`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`WALMART INC.
`Petitioner
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.
`Patent Owner
`
`
`
`
`Case IPR2020-01026
`Patent No. 5,944,040
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,944,040
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 7
`
`GROUNDS FOR STANDING AND FEES.................................................... 8
`
`III.
`
`IDENTIFICATION OF CHALLENGE .......................................................... 8
`
`IV. THE ’040 PATENT ....................................................................................... 10
`
`A.
`
`B.
`
`C.
`
`Priority Date of the ’040 Patent........................................................... 10
`
`The Written Description of the ’040 Patent ........................................ 10
`
`The Prosecution History ...................................................................... 14
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 16
`
`VI. OVERVIEW OF THE PRIOR ART ............................................................. 16
`
`A. Yang (Exhibits 1004 and 1005) .......................................................... 16
`
`B.
`
`C.
`
`Tsai (Exhibit 1006) .............................................................................. 18
`
`Lynch (Exhibit 1007) .......................................................................... 21
`
`D. Applicant Admitted Prior Art (AAPA) ............................................... 22
`
`E.
`
`F.
`
`Berg (Exhibit 1008) ............................................................................. 25
`
`Carter (Exhibit 1009)........................................................................... 26
`
`VII. CLAIM CONSTRUCTION .......................................................................... 27
`
`A.
`
`The term “center pole” means “centrally-disposed, long, slender
`object.”................................................................................................. 28
`
`1.
`
`2.
`
`The evidence supports Petitioner’s construction. .....................28
`
`Patent Owner’s proposed construction is incorrect. .................31
`
`2
`
`

`

`B.
`
`C.
`
`The term “constructed for stretching and sustaining a tent’s
`roof” means “made to heighten and hold up the tent covering.” ........ 32
`
`Petitioner’s constructions for the remaining terms are correct
`although unnecessary for institution. .................................................. 33
`
`VIII. CLAIMS 1-3 OF THE ’040 PATENT ARE UNPATENTABLE. ............... 35
`
`A. Ground 1: Yang in view of Lynch render obvious claims 1-3
`under 35 U.S.C. § 103. ........................................................................ 35
`
`1. Motivation to Combine .............................................................35
`
`2.
`
`3.
`
`4.
`
`Claim 1 ......................................................................................37
`
`Claim 2 ......................................................................................44
`
`Claim 3 ......................................................................................45
`
`B.
`
`Ground 2: Yang in view of AAPA render obvious claims 1-3
`under 35 U.S.C. § 103. ........................................................................ 46
`
`1. Motivation to Combine .............................................................46
`
`2.
`
`3.
`
`4.
`
`Claim 1 ......................................................................................48
`
`Claim 2 ......................................................................................49
`
`Claim 3 ......................................................................................50
`
`C.
`
`Ground 3: Yang in view of Berg render obvious claims 1-3
`under 35 U.S.C. § 103. ........................................................................ 50
`
`1. Motivation to Combine .............................................................50
`
`2.
`
`3.
`
`4.
`
`Claim 1 ......................................................................................51
`
`Claim 2 ......................................................................................53
`
`Claim 3 ......................................................................................53
`
`3
`
`

`

`D. Ground 4: Tsai in view of Lynch render obvious claims 1-3
`under 35 U.S.C. § 103. ........................................................................ 54
`
`1. Motivation to Combine .............................................................54
`
`2.
`
`3.
`
`4.
`
`Claim 1 ......................................................................................57
`
`Claim 2 ......................................................................................64
`
`Claim 3 ......................................................................................66
`
`E.
`
`Ground 5: Tsai in view of AAPA renders claims 1-3 obvious
`under 35 U.S.C. § 103. ........................................................................ 68
`
`1. Motivation to Combine .............................................................68
`
`2.
`
`3.
`
`4.
`
`Claim 1 ......................................................................................70
`
`Claim 2 ......................................................................................71
`
`Claim 3 ......................................................................................72
`
`F.
`
`Ground 6: Tsai in view of Berg renders claims 1 and 2 obvious
`under 35 U.S.C. § 103. ........................................................................ 73
`
`1. Motivation to Combine .............................................................73
`
`2.
`
`3.
`
`Claim 1 ......................................................................................75
`
`Claim 2 ......................................................................................77
`
`G. Ground 7: Tsai in view of Berg and Carter render claims 1-3
`obvious under 35 U.S.C. § 103. .......................................................... 77
`
`1. Motivation to Combine .............................................................78
`
`2.
`
`3.
`
`4.
`
`Claim 1 ......................................................................................79
`
`Claim 2 ......................................................................................79
`
`Claim 3 ......................................................................................79
`
`4
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`

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`IX. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`UNDER §325(D) ........................................................................................... 80
`
`X. MANDATORY NOTICES ........................................................................... 83
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ................................... 84
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 84
`
`Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)) .......................... 85
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ..................................... 85
`
`XI. CONCLUSION .............................................................................................. 86
`
`
`
`
`
`
`
`
`5
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`

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`LIST OF EXHIBITS
`
`Exhibit No.
`1001
`
`Description
`U.S. Patent No. 5,944,040 (“the ’040 Patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`Prosecution history of U.S. Patent No. 5,944,040
`
`Declaration of Dr. Richard W. Klopp, dated June 1, 2020
`
`Certified English Translation of Japanese Unexamined Utility
`Model Application Publication No. H1-61370 to Yang, et al.
`(English) (“Yang”)
`
`Japanese Unexamined Utility Model Application Publication
`No. H1-61370 to Yang, et al. (Japanese) (“Yang”)
`
`U.S. Patent No. 5,638,853 to Tsai (“Tsai”)
`
`U.S. Patent No. 4,779,635 to Lynch (“Lynch”)
`
`U.S. Patent No. 1,502,898 to Berg (“Berg”)
`
`U.S. Patent No. 5,511,572 to Carter (“Carter”)
`
`Joint Claim Construction Statement, dated May 18, 2020
`
`Plaintiff Caravan Canopy International, Inc.’s Opening Claim
`Construction Brief
`
`Defendants’ Joint Opening Claim Construction Brief
`
`Int’l E-Z Up, Inc. v. Caravan Canopy Int’l, Inc., et al., No. CV-
`01-06530-SVW (C.D. Cal), Claim Construction Minute Order
`
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language (1996)
`
`Merriam-Webster’s Collegiate Dictionary, Tenth Edition (2000)
`
`Oxford Dictionary and Thesaurus (1996)
`
`Webster’s II New Riverside Dictionary (1996)
`
`6
`
`

`

`I.
`
`INTRODUCTION
`
`Walmart Inc. (“Petitioner”) requests inter partes review of claims 1-3 (the
`
`“challenged claims”) of U.S. Patent No. 5,944,040 (“the ’040 Patent”), assigned to
`
`Caravan Canopy International, Inc. (“Patent Owner”).
`
`The ’040 Patent is directed to a supposed improvement to a collapsible tent
`
`frame, as commonly seen at sporting events, campgrounds, and backyard
`
`barbeques for decades. The ’040 Patent admits that most of the components of the
`
`system—a center pole, side poles, scissor-type ribs, and center pole ribs—were
`
`well known in the art. The only alleged improvement described by the ’040 Patent
`
`was to heighten the interior space by coupling the center pole to the side poles
`
`instead of to the scissor-rib joints midway between the side poles.
`
`The purported improvement described in the ’040 Patent was not new.
`
`Canopy tents with rib members that coupled the side poles to the center of the
`
`canopy frame were taught by the prior art, including by Yang reference (Ex. 1004)
`
`and Tsai reference (Ex. 1006). As described herein, the claimed collapsible tent
`
`frames would have been obvious to a person of ordinary skill in the art.
`
`This Petition demonstrates by more than a preponderance of the evidence
`
`that the challenged claims are unpatentable. The Board should institute inter partes
`
`review and cancel the challenged claims.
`
`7
`
`

`

`II. GROUNDS FOR STANDING AND FEES
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’040 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting this inter partes review on the grounds identified herein.
`
`The fee set forth in 37 C.F.R. §§ 42.15(e) and 42.103 accompanies this
`
`Petition. Petitioner authorizes a debit from Deposit Account 20-1430 for whatever
`
`additional payment is necessary in granting this Petition.
`
`III.
`
`IDENTIFICATION OF CHALLENGE
`
`Pursuant to 37 C.F.R. §§ 42.22(a) and 42.104(b), Petitioner requests inter
`
`partes review and cancellation of claims 1-3 of the ’040 Patent based on the
`
`following prior art references:
`
` Japanese Unexamined Utility Model Application Publication No. H1-
`
`61370 to Yang, et al. (Ex. 1005), which is submitted with a certified
`
`English translation (Ex. 1004) (“Yang”)
`
` U.S. Patent No. 5,638,853 to Tsai (Ex. 1006) (“Tsai”)
`
` U.S. Patent No. 4,779,635 to Lynch (Ex. 1007) (“Lynch”)
`
` Applicant Admitted Prior Art in the ’040 Patent (Ex. 1001) (“AAPA”)
`
` U.S. Patent No. 1,502,898 to Berg (Ex. 1008) (“Berg”)
`
` U.S. Patent No. 5,511,572 to Carter (Ex. 1009) (“Carter”)
`
`8
`
`

`

`The statutory grounds for the challenge of each claim are set forth below.
`
`Ground 35 U.S.C. § Claims
`
`References
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`1-3
`
`Yang in view of Lynch
`
`1-3
`
`Yang in view of Applicant Admitted Prior Art
`
`1-3
`
`1-3
`
`1-3
`
`1-2
`
`1-3
`
`Yang in view of Berg
`
`Tsai in view of Lynch
`
`Tsai in view of Applicant Admitted Prior Art
`
`Tsai in view of Berg
`
`Tsai in view of Berg and Carter
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`
`
`Petitioner’s statement of the reasons for the relief requested is set forth
`
`below. In support of these grounds for unpatentability, Petitioner submits the
`
`declaration and testimony of Dr. Richard W. Klopp (Ex. 1003), an expert with over
`
`thirty years of experience in mechanical engineering and mechanical design, and
`
`relies on the exhibits filed concurrently herewith.
`
`This is the first petition for inter partes review of the ’040 Patent by
`
`Petitioner. Grounds 1-7 presented in this Petition have not previously been before
`
`the Board. See infra Section IX
`
`9
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`

`

`IV. THE ’040 PATENT
`
`A.
`
`Priority Date of the ’040 Patent
`
`The ’040 Patent issued on August 31, 1999, from Application No.
`
`09/082,482 filed on May 21, 1998. On September 4, 1998, Patent Owner submitted
`
`a priority claim to a Korean application 97-11752 filed on May 23, 1997 and filed
`
`a certified copy of the KR Application. Ex. 1002 at 31-48. Thus, the earliest
`
`possible effective filing date is May 23, 1997.
`
`B.
`
`The Written Description of the ’040 Patent
`
`The ’040 Patent is directed to a collapsible tent frame, such as those
`
`“capable of making, pitching or striking a tent easily and quickly when necessary
`
`and, more particularly to a collapsible tent frame suitable for giving an enlarged
`
`and heightened interior space to users when pitching a tent.” Ex. 1001, 1:4-10.
`
`The ’040 Patent admits that collapsible tent frames, including most of the
`
`components recited in the challenged claims, were known in the prior art. The ’040
`
`Patent explains that such known tent frames could “be easily and quickly pitched
`
`or struck when necessary” and were “preferably designed for being collapsible.”
`
`Ex. 1001, 1:15-22 (identifying four patents covering multiple frames). Figures 1
`
`and 2 of the ’040 Patent show the admitted prior art collapsible tent frames.
`
`10
`
`

`

`Admitted Prior Art
`’040 Patent Figure 1
`
`’040 Patent Figure 2
`
`
`
`
`
`
`
`The admitted prior art tent frames have four side poles 1 that are each
`
`connected by side pole ribs 2 (i.e., scissor assemblies). Ex. 1001, 1:23-29; Figs. 1,
`
`2. Upper ends of the side pole ribs 2 are hinged to the tops of the side poles 1 and
`
`lower ends of the side pole ribs 2 are hinged to sliders 7 moveably fitted over the
`
`side poles 1. Ex. 1001, 1:32-35.
`
`To support the top of the tent, the prior art collapsible tent frame also
`
`included a center pole 6 that was coupled to the joints in each side pole rib 2 by
`
`four center pole ribs 3 (i.e., scissor assemblies). Ex. 1001, 1:39-43.
`
`11
`
`

`

`’040 Patent Figure 1 (Prior Art) (annotated)
`
`
`The ’040 Patent identifies problems with the prior art collapsible tent frame,
`
`
`
`including limited headspace because the center pole ribs 3 extend horizontally
`
`across the tent frame, requiring users to be careful not to bump their heads. Ex.
`
`1001, 1:54-64. Other problems included complex construction of slide guider 5 for
`
`the center pole 6 and the weight of the frame making it too heavy for a user to
`
`easily handle or move. Ex. 1001, 1:65-2:2.
`
`To address these problems, the ’040 Patent describes as “the present
`
`invention” a collapsible tent frame in “which the center pole is coupled to the side
`
`poles, thus giving an enlarged and heightened interior space to users when pitching
`
`12
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`

`

`a tent and allowing a user to easily handle the frame when pitching or striking the
`
`tent.” Ex. 1001, 2:5-12; Figs. 3, 4.
`
`’040 Patent Figure 3 (annotated)
`
`
`Figures 3 and 4 show a tent frame having the same side poles, side pole ribs,
`
`
`
`sliders moveably fitted over the side poles, and claw members disposed at a lower
`
`end of each side pole as shown in prior art Figures 1 and 2. The tent frame also has
`
`a center pole 50. The difference between the prior art tent frame and the alleged
`
`invention is the connection between the center pole and the side poles. In Figures 3
`
`and 4 the side poles are coupled to a center pole 50 through center pole ribs 30. Ex.
`
`1001, 2:64-66. Each center pole rib 30 comprises two rib members connected by a
`
`13
`
`

`

`hinge joint 30a. Ex. 1001, 2:67-3:1. Outer rib members are coupled to sliders 70
`
`through support links 40. Ex. 1001, 3:1-3.
`
`When pitching the tent, the side poles 10 are pushed outward, which
`
`stretches the frame and causes the sliders 70 to move upward along the side poles.
`
`Ex. 1001, 3:16-19. The support links 40 that connect the center pole ribs 30 to the
`
`sliders 70 cause the center pole ribs to fully extend, thereby moving the center pole
`
`50 upward to stretch and sustain the center of the roof. Ex. 1001, 3:23-28. When
`
`striking the tent, the opposite occurs. The side poles 10 are moved inwardly to the
`
`center of the frame, allowing the sliders 70 to move down the side poles 10. The
`
`side pole ribs collapse and the support links 40 pull the center pole ribs 30
`
`downwardly, thereby folding the center pole ribs 30 at the hinge joint 30a and
`
`lowering the center pole. Ex. 1001, 3:38-45.
`
`C. The Prosecution History
`
`The ’040 Patent was filed on May 21, 1998 with only a single independent
`
`claim. Ex. 1002, 4-23. On September 4, 1998, Applicant filed a priority claim to a
`
`May 23, 1997 Korean patent application. Ex. 1002, 31-32.
`
`The examiner issued a non-final office action on December 29, 1998
`
`rejecting claim 1 under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No.
`
`4,779,635 (“Lynch,” Ex. 1007). Ex. 1002, at 52. The examiner found that Lynch
`
`“teaches all the limitations of the above claims including side poles (26), center
`
`14
`
`

`

`pole (50), scissor-type ribs (62), and center pole ribs (40).” Ex. 1002, at 52. The
`
`Examiner also required the applicant to label Figures 1 and 2 as prior art. Ex. 1002,
`
`at 51.
`
`The applicant responded to the rejection on March 29, 1999 by amending
`
`claim 1, adding new dependent claims 2 and 3, and labeling Figures 1 and 2 as
`
`prior art. Ex. 1002, at 59-60, 63-64. Patent Owner argued that Lynch does not
`
`show center pole ribs that comprise “two rib members coupled to each other
`
`through a hinge joint” and that are “collapsible at the hinge joint in accordance
`
`with a sliding motion of said slider along the slide pole.” Ex. 1002, at 61. Patent
`
`Owner argued that Lynch’s “roof support member 40” instead “telescopes when
`
`the tent is folding.” Ex. 1002, at 61. Patent Owner argued that this telescoping is
`
`disadvantageous because it causes the center pole to collapse to a position adjacent
`
`the bottom ends of the side poles, rather than a position adjacent the top ends as
`
`shown in Figure 3, and “could entrap the material of the tent” and interfere with
`
`the folding of the frame. Ex. 1002, at 61-62. Patent Owner could not and did not
`
`attempt to distinguish the center pole of Lynch.
`
`The examiner allowed the claims without any statement of reasons for
`
`allowance. Ex. 1002, at 66-68. The ’040 Patent issued August 31, 1999.
`
`15
`
`

`

`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) as of the effective filing
`
`date of the ’040 Patent would have had a degree in the mechanical arts or a related
`
`discipline and at least two years of experience in the design or analysis of
`
`mechanical devices, fabricated frames, and/or kinematic linkages, though
`
`additional work experience could substitute for a formal degree, and vice versa.
`
`Ex. 1003, ¶¶25-26.
`
`VI. OVERVIEW OF THE PRIOR ART
`
`A. Yang (Exhibits 1004 and 1005)
`
`Yang was published by the Japan Patent Office on April 19, 1989 and is
`
`therefore prior art under 35 U.S.C. § 102(b). Yang was not cited or considered by
`
`the Patent Office during examination of the ’040 Patent. Yang discloses an instant
`
`tent frame “capable of instantaneously assembling and folding a frame.” Ex. 1004
`
`at 3, 4-5; Ex. 1003, ¶54.1
`
`Yang describes, as an objective of the described invention, pushing the
`
`rooftop up “to increase space for activities for which it is used.” Ex. 1004 at 6; Ex.
`
`1003, ¶¶53-54. Figure 4 of Yang is a three-dimensional view of the assembly of an
`
`embodiment of a collapsible tent frame and is nearly identical to Figure 3 of the
`
`’040 Patent. Ex. 1003, ¶¶56-58, 70.
`
`
`
` Cites herein to Yang are to the certified English translation (Ex. 1004).
`
` 1
`
`16
`
`

`

`Yang Figure 4 (annotated)
`
`’040 Patent Figure 3 (annotated)
`
`
`
`
`
`
`
`
`
`Yang discloses a plurality of side poles comprising main support columns 1
`
`with a telescoping support column 2 connected by sidebars 5 connected in a
`
`crossing method (side pole ribs). Ex. 1004, at 6-8; Ex. 1003, ¶56. Each crossing
`
`sidebar 5 (side pole rib) is fixed to the upper fixed support bar shaft body 4
`
`(connector) and attached to the lower moving support bar shaft body 3 (slider). Ex.
`
`1004, at 8-9; Ex. 1003, ¶56. A bottom stand piece 21 (claw member) is fixed to the
`
`bottom of the telescopic support column 2 (side pole) “to reinforce overall
`
`stability.” Ex. 1004, at 7; Ex. 1003, ¶58.
`
`The roof portion is composed of a roof beam bearing 8, roof support bars 7a
`
`and 7b (center pole ribs), and a roof frame push-up bar 9 (support link). Ex. 1004,
`
`at 9; Ex. 1003, ¶57. The roof beam bearing 8 can be round or an alternative shape
`
`with a plurality of connectors to connect to the roof support bars (center pole ribs).
`
`Ex. 1004, at 9; Ex. 1003, ¶57.
`
`17
`
`

`

`The roof support bars 7a and 7b (center pole ribs) are linked with a hinge
`
`joint and connect the central roof beam bearing 8 to the upper fixed support bar
`
`shaft body 4 (connector) of the main support column 1 (side pole). Ex. 1004, at 9;
`
`Ex. 1003, ¶57. The roof frame push up bar 9 (support link) connects the roof
`
`support bar 7b (center pole rib member) to the lower moving support bar shaft
`
`body 3 (slider) on each main support columns 1 (side pole). Ex. 1004, at 9-10, Ex.
`
`1003, ¶57.
`
`B.
`
`Tsai (Exhibit 1006)
`
`Tsai is a U.S. Patent issued on June 17, 1997 from an application filed on
`
`March 7, 1996 and is therefore prior art under at least 35 U.S.C. § 102(e). Tsai was
`
`not was not cited or considered by the Patent Office during examination of the
`
`’040 Patent. Tsai is generally directed to “the structure of a tent” like a canopy. Ex.
`
`1006, 1:5-10; Ex. 1003, ¶147.
`
`Tsai cites numerous improvements over conventional collapsible frames,
`
`including providing a tent structure that “is solid and strong,” is easy to raise and
`
`lower, and that has a long service life. Ex. 1006, 1:29-36; Ex. 1003, ¶147. Like the
`
`’040 Patent, Tsai describes a tent structure that includes “four vertical posts 1”
`
`(side poles) connected by “four scissor-type linkages 2” (side pole ribs). Ex. 1006,
`
`1:67-2:1; Ex. 1003, ¶148. A top end of each scissor-type linkage 2 (side pole rib) is
`
`attached to a top end of a respective post 1 (side pole) via “a fixed connector”
`
`18
`
`

`

`(connector). Ex. 1006, 2:5-10; Ex. 1003, ¶148. A bottom end of each “scissor type
`
`linkage 2” (side pole rib) is attached to a “sliding connector 6” (slider) that slides
`
`along a respective side post (side pole). Ex. 1006, 2:3-5, 2:9-12, 2:40-42; Ex. 1003,
`
`¶148.
`
`Tsai Figure 1 (annotated)
`
`
`
`
`
`
`
`Like the ’040 Patent, Tsai’s structure also includes a roof portion that
`
`includes “four sets of rods 3” (center pole ribs), each of which is connected to a
`
`central “head connector 7” at a first end and to “a fixed connector 5” (connector) of
`
`a respective post 1 (side pole). Ex. 1006, 2:12-15; Ex. 1003, ¶149. Each “rod set 3
`
`[center pole rib] is formed by two rod members [rib members] pivotally connected
`
`19
`
`

`

`to an intermediate pivot connecting member 31” (hinge joint). Ex. 1006, 2:16-18;
`
`Ex. 1003, ¶162, Figure T. Like the ’040 Patent, the “rod set 3” (center pole ribs) is
`
`connected to a respective “sliding connector 6” (slider) via a “linkage rod[] 4”
`
`(support link). Ex. 1006, 2:27-32; Ex. 1003, ¶149.
`
`To raise the tent, the four poles (side poles) are manually pulled outwardly,
`
`the sliding connectors (sliders) move upwardly on the poles (side poles), which
`
`pushes the rod members (center pole ribs) and pivot connecting member 31 (hinge
`
`joint) upwardly. Ex. 1006, 2:37-43. Similarly, when the frame is collapsed, the
`
`pivot connecting members 31 (hinge joint) rotate, which causes “the rod members
`
`3 [center pole ribs] to pivot toward each other until each pair of rod members
`
`[center pole ribs] are gathered together” resulting in a compact unit. Ex. 1006,
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`2:48-54.
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`Figure 1 of Tsai is a three-dimensional view of the tent structure that is
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`nearly identical to Figure 3 of the ’040 Patent. Ex. 1003, Figure R.
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`Tsai Figure 1 (annotated)
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`’040 Patent Figure 3 (annotated)
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`20
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`C. Lynch (Exhibit 1007)
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`Lynch is a U.S. Patent that issued on October 25, 1988, and is therefore prior
`
`art under 35 U.S.C. § 102(b). Lynch was cited and considered during the
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`prosecution of the ’040 Patent, but the Examiner did not consider Lynch in
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`combination with any other reference including either Yang (Exs. 1004 and 1005)
`
`or Tsai (Ex. 1006), both of which teach center pole ribs—the sole feature on which
`
`the Patent Owner relied to distinguish Lynch. Thus, the combinations presented
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`herein were not before the examiner and teach the features that Patent Owner
`
`alleged were missing in the art.
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`Lynch is generally directed to “a collapsible canopy structure which is
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`readily portable” and “has increased head room.” Ex. 1007, 1:4-8, 2:30-33; Ex.
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`1003, ¶61. One object of Lynch is to provide a canopy “which can be collapsed for
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`compact storage yet quickly and easily erected for use.” Ex. 1007, 2:21-24; Ex.
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`1003, ¶61.
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`Lynch teaches a center pole. The apex portion 50 (center pole) “includes a
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`center post assembly 52 which includes a cross bracket 54 that provides four pairs
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`of ears,” that are pivotally connected to an end of the inner telescoping member 42
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`(center pole ribs). Ex. 1007, 6:33-37; Ex. 1003, ¶63. This extended center pole of
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`Lynch meets the objective of Lynch to “provide a canopy structure that has
`
`increased head room.” Ex. 1007, 2:30-33. Moreover, as discussed above in Section
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`21
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`

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`IV.C, the Examiner found that Lynch “teaches all claim limitations” including the
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`center pole 50. Ex. 1002, at 52. Patent Owner could not and did not attempt to
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`distinguish the center pole of Lynch. Ex. 1002, at 61-62.
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`Lynch Figure 2 (annotated)
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`
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`D. Applicant Admitted Prior Art (AAPA)
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`
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`The ’040 Patent admits that canopy frames were well known in the art
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`before the earliest claimed priority date of the ’040 Patent. Ex. 1001, 1:11-15;
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`1:18-25; Figs. 1, 2. As described above in Section IV.B, the ’040 Patent admits that
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`most features of the recited claims were in the prior art, including a center pole
`
`constructed for stretching and sustaining a tent roof, a plurality of side poles, side
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`pole ribs, connectors at the top of each side pole, claw members at the lower end of
`
`22
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`

`

`each side pole, and sliders moveably fitted over the side poles. Ex. 1003, ¶¶32-34,
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`99-102.
`
`23
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`

`

`’040 Patent Figures 1 and 2 (annotated)
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`24
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`

`

`AAPA in the ’040 Patent qualifies as prior art in an inter partes review
`
`proceeding. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570
`
`(Fed. Cir. 1988); WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308,
`
`1329-30 (Fed. Cir. 2018).
`
`E.
`
`Berg (Exhibit 1008)
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`Berg is a U.S. Patent issued on July 29, 1924 and is therefore prior art under
`
`35 U.S.C. § 102(b). Berg was not cited or considered by the Patent Office during
`
`examination of the ’040 Patent.
`
`Berg is generally directed to “improvements in tents of the umbrella type.”
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`Ex. 1008, 1:8-9. Berg’s rectangular tent includes “exterior posts” 1-4 (side poles)
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`which are connected at their upper ends to frame bars 11-14 (center pole ribs),
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`which extend “inwardly toward a central bushing 15 in which a center pole of
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`comparatively short length or height as indicated at 16 [center pole] is retained.”
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`Ex. 1008, 1:87-91.
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`25
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`

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`Berg Figure 5 (annotated)
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`Berg Figure 2 (annotated)
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`
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`F. Carter (Exhibit 1009)
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`Carter is a U.S. Patent that issued on April 30, 1996, and is therefore prior
`
`art under 35 U.S.C. § 102(b). Carter was not cited or considered by the Patent
`
`Office during examination of the ’040 Patent.
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`Carter is directed to “a collapsible shelter 10” that “includes a framework 14
`
`of perimeter truss pairs [side pole ribs] attached to four legs 16.” Ex. 1009, 3:64-
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`4:1. Each leg 16 includes “telescoping upper and lower sections 26 and 28” (side
`
`poles) with “a foot portion 34 [claw member] for engagement with the ground or
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`other floor surface.” Ex. 1009, 4:10-21.
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`26
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`

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`Carter Figure 10 (annotated)
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`
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`VII. CLAIM CONSTRUCTION
`
`
`
`During inter partes review, claims are “construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action
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`under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). This standard is articulated in
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2015) (en banc), and
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`requires “construing the claim in accordance with the ordinary and customary
`
`meaning of such claims as understood by one of ordinary skill in the art and the
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`prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b).
`
`The parties in the Underlying Litigation currently are engaged in claim
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`27
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`

`construction and have submitted a Joint Claim Construction Statement (Ex. 1010)
`
`and opening briefs (Ex. 1011 and 1012) identifying six terms for construction.
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`Petitioner addresses herein the construction of the six disputed claim constructions,
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`but as will be explained in connection with the asserted invalidity grounds, the
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`challenged claims are unpatentable under either party’s constructions.
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`A. The term “center pole” means “centrally-disposed, long, slender
`object.”
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`1. The evidence supports Petitioner’s construction.
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`Independent claim 1 recites “a center pole constructed for stretching and
`
`sustaining a tent’s roof when a tent is pitched.” Ex. 1001, 2:14-16. Consistent with
`
`its plain and ordinary meaning, a POSITA would understand the “center pole”
`
`portion of this phrase to mean a “centrally-disposed, long, slender object.” First,
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`the ’040 Patent uses “center” consistent with its plain and ordinary meaning—in
`
`the middle. See, e.g., Ex. 1001, 2:64-3:1. In the Underlying Litigation, Caravan
`
`proposed a construction that likewise captures the fact that the “center pole” is
`
`“[c]entrally disposed.” Ex. 1010, at Ex. A p.2.
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`Second, the intrinsic record confirms that “pole” carries its ordinary and
`
`customary meaning: “long, slender object.” The only disclosure related to the
`
`center pole in the specification is that it “has a simple construction” and connects
`
`to each of the center pole ribs. Ex. 1001, 2:64-65, 4:2-3. Claim 1 also references a
`
`“center pole” and “side poles.” A presumption exists “that the same terms
`
`28
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`

`

`appearing in different portions of the claims should be given the same meaning
`
`unless it is clear from the specification and prosecution history that the terms have
`
`different meanings at different portions of the claims.” Fin Control Sys. Pty., Ltd.
`
`v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001). Neither the specification nor
`
`prosecution history indicate that “pole” should carry a different meaning when
`
`used in “center pole” versus “side poles.” Thus, “pole” should be given the same
`
`meaning wherever it is used in the claims and regardless of what descriptive terms
`
`come before it.
`
`For both center and side “pole,” the patent uses the term to refer to a long,
`
`slender object. When referring to the “center pole” for prior art frames, the ’040
`
`Patent depicts Element 6, which is a long, slender object (see the center image,
`
`below). The same is true when the patent identifies the “center pole 50” in the
`
`preferred embodiment; it is an elongated, slender object (see the left-most image
`
`below). Patentee did not use a different term to describe this feature of the depicted
`
`frames, opting instead for the same term in both instances.
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`The same is true with respect to the patent’s treatment of the word “pole” as
`
`used in “center pole” and “side poles.” A POSITA would understand that the
`
`words “center” and “side” denote the location of the pole, not additional structure
`
`or modification of the pole. Ex. 1003, ¶40. Further, both the “center pole 50” and
`
`“side poles 10” are long and slender. While the “side poles” are longer than the
`
`29
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`

`

`“center pole,” in all instances the poles have an identifiable length in relation to the
`
`width of the poles.
`
`’040 Patent Figure 4
`Center pole 50
`(embodiment)
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`’040 Patent Figure 2
`Center pole 6
`(prior art)
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`’040 Patent Figure 3
`Side poles 10
`(embodiment)
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`The prosecution history supports Petitioner’s co