Case: 21-1025 Document: 58 Page: 1 Filed: 03/15/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
O'KEEFFE'S, INC.,
Appellant
v.
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2021-1025
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. PGR2019-
00025.
______________________
Decided: March 15, 2022
______________________
THEODORE J. BIELEN, JR., Bielen & Lampe, Concord,
CA, argued for appellant. Also represented by JOHN C.
ALEMANNI, Kilpatrick Townsend & Stockton LLP, Raleigh,
NC; JUSTIN LEONARD KRIEGER, Denver, CO; NEIL ARTHUR
SMITH, KB Ash Law Group PC, Alamo, CA.
Case: 21-1025 Document: 58 Page: 2 Filed: 03/15/2022
2 O'KEEFFE'S, INC. v. HIRSHFELD
MICHAEL S. FORMAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by MAI-TRANG DUC
DANG, THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED.
______________________
Before PROST, BRYSON, and STOLL, Circuit Judges.
PER CURIAM.
In a post-grant review proceeding, the Patent Trial and
Appeal Board held unpatentable all claims of U.S. Patent
No. 9,926,709 (“the ’709 patent”), owned by appellant
O’Keeffe’s, Inc. The Board also denied the patent owner’s
motion to amend. O’Keeffe’s appealed, and when the peti-
tioner, Ely Holdings Ltd., withdrew from the appeal, the
Director of the Patent and Trademark Office intervened to
defend the Board’s decision.
The ’709 patent is directed to a mechanism for support-
ing and positioning a glass floor unit. The Board held the
claims of the patent and the proposed substitute claims un-
patentable based on (1) the on-sale bar stemming from an
offer to sell a floor system in the United States more than
one year before the filing date of the application that ma-
tured into the ’709 patent; and (2) obviousness in view of
several combinations of prior art references, including U.S.
Patent No. 7,694,475 to Rae and two German patents
(which are quite similar to one another), referred to as
“DE759” and “DE230.”
The Director declined to defend the Board’s decision
with respect to the on-sale bar. We likewise do not rely on
that rationale as a basis for our decision. With respect to
the Board’s reliance on the prior art references, however,
we conclude that the Board’s decision was supported by
substantial evidence, and we therefore affirm.
O’Keeffe’s first argues that the combination of Rae and
the German patents does not render the claims of the ’709
Case: 21-1025 Document: 58 Page: 3 Filed: 03/15/2022
O'KEEFFE'S, INC. v. HIRSHFELD 3
patent obvious because using the jack shown in the Ger-
man patents to lift the glass flooring of Rae would lift only
the upper structural glass portion of Rae and not the sepa-
rate fire-rated glass portion below the structural glass por-
tion. The Board, however, noted that the claims of the ’709
patent simply refer to a “glass floor unit.” J.A. 52. As the
Board pointed out, the claims of the ’709 patent do not re-
quire “that the two components be unmovable with respect
to each other or that any force exerted on one component
should necessarily be exerted on the other.” Id. It was
therefore proper for the Board to consider the Rae refer-
ence, in combination with the German patents, in its obvi-
ousness analysis.
The Board analyzed all the limitations of the ’709
claims and the proposed substitute claims. Only two of the
limitations, both found in proposed substitute claim 13,
merit comment.
The first is the limitation that recites “a support, said
support positioned to contact the glass floor unit, said sup-
port comprising a sheet, said sheet being rotatable relative
to said adjuster [a screw mechanism that moves the floor
structure up and down] for movement within said cavity of
said glass floor unit.” The issue with regard to that limita-
tion is whether the support plate depicted in the German
patents is fixed to the screw mechanism such that it rotates
with the screw mechanism, or whether the support plate in
the German patents is in contact with the screw mecha-
nism but rotates independently of it.
The Board’s treatment of this issue is not entirely clear.
The Board suggests at several points in its final written
decision that the support plate in the German patents “ro-
tates with the screw.” See J.A. 70, 119, 134. But at each of
those points, the Board quotes with approval the testimony
of the petitioner’s expert that the support plates depicted
in the German patents is “held” on the upper side of the
screw head and “will necessarily either rotate with the
Case: 21-1025 Document: 58 Page: 4 Filed: 03/15/2022
4 O'KEEFFE'S, INC. v. HIRSHFELD
screw (if immovably held, e.g. welded) or rotate inde-
pendently of the screw (if movably held, e.g. threaded).”
J.A. 70, 117, 133 (each quoting J.A. 675). In the end, the
Board appears to embrace the expert’s analysis, which in-
dicates that the German patents teach that the support
plate can be either rotatable or non-rotatable and that the
“rotatable support” limitation can therefore be found in the
German patents. See J.A. 675–76. That finding, which is
based on the expert’s assessment of the German patents, is
supported by substantial evidence.
The second limitation of interest in proposed substitute
claim 13 is the limitation directed to “a hat channel, said
hat channel removably positioned over said adjuster for
permitting access to said adjuster in said cavity from said
outer walking surface.” Pointing to the “transverse profile”
depicted in Figure 4 of both German patents, J.A. 509, 621,
petitioner’s expert characterized that feature as teaching
the “hat channel” limitation, as the transverse profile could
be removed to permit access to the adjuster mechanism.
The Board agreed. J.A. 121–23, 136–38.
O’Keeffe’s argues that accessing the adjuster mecha-
nism in the German patents would require substantial ef-
fort, including removing sections of the flooring. But as the
Director points out, the “hat channel” limitation is quite
broad. It contains no requirement that the hat channel
must be removable without disturbing any portion of the
flooring, or with no significant difficulty. The Board’s con-
clusion that the hat channel limitation is satisfied by the
disclosure in the German patents is therefore supported by
substantial evidence.
AFFIRMED