1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`STEVEN D. MOORE (State Bar No. 290875)
`smoore@kilpatricktownsend.com
`Two Embarcadero Center, Suite 1900
`San Francisco, CA 94111
`Telephone: (415) 576-0200
`Facsimile: (415) 576-0300
`
`MEGAN M. CHUNG (State Bar No. 232044)
`mchung@kilpatricktownsend.com
`9720 Wilshire Blvd PH
`Beverly Hills, CA 90212-2018
`Telephone: (310) 248-3830
`Facsimile: (310) 860-0363
`(Additional Counsel Included on Signature Page)
`
`Attorneys for Defendant
`WALMART INC.
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`
`CARAVAN CANOPY INT’L, INC.,
`
`
`Plaintiff,
`
`
`
`
`
`
`
`Civil Action No. 2:19-cv-06978-PSG-
`ADS
`
`consolidated with Case. No. 8:19-cv-
`01072-PSG-ADS
`
`DEFENDANT WALMART INC.’S
`PRELIMINARY INVALIDITY
`CONTENTIONS
`
`
`Judge: Philip S. Gutierrez
`
`
`
`Pursuant to the Court’s Scheduling Order Specifying Procedures (Caravan
`
`
`WALMART INC., A DELAWARE
`CORPORATION, AND DOES 1
`THROUGH 10, INCLUSIVE,
`
`
`v.
`
`Defendants.
`
`Canopy Int’l, Inc. v. The Home Depot USA, Inc., Case. No. 8:19-cv-01072-PSG-
`ADS, ECF No. 63)1, and in response to Plaintiff Caravan Canopy International,
`
`
`1 At the time of the Scheduling Order, the case was assigned to Judge Guilford and
`all his Standing Patent Rules were incorporated into the Scheduling Order. Caravan
`Canopy Int’l, Inc. v. The Home Depot USA, Inc., Case. No. 8:19-cv-01072-PSG-
`ADS, ECF No. 63 at 1. Thus, Walmart continues to apply Judge Guilford’s
`Standing Patent Rules (S.P.R.) 2.5 and 2.6 to these invalidity contentions.
`- 1 -
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 1
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Inc.’s (“Plaintiff” or “Caravan”) S.P.R. 2.1 Initial Infringement Contentions,
`
`
`Defendant Walmart Inc. (“Defendant” or “Walmart”) hereby submits its Preliminary
`
`Invalidity Contentions for U.S. Patent No. 5, 944,040 (“the ’040 patent”) under
`
`S.P.R. 2.5. Walmart contends that each of the claims asserted by Caravan in this
`
`case—claims 1-3 of the ’040 patent (“Asserted Claims”)—is invalid under at least
`35 U.S.C. §§ 102, 103 and/or 112.2
`
`I.
`
`GENERAL STATEMENTS
`Defendant’s invalidity contentions reflect its present knowledge and
`
`contentions, and Defendant reserves all rights to modify and supplement these
`
`contentions without prejudice in the event that additional invalidity grounds are
`
`identified, including in light of discovery obtained from Plaintiff. Defendant also
`
`reserves the right to use the prior art and claim charts identified in the consolidated
`
`cases: Caravan Canopy Int’l, Inc. v. Lowe’s Home Centers, LLC, Case No. 2:19-cv-
`
`06952-PSG-ADS (C.D. Cal.), Caravan Canopy Int’l, Inc. v. Z-Shade Co. Ltd., Case.
`
`No. 2:19-cv-06224-PSG-ADS (C.D. Cal.), Caravan Canopy Int’l, Inc. v.
`
`ShelterLogic Corp., Case No. 5:19-cv-01224-PSG-ADS (C.D. Cal.); and Caravan
`
`Canopy Int’l, Inc. v. The Home Depot USA, Inc., Case No. 8:19-cv-01072-PSG-
`
`ADS. Defendant’s invalidity contentions are made in a variety of alternatives, and
`
`Defendant reserves the right to rely on any or all of them as appropriate.
`
`A. Caravan’s Incomplete and Deficient Disclosures
`Caravan’s Infringement Contentions fail to identify “[s]eparately for each
`
`asserted claim, each Accused Instrumentality.” S.P.R. 2.1.2. Caravan’s
`
`Infringement Contentions merely comprise a single chart for “Walmart, Ozark Trail
`
`cathedral style frame,” which is not any Accused Instrumentality listed in the
`
`Complaint (Caravan Canopy Int’l, Inc. v. Walmart, Case No. 2:19-cv-06978-PSG-
`
`ADS, ECF No. 1 at ¶ 10) nor is it a specific Walmart product (see e.g., Caravan
`
`
`2 All references to Title 35 of the United States Code are to the pre-America
`Inventions Act version of the statutes.
`- 2 -
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 2
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Canopy Int’l, Inc. v. Walmart, Case No. 2:19-cv-06978-PSG-ADS, ECF No. 18 at
`
`
`¶ 10). Caravan’s patent disclosures under S.P.R. 2.1.2 further identify Walmart’s
`
`Accused Instrumentality only as “Ozark Trail.” Ozark Trail is a Walmart brand of
`
`outdoor equipment and footwear products encompassing products such as cast iron
`
`skillets, flashlights, folding chairs, coolers, and backpacks, among others, not a
`
`specific product. All these different types of products do not fall within the scope of
`
`the ’040 patent and thus it is not sufficient for Plaintiff to specify “Ozark Trail” as
`
`the Accused Instrumentality.
`
`Caravan’s Infringement Contentions allege literal infringement of each
`
`asserted claim. In addition, Caravan alleges infringement under a doctrine of
`
`equivalents for each claim element. Caravan Canopy Int’l, Inc. v. Walmart, Case
`
`No. 2:19-cv-06978-PSG-ADS, ECF No. 1 at ¶ 17. However, Caravan fails to
`
`provide any explanation for its contention that any limitation is met by the doctrine
`
`of equivalents. Caravan does not explain how any identified component performs
`
`the same function as one described and claimed in the ’040 patent, how it performs
`
`in substantially the same way, and how it yields substantially the same result.
`
`Due to Caravan’s manifest failure to provide appropriate and legally and
`
`factually complete and accurate infringement contentions, Defendant reserves all
`
`rights to challenge the basis of Caravan’s allegations of patent infringement, the
`
`sufficiency of Caravan’s Infringement Contentions or any attempt to modify,
`
`amend, and /or supplement those contentions. Defendant further reserves all rights
`
`to modify, amend, and/or supplement its Invalidity Contentions should Caravan seek
`
`to alter or amend its contentions upon good cause and the Court allows such
`
`alterations/amendments.
`
`B. Claim Constructions
`Defendant’s invalidity contentions are based in part on Caravan’s
`
`interpretations of the Asserted Claims in its Preliminary Infringement Contentions.
`
`As discussed in Sections II.C and II.D below, Caravan takes inconsistent positions
`- 3 -
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 3
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`as to claim construction and the scope of the Asserted Claims. Accordingly,
`
`
`Defendant’s invalidity contentions may take these inconsistent positions into
`
`account and take alternative positions.
`
`Defendant’s contentions herein are not, and should in no way be seen as,
`
`admissions or adoptions as to any particular claim scope or construction, or as any
`
`admission that any particular element is met in any particular way. Defendant
`
`objects to any attempt to imply claim constructions from any identification or
`
`description of potential prior art. Additionally, for purposes of its Invalidity
`
`Contentions and without waiving its objections to Caravan’s improper Infringement
`
`Contentions and interpretations, Walmart exercises its prerogative to assert
`
`invalidity to the same extent Caravan contends Walmart’s products infringe. See
`
`Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889) (explaining “that which
`
`infringes, if later, would anticipate, if earlier”). While Defendant does not agree
`
`with Caravan’s claim interpretations and objects to them, for purposes of these
`
`invalidity contentions, Defendant has identified some prior art references that
`
`include components and activity akin to what Caravan has alleged to be infringing.
`
`To the extent that these Invalidity Contentions reflect constructions of claim
`
`terms that may be consistent with or implicit in Caravan’s Infringement
`
`Contentions, no inference is intended or should be drawn that Defendant agrees with
`
`such claim construction and contentions and Defendant reserves all rights and
`
`objections with respect to Caravan’s infringement contentions. Defendant further
`
`expressly reserves the right to propose any claim construction that it considers
`
`appropriate under prevailing law.
`
`II.
`
`PRELIMINARY INVALIDITY CONTENTIONS
`
`A.
`
`S.P.R. 2.5.1: Identity of Prior Art That Anticipates Each Asserted
`
`Claim or Renders it Obvious
`
`As further set forth in Exhibits A-F, the following references, and any
`
`products, devices, or processes used in the prior art that embody the subject matter
`- 4 -
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 4
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`disclosed in the references, anticipate and/or render obvious the claims of the ’040
`
`
`patent expressly or inherently as detailed below and in the attached charts.
`
`Pursuant to S.P.R. 2.6.2, copies of the references identified below that do not
`
`appear in the file history of the ’040 patent are being produced concurrently with
`
`these disclosures.
`
`The prior art identified in these Invalidity Contentions may have counterpart
`
`applications or physical embodiments. Defendant reserves the right to rely upon
`
`those counterparts or physical embodiments (e.g., products or prior inventions).
`
`Unless otherwise stated, it should be presumed that Defendant intends to rely on
`
`each reference in its entirety to the extent relevant and/or appropriate, including
`
`references cited in and/or referenced within the prior art identified above. In
`
`addition, the specification and prosecution history of the ’040 patent contain
`
`descriptions of, and admissions concerning, the scope of the claims. Defendant
`
`intends to rely on these descriptions and admissions. Defendant is also hereby
`
`identifying all prior-art references cited or included in the ’040 patent and its
`
`prosecution history, as well as any statements regarding the prior art. These
`
`references may provide additional teachings and information regarding the scope of
`
`the prior art, the background of the art, the knowledge of one of ordinary skill in the
`
`art, and problems addressed and known in the art.
`
`1.
`
`Patents and Patent Publications
`
`
`
`Prior Art Patents
`
`Patent Number
`
`Country of Origin Date of Issue or Publication
`
`1,449,894 (“Dial”)
`
`United States
`
`March 27, 1923
`
`1,502,898 (“Berg”)
`
`United States
`
`July 29, 1924
`
`4,779,635 (“Lynch”)
`
`United States
`
`October 25, 1988
`
`5,511,572 (“Carter”)
`
`United States
`
`April 30, 1996
`
`5,638,853 (“Tsai 1”)
`- 5 -
`
`
`June 17, 1997
`United States
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 5
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5,701,923 (“Losi”)
`
`
`United States
`
`December 30, 1997
`
`
`
`Title
`
`Prior Art Publications
`
`Date of
`
`Author
`
`Publisher
`
`Publication
`
`“Telescopic Instant
`
`April 19,
`
`James Yang,
`
`Japan Patent
`
`Frame Assembled
`
`1989
`
`Chow Lin
`
`Office
`
`Building Structure,”
`
`H1-61370 (“Yang”)
`
`“Collapsible Canopy,”
`
`April 24,
`
`Tsai, Tony,
`
`German Patent
`
`DE29703246U1 (“Tsai
`
`1997
`
`Taipeh/T’ai-
`
`and Trademark
`
`2”)
`
`pei, TW
`
`Office
`
`2.
`Prior Sales
`Defendant identifies the sale and public use of an E-AN canopy product as
`
`prior art under 35 U.S.C. § 102(b) because it was on sale and publicly available
`
`more than one year before the effective filing date of the ’040 patent. In February of
`
`1997, E-AN Trading Co, LTD publicly displayed a E-AN canopy that included all
`
`the features of the Asserted Claims at the Supershow, a trade show for companies to
`
`display their products to customers for purchase, in Atlanta, Georgia. E-AN
`
`Trading Co., LTD does or did business under the name Caravan International
`
`Company, LTD and, in at least 1997, manufactured instant canopy products
`
`marketed, sold, or distributed by Caravan. International E-Z Up, Inc. purchased an
`
`E-AN canopy from E-AN Trading Co. LTD on February 18, 1997. The E-AN
`
`canopy and the invoice for that purchase are in the possession of International E-Z
`
`Up, Inc. The purchase of the E-AN canopy on February 18, 1997 is more than one
`
`year before the earliest effective filing date of the ’040 patent.
`
`Upon information and belief, Variflex, Inc. sold or offered for sale instant
`
`- 6 -
`
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`Patent Owner CCI
`Ex. 2007 - Page 6
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`canopy tents embodying the Asserted Claims more than one year before the
`
`
`effective filing date of the ’040 patent. Discovery is ongoing, and Defendant is still
`
`investigating the facts related to any such sales or offer for sales.
`
`B.
`
`S.P.R. 2.5.2 & 2.5.3: Identification of Prior Art That Anticipates or
`Renders Obvious Each Asserted Claim
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 7 -
`
`
`Tsai 1 anticipates and/or renders obvious claims 1 and 2 of the ’040
`
`patent.
`
`Tsai 1 in combination with Lynch renders obvious claims 1 and 3 of the
`
`’040 patent.
`
`Tsai 1 in combination with Dial renders obvious claim 2 of the ’040
`
`patent.
`
`Tsai 1 in combination with Berg renders obvious claim 1 of the ’040
`
`patent.
`
`Tsai 2 anticipates and/or renders obvious claims 1 and 2 of the ’040
`
`patent.
`
`Tsai 2 in combination with Lynch renders obvious claims 1 and 3 of the
`
`’040 patent.
`
`Tsai 2 in combination with Dial renders obvious claim 2 of the ’040
`
`patent.
`
`Tsai 2 in combination with Berg renders obvious claim 1 of the ’040
`
`patent.
`
`Losi anticipates and/or renders obvious claims 1 and 2 of the ’040
`
`patent.
`
`Losi in combination with Lynch renders obvious claims 1 and 3 of the
`
`’040 patent.
`
`Losi in combination with Dial renders obvious claim 2 of the ’040
`
`patent.
`
`Losi in combination with Berg renders obvious claim 1 of the ’040
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 7
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`patent.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Yang anticipates and/or renders obvious claims 1-3 of the ’040 patent.
`
`Yang in combination with Lynch renders obvious claim 1 of the ’040
`
`patent.
`
`Yang in combination with Berg renders obvious claim 1 of the ’040
`
`patent.
`
`Yang in combination with Dial renders obvious claim 2 of the ’040
`
`patent.
`
`Carter anticipates and/or renders obvious claims 1 and 2 of the ’040
`
`patent.
`
`Carter in combination with Lynch renders obvious claims 1 and 3 of
`
`the ’040 patent.
`
`Carter in combination with Berg renders obvious claim 1 of the ’040
`
`patent.
`
`Carter in combination with Dial renders obvious claims 1 and 2 of the
`
`’040 patent.
`
`Carter in combination with Dial and Lynch renders obvious claims 1-3
`
`of the ’040 patent.
`
`Lynch anticipates and/or renders obvious claims 1-3 of the ’040 patent.
`
`Lynch in combination with Tsai 1 renders obvious claims 1-3 of the
`
`’040 patent.
`
`Lynch in combination with Dial renders obvious claims 1 and 2 of the
`
`’040 patent.
`
`Attached as Exhibits A-F are charts identifying the references that anticipate
`
`and/or render obvious each asserted claim. To the extent that Caravan contends, or
`
`the fact-finder finds, that any limitation of the asserted claims is missing from the
`
`anticipatory references identified for any of the identified claims, Defendant
`
`reserves the right to combine such reference with the knowledge of one of skill in
`- 8 -
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 8
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`the art and/or with any of the other references identified and in particular the
`
`
`disclosure related to that allegedly missing limitation identified in the charts for the
`
`other reference.
`
`Additional teachings regarding the scope of the prior art, the background of
`
`the art, the knowledge of one of ordinary skill in the art, and problems addressed
`
`and known in the art may be found in all of the references listed or otherwise
`
`identified above in Section II.A.
`
`1. Motivation to Combine
`The Supreme Court, in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007)
`
`(“KSR”), held that a claimed invention can be obvious even if there is no teaching,
`
`suggestion, or motivation for combining the prior art to produce that invention. In
`
`summary, KSR holds that patents that are based on new combinations of elements or
`
`components already known in a technical field may be found to be obvious. See,
`
`generally KSR, 550 U.S. 398. Specifically, the Court in KSR rejected a rigid
`
`application of the “teaching, suggestion, or motivation [to combine]” test. Id. at 419.
`
`“In determining whether the subject matter of a patent claim is obvious, neither the
`
`particular motivation nor the avowed purpose of the patentee controls. What matters
`
`is the objective reach of the claim.” Id. “Under the correct analysis, any need or
`
`problem known in the field of endeavor at the time of invention and addressed by the
`
`patent can provide a reason for combining the elements in the manner claimed.” Id.
`
`at 420. In particular, the Supreme Court emphasized the principle that “[t]he
`
`combination of familiar elements according to known methods is likely to be obvious
`
`when it does no more than yield predictable results.” Id. at 401. A key inquiry is
`
`whether the “improvement is more than the predictable use of prior art elements
`
`according to their established functions.” Id. at 401.
`
`The rationale to combine or modify prior art references is significantly stronger
`
`when the references seek to solve the same problem, come from the same field, and
`
`correspond well. In re Inland Steel Co., 265 F.3d 1354, 1362 (Fed. Cir. 2001). In In
`- 9 -
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 9
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`re Inland Steel Co., the Federal Circuit allowed two references to be combined as
`
`
`invalidating art under similar circumstances, namely “[the prior art] focus[es] on the
`
`same problem that the … patent addresses: enhancing the magnetic properties of
`
`electrical steel. Moreover, both [prior art references] come from the same field....
`
`Finally, the solutions to the identified problems found in the two references
`
`correspond well.” Id. at 1364.
`
`In view of the Supreme Court’s KSR decision, the United States Patent and
`
`Trademark Office issued a set of Examination Guidelines. See Examination
`
`Guidelines for Determining Obviousness Under 35 U.S.C. §103 in view of the
`
`Supreme Court Decision in KSR Int’l Co. v. Teleflex, Inc., 72 Fed. Reg. 57526
`
`(October 10, 2007). Those Guidelines summarized the KSR decision, and identified
`
`various rationales for finding a claim obvious, including those based on other
`
`precedents. Those rationales include:
`
`(A) Combining prior art elements according to known methods to
`yield predictable results;
`
`(B) Simple substitution of one known element for another to
`obtain predictable results;
`
`(C) Use of known technique to improve similar devices (methods,
`or products) in the same way;
`
`(D) Applying a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
`
`(E)
`
`“Obvious to try” – choosing from a finite number of
`identified, predictable solutions, with a reasonable expectation
`of success;
`
`(F) Known work in one field of endeavor may prompt variations
`of it for use in either the same field or a different one based on
`design incentives or other market forces if the variations
`would have been predictable to one of ordinary skill in the art;
`
`(G) Some teaching, suggestion, or motivation in the prior art that
`would have led one of ordinary skill to modify the prior art
`reference or to combine prior art reference teachings to arrive
`at the claimed invention.
`
`
`Id. at 57529. Defendant contends that the above rationales apply in rendering
`
`- 10 -
`
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`Patent Owner CCI
`Ex. 2007 - Page 10
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`obvious the Asserted Claims of the ’040 patent.
`
`
`One of skill in the art would have been motivated to combine the prior art
`
`references identified in Exhibits A-F in light of the knowledge of a person of
`
`ordinary skill in the art and the information found in the prior art. The prior art
`
`references are all in the same field as the ’040 patent, specifically tent or canopy
`
`frames including collapsible elements.
`
`Not only are the prior art references in the same field of endeavor as the ’040
`
`patent, but these references solve the same or similar technical problems explicitly
`
`identified by the ’040 patent in the same or similar way. In particular, the ’040
`
`patent identifies the following problems: (i) need for more headspace because the
`
`center pole ribs extend across the interior of the conventional collapsible tent frames
`
`limiting height under the canopy, (ii) prior center pole and slider guider that support
`
`an apex portion of the roof have an expensive and complex construction, and (iii)
`
`that the conventional frames are too heavy for a single user to easily move. See
`
`’040 patent, 1:53-2:2; see also Int’l E-Z Up, et al. v. Caravan Canopy Int’l, Inc., et
`
`al., 2:01-cv-06530, Dkt. No. 89 at pp. 18-20 (describing the invention as “a
`
`collapsible tent frame designed to provide users with an enlarged and heightened
`
`interior space”) (emphasis added).
`
`Many of the prior art references solve the problems of the need for more
`
`headspace and the expansive and complex construction of the prior art center pole
`
`and slider guider supporting the apex portion of the roof, respectively, by increasing
`
`headroom under the frame and simplifying or eliminating a center pole structure.
`
`The references solve these problems in the same or similar manner described in the
`
`’040 patent. Figure 17 of Losi, Tsai 1, and Tsai 2 is essentially the same prior art
`
`figure referenced in Figures 1 and 2 of the ’040 patent. Figure 17 depicts center
`
`pole ribs extending across an interior space and a similar center pole which
`
`interrupts head room. Tsai 2 and Losi explicitly describe that prior art canopy
`
`frames, such as Figure 17, allow the canopy to sag and reduce head room. See, e.g.,
`- 11 -
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 11
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Tsai 2, p. 1; Losi, 1:26-32. Tsai 2 explicitly states that the purpose of its invention
`
`
`is to create a canopy frame that “is less likely to allow the roof to sag” and “does not
`
`reduce the clear height of the tent.” Tsai 2, p. 3. Like the ’040 patent, Tsai 2
`
`describes using connecting rods that automatically move the roof support into an
`
`unfolded position when the frame posts are pulled apart, thereby eliminating the
`
`need for center pole ribs and a center pole that interrupt headroom. Id. at p. 4.
`
`Moreover, Lynch describes problematic prior art canopies that include “a
`
`central scissor assembly extending across the middle framework” to support “a
`
`central post,” and that this configuration reduces head room provided by these
`
`canopies. See, e.g., Lynch, 1:57-62. To improve headroom, Lynch describes
`
`eliminating the central scissor assembly and central post in favor of a structure “with
`
`a folding roof support structure that extends upwardly and inwardly” of the frame
`
`posts towards an apex portion, like the frame in the ’040 patent. See, e.g., Lynch,
`
`2:25-33.
`
`Carter describes prior art canopies as having essentially flat tops and limited
`
`head room, and that Carter’s invention provides increased head room using a
`
`combination of perimeter truss pairs and pole members that form a raised ceiling in
`
`the collapsible canopy. See Carter, 1:26-51. Yang describes an invention that raises
`
`the sides of an instant frame structure to improve entrance and exit of persons into
`
`and out of the instant frame structure. See Yang, p. 5. Finally, Berg describes a
`
`foldable frame and walls arranged to maximize space under the tent. See Berg,
`
`1:14-21.
`
`Thus, one of skill in the art would have been motivated to combine any of the
`
`references cited in Exhibits A-F and described above to use a known technique to
`
`improve collapsible canopies in the same way. In particular, at least Tsai 1, Tsai 2,
`
`Losi, Lynch, and Carter describe solving the problem of increasing headroom in the
`
`same way described in the ’040 patent—by eliminating central scissor assemblies
`
`and central posts. Yang and Berg describe corresponding known techniques of
`- 12 -
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 12
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`raising and/or arranging side walls of a tent, which results in the same benefit of
`
`
`increased headroom under the tent.
`
`Additionally, one of ordinary skill in the art would recognize that the result of
`
`combining two or more of these references would have yielded nothing more than
`
`the predictable use of prior art elements according to their established functions.
`
`Each claim of the ’040 patent merely combines known elements in a predictable
`
`way, using the same function each element had known to perform, to yield a
`
`predictable result. KSR, 550 U.S. at 418. For instance, substitution of the head
`
`connector from Tsai 1, Tsai 2, or Losi with the center post assembly 52 of Lynch
`
`yields the predictable result of tensioning the canopy. See Lynch, 6:65-5:1. The
`
`center post assembly 52 thus performs its established function in a predictable way.
`
`Similarly, the substitution of Lynch’s roof support members 40 with rod members 3
`
`and linkages 4 of Tsai 1, Tsai 2, or Losi yields the predictable result of folding and
`
`unfolding a canopy frame responsive to a sliding motion along support legs.
`
`Folding and unfolding a canopy frame responsive to a sliding motion along support
`
`legs is the established function of both of these elements, i.e., the roof support
`
`members 40, and the rod members 3 and the linkages 4.
`
`Defendant provides these disclosures without prejudice to any arguments or
`
`objections concerning the relevance of motivation to combine in connection with
`
`any invalidity contentions.
`
`2.
`Limitations Governed by 35 U.S.C. § 112, para. 6
`Defendant contends that the claim term “center pole constructed for stretching
`
`and sustaining a tent’s roof when a tent is pitched with the tent frame” is a means-
`
`plus-function term under 35 U.S.C. § 112 para. 6. As used in the ’040 patent, “pole”
`
`is a nonce term having no specific structural meaning, linked by the transition word
`
`“for,” and is not modified by sufficient structure for performing the claimed
`
`function of “stretching and sustaining a tent’s roof when a tent is pitched with the
`
`tent frame.”
`- 13 -
`
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 13
`
`

`

`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Further, Defendant contends that the claim term “center pole” under
`
`
`Plaintiff’s proposed construction “centrally-disposed element for stretching and
`
`sustaining a tent’s roof” is a means-plus-function term under 35 U.S.C. § 112 para.
`
`6. See Advanced Ground Information Systems, Inc. v. Life360, Inc., 830 F.3d 1341,
`
`1347-48 (Fed. Cir. 2016) (finding 112 paragraph 6 applicable to claim term that
`
`“recites abstract elements ‘for’ causing actions . . . or elements ‘that can’ perform
`
`functions”) (internal quotations removed).
`
`Attached as Exhibits A-F are charts identifying, for each limitation Walmart
`
`contends is governed by 35 U.S.C. § 112, para. 6, the structures, acts, or materials in
`
`each item of prior art that performs the claimed function.
`
`C.
`
`S.P.R. 2.5.4: Identification of Invalidity Based on Indefiniteness
`Under 35 U.S.C. § 112 para. 2
`
`Defendant sets forth the grounds upon which the asserted claims of the ’040
`
`patent are invalid for failing to meet the requirements of 35 U.S.C. § 112 para. 2.
`
`Under Section 112, paragraph 2, the “specification shall conclude with one or more
`
`claims particularly pointing out and distinctly claiming the subject matter which the
`
`applicant regards as his invention.” Defendant contends that certain elements of the
`
`asserted claims of the ’040 patent are indefinite.
`
`For example, “substantially equal lengths” (Claims 2, 3). The “substantial”
`
`term is a term of degree. The specification of the ’040 patent, however, neither
`
`provides a range constituting a “substantially equal length[]” nor a standard for
`
`measuring the degree claimed by “substantially equal lengths.” Additionally, one of
`
`ordinary skill in the art could not determine what this term means. Because the
`
`scope of these claims cannot be determined, these claim are invalid as being
`
`indefinite.
`
`Defendant also contends that “center pole constructed for stretching and
`
`sustaining a tent’s roof when a tent is pitched with the tent frame” is indefinite
`
`because there is no corresponding structure, material, or act that performs the
`- 14 -
`
`
`WALMART’S PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:19-CV-06978-PSG-ADS
`
`
`KILPATRICK TOWNSEND 73140398 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CCI
`Ex. 2007 - Page 14
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`claimed function.
`
`
`
`
`
`Further, in its Infringement Contentions, Caravan construed separate claim
`
`limitations to refer to the same structures, rendering the claims ambiguous and
`
`internally inconsistent. As Defendant best understands (or cannot understand)
`
`Caravan’s Infringement Contentions at this stage in the case, Defendant contends
`
`that certain elements of the asserted claims are invalid for failure to comply with
`
`35 U.S.C. § 112, para. 2.
`
`Defendant contends that under § 112, para. 2 the following elements of the
`
`asserted claims fail to particularly point out and distinctly claim the subject matter
`
`“center pole” (Claim 1)
`
`“center pole ribs” (Claims 1, 2)
`
`“substantially equal lengths” (Claims 2, 3)
`
`“scissor-type ribs” (Claim 1)
`
`“connectors of the side pole” (Claim 1)
`
`reg