Intellectual Property > IP Newsflash > PTAB Denies IPR Petition Because Modification to Prior Art Was Not Obvious
05 Feb '16

In a January 27, 2016 decision, the Patent Trial and Appeal Board (PTAB) denied institution of Inter Partes Review (IPR) of a patent under 35 U.S.C. § 103(a). Petitioner Allsteel Inc. sought review of U.S. Patent No. 8,024,091, which relates to a wall system that includes modules connected through a removable connecting strip. The asserted independent claim requires a connecting strip with a pair of spaced apart arms, each having a beaded portion. Further, the claim requires the beaded portions to have flanges fitting inside the arms of the connecting strip. The prior art, however, disclosed beaded portions with members fitting outside the arms. Petitioner contended that a skilled artisan would have found it obvious to reverse the positions of the members to fit inside the arms. Petitioner also relied on the testimony of its expert to show that it would have been obvious to reverse some inwardly projecting members so that the beaded portions would fit inside the arms.

The PTAB disagreed. It found that Petitioner’s modification would result in the repositioning and rotating of several parts of the wall system, making the change nonobvious. Moreover, the PTAB considered the testimony of Petitioner’s expert conclusory. Specifically, the PTAB explained that the expert failed to show how the modified system would work in the same manner as the original arrangement. Finally, the PTAB considered an alternative modification proposed by Petitioner, which involved orienting a horizontal member vertically and replacing a bayonet with another bayonet of a different shape. Similarly, the PTAB concluded that Petitioner failed to show this modification would have been obvious to a skilled artisan. The PTAB also did not give the expert’s conclusory opinion much weight. Because neither proposed modification to the prior art would have been obvious, the PTAB denied the petition for IPR review.

Allsteel Inc. v. Dirtt Env’t Solutions Ltd., Case IPR2015-01690 (PTAB Jan. 27, 2016) [Medley (opinion), Daniels, and Harlow].