Andersen loses window patent appeal

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.

The company's 81-page petition says in March 2009 Oquendo turned his idea into a prototype of a spacer frame unit with its seam offset from the fourth corner. He took traditional Intercept spacer frames, affixed them together with duct tape and modified it.

Later that month, Silver Line officials invited GED's product engineering manager, William Briese, the GED co-inventor, and another GED engineer to an Andersen symposium to discuss manufacturing and IGU issues. The two companies exchanged ideas to address Intercept fourth corner failures and inconsistencies due to the manual assembly process. GED suggested automating the process to seal the fourth corner seam.

However, Oquendo and his colleagues disagreed that automation would solve the challenges. Oquendo then showed the GED engineers his prototype. He followed up with emails giving GED more details and then CAD drawings in May and June 2009.

In June 2009, GED engineers asked Oquendo to experiment on a few prototypes at Silver Line and let them know if the concept proves successful.

Then, in late 2009, a GED engineer visited the Silver Line vinyl window production plant in North Brunswick, N.J. Oquendo says he showed him the June 2009 CAD drawing detailing his invention and he had a drawing for manufacturing the invention sitting on his desk.

In January 2011, Oquendo asked GED for a quote on making software changes to GED's system to manufacture his spacer frame invention. About an hour later, GED engineers showed him a sketch and asked Oquendo to verify the design accuracy.

The next day, GED sent the price quote for the software changes and the sketch in an email with the subject line of "4th corner concept." In the email, Briese told Oquendo "GED does not recommend the fabrication of Intercept spacers in this manner."

Oquendo never replied to the email or followed up with GED, according to Briese, who is the co-inventor of the component with Clifford J. Weber, an R&D technician at GED.

Briese told the patent appeal board he presumed Oquendo would inform him if there was anything inaccurate in the drawing or request a revised drawing. Briese said he didn't hear from Oquendo or anyone at Silver Line about the idea after the Jan. 12, 2011 email.

Then, at the September 2014 GlassBuild America exhibition in Las Vegas, GED showed off a new spacer frame design called "Corner Plus," which Andersen believes is the same invention Oquendo disclosed to GED in 2009.

An Andersen employee attending the trade show testified that he recognized the Corner Plus concept as what Oquendo developed and that Briese told him "the offset seam concept was, 'the best thing that has happened to Intercept since Intercept.'"

Andersen asserted that GED misappropriated Oquendo's invention, branded it as "Intercept Corner Plus," and filed a patent application claiming it.

However, GED argued that the important advance of their invention is the preplanned, precise, repeatable "stop," which accurately positions the connecting elements of an IGU spacer frame regardless of variations in assembly pressure or technique. The "stop" facilitates accurate assembly of the filling holes of the frame with precise overlap.

GED says Oquendo didn't recognize the value or necessity of the "stop" and that simply relocating the exterior seam didn't address the problem. GED argued that without the stop, moving the location of the exterior seams would move the location of the problem, not solve it.

The patent appeal board weighed Andersen's case that the "novel aspect" of the invention is "moving the seam from the corner" against GED's contention that it is the "stop" spaced away from the corners. The panel agreed with GED.

The three administrative judges explained in a 67-page decision that the prototype itself didn't communicate anything about a stop away from the corner.

They also heard Briese testify he had never seen Oquendo's prototype or spring 2009 CAD drawings and deny that he derived any aspect of the invention from Oquendo or anyone Silver Line or Andersen.

Briese testified that merely moving the location of the seam off the fourth corner doesn't do anything to improve alignment, but incorporating a stop at a predetermined location away from the corner does.

The patent board found that rather than deriving the invention of claim from Oquendo, Briese conceived of the stop feature for the claimed spacer frame assembly in 2014. They point to Briese's inventor's notebook, dated April 17, 2014, and witnessed, saying it clearly depicts a stop extending from a tab to prevent further movement when the tab and tail are pushed together.

The inventor's notebook also says under the heading "New design" that the "Advantages" include "positive stop for tab, ensures gas-hole alignment."

Andersen attorneys portrayed a different view of the inventor's notebook, arguing that it instead shows that the novel aspect really was the offset seam, not the stop, because Briese wrote "New design is butt-joint vs. corner joint (existing)" and the "positive stop" is only listed as the fifth advantage.

Andersen also pointed to Briese's notation that "preliminary work was done on this project in Jan. 2011" and the fact that he attached a copy of the January 2011 drawing.

However, the appeals board said the January 2011 drawing has no stop, and didn't support Andersen's arguments about communicating the conceived invention.

The judges also noted that Briese didn't immediately begin work to manufacture a device as allegedly conveyed by Oquendo. Briese didn't file a patent application on the concept until more than three years later in 2014.

The judges also considered that Oquendo never spoke with GED about his alleged design after receiving the January 2011 drawing, and that Andersen does not appear to have done anything with it until filing a provisional application on March 3, 2015.

The panel said it viewed the timing of events as supporting GED's position that their provisional application, which was filed on June 12, 2014, was the result of Briese's conception two months earlier, rather than being derived from what Oquendo allegedly told him in 2009 and 2011.

Although the AIA was enacted in 2011, the full implications of the shift to a first-inventor-to-file system are only now being worked out by the courts and the patent office.

To be deemed the true inventor and own the patent rights, someone must show that he or she conceived the invention first; communicated the invention to one of the inventors of the first-filed patent; and, that the first-filed patent was filed without his or her authorization.

Lawyers at Springut Law PC, a New York.-based firm specializing in intellectual property, share three take-aways from the Andersen case on their website. The first stresses the importance of documentation. The two elements of any derivation proceeding are prior conception and communication of the invention. Springut says the documentation must be detailed with proof of conception encompassing all facets of the disclosed invention and corroborating evidence showing each step is required.

Similarly, Springut says the communication of the invention must be sufficient to enable someone with ordinary skills in the art to make the patented invention.

"The latter is where Andersen's case faltered," the Springut website says. "The inventor had shown a prototype, but that was not enough to understand or practice the invention, and the implicit understanding from the prototype and accompanying discussion was deemed insufficient to have conveyed the invention. So detailed records of what has been conceived and, where applicable, what might be communicated to outsiders is critical."

The second take-away is to act quickly to file. Andersen claimed that its inventor conceived of the invention in 2009, but it didn't file its own patent application until 2016.

"No explanation for that long delay was given," the Springut website says. "Prior to the AIA, that might not have mattered (so long as the invention was not on-sale), but now it clearly does."

The law firm's third recommendation is to monitor competitor filings. The AIA imposes a one-year limitation on derivation proceeding filings. The clock starts ticking when a patent application is published.