Case: 19-1935 Document: 56 Page: 1 Filed: 06/26/2020
United States Court of Appeals
for the Federal Circuit
______________________
B/E AEROSPACE, INC.,
Appellant
v.
C&D ZODIAC, INC,
Appellee
______________________
2019-1935, 2019-1936
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
01275, IPR2017-01276.
______________________
Decided: June 26, 2020
______________________
MORGAN CHU, Irell & Manella LLP, Los Angeles, CA,
for appellant. Also represented by MICHAEL RICHARD
FLEMING.
JOHN C. ALEMANNI, Kilpatrick Townsend & Stockton
LLP, Raleigh, NC, for appellee. Also represented by
MICHAEL T. MORLOCK, DAVID A. REED, Atlanta, GA;
STEVEN MOORE, San Francisco, CA; ANDREW WILLIAM
RINEHART, Winston-Salem, NC.
______________________
Case: 19-1935 Document: 56 Page: 2 Filed: 06/26/2020
2 B/E AEROSPACE, INC. v. C&D ZODIAC, INC
Before LOURIE, REYNA, and HUGHES, Circuit Judges.
REYNA, Circuit Judge.
B/E Aerospace, Inc. appeals a final written decision of
the Patent Trial and Appeal Board that found certain
claims of B/E’s aircraft lavatory-related patents obvious.
B/E contends that the Board’s decision is erroneous be-
cause the Board incorporated a claim limitation that is not
present in the prior art. B/E also contends that the Board
erred by relying on printed matter that does not qualify as
prior art under 35 U.S.C. § 311(b). We conclude that the
Board’s final determination of obviousness is correct, and
we do not reach the § 311(b) issue. On that basis we affirm
the Board’s final written decision.
BACKGROUND
This appeal arises from an inter partes review (“IPR”)
proceeding. Petitioner, C&D Zodiac, Inc. (“Zodiac”), chal-
lenged two patents owned by B/E Aerospace, Inc. (“B/E”),
U.S. Patent No. 9,073,641 (“the ’641 patent”) and U.S. Pa-
tent No. 9,440,742 (“the ’742 patent”) (collectively, “the
challenged patents”).
The technology involved in this appeal is simple. The
challenged patents relate to space-saving technologies for
aircraft enclosures such as lavatory enclosures, closets, and
galleys. C&D Zodiac, Inc. v. B/E Aerospace, Inc., No.
IPR2017-01275 at 4 (P.T.A.B. Oct. 23, 2018). Each patent
contains a two-page written description that teaches an en-
closure with contoured walls designed to “reduce or elimi-
nate the gaps and volumes of space required between
lavatory enclosures and adjacent structures.” ’641 patent
at 1:52–56. In other words, the patents are directed to
space-saving modifications to the walls of aircraft enclo-
sures; they are not directed to the structures contained
within those walls. Id.; see IPR2017-01275 at 15.
The parties agree that, for purposes of this appeal, the
challenged patents and claims are not materially different
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B/E AEROSPACE, INC. v. C&D ZODIAC, INC 3
and that claim 1 of the ’641 patent is representative of the
challenged claims.
Claim 1 of the ’641 patent provides:
1. An aircraft lavatory for a cabin of an aircraft of
a type that includes a forward-facing passenger seat
that includes an upwardly and aftwardly inclined
seat back and an aft-extending seat support dis-
posed below the seat back, the lavatory comprising:
a lavatory unit including a forward wall portion and
defining an enclosed interior lavatory space, said
forward wall portion configured to be disposed
proximate to and aft of the passenger seat and
including an exterior surface having a shape that
is substantially not flat in a vertical plane; and
wherein said forward wall portion is shaped to sub-
stantially conform to the shape of the upwardly
and aftwardly inclined seat back of the passenger
seat, and includes a first recess configured to re-
ceive at least a portion of the upwardly and
aftwardly inclined seat back of the passenger
seat therein, and further includes a second re-
cess configured to receive at least a portion of the
aft-extending seat support therein when at least
a portion of the upwardly and aftwardly inclined
seat back of the passenger seat is received within
the first recess.
’641 patent at 4:63–5:17 (emphases added).
This appeal focuses on the “first recess” and “second re-
cess” limitations, labeled as elements 34 and 100, respec-
tively, in Figure 2 below.
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4 B/E AEROSPACE, INC. v. C&D ZODIAC, INC
’641 patent at Fig. 2.
A. Prior Art
Zodiac’s petition asserted two grounds of unpatentabil-
ity. The Board instituted on both grounds. During the pro-
ceeding, Zodiac requested a partial adverse judgment,
which the Board granted. This left only one instituted
ground: that the challenged claims were obvious over the
so-called “Admitted Prior Art” and U.S. Patent No.
3,738,497 (“Betts”).
In its petition, Zodiac defined the “Admitted Prior Art”
as certain portions of the challenged patents, including Fig-
ure 1. See ’641 patent at 1:65–67. As shown below, Fig-
ure 1 of the Admitted Prior Art discloses a flat, forward-
facing lavatory wall immediately behind a passenger seat
that has a rear seat leg extending toward the back of the
plane (referred to as an “aft-extending seat support”).
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6 B/E AEROSPACE, INC. v. C&D ZODIAC, INC
limitation.
Id. at 17 (citing Betts at 2:19–24). 1 The Board
also found that skilled artisans (airplane interior design-
ers) would have been motivated to modify the flat forward-
facing wall of the lavatory in the Admitted Prior Art with
Betts’s contoured, forward-facing wall because skilled arti-
sans were interested in adding space to airplane cabins,
and Betts’s design added space by permitting the seat to be
moved further aft.
Id. at 14–17.
The Board found that a skilled artisan would have
found it “obvious to further modify the Admitted Prior
Art/Betts combination to include the ‘second recess’ to re-
ceive passenger seat supports.”
Id. at 22. The Board used
two separate approaches presented by Zodiac to reach that
conclusion. 2
First, Zodiac argued that “the logic of using a recess to
receive the seat back applies equally to using another re-
cess to receive the aft extending seat support.”
Id. At 18.
The Board found Zodiac’s arguments and testimony “cred-
ible and convincing.”
Id. at 22. The Board agreed with Zo-
diac that creating a recess in the wall to receive the seat
support was an obvious solution to a known problem. The
Board relied on the testimony of Zodiac’s expert, Mr. An-
derson, who opined that the addition of a second recess “is
nothing more than the application of a known technology
(i.e., Betts) for its intended purpose with a predictable re-
sult (i.e., to position the seat as far back as possible).
Id. at
18, 23. Mr. Anderson explained that a skilled artisan
“would be motivated to modify an enclosure, such as a lav-
atory, to include a second recess to receive aft facing seat
supports”; that this “modification is nothing more than the
1 B/E does not challenge the Board’s finding that
Betts teaches the “first recess” limitation.
2 The Board stated that it reached its obviousness
conclusion through a “traditional approach” and a “com-
mon sense” approach. J.A. 156 n.1.
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B/E AEROSPACE, INC. v. C&D ZODIAC, INC 7
application of known technology for its intended purpose”;
and that the “result of such a modification is predictable,
allowing the seat to be positioned further aft in an aircraft.”
J.A. 1850 ¶ 191; see also IPR2017-01275 at 23, 26.
Second, the Board found that Zodiac “established a
strong case of obviousness based on the Admitted Prior Art
and Betts, coupled with common sense and the knowledge
of a person of ordinary skill in the art.” IPR2017-01275 at
34. Relying on the testimony of Mr. Anderson, the Board
found that recesses configured to receive seat supports
“were known in the art” and that “it would have been a
matter of common sense” to incorporate a second recess in
the Admitted Prior Art/Betts combination.
Id. at 26.
C. Design Drawings
Zodiac attached to its petition three “design drawings”
that undisputedly depict “enclosures that include a lower
recess to receive a seat support,” i.e., a “second recess.”
Id. at 19. Zodiac did not identify these design drawings as
prior art references for any of the enumerated grounds of
unpatentability. Instead, Zodiac asserted the drawings as
evidence that lower recesses to receive a seat support were
“known in the art.”
Id. at 21.
B/E moved to exclude the design drawings and the re-
lated testimony on the basis that Zodiac had not shown
that the drawings were “patents” or “printed publications”
within the meaning of 35 U.S.C. § 311(b). J.A. 513–18.
Section 311(b) provides that, in an IPR proceeding, claims
may be cancelled as unpatentable only on the basis of prior
art consisting of “patents or printed publications.”
The Board denied the motion to exclude. IPR2017-
01275 at 22–23, 40–41. The Board determined that two of
the designs, the SAS MD-90 and the 737 Storage, were in
public use or on sale prior to the critical date of the chal-
lenged patents.
Id. But the Board explained that it con-
sidered the design drawings only for the purpose of
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8 B/E AEROSPACE, INC. v. C&D ZODIAC, INC
“identify[ing], specifically, the knowledge of those skilled in
the art.”
Id. at 24. When used for those purposes, the
Board explained, the drawings “need not be ‘printed publi-
cation’ prior art.”
Id. at 41-42; see also
id. at 24.
B/E requested a rehearing of the Board’s determination
regarding the design drawings. B/E argued that the Board
“misapprehended and/or overlooked the statute defining
the scope of IPRs, 35 U.S.C. § 311(b).” J.A. 652. B/E argued
that the design drawings and the related testimony “fall[]
outside the scope of IPRs, which are instituted only on the
basis of prior art consisting of patents or printed publica-
tions.’’
Id. B/E also challenged the Board’s reliance on
“common sense” in finding obviousness. The Board denied
the request for rehearing.
B/E timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
ANALYSIS
We review final written decisions of the Board in ac-
cordance with the Administrative Procedure Act, 5 U.S.C.
§ 706(2) (2012). HTC Corp. v. Cellular Commc’ns Equip.,
LLC,
877 F.3d 1361, 1367 (Fed. Cir. 2017). Obviousness is
a question of law with underlying factual findings relating
to the scope and content of the prior art; differences be-
tween the prior art and the claims at issue; the level of or-
dinary skill in the pertinent art; the presence or absence of
a motivation to combine or modify prior art with a reason-
able expectation of success; and any objective indicia of
non-obviousness. Acoustic Tech., Inc. v. Itron Networked
Sols., Inc.,
949 F.3d 1366, 1373 (Fed. Cir. 2020). We review
de novo the Board’s legal conclusions of obviousness and its
factual findings for substantial evidence. HTC Corp. v. Cel-
lular Commc’ns Equip., LLC,
877 F.3d 1361, 1369 (Fed.
Cir. 2017). Substantial evidence is “such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion.” Consol. Edison Co. v. NLRB,
305 U.S. 197,
229 (1938). We do not reweigh evidence on appeal. Impax
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B/E AEROSPACE, INC. v. C&D ZODIAC, INC 9
Labs. Inc. v. Lannett Holdings Inc.,
893 F.3d 1372, 1382
(Fed. Cir. 2018).
B/E raises two general issues on appeal. First, B/E ar-
gues that the Board’s obviousness determination is errone-
ous because it improperly incorporated a second recess
limitation not disclosed in the prior art. Second, B/E con-
tends that the Board erred by relying on the design draw-
ings, which are not prior art “patents or printed
publications” under 35 U.S.C. § 311(b).
A. Obviousness
The Board found that Zodiac established a “strong case
of obviousness.” We agree. There is no dispute that Betts’s
contoured wall design meets the “first recess” claim limita-
tion. Nor do the parties dispute that a skilled artisan
would have been motivated to modify the Admitted Prior
Art with Betts’s contoured wall because skilled artisans
were interested in maximizing space in airplane cabins.
IPR2017-01275 at 14–17. Only the “second recess” limita-
tion is at issue.
We find no error in the Board’s conclusion that—under
both approaches it employed—“it would have been obvious
to further modify the Admitted Prior Art/Betts combina-
tion to include the claimed ‘second recess’ to receive pas-
senger seat supports.”
Id. at 22.
First, we affirm the Board’s conclusion that the chal-
lenged claims would have been obvious because modifying
the Admitted Prior Art/Betts combination to include a sec-
ond recess was nothing more than the predictable applica-
tion of known technology.
Id. at 23. The prior art yields a
predictable result, the “second recess,” because a person of
skill in the art would have applied a variation of the first
recess and would have seen the benefit of doing so. KSR
Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007) (“The com-
bination of familiar elements according to known methods
is likely to be obvious when it does no more than yield
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10 B/E AEROSPACE, INC. v. C&D ZODIAC, INC
predictable results. . . . If a person of ordinary skill in the
art can implement a predictable variation § 103 likely bars
its patentability.”). The Board’s conclusion is supported by
substantial evidence, namely the expert testimony of Mr.
Anderson, who opined:
[A] person of ordinary skill in the art would recog-
nize that as a seat is moved further aft the seat sup-
port necessarily is also moved further aft. As the
seat is moved aft the feet of the seat support may
come into contact with the lower section of the wall.
Creating one or more recesses to accommodate what-
ever portion(s) of the seat support that would contact
the forward wall of the enclosure is the obvious solu-
tion to this known problem.
J.A. 1787 ¶ 74.
Second, we also affirm the Board’s conclusion that the
challenged claims would have been obvious because “it
would have been a matter of common sense” to incorporate
a second recess in the Admitted Prior Art/Betts combina-
tion. IPR2017-01275 at 26, 38. B/E asserts that the Board
legally erred by relying on “an unsupported assertion of
common sense” to “fill a hole in the evidence formed by a
missing limitation in the prior art.” Appellant Br. 14. B/E
argues that the Board acted contrary to our precedent in
Arendi S.A.R.L. v. Apple Inc.,
832 F.3d 1355, 1361 (Fed.
Cir. 2016), because the Board failed to provide a “reasoned
explanation and record evidence to support its position.”
Id. at 25. We disagree.
In KSR, the Supreme Court opined that common sense
serves a critical role in determining
obviousness. 550 U.S.
at 421. As the Court explained, common sense teaches that
familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will
be able to fit the teachings of multiple patents together like
pieces of a puzzle.
Id. (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”). The
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B/E AEROSPACE, INC. v. C&D ZODIAC, INC 11
Court held that “rules that deny factfinders recourse to
common sense” are inconsistent with our case law.
Id.
After KSR, we recognized that courts must “consider
common sense, common wisdom, and common knowledge
in analyzing obviousness.”
Arendi, 832 F.3d at 1361. How-
ever, we cautioned that common sense cannot be used as a
“wholesale substitute for reasoned analysis and eviden-
tiary support, especially when dealing with a limitation
missing from the prior art references specified.”
Id. at
1362. Likewise, in Perfect Web Techs, Inc. v. InfoUSA, Inc.,
we reiterated that “[c]ommon sense has long been recog-
nized to inform the analysis of obviousness if explained
with sufficient reasoning.”
587 F.3d 1324, 1328 (Fed. Cir.
2009).
Here, the Board’s invocation of common sense was
properly accompanied by reasoned analysis and eviden-
tiary support. The Board dedicated more than eight pages
of analysis to the “second recess” limitation and relied on
Mr. Anderson’s detailed expert testimony. IPR2017-01275
at 21 (citing J.A. 1786–88 ¶¶ 74–75, J.A. 1849–50 ¶¶ 189–
92). The Board noted Mr. Anderson’s opinion that a “per-
son of ordinary skill in the art would recognize that as a
seat is moved further aft the seat support necessarily is
also moved further aft.”
Id. (citing J.A. 1786–87 ¶¶ 74–75).
The Board also cited Mr. Anderson’s opinion that “lower
recesses were a well-known solution to provide space for
seat supports where a recess for a seat back in the forward
wall of the enclosure unit permitted the seat to be located
further aft.” Id.; J.A. 1787–88 ¶ 75.
In Perfect Web, we affirmed a district court’s invocation
of common sense to supply a missing claim
limitation. 587
F.3d at 1338. The missing limitation was step D of steps
A–D of a method for delivering a predetermined quantity
of emails.
Id. at 1328. The record showed that the tech-
nology was simple and that “step (D) merely involves re-
peating earlier steps” until success is achieved.
Id. at 1330.
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12 B/E AEROSPACE, INC. v. C&D ZODIAC, INC
We also determined that the district court “adequately ex-
plained its invocation of common sense.”
Id.
Here, just like in Perfect Web, the evidence shows that
the technology of the claimed invention is simple. The pa-
tents relate to contoured walls that “reduce or eliminate
the gaps and volumes of space required between lavatory
enclosures and adjacent structures.” ’641 patent at 1:52–
56. See also IPR2017-01275 at 23 (rejecting B/E’s argu-
ment that the enclosures at issue are quite complex); J.A.
403. The missing claim limitation (the “second recess”) in-
volves repetition of an existing element (the “first recess”)
until success is achieved. IPR2017-01275 at 18 (reasoning
that the logic of using a recess to receive the seat back ap-
plies equally to using another recess to receive the aft ex-
tending seat support).
We find no error in the Board’s conclusion that a skilled
artisan would have used common sense to incorporate a
second recess in the Admitted Prior Art/Betts combination.
We therefore affirm the Board’s obviousness conclusion un-
der both of its approaches.
B. Design Drawings
B/E asserts that the Board violated 35 U.S.C. § 311(b)
by relying on the design drawings because they are neither
patents nor printed publications. The Board, however, did
not rely on the design drawings when it found the chal-
lenged claims obvious. When the Board found the chal-
lenged claims obvious under a “traditional obviousness
approach,” it relied on expert testimony:
While we found Petitioner’s common sense rationale
persuasive, Petitioner’s argument and evidence, in-
cluding the testimony of Petitioner’s expert, support
the conclusion that the challenged claims are obvi-
ous under a traditional obviousness approach that
does not rely on the “common sense” rationale sup-
ported by [the design drawings].
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B/E AEROSPACE, INC. v. C&D ZODIAC, INC 13
J.A. 156 n.1. Likewise, when the Board separately found
the challenged claims obvious based on “common sense,” its
conclusion did not rest on its consideration of those draw-
ings:
We concluded that Petitioner met [the Arendi com-
mon sense] standard based not only on the citation
to second recesses in the [design drawings], but also
on the rationale and related analysis provided by Pe-
titioner’s expert that we credited and found convinc-
ing before addressing the public use/on sale
references. We also credited the testimony of Peti-
tioner’s expert that the proposed modification would
have been predictable. Accordingly, because our
analysis relied on the analysis and reasoning of Pe-
titioner’s expert regarding why it would have been
obvious and a matter of common sense to add a sec-
ond recess, . . . [the design drawings] were instead
used as further evidence in support of the common
sense argument.
...
Because we found the expert analysis credible apart
from its reliance on the [design drawings], we need
not reach whether supplying a missing limitation
via a “common sense” argument, based solely on
public uses/sales, runs afoul of § 311(b).
J.A. 165–66, n.2.
We agree that the Board’s obviousness conclusions are
independently supported by “Petitioner’s argument and ev-
idence, including the testimony of Petitioner’s expert.” J.A.
156 n.1. The Board instituted on grounds supported by the
Admitted Prior Art and Betts. The Board fully articulated
its conclusion of obviousness, and we conclude that sub-
stantial evidence supports the Board’s determination of ob-
viousness independent of the design drawings.
Accordingly, we need not reach the issues raised by B/E on
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14 B/E AEROSPACE, INC. v. C&D ZODIAC, INC
whether the Board ran afoul of § 311(b) by considering the
design drawings.
CONCLUSION
We have considered B/E’s other arguments and find
them unpersuasive. For the reasons stated above, we af-
firm the Board’s determination that claims 1, 3–10, and
12–17 of U.S. Patent No. 9,073,641, and claims 8 and 10–
16 of U.S. Patent No. 9,440,742, are invalid as obvious.
AFFIRMED
