graco - petition for ipr d231

8/18/2019 Graco - Petition for IPR D231

1/59

Filed: March 31, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________

GRACO CHILDREN’S PRODUCTS INC.,

Petitioner,

v.

KOLCRAFT ENTERPRISES, INC.,

Patent Owner.

_________________

Case IPR2016-000826Patent D616,231

_________________

PETITION FOR INTER PARTES REVIEW


2/59

IPR2016-00826 Petition for IPR of Patent D616,231

i

TABLE OF CONTENTS

I. INTRODUCTION ...........................................................................................1

II. MANDATORY NOTICES — 37 C.F.R. § 42.8(B) ....................................... 2

A.

Real Parties in Interest .................................................................................... 2

B. Related Matters ............................................................................................... 3

C. Designation of Petitioner’s Counsel ............................................................... 3

D. Service Information ........................................................................................ 4

III. FEE FOR IPR REQUEST — 37 C.F.R. § 42.15(A) ....................................... 4

IV. GROUNDS FOR STANDING ........................................................................ 4

V. IDENTIFICATION OF CHALLENGE .......................................................... 4

VI. OVERVIEW OF THE ’231 PATENT ............................................................6

VII. CLAIM CONSTRUCTION ............................................................................ 9

A. Legal Standard For Claim Construction Of A Design Patent ........................ 9

B. Claim Construction Of The ’231 Patent ....................................................... 10

VIII. APPLICABLE LEGAL STANDARDS ........................................................ 15

A. Anticipation .................................................................................................. 15

B.

Obviousness .................................................................................................. 17

IX. DETAILED EXPLANATION OF THE GROUNDS FORUNPATENTABILITY .................................................................................. 19

A. Ground 1 – The Claim Is Anticipated Under 35 U.S.C. § 102(b) ByCelestina-Krevh ............................................................................................ 20

1. The play yard legs of Celestina-Krevh are substantially similar to the’231 Patent’s claimed design .................................................................... 20

2. Any differences between Celestina-Krevh and the ’231 Patent’s claimed

design are trivial ....................................................................................... 26

3. Celestina-Krevh does not disclose a fabric covering on the legs .............27

4. A U.S. District Court found that Celestina-Krevh discloses a curved playyard leg regardless of covering ................................................................29

5. Celestina-Krevh still discloses contours of curved play yard legs even ifcovered by fabric and anticipates the ’231 Patent claim .......................... 30


3/59


ii

B. Ground 2 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over Celestina-Krevh ............................................................................................................ 31

C. Ground 3 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over Celestina-Krevh In View Of Gottlieb ........................................................................... 32

D.

Ground 4 – The Claim Is Anticipated Under 35 U.S.C. § 102(e) ByDeHart ........................................................................................................... 34

E. Ground 5 – The Claim Is Obvious Under 35 U.S.C. § 103(a) OverDeHart ........................................................................................................... 37

F. Ground 6 – The Claim Is Obvious Under 35 U.S.C. § 103(a) OverChen ’393 ...................................................................................................... 39

G. Ground 7 – The Claim Is Anticipated Under 35 U.S.C. § 102(b) By TheFold ‘N Go Manual ....................................................................................... 42

H. Ground 8 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over The Fold‘N Go Manual ............................................................................................... 46

I. Ground 9 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over The Fold‘N Go Manual In View Of Gottlieb ............................................................. 47

J. Ground 10 – The Claim Is Obvious Under 35 U.S.C. § 103(a) OverCelestina-Krevh In View Of Hartenstine ..................................................... 48

K. Ground 11 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over TheFold ‘N Go Manual In View Of Hartenstine ................................................ 50

X. CONCLUSION ..............................................................................................51


4/59


iii

TABLE OF AUTHORITIES

Page(s)

CASES

Apple, Inc. v. Samsung Elec. Co., Ltd.,

678 F.3d 1314 (Fed. Cir. 2012)................................................... 17, 33, 48, 51

Bonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,

402 U.S. 313 (1971) ...................................................................................... 29

Caterpillar, Inc. v. Miller International, Ltd.,

Case IPR2015-00416, Decision to Institute Inter Partes Review,

Paper No. 4 (PTAB July 9, 2015) ................................................................. 10

Contessa Food Prods., Inc. v. Conagra, Inc.,

282 F.3d 1370 (Fed. Cir. 2002)....................................................................... 9

Crocs, Inc. v. Int’l Trade Comm’n,

598 F.3d 1294 (Fed. Cir. 2010)............................................................... 10, 17

Dobson v. Dornan,

118 U.S. 10 (1886) .......................................................................................... 9

Door-Master Corp. v. Yorktowne,

256 F.3d 1308 (Fed. Cir. 2001)......................................................... 16, 17, 30

Durling v. Spectrum Furniture Co.,

101 F.3d 100 (Fed. Cir. 1996)........................................................... 31, 37, 41

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) (en banc) ............................................ 9, 10, 16

Gorham Mfg. Co. v. White,81 U.S. 511 (1871) ............................................................................ 16, 30, 45

High Point Design LLC v. Buyers Direct, Inc.,

730 F.3d 1301 (Fed. Cir. 2013).............................................................. passim


5/59


iv

In re Blum,

374 F.2d 904 (C.C.P.A. 1967) ...................................................................... 13

In re Carter ,

673 F.2d 1378 (C.C.P.A. 1982) ........................................................ 31, 37, 41

In re Cuozzo Speed Techs., LLC ,

778 F.3d 1271 (Fed. Cir. 2015)....................................................................... 9

In re Haruna,

249 F.3d 1327 (Fed. Cir. 2001)..................................................................... 17

In re LAMB,

286 F.2d 610 (C.C.P.A. 1961) ...................................................................... 19

In re Rosen,

673 F.2d 388 (C.C.P.A. 1982) ...................................................................... 18

In re Stevens,

173 F.2d 1015 (C.C.P.A. 1949) .............................................................. 32, 41

Int’l Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233 (Fed. Cir. 2009).............................................................. passim

Litton Sys., Inc. v. Whirlpool Corp.,

728 F.2d 1423 (Fed. Cir. 1984)..................................................................... 17

MRC Innovations, Inc. v. Hunter Mfg., LLP,

747 F.3d 1326 (Fed. Cir. 2014).............................................................. passim

Richardson v. Stanley Works, Inc.,

597 F.3d 1288 (Fed. Cir. 2010)..................................................................... 10

Schering Corp. v. Geneva Pharms., Inc.,339 F.3d 1373 (Fed. Cir. 2003)..................................................................... 15


6/59


v

FEDERAL STATUTES

35 U.S.C. § 102 ........................................................................................... passim

35 U.S.C. § 103 ........................................................................................... passim

35 U.S.C. § 112 ................................................................................................ 6, 7

35 U.S.C. § 171 .................................................................................................. 17

FEDERAL REGULATIONS

37 C.F.R. § 1.152 ................................................................................................. 9

37 C.F.R. § 42.8 ................................................................................................... 2

37 C.F.R. § 42.15 ................................................................................................. 4

37 C.F.R. § 42.100 ............................................................................................... 9

37 C.F.R. § 42.104 ............................................................................................... 4


7/59


vi

EXHIBIT LIST

Exhibit

No.Description

1001 U.S. Design Patent No. D616,231 (the challenged patent)1002 Declaration of Robert John Anders, IDSA, in Support of Petition for

Inter Partes Review of U.S. Patent No. D616,231

1003 U.S. Design Patent No. D448,218 to Celestina-Krevh

1004 Fold ‘N Go élan Deluxe Care Center Instruction Manual, Century

Products

1005 U.S. Patent No. 3,187,352 to Gottlieb

1006 U.S. Design Patent No. D500,213 to DeHart et al.

1007 U.S. Design Patent No. D494,393 to Chen1008 U.S. Patent No. 6,510,570 to Hartenstine et al.

1009 Prosecution File History for U.S. Design Patent No. D616,231

1010 In re Troutman et al., Appeal No. 2009-005005, Application No.

29/244,885 (BPAI Sept. 23, 2009)

1011 dictionary.com definition of “exposed”

1012 Prosecution File History for U.S. Design Patent No. D604,970

1013 Order Denying Defendant’s Motion for Summary Judgment, Dkt.

No. 82, Graco Children’s Products Inc. v. Baby Trend, Inc., No.2:10-cv-05897-JST (C.D. Cal. Oct. 12, 2011)

1014 Google search results for “Century Fold N Go elan Deluxe Care

Center”


8/59


1

I. INTRODUCTION

Graco Children’s Products Inc. (“Petitioner” or “Graco”) requests inter

partes review of the claim of U.S. Design Patent No. D616,231 (the “’231 Patent”)

(Ex. 1001), assigned on its face to Kolcraft Enterprises, Inc. (“Patent Owner” or

“Kolcraft”). This Petition shows by a preponderance of the evidence, and

supported by the accompanying Declaration of Robert John Anders (Ex. 1002),

that there is a reasonable likelihood that Petitioner will prevail on invalidating the

’231 Patent based on prior art that anticipates or renders obvious the ’231 Patent

claim. The’231 Patent should therefore be found unpatentable and cancelled.

The ’231 Patent is a design

patent directed to the ornamental

design for “Exposed Legs for a Play

Yard.” The ’231 Patent contains a

single claim and five figures

depicting a single embodiment. The

figures of the ’231 Patent show a

play yard with what appear to be curved

legs that bow outward. As shown in Figure 1, the curved legs are depicted in solid

lines with a boundary line extending down the center of leg in the foreground.

Thus, the only features that appear to be claimed are the portions of the legs shown

’231 Patent – Figure 1


9/59


2

in solid lines in certain figures and up to and including the boundary line in the one

leg shown in Figure 1.

Even beyond issues related to indefiniteness, what is fatal to the ’231 Patent

claim is the fact that none of the elements of the claimed design are new. Play

yards with exposed legs, for example,

have been around for decades and are not

new. Even more, play yards with curved

legs had been well-known for many years

prior to the priority date of the ’231 Patent.

For example, U.S. Design Patent No.

D448,218 to Celestina-Krevh (“Celestina-

Krevh”) (Ex. 1003), filed by Graco in 2000, disclosed designs nearly identical to

the one claimed in the ’231 Patent. Also in 2000, four years prior to the filing of

the ’231 Patent, Century Products (which was later acquired by Petitioner’s parent

company) began to market and sell a play yard with curved legs. (Ex. 1004.)

II. MANDATORY NOTICES — 37 C.F.R. § 42.8(B)

A. Real Parties in Interest

Graco Children’s Products Inc. and its parent, Newell Rubbermaid, Inc., are

real parties-in-interest.

Fig. 1 – Celestina-Krevh


10/59


3

B. Related Matters

The Patent Owner has sued the Petitioner, alleging infringement of, inter

alia, the ’231 Patent. Kolcraft Enterprises, Inc. v. Graco Children’s Products Inc.,

No. 1:15-cv-07950 (N.D. Ill.).

Petitioner has also filed the following petitions for inter partes review as to

other Kolcraft patents:

Case IPR2016-00810: Petition for inter partes review of U.S. Design

Patent No. D570,621 (the “’621 Patent”); and

Case IPR2016-00816: Petition for inter partes review of U.S. Design

Patent No. D604,970 (the “’970 Patent”).

Both the ’621 Patent and the ’970 Patent claim priority to the same application as

the ’231 Patent. Kolcraft also asserted the ’621 Patent and the ’970 Patent against

Petitioner in the pending district court litigation.

C. Designation of Petitioner’s Counsel

Petitioner identifies the following lead and backup counsel:

Lead Counsel Backup Counsel

Gregory J. Carlin (Reg. No. 45,607)Meunier Carlin & Curfman LLC

999 Peachtree Street, NE, Suite 1300Atlanta, GA 30309Tel: (404) 645-7700Fax: (404) 645-7707

E-mail: [email protected];[email protected]

Walter Hill Levie III (Reg. No. 72,016)John W. Harbin ( pro hac vice to be filed)

Meunier Carlin & Curfman LLC999 Peachtree Street, NE, Suite 1300

Atlanta, GA 30309Tel: (404) 645-7700Fax: (404) 645-7707

E-mail: [email protected]; [email protected]


11/59


4

D. Service Information

Petitioner consents to electronic service in this proceeding via (1) filing

documents in the Patent Review Processing System (“PRPS”) or (2) emailing the

documents to the above-designated counsel (when not filed in PRPS).

III. FEE FOR IPR REQUEST — 37 C.F.R. § 42.15(A)

The required fee of $23,000 is included with this Petition. The Director is

authorized to charge any additional fees required to Deposit Account No. 50-5226.

IV.

GROUNDS FOR STANDING

Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’231 Patent is

available for inter partes review and that it is not barred or estopped from

requesting inter partes review challenging the ’231 Patent claim on the grounds

identified in this Petition. This Petition is being filed within one year of Petitioner

being served with a complaint for patent infringement.

V. IDENTIFICATION OF CHALLENGE

Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests inter partes review of

the sole claim of the ’231 Patent based on the following prior art:

Exhibit DescriptionFiling

Date

Publication/

Issue Date1003

U.S. Design Patent No. D448,218to Celestina-Krevh (“Celestina-Krevh”)

May 5,2000

Sept. 25,2001

1005U.S. Patent No. 3,187,352

to Gottlieb (“Gottlieb”)June 7,1962

June 8,1965

1006U.S. Design Patent No. D500,213

to DeHart et al. (“DeHart”)June 30,

2003Dec. 28,

2004


12/59


5

Exhibit DescriptionFiling

Date

Publication/

Issue Date

1007U.S. Design Patent No. D494,393

to Chen (“Chen ’393”)Jan. 7,2004

Aug. 17,2004

1004 Fold ‘N Go élan Deluxe Care CenterInstruction Manual, Century Products(“Fold ‘N Go Manual”)

N/A Aug. 13,2003

1008U.S. Patent No. 6,510,570

to Hartenstine et al. (“Hartenstine”)May 8,2001

Jan. 28,2003

Section VII(B), infra, explains how the claim should be construed under the

broadest reasonable interpretation. Under the broadest reasonable interpretation,

Petitioner requests inter partes review based on the following grounds:

Ground No. Statutory Basis Description

1 35 U.S.C. § 102(b) Anticipated by Celestina-Krevh

2 35 U.S.C. § 103(a) Obvious over Celestina-Krevh

3 35 U.S.C. § 103(a)Obvious over Celestina-Krevh in viewof Gottlieb

4 35 U.S.C. § 102(e) Anticipated by DeHart

5 35 U.S.C. § 103(a) Obvious over DeHart

6 35 U.S.C. § 103(a) Obvious over Chen ’3937 35 U.S.C. § 102(b) Anticipated by the Fold ‘N Go Manual

8 35 U.S.C. § 103(a) Obvious over the Fold ‘N Go Manual

9 35 U.S.C. § 103(a)Obvious over the Fold ‘N Go Manual inview of Gottlieb

10 35 U.S.C. § 103(a)Obvious over Celestina-Krevh in viewof Hartenstine

11 35 U.S.C. § 103(a)Obvious over the Fold ‘N Go Manual inview of Hartenstine


13/59


6

VI. OVERVIEW OF THE ’231 PATENT

The ’231 Patent, entitled “Exposed Legs for a Play Yard,” was filed on July

8, 2009,1 as U.S. Patent Application No. 29/339,831 (the “’831 Application”). (Ex.

1001.) The ’831 Application claimed priority to U.S. Patent Application

29/244,885 (the “’885 Application”), filed on December 15, 2005, and U.S.

Application No. 29/216,591 (the “’591 Application”), filed on November 5, 2004.

(Ex. 1001.) The ’831 Application contained a single claim and seven figures. (Ex.

1009; Ex. 1002 ¶ 30.) The figures were directed to an ornamental design for

exposed legs for a play yard. (Ex. 1009.)

In a non-final Office Action, the Office rejected the claim under 35 U.S.C.

§ 112, first and second paragraphs, because “the claimed invention is not described

in such full, clear, concise, and exact terms as to enable any person skilled in the

art to make and use the same.” (Ex. 1009, 10/13/09 NFOA at 2.) The Office further

alleged that the claimed invention “fails to particularly point out and distinctly

claim the subject matter which applicant regards as the invention.” ( Id.) The Office

identifed inconsistencies across the drawings, finding that “the metes and bounds

1 Because the parent application for the ’231 Patent was filed prior to the effective

date of the America Invents Act (“AIA”), the pre-AIA statutes apply here.


14/59


7

of what is being claimed is not clear from the

inconsistent drawing[s].” ( Id.) For instance, in

the perspective shown in originally-filed

Figure 1, the entire design is in dashed lines,

and thus unclaimed. Further, the Office

provisionally rejected the claim under the

doctrine of obviousness-type double patenting in

view of the claim in the ’885 Application. ( Id.)

In response, Applicants submitted an amended version of Figure 1 to add

solid lines and a boundary line to the legs.2 ( Id. 2/11/10 Response at 4.) Applicants

also cancelled Figures 6 and 7 “because the top and bottom views do not form part

of the claimed design.” ( Id.) Applicants also filed a terminal disclaimer as to the

’970 Patent to overcome the provisional obviousness-type double patenting

rejection. ( Id. 2/11/10 Terminal Disclaimer.) The ’831 Application was thereafter

allowed on March 10, 2010. ( Id.) The ’231 Patent issued on May 25, 2010. ( Id.)

2 Although not the proper subject of an inter partes review, and not before the

Board, Petitioner submits that the ’231 Patent is also nonenabling and indefinite

under 35 U.S.C. § 112. Petitioner reserves its rights to challenge the ’231 Patent in

this regard.

Originally-filed Fig. 1

’831 Application


15/59


8

The ’231 Patent contains the following figure descriptions and figures:

Figure 1 – “[A] perspective view of

a play yard with exposed legs.”

(Ex. 1001 at description of Fig. 1.)

Figure 2 – “[A] front view of

the playard of FIG. 1[.]”

( Id . at description of Fig. 2.)

Figure 3 – “[A] rear view of the

playard of FIG. 1[.]”


Figure 4 – “[A] right side view of the



Figure 5 – “[A] left side view of the




16/59


9

The description further provides:

There is no fabric covering the exposed legs shown in any of

FIGS. 1-5.

The features shown in broken lines consisting of only dashes in

FIGS. 1-5 are for illustrative purposes only and do not form part of the

claimed design. The broken line consisting of dashes and dots in FIG.

1 is a boundary line that shows that the claimed design extends to the

boundary line.

( Id. at description.)

VII.

CLAIM CONSTRUCTION

A. Legal Standard For Claim Construction Of A Design Patent

A claim subject to inter partes review receives the “broadest reasonable

construction in light of the specification of the patent in which it appears.” 37

C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC , 778 F.3d 1271,

1279-81 (Fed. Cir. 2015). With respect 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 (Fed. Cir. 2008) (en banc) (citing Dobson v.

Dornan, 118 U.S. 10, 14 (1886)).

The scope of the ’231 Patent is defined by the solid lines (as opposed to the

broken or dashed lines) depicted in Figures 1-5, in conjunction with their

descriptions. See, e.g., Egyptian Goddess, 543 F.3d at 680 (citing 37 C.F.R.

§ 1.152); see also Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370,


17/59


10

1378 (Fed. Cir. 2002). “[D]esign patents are typically claimed according to their

drawings, and claim construction must be adapted to a pictorial setting.”

Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010) (citing

Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1302-03 (Fed. Cir. 2010)). But,

the Federal Circuit has said that it may also be “helpful to point out . . . various

features of the claimed design as they relate to . . . the prior art.” Egyptian

Goddess, 543 F.3d at 680; see also Caterpillar, Inc. v. Miller International, Ltd.,

Case IPR2015-00416, Decision to Institute Inter Partes Review, Paper No. 4 at 5-6

(PTAB July 9, 2015) (agreeing with Petitioner’s proposed construction and finding

“it helpful to describe verbally certain features of the claim”). As a result,

Petitioner proposes a claim construction in view of the broadest reasonable

construction, based on the solid lines of the ’231 Patent figures with additional

descriptions of certain features of the claimed design.

B.

Claim Construction Of The ’231 Patent

According to the specification, the ’231 Patent claims “[t]he ornamental

design for the exposed legs for a play yard, as shown and described.” (Ex. 1001 at

claim.) The specification states that “[t]he features shown in broken lines

consisting of only dashes in FIGS. 1-5 are for illustrative purposes only and do not

form part of the claimed design.” ( Id . at description.) The specification further

provides that “[t]here is no fabric covering the exposed legs shown in any of FIGS.


18/59


11

1-5.” ( Id.) To address the boundary line shown in Figure 1, the specification states

that “[t]he broken line consisting of dashes and dots in FIG. 1 is a boundary line

that shows that the claimed design extends to the boundary line.” ( Id.)

Although the law leans against construing figures of a design patent with

words, the ’231 Patent claim includes the exposed legs as shown and described.

( Id. at claim.) The descriptions are in words. Therefore, based on the broadest

reasonable construction, it is appropriate and helpful to construe the terms

“exposed” and “no fabric covering” with appropriate verbiage.

In approaching claim construction for the ’231 Patent, what proves difficult

is that the claimed design is unclear as to scope. For instance, when Figures 1-5 are

viewed together, they are so irreconcilable that Petitioner submits that they are

indefinite. The claimed portions of the legs conflict between Figure 1, Figures 2-3,

and Figures 4-5. Figure 1 shows the play yard at a perspective view with the short

side of Figure 4 or 5 angled 45 degrees from the viewer, with one leg entirely in

solid lines with white space in between, and another leg in the foreground which

includes a boundary line down the center. Because the boundary line is down the

center, the leg in the foreground is split into 90 degrees (one-half of the 180-degree

field of view) on either side of the solid line. Thus, the solid line is 135 degrees

(the 90 degrees shown plus the 45 degree perspective angle) from the panel shown

in Figures 4 and 5. The view of Figures 4 and 5, when the end of the play yard is


19/59


12

rotated 45 degrees into full elevation view, then should show the solid line

separating a 45 degree (1/4) portion of the legs. Instead, Figures 4 and 5 show all

invisible lines.

Referring to Figures 2 and 3 (showing the front and rear sides of the play

yard, respectively), the full outer contours or silhouettes of two play yard legs are

seen in solid lines. Thus, the claimed surface from the orthogonal view of Figures

2 and 3 would be 180 degrees. Rotating the view 90 degrees from Figures 2 and 3

to Figures 4 and 5 would then leave 90 degrees of the legs still claimed and the

solid line should extend through the middle of the 180 degrees of the legs shown in

Figures 4-5. Instead, Figures 4 and 5 show all invisible lines.

In view the foregoing, Petitioner submits that the narrowest (and thus most

difficult to invalidate) construction for the ’231 Patent would be to rely on the

designs shown in Figures 2 and 3 (covering a full 180 degrees within the solid

lines). Any art that would read on what is shown in Figures 2 and 3, would also

apply to the remaining figures of the ’231 Patent, including Figure 1. Petitioner

thus proceeds in view of providing a broadest reasonable construction of the

narrowest possible claim – what is shown in Figures 2 and 3.3

3 Petitioner admits this is confusing – but the confusion arises because the ’231

Patent claim is indefinite. Petitioner is therefore forced to concoct a theoretical


20/59


13

Petitioner submits that the ’231 Patent claim should be construed as “curved

legs with the unconcealed outer contours shown in FIGS. 2-3.” The most dominant

disclosures of Figures 2 and 3 of the ’231 Patent are the play yard legs in solid

lines with white space between those lines. The Patent Owner made no attempt to

show internal contours or shading to denote, for example, shape or form. Design

patent practice provides for showing texture as surface ornamentation, material

composition, and even surface appearance, such as shininess, through use of

contours and/or shading. MPEP 1503.02. By using white space, the Patent Owner

eschewed being limited to a particular surface appearance. See In re Blum, 374

F.2d 904, 907, n.1 (C.C.P.A. 1967) (“As the drawing constitutes substantially the

whole disclosure of the design, it is of utmost importance that it be so well

executed both as to clarity of showing and completeness that nothing regarding the

shape, configuration and surface ornamentation of the article sought to be patented

is left to conjecture.”).

To properly embrace the lack of features shown in Figures 2 and 3, then, the

term “exposed” should not be restricted to any particular surface treatment,

material, or covering. If “exposed” were interpreted so narrowly as to mean

construction. If instead a broadest possible construction is used, Figures 4 and 5

would dictate the scope and the entire claim, which would be to invisible lines.


21/59


14

uncovered, the scope of the ’231 Patent claim would not capture curved legs with

any type of covering – plastic or paint, for example. Instead, the Patent Owner, by

use of the term “exposed,” expressed its desire to capture the very thing shown by

Figures 2 and 3 – the silhouette or outer contours of the legs.

Dictionary.com has two definitions for the term “exposed” which are

informative of possible constructions:

1. left or being without shelter or protection:

2.

laid open to view; unconcealed.

(Ex. 1011.) In the ’885 Application, to which the ’231 Patent claims priority, the

construction argued by the Patent Owner, and adopted by the Examiner and the

BPAI, was number 1 – that exposed meant the absence of a fabric covering. (See

Ex. 1010.) Instead, the number 2 definition is more informative and relevant. A

form-fitting covering, such as paint, a tightly-fitting fabric, or plastic coating, may

protect but it does not conceal, and is thus the broader interpretation.

The Board should also, then, view the term “no fabric covering” in the

context of the term “exposed” and the ’231 Patent figures. The majority of early

play yards had legs at least partially covered by fabric soft goods that had enough

structure to conceal the contours of the underlying play yard structure. In this

context, the term “no fabric covering” is merely illustrative of the proper

construction of “exposed.” The broadest reasonable interpretation of “no fabric


22/59


15

covering” then is not the complete absence of fabric – just that the fabric does not

conceal the silhouette or outer contours of the curved legs. Otherwise, the ’231

Patent claim would have the odd scope of covering any visible legs regardless of

whether made of, or covered by, plastic, paint, metal, etc., except for legs covered

by or made with fabric. The ’231 Patent claim could then be designed around by

merely applying a coating of sheer, thin fabric, like a nylon or silk, that left the

contours of the curved legs entirely apparent – the same as if painted or covered by

a thin plastic cover – and yet still have the outer contours completely evident.

Accordingly, Petitioner proposes that the ’231 Patent claim, under the

broadest reasonable interpretation, be construed as “curved legs with the

unconcealed outer contours shown in FIGS. 2-3.” As explained in further detail

below, Petitioner sets forth its grounds for unpatentability based on this broadest

reasonable interpretation.

VIII.

APPLICABLE LEGAL STANDARDS

A.

Anticipation

“A patent is invalid for anticipation if a single prior art reference discloses

each and every limitation of the claimed invention.” Schering Corp. v. Geneva

Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Prior art under 35 U.S.C.

§ 102(b) includes subject matter that was “patented or described in a printed

publication in this or a foreign country . . . more than one year prior to the date of


23/59


16

the application for patent in the United States.” 35 U.S.C. § 102(b). Prior art under

35 U.S.C. § 102(e), on the other hand, includes the subject matter of certain

international applications, U.S. patent application publications, and certain U.S.

patents as of the application’s respective U.S. filing date. See 35 U.S.C. § 102(e);

see also MPEP 2136.

The sole test for determining invalidity of a design patent under 35 U.S.C.

§ 102 is the “ordinary observer test.” See Int’l Seaway Trading Corp. v. Walgreens

Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009) (applying the ordinary observer test

used for infringement analysis of a design patent in Gorham Mfg. Co. v. White, 81

U.S. 511, 528 (1871), to invalidity analysis of design patents). In an invalidity

analysis, the designs to be compared are the design as claimed and the prior art

reference. See Int’l Seaway, 589 F.3d at 1240 (citing Egyptian Goddess, 543 F.3d

at 676). Under the “ordinary observer test,” a design patent is invalid if, “in the eye

of an ordinary observer, giving such attention as a purchaser usually gives, two

designs are substantially the same, if the resemblance is such as to deceive such an

observer, inducing him to purchase one supposing it to be the other.” Gorham, 81

U.S. at 528; see also Int’l Seaway, 589 F.3d at 1239; Door-Master Corp. v.

Yorktowne, 256 F.3d 1308, 1313 (Fed. Cir. 2001). This comparison takes into

account only significant differences between two designs; “minor differences

cannot prevent a finding of anticipation.” Int’l Seaway, 589 F.3d at 1243; see also


24/59


17

Door-Master , 256 F.3d at 1312-13. Application of the overall visual effect of the

designs in question is used to determine whether the claimed design and prior art

are substantially the same to an ordinary observer. See Crocs, 598 F.3d at 1303.

B. Obviousness

Pursuant to 35 U.S.C. § 171, “provisions of [Title 35] relating to patents for

inventions shall apply to patents for designs, except as otherwise provided.” 35

U.S.C. § 171. As a result, “35 U.S.C. § 103 (and all the case law interpreting that

statute) applies with equal force to a determination of the obviousness of either a

design or a utility patent.” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423,

1441 (Fed. Cir. 1984); see also In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.

2001) (“Section 103 applies to design patents in much the same manner as it

applies to utility patents”).

In the context of design patents, “the ultimate inquiry under section 103 is

whether the claimed design would have been obvious to a designer of ordinary

skill who designs articles of the type involved.” MRC Innovations, Inc. v. Hunter

Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir. 2014) (internal quotation and citations

omitted); see High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313

(Fed. Cir. 2013); Apple, Inc. v. Samsung Elec. Co., Ltd., 678 F.3d 1314, 1329 (Fed.

Cir. 2012).

The relevant inquiry is a two-step process. The first step is to identify a


25/59


18

primary reference – “a single reference, ‘a something in existence, the design

characteristics of which are basically the same as the claimed design.’” MRC

Innovations, 747 F.3d at 1331 (quoting In re Rosen, 673 F.2d 388, 391 (C.C.P.A.

1982)). The “basically the same” test requires consideration of the “visual

impression created by the patented design as a whole.” MRC Innovations, 747 F.3d

at 1331.

“[O]nce 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, 730 F.3d at 1311 (internal quotation and

citations omitted). These secondary references, in order to modify the primary

reference, must be “so related that the appearance of certain ornamental features in

one would suggest the application of those features to the other.” MRC

Innovations, 747 F.3d at 1334 (finding that mere similarity in appearance is

sufficient to suggest that one should apply certain features to the other design).

When a secondary reference is “so related” to the primary reference, the similarity

in appearance among them is enough to motivate a designer of ordinary skill to

combine features from one with features from the other, to create a hypothetical

reference. Id . at 1334-35; see also High Point Design, 730 F.3d at 1315.

Once a hypothetical reference has been created, the next step is to analyze

the hypothetical reference and the claimed design through the eyes of a designer of


26/59


19

ordinary skill to determine if a design patent is invalid for obviousness. See MRC

Innovations, 747 F.3d at 1331 (affirming district court’s finding of a design patent

invalid as obvious in light of the prior art); High Point Design, 730 F.3d at 1313.

As with a reference for anticipation under 35 U.S.C. § 102, the similarity of

the overall design for obviousness under 35 U.S.C. § 103 is what is important;

small differences are inconsequential. See MRC Innovations, 747 F.3d at 1335

(finding insubstantial and obvious the addition of an ornamental surge stitching on

top of a garment’s existing seam, where no prior art had exactly the same stitching

as the claimed design); In re LAMB, 286 F.2d 610, 611-12 (C.C.P.A. 1961)

(upholding rejection of design claim as invalid because the slight change in some

dimensions over the prior art is insignificant).

IX. DETAILED EXPLANATION OF THE GROUNDS FOR

UNPATENTABILITY

This Petition explains that the ’231 Patent is invalid on multiple grounds.

The references presented by Petitioner provide visual disclosures, many of which

were not considered by the Office during prosecution. The references and grounds

are not redundant to each other given the different disclosures of the references. A

reasonable examiner would consider these references to be important in deciding

whether the claims are patentable, and this Petition demonstrates a reasonable

likelihood that Petitioner will prevail.


27/59


20

A. Ground 1 – The Claim Is Anticipated Under 35 U.S.C. § 102(b) By

Celestina-Krevh

Celestina-Krevh discloses the same overall visual appearance as the ’231

Patent. (Ex. 1002 ¶ 103.) An ordinary observer would not take the claimed design

in the ’231 Patent for a new and different design. ( Id.) As a result, the claim is

invalid under 35 U.S.C. § 102(b).

Celestina-Krevh is a U.S. design patent, filed on May 5, 2000, as U.S.

Application No. 29/122,855. (Ex. 1003.) Celestina-Krevh issued on September 25,

2001, more than one year prior to the filing date of the ’231 Patent. ( Id.) Therefore,

Celestina-Krevh is prior art under 35 U.S.C. § 102(b).

Celestina-Krevh specifically claims “[t]he ornamental design for curved legs

for a playard .” ( Id. at claim (emphasis added).) The legs of the play yard disclosed

in Celestina-Krevh, which are exposed, have a virtually identical overall visual

appearance to the ’231 Patent’s claimed design and thus anticipate the curved legs

with unconcealed outer contours shown in Figures 2 and 3 of the ’231 Patent.

1. The play yard legs of Celestina-Krevh are substantially similar to

the ’231 Patent’s claimed design

Below are figures from the ’231 Patent and Celestina-Krevh that show

respective views in a side-by-side format:


28/59


21

View ’231 Patent Celestina-Krevh

Perspective

Fig. 1 Fig. 1

Front

Fig. 2 Fig. 2

Rear

Fig. 3 Fig. 3


29/59


22

View ’231 Patent Celestina-Krevh

Right Side

Fig. 4 Fig. 4

Both the ’231 Patent’s claimed design and Celestina-Krevh share many

common visual features, such that they are substantially similar (if not identical).

(Ex. 1002 ¶ 103.) In fact, Mr. Anders “was dismayed to see that that the ’231

Patent is almost a direct reproduction of the design depicted . . . in Celestina-

Krevh.” ( Id., ¶ 104 (emphasis added).) “It is [Mr. Anders’s] opinion that the named

inventors of the ’231 Patent directly copied the drawings of Celestina-Krevh.” ( Id.)

Overlays of the ’231 Patent’s design (shown in red) over the respective

figures of Celestina-Krevh (shown in black) show nearly identical shapes, sizes,

and designs:


30/59


23

Fig. 1 of Celestina-

Krevh with Fig. 1 of

’231 Patent Overlaid








31/59


24

(Ex. 1002, ¶ 105.) In fact, direct copying seems to be the only logical conclusion,

given that Celestina-Krevh issued on September 25, 2001 – more than two years

before the ’591 Application (to which the ’231 Patent claims priority) was even

filed .

In view of the foregoing, it comes as little surprise that the ’231 Patent and

Celestina-Krevh share the following features:

(1) both designs show the outer contours of legs of a play yard (id. ¶ 103);

(2)

both designs are directed to rectangular play yards (id. ¶ 110);

(3) both designs show legs that have upright orientations (id. ¶ 112);

(4) both designs show legs of a play yard that are curved and gently bowing

outwards at the middle (id. ¶ 114);

(5) both designs show legs at the four corners of the play yard (id. ¶ 111);

(6)

both designs show legs that are thin and elongated (id. ¶ 115);

(7) both designs show legs that bow slightly outward at the top (id. ¶ 116);

(8) both designs have proportionally similar height-to-width ratios (id.

¶ 109); and

(9) both designs have proportionally similar length-to-width ratios (id.).

As an initial matter, and regarding similarity (1), an ordinary observer can

easily see that both the ’231 Patent and Celestina-Krevh show the outer contours of

legs of a play yard. In fact, the curved, exposed play yard legs of the ’231 Patent


32/59


25

appear substantially similar to, if not copy, those in Celestina-Krevh. ( Id. ¶¶ 117-

118.)

Celestina-Krevh shows the play yard legs as having an upright orientation

and being positioned at the four corners of a rectangular play yard, as does the ’231

Patent. Celestina-Krevh also shows the play yard legs as being thin and elongated.

So does the ’231 Patent. Celestina-Krevh shows the legs as gently bowing

outwards in the middle, just like those in the ’231 Patent.

Further, Celestina-Krevh shows the legs flaring outward

slightly at the top, as do the play yard legs shown in the

’231 Patent’s claimed design. By way of example only, a

side-by-side comparison of the legs in Celestina-Krevh and

the ’231 Patent is shown. As set forth herein, Celestina-

Krevh shows the outer contours of the legs of a play yard

that are substantially similar to the ’231 Patent’s claimed design. ( Id.)

Moreover, regarding similarities (8) and (9) identified above, a comparison

of the ’231 Patent’s Figure 1 and Celestina-Krevh’s Figure 1 by an ordinary

observer shows that both designs have proportionately similar height-to-width and

length-to-width ratios:

Fig. 2

Celestina

-Krevh

Fig. 2

’231

Patent


33/59


26

Fig. 1

’231 Patent Fig. 1

Celestina-Krevh

2. Any differences between Celestina-Krevh and the ’231 Patent’s

claimed design are trivial

To the extent any differences exist between Celestina-Krevh and the ’231

Patent’s claimed design, they are trivial and do not prevent finding that the claimed

design of the ’231 Patent is anticipated by Celestina-Krevh. (Ex. 1002 ¶ 119.) The

Federal Circuit has determined that 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.” Int’l Seaway, 589 F.3d at 1243. Put

differently, “minor differences cannot prevent a finding of anticipation.” Id.

For instance, the ’231 Patent figures show legs that appear slightly thinner

than those disclosed in Celestina-Krevh. (Ex. 1002 ¶ 120.) This slight difference in

width of the legs is irrelevant, especially when considering that that the overall

HH

W

W

LL


34/59


27

shape and appearance of the legs are substantially similar. ( Id.) See also Int’l

Seaway, 589 F.3d at 1243.

3.

Celestina-Krevh does not disclose a fabric covering on the legs

The legs of the play yard disclosed in Celestina-Krevh are the tubular legs

themselves, rather than a fabric or another material encapsulating the claimed legs.

(Ex. 1002 ¶ 78.) The Patent Owner argued during prosecution of the ’885

Application – an application containing a similar design as the ’231 Patent and

which claims priority to the same ’591 Application as the ’231 Patent – that the

legs of Celestina-Krevh are covered with fabric. Celestina-Krevh, however, does

not disclose fabric covering the legs of the play yard. ( Id. ¶ 80.)

Celestina-Krevh does not disclose any shading or other lines indicating a

fabric or other material covering the legs, as is allowed in design patent practice.

( Id. ¶¶ 80, 89.) Because only the legs of the play yard are shown in solid lines and

contour lines, that subject matter is all that is claimed in Celestina-Krevh. ( Id .

¶ 80.) It is a factual and legal error to add design elements to a design patent

drawing that are not claimed. ( Id. ¶ 81.)

In the annotated version of Figure 1 of Celestina-Krevh, Mr. Anders

indicates with red arrows the shading lines that the Examiner and the BPAI

appeared to mistakenly identify as curved legs covered by fabric in the ’885

Application. (Ex. 1002 ¶ 82; see also Ex. 1010; Ex. 1012 6/26/07 NFOA at 2-3.)


35/59


28

These contour lines are thinner,

intermittent lines within thicker, solid

outer lines and are shading lines that

connote the roundness or curvature. (Ex.

1002 ¶ 83.) The MPEP itself provides

that such contour lines are used to denote

curvature. MPEP 1503.02. These thinner,

intermittent lines are therefore visually denoting roundness. (Ex. 1002 ¶ 83.)

Celestina-Krevh’s Figures 6 and 7 show some unknown feature4 that appears

to extend laterally away from each leg. ( Id. ¶ 87.) As

shown in the enlarged (top) view of Figure 6, the

unclaimed environmental feature (denoted with red

boxes) is at some indeterminate vertical position and

does not necessarily obscure the legs. ( Id. ¶ 88.) It could be positioned below the

legs, for example. ( Id.) Even if the unknown feature does extend over the legs, the

unknown feature is not claimed (it is in broken lines) and does not add any

thickness to those legs or otherwise mask the contours of the legs. ( Id.)

4 What the feature is comprised of, is indeterminate. (Ex. 1002 ¶ 87.)


36/59


29

4. A U.S. District Court found that Celestina-Krevh discloses a

curved play yard leg regardless of covering

The United States District Court for the Central District of California

construed Celestina-Krevh’s claimed design as encompassing exposed legs. (Ex.

1013.) In that case, Petitioner filed suit against Baby Trend, Inc., alleging

infringement of Celstina-Krevh. Baby Trend argued that the BPAI had previously

considered Celestina-Krevh and found that the legs of Celestina-Krevh were

fabric-covered. ( Id. at 7.)5

In its summary judgment order, the district court first set forth that the

MPEP “explains that surface shading may be necessary ‘to show clearly the

character and contour of all surfaces of any 3-dimensional aspects of the design.’”

( Id. at 10 (quoting MPEP 1503.02).) The court found that the solid black lines on

the legs of the play yard in Celestina-Krevh – without the surface shading – “show

curvature only in one dimension,” and that “[s]urface shading is necessary to show

5 As noted by the district court, Petitioner “was not a party to the ex parte

proceeding that produced the BPAI’s findings of fact,” and “the issue of whether

[Celestina-Krevh] claimed a fabric-covered leg does not appear to have been

litigated, by [Petitioner] or anyone else.” (Ex. 1013 at 8.) Accordingly, “the

[BPAI’s] findings of fact cannot be binding on Graco.” ( Id. (citing Bonder-Tongue

Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329 (1971)).


37/59


30

that the leg is also rounded in cross-section.” ( Id.) Thus, the court found that “the

disputed outer lines are not ‘broken lines,’ but rather surface shading lines.” ( Id.)

“The prosecution history of [Celestina-Krevh] is consistent with the conclusion

that the disputed lines are shading lines.” ( Id. at 11.) Accordingly, the court

determined that Celestina-Krevh “covers a curved playard leg, regardless of

covering.” ( Id. at 13.)

5. Celestina-Krevh still discloses contours of curved play yard legs

even if covered by fabric and anticipates the ’231 Patent claim

To the extent, however, that the Board finds that Celestina-Krevh shows a

material or fabric covering the legs, Celestina-Krevh still anticipates the ’231

Patent claim. (Ex. 1002 ¶ 122.) Regardless of any fabric or “covering” on the play

yard legs, Celestina-Krevh still discloses curved legs with unconcealed outer

contours that anticipate the ’231 Patent’s claimed design. ( Id. ¶ 123.) To the extent

fabric does cover the legs in Celestina-Krevh, the fabric provides such a tight

covering that an ordinary observer would be deceived, and the overall visual

impression is the same. ( Id. ¶ 124.) See also Gorham, 81 U.S. at 528; Int’l Seaway,

589 F.3d at 1239; Door-Master , 256 F.3d at 1313.

Any material or fabric on the legs of the play yard in Celestina-Krevh does

not conceal the outer contours of the legs. (Ex. 1002 ¶ 123.) Because of the lack of

any structure or fabric that blocks the contours of the legs in Celestina-Krevh (id.),

any fabric or other unknown material covering the legs would only constitute a


38/59


31

“minor difference[].” Int’l Seaway, 589 F.3d at 1243. For example, Celestina-

Krevh shows in Figures 2 and 3 the outer contours of the legs. The ’231 Patent’s

Figures 2 and 3 likewise show only those same contours for the legs.

B. Ground 2 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over

Celestina-Krevh

In the alternative, Celestina-Krevh discloses the same overall visual

impression as the ’231 Patent’s claimed design, and in view of the common

knowledge of a designer having ordinary skill in the art, any differences are de

minimus and not sufficient to justify a finding that the design is patentable. As a

result, the claim is obvious under 35 U.S.C. § 103(a) over Celestina-Krevh.

Celestina-Krevh is a suitable primary reference because Celestina-Krevh

discloses a play yard with “basically the same design characteristics” as the

claimed design. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir.

1996). (See also Ex. 1002 ¶ 129.) Indeed, Celestina-Krevh is so similar to the

claimed design, that no secondary reference is necessary. (Ex. 1002 ¶ 129.)

To the extent that there is any disclosure in the ’231 Patent that is not plainly

evident from Celestina-Krevh, Celestina-Krevh readily suggests these minor

alterations to one of ordinary skill in the art to arrive at a hypothetical reference.

See In re Carter , 673 F.2d 1378, 1380 (C.C.P.A. 1982). (See also Ex. 1002 ¶ 130.)

For instance, in the event that any difference is found between the proportions of

the play yard or width or proportions of the curved legs, “obvious changes in . . .


39/59


32

proportioning” involve “ordinary skill only.” In re Stevens, 173 F.2d 1015, 1015-

16 (C.C.P.A. 1949). (See also Ex. 1002 ¶ 130.)

Thus, considering this hypothetical Celestina-Krevh reference, an ordinary

observer would be deceived into believing that the hypothetical Celestina-Krevh is

the same as the claimed design. See Int’l Seaway, 589 F.3d at 1240-41. Application

of such ordinary skill does not make the claimed design patentable over Celestina-

Krevh. Stevens, 173 F.2d at 1015-16.

C.

Ground 3 – The Claim Is Obvious Under 35 U.S.C. § 103(a) OverCelestina-Krevh In View Of Gottlieb

The claim of the ’231 Patent would have also been obvious under 35 U.S.C.

§ 103(a) over Celestina-Krevh in view of Gottlieb.

Gottlieb is a U.S. utility patent, filed on June 7, 1962, as U.S. Application

No. 200,721. (Ex. 1005.) Gottlieb issued on June 8, 1965, more than one year prior

to the filing date of the ’231 Patent. ( Id.) Therefore, Gottlieb is prior art under 35

U.S.C. § 102(b).

The purpose of the play yards in Celestina-Krevh and Gottlieb is to provide

a containment area for a child to sleep or play (Ex. 1002 ¶ 134), and the play yards

in Celestina-Krevh and Gottlieb are thus in the same field of endeavor. See MRC

Innovations, 747 F.3d at 1334-35. Gottlieb discloses a play pen, or play yard, that

“has four sides” and is rectangular. (Ex. 1005 at 2:61-65; Ex. 1002 ¶ 133.) Because


40/59


33

both Celestina-Krevh and Gottlieb disclose and are directed to rectangular play

yards that include four legs at each of the four

corners, Gottlieb is a proper secondary

reference because it is “so related” to Celestina-

Krevh. MRC Innovations, 747 F.3d at 1334.

The legs (10) on the play yard in Gottlieb

are exposed and “located adjacent the four

corners of the upper frame.” (Ex. 1005 at 3:16-18; FIGS. 1 & 2; Ex. 1002 ¶ 133.)

The legs of the play pen in Gottlieb are isolated from the interior part of the play

yard by a “flexible shroud 14 . . . made of an open net” greatly spaced away from

the four legs of the play yard. (Ex. 1005 at 3:7-8; FIG. 1; see also Ex. 1002 ¶ 135.)

The claimed design of the ’231 Patent would have been obvious to a

designer of ordinary skill of the type involved. Apple, 678 F.3d at 1319. Gottlieb

clearly suggests a slight modification of Celestina-Krevh to space Celestina-

Krevh’s fabric panels substantially away from the legs, leaving them uncovered.

(Ex. 1002 ¶ 136.) As shown in Section IX(A)(1), supra, Celestina-Krevh’s legs are

substantially similar to the ’231 Patent’s claimed design and Gottlieb teaches

exposing the legs by spacing away the adjacent fabric panels.

The hypothetical prior art of Celestina-Krevh and Gottlieb thus has an

overall visual appearance substantially the same as the claimed design. See MRC

flexible

shroud

legs

Fig. 1 – Gottlieb


41/59


34

Innovations, 747 F.3d at 1331. (See also Ex. 1002 ¶ 137.)

D.

Ground 4 – The Claim Is Anticipated Under 35 U.S.C. § 102(e) By

DeHart

DeHart discloses the same overall visual appearance as the ’231 Patent. (Ex.

1002 ¶ 138.) An ordinary observer would not take the claimed design in the ’231

Patent for a new and different design. ( Id.) As a result, the claim is invalid under

35 U.S.C. § 102(e).

DeHart is a U.S. design patent, filed on June 30, 2003, as U.S. Application

No. 29/185,439. (Ex. 1006.) DeHart issued on December 28, 2004. ( Id.) Because

the filing date for DeHart falls before the filing date for the ’231 Patent, DeHart is

prior art under 35 U.S.C. § 102(e).

DeHart discloses a play yard with curved legs that have a substantially

similar overall visual appearance to the ’231 Patent’s claimed design and thus

anticipates the curved legs with the outer contours shown in Figures 2 and 3 of the

’231 Patent. (Ex. 1002 ¶ 139.)

Both the ’231 Patent’s claimed design and DeHart share many common

visual features, such that they are substantially similar. ( Id. ¶ 141.) As shown in the

side-by-side comparisons below, the ’231 Patent and DeHart share the following

features:


(2) both designs are directed to rectangular play yards (id. ¶ 145);


42/59


35


(4) both designs show legs of a play yard that are curved and gently bowing

outwards in the middle (id. ¶ 151);


(6) both designs show legs that are thin and elongated (id. ¶ 152);

(7) both designs have similar upper frame shapes (id. ¶ 146);

(8) both designs have similar side panels for the play yard walls (id. ¶ 147);

(9)

both designs have proportionally similar height-to-width ratios (id.

¶ 144); and


View ’231 Patent DeHart

Perspective

Fig. 1 Fig. 1

Regarding similarities (1) and (2) above, an ordinary observer can easily see

that the ’231 Patent’s claimed design and DeHart are both directed to the outer


43/59


36

contours of the legs of a rectangular play yard. To better

illustrate, a side-by-side comparison of the curved legs in

DeHart and the ’231 Patent is shown. As is apparent, both

legs have upright orientations (3), gently bow outwards in the

middle (4), and are thin and elongated (6).

Regarding similarities (7) and (8) above, the side-by-

side comparison of the two play yards by an ordinary observer

shows that each play yard contains the same elements in the same size, proportion,

and position.

Regarding similarities (9) and (10) above, a comparison of the ’231 Patent

and DeHart by an ordinary observer shows that both designs have proportionately

similar height-to-width and length-to-width ratios:

Fig. 1

’231 Patent Fig. 1

Chen ’393

Fig. 1

DeHart Fig. 1

’231

Patent

HH

WW

L

L


44/59


37

E. Ground 5 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over

DeHart

To the extent any minor differences are alleged between DeHart and the

’231 Patent’s claimed design, defeating anticipation under 35 U.S.C. § 102(e),

DeHart discloses the same overall visual impression as the ’231 Patent’s claimed

design, and in view of the common knowledge of a designer having ordinary skill

in the art, any differences are de minimus and not sufficient to justify a finding that

the design is patentable under 35 U.S.C. § 103(a).

DeHart is a suitable primary reference because DeHart discloses a play yard

with “basically the same design characteristics” as the claimed design. Durling,

101 F.3d at 103. (See also Ex. 1002 ¶ 155.) Indeed, DeHart is so similar to the

claimed design, that no secondary reference is necessary. (Ex. 1002 ¶ 155.)


evident from DeHart, DeHart readily suggests minor alterations to one of ordinary

skill in the art to arrive at a hypothetical reference. See In re Carter , 673 F.2d at

1380. (See also Ex. 1002 ¶ 156.) DeHart, for example, shows the curved legs in

dashed lines without any contour lines or shading. (Ex. 1002 ¶ 156.) However, the

’231 Patent’s figures also do not show any contour lines or shading. ( Id .) And, it

would be obvious to convert the dashed lines into solid lines. ( Id.)

DeHart only shows one perspective view, rather than multiple orthogonal

views. ( Id. ¶ 157.) However, extending the rounded shape of the legs into multiple


45/59


38

views would be obvious to a designer of ordinary skill based on the overall design

and symmetry of the play yard. ( Id.) Further, and regarding symmetry, a designer

of ordinary skill in the art would know the preferred appearance of structural

components, such as those for a play yard, and thus would expect each leg of the

play yard to be the same. ( Id. ¶ 158.)

DeHart’s Figure 1 provides three views, in perspective, of the three legs

shown in Figure 1. ( Id .) A designer of ordinary skill would expect and recognize

that given the perspective views of the three legs shown in Figure 1, the legs would

have a smooth surface between the edges of the legs, which are shown in dashed

lines. ( Id.) A designer of ordinary skill in the relevant art would know and

understand that most structural components are comprised of tubing, and one

would expect a smooth surface extending between the views of the legs shown in

Figure 1 of DeHart. ( Id. ¶ 159.)

A designer of ordinary skill in the art would also recognize the symmetry of

the play yard disclosed in DeHart by the symmetry of the bassinet, which needs to

hang from the upper frame of the play yard. ( Id. ¶ 160.) The common knowledge

of a designer of ordinary skill in the art is only compounded by the fact that the

vast majority of prior play yards are symmetrical. ( Id .)

Considering such a hypothetical reference, the designer of ordinary skill,

familiar with the prior art, would be deceived into believing that the hypothetical,


46/59


39

slightly modified DeHart is the same as the ’231 Patent’s claimed design. ( Id.

¶ 161.) See also High Point Design, 730 F.3d at 1314-15. Minor modifications

easily conceived by a designer of ordinary skill do not make the claimed design

patentable over DeHart. See MRC Innovations, 747 F.3d at 1335.

F. Ground 6 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over

Chen ’393

Chen ’393 discloses the same overall visual impression as the ’231 Patent’s

claimed design, and in view of the common knowledge of a designer having

ordinary skill in the art. (Ex. 1002 ¶ 162.) To the extent there are any differences

between Chen ’393 and the ’231 Patent, the differences are de minimus and not

sufficient to justify a finding that the design is patentable under 35 U.S.C. § 103(a).

Chen ’393 is a U.S. design patent, filed on January 7, 2004, as U.S.

Application No. 29/196,878. (Ex. 1007.) Chen ’393 issued on August 17, 2004.

( Id.) Because the filing date for Chen ’393 falls before the filing date for the ’231

Patent, Chen ’393 is prior art under 35 U.S.C. § 102(e).

Below are figures from Chen ’393 and the ’231 Patent that show the designs

in side-by-side format:


47/59


40

View ’231 Patent Chen ’393

Perspective

Fig. 1 Fig. 1

Front

Fig. 2 Fig. 2

As shown above, an ordinary observer can see that

the ’231 Patent’s claimed design and Chen ’393 are both

directed to the outer contours of the legs of a rectangular

play yard. (Ex. 1002 ¶ 164.) To better illustrate, a side-by-

side comparison of the curved legs in Chen ’393 and the

’231 Patent is shown. As is apparent, both legs have upright

orientations, gently bow outwards in the middle, and are thin

and elongated. ( Id.) Both Chen ’393 and the ’231 Patent also show play yards with

Fig. 2

Chen

’393

Fig. 2

’231

Patent


48/59


41

similar proportions. ( Id.)

Chen ’393 is a suitable primary reference because Chen ’393 discloses a

play yard with “basically the same design characteristics” as the claimed design.

Durling, 101 F.3d at 103. (See also Ex. 1002 ¶ 165.) Indeed, Chen ’393 is so

similar to the claimed design, that no secondary reference is necessary. (Ex. 1002

¶ 165.)


evident from Chen ’393 (e.g., any minor differences in leg curvature), Chen ’393

readily suggests minor alterations to one of ordinary skill in the art to arrive at a

hypothetical reference. See In re Carter , 673 F.2d at 1380. (See also Ex. 1002

¶ 166.) Chen ’393, for example, shows the curved legs in dashed lines without any

contour lines or shading. (Ex. 1002 ¶ 167.) However, the ’231 Patent’s figures also

do not show any contour lines or shading. ( Id.) And, it would be obvious to convert

the dashed lines into solid lines. ( Id.) Further, in the event that any difference is

found between the proportions or width of the curved legs, “obvious changes in . . .

proportioning” involve “ordinary skill only.” In re Stevens, 173 F.2d 1015, 1015-

16 (C.C.P.A. 1949).



slightly modified Chen ’393 is the same as the ’231 Patent’s claimed design. (Ex.


49/59


42

1002 ¶ 168.) See also High Point Design, 730 F.3d at 1314-15. Minor

modifications easily conceived by a designer of ordinary skill do not make the

claimed design patentable over Chen ’393. See MRC Innovations, 747 F.3d at

1335.

G. Ground 7 – The Claim Is Anticipated Under 35 U.S.C. § 102(b) By

The Fold ‘N Go Manual

The Fold ‘N Go Manual discloses the same overall visual appearance as the

’231 Patent. (Ex. 1002 ¶ 169.) In view thereof, an ordinary observer would not take

the claimed design in the ’231 Patent for a new and different design. As a result,

the claim is invalid under 35 U.S.C. § 102(b).

The Fold ‘N Go Manual is an instruction manual for the Fold ‘N Go élan

Deluxe Care Center marketed and offered for sale by Century Products. (Ex.

1004.) The Fold ‘N Go Manual was published by Century Products at least as early

as August 17, 2003,6 which is more than one year prior to the filing date of the

’231 Patent. ( Id.) Therefore, the Fold ‘N Go Manual is prior art under 35 U.S.C.

6 Petitioner submits that the cover of the Fold ‘N Go Manual lists “10/00” in the

footer, indicative of October 2000 as the publication date. A Google search

revealed a publication date of August 17, 2003, which still qualifies the Fold ‘N

Go Manual as prior art under 35 U.S.C. § 102(b). (Ex. 1014.) Petitioner thus

proceeds with the August 17, 2003, date.


50/59


43

§ 102(b).

Figures from the ’231 Patent and the Fold ‘N Go Manual are shown in a

side-by-side comparison:

’231 Patent Fold ‘N Go Manual

Fig. 1 Front Page

Fig. 2 Page 3

Both the ’231 Patent’s claimed design and the Fold ‘N Go Manual share

many common visual features, such that they are substantially similar. (Ex. 1002

¶ 170.) For instance, they share the following features:


51/59


44


(2) both designs are directed to rectangular play yards (id. ¶ 172);


(4) both designs shows legs of a play yard that are curved and gently bowing

outwards at the middle (id. ¶ 179);


(6) both designs show legs that are thin and elongated (id. ¶ 180);

(7)

both designs have similar side panels (id. ¶ 182);

(8) both designs have proportionally similar height-to-width ratios (id.

¶ 171); and


Regarding similarity (1), an ordinary observer can

easily see that both the ’231 Patent and the Fold ‘N Go

Manual show the outer contours of the legs of a play

yard. For instance, the shading at the top and bottom of

the legs in the Fold ‘N Go Manual indicates inward

curvature of the leg at the top and bottom, while the lack

of shading on the leg (shown as the white area) indicates

the outward curvature of the leg. ( Id. ¶ 177.) The ’231

Patent and the Fold ‘N Go Manual are thus directed to or disclose rectangular play

Front Pg.

Fold ‘N

Go Manual

Fig. 2

’231

Patent


52/59


45

yards with curved legs. The curved legs have upright orientations and are

positioned in the four corners of the play yard. In fact, the curved legs of the ’231

Patent and the Fold ‘N Go Manual have similar curvature, as shown.

Further, the full front and side contours of the legs of the play yard of the

Fold ‘N Go Manual are shown without any discernible texture or surface treatment

and thus indicative of the legs being unconcealed. ( Id. ¶ 178.) Even to the extent

that the Board finds that the Fold ‘N Go Manual shows a material or fabric

covering the legs of the play yard, the Fold ‘N Go Manual still anticipates the ’231

Patent claim. ( Id. ¶ 184.) The Fold ‘N Go Manual still discloses curved legs with

unconcealed outer contours that anticipate the ’231 Patent’s claimed design

regardless of any fabric or “covering” on the play yard legs. ( Id .) Whether any

fabric or other “covering” is present on the play yard legs of the Fold ‘N Go

Manual does not change the overall visual impression by an ordinary observer.

( Id .) See also Gorham, 81 U.S. at 528; Int’l Seaway, 589 F.3d at 1239. Further, any

fabric or other unknown material covering the legs would only constitute a “minor

difference[].” Int’l Seaway, 589 F.3d at 1243. (See also Ex. 1002 ¶ 184.)

Both the ’231 Patent and the Fold ‘N Go Manual disclose rectangular play

yards that have proportionately similar height-to-width and length-to-width ratios,

as shown below:


53/59


46

Fig. 1

’231 Patent

Front Pg.

Fold ‘N Go Manual

H.

Ground 8 – The Claim Is Obvious Under 35 U.S.C. § 103(a) OverThe Fold ‘N Go Manual

The Fold ‘N Go Manual readily suggests to a designer of ordinary skill

minor alterations necessary to arrive at a hypothetical reference that is the same as

the design claimed by the ’231 Patent. High Point Design, 730 F.3d at 1311. (See

also Ex. 1002 ¶ 185.) The Fold ‘N

Go Manual is substantially similar

to the ’231 Patent. (Ex. 1002 ¶

186.) Thus, the Fold ‘N Go

Manual provides a suitable

foundation as a primary reference

for an obviousness inquiry. ( Id.) This

accommodates the Fold ‘N Go Manual’s displaying of perspective views, rather

than multiple orthogonal views. ( Id. ¶ 187.) For example, one of ordinary skill

HH

WWL

L

Fold ‘N Go Manual, p. 3


54/59


47

would know the rounded shape of the legs in multiple views due to their shading

and expected symmetry around the play yard, as shown. ( Id .)



slightly modified Fold ‘N Go Manual is the same as the ’231 Patent’s claimed

design. ( Id. ¶ 188.) See also High Point Design, 730 F.3d at 1314-15. Minor

modifications easily conceived by a designer of ordinary skill do not make the

claimed design patentable over the Fold ‘N Go Manual. See MRC Innovations, 747

F.3d at 1335.

I. Ground 9 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over

The Fold ‘N Go Manual In View Of Gottlieb

The claim of the ’231 Patent would have also been obvious under 35 U.S.C.

§ 103(a) over the Fold ‘N Go Manual in view of Gottlieb.

Both the Fold ‘N Go Manual and Gottlieb serve the purpose of providing a

containment area for a child to sleep or play. (Ex. 1002 ¶ 192.) Gottlieb is thus a

proper secondary reference because it is “so related” to the Fold ‘N Go Manual.

MRC Innovations, 747 F.3d at 1334.

As discussed above in Section IX(C), Gottlieb discloses legs of a play yard

that are exposed and isolated from the interior portion of the play yard. (Ex. 1002

¶ 191; Ex. 1005 at 3:16-18, FIGS. 1-2.)

The claimed design of the ’231 Patent would have been obvious to a


55/59


48

designer of ordinary skill of the type involved. Apple, 678 F.3d at 1319. Gottlieb

clearly suggests a slight modification of the Fold ‘N Go Manual to space any

alleged fabric panels substantially away from the legs, leaving them completely

uncovered. (Ex. 1002 ¶ 193.) As shown in Section IX(G), supra, the Fold ‘N Go

Manual’s legs are substantially similar to the ’231 Patent’s claimed design and

Gottlieb teaches exposing the legs by spacing away adjacent fabric panels. The

hypothetical prior art of the Fold ‘N Go Manual and Gottlieb thus has an overall

visual appearance substantially the same as the claimed design. ( Id .)

J.

Ground 10 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over

Celestina-Krevh In View Of Hartenstine

Celestina-Krevh in view of Hartenstine creates hypothetical prior art that

teaches the same overall visual appearance as the ’231 Patent’s claimed design.

Further, any element of the ’231 Patent’s claimed design that is not disclosed by

Celestina-Krevh is taught by Hartenstine.

Hartenstine is a U.S. utility patent, filed on May 8, 2001, as U.S. Application

No. 09/850,136. (Ex. 1008.) Hartenstine issued on January 28, 2003, more than

one year prior to the filing date of the ’231 Patent. ( Id.) Therefore, Hartenstine is

prior art under 35 U.S.C. § 102(b).

The purpose of the play yards in both Celestina-Krevh and Hartenstine is to

provide a containment area for a child to sleep or play, and the play yards in

Celestina-Krevh and Hartenstine are thus in the same field of endeavor. See MRC


56/59


49

Innovations, 747 F.3d at 1334-35. Hartenstine is a proper secondary reference

because it is “so related” to Celestina-Krevh. Id. at 1334.

At a minimum, Hartenstine discloses, teaches, and suggests the unconcealed

outer contours of a play yard leg. For instance, Hartenstine’s Fig. 10 “contemplates

corner panels 14" for a playard having

straight legs 26" to isolate the legs from

the interior space of the playard . . . .”

(Ex. 1008 at 4:54-56.) As shown in

Figures 8, 9, and 10, Hartenstine

provides a visual impression that the legs

of the play yard are exposed. ( Id.) Yet further, Hartenstine discloses that “[t]he legs

can be . . . bowed outwardly.” ( Id. at abstract.)

Hartenstine’s specification also discloses extending fabric panels interior to

the legs so as to isolate the play yard legs from the interior space. ( Id. at 2:67-

3:10.) Spacing Hartenstine’s corner panels (14) inwardly away from the legs leaves

the legs uncovered by the corner panels. ( Id., Fig. 4.) Hartenstine thus discloses

exposed legs on a play yard that bow outwardly.

As set forth in Section IX(A)(1), supra, Celestina-Krevh satisfies the

“substantially similar” standard required for anticipation under 35 U.S.C. § 102(b).

To the extent that the legs in Celestina-Krevh are determined to be covered or

Fig. 10 – Hartenstine


57/59


50

overlaid with an unknown material, a designer skilled in the art would have easily

combined the Celestina-Krevh invention of curved legs with legs not enclosed in

an unknown material, such as depicted in Hartenstine.

A hypothetical prior art reference can be created by removing any alleged

fabric or material on the play yard legs of Celestina-Krevh and spacing it inwards

of the legs like the play yard legs in Hartenstine. After the modification, Celestina-

Krevh has an overall visual appearance substantially the same as the claimed

design. See MRC Innovations, 747 F.3d at 1331.

K.

Ground 11 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over

The Fold ‘N Go Manual In View Of Hartenstine

The Fold ‘N Go Manual in view of Hartenstine creates hypothetical prior art

that teaches the same overall visual appearance as the ’231 Patent’s claimed

design. Further, any element of the ’231 Patent that is not disclosed by the Fold ‘N

Go Manual is taught by Hartenstine.

Because the purpose of the play yards in both the Fold ‘N Go Manual and

Hartenstine is to provide a containment area for a child to sleep or play, both

references are in the same field of endeavor, and Hartenstine is a proper secondary

reference because it is “so related” to the Fold ‘N Go Manual. MRC Innovations,

747 F.3d at 1334-35.

As set forth above in Section IX(J), Hartenstine discloses exposed legs on a

play yard that bow outwardly. (See Ex. 1008 at 2:63-3:10, 4:54-56, FIGS. 7, 8 &


58/59


51

10.) A hypothetical prior art reference can be created with a slight modification of

the Fold ‘N Go Manual, as suggested by Hartenstine, by removing any alleged

fabric on the play yard legs of the Fold ‘N Go Manual and spacing it inwards of the

legs like the play yard legs in Hartenstine.

After such modification, the Fold ‘N Go Manual has an overall visual

appearance substantially the same as the claimed design, as shown in Section

IX(G), supra, and the ’231 Patent’s claimed design would have been obvious to a

designer of ordinary skill of the type involved. Apple, 678 F.3d at 1319.

X.

CONCLUSION

For the reasons set forth above, Petitioner has established a reasonable

likelihood that it will prevail in establishing the unpatentability of the claim of the

’231 Patent. As a result, this Petition should be granted, inter partes review should

be instituted, and the ’231 Patent claim should be found invalid under the statutory

grounds identified above.

DATED:

graco - petition for ipr d231

Documents