graco - petition for ipr d621

Paper 1 Filed: March 29, 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 IPR2016-00810 Patent D570,621

_________________

PETITION FOR INTER PARTES REVIEW

IPR2016-00810 Petition for IPR of Patent D570,621

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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 ........................................................................................ 3

III. FEE FOR IPR REQUEST — 37 C.F.R. § 42.15(A) ....................................... 3

IV. GROUNDS FOR STANDING ........................................................................ 3

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

VI. OVERVIEW OF THE ’621 PATENT ............................................................ 5

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

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

B. Claim Construction Of The ’621 Patent ....................................................... 11

VIII. APPLICABLE LEGAL STANDARDS ........................................................ 14

A. Anticipation .................................................................................................. 14

B. Obviousness .................................................................................................. 15

IX. DETAILED EXPLANATION OF THE GROUNDS FOR UNPATENTABILITY .................................................................................. 18

A. Ground 1 – The Claim Is Anticipated Under 35 U.S.C. § 102(b) By Celestina-Krevh ............................................................................................ 18

1. The play yard legs of Celestina-Krevh are substantially similar to the ’621 Patent’s claimed design .................................................................... 19

2. Any differences between Celestina-Krevh and the ’621 Patent’s claimed design are trivial ....................................................................................... 22

3. Celestina-Krevh does not disclose a fabric covering on the legs ............. 24

4. A U.S. District Court found that Celestina-Krevh discloses a curved play yard leg regardless of covering ................................................................ 26

5. Celestina-Krevh still discloses contours of curved play yard legs even if covered by fabric and anticipates the ’621 Patent claim .......................... 27


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B. Ground 2 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over Celestina-Krevh In View Of Gottlieb ........................................................................... 28

C. Ground 3 – The Claim Is Anticipated Under 35 U.S.C. § 102(e) By Chen ’393 ............................................................................................................ 30

1. Chen ’393 anticipates the ’621 Patent claim ............................................ 30

2. The inventors failed to show an earlier invention date than Chen ’393 .. 35

a. Applicable legal standards .................................................................. 36

b. The alleged facts set forth in the Rule 1.131 Declaration are insufficient ........................................................................................... 38

c. The Patent Owner failed to establish conception ................................ 40

d. The Patent Owner failed to establish reduction to practice ................ 42

D. Ground 4 – The Claim Is Anticipated Under 35 U.S.C. § 102(e) By Chen ’683 ............................................................................................................ 45

1. The play yard legs of Chen ’683 are substantially similar to the ’621 Patent’s claimed design ............................................................................ 45

2. Any differences between Chen ’683 and the ’621 Patent’s claimed design are trivial ................................................................................................... 49

E. Ground 5 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over Chen ’683 ............................................................................................................ 49

F. Ground 6 – The Claim Is Anticipated Under 35 U.S.C. § 102(b) By The Fold ‘N Go Manual ....................................................................................... 51

G. Ground 7 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over The Fold ‘N Go Manual ............................................................................................... 55

H. Ground 8 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over The Fold ‘N Go Manual In View Of Gottlieb ............................................................. 56

I. Ground 9 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over Celestina-Krevh In View Of Hartenstine ...................................................................... 57

J. Ground 10 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over The Fold ‘N Go Manual In View Of Hartenstine ................................................ 59

X. CONCLUSION .............................................................................................. 60


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TABLE OF AUTHORITIES

Page(s) CASES

ABB Inc. v. Roy-G-Biv Corp., Cases IPR2013-00062 & 00282, Final Decision, Paper No. 84 (PTAB Apr. 11, 2014) ............................................................ 38 Apple, Inc. v. Samsung Elec. Co., Ltd., 678 F.3d 1314 (Fed. Cir. 2012)................................................... 16, 29, 57, 60 Bonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971) ...................................................................................... 26 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)..................................................................... 10 Cooper v. Goldfarb, 240 F.3d 1378 (Fed. Cir. 2001)..................................................................... 38 Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330 (Fed. Cir. 2011)..................................................................... 36 Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010)............................................................... 10, 15 Dieterich v. Leaf, 89 F.3d 226 (C.C.P.A. 1937) ........................................................................ 37 Dobson v. Dornan, 118 U.S. 10 (1886) ........................................................................................ 10 Door-Master Corp. v. Yorktowne, 256 F.3d 1308 (Fed. Cir. 2001)............................................................... 15, 27


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Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996)....................................................................... 50 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) ................................................ 10, 15 Fitzgerald v. Arbib, 268 F.2d 763 (C.C.P.A. 1959) ...................................................................... 37 Garmin Int’l, Inc. v. Cuozzo Speed Techs., LLC, Case IPR2012-00001, Final Decision, Paper No. 59 (PTAB Nov. 13, 2013) ............................................................ 37 Genentech, Inc. v. Chiron Corp., 220 F.3d 1345 (Fed. Cir. 2000)..................................................................... 38 Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618 F.3d 1294 (Fed. Cir. 2010)..................................................................... 34 Gorham Mfg. Co. v. White, 81 U.S. 511 (1871) ............................................................................ 15, 27, 54 High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013)................................................... 16, 17, 55, 56 In re Blum, 374 F.2d 904 (C.C.P.A. 1967) ...................................................................... 12 In re Carter, 673 F.2d 1378 (C.C.P.A. 1982) .................................................................... 50 In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015)....................................................................... 9 In re Garner, 508 F.3d 1376 (Fed. Cir. 2007)..................................................................... 41 In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001)..................................................................... 16


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In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993)....................................................................... 38 In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002)..................................................................... 36 In re LAMB, 286 F.2d 610 (C.C.P.A. 1961) ...................................................................... 18 In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011)............................................................... 36, 37 In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) ...................................................................... 16 In re Steed, 802 F.3d 1311 (Fed. Cir. 2015)..................................................................... 37 In re Stevens, 173 F.2d 1015 (C.C.P.A. 1949) .............................................................. 50, 51 Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009).............................................................. passim Iron Dome LLC v. E-Watch, Inc., Case IPR2014-00439, Decision to Institute, Paper No. 16 (PTAB Aug. 4, 2014) .............................................................. 44 Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984)..................................................................... 16 Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996)....................................................................... 36 MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir. 2014).............................................................. passim Price v. Symsek, 988 F.2d 1187 (Fed. Cir. 1993)............................................................... 37, 38


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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)..................................................................... 14

FEDERAL STATUTES 35 U.S.C. § 102 ........................................................................................... passim 35 U.S.C. § 103 ........................................................................................... passim 35 U.S.C. § 112 .................................................................................................... 6 35 U.S.C. § 171 .................................................................................................. 15

FEDERAL REGULATIONS 37 C.F.R. § 1.131 ........................................................................................... 6, 36 37 C.F.R. § 1.152 ............................................................................................... 10 37 C.F.R. § 42.8 ................................................................................................... 2 37 C.F.R. § 42.15 ................................................................................................. 3 37 C.F.R. § 42.100 ............................................................................................... 9 37 C.F.R. § 42.104 ........................................................................................... 3, 4


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EXHIBIT LIST

Exhibit No.

Description

1001 U.S. Design Patent No. D570,621 (the challenged patent) 1002 Declaration of Robert John Anders, IDSA, in Support of Petition for

Inter Partes Review of U.S. Patent No. D570,621 1003 U.S. Design Patent No. D494,393 to Chen

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

1005 U.S. Design Patent No. D448,218 to Celestina-Krevh

1006 U.S. Patent No. 3,187,352 to Gottlieb 1007 U.S. Design Patent No. D581,683 to Chen 1008 U.S. Patent No. 6,510,570 to Hartenstine

1009 Prosecution File History for U.S. Design Patent No. D570,621 1010 Rule 131 Declaration of Damon Oliver Casati Troutman and Edward

B. Bretschger and Exhibits A-F thereto 1011 dictionary.com definition of “exposed” 1012 Prosecution File History for U.S. Design Patent No. D604,970

1013 In re Troutman et al., Appeal No. 2009-005005, Application No. 29/244,885 (BPAI Sept. 23, 2009)

1014 U.S. Design Patent No. D604,970 to Troutman 1015 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)

1016 Google search results for “Century Fold N Go elan Deluxe Care Center”


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I. INTRODUCTION

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

partes review of the claim of U.S. Design Patent No. D570,621 (the “’621 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

’621 Patent based on prior art that anticipates or renders obvious the ’621 Patent

claim. The’621 Patent should therefore be found unpatentable and cancelled.

The ’621 Patent is a design patent directed to the ornamental design for

“Exposed Legs for a Play Yard.” The

’621 Patent contains a single claim

and six figures depicting a single

embodiment. The figures of the ’621

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, and thus are the only features claimed.

Fatal to the ’621 Patent claim, however, is the fact that none of the elements

of the claimed design are new. Play yards with exposed legs, for example, have

’621 Patent – Figure 1


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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

’621 Patent. For example, U.S. Design

Patent No. D494,393 to Chen (“Chen

’393”) (Ex. 1003) disclosed designs

nearly identical to the one claimed in the ’621 Patent. The Patent Owner did not

differentiate Chen ’393 during prosecution, but instead swore behind Chen ’393

with an unsupported Rule 1.131 Declaration.

In 2000, four years prior to the filing of the ’621 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.) Also as early as 2000, Graco filed a

U.S. design application, which later issued in 2001, showing a play yard with

curved legs with “exposed” contours. (Ex. 1005.)

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 – Chen ’393


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B. Related Matters

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

alia, the ’621 Patent. Kolcraft Enterprises, Inc. v. Graco Children’s Products Inc.,

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

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 1300

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

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

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

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 ’621 Patent is


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

requesting inter partes review challenging the ’621 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 ’621 Patent based on the following prior art:

Exhibit Description Filing Date

Publication/Issue Date

1005 U.S. Design Patent No. D448,218

to Celestina-Krevh (“Celestina-Krevh”)May 5, 2000

Sept. 25, 2001

1006 U.S. Patent No. 3,187,352

to Gottlieb (“Gottlieb”) June 7, 1962

June 8, 1965


to Chen (“Chen ’393”) Jan. 7, 2004

Aug. 17, 2004


to Chen (“Chen ’683”) Nov. 10,

2003 Dec. 2, 2008

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

(“Fold ‘N Go Manual”) N/A

Aug. 13, 2003

1008 U.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 in view of Gottlieb


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Ground No. Statutory Basis Description 3 35 U.S.C. § 102(e) Anticipated by Chen ’393 4 35 U.S.C. § 102(e) Anticipated by Chen ’683 5 35 U.S.C. § 103(a) Obvious over Chen ’683 6 35 U.S.C. § 102(b) Anticipated by the Fold ‘N Go Manual 7 35 U.S.C. § 103(a) Obvious over the Fold ‘N Go Manual

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

9 35 U.S.C. § 103(a) Obvious over Celestina-Krevh in view of Hartenstine

10 35 U.S.C. § 103(a) Obvious over the Fold ‘N Go Manual in view of Hartenstine

VI. OVERVIEW OF THE ’621 PATENT

The ’621 Patent, entitled “Exposed Legs for a Play Yard,” was filed on

December 15, 2005,1 as U.S. Patent Application No. 29/244,886 (the “’886

Application”). The ’886 Application claimed priority to U.S. Patent Application

29/216,591, filed on November 5, 2004. The ’886 Application contained a single

claim and six figures. The figures were directed to an ornamental design for

exposed legs for a play yard. (Ex. 1001; Ex. 1002, ¶¶ 29-30.)

In a non-final Office Action, the Office objected to “the drawing due to an

inconsistency therein. The bottom-most portions of the leg members in [F]igure 1

show a slight flare outward that is not shown in the other views. Hence a new

drawing is now required wherein [F]igure 1 has been made consistent with the

1 Because the parent application for the ’621 Patent was filed prior to the effective

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


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other views.” (Ex. 1009, 3/2/06 NFOA at

2; Ex. 1002, ¶ 31.) The Office included

an annotated version of Figure 1, as

shown. (Ex. 1009, 3/2/06 NFOA.) The

Office also rejected the claim under 35

U.S.C. § 102(b) as “clearly anticipated by Chen 6,954,949 . . . . The shape and

appearance of Chen 6,954,949 is identical in all material respects to that of the

claimed design.” (Id. at 2.)

Applicants did not pursue the Office’s direction to modify Figure 1 in

response to the non-final Office Action. Rather, they submitted amended Figures

2-5 “to conform to Figure 1.”2 (Ex. 1009, 6/2/2006 Response at 4.) Applicants also

submitted a declaration pursuant to 37 C.F.R. § 1.131 (hereinafter “Rule 1.131

Declaration”) to address the Office’s rejection of the claim as anticipated by Chen,

U.S. Patent No. 6,954,949 (“Chen ’949”). (Ex. 1010.)

In a subsequent non-final Office Action, the Office withdrew the rejection

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

Board, Petitioner submits that the ’621 Patent is also nonenabling and indefinite

under 35 U.S.C. §§ 112(a) and (b). Petitioner reserves its rights to challenge the

Patent Owner’s amendment as, among other things, introducing new matter.


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under 35 U.S.C. § 102(b), but set forth a new rejection under 35 U.S.C. § 103(a),

alleging that the claim is unpatentable over Celestina-Krevh in view of Gottlieb or

U.S. Patent No. 3,162,865 to Tigrett (“Tigrett”). (Ex. 1009, 6/27/06 NFOA at 2.)

The Office specifically found that “[t]he appearance of the play yard legs claimed

herein is strikingly similar to the Celestina-Krevh play yard legs, the essential

difference being simply that the legs are exposed. Both Gottlieb and Tigrett show

the commonplace exposed legs on a play yard.” (Id.) The Office thus concluded

that “it would have been obvious to remove the cover of the Celestina-Krevh to

show the exposed legs as shown by either Gottlieb or Tigrett.” (Id.)

In response, and apparently relying on the Office’s (we believe mistaken)

assumption that “the legs of Celestina-Krevh design are not exposed,” Applicants

argued that “a person of ordinary skill in the art would never use Gottlieb or Tigrett

to modify Celestina-Krevh” because doing so would allegedly “eliminate the

claimed invention of Celestina-Krevh.” (Id. 11/30/06 Response at 2, 4.)

The Office did not accept Applicants’ argument. In a final Office Action, the

Office again rejected the claim under 35 U.S.C. § 103 as unpatentable over

Celestina-Krevh in view of Gottlieb or Tigrett. (Id. 1/26/07 final OA at 2.) “Again

it is held that it would have been obvious to a person of ordinary skill in the art at

the time the article was made to simply remove the cover of Celestina-Krevh to

show the exposed legs as taught by either Gottlieb or Tigrett.” (Id.)


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Applicants thereafter filed a Notice of Appeal from the Examiner to the

Board of Patent Appeals and Interferences (“BPAI”) (id. 4/16/07 Notice of

Appeal), and filed an Appeal Brief on August 16, 2007. (Id.) Upon filing of

Applicants’ Appeal Brief, prosecution of the ’886 Application was reopened by the

Examiner. (Id. 11/20/07 NFOA at 2.) In a non-final Office Action, the Office

rejected the claim under 35 U.S.C. § 102(a) as anticipated by Chen ’393,

concluding that “[t]he shape and appearance of the play yard legs of [Chen ’393]

are identical in all material respects to that of the claimed design[.]” (Id.)

In response, Applicants argued that, based on the Rule 131 Declarations that

had been previously submitted, Chen ’393 is not prior art under 35 U.S.C.

§ 102(a). (Id. 2/18/08 Response at 2.) The ’886 Application was thereafter allowed

on April 11, 2008. (Id.) The ’621 Patent issued on June 10, 2008. (Id.)

The ’621 Patent contains the following figure descriptions and figures:

Figure 1 – “[A] perspective view of

exposed legs for a play yard.” (Ex. 1001 at description of Fig. 1.)

Figure 2 – “[A] right side view of the

design of FIG. 1.” (Id. at description of Fig. 2.)


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Figure 3 – “[A] left side view of the

design of FIG. 1.” (Id. at description of Fig. 3.)

Figure 4 – “[A] front view of the design of FIG. 1.”

(Id. at description of Fig. 4.)

Figure 5 – “[A] rear view of the design of FIG. 1[.]”

(Id. at description of Fig. 5.)

Figure 6 – “[A] top view of the design of FIG. 1.”

(Id. at description of Fig. 6.) The description further provides that “[t]here is no fabric covering the exposed legs

shown in any of FIGS. 1-6. The features shown in broken lines are for illustrative

purposes only and do not form part of the claimed design.” (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,


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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 ’621 Patent is defined by the solid lines (as opposed to the

broken or dashed lines) depicted in Figures 1-6, 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,

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 ’621 Patent figures with additional


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descriptions of certain features of the claimed design.

B. Claim Construction Of The ’621 Patent

According to the specification, the ’621 Patent claims “[t]he ornamental

design for 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 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. 1-6.” (Id.)

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

words, the ’621 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.

During prosecution, the Examiner simply concluded “that the legs are

exposed.” (Ex. 1009 6/26/07 NFOA at 2.) Petitioner believes that the Office failed

to properly construe the ’621 Patent claim when deciding that “exposed” and “no

fabric covering” means the total absence of a fabric covering from the curved legs.

The ’621 Patent claim instead should be construed as “curved legs with the

unconcealed outer contours shown in FIGS. 1-6.” The most dominant disclosures

of the ’621 Patent are the figures showing legs in solid lines with white space


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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 the figures, 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 uncovered, the

scope of the ’621 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 the

figures – 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:


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2. laid open to view; unconcealed.

(Ex. 1011.) The construction argued by the Patent Owner, and adopted by the

Examiner, during prosecution was number 1 – that exposed meant the absence of a

fabric covering. (See Ex. 1009 6/26/07 NFOA at 2; 11/30/06 Response at 2-4.)

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 ’621 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

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 ’621

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 ’621 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


14

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

Accordingly, Petitioner proposes that the ’621 Patent claim, under the

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

unconcealed outer contours shown in FIGS. 1-6.” 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

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


15

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

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


16

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

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


17

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

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


18

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 ’621 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.

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 Figures 1-6

of the ’621 Patent. An ordinary observer would not take the claimed design in the

’621 Patent for a new and different design. 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. 1005.) Celestina-Krevh issued on September 25,


19

2001, more than one year prior to the filing date of the ’621 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 and “strikingly

similar” overall visual appearance to the ’621 Patent’s claimed design and thus

anticipate the curved legs with unconcealed outer contours shown in Figures 1-6 of

the ’621 Patent. (See Ex. 1009, 6/27/06 NFOA at 2.)

1. The play yard legs of Celestina-Krevh are substantially similar to the ’621 Patent’s claimed design

Below are figures from the ’621 Patent and Celestina-Krevh that show

respective views in a side-by-side format:

View ’621 Patent Celestina-Krevh

Perspective

Fig. 1

Fig. 1


20

View ’621 Patent Celestina-Krevh

Front

Fig. 4 Fig. 2

Right Side

Fig. 2 Fig. 4

Both the ’621 Patent’s claimed design and Celestina-Krevh share many

common visual features, such that they are substantially similar. (Ex. 1002 ¶ 140.)

As shown in the side-by-side comparisons above, the ’621 Patent and Celestina-

Krevh share the following features:

(1) both designs show the outer contours of legs of a play yard (id. ¶ 148);

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

(3) both designs show legs that have upright orientations (id. ¶ 147);


21

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

outwards at the middle (id. ¶ 149);

(5) both designs show legs at the four corners of the play yard (id. ¶ 146);

(6) both designs show legs that are thin and elongated (id. ¶ 150);

(7) both designs show legs that bow slightly outward at the top (id. ¶ 151);

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

¶ 144); 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 ’621 Patent and Celestina-Krevh show the outer contours of

legs of a play yard. In fact, the curved, exposed play yard legs of the ’621 Patent

“copy the claimed curved legs [disclosed] in…Celestina-Krevh.” (Id. ¶¶ 152-153.)

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 ’621

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

So does the ’621 Patent. Celestina-Krevh shows the legs as gently bowing

outwards in the middle, just like those in the ’621 Patent. Further, Celestina-Krevh

shows the legs flaring outward slightly at the top, as do the play yard legs shown

in the ’621 Patent’s claimed design. By way of example only, a side-by-side


22

comparison of the legs in Celestina-Krevh and the ’621

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 ’621 Patent’s claimed design.

(Id. ¶ 153.)

Moreover, regarding similarities (8) and (9) identified

above, a comparison of the ’621 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. 1 ’621 Patent

Fig. 1 Celestina-Krevh

2. Any differences between Celestina-Krevh and the ’621 Patent’s

claimed design are trivial

To the extent any differences exist between Celestina-Krevh and the ’621

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

Fig. 2 Celestina-Krevh

Fig. 4 ’621

Patent

H

H

W

W L

L


23

design of the ’621 Patent is anticipated by Celestina-Krevh. (Ex. 1002 ¶ 154.) 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 ’621 Patent figures show the bottoms of the legs as having

slight outward flaring like the tops of the legs. (Ex. 1002 ¶ 155.) This slight

outward flaring is irrelevant – it is not necessary to the visual impression created

by the patented design as a whole. (Id. ¶ 156.) See also Int’l Seaway, 589 F.3d at

1243. Even if the slight outward flaring at the bottom of the legs was considered

relevant, it would have been obvious to add flaring to the bottom of Celestina-

Krevh’s legs to give the same visual impression as the top. (Ex. 1002 ¶ 158.) If it

were not obvious, then the ’621 Patent’s original Figure 1, which suggested the

bottom flare on only two legs (only in two-dimensions, without even any contour

lines), would not have provided support for amending the remaining Figures 2-5 to

include a bottom flare.3 (Id. ¶ 157.)

3 Patent Owner cannot have its cake and eat it too. It has to choose whether to reset

its filing date (at least) for adding new matter to Figures 2-5, or admit that it would


24

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.

(Id. ¶¶ 117.) The Patent Owner argued during prosecution of the ’886 Application

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. ¶ 118.)

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

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

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.) It is a factual and

legal error to add design elements to a design

patent drawing that are not claimed. (Id. ¶ 119.)

In an annotated version of Figure 1 of

Celestina-Krevh, Mr. Anders indicates with red

arrows the shading lines that both the Examiner

and the BPAI4 appeared to mistakenly identify

be obvious to add a bottom flare to the shape.

4 During prosecution of U.S. Application No. 29/244,885 (“the ’885 Application”),

which claimed priority to the same application as the ’886 Application, Applicants


25

as curved legs covered by fabric. (Ex. 1002 ¶ 121.) These contour lines are thinner,

intermittent lines within thicker, solid outer lines and are shading lines that connote

the roundness or curvature. (Id. ¶ 122.) 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 ¶ 122.)

Celestina-Krevh’s Figures 6 and 7 show some unknown feature5 that appears

to extend laterally away from each leg. (Id. ¶ 126.) 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. ¶ 127.) It could be positioned below the legs, for

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

faced a similar rejection under 35 U.S.C. § 103(a) over Celestina-Krevh in view of

Gottlieb or Tigrett. (Ex. 1012, 6/28/07 NFOA at 2.) As in the ’886 Application,

Applicants filed a Notice of Appeal; however, the Examiner did not reopen

prosecution in that case, and Applicants and the Examiner submitted appeal

briefing. (See id.) On September 23, 2009, the BPAI entered its decision and

reversed the Examiner. (Ex. 1013.)

5 What the feature is comprised of, is indeterminate. (Ex. 1002 ¶ 126.)


26

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. 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.

1015.) 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.)6

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

6 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. 1015 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)).


27

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

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 ’621 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 ’621

Patent claim. (Ex. 1002 ¶ 160.) Regardless of any fabric or “covering” on the play

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

contours that anticipate the ’621 Patent’s claimed design. (Id. ¶ 161.) 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. ¶ 162.) 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 ¶ 161.) Because of the lack of


28

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

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

Krevh shows in Figure 6 the full contours of the leg. (Ex. 1001, Fig. 6; Ex. 1002

¶ 163.) The outer-most radius and two lateral sides of the legs are clearly shown in

solid lines. (Ex. 1002 ¶ 164.) The ’621 Patent figures likewise show only those

same three sides – the outer radius and two lateral sides of the legs. (Id. ¶ 165.)

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

The claim of the ’621 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. 1006.) Gottlieb issued on June 8, 1965, more than one year prior

to the filing date of the ’621 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 ¶ 170), 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. 1006 at 2:61-65; Ex. 1002 ¶ 169.) Because

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


29

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. 1006 at 3:16-18; FIGS. 1

& 2.) 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. (Id. at 3:7-8;

FIG. 1; see also Ex. 1002 ¶ 171.)

The claimed design of the ’621 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 ¶ 172.) As shown in Section IX(A)(1), supra, Celestina-Krevh’s legs are

substantially similar to the ’621 Patent’s claimed design and Gottlieb teaches

exposing the legs by spacing away any 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

Innovations, 747 F.3d at 1331. (See Ex. 1002, ¶ 173.)

Fig. 1 – Gottlieb

flexible shroud

legs


30

C. Ground 3 – The Claim Is Anticipated Under 35 U.S.C. § 102(e) By Chen ’393

Chen ’393 not only discloses the same overall visual appearance as Figures

1-6 of the ’621 Patent, the figures in the ’621 Patent appear to be a direct copy of

Chen ’393. (Ex. 1002 ¶ 174.) An ordinary observer would not take the claimed

design in the ’621 Patent for a new and different design. As a result, the claim is

anticipated by Chen ’393 and thus invalid under 35 U.S.C. § 102(e).

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

Application No. 29/196,878. (Ex. 1003.) Chen ’393 issued on August 17, 2004.

(Id.) Because the filing date for Chen ’393 falls before the filing date for the ’621

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

1. Chen ’393 anticipates the ’621 Patent claim

Chen ’393 discloses play yard legs that have a virtually identical overall

visual appearance to the ’621 Patent’s claimed design and thus anticipate the

curved legs with the outer contours shown in Figures 1-6 of the ’621 Patent.

Chen ’393 was cited during prosecution. (See Ex. 1009, 11/20/07 NFOA.)

The Patent Owner did not dispute the Office’s conclusion that “[t]he claim is

clearly anticipated by [Chen ’393]” and that “[t]he shape and appearance of the

play yard legs of [Chen ’393] are identical in all material respects to that of the

claimed design . . . .” (Id. at 2 (emphasis added).)

Both the ’621 Patent’s claimed design and Chen ’393 share many common


31

visual features, such that they are substantially similar (if not identical). (Ex. 1002

¶ 177.) In fact, Mr. Anders “was dismayed to see that the ’621 Patent is almost a

direct reproduction of the design depicted as environmental structures in Chen

’393.” (Id. ¶ 175.) It is “[Mr. Andres’s] opinion that the named inventors of the

’621 Patent directly copied the drawings of Chen ’393, and then claimed the

curved legs claimed in Celestina-Krevh.” (Id. ¶ 175.)

As shown in the side-by-side comparisons below, the ’621 Patent and Chen

’393 share the following features:





outwards in the middle (id. ¶ 190);




(8) both designs have similar upper frame shapes (id. ¶ 183);

(9) both designs have identical side panels for the play yard walls (id. ¶ 184);

(10) both designs have identical half-moon shaped handles (id. ¶ 185);

(11) both designs have identical feet (id. ¶ 186);


32

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

181); and


View ’621 Patent Chen ’393

Perspective

Fig. 1

Fig. 1

Front

Fig. 4

Fig. 2


33


Right Side

Fig. 2

Fig. 5

Overlays of the ’621 Patent’s design over the respective figures of the Chen

’393 also show nearly identical shapes, sizes, and designs:

Fig. 1 of Chen ’393 with Fig. 1 of ’621 Patent Overlaid



34


(Ex. 1002, ¶ 176.)7

Regarding similarities (1) and (2) above, an ordinary

observer can easily see that the ’621 Patent’s claimed design and

Chen ’393 are both directed to the outer contours of the legs of a

rectangular play yard. To better illustrate, a side-by-side

comparison of the curved legs in Chen ’393 and the ’621 Patent

is shown. As is apparent, both legs have upright orientations (3),

7 Notwithstanding the foregoing, and as shown by the overlays above, the existence

of any “[i]ndepedently made, simultaneous inventions, made ‘within a

comparatively short space of time,’” of the ’621 Patent, is “persuasive evidence

that the claimed apparatus ‘was the product only of ordinary mechanical or

engineering skill.’” Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618 F.3d

1294, 1305 (Fed. Cir. 2010) (citations omitted). For at least this reason, the ’621

Fig. 2 Chen ’393

Fig. 4 ’621

Patent


35

gently bow outwards in the middle (4), are thin and elongated (6), and bow slightly

outward at the top (7).

Regarding similarities (8), (9), (10), and (11) above, the side-by-side

comparison of the two play yards by an ordinary observer shows that each play

yard contains identical elements in the same size, proportion, and position.

Regarding similarities (12) and (13) above, a comparison of the ’621 Patent

and Chen ’393 by an ordinary observer shows that both designs have

proportionately similar, if not identical, height-to-width and length-to-width ratios:


Fig. 1 Chen ’393

2. The inventors failed to show an earlier invention date than Chen

’393

When faced with rejections under 35 U.S.C. § 102 as anticipated by Chen

’393 and Chen ’949, the Patent Owner did not dispute the Office’s conclusions as

Patent is also obvious in view of Chen ’393.

HH

W W L L


36

to anticipation. Rather, Applicants relied on a Rule 1.131 Declaration, which

allows an inventor to swear that he or she conceived and reduced the invention to

practice prior to the filing date of the otherwise invalidating prior art. See In re

NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). As a result, the examination of

the ’886 Application by the Office continued without further consideration of Chen

’393.

a. Applicable legal standards

Patent Owner bears the burden to establish “facts . . . in character and

weight, as to establish reduction to practice prior to the effective date of the

reference, or conception of the invention prior to the effective date of the reference

coupled with due diligence from prior to said date to a subsequent reduction to

practice or to the filing of the application.” 37 C.F.R. § 1.131(b). “To have

conceived of an invention, an inventor must have formed in his or her mind a

definite and permanent idea of the complete and operative invention, as it is

hereafter to be applied in practice.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572,

1577 (Fed. Cir. 1996) (citation omitted). “Conception ‘must be proven by evidence

showing what the inventor has disclosed to others and what that disclosure means

to one of ordinary skill in the art.’” Cordance Corp. v. Amazon.com, Inc., 658 F.3d

1330, 1334 (Fed. Cir. 2011) (quoting In re Jolley, 308 F.3d 1317, 1321 (Fed. Cir.

2002)). “[A]n inventor’s testimony, standing alone, is insufficient to prove


37

conception—some form of corroboration must be shown.” Price v. Symsek, 988

F.2d 1187, 1194 (Fed. Cir. 1993).

As the Federal Circuit has explained, “conception by an inventor, for the

purpose of establishing priority, can not [sic] be proved by his mere allegation nor

by his unsupported testimony where there has been no disclosure to others or

embodiment of the invention in some clearly perceptible form, such as drawings or

model, with sufficient proof of identity in point in time.” Id. (citation omitted).

Such corroboration is also required in inter partes review. Garmin Int’l, Inc. v.

Cuozzo Speed Techs., LLC, Case IPR2012-00001, Final Decision, Paper No. 59 at

20-21 (PTAB Nov. 13, 2013). A rule of reason is used to evaluate all “pertinent

evidence . . . so that a sound determination of the credibility of the inventor’s story

may be reached.” Price, 988 F.2d at 1195.

On the other hand, reduction to practice for a design patent “requires the

production of an article embodying that design.” Fitzgerald v. Arbib, 268 F.2d 763,

765 (C.C.P.A. 1959); see also Dieterich v. Leaf, 89 F.3d 226, 229 (C.C.P.A. 1937).

Patent Owner bears the burden of showing actual reduction to practice. See In re

Steed, 802 F.3d 1311, 1317-18 (Fed. Cir. 2015) (citing In re NTP, 654 F.3d at

1291) (“The burden of showing actual reduction to practice is on the party seeking

its benefit.”). And “[t]o establish reduction to practice, the inventor must prove that

he made an embodiment of the invention that met all the limitations” of the claim.


38

Cooper v. Goldfarb, 240 F.3d 1378, 1382 (Fed. Cir. 2001); see also Genentech,

Inc. v. Chiron Corp., 220 F.3d 1345, 1352 (Fed. Cir. 2000). Further, for design

patents, the focus is not on “concepts” but on the claimed design. See In re Harvey,

12 F.3d 1061, 1064 (Fed. Cir. 1993).

The Board has observed that the “corroboration requirement is not limited to

conception,” and “[i]t applies also to inventor testimony regarding . . . reduction to

practice.” ABB Inc. v. Roy-G-Biv Corp., Cases IPR2013-00062 & 00282, Final

Decision, Paper No. 84 at 9 (PTAB Apr. 11, 2014). A rule of reason analysis is

also used to evaluate corroboration of a reduction to practice. See Price, 988 F.2d

at 1196.

b. The alleged facts set forth in the Rule 1.131 Declaration are insufficient

The Patent Owner, based on the prosecution history for the ’621 Patent,

failed to meet the requirements of either actual reduction to practice or conception

plus diligence. In their Rule 1.131 Declaration, each inventor provided one

sentence – the exact same sentence – related to conception: “We invented the

design claimed in the instant application prior to the January 2, 2004 Chinese

priority date of the Chen Patent.”8 (Ex. 1010 ¶ 3.) The inventors then refer to

8 Petitioner notes that the “Chen Patent” referred to in the Rule 1.131 Declaration

is U.S. Patent No. 6,859,957 to Chen (“Chen ’957”). Chen ‘957 has a priority date


39

Exhibit A to the declaration, which

allegedly shows “a sketch of [the

inventors’] inventive design dated

________________, a date prior to

January 2, 2004.” (Id.) Other than

the undated “sketch,” which does

not show the ’621 Patent’s claimed

design, neither inventor offers any

other documents or testimony from others corroborating conception.

As with conception, the inventors make a single sweeping statement related

to reduction to practice: “Further, we reduced the inventive design to practice prior

to the January 2, 2004 Chinese priority date of the Chen Patent.” (Id. ¶ 3.) The

inventors then refer to two “photographs taken of one such reduction to practice”

(id. ¶ 3, Exs. B & C), and then two other photographs that allegedly “show another

reduction to practice of [their] inventive design” (id. ¶ 4, Exs. D & E). The four

photographs from Exhibits B-E are shown below.

of January 2, 2004, which was allegedly antedated by the Rule 1.131 Declaration.

Applicants relied again on this Rule 1.131 Declaration to “swear behind” Chen

’393, which has a priority date of January 7, 2004.

Rule 1.131 Declaration – Exhibit A


40

Exhibits B-E to the Rule 1.131 Declaration (Ex. 1010)

Exhibit B Exhibit C

Exhibit D Exhibit E

Aside from the four photographs, the declaration provides no further

testimony, documents, or evidence related to reduction to practice. The inventors

did not describe how the photographs support their claims of reduction to practice.

The inventors did not submit an actual physical prototype or article embodying the

claimed design.

c. The Patent Owner failed to establish conception

In their Rule 1.131 Declaration, the inventors wholly fail to address either

how the design shown in the single undated “sketch” is substantially the same as


41

those features shown in the ’621 Patent or how such “sketch” allegedly embodies

the ’621 Patent’s claimed design. (Ex. 1002 ¶¶ 48 & 50.) For instance, the

inventors provided no details about the design or the form of the design. (Id. ¶ 50.)

Yet further, the undated “sketch” does not provide the evidence necessary to

establish conception.

For instance, the sketch provides only one view (a perspective view), and

thus fails to provide any evidence of the concept’s appearance from the rear, the

left side, the right side, the top, or the bottom. (Id. ¶ 51.) Further, the proportions of

the play yard shown in the sketch appear different than those shown in the ’621

Patent. (Id. ¶ 52.) The legs in the sketch also appear covered with some type of

material. (Id.) The legs shown in the sketch vary in shape and size from each other,

not to mention that all of the legs in the sketch appear “dramatically different” than

those shown in the ’621 Patent. (Id. ¶ 53.)

The single statement by each inventor cannot serve to cross corroborate

each other’s testimony. See, e.g., In re Garner, 508 F.3d 1376, 1380 (Fed. Cir.

2007). This is especially true where the inventors have provided the exact same

testimony without any further details supporting this alleged conception. And

without any such evidence showing conception, no determination can be made as

to whether the design, as allegedly conceived, is the same as the claimed design.

Because, at a minimum, the evidence fails to show conception, the evidence


42

necessarily cannot demonstrate diligence from conception to reduction to practice.

Petitioner nonetheless addresses the reduction to practice prong of the analysis.

d. The Patent Owner failed to establish reduction to practice

The photographs that the inventors submit in support of the Rule 1.131

Declaration are of low quality and insufficient to show that they embody the

claimed design.9 (Ex. 1002 ¶ 56.) For instance, the photographs attached to the

Rule 1.131 Declaration present, at best, only perspective views. (Id. ¶ 57.) There is

no evidence of the prototype’s appearance from the rear, the left side, the right

side, the top, or the bottom. (Id.) Also, some of the claimed design elements, such

as the legs of the play yard, appear to be made of different types of material or may

be covered in some way. It is thus impossible to confirm whether the prototypes in

the photographs support the ’621 Patent’s statement that “[t]here is no fabric

9 Petitioner submits that copies of Exhibits A-F to the Rule 1.131 Declaration are

not available via PAIR. Petitioner thus enlisted a third party, Harris & Associates

of Lorton, Virginia, to travel to the USPTO to make photocopies of the USPTO’s

files containing Exhibits A-F, using the USPTO’s copier. The copies presented

herein are the best available to Petitioner at this time. Petitioner thus reserves all

rights to amend or supplement its Petition should other copies of the Exhibits A-F

be made available, or any other evidence presented.


43

covering the exposed legs . . . .” As a result, the photographs of the prototypes are

not sufficient to show that any prototype embodies the claimed design. (Id. ¶ 57.)

As an initial matter, the photographs fail to provide a view of every side of

the alleged prototype. (Id. ¶ 57.) Rather, only perspective views are provided. (Id.

¶ 57.) In Exhibit A to the Rule 1.131 Declaration, for instance, the inventors

provide a mere sketch – which is a drawing, and not a product. (Id. ¶ 48.) And fatal

to the sketch is that the proportions appear different than those claimed in the ’621

Patent. (Id. ¶ 53.) The second and third photographs, shown as Exhibits B and C,

respectively, are so dark as to be indiscernible. (Id. ¶¶ 59 & 61.) In fact, the

Exhibit C photograph shows what appears to be a covering

on the play yard legs. (Id. ¶ 61.) The Exhibit D photograph

seems to show that the play yard legs are tubes (e.g., the

back leg, which is a tube) that are covered with plastic

sheaths. (Id. ¶ 63.) The Exhibit D photograph also shows a

play yard that lacks any side or end panels. (Id. ¶ 64.) Yet

further, the height-to-width ratio of the play yard legs in the

’621 Patent and Exhibit D is different, as shown. (Id. ¶ 65.)

As to the Exhibit E photograph, that photograph is also too

dark to ascertain whether the legs are “covered” or not. (Id. ¶ 71.) Finally, Exhibit

F to the Rule 1.131 Declaration does not connect the dates to the previous sketch

Ex. 1010 at Ex. D

Fig. 1 ’621

Patent


44

and photographs shown at Exhibits A-E. (Id. ¶ 74.)

The Patent Owner has also failed to produce a prototype. (Id. ¶ 77.) Any

prototype must establish that the named inventors built an article that embodies the

claimed design of the ’621 Patent – and not just any concept for a play yard with

curved legs or an article that embodies the general idea of a play yard with curved

legs. The Patent Owner has not shown sufficient detail or views of the claimed

design in the scant evidence submitted.

Given the limitations necessarily imposed by the photographs attached to the

inventors’ declarations, and the scant evidence related to the alleged prototypes, it

would be impossible for a designer of ordinary skill to determine from the views

shown if the legs of the play yard are shaped like those shown in the ’621 Patent,

not to mention whether the legs are exposed or are covered in some type of

material (such paint or thin plastic). (Id. ¶ 75.)

Neither the inventors nor the Patent Owner have corroborated a reduction to

practice of any prototype embodying the claimed invention. The provision of hard-

to-discern photographs with an incomplete number of views plainly does not

suffice. If the Board were to institute trial, the Petitioner would have a chance to

inspect an actual prototype (to the extent one exists). See Iron Dome LLC v. E-

Watch, Inc., Case IPR2014-00439, Decision to Institute, Paper No. 16 at 5-8

(PTAB Aug. 4, 2014) (instituting trial and finding that Patent Owner did not


45

properly swear behind a prior art reference, despite the fact that, during earlier

prosecution, the Examiner found that the prior art was properly antedated).

In view of the foregoing, Chen ’393 qualifies as prior art under 35 U.S.C.

§ 102(e), and Petitioner has established a reasonable likelihood that ’621 Patent

claim is anticipated by Chen ’393.

D. Ground 4 – The Claim Is Anticipated Under 35 U.S.C. § 102(e) By Chen ’683

Chen ’683 lists the same inventor as Chen ’393. It thus comes as little

surprise that Chen ’683 likewise discloses the same overall visual appearance as

the claimed design of the ’621 Patent. An ordinary observer would not take the

claimed design in the ’621 Patent for a new and different design.

Chen ’683 is a U.S. design patent, filed as U.S. Application No. 29/193,511

on November 10, 2003. (Ex. 1007.) Chen ’683 issued on December 2, 2008. (Id.)

Because the filing date for Chen ’683 falls before the filing date for the ’621

Patent, Chen ’683 is prior art under 35 U.S.C. § 102(e).10

1. The play yard legs of Chen ’683 are substantially similar to the ’621 Patent’s claimed design

The legs of the play yard disclosed in Chen ’683 have a substantially similar

10 The inventors’ Rule 1.131 Declaration to remove Chen ’957 only alleged a

conception and reduction to practice date prior to January 2, 2004. (Ex. 1010.)


46

overall visual appearance to the design claimed in the ’621 Patent. As shown in the

side-by-side comparisons below, the ’621 Patent and Chen ’683 share the

following features:

(1) both designs show the outer contours of legs of a play yard;

(2) both designs are directed to rectangular play yards;

(3) both designs show legs that have upright orientations;


outwards at the middle;

(5) both designs show legs at the four corners of the play yard;

(6) both designs show legs that are thin and elongated;

(7) both designs show legs that bow slightly outward at the top;

(8) the curvature of the legs in both designs is substantially similar, if not

identical;

(9) both designs have similar side panels for the play yard walls;

(10) both designs have similar feet;

(11) both designs have proportionally similar height-to-width ratios; and

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


47


Perspective

Fig. 1

Fig. 1

Front

Fig. 4

Fig. 2

Right Side

Fig. 2

Fig. 5

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

that both the ’621 Patent and Chen ’683 are directed to the outer contours of legs


48

of a rectangular play yard. Chen ’683 shows the play yard legs as having an

upright orientation and being positioned at the four corners of a play yard, as does

the ’621 Patent. Chen ’683 shows the play yard legs as being thin and elongated.

The play yard legs in the ’621 Patent’s claimed design are

likewise thin and elongated. Chen ’683 further shows that the

legs are gently bowing outwards at the middle with a slight

outward bow at the top of the leg. So does the ’621 Patent. In

fact, the curvature of the outer contours of the play yard legs of

the ’621 Patent and Chen ’683 are almost identical, as shown in

the side-by-side comparison. Chen ’683 thus shows the outer

contours of the legs of a play yard that are virtually identical to

the ’621 Patent’s claimed design, exceeding the substantially similar standard.

Regarding similarities (9) and (10) above, even a casual comparison of Chen

’683 and the ’621 Patent by an ordinary observer shows that each play yard

contains similar side panels and feet. Moreover, regarding similarities (11) and

(12), a comparison of the ’621 Patent’s Figure 1 and Chen ’683’s Figure 1 by an

ordinary observer shows that both designs have proportionately similar height-to-

width and length-to-width ratios:

Fig. 2 Chen ’683

Fig. 4 ’621

Patent


49


Fig. 1 Chen ’683

2. Any differences between Chen ’683 and the ’621 Patent’s claimed

design are trivial

The differences between the ’621 Patent’s claimed design and the disclosure

of Chen ’683 are trivial. For instance, the ’621 Patent figures show the bottoms of

the legs as having slight outward flaring like the tops of the legs. This slight flaring

is irrelevant and is not necessary to the visual impression created by the ’621

Patent’s claimed design as a whole. See Int’l Seaway, 589 F.3d at 1243. Even

assuming, arguendo, that the slight outward flaring at the bottom of the legs was

considered relevant, it would have been obvious to add flaring to the bottom of

legs of Chen ’683 to give the same visual impression as the top. See Section

IX(A)(2) & n.3, supra.

E. Ground 5 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over Chen ’683

In the alternative, Chen ’683 discloses the same overall visual impression as

HH

W W

L L


50

the ’621 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 ’621

Patent claim is obvious under 35 U.S.C. § 103(a) over Chen ’683.

Chen ’683 is a suitable primary reference because Chen ’683 discloses a

play yard with legs showing unconcealed outer contours with “basically the same

design characteristics” as the claimed design. Durling v. Spectrum Furniture Co.,

101 F.3d 100, 103 (Fed. Cir. 1996). Indeed, Chen ’683 is so similar to the claimed

design that no secondary reference is necessary.

To the extent that there is any disclosure in the ’621 Patent that is not plainly

evident from Chen ’683 (e.g., any minor differences in leg curvature or any minor

differences in proportion of the play yards), Chen ’683 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 In re

Stevens, 173 F.2d 1015, 1015-16 (C.C.P.A. 1949) (“obvious changes in . . .

proportioning” involve “ordinary skill only”). Chen ’683, for example, shows the

curved legs in dashed lines without any contour lines or shading. However, the

’621 Patent’s figures also do not show any contour lines or shading. And, it would

be obvious to convert the dashed lines into solid lines.

Finally, considering this hypothetical Chen ’683 reference, the ordinary


51

observer would be deceived into believing that the hypothetical Chen ’683 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 Chen ’683.

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

F. Ground 6 – 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

Figures 1-6 of the ’621 Patent. In view thereof, an ordinary observer would not

take the claimed design in the ’621 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, 2003,11 which is more than one year prior to the filing date of the

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

11 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. 1016.) Petitioner thus

proceeds with the August 17, 2003, date.


52

§ 102(b). The Fold ‘N Go Manual was not considered during prosecution of the

’886 Application.

Figures from the ’621 Patent and the Fold ‘N Go Manual are shown below

in a side-by-side comparison:

’621 Patent Fold ‘N Go Manual

Fig. 1 Front Page

Both the ’621 Patent’s claimed design and the Fold ‘N Go Manual share

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

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




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

outwards at the middle (id. ¶ 205);


53




(8) both designs have similar side panels (id. ¶ 208);

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

196); and


Regarding similarity (1), an ordinary observer can easily see that both the

’621 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. ¶ 202.) The ’621

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

disclose rectangular play 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 ’621 Patent and the Fold ‘N Go Manual have almost identical curvature,

as shown. (Id. ¶ 204.)

Front Pg. Fold ‘N Go

Manual

Fig. 4 ’621

Patent


54

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 are thus indicative of the legs being unconcealed. (Id. ¶ 203.) 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 ’621

Patent claim. The Fold ‘N Go Manual still discloses curved legs with unconcealed

outer contours that anticipate the ’621 Patent’s claimed design regardless of any

fabric or “covering” on the play yard legs. (Id. ¶ 210.) 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 ¶ 210.)

Both the ’621 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:


55


Front Pg. Fold ‘N Go Manual

G. Ground 7 – The Claim Is Obvious Under 35 U.S.C. § 103(a) Over

The 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 ‘621 Patent. High Point Design, 730 F.3d at 1311. The

Fold ‘N Go Manual is not only similar to the ’621 Patent, it is substantially similar

in all material respects. (Ex. 1002 ¶ 212.)

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. ¶ 213.)

For example, one of ordinary skill would know the rounded shape of the legs in

HH

W W L

L

Fold ‘N Go Manual, p. 3


56

multiple views due to their shading and expected symmetry around the play yard,

as shown. (Id.)

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

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

slightly modified Fold ‘N Go Manual is the same as the ’621 Patent’s claimed

design. (Id. ¶ 214.) 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.

H. Ground 8 – 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 ’621 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 ¶ 218.) 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(B), Gottlieb discloses legs of a play yard

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

¶ 217; Ex. 1006 at 3:16-18, FIGS. 1-2.)

The claimed design of the ’621 Patent would have been obvious to a


57

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 ¶ 219.) As shown in Section IX(F), supra, the Fold ‘N Go

Manual’s legs are substantially similar to the ’621 Patent’s claimed design and

Gottlieb teaches exposing the legs by spacing away any 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.)

I. Ground 9 – 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 ’621 Patent’s claimed design.

Further, any element of the ’621 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 ’621 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


58

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

because it is “so related” to Celestina-Krevh. MRC Innovations, 747 F.3d 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


59

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.

J. Ground 10 – 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 ’621 Patent’s claimed

design. Further, any element of the ’621 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(I), 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 &


60

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(F), supra, and the ’621 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 given above, Petitioner has established a reasonable

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

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

be instituted, and the ’621 Patent claim should be found invalid under the statutory

grounds identified above.

DATED: March 29, 2016. Respectfully submitted,

/Gregory J. Carlin/ Gregory J. Carlin, Reg. No. 45,607 Walter Hill Levie III, Reg. No. 72,016 MEUNIER CARLIN & CURFMAN LLC 999 Peachtree Street, N.E., Suite 1300 Atlanta, Georgia 30309 Telephone: (404) 645-7700 Facsimile: (404) 645-7707 Counsel for Petitioner


61

CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, I certify that on March 29,

2016, a copy of this Petition and all exhibits were served on the counsel of record

for the patent owner by depositing with the U.S. Postal Service, Priority Mail

Express:

Hanley, Flight & Zimmerman, LLC 150 S. Wacker Drive, Suite 2200 Chicago, IL 60606

A courtesy copy of the petition has also been served by e-mail on the

following counsel representing the Patent Owner in related district court litigation:

Raymond P. Niro, Jr. Kyle D. Wallenberg Anisha A. Mehta Niro McAndrews, LLC 200 West Madison St., Suite 2040 Chicago, IL 60606 [email protected] [email protected] [email protected]

/Walter Hill Levie III/ Walter Hill Levie III Reg. No. 72,016 Meunier Carlin & Curfman LLC 999 Peachtree St. NE, Suite 1300 Atlanta, GA 30309

graco - petition for ipr d621

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