Federal Circuit affirms PTAB’s use of “common sense” in invalidating BE Aerospace patents directed to airplane lavs

BE Aerospace v C&DZodiac, 2019-1935, 2019-1936, Fed. Cir. June 26, 2020

BE Aerospace (“BEA”) owns US Patent Nos. US9073641 and US9440742 directed to space-saving designs for airport lavatories.  Specifically, the challenged patents both claim a wall portion including first and second recesses to accommodate the aft support legs of an airline seat, and the seat back, when reclined.  The first and second recesses extend into a lavatory behind the seat.  The challenged patents describe a need in the art “to allow the installation of an increased number of passenger seats.”  Clearly, this patent was drafted pre-global pandemic.

FIG. 2 of the ‘641 patent is shown below:

Inter Partes Review

Petitioner C&D Zodiac (“Zodiac”) challenged BEA’s patents, alleging that the claims were obvious over the “Admitted Prior Art” identified as such in BEA’s patents, and US Patent No. 3,738,497 to Betts (“Betts”):

 

 

 

 

 

 

 

As can be seen, Betts discloses an airline seat with a reclining backrest positioned next to the wall of a garment closet, the wall being provided with a recess to accommodate the seat back when in its reclined position.

Zodiac attached three “design drawings” to its petition that depicted a lower recess to accommodate a seat support, i.e., “a second recess”.  Zodiac did not identify the drawings as prior art references, instead referring to them as evidence of what was “known in the art”.  Huh?  BEA moved to exclude the drawings on the basis that they were not “patents” or “printed publications” within the meaning of 35 USC §311(b).  The Board denied the motion to exclude, explaining that two of the drawings were designs that were in public use or on sale prior to the critical date of the challenged patents, but that since they were only used to identify “the knowledge of those skilled in the art” the drawings “need not be ‘printed publications”.

With respect to the obviousness analysis, Zodiac argued that recesses configured to receive seat supports “were known in the prior art” and that “it would have been a matter of common sense” to incorporate a second recess in the Admitted Prior Art/Betts combination.  The Board agreed.

BEA requested rehearing on the Board’s determination regarding the design drawings, arguing that the Board “overlooked the statute defining the scope of IPR’s” which are to be instituted only on the basis of prior art consisting of patents or printed publications.  BEA also questioned the Board’s reliance on “common sense” in its obviousness determination.  The Board refused the request, and BEA appealed.

The Federal Circuit decision

It was undisputed that Bett’s contoured wall design met the “first recess” limitation of BEA’s claims.  Nor did the parties dispute that one of ordinary skill in the art would have been motivated to modify Bett’s in a way that maximized capacity in airplane cabins.  Only the “second recess” was at issue.

The Court first affirmed the Board’s conclusion that including a second recess in the Admitted Prior Art or Bett’s was nothing more than the predictable application of a known technology.  The Court explained:

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.

Disregarding BEA’s arguments that the Board erred by “relying on an unsupported assertion of common sense” to “fill a hole in the evidence formed by the missing limitation in the prior art,” the Court proceeded to affirm the Board’s conclusion that it would have “been a matter of common sense” to incorporate a second recess in the Admitted Prior Art/Betts combination:

Here, the Board’s invocation of common sense was properly accompanied by reasoned analysis and evidentiary support.  The Board dedicated more than eight pages of analysis to the “second recess” limitation and relied on Mr. Anderson’s detailed expert testimony.

The Court then invoked Perfect Web (wherein common sense was used to supply a repeating step to a method claim) to support their conclusion, stating:

The missing claim limitation (the “second recess”) involves repetition of an existing element (the “first recess”) until success is achieved … (reasoning that the logic of using a recess to receive the seat back applies equally to using another recess to receive the aft extending seat support).

With respect to the design drawings, the Court held:

The Board fully articulated its conclusion of obviousness, and we conclude that substantial evidence supports the Board’s determination of obviousness independent of the design drawings.  Accordingly, we need not reach the issues raised by B/E on whether the Board ran afoul of §311(b) by considering the design drawings.

Super good news – more technology to cram more seats on planes is now in the public domain.