Plastics News - May 20, 2019 - 22

22 * Plastics News, May 20, 2019

Andersen loses window patent appeal
By Catherine Kavanaugh
Plastics News Staff
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 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.

Andersen's case
The company's 81-page petition
says that 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.

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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.
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."

Trade show surprise
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.

Patent board's decision
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 gashole 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.

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Plastics News - May 20, 2019

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