact findings.” Hyatt v.
Kappos, 625 F.3d 1320, 1336 (Fed. Cir. 2010) (en banc), aff’d, 132 S. Ct. 1690 (2012). Even
when weighing new evidence, however, the Court may still consider at its discretion “the
proceedings before and findings of the [PTO] in deciding what weight to afford . . . [the] newly-
admitted evidence.” Kappos, 132 S. Ct. at 1700 (citation omitted).
The Court will start by explaining some of the patent law relevant to the dispute and then
address Plaintiff’s challenges to the BPAI’s decision.
A. Applicable Law
1. Statutory Requirements of Patentability
Among the statutory requirements of patentability, 35 U.S.C. § 102 requires a patent to
be novel, and § 103 requires it to be non-obvious. The test for novelty looks at whether a single
prior-art reference “disclose[s] each and every limitation of [a] claim.” Atlas Powder Co. v.
Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). If this is the case, the reference is said to
“anticipate” the claim. Id.; see also Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
1272, 1282 (Fed. Cir. 2000). Such anticipation renders a claim unpatentable.
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Even if a particular claim is not anticipated, it must overcome the additional hurdle of §
103’s non-obvious requirement. Under § 103(a),
[a] patent may not be obtained . . . if the differences between the
subject matter sought to be patented and the prior art are such that
the subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the art
to which said subject matter pertains.
While the novelty/anticipation inquiry compares a patent claim to just one prior-art reference at a
time, the test for obviousness accounts for all analogous prior art that existed just before the date
of the patent applicant’s invention. See Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351,
1364 (Fed. Cir. 2008) (“Obviousness can be proven by combining existing prior art references,
while anticipation requires all elements of a claim to be disclosed within a single reference.”). In
this case, the BPAI relied on obviousness, not anticipation. A400, 407-09. That is where the
battle is waged here.
The ultimate determination of obviousness “is a question of law based on underlying
factual determinations.” Rockwell Int’l Corp. v. United States, 147 F.3d 1358, 1362 (Fed. Cir.
1998); see also Burlington Indus., 822 F.2d at 1584. The “underlying [factual] determinations
include (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art; and (4) the extent of any proffered
objective indicia of nonobviousness [i.e., secondary considerations].” Rockwell Int’l, 147 F.3d
at 1362 (citing Graham, 383 U.S. at 17-18). In undertaking this inquiry into the four “Graham
factors,” courts must consider all evidence and “step backward in time and into the shoes worn
by [the person having ordinary skill in the art before the claimed invention] was made . . . [to]
determine whether the . . . claimed invention as a whole would have been obvious at that time to
that person.” Panduit Corp. v. Dennison Mfg., Co., 810 F.2d 1561, 1566 (Fed. Cir. 1987)
10
(emphasis in original). Hindsight, therefore, may not enter into the Court’s obviousness
determination. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A factfinder
should be aware . . . of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (cautioning that courts must
not “‘slip[] into use of hindsight’”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is
impermissible to use the claimed invention as an instruction manual or ‘template’ to piece
together the teachings of the prior art so that the claimed invention is rendered obvious.”).
The Supreme Court has cautioned that obviousness determinations should not be
controlled by “[r]igid preventative rules that deny factfinders recourse to common sense.” KSR,
550 U.S. at 421. Therefore, “[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What
matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid
under § 103.” Id. at 419. In addition, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield predictable results.” Id.
at 416.
2. Patent-Prosecution Burden of Proof
In patent prosecutions, a burden-shifting procedure occurs between the examiner and the
applicant, which is “merely a procedural device that enables an appropriate shift of the burden of
production.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citation omitted). The
examiner carries the initial burden of establishing a prima facie case of unpatentability “by
adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified
and able to respond.” Id. The statement of the prima facie case, however, “need not be a full
exposition on every conceivable deficiency of a claim . . . . Rather, its purpose is simply to
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provide sufficient notice to the applicant to facilitate his effective submission of information.”
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). Thereafter, “the burden shifts to the
applicant to rebut the prima facie case with evidence and/or argument.” Id. Finally,
“[p]atentability vel non is then determined on the entirety of the record, by a preponderance of
evidence and weight of argument.” In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002).
B. Plaintiff’s Challenges
1. Prima Facie Case
As a threshold matter, Plaintiff selectively quotes language outlining patent prosecution’s
burden-shifting framework from In re Glaug, 283 F.3d at 1338, to argue that Defendant must
again make out a prima facie case of obviousness in the instant civil action because of the newly
submitted full Interface catalog. See Pl. Opp./Rep. at 6. She asserts that she is “entitled to a
patent” because Defendant purportedly did not make a sufficient “prima facie showing of
obviousness.” Id. Defendant counters that the prima facie requirement cited by Plaintiff is
“‘merely a procedural device that enables an appropriate shift of the burden of production’”
during patent prosecution, and that Plaintiff’s “argument that the USPTO is required to make a
second prima facie case [before this Court] is unsupported by any case law.” Def. Rep. at 7.
Defendant has the better of this argument.
Plaintiff appears to urge the Court to improperly allow the meaning of “prima facie case”
in the context of ordinary litigation to supplant its meaning in patent prosecution. See In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 676 F.3d 1063,
1080 n.7 (Fed. Cir. 2012) (stressing that “prosecution and litigation contexts are distinct”). The
Federal Circuit has emphasized, moreover, that an “applicant does not start over to prosecute his
application before the district court [in § 145 proceedings] unfettered by what happened in the
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PTO.” Fregeau v. Mossinghoff, 776 F.2d 1034, 1038 (Fed. Cir. 1985); see also Kappos, 132 S.
Ct. at 1700 (“[T]he district court may . . . ‘consider the proceedings before and findings of the
Patent Office . . . . ’”) (quoting Hyatt, 625 F.3d at 1335).
The examiner succinctly explained why Plaintiff’s claims were obvious in light of the
Interface Excerpt, thereby satisfying her initial prima facie burden of providing sufficient notice
to Plaintiff during the patent application’s prosecution. See A272-73. The PTO, consequently,
did not fail to meet its prima facie burden at that stage. Even if Defendant might have borne the
burden to do so again in the instant § 145 proceeding – which the Court does not believe to be
the case – Defendant has met it by presenting argument that the newly submitted full Interface
catalog dictates no different result.
2. Obviousness
Before moving to the thrust of Plaintiff’s substantive argument, there is one last
procedural matter to address. The BPAI treated claim 1 of Plaintiff’s patent application as
representative of all rejected claims pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2011). 3 See A407.
Plaintiff here does not present precise claim-by-claim arguments in her summary-judgment
papers, has not argued that the BPAI erred in its treatment of claim 1 as representative, and has
not opposed Defendant’s position of doing so in the instant § 145 proceeding. The Court,
accordingly, also will treat claim 1 as representative of all rejected claims.
Turning finally to the merits of Plaintiff’s case, the Court observes that she challenges
essentially only the first of Graham’s obviousness factors: the scope and content of the prior art.
While the Court will address that factor first, it will also analyze the remaining Graham factors.
See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)
3
Due to an amendment of the Code of Federal Regulations, the provision allowing the BPAI to consider an
individual claim as representative of all claims is now found at § 41.37(c)(iv) (2012).
13
(“[T]he obviousness inquiry requires examination of all four Graham factors.”) (citation
omitted).
a. Scope and Content of the Prior Art
“The ‘scope’ of the prior art determines what references fall within the relevant prior art
that can be applied to reject a claim [as obvious]. The ‘content’ of the prior art is what those
references teach a person of ordinary skill in the art.” Joy Techs., Inc. v. Quigg, 732 F. Supp.
227, 232-33 (D.D.C. 1990). The Court looks at the scope and content separately.
i. Scope
A prior-art reference only falls within the scope of the prior art if it is “analogous.” The
gravamen of Plaintiff’s argument seems to be that the Interface photo is not analogous art. The
Court is unconvinced.
In determining whether prior art is analogous, the Federal Circuit has adopted a “two-
fold” test. Union Carbide, 724 F.2d at 1572. Under the first prong, prior art that “is from the
same field of endeavor, regardless of the problem addressed,” is analogous. Innovention Toys,
LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citation omitted). Even if not
within the same field of endeavor, however, the second prong still deems prior art analogous if it
is “reasonably pertinent to the particular problem with which the inventor is involved.” Id. “A
reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in considering his problem.”
Id. (citation omitted).
In addressing the first prong – that is, whether the prior art is from the same field of
endeavor – Plaintiff insists that a person of ordinary skill in the art viewing the Interface photo
within the context of the full Interface catalog would only perceive an artistic arrangement, not
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an area rug. See Pl. Mot. at 10-12; Pl. Opp./Rep. at 3-5. She explains that the photograph was
located within a grouping of artistic “introductory” marketing photographs, while the catalog’s
other pages mostly disclose carpet tiles laid wall to wall in “‘practical’ office configurations.”
Pl. Mot. at 10-11. Plaintiff asserts that a potential area rug is only now recognizable in the
disputed photo with the benefit of hindsight. See id. at 12; Pl. Opp./Rep. at 4-5.
If the Interface photo merely demonstrates an artistic configuration, but not an area rug, it
is not within the same field of endeavor. Yet anyone looking at the photo can observe that it
displays a grouping of carpet tiles on only a portion of the floor, suggesting a type of area rug. In
fact, as the BPAI pointed out, “Appellant’s contention that the modular area rug depicted [in the
Interface photo] is an ‘artistic configuration’ that is ‘not presented as suggestions for utilitarian
usage’ is belied by the accompanying caption, which plainly suggests that the carpet tiles may be
arranged as desired.” A408. Plaintiff’s newly submitted evidence demonstrating additional
creative photographs in the complete catalog does nothing to alter this common-sense inference.
Nor is there a hindsight problem. Merely looking between the pillars in the Interface
photo plainly reveals an area rug. Again, the BPAI correctly observed: “[W]e agree with the
Examiner, that the shape of the modular area rug is nothing more than a design choice, and does
not patentably distinguish the claims from Interface . . . . [W]e agree with the Examiner that it
would have been obvious to form the modular area rugs in Interface in convex shapes.” A408.
Even were the first prong not met, the second would be, particularly given the latitude the
Federal Circuit has permitted. Because “‘familiar items may have obvious uses beyond their
primary purposes,’” the Court must construe the scope of analogous art broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 420).
Seemingly dissimilar prior art, therefore, is often analogous under the second prong of the
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analogous-art test. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) (folding bed was analogous to claimed treadmill invention for its disclosure of folding
mechanism); In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994) (cabinets and piano lid were
analogous art to portable computer’s claimed “clamshell style” opening mechanism);
Innovention Toys, 637 F.3d at 1321-23 (computer-based chess game was analogous art to
claimed physical board game); Wyers, 616 F.3d at 1238 (Fed. Cir. 2010) (padlocks were
analogous art to claimed trailer-hitch locking mechanism).
Employing this standard, even if the Court were to believe that the Interface photo does
not demonstrate an area rug, the photograph would still be reasonably pertinent to the problem
Plaintiff’s claimed invention addresses. Plaintiff’s invention attempts to solve the problem of
creating an area rug with adhesive-free carpet tiles. Whether a person of ordinary skill in the art
would perceive Interface’s carpet-tile arrangement as an art piece or an area rug is immaterial.
Because the Interface photo exhibits a grouping of adhesive-free carpet tiles laid across only a
portion of the floor, a person of ordinary skill in the art would undoubtedly look to it in
determining how to form an adhesive-free area rug.
Plaintiff also argues for the first time in her Reply that Interface itself did not recognize
an area rug in the photograph based upon statements in a patent application Interface designers
filed three years after the full catalog was published. See Pl. Opp./Rep. at 7-8. Although she has
effectively forfeited this argument, the Court also finds it immaterial. The argument – even if
taken as true – does not alter the Court’s finding that a person having ordinary skill in the art
would find the photograph reasonably pertinent to the problem addressed by the invention.
There is, accordingly, no genuine dispute of material fact that the Interface photo is analogous
art.
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ii. Content
Although the prior art may be analogous, the Court must also determine what it teaches to
a person of ordinary skill in the art. Prior art is “relevant for all it contains, including what it
fairly suggests to one of ordinary skill in the art.” Markman v. Lehman, 987 F. Supp. 25, 32
(D.D.C. 1997). The parties do not dispute that area rugs commonly come in conventional
convex shapes and that convex-shaped area rugs are analogous art. The parties do disagree,
however, on whether the Interface photo displays adhesive-free carpet tiles. The Court
ultimately finds that there is no genuine dispute of material fact that the photograph does so.
In arguing that the carpet tiles in the disputed photograph use adhesive, Plaintiff names
three Interface carpet-tile lines that do so and singles out just nine pages from the full Interface
catalog that she believes demonstrate carpet tiles secured to a surface (usually a wall) with
adhesive. Pl Mot. at 12; Pl. Opp./Rep. at 11. Plaintiff thus surmises that because these selected
pages from the full Interface catalog might demonstrate carpet tiles mounted to objects such as
walls with adhesive, the carpet tiles in the Interface carpet-tile photograph might also have been
secured to the floor with adhesive. See Pl. Mot. at 12; Pl. Opp./Rep. at 11-12.
Yet, an Interface sales brochure titled “Why Buy a Modular Carpet System That Has to
Be Stuck to the Floor with Glue?” helps demonstrate that adhesive-free carpet tiles were an
integral component of Interface’s product lines. See DSUMF, ¶¶ 22-24, 27. More significantly,
a caption located directly on the disputed Interface photo informs readers that “Interface invented
glue-free carpet tile, then discovered how much fun it was to play with it. Transform an empty
space into a world all your own.” In other words, the caption itself belies any notion that
adhesive was used. Aside from the disputed photograph, Plaintiff does not provide a single
example of any carpet tiles in the catalog she believes to be mounted on a floor with adhesive.
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Her reliance on the nine pages with wall-mounted tile fails to genuinely dispute the unambiguous
caption disclosing that the carpet tiles arranged over the floor in the Interface photo were among
its “glue-free” carpet tiles. There is, as a result, no genuine dispute of material fact that the
carpet tiles in the Interface photo are adhesive free. As such, the content of the Interface photo
teaches this characteristic to one of ordinary skill in the art.
b. Level of Ordinary Skill in the Art
The parties do not appear to disagree over the level of ordinary skill in the art, and they
have not presented any evidence or argument on the issue. The Court, nonetheless, addresses
this factor so that it can conduct a full obviousness analysis. See, e.g., Kinetic Concepts, 688
F.3d at 1360 (obviousness inquiry requires examination of all four Graham factors) (citation
omitted).
“Obviousness is determined from the vantage point of a hypothetical person having
ordinary skill in the art to which the patent pertains. This legal construct is akin to the
‘reasonable person’ used as a reference in negligence determinations.” In re Rouffet, 149 F.3d
1350, 1357 (Fed. Cir. 1998) (internal citation omitted). “A less sophisticated level of skill
generally favors a determination of nonobviousness, and thus the [patent applicant], while a
higher level of skill favors the reverse.” Innovention Toys, 637 F.3d at 1323. If “the subject
matter of the patent and the prior art [are] . . . easily understandable, a factual determination of
the level of skill in the art [may be] unnecessary.” Chore-Time, 713 F.2d at 779. A court should
not, however, automatically set the level of ordinary skill to the lowest level by default just
because a party fails to present evidence on it. See Innovention Toys, 637 F.3d at 1323-24(district court erred in setting level of ordinary skill to that of a layperson even though party
challenging patent’s validity failed to present evidence on it).
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While understanding Plaintiff’s invention does not necessitate a particularly high level of
ordinary skill in the art, setting the level at that of a true layperson would be too low. A person
having ordinary skill in the art of Plaintiff’s invention, therefore, would be an area-rug designer
with experience in interior design. Notwithstanding this factual finding, the Court believes that
setting the level of ordinary skill at a considerably lower level – perhaps even at a layperson
level – would not alter its ultimate determination that Plaintiff’s claimed invention is obvious.
c. Differences Between Claimed Invention and Prior Art
The parties do not meaningfully address prior art other than the Interface prior-art
reference. Because that reference is sufficient to make a finding of obviousness, the Court need
not venture further. Claim 1’s first element denotes “a plurality of carpet tiles covering only a
portion of the floor surface.” The parties do not dispute that the Interface photo embodies this
element. The second element calls for “no adhesive . . . to secure the carpet tiles to the floor
surface.” As discussed in Section III.B.2.a.ii, supra, there is no genuine dispute of material fact
that the Interface photo also contains this element. The third element requires “an edge of each
carpet tile [t]o abut[] an edge of at least one adjacent carpet tile.” Plaintiff does not dispute that
the Interface photo possesses this characteristic. Claim 1’s fourth element requires that “a
perimeter of the modular area rug forms a convex figure.” Although the carpet tiles in the photo
do not form a convex figure, Plaintiff does not dispute the examiner’s taking official notice that
“area rugs come in a variety of shapes and sizes, including common rectangular or square
shapes, oval and round shapes, and runner styles.” A273.
d. Secondary Considerations
The Court acknowledges that it cannot disregard evidence, should it exist, of pertinent
secondary considerations such as “commercial success, long felt but unsolved needs, failure of
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others, etc.” Geo M. Martin Co. v. Alliance Machine Sys., 618 F.3d 1294, 1300 (Fed. Cir. 2010)
(citation omitted); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983)
(“[E]vidence [of] . . . secondary considerations . . . must always when present be considered en
route to a determination of obviousness.”) (internal quotation marks and citation omitted).
Plaintiff, however, has not submitted any evidence or argument pertaining to secondary
considerations. The Court, consequently, does not speculate if any secondary considerations
exist.
e. Plaintiff’s Teaching-Away Argument
Plaintiff dedicates just three sentences in her opening brief to what appears to be a
“teaching-away” argument. She argues that the statement “just because a floor isn’t round
doesn’t mean the tiles have to be square” in the Interface photo’s caption “directs away” from
perceiving an area rug in the photograph. See Pl. Mot. at 12. More precisely, she elaborates that
“[i]f the carpet tiles in the photograph weren’t square (e.g., round, oval, etc.) it is hard to
imag[ine] how they could be formed into any meaningful contiguous shape that might conjure up
the concept of an area rug.” Id.Plaintiff’s teaching-away argument lacks force. A prior-art reference teaches away
“when a person of ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction divergent from the path
that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As noted by
the BPAI, the caption does not teach away from Plaintiff’s claimed invention, but instead
suggests to one of ordinary skill in the art that “carpet tiles may be of different shapes and sizes,
as well as arrangements, either on an area of the floor . . . or the entire floor.” A421. The
caption might, for example, inspire a person of ordinary skill in the art to form a rectangular
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carpet-tile area rug by laying equivalent right-triangle-shaped carpet tiles against each other on a
floor. As the photograph’s caption stresses, any additional variations “are only limited to your
imagination.” Since the caption does not discourage a person of ordinary skill in the art from
forming convex-shaped carpet-tile area rugs, Plaintiff’s teaching-away argument fails.
f. Ultimate Determination of Obviousness
Having determined that, even in light of Plaintiff’s newly submitted evidence, the only
difference between the Interface photo and Plaintiff’s claimed invention is its shape, the Court
agrees with the BPAI’s legal conclusion that such a variation is obvious under § 103. A legal
conclusion of obviousness “requires more than a mere showing that the prior art includes
separate references covering each separate limitation in a claim under examination. Rather,
obviousness requires the additional showing that a person of ordinary skill at the time of the
invention would have selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc.,
655 F.3d 1352, 1360 (Fed. Cir. 2011) (internal citation omitted). Given the Court’s factual
findings on the Graham factors here, this standard has been met.
While the Court need not make an explicit finding that the prior art “teaches, suggests, or
motivates” a person of ordinary skill in the art, see KSR, 550 U.S. at 415, existence of such
evidence further strengthens a determination in favor of obviousness. See Kinetic Concepts, 688
F.3d at 1360 (“[A]n analysis of any teaching, suggestion, or motivation to combine elements
from different prior art references is [still] useful in an obviousness analysis.”). The caption
appended to the Interface photo encourages the reader to “[t]ransform an empty space into a
world all your own . . . . The options are limited only to your imagination.” This language would
motivate a person of ordinary skill in the art to create carpet-tile arrangements that vary from the
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photograph, including the intuitive variation of arranging carpet tiles to form a convex figure.
The Court agrees with the BPAI’s reasoning that “the shape of [a] modular area rug is nothing
more than a design choice,” and convex-shaped area rugs have long existed in the art. See A408.
The Interface photo itself, moreover, could arguably tip off a person of ordinary skill in the art to
this design choice: “[O]ne such convex-shaped area rug is [arguably] depicted [in the
photograph] directly between the two columns and contains 16 modular carpet tiles, arranged
four by four, to form a . . . convex area rug,” whereas the other surrounding carpet tiles are
“merely randomly placed tiles or tiles of a second modular area rug.” Def. Rep. at 5 n.4.
Because it would be obvious to a person of ordinary skill in the art to do no more than change the
shape of the carpet-tile arrangement displayed in the Interface photo, Plaintiff’s patent does not
satisfy § 103’s patentability requirement of non-obviousness. Summary judgment in favor of
Defendant, therefore, is appropriate.
IV. Conclusion
For the foregoing reasons, the Court will deny Plaintiff’s Motion for Summary Judgment
and grant Defendant’s Cross-Motion for Summary Judgment. A separate Order consistent with
this Opinion will be issued this day.
/s/ James E. Boasberg
JAMES E. BOASBERG
United States District Judge
Date: January 18, 2013
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