`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`WALMART INC.; Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.,
`Petitioner,
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.,
`Patent Owner.
`______________
`
`Case No. IPR2020-01026
`Patent No. 5,944,040
`Issue Date: AUGUST 31, 1999
`Title: COLLAPSIBLE TENT FRAME
`_______________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`
`
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`
`
`IPR2020-01026
`PO’s Sur-Reply
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................... 1
`I.
`CLAIM CONSTRUCTION ............................................................................ 4
`II.
`III. GROUND 1 ..................................................................................................... 6
`A. New Modification Of Yang ................................................................. 12
`B. Motivation to Combine ....................................................................... 13
`1.
`Headroom .................................................................................. 14
`2.
`Shedding Rainwater .................................................................. 15
`3.
`Reduced Sagging/Improved Appearance .................................. 18
`4.
`Arranging Old Elements ........................................................... 18
`IV. GROUND 2 ................................................................................................... 20
`V. GROUND 3 ................................................................................................... 22
`VI. GROUND 4 ................................................................................................... 22
`VII. GROUND 5 ................................................................................................... 23
`VIII. GROUNDS 6 AND 7 .................................................................................... 24
`IX. CONCLUSION .............................................................................................. 25
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`i
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`TABLE OF AUTHORITIES
`
`IPR2020-01026
`PO’s Sur-Reply
`
` Page(s)
`
`Cases
`Allied Erecting & Dismantling Co., Inc. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .......................................................................... 21
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................................ 3
`Bettcher Industries, Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) .............................................................................. 9
`Boart Longyear Ltd. v. Australian Mud Company Pty Ltd.,
`IPR2019-01129, Paper 26 (Nov. 20, 2020) ........................................................ 14
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ...................................................................... 1, 24
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 15, 18
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 13
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 1
`Nichia Corp. v. Document Security Systems, Inc.,
`IPR2018-01165, Paper 28 (Dec. 10, 2019)......................................................... 14
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 21
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 6
`Satco Products, Inc. v. Seoul Semiconductor Co., Ltd.,
`IPR2020-00146, Paper 44 (June 25, 2021) ......................................................... 19
`
`ii
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`IPR2020-01026
`PO’s Sur-Reply
`
`Scepter Canada, Inc. v. No Spill Inc.,
`IPR2020-00360, Paper 27 (July 2, 2021) ........................................................... 12
`Smartmatic USA Corp. v. Election Systems and Software, LLC,
`IPR2019-00527, Paper 32 (Aug. 5, 2020) ............................................................ 6
`Snap Inc. v. Blackberry Limited,
`IPR2019-00715, Paper 37 (Sept. 1, 2020) .......................................................... 12
`Unified Patents Inc. v. DivX, LLC,
`IPR2019-01379, Paper 52 (Feb. 8, 2021) ............................................... 16, 21, 22
`Wasica Fin. GmbH v. Cont’l Auto. Sys. Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) .......................................................................... 19
`Other Authorities
`37 C.F.R. § 37.104(b)(4) .......................................................................................... 20
`37 C.F.R. § 42.65(a) ................................................................................................... 6
`MPEP § 2143.01(VI) ............................................................................................... 13
`
`
`
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`iii
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`
`
`Exhibit
`No.
`
`2001
`
`2002
`
`2003
`
`Description
`Caravan Canopy Int’l, Inc. v. Home Depot
`U.S.A., et al., No. SACV 19-01072, Order
`Consolidating Cases, dated December 13, 2019
`Caravan Canopy Int’l, Inc. v. Costco
`Wholesale Corporation, et al., No. SACV 19-
`01072, Scheduling Order, dated January 27,
`2020
`Caravan Canopy Int’l, Inc. v. Walmart Inc., et
`al., No. 19-06978 Consolidated with 19-01072,
`Walmart’s Memorandum in Support of its
`Motion to Stay Litigation Pending Inter Partes
`Review, dated June 18, 2020
`Caravan Canopy Int’l, Inc. v. Lowe’s Home
`Centers, LLC et al., No. 19-06952
`Consolidated with 19-01072, Request for
`Clarification re Stay of Litigation, dated
`August 26, 2020
`Caravan Canopy Int’l, Inc. v. Home Depot
`U.S.A., Inc., et al., No. SACV 19-01072, Order
`Denying Defendants’ Request for Clarification,
`dated August 28, 2020
`Claim Chart for Walmart’s Ozark Trial
`Canopy, dated December 9, 2019
`Caravan Canopy Int’l, Inc. v. Walmart Inc., et
`al., No. 19-06978 Consolidated with 19-01072,
`Defendant Walmart Inc.’s Preliminary
`Invalidity Contentions, dated March 16, 2020
`2008 Walmart’s Initial Invalidity Contentions Claim
`Chart – Ex. D
`2009 Walmart’s Initial Invalidity Contentions Claim
`Chart – Ex. A
`
`2004
`
`2005
`
`2006
`
`2007
`
`IPR2020-01026
`PO’s Sur-Reply
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`Served
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`Filed
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`X
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`X
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`EXHIBIT LIST
`
`iv
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`IPR2020-01026
`PO’s Sur-Reply
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`Served
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`Filed
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`X
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`X
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`Exhibit
`No.
`
`2010
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`2011
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`2012
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`2013
`
`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`
`Description
`Caravan Canopy Int’l, Inc. v. Costco
`Wholesale Corporation, et al., No. 19-01072,
`Costco Wholesale Corporation’s Invalidity
`Contentions and Accompanying Document
`Production, dated November 4, 2019X
`Caravan Canopy Int’l, Inc. v. Z-Shade Co.
`LTD., et al., No. 19-06224, Z-Shade Co.,
`LTD.’s Invalidity Contentions and
`Accompanying Document Production, dated
`November 4, 2019
`Caravan Canopy Int’l, Inc. v. Shelterlogic
`Corp., et al., No. 19-01224 Consolidated with
`19-01072, Invalidity Contentions of
`Shelterlogic Corp., dated January 21, 2020
`Caravan Canopy Int’l, Inc. v. Lowe’s Home
`Centers, LLC et al., No. 19-06952, Lowe’s
`Invalidity Contentions and Accompanying
`Document Production, dated November 4,
`2019
`Declaration of Lance Rake
`U.S. Patent No. 5,701,923 to Losi, Jr. et al.
`U.S. Patent No. 5,275,188 to Tsai
`U.S. Patent No. 5,421,356 to Lynch
`U.S. Patent No. 5,634,483 to Gwin
`U.S. Patent No. 5,794,640 to Jang
`U.S. Patent No. 4,641,676 to Lynch
`U.S. Patent No. 4,607,656 to Carter
`
`
`
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`v
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`
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`Exhibit
`No.
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`2029
`
`2030
`
`Description
`Caravan Canopy Int’l, Inc. v. Costco
`Wholesale Corp., et al., No. SACV 19-01072,
`Response to “Request for Clarification re Stay
`of Litigation,” dated August 27, 2020
`Caravan Canopy Int’l, Inc. v. Costco
`Wholesale Corp., et al., No. SACV 19-01072,
`Amended Scheduling Order, dated August 11,
`2020
`Caravan Canopy Int’l, Inc. v. Costco
`Wholesale Corp., et al., No. SACV 19-01072,
`Costco Wholesale Corporation’s Final
`Invalidity Contentions and Accompanying
`Document Production, dated August 18, 2020
`Caravan Canopy Int’l, Inc. v. Z-Shade Co.
`LTD, et al., No. SACV 19-06224, Z-Shade Co.
`LTD’s Final Invalidity Contentions and
`Accompanying Document Production, dated
`August 18, 2020
`Caravan Canopy Int’l, Inc. v. ShelterLogic
`Corp. No. SACV 19-01072, Invalidity
`Contentions of ShelterLogic Corp., dated
`March 16, 2020
`Caravan Canopy Int’l, Inc. v. Lowe’s Home
`Centers, LLC, No. SACV 19-006952, Lowe’s
`Invalidity Contentions and Accompanying
`Document Production, dated November 4,
`2019
`Supplemental Declaration of Lance Rake
`Second Declaration of Lance Rake
`Patent Owner’s Certified Translation of
`Petitioner’s Exhibit 1005 (Japanese
`Unexamined Utility Model Application
`Publication No. H1-61370 to Yang, et al.)
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`vi
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`PO’s Sur-Reply
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`Served
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`Filed
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`X
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`X
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`X
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`X
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`X
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`X
`X
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`X
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`X
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`IPR2020-01026
`PO’s Sur-Reply
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`Exhibit
`No.
`2031
`2032
`
`2033
`
`Description
`
`Served
`
`Filed
`
`Resume of Translator of Exhibit 2030
`Appendix A to Ex. 2029
`Transcript of Deposition of Dr. Richard W.
`Klopp, taken July 30, 2021
`
`X
`X
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`X
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`X
`X
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`X
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`Emphasis added throughout except where otherwise noted.
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`vii
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`IPR2020-01026
`PO’s Sur-Reply
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`I.
`
`INTRODUCTION
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`“[T]he petitioner has the burden from the onset to show with particularity why
`
`the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
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`1356, 1363 (Fed. Cir. 2016). When “the only question presented is whether ...
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`a claim or claims [are] obvious, no burden shifts from the patent challenger to the
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`patentee.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).
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`Petitioner has not met its burden.
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`In the Petition (Paper 1, “Pet.”), Petitioner presented seven repetitive grounds
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`of unpatentability (the “Grounds”) lacking particularity and supported by little more
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`than conclusory expert testimony. Due to their substantial similarities, the Grounds
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`fail for substantially similar reasons.
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`As explained by Patent Owner’s expert, Prof. Rake, Yang and Tsai are
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`freestanding tent frames with canopies draped over and resting directly on the
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`underlying ribs. (EX-2029, ¶¶134, 202-204). On the other hand, the ’040 patent
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`claims a stressed tent frame with its canopy acting as the tension member by being
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`stretched (tensioned) between the center pole and the side poles. (Id., ¶¶131, 204).
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`Stressed tents are distinguishable from freestanding tents in that stressed tents
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`incorporate a tension member, such as a stretched canopy, to maintain stability.
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`(Id., ¶¶202-204). Prof. Rake’s testimony is supported by the disclosure of the ’040
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`patent, which couches the invention in the universe of stressed tents, describing prior
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`1
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`IPR2020-01026
`PO’s Sur-Reply
`art tents as having “canvas or other material stretched over and sustained by a frame”
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`and listing five prior art patents, four to Lynch1 and one to Tsai2, that describe
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`stressed frame designs. (EX-1001, 1:12-15; EX-2029, ¶¶126-131).
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`Petitioner’s expert, Dr. Klopp, originally described the ’040 patent as
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`disclosing a stressed tent frame, stating that “the tent roof is most often secured to
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`the side poles” and “[t]he center pole ... create[s] tension in the fabric which
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`prevents sagging.” (EX-1003, ¶44). Prof. Rake agreed with Dr. Klopp’s original
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`characterization and further understood the stippling in Figure 4 of the ’040 patent
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`to represent Velcro securing the roof to the side poles and allowing the center pole
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`to tension the canopy. (EX-2029, ¶¶124, 166).
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`Different from the claimed stressed tent where the canopy is held in tension
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`to stabilize the frame, simply adding a “center pole” to the freestanding tent of Yang
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`or Tsai would provide neither a “center pole constructed for stretching and sustaining
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`a tent’s roof when a tent is pitched with the tent frame” as recited in claim 1 nor any
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`of the benefits Petitioner alleges would have motivated a POSITA to make such a
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`1 U.S. Patent Nos. 4,641,676, 4,779,635, 4,947,884, and 5,421,356.
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`2 U.S. Patent No. 5,275,188. Contrary to Tsai’s ’853 patent cited in the Petition,
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`Tsai’s ’188 patent describes securing the canopy to the side poles via studs and the
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`canopy being taut. (EX-2016, 3:4-15, 51-58; EX-2029, ¶¶127-28).
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`2
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`IPR2020-01026
`PO’s Sur-Reply
`modification. Particularly, adding a center pole to Yang and Tsai would lift the
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`canopy off the supporting ribs but could not, by itself, tension the canopy or convert
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`Yang and Tsai into stressed frame tents. Thus, Petitioner’s proposed modification
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`to Yang and Tsai would increase the unsupported surface area of the canopy, thereby
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`inducing sagging, without tensioning the canopy to offset the reduction in direct
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`support.
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`Petitioner, in its Reply (Paper 27), belatedly attempts to present its prima facie
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`case of obviousness by providing evidence and arguments that could have, and
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`should have, been submitted with the Petition, including seven new exhibits3 and a
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`rebuttal expert declaration that is 49 pages longer than Dr. Klopp’s initial
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`declaration. See Trial Practice Guide (Nov. 2019) (“TPG”), *73-75 (“Petitioner may
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`not submit new evidence or argument in reply that it could have presented earlier,
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`e.g. to make out a prima facie case of unpatentability.”). Petitioner also improperly
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`submits new arguments relying on previously-uncited structure in the references and
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`new motivations to combine the references. Ariosa Diagnostics v. Verinata Health,
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`Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“[T]he challenger [is] obliged to make
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`an adequate case in its Petition and the Reply [is] limited to a true rebuttal role.”);
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`TPG, *74. Nevertheless, even if Petitioner’s belated evidence, arguments, and
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`3 E.g., EXS-1031-37.
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`3
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`IPR2020-01026
`PO’s Sur-Reply
`alternative modifications are considered, they still fail to prove that the claims are
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`unpatentable.
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`II. CLAIM CONSTRUCTION
`
`A POSITA would understand the plain and ordinary meaning of “stretching”
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`in claim 1 to mean “tension” or “make taut.” (Paper 20 (“POR”), 10-12). Petitioner
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`attempts to rewrite its Petition and submit voluminous new evidence on the basis
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`that this is a “newfound interpretation” that was “not previously assert[ed] at the
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`[D]istrict [C]ourt or the Board.” (Reply, 10). The evidence of record belies
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`Petitioner’s allegation. Until Petitioner’s Reply, both parties agreed that the center
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`pole of the ’040 patent tensioned the roof, and Petitioner was undoubtably on notice
`
`of Patent Owner’s position before it filed the Petition.
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`At the District Court, Patent Owner described Figure 4 of the ’040 patent as
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`showing that “the center pole ... stretches out the roof to make sure it is taut,” and
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`Petitioner stated that “[e]ach figure in the patent shows that the center pole provides
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`tension to heighten and hold up the tent covering.” (EX-1011, 8; EX-1012, 18).
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`Petitioner maintained its position in the Petition, stating that “[t]he center pole
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`provides tension and support to heighten and hold up the tent covering.”
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`(Pet., 32-33). Dr. Klopp concurred. (EX-1003, ¶44 (“The center pole specifically
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`heightens the tent roof to create tension in the fabric....”). Indeed, Petitioner’s
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`originally-proposed construction of “stretching” as “heighten” was incumbent upon
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`4
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`IPR2020-01026
`PO’s Sur-Reply
`“the center pole provid[ing] tension.” (Pet., 32-33). Petitioner cannot now claim
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`surprise that “stretching” in claim 1 would be understood by a POSITA to mean
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`“tensioning” the roof. TPG, *48 (“The Board ... will consider statements regarding
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`claim construction made by patent owners and by a petitioner filed in other
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`proceedings.”).
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`Petitioner posits that “[n]othing more is required than an upwardly extending
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`structure for stretching and sustaining the roof like that shown in Figures 3 and 4”
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`and suggests “draw ... into greater length or size,”4 “spread out,” and “extend” as
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`alternative understandings of “stretching.” (Reply, 11-12). But “spread out” and
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`“extend” would effectively read out the “stretching” limitation by conflating it with
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`“sustaining,” which the parties agree would be understood to mean “hold up” or
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`“support.” (POR, 7). For example, any center pole that holds up or supports the
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`roof would necessarily spread it out or extend it due to gravity and the inclination of
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`the center pole ribs, which would render the term “stretching” superfluous. Indeed,
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`Dr. Klopp could not envision any center pole that did not “extend and sustain the
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`tent cover”. (EX-2033, 26:3-27:20).
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`Further, there is no requirement that “stretching,” which appears only in
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`connection with the roof in the claims, be interpreted identically to other instances
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`4 This is tension. (EX-1025, ¶45).
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`5
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`of “stretch” used in connection with other components only in the specification. Cf.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (“[T]he usage of a
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`term in one claim can often illuminate the meaning of the same term in other
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`claims.”). In claim 1, the “tent is pitched” while the tent’s roof is “stretch[ed].”
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`(EX-1001, 4:28-29).
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`III. GROUND 1
`Petitioner originally alleged that “Yang’s roof beam bearing 8 is a ‘centrally
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`disposed element for stretching and sustaining a tent’s roof’ and thus meets Patent
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`Owner’s proposed construction of ‘center pole’ in the Underlying Litigation.” (Pet.,
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`38). Petitioner’s only supporting evidence was Figures 1-4 of Yang and conclusory
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`expert testimony that mirrored the Petition, which should be given no weight. (Id.
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`(citing EX-1003, ¶74)); Smartmatic USA Corp. v. Election Systems and Software,
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`LLC, IPR2019-00527, Paper 32, *34 (Aug. 5, 2020) (citing 37 C.F.R. § 42.65(a))
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`(expert testimony that “merely parrots the language in the Petition” is “entitled to
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`little or no weight”).
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`In Reply, Petitioner now argues that Yang inherently provides a taut roof
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`because “[t]he ’040 Patent [and Figure 2 of] Yang ... show tents with a roof taut
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`6
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`IPR2020-01026
`PO’s Sur-Reply
`between the center pole5 and side poles6, and extending over and flush down the side
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`poles” and “because draping would result in sagging roofs and collapsed frames.”
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`(Reply, 14-15). Petitioner also argues that “[t]o the extent a POSITA would
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`understand that the ’040 Patent roof is attached to its frame, a POSITA likewise
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`would understand that the roofs of Yang and Tsai are attached to their frames.”
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`(Id., 15). These arguments are unavailing.
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`First, Yang’s Figures alone cannot prove that the roof is taut. Figures 1-3 of
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`Yang are top-down perspective views that do not show how the roof interacts with
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`the tent frame, and Figure 4 omits the roof. At his deposition, Dr. Klopp indicated
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`that Yang’s Figures were insufficient for him to determine how the roof interacts
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`with the frame. (EX-2033, 66:9–67:10). Dr. Klopp also testified that all tent
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`canopies will sag regardless of tension, so how a canopy is illustrated cannot be
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`determinative of its tautness. (Id., 67:21-68:8).
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`5 Petitioner never previously alleged that Yang includes a “center pole.”
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`6 During his deposition, Dr. Klopp opined that Yang omits a center pole but
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`suggested that Yang’s tent frame employs a “hat brim” approach to tensioning the
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`canopy. (EX-2033, 65:3-66:2). This is a new theory as it would not involve tension
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`between any center pole of Yang and the side poles and was not described in any
`
`filing.
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`7
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`IPR2020-01026
`PO’s Sur-Reply
`Second, Yang discloses the “rooftop support bar [7], enabling maintaining the
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`slope of the rooftop” and “pushing up the roof in a radial direction.” (EX-2030, 4;
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`see also EX-1004, 3). Dr. Klopp was unfamiliar with this disclosure at his
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`deposition, but it is consistent with the roof being directly supported by the ribs
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`rather than tensioned between any alleged center pole and the side poles. (EX-2033,
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`70:17-71:19, 73:17-76:19; POR, 26-27).
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`Third, the ’040 patent: (i) describes that the roof is on the tent frame as the
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`tent is pitched, causing the roof to be tensioned as the frame is pitched; (ii) states
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`that the tent frame is integrated with the roof; and (iii) shows what a POSITA would
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`have understood to be Velcro on the side poles securing the roof to the side poles.
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`(EX-1001, 3:14-15, 26-28; EX-2029, ¶124). Taken together, a POSITA would
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`understand these disclosures as describing a tensioned roof; Yang, on the other hand,
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`is silent as to these considerations. (EX-2029, ¶133).
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`Fourth, when asked if “you just take a tent roof and you drape it loosely over
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`a frame, there would be a risk that the roof would collapse when it rains,” Prof. Rake
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`testified “[n]ot if there’s enough structure underneath it” and that “Losi and Yang,
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`they seem to have an adequate structure underneath.” (EX-1024; 160:11-24).
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`Thus, “[the draped-over canopy] would sag to some degree in unsupported areas”
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`but “still could drain [water].” (Id., 162:5-18).
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`8
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`IPR2020-01026
`PO’s Sur-Reply
`Rather than disclosing a taut canopy, Yang shows and describes that the
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`canopy rests on the ribs 7. As explained in Losi, resting a canopy on the support
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`structure “provides a greater support area ... which results in an aesthetically pleasing
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`shelter canopy that is less likely to sag.” (EX-2015; 2:52-55). Thus, Yang does not
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`explicitly disclose, and cannot inherently disclose, a taut canopy because sagging
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`can be avoided by resting the canopy directly on the support ribs, such that tension
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`is not necessary to shed water. Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d
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`629, 639 (Fed. Cir. 2011) (“Inherency [] may not be established by probabilities or
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`possibilities.”) (citation omitted).
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`To be clear, Patent Owner neither proposes that the claims require attachment
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`between the canopy and the tent frame nor disputes that it was well-known to attach
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`a canopy to a tent frame to, for example, prevent it from blowing away. (See Reply,
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`13). As explained by Dr. Klopp, “the tent roof is most often secured to the side poles
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`and is held up by the center pole and center pole ribs.” (EX-1003, ¶44). Dr. Klopp’s
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`initial testimony is consistent the prior art of record and the ’040 patent, which
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`describe the canopy as being secured to the frame when the canopy is tensioned.
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`(EX-1001, FIG. 4; EX-1007, FIG. 3; EX-2016, FIG. 3). Thus, consistent with
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`Dr. Klopp’s initial testimony, disclosure of the canopy being secured to the tent
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`frame is indicative of a tensioned canopy. Further, as Prof. Rake testified, it was
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`known to tie a canopy onto a tent frame that “might keep a canopy from blowing
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`9
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`IPR2020-01026
`PO’s Sur-Reply
`away, but it’s not necessarily providing any tension.” (EX-1024, 143:8-15). Yang is
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`not only completely silent as to any tension in the canopy but also does not disclose
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`any connection, even a minimal connection to keep the canopy from blowing off,
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`between the canopy and the tent frame.
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`Because Yang discloses an unstressed tent with a draped over canopy, what
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`Prof. Rake referred to as a “freestanding tent frame” or “freestanding tent,” rather
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`than a stressed tent with a stretched canopy, simply adding the center post assembly
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`52 of Lynch into Yang would not stretch the canopy. (EX-2029, ¶¶131-33, 201-04).7
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`Instead, as explained in the POR, this modification would raise the canopy off the
`
`roof support bars 7, reducing the supported area of the canopy and inducing sagging.
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`(POR, 31). Losi describes this phenomenon in connection with Figure 17, stating
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`that when “the center strut C is the only portion of the frame that holds the canopy
`
`above the poles ... the canopy will often sag.” (EX-2015, 1:55-58). The same
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`conditions would exist in modified Yang.
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`Instead of addressing the merits of Caravan’s arguments, Petitioner provides
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`new exhibits (EXS-1027-1030) describing unrelated backpacking
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`tents as
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`“freestanding” to attack Prof. Rake’s choice of terms—“freestanding” and
`
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`7 Petitioner provides new exhibits describing unrelated camping tents as
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`“freestanding.” (EXS-1027-1030; EX-2033, 53:8-57:9).
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`10
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`IPR2020-01026
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`“stressed”—for ease of referring to two tent frame types that prevailed at the
`
`effective filing date of the ’040 patent. (Reply, 14; Ex. 2029, ¶¶202-03; EX-2033,
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`53:8-57:9). Dr. Klopp testified at this deposition that the backpacking tent he cited
`
`as a “freestanding” tent would collapse if the tent fabric were removed; clearly
`
`different from what Prof. Rake referred to as freestanding tent frames, such as Yang
`
`and Tsai. (EX-2033, 53:21-54:25). Further, what Prof. Rake refers to as a
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`“freestanding” tent frame, Dr. Klopp refers to as a “stress-free frame,” revealing at
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`most a semantic, rather than substantive, disagreement. (EX 1025, ¶69; EX 2033,
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`53:8-57:9, 57:15-58:17 (describing a “stress-free frame” as when “[y]ou throw a
`
`canvas over [an assembled tent frame] and just lay it on there”).
`
`Petitioner states that “Caravan cannot simultaneously contend that any center
`
`pole will result in sagging and that the ’040 Patent (which has a center pole)
`
`specifically requires a taut roof.” (Reply, 16 n.2). This is nonsensical and
`
`mischaracterizes the POR. It is because the ’040 patent has a taut (or stretched)
`
`canopy that it does not meaningfully sag. As Petitioner explained in its Petition,
`
`“[t]he center pole provides tension,” and as Dr. Klopp initially opined that “tension
`
`in the fabric ... prevents sagging.” (Pet., 32; EX-1003, ¶44). Patent Owner has never
`
`alleged that “any center pole will result in sagging.” Rather, the center poles in
`
`Petitioner’s proposed Grounds would result in sagging because Yang (and Tsai, as
`
`discussed below) does not disclose a tensioned canopy. Thus, simply adding a center
`
`11
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`IPR2020-01026
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`pole from Lynch (or AAPA or Berg) into Yang would not “create more tension in
`
`the rooftop” as Petitioner originally alleged but would simply lift the canopy off the
`
`roof support bars 7, thereby inducing sagging. (Pet., 39). In the ’040 patent,
`
`the canopy is stretched between the center pole and the tent frame, which prevents
`
`substantial sagging. (EX-2029, ¶124).
`
`A. New Modification Of Yang
`Petitioner attempts to overcome this deficiency by asserting that it would have
`
`been obvious to include the Velcro 35 from Lynch into Yang. (Reply, 17). This is
`
`a new modification and should be disregarded. Scepter Canada, Inc. v. No Spill Inc.,
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`IPR2020-00360, Paper 27, *16-17 (July 2, 2021) (citing TPG, *74) (“Petitioner may
`
`not cure [] deficiencies in its Petition by proposing additional modification or
`
`rationales in its Reply.”). Even if considered, if Petitioner contends that simply
`
`adding the Velcro from Lynch would convert the freestanding tent frame of Yang to
`
`a stressed tent frame, such as in Lynch, its analysis is woefully deficient.
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`Specifically, Yang would need to be modified from a freestanding (or
`
`unstressed) tent frame with an untensioned canopy to a stressed tent frame with a
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`tensioned canopy. This would amount to changing Yang’s principle of operation,
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`and Petitioner has not submitted any evidence why a POSITA would have been
`
`motivated to make such a change or that such a modification would be met with a
`
`reasonable expectation of success.
`
` See Snap Inc. v. Blackberry Limited,
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`12
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`IPR2020-01026
`PO’s Sur-Reply
`IPR2019-00715, Paper 37, *111 (Sept. 1, 2020) (“A particular reason to combine is
`
`... necessary to ensure that the combination is not a product of hindsight.”) (citing
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 421, 426 (2007)).
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`Thus, far from a KSR-style “simple substitution” or “known elements”
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`situation, converting a freestanding tent frame to a stressed tent frame, which would
`
`be necessary if Yang’s canopy were to be stretched (i.e., tensioned) as Petitioner
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`alleges, would require a substantial reconstruction and redesign of Yang’s tent
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`frame, at least to account for the compressive forces imparted onto the frame by a
`
`tensioned canopy. MPEP § 2143.01(VI).
`
`B. Motivation to Combine
`Petitioner originally alleged that a POSITA would have been motivated to
`modify Yang in view of Lynch to provide: increased headroom; increased pitch of
`the tent roof to shed rainwater; and increased support and pitch of the tent roof to
`make the canopy more aesthetically pleasing in one sentence with no analysis.
`(Pet., 36).8 In Reply, Petitioner provides five pages of argument, over 20 pages of
`new expert testimony, and seven new exhibits addressing these same motivations.
`(Reply, 18-22; EX-1025, 54-75; EXS-1031-1037). This is improper under the Rules
`
`
`8 At his deposition, Dr. Klopp confirmed that his only meaningful analysis in his
`
`first declaration, that the modification would “facilitat[e] easier entry and exit by
`
`users,” was wrong. (EX-1003, ¶72; EX-2033, 99:9-18.).
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`13
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`IPR2020-01026
`PO’s Sur-Reply
`and the Board’s guidelines. Indeed, other panels have declined to consider such
`inflated submissions in Reply. See Boart Longyear Ltd. v. Australian Mud Company
`Pty Ltd., IPR2019-01129, Paper 26, *18 (Nov. 20, 2020) (declining to consider reply
`arguments when the petition “include[d] only a single sentence of discussion” while
`“[t]he Reply includes eight pages”); Nichia Corp. v. Document Security Systems,
`Inc., IPR2018-01165, Paper 28, *62-64 (Dec. 10, 2019) (declining to consider
`arguments in reply because “in contrast to Petitioner’s high-level arguments in the
`Petition ..., Petitioner sets forth around seven pages of argument” in reply).
`If considered, Petitioner’s new evidence and arguments remain unpersuasive.
`Headroom
`Petitioner recasts its “increased headroom” motivation, also described as
`
`1.
`
`“increase[d] space for activities,”9 as increased space under the canopy. This is
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`improper. Petitioner repeatedly used “headroom”—not “space”— in the Petition
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`and cited the ’040 patent and prior art, which tie headroom to the canopy support
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`structure. (EX-2014, ¶¶47-49, 53-55). Thus, Prof. Rake was reasonable in
`
`understanding “headroom” to mean “clear ceiling height.” Petitioner cannot fault
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`Patent Owner for not intuiting its arguments.
`
`
`9 Under Petitioner’s revised motivation, the only “activit[y]” is “stand[ing].”
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`(Reply, 19). Even Dr. Klopp understood Yang’s reference to “activity” to mean
`
`motion. (EX-2033, 19:11-21).
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`14
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`IPR2020-01026
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`Nevertheless, the absolute height of Yang’s canopy and ribs is controlled by
`
`the user engaging the appropriate stop hole in the side poles. (EX-1025, ¶202 (The
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`“stop holes 22 ... enable the user to ... ‘fix the overall height’ of the tent.”)).
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`Thus, a POSITA, looking to accommodate taller users, would simply select the
`
`appropriate stop hole, or would increase the length of the side poles if necessary,
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`which would not only accommodate a taller user between the ribs but at all areas
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`under the ribs, and would actually providing increased space for activities.10
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`(EX-2033, 96:20-99:18).
`
`2.
`
`Shedding Rainwater11
`Petitioner provided no reasoned analysis of this alleged motivation in its
`
`Petition. Patent Owner fashioned its response by searching Dr. Klopp’s initial
`
`
`10 Petitioner’s “sense of space” and “increased air circulation” motivations should
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`be disregarded as new, conclusory, and better achieved by raising the entire roof
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`structure. In re Ka
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