`
`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
`_______________
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`PATENT OWNER’S INITIAL BRIEF REGARDING CLAIM
`CONSTRUCTION
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`115574661.6
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`IPR2020-01026
`PO’s Initial Brief Re: Claim Construction
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................ 1
`I.
`II. ARGUMENT ........................................................................................ 2
`III. CONCLUSION ..................................................................................... 6
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Acclarent, Inc. v. Ford Albritton, IV,
`IPR2017-00498, Paper No. 40 (P.T.A.B. July 9, 2018) ....................................... 3
`Ajinomoto Co., Inc. v. Archer-Daniels-Midland Co.,
`228 F.3d 1338 (Fed. Cir. 2000) ............................................................................ 4
`Alpex Comput. Corp. v. Nintendo Co. Ltd.,
`102 F.3d 1214 (Fed. Cir. 1996) ............................................................................ 5
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012) ........................................................................ 2, 3
`Ericsson, Inc. v. D-Link Systems, Inc.,
`773 F. 3d 1201 (Fed. Cir. 2014) ........................................................................... 6
`KCJ Corporation v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000) ............................................................................ 3
`In re Man Machine Interface Techs. LLC,
`882 F. 3d 1282, 1286 (Fed. Cir. 2016) ................................................................. 3
`ParkerVision, Inc. v. Qualcomm Inc.,
`903 F.3d 1354 (Fed. Cir. 2018) .................................................................... 1, 5, 6
`Presidio Components, Inc. v. AVX Corporation,
`825 Fed. Appx. 909 (Fed. Cir. 2020) .................................................................... 5
`Simpson Strong-Tie Co. Inc. v. Columbia Insurance Co.,
`PGR2019-00063, Paper No. 52 (P.T.A.B. Mar. 11, 2021) .............................. 1, 3
`Ex Parte Solouki,
`Appeal 2019-002402, 2020 WL 116140 (P.T.A.B. Jan. 7, 2020) ........................ 2
`Southwall Techs. v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995) .............................................................................. 5
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`PO’s Initial Brief Re: Claim Construction
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`In re Storrs,
`245 F.2d 474 (C.C.P.A. 1957) .............................................................................. 4
`Ex Parte Sutardja,
`Appeal 2016-007710, 2018 WL 865834 (P.T.A.B. Feb. 7, 2018) ....................... 3
`Statutes
`35 U.S.C. § 112, second paragraph ............................................................................ 5
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`Emphasis added except where otherwise noted.
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`I.
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`INTRODUCTION
`Claim 1 recites “a center pole constructed for stretching and sustaining a tent's
`roof when a tent is pitched with the tent frame.” Claim 1 Element A recites two
`structural elements—the center pole and tent frame—and that the center pole is
`constructed for performing two functions—stretching and sustaining a tent’s roof in
`conjunction with the tent frame. The question posed is whether “constructed for”
`“recites capability ... [or] configuration.” Simpson Strong-Tie Co. Inc. v. Columbia
`Insurance Co., PGR2019-00063, Paper No. 52, *43 (P.T.A.B. Mar. 11, 2021)
`(“Simpson Strong-Tie”) (emphasis in original) (quoting ParkerVision, Inc. v.
`Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018)).
`Starting with the claim language itself, which “is critical to deciding [this
`question]”, “constructed for” recites configuration, not mere capability. Id. Indeed,
`in In re Giannelli, the Federal Circuit construed “adapted to” as “designed or
`constructed to,” after finding that “‘adapted to,’ as used in the ’261 application, has
`a narrower meaning, viz., that the claimed machine is designed or constructed to
`be used...” 739 F.3d 1375, 1379 (Fed. Cir. 2014). Earlier this year, another Panel
`held that “[p]recedent makes clear that the ‘configured to’ phrase itself [which is
`used interchangeably with ‘constructed for’] connotes the narrower meaning (i.e.,
`configuration) ... and simply presumes this is the case.” Simpson Strong-Tie, at *43.
`Thus, under controlling and persuasive precedent and the intrinsic record of
`the ’040 patent, including the prosecution history, the proper construction of
`“constructed for” is “a center pole that is designed or configured to stretch and
`sustain a tent’s roof in conjunction with the tent frame and not merely that the center
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`pole can be made to stretch and sustain a tent’s roof.” (See POR, 10-12, 33 n.16);
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
`2012).
`II. ARGUMENT
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`First, “constructed for” is inherently narrower than “adapted to,” which is the
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`focus of the cases cited in the Board’s Order (Paper No. 49, p. 2), and “constructed
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`for” is not amenable to the broader interpretation of capability. Indeed, the Court in
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`Giannelli stated that “the written description makes clear that ‘adapted to,’ ... has a
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`narrower meaning, viz., that the claimed machine is designed or constructed to be
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`used as a rowing machine whereby a pulling force is exerted on the handles.” 739
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`F.3d at 1379. In other words, Giannelli makes clear that “constructed to,”
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`interchangeable with “constructed for,” already carries with it the narrower meaning
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`of configuration. Thus, a finding that “constructed for” should be construed as
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`providing mere capability would be contrary to precedent.
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`Additionally, the Federal Circuit and the P.T.A.B. have both used “configured
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`to” and “constructed to” or “constructed for” interchangeably and have similarly
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`described “configured to” as carrying with it the narrower meaning. Compare
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`Giannelli, 739 F.3d at 1379 (“the claimed machine is designed or constructed to be
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`used...”) with Aspex Eyewear, 672 F.3d at 1349 (“the arms and magnetic members
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`are designed or configured to accomplish the specified objective...”); see also
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`Ex Parte Solouki, Appeal 2019-002402, 2020 WL 116140, *8 (P.T.A.B. Jan. 7,
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`2020) (“The term ‘configured to’ indicates that a claim element is designed or
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`constructed for a certain purpose.”); Ex Parte Sutardja, Appeal 2016-007710, 2018
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`WL 865834, *2 (P.T.A.B. Feb. 7, 2018) (“[T]he term ‘configured to’ is used to
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`describe the construction (i.e. the configuration) of the module and sensing
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`circuits.... The relevant question, therefore, is whether [the prior art] device is
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`likewise constructed for [performing the function]....”).
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`Indeed, the Panel in Acclarent, Inc. v. Ford Albritton, IV, IPR2017-00498,
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`Paper No. 40, *14 (P.T.A.B. July 9, 2018) (“Acclarent”) confirmed that “[t]he
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`precedent makes clear that the ‘configured to’ phrase itself connotes the narrower
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`meaning and simply presumes this is the case—the closer issue under discussion [in
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`Aspex Eyewear, Giannelli, and In re Man Machine Interface Techs. LLC, 882 F. 3d
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`1282, 1286 (Fed. Cir. 2016)] was whether ‘adapted to’ can be read more broadly.”
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`See also Simpson Strong-Tie, at *43. Further, in KCJ Corporation v. Kinetic
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`Concepts, Inc., 223 F.3d 1351, 1357-59 (Fed. Cir. 2000), the Federal Circuit held
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`that an accused device did not literally infringe a claim element reciting the phrase
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`“constructed for” because the device did not have structure designed to or configured
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`to accomplish the specified objective.
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`Second, the intrinsic record supports the presumed interpretation of
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`“constructed for” as describing a center pole designed, configured, or constructed to
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`stretch and sustain a tent’s roof in conjunction with the tent frame. Specifically, the
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`’040 patent describes that the “tent frame is integrated with a canvas or other
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`material” and that, when the tent is pitched by moving the side poles 10 outwardly,
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`“the tent frame stretches and sustains the canvas or other material” and “the center
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`pole 50 moves upwardly and sustains the center of the roof while stretching the roof
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`as shown in FIG. 4.” (Ex. 1001, 3:13-28; FIG. 4). Far from describing mere
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`capability, the specification describes, and Figure 4 shows, the center pole 50
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`stretching and sustaining the tent’s roof in conjunction with the tent frame (e.g., the
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`side poles 10). Claim 1 recites the same structural elements accomplishing the same
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`objection as in the specification—the center pole constructed for stretching and
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`sustaining a tent roof’s in conjunction with the tent frame (e.g., the side poles).
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`Indeed, both parties’ experts understood this limitation, including the disclosed and
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`recited interplay between the center pole and tent frame to stretch and sustain a tent’s
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`roof. (Ex. 1003, ¶44; Ex. 2029, ¶124). Further, the ’040 patent provides Lynch,
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`which provides a stressed tent frame with a stretched canopy unlike Yang and Tsai,
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`as an “[e]xample[] ... typical collapsible tent frame[].” (Ex. 1001, 1:18-20);
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`Ajinomoto Co., Inc. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1346-47 (Fed.
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`Cir. 2000) (“A patent ... presumes a readership skilled in the field of the invention.”);
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`In re Storrs, 245 F.2d 474, 478 (C.C.P.A. 1957) (“[T]he disclosure is not addressed
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`to the public generally, but to those skilled in the art.”).
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`Further, claim 1 was amended as shown: “a center pole [used] constructed for
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`stretching and sustaining a tent’s roof when [pitching] a tent is pitched with the tent
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`frame.” (Ex. 1002, p. 59). This narrowing amendment, made to “more particularly
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`point out and distinctly claim the present invention” pursuant to pre-AIA 35 U.S.C.
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`§ 112, second paragraph, precludes a finding that “constructed for” should be
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`construed as intended use or mere capability because it would conflate “constructed
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`for” (i.e., configuration) with “used for” (i.e., intended use or capability). (Id.,
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`p. 61); Alpex Comput. Corp. v. Nintendo Co. Ltd., 102 F.3d 1214, 1220 (Fed. Cir.
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`1996) (“Prosecution history is relevant ... for construing the meaning and scope of
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`the claims.”); Southwall Techs. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir.
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`1995) (“The prosecution history limits the interpretation of claim terms so as to
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`exclude any interpretation that was disclaimed during prosecution”).
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`Third, the facts at issue are readily distinguishable from Presidio Components,
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`Inc. v. AVX Corporation, 825 Fed. Appx. 909 (Fed. Cir. 2020) (nonprecedential) and
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`ParkerVision, 903 F.3d 1354. Presidio Components involved the phrase “adapted
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`to be,” which unlike “constructed for” is susceptible to the broader interpretation.
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`825 Fed. Appx. at 915. Further, the claim limitation—adapted to be positioned in a
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`particular manner—was unrelated to any disclosed or claimed structure. Id. at 915
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`(“Presidio failed to identify ... any structural features ... that make [the claimed
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`device] especially suitable for vertical mounting.”).
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`ParkerVision involved a generic electronic “apparatus for frequency up-
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`conversion” and “for communicating” and a generic “module to receive” and “to
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`gate ... and thereby generate.” 903 F.3d at 1362. Contrary to “configured to” and
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`“constructed for,” the words “for” and “to” are understood as reciting capability, not
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`configuration. Ericsson, Inc. v. D-Link Systems, Inc., 773 F. 3d 1201, 1204-05 (Fed.
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`Cir. 2014). The Court also found that “the claims here recite no structural limitations
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`that would preclude a prior art reference that discloses a different structure from
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`performing the claimed function.” ParkerVision, 903 F.3d at 1362.
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`Rather, the facts here bear substantial similarities to those in Giannelli, where
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`the specification described and the claim recited the structure necessary to perform
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`the claimed function. 739 F.3d at 1379. And while the claimed structure was simply
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`“a first handle portion,” the Court held that the claimed function was found to define
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`the scope of the overall machine, not just the first handle portion. Id. The Court
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`also found that “the examiner's rejection also contained no explanation why or how
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`a [POSITA] would modify the prior art [] machine to arrive at the [claimed]
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`apparatus,” leaving the prima facie case of obviousness unsatisfied. Id. at 1380.
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`III. CONCLUSION
`Patent Owner respectfully submits that the phrase “constructed for” should be
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`construed in the context of claim 1 as “a center pole that is designed or configured
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`to stretch and sustain a tent’s roof in conjunction with the tent frame and not merely
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`that the center pole can be made to stretch and sustain a tent’s roof.”
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`Date: September 28, 2021
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`/Kyle W. Kellar/
`
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` Kyle W. Kellar (Reg. No. 71,165)
`
`LEWIS ROCA ROTHGERBER
`CHRISTIE LLP
`655 N. Central Ave., Suite 2300
`Glendale, CA 91203
`Counsel for Patent Owner
`Caravan Canopy International, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 28, 2021, a copy of this Patent Owner’s
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`Initial Brief Regarding Claim Construction has been served in its entirety today,
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`September 28, 2021, by electronic mail to:
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`David A. Reed
`Tyler McAllister
`KILPATRICK TOWNSEND & STOCKTON LLP
`dreed@kilpatricktownsend.com
`tmcallister@kilpatricktownsend.com
`kgeyer@kilpatricktownsend.com
`CaravanCanopy-WalmartLit@kilpatricktownsend.com
`Attorneys for Petitioner Walmart Inc.
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`Kerry Taylor
`Andrew M. Douglas
`Lauren K. Katzenellenbogen
`KNOBBE MARTENS OLSON & BEAR, LLP
`2KST@knobbe.com
`2AMD@knobbe.com
`2LXK@knobbe.com
`Attorneys for Petitioner Z-Shade Co., Ltd. and Costco Wholesale Corporation
`
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`Richard A. Neifeld
`NEIFELD IP Law, PC
`rneifeld@neifeld.com
`Attorney for Petitioner Lowe’s Home Centers, LLC
`
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`Damian K. Gunningsmith
`CARMODY TORRANCE SANDAK AND HENNESSEY LLP
`dgunningsmith@carmodylaw.com
`Attorney for Petitioner ShelterLogic Corp.
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`William J. Brown
`BROWN WEGNER LLP
`bill@brownwegner.com
`Attorney for Petitioner Lowe’s Home Centers, LLC
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`Registered Attorneys for Petitioner
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`By /Kyle W. Kellar/
`Kyle W. Kellar
`Reg. No. 71,165
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`LEWIS ROCA ROTHGERBER
`CHRISTIE LLP
`655 N. Central Ave., Suite 2300
`Glendale, CA 91203
`Counsel for Patent Owner
`Caravan Canopy International, Inc.
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`Dated: September 28, 2021
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