You are on page 1of 23

Trials@uspto.

gov
571.272.7822

Paper No. 8
Filed: September 14, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE


____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
ARISTOCRAT TECHNOLOGIES, INC.,
Petitioner,
v.
IGT,
Patent Owner.
____________
Case IPR2016-00767
Patent D503,951 S
____________

Before KEN B. BARRETT, JOSIAH C. COCKS, and


JENNIFER S. BISK, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. 42.108

IPR2016-00767
Patent D503,951 S
I.

INTRODUCTION

Aristocrat Technologies, Inc. (Petitioner) filed a Petition requesting


inter partes review of the sole claim of U.S. Patent No. D503,951 S
(Ex. 1001, the 951 patent). Paper 1 (Pet.). IGT (Patent Owner) filed a
Preliminary Response to the Petition. Paper 7 (Prelim. Resp.). We have
jurisdiction under 35 U.S.C. 314, which provides that an inter partes
review may not be instituted unless . . . the information presented in the
petition . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.
After considering the information presented in the Petition, we
determine that Petitioner has not established a reasonable likelihood that it
would prevail with respect to the claim challenged in the Petition.
Accordingly, we do not authorize an inter partes review to be instituted as to
the challenged claim of the 951 patent.
A. Related Proceedings
Both parties identify, as a matter involving or related to the 951
patent, IGT v. Aristocrat Technologies, Inc., Civil Action No. 2:15-cv-00473
(D. Nev.).
B. The 951 Patent and the Claim
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. 42.100(b); see also Cuozzo Speed
Techs. LLC v. Lee, 136 S. Ct. 2131, 214446 (2016). With regard to design
patents, it is well-settled that a design is represented better by an illustration
than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679
2

IPR2016-00767
Patent D503,951 S
(Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14
(1886)). Although preferably a design patent claim is not construed by
providing a detailed verbal description, it may be helpful to point out . . .
various features of the claimed design as they relate to the . . . prior art.
Egyptian Goddess, 543 F.3d at 67980; cf. High Point Design LLC v. Buyers
Direct, Inc., 730 F.3d 1301, 131415 (Fed. Cir. 2013) (remanding to district
court, in part, for a verbal description of the claimed design to evoke a
visual image consonant with that design).
The 951 patent is titled Gaming Device Having a Display with
Multiple Indicators and the claim recites [t]he ornamental design for a
gaming device having a display with multiple indicators, as shown and
described herein. Ex. 1001 (57). The 951 contains nineteen figures.
Figures 1 and 3 are reproduced below.

IPR2016-00767
Patent D503,951 S
Figure 1 is a front perspective view of the gaming display having multiple
indicators for a gaming device . . ., that portion of the gaming device shown
in phantom is not part of the design sought to be patented and is provided for
environmental purposes only. Id. at 1. Figure 3 is an enlarged front
perspective view of the gaming display having multiple indicators. Id. at 2.
The parties agree that, in the figures of the 951 patent, the gaming
deviceexcept for two or three indicators in each figureis shown in
phantom and therefore is not part of the claimed design. See Pet. 10; Prelim.
Resp. 12. Petitioner describes the indicators as irregular pentagons or
house-shaped arrows. Pet. 8 (citing Ex. 1018 19, 20); id. at 23. The
Petitioner, in discussing the thickness of the indicators, provides the
enlarged partial versions of Figures 6 and 10 reproduced below:

Pet. 20. The images above are enlarged front perspective views of
alternative embodiments of the display having multiple indicators for a
gaming device. Ex. 1001, 2.

IPR2016-00767
Patent D503,951 S
Petitioners proposed claim construction is, in pertinent part, that
the 951 patent claims house-shaped arrows . . . that are three-dimensional
[and] the arrows dip down, i.e., increase in thickness toward the roof of the
house. Pet. 23. Patent Owner agrees with this description, at least in part,
asserting that the broadest reasonable construction includes indicators that
are three-dimensional at their point. Prelim. Resp. 13. Patent Owner, while
not necessarily adopting the term dip down, similarly contends that [t]he
claimed indicator in the 951 Patent has a thickness at the roof of the
pentagon shape that appears over the wheel, id. at 18, and maintains that
this is shown in the following cropped and enlarged version of Figure 3 of
the 951 patent:

Id. at 1819. The image above is a portion of Figure 3 of the 951 patent,
which is an enlarged front perspective view of the display having multiple
indicators. Ex. 1001, 2.
We determine that the above-identified parties verbal description will
be helpful by pointing out various features of the claimed design as they
relate to the . . . prior art. Egyptian Goddess, 543 F.3d at 67980. For
purposes of this Decision, we conclude that further verbal elaboration of the
claim of the 951 patent is unnecessary.

IPR2016-00767
Patent D503,951 S
C. Applied References
Reference
Corwin

Exhibit No.
US 3,203,391

Aug. 31, 1965

MARSHALL FEY, SLOT MACHINESA PICTORIAL HISTORY


OF THE FIRST 100 YEARS (Liberty Belle Books, 2nd ed.,
1989) (Fey).
Michael Pollan, Jackpot!, CHANNELS OF
COMMUNICATIONS, June 1986, at 22 (Pollan)
Wismer
US 4,674,748
Jun. 23, 1987

Ex. 1003
Ex. 1004

Ex. 1005
Ex. 1006

Petitioner relies also on the Declaration of Mr. Steven Visser, dated


March 15, 2016, (Ex. 1018) in support of Petitioners arguments.
D. Asserted Ground of Unpatentability
Petitioner asserts the following grounds of unpatentability for the
claim of the 951 patent:
Reference[s]

Basis

Corwin

102(b)

Fey

103(a)

Pollan in view of Wismer

103(a)

II.

ANALYSIS

A. Principles of Law
1. Anticipation
The test for determining anticipation of a design patent claim is the
ordinary observer test. Intl Seaway Trading Corp. v. Walgreens Corp., 589
F.3d 1233, 1240 (Fed. Cir. 2009). Under the ordinary observer test, a design
patent claim is unpatentable if, in the eye of an ordinary observer, giving
such attention as a purchaser usually gives, two designs are substantially the

IPR2016-00767
Patent D503,951 S
same, if the resemblance is such as to deceive such an observer, inducing
him to purchase one supposing it to be the other. Id. at 1239 (quoting
Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S. 511, 528, 20 L.Ed. 731
(1871) (ordinary observer test applied in context of infringement)). [T]he
ordinary observer test requires consideration of the design as a whole. Id.
at 1243 (citations omitted). The mandated overall comparison is a
comparison taking into account significant differences between the two
designs, not minor or trivial differences that necessarily exist between any
two designs that are not exact copies of one another . . . [and] minor
differences cannot prevent a finding of anticipation. Id.
2. Obviousness
In addressing a claim of obviousness in a design patent, the ultimate
inquiry is whether the claimed design would have been obvious to a designer
of ordinary skill who designs articles of the type involved. Apple, Inc. v.
Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal quotation
and citations omitted). This obviousness analysis generally involves two
steps: first, one must find a single reference, a something in existence, the
design characteristics of which are basically the same as the claimed
design; second, once this primary reference is found, other references may
be used to modify it to create a design that has the same overall visual
appearance as the claimed design. High Point Design, LLC v. Buyers
Direct, Inc., 730 F.3d 1301, 1311 (Fed. Cir. 2013) (internal quotation and
citations omitted).
In performing the first step, we must (1) discern the correct visual
impression created by the patented design as a whole; and (2) determine

IPR2016-00767
Patent D503,951 S
whether there is a single reference that creates basically the same visual
impression. Id. at 1312 (internal quotation and citations omitted).
B. The Designer of Ordinary Skill
Petitioner proffers the following description of a person of ordinary
skill in the art (Petitioners POSA), presumably referring to the designer
of ordinary skill in the art:
would have had at least a degree in industrial design or
mechanical engineering, or related field, with one to two years of
experience as a designer of devices that include displays and
indicators. Alternatively, the POSA would have had five to ten
years of experience in designing the ornamental appearance of
devices that include displays and indicators.
Pet. 12 (citing Ex. 1018 36). Patent Owner disagrees, arguing that absent
from Petitioners definition is a requirement that the designer be of skill in
the art related to gaming machines, the subject matter of the 951 patent.
Prelim. Resp. 67. For purposes of the Decision, we need not reach whether
Petitioners more liberal definition of an ordinary designer is correct because
we determine that Petitioner has failed to show a likelihood of prevailing
even under that definition.
C. The Ground of Alleged Anticipation by Corwin
Petitioner asserts that the claim is anticipated by Corwin (Ex. 1003).
Pet. 3340. Specifically, Petitioner argues that Corwin discloses an
instrument with multiple indicators having an overall visual appearance
that is substantially the same as embodiment 14 depicted in FIG. 17 of the
951 Patent. Id. 33.1 Patent Owner opposes. Prelim. Resp. 1424.

For each asserted ground, Petitioner applies the cited prior art against one
embodiment. Pet. 33 (Petitioner has focused the discussion herein on
8

IPR2016-00767
Patent D503,951 S
Corwin is an air navigation instrument having indicators, with [e]ach
indicating means includ[ing] a pointer support 58 which rides on the rim 34
of distance scale 22 . . . [and] pointer 60. Ex. 1003, 1:10, 2:3033. Figures
1, 4, and 5 of Corwin are reproduced below:

certain embodiments of the 951 Patent claim (specifically, embodiment 14


in Ground I, embodiment 8 in Ground II and embodiment 1 in
Ground III).).
9

IPR2016-00767
Patent D503,951 S

Figure 1 is a plan view of the air navigational instrument; Figure 4 is an


enlarged view of one of the indicating members; and Figure 5 is a sectional
view of Figure 4 taken along lines 55, with pointer support 58 and
pointer 60 shaded in red.
Petitioner admits that there are differences between the indicator of
Corwin and that of the claimed design. Pet. 38. For example, Petitioner
notes that Corwins indicators dip down at the roof by bending toward the
screen, rather than becoming thicker as in the 951 Patent. Id. (citing
Ex. 1018 58). Petitioner argues, however, that the differences are too
minor to prevent a finding of anticipation and that [a]s Prof. Visser
explains, a side-by-side comparison reveals that the shape and proportions of
Corwins indicators are practically identical to the claimed design. Pet. 39
(quoting Intl Seaway Trading Corp., 589 F.3d at 1243). Petitioner, relying
on the testimony of Prof. Visser, maintains that the ordinary observer would
find Corwin and the claimed design to be substantially the same. Id. (citing
Ex. 1018 59).
Patent Owner, referring to Corwins Figure 5, notes that Corwins
indicator is arrayed in a step-shape configuration. Prelim. Resp. 15.
Patent Owner argues that, in Corwin, the [roof of the pentagon-shaped]
10

IPR2016-00767
Patent D503,951 S
indicator lies directly atop the display and with essentially no thickness,
while in the 951 Patent the indicator extends from slightly above the rim
and thus far above the wheel or displaydown toward the wheel, exhibiting
substantial relative thickness. Id. at 21.
Petitioners arguments and accompanying testimony are not
persuasive. This is at least because Mr. Vissers opinion that the ordinary
observer would hardly notice the difference or more likely not even notice
the differences is not based on a comparison utilizing the claimed design.
Rather, the side-by-side comparison, as shown in the Petition (Pet. 39), is
merely a two-dimensional comparison. See id.; Ex. 1018 59. In the claim
as depicted in the 951 patents Figure 17 (the embodiment utilized by
Petitioner in this ground), the sidewall of the house clearly is visible. Yet,
Mr. Visser, in comparing the Corwin and the claimed design, shades only
one surfacethe pentagon faceand omits shading from the side of the
claimed design thereby implicitly reducing the claimed design from three- to
two-dimensions. Ex. 1018 58. Similarly, Mr. Vissers purported side-byside comparison involves exclusively the pentagon with the side of the
claimed design erased. Id. at 59. An enlarged view of one of the claimed
indicators as shaded in Mr. Visser Declaration and an excerpt of the side-byside comparison showing that which Mr. Visser identifies as the 951
arrow are shown below.

11

IPR2016-00767
Patent D503,951 S
Id. at 58, 59. Mr. Vissers failure to apply the art to the claimed design
completely undermines his opinion regarding substantial similarity.
Petitioner does not offer adequate argument or evidence to persuade us that
an ordinary observer viewing Corwin and the claimed design in threedimensions would regard, for example, the bend of Corwin and the dip down
of the claim to be minor, trivial, or insignificant differences.
Accordingly, we find Petitioner has not demonstrated that there is a
reasonable likelihood that it would prevail in showing that the challenged
claim is anticipated by Corwin.
D. The Ground of Alleged Obviousness over Fey
Petitioner asserts that the claim would have been obvious over Fey
(Ex. 1004). Pet. 4048. Specifically, Petitioner argues that the overall
design of Feys two upward-pointing indicators are strikingly similar to
that of the 951 patent claimed design and is such that embodiment 8
[Figure 11] of the 951 Patent would have been obvious to a designer of
ordinary skill who designs devices with displays and indicators. Id. at 41
(citing Ex. 1018 60); see also Ex. 1018 61 (referring to Figure 11 as the
eighth embodiment). Patent Owner opposes. Prelim. Resp. 2429.
The pertinent figure from Fey is shown below.

12

IPR2016-00767
Patent D503,951 S

Ex. 1004, 115. The figure depicts the slot machine known as the Double
Bonus. Id. For purposes of comparison with the claimed design, Petitioner
provides the following figure:

Pet. 41; see also Ex. 1018 62 (Mr. Visser utilizing the same). The figure
above is an enlarged portion of the photo of the overall slot machine
showing the indicators featured on the Double Bonus game. Pet. 41.
13

IPR2016-00767
Patent D503,951 S
Petitioner argues that [t]he visual impression of Feys indicators is
basically the same as the claimed design . . . [and], therefore, qualifies as a
suitable primary reference for an obviousness analysis. Id. at 43 (citing
Ex. 1018 63; Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed.
Cir. 1996)). Petitioner notes that Feys indicators have certain differences
from that of the claimed design. Id. For example, Petitioner appears to
concede that Fey is two-dimensional as compared to the three-dimensional
claimed design, contending that Fey utilizes a drop shadow to create an
illusion of shallow thickness which Petitioner characterizes as some
three-dimensionality. Pet. 41, 43. Petitioner argues that Feys use of
drop shadows to indicate visual thickness . . . would suggest any thickness
that may be required by the 951 Patent claim and also that it would have
been obvious to apply the design of Feys indicators to a three-dimensional
display, which would lead to indicators with three-dimensionality. Pet. 45
46 (citing Ex. 1018 65). Petitioner reasons that a designer of ordinary skill
would have been aware of three-dimensional indicators prevalent in the
prior art and that [t]herefore, such a design would be a combination of
well-known elements in a common-sense and predictable manner. Id. at 46
(citations omitted).
Petitioner then notes that Fey lacks the claimed designs dip down
(increase in thickness) at the roof of the pentagon. Id. Petitioner reasons
that it would have been obvious to incorporate this dip down feature in a
three-dimensional implementation of Feys design, asserting that:
[t]his well-known technique is used where a display has a border
or frame that sits above the display (i.e., the border is closer to
the observer) and the base of the indicator sits on top of the
border or frame. [Ex. 1018 66]; see also, e.g., Ex. 1003
14

IPR2016-00767
Patent D503,951 S
[Corwin], Fig. 1. As Professor Visser explains, a designer of
ordinary skill would appreciate that adding a dip to the indicators
reduces the space between each indicator and the display, which
thereby reduces parallax. Ex. 1018, 66. Indeed, this is one of
two design choices available to a designerthe other being to
not dip or bend the indicator (i.e., ignore the parallax).
Id. at 4647. Mr. Visser does not explicitly define parallax or explain
whether or why a designer of ordinary skill might find it to be problematic.
See Ex. 1018 66; id. (suggesting that designers recognize that parallax may
be ignored).
Petitioners arguments do not persuade us that Petitioner is likely to
prevail in proving that the claimed design is obvious over Fey. The details
of the Fey design are not clearly discernable based on the evidence in the
record. For example, we are unable to assess, just by viewing the proffered
photo, the correctness of Mr. Vissers statement that Feys indicators are
shown with a drop shadow creating illusion of shallow thickness. Ex. 1018
60. Additionally, as with the Corwin ground, Petitioners similarity
argument is based on a side-by-side comparison involving an edited, twodimensional depiction of the claimed design. See Pet. 42 (showing, on the
same page, partial figures from the 951 patent where the indicator sides are
visible and the side-by-side comparison where the sides are not visible).
Accordingly, and because Feys lack of the dip down, we cannot
determine that Fey is an acceptable primary reference having design
characteristics of which are basically the same as the claimed design. High
Point Design, LLC, 730 F.3d at 1311.
Further, even if we assume that Fey qualifies as a primary reference,
we are not persuaded by Petitioners proffered reasoning as to why one
would have modified Fey to create a design resulting in the same overall
15

IPR2016-00767
Patent D503,951 S
visual appearance as the claimed design. Id. The purported obviousness of
the dip down is based on the premise that it first would have been obvious
to have three-dimensional indicators. Even if we accept this premise, it is
not discernable from Petitioners exhibit that Fey has a border or frame that
sits above the display such that one would have been motivated to
incorporate a dip down modification. Mr. Visser does not testify that,
even in a three-dimensional implementation in Fey, there would be a
parallax problem in need of solution. See Ex. 1018 66. Lastly, Petitioners
design choice rationale is based on (1) the erroneous implied assumption that
the dip down (increased thickness at the pointer) such as in the claimed
design and a bend as in, e.g., Corwin, are the same choice (Pet. 4647; see
Prelim. Resp. 29 n.3), and (2) Mr. Vissers unpersuasive oversimplification
in opining that there are only two alternative ornamental design choices
available to a designerdo dip/bend the indicator or do not and ignore
parallax (Ex. 1018 66). The exhibits relied upon by Mr. Visser as
examples of three-dimensional indicators suggests that the ordinary designer
is not so constrained. See Ex. 1018 65 (citing Ex. 1012, Fig. 7; Ex. 1005;
Ex. 1007); see also Pet. 7 (showing six depictions of indicators); cf. Prelim.
Resp. 29 (Patent Owner arguing: As with the placement of the indicators,
designers of ordinary skill would recognize various alternatives for the
possible dimensionality of any indicator on a wheel: it could lay flat against
the wheel (as in Corwin (Ex. 1003)), or it could have thickness, as in the
951 Patent. (Ex. 1001.)).
Petitioner has not adequately and persuasively explained why a
designer of ordinary skill would have had a reason to make the two-step
modification proposed by Petitioner and arrive at the claimed design.
16

IPR2016-00767
Patent D503,951 S
Accordingly, we find Petitioner has not demonstrated that there is a
reasonable likelihood that it would prevail in showing that the subject matter
of the challenged claim would have been obvious over Fey.
E. The Ground of Alleged Obviousness over Pollan and Wismer
Petitioner asserts that the claim would have been obvious over Pollan
(Ex. 1005) and Wismer (Ex. 1006). Pet. 4854. Specifically, Petitioner
argues that Pollan and embodiment 1 [Figure 3] of the 951 Patent have
numerous visual similarities such that Pollan is an acceptable primary
reference, and that it would have been obvious to modify Pollan in light of
Wismer and as a matter of design choice. Pet. 4950, 53. Patent Owner
opposes. Prelim. Resp. 3034. Patent Owner argues, inter alia, that
Mr. Vissers opinion is based on hindsight and that his parallax reasoning
lacks support. Id. at 3334.
Pollan, as shown below, is a photo of a well-known game show.

Ex. 1005, 3. The photo shows the gaming device used on the game show.
Pet. 30. Petitioner focuses it arguments on the triangular red, yellow, and
blue indicators. Id. at 48. As Patent Owner notes, the triangular objects
17

IPR2016-00767
Patent D503,951 S
support teardrop-shaped indicators that, in combination with pegs on the
spinning wheel, serve to identify the dollar amount on the wheel that the
contestant may win with a correct guess of a letter. Prelim. Resp. 30.
Wismer discloses a method and means for randomly selecting a
plurality of groups of numbers for a lottery game. Ex. 1006, 1:710.
Wismers gaming device is depicted below.

Figure 1 is a plan view of Wismers device. Id. at 3:3435. The device is


comprised of several discs of different diameters so as to create rings, with
base disc 12, the largest in diameter, having base disc ring 20 exposed
radially outwardly beyond outer disc 14 and having [m]arked on base disc

18

IPR2016-00767
Patent D503,951 S
ring 20 . . . an indicator mark 22 having a pair of alternative indicator marks
24, 26 on opposite sides thereof. Id. at 3:4251.
In order to illustrate its proposed combination, Petitioner includes
partial images of the two references, both shown below.

The left image is a partial photo from Pollan with the contestants and
pedestal omitted. Pet. 49 (citing Ex. 1018 68 [sic, 69]). The right image
is a partial image of Wismers Figure 1 showing the indicators with the
callout lines and numbers removed. Id. at 5152 (citing Ex. 1018 73 [sic,
74]). Petitioner, in comparing the prior art to the claimed design, provides
the partial and enlarged version of Figure 3 of the 951 patent reproduced
below:

Pet. 50. The image above is an enlarged front perspective view of the
display having multiple indicators for a gaming device. Ex. 1001, 2.
19

IPR2016-00767
Patent D503,951 S
Petitioner notes that Pollan utilizes triangular indicators rather than
the claimed pentagonal-shaped but maintains that Pollan is an acceptable
primary reference for the claimed design because both have a gaming
device consisting of a wheel with multiple indicators at the periphery.
Pet. 50. As with the Fey ground discussed above, Petitioner proposes a
modification requiring at least two-steps. Petitioner first argues that it would
have been obvious to modify Pollans triangles to be irregular pentagons
because a designer of ordinary skill would know that any arrow can be an
indicator and pentagons have served as arrows, citing Wismer as an
example. Pet. 51, 5253. Petitioner reasons:
A POSA would be motivated to use the shape of the Wismer
indicators on the Pollan reference to create a hypothetical prior
art reference because the POSA would appreciate that other
indicator designs, such as house-shaped arrows, exist in the prior
art that may provide an equally or more pleasing design and may
serve a functional purpose, for example, by making the selection
more visible to observers or game contestants because a houseshaped arrow is more clearly aligned with the segments relative
to a triangle-shaped arrow.
Id. at 53 (citing Ex. 1018 76). Petitioner, reiterating the same argument
made in the context of the Fey ground, then argues that it would have been
obvious to modify the pentagons to have a dip down as a matter of design
choice between two possible alternativesdip the roof or ignore parallax.
Id. at 53.
Petitioners arguments do not persuade us that Petitioner is likely to
prevail in proving that the claimed design is obvious over Pollan and
Wismer. Even if we assume that Pollan qualifies as a primary reference and
that it then would have been obvious to modify, in light of Wismer, the
triangular red, yellow, and blue indicators of Pollan to be irregular
20

IPR2016-00767
Patent D503,951 S
pentagons, we are not persuaded by Petitioners proffered reasoning as to
why one would have further modified the design to create a design resulting
in the same overall visual appearance as the claimed design. High Point
Design, 730 F.3d at 1311.
Mr. Vissers opinion that it would be obvious to include a dip at the
roof of the indicators is that this is a well-known technique for reducing
parallax where the rim is raised above the face of the display, and is one of
two design choices available to a designerthe other being to not dip or
bend the indicator (i.e., ignore the parallax). Ex. 1018 77. We note that
Mr. Visser does not testify that either Pollan, even as modified, or Wismer
have a parallax problem in need of solution. See Ex. 1018 77. While
Pollans wheel has a discernable raised rim, the triangular indicators do
not sit atop that rim with the point of the triangle overhanging the wheel. It
seems that Pollans design addressed any parallax problem through the use
of the teardrop-shaped indicators and pegs on the wheel. Wismers
pentagons are on what might be considered a rim (base disc ring 20, the
exposed outer portion of base disc 12) but that rim is on the base of a stack
of discs and thus is at least slightly lower thannot raised abovethe
numbers on the other discs with the indicators marked (thus, impliedly twodimensional) on the rim and adjacent to, not overhanging, the numbers on
the next smaller disc. Ex. 1006, 3:4251, 4:4749, Fig. 1. Therefore,
Wismer, like Pollan, does not have a readily apparent parallax problem in
need of a solution through modification. For these reasons and the same
reasons discussed above in the context of the Fey ground, Petitioners design
choice rationale for the dip down modification and the accompanying
opinion of Mr. Visser are not persuasive.
21

IPR2016-00767
Patent D503,951 S
Petitioner has not adequately and persuasively explained why a
designer of ordinary skill would have a reason to make the multi-step
modification proposed by Petitioner and arrive at the claimed design.
Accordingly, we find Petitioner has not demonstrated that there is a
reasonable likelihood that it would prevail in showing that the subject matter
of the challenged claim would have been obvious over Pollan and Wismer.
III.

CONCLUSION

We determine Petitioner has not demonstrated there is a reasonable


likelihood of establishing the unpatentability of the claim of the 951 patent.
IV.

ORDER

For the foregoing reasons, it is


ORDERED that the Petition is denied as to the challenged claim, and
no trial is instituted.

22

IPR2016-00767
Patent D503,951 S
For PETITIONER:
Andrea Reister
areister@cov.com
Jay Alexander
jalexander@cov.com

For PATENT OWNER:


Adam H. Masia
amasia@ngelaw.com
Hoby M. Abern
habern@ngelaw.com
Kevin J. Cukierski
kcukierski@ngelaw.com

23