Trials@uspto.gov Paper 8
`571-272-7822 Entered: June 4, 2015
`
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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 IPR2015-00582
`Patent 8,388,501 B2
`____________
`
`
`Before JAMES T. MOORE, HYUN J. JUNG, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge
`
`
`
`DECISION
`Denying Inter Partes Review
`Denying Motion for Joinder
`37 C.F.R. § 42.108
`
`
`I. INTRODUCTION
`
`
`
`A. Background
`
`
`
`Artsana USA, Inc. (“Petitioner”) filed a paper styled “Second Petition
`
`for Inter Partes Review of U.S. Patent No. 8,388,501” (Paper 1, “Pet.”)
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`
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`
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`571-272-7822 Entered: June 4, 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 IPR2015-00582
`Patent 8,388,501 B2
`____________
`
`
`Before JAMES T. MOORE, HYUN J. JUNG, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge
`
`
`
`DECISION
`Denying Inter Partes Review
`Denying Motion for Joinder
`37 C.F.R. § 42.108
`
`
`I. INTRODUCTION
`
`
`
`A. Background
`
`
`
`Artsana USA, Inc. (“Petitioner”) filed a paper styled “Second Petition
`
`for Inter Partes Review of U.S. Patent No. 8,388,501” (Paper 1, “Pet.”)
`
`
`
`
`
`
`IPR2015-00582
`Patent 8,388,501 B2
`
`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.
`
`Petitioner also filed a Motion for Joinder (Paper 3). The Motion for Joinder
`
`seeks joinder to IPR2014-01053. Kolcraft Enterprises, Inc. (“Patent
`
`Owner”) filed a Preliminary Response (Paper 7). We have jurisdiction
`
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`
`be instituted “unless . . . there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`
`
`Petitioner contends the challenged claims are unpatentable under
`
`35 U.S.C. § 103 on the following specific grounds (Pet. 4–5):
`
`References
`
`Basis Claims challenged
`
`Tyco1 in view of Graco2
`
`§ 103
`
`1, 6, 7, 9, 10, 12 and
`
`13
`
`Tyco, Graco, and Dole3
`
`Tyco and Rupert4
`
`§ 103
`
`2–5, 8 and 11
`
`§ 103
`
`14, 19, and 20
`
`Tyco, Rupert, and Century5
`
`§ 103
`
`15–18
`
`
`
`
`
`For reasons discussed below, we decline to institute inter partes
`
`review of the ’501 patent.
`
`
`
`
`1 1995 Tyco Playtime Catalog copyright 1994 (“Tyco”) (Ex. 1015).
`2 Graco Pack ’N Play Model No. 386-11-01 Owner’s Manual, copyright
`2001 (“Graco”) (Ex. 1004).
`3 U.S. Patent No. 3,223,098, Dec. 14, 1965 (“Dole”) (Ex. 1003).
`4 U.S. Patent No. 2,948,287, Aug. 9, 1960 (“Rupert”) (Ex. 1006).
`5 Century Fold-n-Go Care Center Instruction Manual dated 1998
`(“Century”) (Ex. 1005).
`
`
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`2
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`IPR2015-00582
`Patent 8,388,501 B2
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`B. Related Proceedings
`
`
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`Petitioner informs us that the ’501 patent is at issue in Kolcraft
`
`Enterprises, Inc. v. Artsana USA, Inc., No. 1:13-cv-04863 (N.D. Ill.). Pet.
`
`1–2 and Ex. 1002. Patent Owner has requested adverse judgment in related
`
`IPR2014-01053, also concerning the ’501 patent, which request has been
`
`granted (Paper 24 in IPR2014-01053). Petitioner has moved for joinder with
`
`IPR2014-01053 (Paper 3). There is also a copending inter partes review
`
`petition pending, instituted May 29, 2015, and given number IPR2015-
`
`00286 challenging U.S. Patent No. 8,764,612.
`
`
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`C. The ’501 Patent
`
`
`
`The ’501 patent relates to a play gym which suspends an object over a
`
`mat within a play yard. Ex. 1001, Abstract. Figure 2 is illustrative and is
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`reproduced below.
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`Figure 2 is a perspective view of a play gym and mat
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`3
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`
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`IPR2015-00582
`Patent 8,388,501 B2
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`D. Illustrative Claim
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`As noted above, Petitioner challenges claims 1–20 of the ’501 patent,
`
`of which claims 1, 9, and 14 are independent. Claim 1 is illustrative of the
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`challenged claims and is reproduced below:
`
`
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`1. An apparatus comprising:
`
`at least one of a play yard or a bassinet;
`
`a floor mat dimensioned to substantially cover a floor of
`the play yard or the bassinet, the floor mat having a connector
`positioned in proximity to a perimeter edge of the floor mat,
`and the floor mat to couple to at least one of the play yard or the
`bassinet when the floor mat is located within the play yard or
`the bassinet; and
`
`a play gym to suspend an object above the floor mat, the
`play gym having a fastener to engage the connector of the floor
`mat to couple the play gym to the floor mat, the floor mat to
`couple the play gym to the play yard or the bassinet when the
`play gym is positioned in one of the play yard or the bassinet.
`
`
`II. DISCUSSION
`
`Procedural Matters
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`
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`Patent Owner filed suit against Petitioner asserting the ’501 patent.
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`The complaint was served upon the Petitioner on July 11, 2013. Paper 3 ¶1.
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`The instant Petition was filed January 20, 2015, more than a year from the
`
`service date of the complaint in the infringement civil action.
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`
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`
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`Normally, such a Petition would be time barred. 35 U.S.C. § 315(b).
`
`Under certain circumstances, a Petitioner can file a petition and request
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`joinder of the later proceeding, if instituted, with a previous proceeding.
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`35 U.S.C. § 315(c).
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`
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`4
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`IPR2015-00582
`Patent 8,388,501 B2
`
`
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`In order for a proceeding to be joined with another, however, there
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`must be a motion filed for joinder to a proceeding, and the proceeding
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`sought to be joined with must be an ongoing proceeding.
`
`37 C.F.R. § 42.122.
`
`
`
`Patent Owner requested adverse judgment in IPR2014-01053 (Paper
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`23 in IPR2014-01053). Although Petitioner sought a delay in terminating
`
`that proceeding via conference call, that request was denied, and adverse
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`judgment was entered on some of the claims of the ’501 patent.
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`
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`The practical effect of that entry of judgment was to end IPR2014-
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`01053 as a proceeding. As Paper 3 seeks joinder to that particular inter
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`partes review proceeding, the motion for joinder must be denied.
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`
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`Thus, without the benefit of joinder, the instant Petition fails to
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`comply with the time requirements of 35 U.S.C. § 315(b).
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`As a consequence, the instant petition is denied.
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`III. CONCLUSION
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`For the foregoing reasons, we deny the Petition because it was not
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`filed within the time limits imposed under 35 U.S.C. § 315(b).
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`.
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`IV. ORDER
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`For the reasons given, it is
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`ORDERED that the Motion for Joinder is DENIED, and
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`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(b), no inter
`
`partes review is instituted as to claims 1–20 of the ’501 patent.
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`5
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`IPR2015-00582
`Patent 8,388,501 B2
`
`
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`PETITIONER:
`
`Anthony Volpe
`Ryan O’Donnell
`VOLPE AND KOENIG, P.C.
`avolpe@vklaw.com
`rodonnell@vklaw.com
`
`PATENT OWNER:
`
`Anthony E. Dowell
`Brian P. Lynch
`NIRO, MCANDREWS & DOWELL, LLC
`aedowell@niro-mcandrews.com
`blynch@niro-mcandrews.com
`
`
`
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`6
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