Man Wah Holdings Ltd v. Raffel Systems LLC

1. Case Identification

• Case #: PGR: Unassigned
• Patent #: D821,986
• Filed: January 4, 2019
• Petitioner(s): Man Wah Holdings Limited
• Patent Owner(s): Raffel Systems, LLC
• Challenged Claims: The sole claim

2. Patent Overview

• Title: Switch
• Brief Description: The ’986 patent claims the ornamental design for a switch. The claimed design consists of a four-sided surface with rounded corners, a cluster of four rounded buttons surrounding a central component, and a separate rectangular hole located away from the button cluster. The design is applicable to controls for furniture, such as power recliners.

3. Grounds for Unpatentability

Ground 1: Anticipation over Raffel_sample - The sole claim is anticipated under 35 U.S.C. §102.

• Prior Art Relied Upon: Raffel_sample (a product description for a power recline and headrest control offered for sale on November 17, 2015).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Raffel_sample constitutes prior art under the on-sale bar of §102(a) because it was offered for sale by the Patent Owner to the Petitioner more than one year before the effective filing date of the ’986 patent. Petitioner asserted that the design of the Raffel_sample product is identical to the claimed design. It was argued to disclose each feature of the claimed design, including the four-sided surface with rounded corners, the arrangement of four rounded buttons with a central component, and a rectangular hole for a USB charging port located away from the button group. Petitioner provided side-by-side visual comparisons to demonstrate that the Raffel_sample product embodies the complete ornamental design claimed in the ’986 patent.

Ground 2: Obviousness over Kintec_Solution and Hua-Dali - The sole claim is obvious under 35 U.S.C. §103.

• Prior Art Relied Upon: Kintec_Solution (European Union Intellectual Property Office Design Registration No. 001863556-0004) and Hua-Dali (Chinese Design Patent No. 303948579).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kintec_Solution is a proper primary reference because its design creates "basically the same visual impression" as the claimed design. Kintec_Solution discloses a switch with a four-sided, rounded-corner surface, a cluster of four rounded (albeit oval) buttons, and a central circular component. The primary differences were identified as Kintec_Solution’s lack of the rectangular hole and its use of oval-shaped buttons instead of circular ones. The secondary reference, Hua-Dali, was presented to teach the missing rectangular hole, as it discloses a switch design that includes a similar button cluster and a rectangular hole on one side.
  • Motivation to Combine: A designer having ordinary skill in the art (DHOSITA) would combine the teachings of Kintec_Solution and Hua-Dali because both references are in the same field of art—switches with button controls. A DHOSITA would be motivated to modify the design of Kintec_Solution to include the rectangular hole from Hua-Dali to add a well-known and desirable functional feature, such as a USB charging port, which is common in the field. Petitioner also argued that modifying the button shape from oval to circular is a de minimis change that would be an obvious design choice for a DHOSITA.
  • Expectation of Success: It was argued that a DHOSITA would have had a clear expectation of success in combining the references. The modification involves the simple addition of a basic geometric shape (a rectangular hole) to a surface, a predictable design alteration. The result of the combination was asserted to be the claimed design of the ’986 patent.

4. Key Claim Construction Positions

• Petitioner did not formally construe any specific claim terms but instead provided a verbal description of the overall design to frame its invalidity arguments, as is common in design patent cases.
• The proposed description identified four main visual features of the claimed design:
  • (a) A four-sided surface with four corners rounded;
  • (b) Four rounded buttons;
  • (c) A rounded central component in the middle of the four rounded buttons; and
  • (d) A rectangular hole away from the four-button group.
• This feature-based breakdown was used as a roadmap to demonstrate how the prior art references, alone or in combination, disclose the claimed design.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention was that certain design modifications would have been considered de minimis by a DHOSITA.
• Petitioner argued that adding a rectangular hole to the surface of the Kintec_Solution switch would be an obvious, minor modification, particularly because the hole serves a known functional purpose (a USB port) commonly found on such devices.
• It was also argued that varying the shape of the buttons from the ovals seen in Kintec_Solution to the circles in the claimed design is a routine design choice that does not fundamentally alter the overall visual impression and falls within the predictable variations available to a DHOSITA.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate because none of the prior art references relied upon in the petition were considered by the Examiner during the original prosecution of the ’986 patent. Therefore, the petition was said to present art and arguments that are not the same or substantially the same as those previously evaluated by the Office, weighing against denial under §325(d).

7. Relief Requested

• Petitioner requests that the Board institute a post grant review of Patent D821,986 and cancel the sole claim as unpatentable.