The U.S. Patent Trial and Appeals Board (PTAB) issued its first-ever ruling in a derivation proceeding with a decision about the inventor of a window spacer and fabrication method going in favor of GED Integrated Solutions Inc., and against Andersen Corp.
Solon, Ohio-based GED provides manufacturing equipment for Silver Line vinyl windows and patio doors, which Bayport, Minn.-based Andersen, the largest U.S. window and door manufacturer, owned until August 2018.
That's when Ply Gem Parent LLC bought the Silver Line and American Craftsman brands and four manufacturing plants from Andersen for $190 million. Ply Gem then merged with NCI Building Products to form the recently named Cornerstone Building Brands.
Silver Line uses GED equipment to form spacer frames with GED software technology called Intercept. The spacer frames then become part of Silver Line's insulated gas units (IGUs), which are used in windows to reduce heat loss during cold weather.
The spacer frame is a critical component for providing a hermetic seal between the IGU's interior space and the exterior environment. Each IGU has two glass panes separated by a metal spacer frame. To create insulation, a technician seals the unit and fills the space between the glass panes with an inert gas, such as argon, through a hole in the spacer frame.
In December 2015, Andersen petitioned the appeals board, which is part of the U.S. Patent and Trademark Office, to cancel claims of a window patent granted to GED. Andersen said its former IGU technology director was the true inventor.
The petition prompted a little-used derivation trial, which addresses originality issues of claimed subject matter under the American Invents Act (AIA) of 2011. The act changed the U.S. patenting regime from a first-to-invent system to a first-to-invent-and-file system.
PTAB took up the case to determine whether Andersen's technology director or two GED engineers invented the spacer window component used in the insulated glass products. A major issue in the proceeding was whether Andersen had proven its technology director conceived of a spacer frame assembly with a "stop" and communicated that conception to a GED co-inventor of the patent.
According to Andersen, in March 2009, Sammy Oquendo, an employee of its former vinyl window and patio door manufacturing subsidiary Silver Line Building Products LLC, came up with a way to improve the manufacturing process of GED's spacer frames and the quality of IGUs. His "conceived" invention was to move the seam in the fourth corner to an offset location so that all four corners of the frame would be identical.
"Mr. Oquendo realized that moving the fourth corner seam away from the corner would have numerous benefits, including reducing IGU seal failures; eliminating the need to seal the corner manually; and enabling a standard, mechanized process to seal all four corners of the IGUs that reduces human errors and increases consistency between manufacturing facilities," Andersen says in its petition submitted to the patent board in December 2016.