PTAB

DER2017-00007

Andersen Corp v. GED Integrated Solutions Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Spacer Frame and Method of Making Same
  • Brief Description: The ’953 patent describes a spacer frame assembly for insulating glass units (IGUs). The invention involves a connecting structure with a stop mechanism that creates a union point (seam) for the frame's ends at a lateral position offset from the corners, which purports to improve the quality and manufacturing process of the IGU.

3. Grounds for Unpatentability

Ground 1: Derivation of Invention Under 35 U.S.C. § 135 - Claims 1-22 were derived from Petitioner's inventor.

  • Key Evidence Relied Upon: Declaration of Sammy H. Oquendo (the alleged true inventor), a physical prototype created by Mr. Oquendo in March 2009 (March 2009 Prototype), computer-aided drafting drawings from May and June 2009 (2009 CAD drawings), and email correspondence between Mr. Oquendo and William Briese (the named inventor on the ’953 patent).
  • Core Argument for this Ground:
    • Prior Conception and Communication: Petitioner asserted that its employee, Mr. Oquendo, is the true inventor of the subject matter of claims 1-22 of the ’953 patent. The petition argued that Mr. Oquendo fully conceived of the invention by March 2009 to solve known IGU seal failures associated with traditional fourth-corner seams. He then allegedly communicated the complete invention—including the concept of an offset seam, a stop mechanism, and identically constructed corners—to Mr. Briese, an employee of the Patent Owner, GED Integrated Solutions, Inc. (GED). This communication allegedly began at a Glass Symposium in March 2009, where Mr. Oquendo presented his prototype, and continued through subsequent emails and meetings.
    • Mapping of Oquendo's Conception to Claims: Petitioner argued that Mr. Oquendo’s March 2009 Prototype, corroborated by his 2009 CAD drawings, embodies every limitation of the challenged claims. For independent claim 1, the prototype was presented as a spacer frame assembly with a linear channel, a connecting structure with an insert tab (“nose portion”), an opposite frame end for receiving the tab, and a stop mechanism. Crucially, the prototype demonstrated the key inventive concept: a lateral connection spaced away from the corners. For dependent claims, Petitioner mapped features like stiffening flanges acting as a stop (claim 2), a tapered nose for an interference fit (claim 10), and identically constructed corners (claim 7) directly to the prototype and the detailed 2009 CAD drawings that were allegedly disclosed to GED.
    • Key Aspects: Petitioner contended that after receiving the complete invention from Mr. Oquendo, GED initially expressed skepticism but later, in 2014, launched a product called “Intercept® Corner Plus” that was the same invention Mr. Oquendo had disclosed five years prior. GED then filed the application that led to the ’953 patent without authorization from or credit to Mr. Oquendo, in violation of a confidentiality agreement between the companies. The petition presented substantial evidence to corroborate Mr. Oquendo's conception and communication, including declarations from witnesses, the physical prototype, and dated technical drawings.

4. Key Claim Construction Positions

  • Petitioner asserted that one claim term required specific construction for the purposes of the derivation proceeding:
    • “stop” (claims 1-22): Proposed construction is “A physical abutment that prohibits movement of the adjoining structure beyond a predetermined location.” Petitioner argued this construction is consistent with the term’s ordinary meaning and is supported by the specification’s exemplary embodiments, which all describe physical structures (e.g., stiffening flanges, a locking tab, a bump) that prevent the frame ends from telescoping past a set point. This construction was central to Petitioner's argument that the features of Mr. Oquendo's 2009 prototype met this claim limitation.

5. Arguments Regarding Institution Standard

  • Petitioner objected to the legal standard for instituting a derivation proceeding that the Board applied in a previous case (Catapult, DER2014-00002). Petitioner argued that the Catapult decision applied a heightened standard requiring a petitioner to effectively prove prior conception at the preliminary stage. Petitioner contended that it had met this heightened standard through substantial evidence but preserved its right to appeal if the Board were to deny institution based on that standard, arguing it is contrary to the requirements of 35 U.S.C. § 135(a).

6. Relief Requested

  • Petitioner requested the institution of a derivation proceeding and the cancellation of claims 1-22 of the ’953 patent on the grounds that the named inventor, William Briese, derived the invention from Mr. Oquendo, who is the true inventor.