Trials@uspto.gov Paper 22
`571-272-7822 Entered: March 6, 2015
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARTSANA USA, INC.,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01053
`Patent 8,388,501 B2
`____________
`
`
`Before JAMES T. MOORE, HYUN J. JUNG, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
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`
`
`
`
`
`I. INTRODUCTION
`
`Artsana USA, Inc. (“Petitioner”) filed a Corrected Petition (Paper 5,
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`“Pet.”) seeking to institute an inter partes review of claims 1–20 of U.S.
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`Patent No. 8,388,501 B2 (“the ’501 patent”) pursuant to 35 U.S.C. §§ 311–
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`319. Kolcraft Enterprises, Inc. (“Patent Owner”) filed a Preliminary
`
`Response (Paper 11, “Prelim. Resp.”). The Board instituted review
`
`
`
`
`
`571-272-7822 Entered: March 6, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARTSANA USA, INC.,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01053
`Patent 8,388,501 B2
`____________
`
`
`Before JAMES T. MOORE, HYUN J. JUNG, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`I. INTRODUCTION
`
`Artsana USA, Inc. (“Petitioner”) filed a Corrected Petition (Paper 5,
`
`“Pet.”) seeking to institute an inter partes review of claims 1–20 of U.S.
`
`Patent No. 8,388,501 B2 (“the ’501 patent”) pursuant to 35 U.S.C. §§ 311–
`
`319. Kolcraft Enterprises, Inc. (“Patent Owner”) filed a Preliminary
`
`Response (Paper 11, “Prelim. Resp.”). The Board instituted review
`
`
`
`
`
`
`IPR2014-01053
`Patent 8,388,501 B2
`
`(Paper 14, “Dec.”). Petitioner seeks rehearing of that decision. (Paper 16
`
`“Req. Reh’g”).
`
`
`
`
`
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`We have considered the Request for Rehearing and grant it in part.
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`II.
`
`STANDARD OF REVIEW
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`In a request for rehearing, the dissatisfied party must identify,
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`specifically, all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was addressed previously.
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`37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a
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`petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
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`III. ANALYSIS
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`A. Basis for Request and Requested Relief
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`Petitioner contends that our Decision is based upon the erroneous
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`
`
`
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`determination that a document disclosing the Tyco Sesame Street Cozy Quilt
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`Gym (“Tyco”), which document is a declaration filed in litigation in New
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`Jersey in 1995, and was attached as Exhibit 1009 to Petitioner’s Petition, is
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`not a printed publication. Req. Reh’g 1. Petitioner then seeks institution of
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`inter partes review on grounds 4-7 of the Petition as relief. Id.
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`
`
`
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`B. Printed Publications
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`A printed publication in the United States is prior art if it was
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`described in a printed publication prior to the applicant’s date of invention.
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`35 U.S.C § 102(a) (2000). Whether a document is a "printed publication" is
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`"a legal determination based on underlying fact issues." In re Hall, 781 F.2d
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`897, 899 (Fed. Cir. 1986). To qualify as a printed publication, a document
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`must be generally available. Northern Telecom, Inc. v. Datapoint Corp., 908
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`F.2d 931 (Fed. Cir. 1990). There must be sufficient evidence to find that
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`anyone could have had access to the documents by the exercise of
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`2
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`IPR2014-01053
`Patent 8,388,501 B2
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`reasonable diligence. Id. “Anyone” is “the pertinent part of the public,”
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`and “diligence” is “the diligence of persons interested in and of ordinary
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`skill in the subject matter or art.” In re Wyer, 655 F.2d 221, 226 (CCPA
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`1981).
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`
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`C. The Asserted Error
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`Petitioner focuses its argument principally on the accessibility of the
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`records of a court. Req. Reh’g 5–7. “[A]ccessibility always was and is
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`the key inquiry.” Id. at 6 (emphasis in original). “[T]he key inquiry is
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`whether the reference was publicly accessible.” Id. at 7 (emphasis in
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`original). Petitioner cites two United States District court cases in support
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`of that argument. Req. Reh’g 6.
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`
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`In Brian Jackson Associates, Inc. v. San Manuel Copper Corp., 259 F.
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`Supp. 793 (D. Ariz 1966) Petitioner asserts that the court determined that
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`licensee instructions found in the records of the United States Court of
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`Appeals for the Third Circuit qualified as publications within the meaning of
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`35 U.S.C. § 102. Id.
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`The pertinent part of the court’s decision is reproduced below:
`
`
`
`
`There has been some contention as to whether the Instructions to the
`Pierce-Smith Licensees are a publication within the meaning of 35
`U.S.C. § 102. They are a part of the records of the United States
`Courts of Appeals for the Third Circuit. Those of the public who have
`an interest in them may easily obtain a copy. I find that this satisfies
`the requirement of a “publication.”
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`259 F. Supp at 804.
`
`
`
`In Wichester Carton Corp. v. Standard Box Co., 294 F. Supp. 1207
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`(D. Mass 1969), Petitioner asserts that the court determined that a published
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`judicial opinion of the Supreme Judicial Court of Massachusetts constituted
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`3
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`IPR2014-01053
`Patent 8,388,501 B2
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`a prior art publication that rendered two claims of the patent at issue invalid.
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`Req. Reh’g 6.
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`
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`The pertinent part of the court’s decision is reproduced below:
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`The court concludes that the two plates in the 1962 opinion constitute
`a prior publication of claims 1 and 2 of the Wischusen patent so that
`the patent is invalid with respect to these claims.
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`294 F. Supp. 1213.
`
`
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`Petitioner then asserts “District Court records and documents satisfy
`
`this ‘key inquiry’ and qualify as printed publications.” Req. Reh’g 7.
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`
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`It is important to note that in one instance the actual opinion itself
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`constituted the prior art (e.g., the Massachusetts decision containing actual
`
`photographs). We are not provided with the nature of the Instructions to the
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`Pierce-Smith Licensees other than they are a part of the court records and a
`
`copy “may easily be obtained.” What that court’s determination was based
`
`upon is unknown to us.
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`
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`Petitioner’s position is that “[a]fter reading the published opinion that
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`contained a detailed description of Tyco (Petition Ex.1009), it would be a
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`reasonable exercise of due diligence to locate the publicly available case
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`file.” Req. Reh’g. 11.
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`
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`Petitioner also asserts, without evidentiary citation, that the court
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`decision “was not the only means to locate the Conley Declaration and
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`accompanying exhibits.” Req. Reh’g. 9.
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`
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`Petitioner’s arguments tend to conflate the District Court decision, the
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`case file, and the underlying individual documents in the litigation. While
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`the District Court decision itself may be a publication, searchable to those
`
`interested, and an entire case file generally findable and accessible, we are
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`far less certain about the level of diligence required to find this specific
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`4
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`IPR2014-01053
`Patent 8,388,501 B2
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`declaration and exhibits without prior knowledge thereof, and whether that
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`level is reasonable.
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`
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`As evidence, Mr. Morgan testifies that he discovered the case while
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`“seeing the report case at .” Ex. 2012 ¶ 3. Despite this infirmity in his
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`declaration, we believe it is probable that he did find the case.
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`
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`Mr. Morgan further testified that he reviewed the case file, which we
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`agree as a whole is locatable exercising reasonable diligence, and made
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`scanned copies of certain docket numbers. Ex. 1012 ¶¶ 5 and 6.
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`
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`However, the evidentiary record becomes sparse at this point in the
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`search for the specific documents forming Exhibit 1009. We are not
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`provided with the process Mr. Morgan used to determine the relevance of
`
`those docket numbers. Did Mr. Morgan already know about the declaration
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`and was he looking for it based on prior knowledge, having used some other
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`means to locate it, as suggested could be done in the Request for Rehearing
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`at page 9?
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`
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`We are not provided with copies of the court indexing documents he
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`used to identify and arrive at the relevant documents. Does the court’s index
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`identify the description of a play gym? Is the court’s index by declarant
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`name or by number only? What led Mr. Morgan to select docket numbers 1,
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`7, 9, 13, 14, 15, 23, 26, 28, 29, 30, 31, 50, 52, and 75? Ex. 1012 ¶ 6.
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`
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`The Request for Rehearing specifically urges that one interested in its
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`subject matter could have readily used the district court decision as a
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`“roadmap” to locate the Conley Declaration and accompanying exhibits.
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`Req. Reh’g 9.
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`
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`
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`Our review of that published decision, Tyco Industries, Inc. v. Tiny
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`Love, Ltd., 914 F. Supp. 1068 (D.N.J. 1996) indicates that it references
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`5
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`IPR2014-01053
`Patent 8,388,501 B2
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`numerous possible designs, but we are not specifically pointed by Petitioner
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`to how the decision leads a researcher specifically to the Tyco document in
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`the stated “exercise of reasonable diligence.” So far as we can tell, Mr.
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`Conley is only referenced once in the decision at 914 F. Supp. 1077, and that
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`reference is only to the trial transcript.1 No mention of his declaration
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`testimony or any photographs contained in the declaration are apparent to us
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`in the decision. We have not been provided with the trial transcript. As a
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`consequence, we are not persuaded that this evidence shows a “roadmap” to
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`Exhibit 1009.
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`
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`In determining whether a reference was “publicly accessible” under
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`patent law provision barring patentability of an invention previously
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`described in a “printed publication,” a court must consider all of the facts
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`and circumstances surrounding the reference's disclosure and determine
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`whether an interested researcher would have been sufficiently capable of
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`finding the reference and examining its contents. In re Lister, 583 F. 3d
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`1307, 1312 (Fed. Cir. 2009).
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`
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`In Lister, our reviewing court observed that once accessibility was
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`shown, an additional inquiry must be answered. The court indicated that one
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`must also “consider whether anyone would have been able to learn of its
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`existence and potential relevance.” Id. at 1314. A central piece of the
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`determination; specifically, why one would seek this particular declaration
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`
`1 “…The snaps on the periphery of the blanket are used to keep the blanket
`folded in half when it is placed in the portable position. Lastly, the grommets
`depicted in the patent are used to hang the toys. See, e.g., Tr. at 448, 449,
`466–70 (testimony of Denny Conley, Tyco's expert on toy design, wherein
`he testified regarding the functional aspects of the design claimed in the
`Tiny Love patent as embodied in the GYMINI Gym).”
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`6
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`IPR2014-01053
`Patent 8,388,501 B2
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`in the case file, is lacking sufficient argument and evidence for us to find a
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`researcher would have cause to look for it.
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`
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`Based on the evidentiary record before us, we have been provided
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`insufficient credible evidence to arrive at a determination that one searching
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`for prior art would be able to learn that the Tyco Exhibit was in existence
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`and potentially relevant.
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`
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`We do agree that our first sentence at the top of page 32 of the
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`Decision on Institution was inartfully phrased (Req. Reh’g 7), and strike it.
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`We replace it with “While a published decision may qualify as a printed
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`publication, we decline to conclude on this record that a single underlying
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`deposition and its exhibits in the District Court case also necessarily qualify
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`as printed publications.”
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`IV. CONCLUSION
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`For the foregoing reasons, we determine Petitioner has not
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`demonstrated that the panel overlooked or misapprehended any issues or
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`facts in its Decision to Institute, nor abused its discretion. However, we do
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`take the opportunity to modify our decision as noted above. Accordingly,
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`the Request for Rehearing is denied as to the merits, and granted for the
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`limited modification above.
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`For the reasons given, it is
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`V. ORDER
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`ORDERED that, the Request for Rehearing is GRANTED IN PART,
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`and we modify our decision as indicated above. However, we decline to
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`alter our decision not to institute on grounds 4-7.
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`7
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`IPR2014-01053
`Patent 8,388,501 B2
`
`PETITIONER:
`
`Anthony Volpe
`avolpe@vklaw.com
`
`Ryan O’Donnell
`rodonnell@vklaw.com
`
`
`PATENT OWNER:
`
`Anthony Dowell
`aedowell@niro-mcandrews.com
`
`Raymond Niro, r.
`rnironjr@niro-mcandrews.com
`
`Brian Lynch
`blynch@niro-mcandrews.com
`
`
`
`
`
`
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`8
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