PTAB

DER2017-00007

Andersen Corporation v. GED Integrated Solutions, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Spacer Frame and Method of Making Same
  • Brief Description: The ’953 patent describes an improved spacer frame for insulating glass units (IGUs). The invention moves the final seam of the frame from a corner to an offset location along one of the sides, which results in four identically constructed corners, thereby improving the manufacturing process and the integrity of the corner seals.

3. Grounds for Unpatentability

Ground 1: Derivation of Invention - Claims 1-22 were derived from Petitioner's inventor, Mr. Sammy Oquendo, under 35 U.S.C. § 135.

  • Evidence Relied Upon: Oquendo Declaration (Ex. 1001), March 2009 Prototype (Ex. 1011), May 2009 CAD Drawing (Ex. 1012), June 2009 CAD Drawing (Ex. 1013), and various corroborating emails and declarations from other individuals.
  • Core Argument for this Ground:
    • Alleged Conception and Disclosure: Petitioner asserted that Mr. Sammy Oquendo, an employee of Andersen's subsidiary Silver Line, conceived of the complete invention by March 2009 to solve known seal failure issues with the fourth-corner seam of existing "Intercept®" spacer frames provided by the Patent Owner, GED. Mr. Oquendo allegedly reduced the invention to practice through a physical prototype in March 2009 and detailed CAD drawings by June 2009. Petitioner argued this complete conception was communicated to Mr. William Briese, a named inventor on the ’953 patent and a GED employee, at a Glass Symposium in March 2009, with further disclosures of drawings and details occurring through 2011. Petitioner contended that after initially dismissing the concept's feasibility, GED misappropriated the invention, marketed it as "Corner Plus" starting in 2014, and wrongfully filed for the ’953 patent without authorization from or credit to Mr. Oquendo.
    • Mapping to Challenged Claims: Petitioner provided a detailed, element-by-element analysis arguing that all limitations of challenged claims 1-22 were conceived by Mr. Oquendo and disclosed to GED's inventors.
      • Independent Claim 1: Petitioner argued that Oquendo's March 2009 Prototype, which was shown to Mr. Briese, embodied every limitation of claim 1. This included a "substantially linear channel" formed from a metal strip, a "connecting structure" with an insert tab and trailing end, and, crucially, a "lateral connection spaced from said corresponding corners." The prototype physically demonstrated moving the seam away from the corner to an offset butt joint. Petitioner further argued that the prototype included a "stop" (a physical abutment), meeting the construction of that term, formed by the natural stopping of the insert tab at the corner of the opposing frame end.
      • Independent Claim 14: Petitioner asserted that Oquendo's prototype also met the limitations of claim 14, which recites a method of making the frame. The prototype was made from an "elongated metal strip bent to form a channel shaped frame element" with notches defining corner locations. The design included telescoping leading (insert tab) and trailing ends and an "abutment stop" to limit movement, all of which were allegedly present in Oquendo's work and disclosed to GED.
      • Dependent Claims: Petitioner mapped various dependent claim limitations to specific features of Oquendo's prototype and CAD drawings. This included the "stiffening flanges" acting as a stop (claim 2), the "tapered swage" and "inclined profile" of the insert tab for an interference fit (claims 3 and 10), the identical construction of the corners (claim 7), and the aligned apertures for gas filling (claim 8). Petitioner contended that a V-notch in the prototype's seam was an artifact of its construction from existing parts and that GED's engineers would have understood it was not part of the invention and needed to be eliminated, as shown in Oquendo's subsequent CAD drawings.

4. Key Claim Construction Positions

  • Term: "stop" (claims 1-22)
  • Petitioner's Proposed Construction: "A physical abutment that prohibits movement of the adjoining structure beyond a predetermined location."
  • Relevance: This broad construction was central to Petitioner's argument. It allowed them to contend that several features conceived by Mr. Oquendo met this limitation, including the abutting of stiffening flanges at the offset seam, a locking tab feature detailed in the 2009 CAD drawings, and a bump or notch formed at the transition point of the connecting structure. The petition asserted these features were all disclosed in the prototype and drawings communicated to GED's inventors.

5. Arguments Regarding Institution Standard

  • Petitioner objected to the legal standard for instituting a derivation proceeding, citing a previous PTAB decision (Catapult, DER2014-00002) that allegedly applied a "heightened standard" requiring a petitioner to establish prior conception at the preliminary stage. While arguing that its provided evidence meets even this heightened standard, Petitioner preserved its rights to appeal if the Board were to deny institution based on applying that standard.

6. Relief Requested

  • Petitioner requested the institution of a derivation proceeding and the cancellation of claims 1-22 of the ’953 patent, asserting that Mr. Oquendo is the true inventor and that the invention was derived from him by the named inventors on the patent.