Industry standards for mounting brackets are necessarily functional, and thus not ornamental and not subject to design patent protection

Sattler Tech Corp. v. Humancentric Ventures, PGR2019-00030, Patent D823,093S, decided by PTAB July 26, 2019, designated informative June 11, 2020.

Petitioner’s arguments

Sattler Tech requested post grant review of US Patent No. D826,093S titled “VESA MOUNT ADAPTER BRACKET.”  FIG. 1 of the ‘093, reproduced below, shows a perspective view of the claimed bracket:

 

 

 

 

 

 

Sattler argued that VESA brackets are subject to the VESA Flat Display Mounting Interface Standard, the purpose of which being “to provide industry standard mounting interfaces for Flat Displays.  Next, Sattler established that each of the features claimed in the ‘093 patent, with the exception of the raised grommet edges, are dictated by VESA standards.   Finally, Sattler argued that the raised grommet edges acted as reinforcement so the bracket would not break under heavy monitor weight.  In support of its position, Sattler position with photos of other commercially available VESA mounting brackets, as well as text from the VESA standards themselves.

The Board’s Decision

PTAB instituted post-grant review, holding that Sattler has shown it more likely than not that the ‘093 patent was unpatentable.   In so doing, the Board agreed with Sattler that claimed tabs, grommets and the spacing thereof are dictated by function and the VESA FDMI standard.  The Board further found that the only design element not mandated by the standards was the raised grommet edges.  But, the Board found that Sattler had established that the raised grommet edges provided a functional (not ornamental) benefit.  The Board added:

Any differences, besides the raised grommets, between the other bracket designs known in the art and that of the design claimed in the ‘093 patent appear to lie solely in unclaimed features, e.g, the specific shape of the bracket plates perimeter.

A decision is due by July 29, 2020.  Nonetheless, I went on PAIR to see if HumanCentric had any continuing applications pending at the time of the decision that had been amended to claim the shape of the bracket and came across the attached Order out of the Central District of California.  D923093 Report filed on PAIR re voluntary dismissal

(HumanCentric does have other patents entitled “VESA MOUNT ADAPTER BRACKET” – 4 to be exact.  None of them claim the shape of the bracket, all of them claim the raised grommet edges and spacing.  The four others also show/claim a different tab/tab structure)

CA Order

HumanCentric filed the CA litigation October 21, 2018, alleging patent infringement and false designation of origin under the trademark act.  Sattler filed the petition detailed above, and HumanCentric responded by moving to voluntarily dismiss the CA action citing the likelihood that “relevant issues are likely to be resolved” in the post grant proceedings.  The Order granting the motion is dated May 19, 2019, just two months prior to PTAB’s decision granting Sattler’s petition.

Sattler opposed the motion in part.  Specifically, Sattler agreed that the case should be dismissed, and even agreed that the dismissal should be without prejudice.  But, Sattler argued that the Court ought to condition the dismissal on Plaintiff 1) responding to discovery requests already served and 2) agreeing not to file any further complaints with Amazon or other online marketplaces about Defendants sale of allegedly infringing products.  With respect to the latter, Sattler argued that it is “facially unfair that Plaintiff will have an unlimited amount of time to devise answers to the discovery requests if the case is brought again, and that it is not appropriate to allow Plaintiff to avoid the expenses it would incur in responding to the requests.  Unimpressed, the CA Court held:

By focusing only on the (supposedly unfair) benefits to Plaintiff from avoiding discovery expenses without providing an explanation for why they will still need the information requested after the case is dismissed, Defendants appear to proceed from the faulty premise that it is appropriate to use cost-incurring discovery requests as a weapon to retaliate against a plaintiff for filing suit and then moving to voluntarily dismiss.  Conditions on dismissal are designed to cure prejudice, not to punish the plaintiff for voluntarily withdrawing its claims.  In the absence of evidence for why Defendants still need the information, the Court will not require Plaintiff to incur costs responding to the requests simply to impose a de facto sanction.

As for Sattler’s request that HumanCentric be prohibited from filing subsequent complaints, the Court stated:

As things stand now, Plaintiff holds patents that are presumed to be valid.  The mere fact that Plaintiff has chosen to dismiss this cases where the validity of the patents may have been adjudicated does not disturb this presumption … Given this, the Court sees no reason to prohibit Plaintiff from asserting the validity of its patent and arguing to private parties like Amazon that other goods infringe them.  Imposing Defendants’ requested condition would be tantamount to granting summary judgement and issuing an injunction in favor of Defendants on counterclaims for patent invalidity that they never brought.  The Court will not do so.