Trials@uspto.gov
`571-272-7822
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`Paper 7
`Date: April 21, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CELLPAK, INC.,
`Petitioner,
`v.
`MAMBATE USA INC.,
`Patent Owner.
`
`IPR2021-00007
`Patent D846,728 S
`
`
`Before GRACE KARAFFA OBERMANN, LYNNE E. PETTIGREW, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
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`571-272-7822
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`Paper 7
`Date: April 21, 2021
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CELLPAK, INC.,
`Petitioner,
`v.
`MAMBATE USA INC.,
`Patent Owner.
`
`IPR2021-00007
`Patent D846,728 S
`
`
`Before GRACE KARAFFA OBERMANN, LYNNE E. PETTIGREW, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00007
`Patent D846,728 S
`
`I. INTRODUCTION
`Petitioner, Cellpak, Inc., filed a Petition for inter partes review of the
`claim for an “LED Camping Lantern with Ceiling Fan” in U.S. Patent No.
`D846,728 S (Ex. 1001, “the ’728 patent”). Paper 1 (“Pet.”). Patent Owner,
`Mambate USA Inc., did not file a Preliminary Response.
`We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a) to
`determine whether to institute an inter partes review. Having considered the
`Petition, we determine the information presented shows a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`the design claim challenged in the Petition. Accordingly, we institute an
`inter partes review of the claim of the ’728 patent on the grounds asserted in
`the Petition.
`
`II. BACKGROUND
`A. Real Party-in-Interest and Related Matters
`Petitioner identifies itself as the real party-in-interest. Pet. 1. Patent
`Owner has not filed mandatory notices or otherwise identified any real
`parties-in-interest. Petitioner states that there are no related matters between
`Petitioner and Patent Owner. Id.
`B. The ’728 Patent and Claim
`The ’728 patent, which issued on April 23, 2019, is titled “LED
`Camping Lantern with Ceiling Fan” and claims “[t]he ornamental design for
`an LED (light-emitting diode) camping lantern with ceiling fan, as shown
`and described” in seven figures. Ex. 1001, codes (45), (54), (57).
`Figures 1–3 are illustrative of the claimed design and are reproduced below:
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`2
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`IPR2021-00007
`Patent D846,728 S
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`Ex. 1001, Figs. 1–3. Figures 1–3 above are line drawings depicting,
`respectively, a perspective view, a front view, and a left view of an LED
`camping lantern with ceiling fan. Id. at code (57).
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`3
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`IPR2021-00007
`Patent D846,728 S
`C. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claim is unpatentable based on
`the following grounds (Pet. 3):
`Claim Challenged
`35 U.S.C. §
`1
`102(a)(1)
`1
`103
`
`Reference(s)
`’862 patent1
`’862 patent, ’427 patent2
`
`
`
`III. DISCUSSION
`A. Claim Construction
`In an inter partes review based on a petition filed on or after
`November 13, 2018, we apply the same claim construction standard that
`would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
`§ 42.100(b) (2019). “As the Supreme Court has recognized, a design is
`better represented by an illustration ‘than it could be by any description and
`a description would probably not be intelligible without the illustration.’”
`Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008)
`(en banc) (quoting Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although
`preferably a design patent claim is not construed by providing a detailed
`verbal description, it may be “helpful to point out . . . various features of the
`claimed design as they relate to the . . . prior art.” Id. at 679–80.
`
`
`1 Chinese Design Patent No. CN 302112862 S, issued Oct. 3, 2012
`(Ex. 1003, “the ’862 patent”). Exhibit 1003 does not include an English
`translation of the ’862 patent, so our analysis herein considers only the
`figures provided in the reference.
`2 Chinese Utility Model Patent No. CN 203927427 U, issued Nov. 5, 2014
`(Ex. 1004, “the ’427 patent”). Exhibit 1004 does not include an English
`translation of the ’427 patent, so our analysis herein considers only the
`figures provided in the reference.
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`4
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`IPR2021-00007
`Patent D846,728 S
`Here, the overall visual appearance of the claimed LED camping
`lantern with ceiling fan is exemplified in the patent drawings. For purposes
`of this Decision, we determine that the best description of the features of
`the ’728 patent design comes from the drawings themselves. Although we
`do not articulate a specific verbal claim construction, we acknowledge in our
`analysis below relevant design characteristics of the claimed design,
`including key similarities and distinctions in comparison to the prior art. See
`MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1332 (Fed. Cir.
`2014).
`
`B. Asserted Anticipation by the ’862 Patent
`The “ordinary observer” test for anticipation of a design patent is the
`same as that used for infringement, except that the patented design is
`compared with the alleged anticipatory reference instead of the accused
`design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,
`1238–40 (Fed. Cir. 2009). The ordinary observer test for design patent
`infringement was first enunciated by the Supreme Court in Gorham v. White,
`81 U.S. 511 (1871):
`[I]f, in the eye of an ordinary observer, giving such attention as
`a purchaser usually gives, two designs are substantially the
`same, if the resemblance is such as to deceive such an observer,
`inducing him to purchase one supposing it to be the other, the
`first one patented is infringed by the other.
`Id. at 528. The ordinary observer test requires consideration of the design as
`a whole. Int’l Seaway, 589 F.3d at 1243; Egyptian Goddess, 543 F.3d at
`675. The mandated overall comparison between the prior art and claimed
`designs takes “into account significant differences between the two designs,
`not minor or trivial differences that necessarily exist between any two
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`IPR2021-00007
`Patent D846,728 S
`designs that are not exact copies of one another.” Int’l Seaway, 589 F.3d at
`1243. Such “minor differences cannot prevent a finding of anticipation.” Id.
`Petitioner contends that, under the ordinary observer test, the
`appearance of the camping lantern with fan in the ’862 patent prior art
`reference “is nearly identical” to that of the claimed design in
`the ’728 patent. Pet. 16. Petitioner provides the following annotated side-
`by-side comparison of different views of the lanterns in the ’728 patent and
`the ’862 patent:
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`IPR2021-00007
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`IPR2021-00007
`Patent D846,728 S
`Patent D846,728 S
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`IPR2021-00007
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`IPR2021-00007
`Patent D846,728 S
`Patent D846,728 S
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`IPR2021-00007
`Patent D846,728 S
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`Pet. 18–20; see Ex. 1001, Figs. 2–7; Ex. 1003, Figs. 1–6. As depicted in the
`annotated images above, Petitioner contends that the main features
`(including handle (1), supporting unit (4), connecting arms (5), fan (6),
`base (7), and LED lights (9)) “are virtually identical in terms of shape,
`position, orientation, etc., and arranged in a nearly identical manner.”
`Pet. 16. Petitioner further contends that the minor features (including front
`recess (2), switches (3), the appearance and number of droplet-shaped
`recesses (8), and the arrangement of LED lights (9)) “are virtually identical.”
`Id. at 16–17. Petitioner also notes that hook (10) in the ’728 patent is
`connected by a hinge to the top of handle (9), as shown in the red circle in
`the front view comparison, and can be lifted, as shown in the ’728 patent, or
`received in a receiving hole of the handle, similar to the hook received in a
`receiving hole in the ’862 patent. Id. at 17 n.1; see also Ex. 1001, Fig. 1
`(perspective view in the ’728 patent showing hole in the handle for receiving
`
`9
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`IPR2021-00007
`Patent D846,728 S
`the hook). Based on the substantial similarity of the two designs, Petitioner
`asserts that “an ordinary observer would be induced, giving such attention as
`a purchaser usually gives, to purchase the camping lantern with ceiling fan
`claimed in the ’728 patent supposing it to be that in the ’862 patent.” Id. at
`17.
`
`On the present record, we determine that Petitioner has shown
`sufficiently that there is substantial similarity in the overall appearance of
`the two designs such that an ordinary observer would be induced to purchase
`one supposing it to be the other. Accordingly, the information presented in
`the Petition shows a reasonable likelihood that Petitioner would prevail in
`establishing that the ’862 patent anticipates the design claimed in the
`’728 patent.
`C. Asserted Obviousness over the ’862 Patent and ’427 Patent
`The test for determining obviousness of a design patent “is whether
`the claimed design would have been obvious to a designer of ordinary skill
`who designs articles of the type involved.” Apple, Inc. v. Samsung Elec.
`Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal quotation marks and
`citations omitted). This obviousness analysis generally involves two steps.
`High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1311 (Fed.
`Cir. 2013). First, “one must find a single reference, a something in
`existence, the design characteristics of which are basically the same as the
`claimed design.” Id. (internal quotation marks and citation omitted).
`Second, “[o]nce this primary reference is found, other references may be
`used to modify it to create a design that has the same overall visual
`appearance as the claimed design.” Id. (internal quotation marks and
`citation omitted).
`
`10
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`IPR2021-00007
`Patent D846,728 S
`In the first step, we must “(1) discern the correct visual impression
`created by the patented design as a whole, and (2) determine whether there is
`a single reference that creates ‘basically the same’ visual impression.” Id. at
`1312 (internal quotation marks and citation omitted). In the second step, the
`primary reference may be modified by secondary references “to create a
`design that has the same overall visual appearance as the claimed design.”
`Id. at 1311 (internal quotation marks and citation omitted). The secondary
`references, however, “may only be used to modify the primary reference if
`they are ‘so related [to the primary reference] that the appearance of certain
`ornamental features in one would suggest the application of those features to
`the other.’” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed.
`Cir. 1996) (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)).
`Petitioner asserts that a designer of ordinary skill “would be someone
`with a background and training in lighting and lighting instrument design,”
`who “would be capable of understanding mechanical, electrical and
`industrial designs, and the integration of lighting with the mechanical
`designs.” Pet. 14. According to Petitioner, “[t]his person would routinely
`examine and specify mechanical and lighting designs as part of their job
`responsibilities, and could be a professional in one of several different
`industries,” such as “a mechanical designer, a person involved in the
`mechanical design, an electrical engineer, a lighting instrument professional,
`or a person involved in the design of outdoor activity equipment.” Id. at 14–
`15. Petitioner further asserts that such a person “could have either an
`undergraduate degree in mechanical/electrical engineering or the equivalent
`training as part of his or her professional work at a lighting instrument
`manufacturer.” Id. at 15. On the present record, and for purposes of this
`Decision, we adopt Petitioner’s proposed definition of an ordinary designer
`
`11
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`IPR2021-00007
`Patent D846,728 S
`because it is unopposed by Patent Owner at this juncture and reasonable in
`view of the disclosures of the ’728 patent and asserted prior art references.
`Petitioner contends that the ’728 patent design would have been
`obvious to a designer of ordinary skill over the combination of the
`’862 patent and the ’427 patent. Id. at 20–23. In the first step of its
`obviousness analysis, Petitioner contends that the ’862 patent creates
`“basically the same” visual impression as the design claimed in the
`’728 patent, with “virtually identical” features as discussed with respect to
`the asserted anticipation ground. Id. at 21.
`In the second step of its obviousness analysis, Petitioner proposes
`modifying the ’862 patent design with the ’427 patent as a secondary
`reference. Id. at 21–22. The ’427 patent discloses ornamental features of a
`camping lantern with fan as shown in Figure 1, reproduced below:
`
`
`Ex. 1004, Fig. 1. As illustrated in Figure 1 above, the ’427 patent discloses
`a camping lantern having many of the same ornamental features as the
`’728 patent and the ’862 patent designs, including a handle, supporting unit,
`fan, and base with LED lights. Id.; see Pet. 21. The lantern disclosed in the
`
`12
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`IPR2021-00007
`Patent D846,728 S
`’427 patent also includes hook 7, which Petitioner contends creates
`substantially the same overall visual impression as the hook in the
`’728 patent design. Pet. 21–22.
`In its proposed combination of references, Petitioner contends that a
`designer of ordinary skill would have modified the design in the ’862 patent
`to include the hook disclosed in the ’427 patent to create substantially the
`same overall appearance as the claimed design of the ’728 patent. Id. at 22.
`Petitioner asserts that the ’427 patent may be used as a secondary reference
`to modify the ’862 patent design because the references are “so related that
`the appearance of certain ornamental features in one would suggest the
`application of those features to the other.” Id. (quoting In re Borden, 90
`F.3d at 1575). Therefore, Petitioner contends, the claim of the ’728 patent
`would have been obvious over the ’862 patent in view of the ’427 patent.
`Id. at 23.
`On the present record, Petitioner has shown sufficiently that,
`considering the visual impression created by the ’728 patent design as a
`whole, the ’862 patent conveys basically the same visual impression to a
`designer of ordinary skill. See id. at 21–22. Petitioner also has made a
`sufficient showing, for purposes of institution, that a designer of ordinary
`skill would have modified the design in the ’862 patent to include the hook
`disclosed in the ’427 patent to create the same overall visual appearance as
`the design claimed in the ’728 patent. Id. Accordingly, the information
`presented in the Petition shows a reasonable likelihood that Petitioner would
`prevail in establishing that the design claimed in the ’728 patent would have
`been obvious over the combination of the ’862 patent and the ’427 patent.
`
`13
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`IPR2021-00007
`Patent D846,728 S
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`IV. CONCLUSION
`After considering the evidence and arguments presented in the
`Petition, we determine that the information presented shows a reasonable
`likelihood that Petitioner would prevail in establishing that the challenged
`claim of the ’728 patent is unpatentable on the grounds asserted in the
`Petition.
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted for the claim of the ’728 patent on the unpatentability
`grounds asserted in the Petition; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this Decision.
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`IPR2021-00007
`Patent D846,728 S
`PETITIONER:
`
`Che-Yang Chen
`LAW OFFICE OF MICHAEL CHEN
`chen.patentlaw@gmail.com
`
`Gary F. Wang
`LAW OFFICES OF GARY F. WANG
`garywang@gfwanglaw.com
`
`
`PATENT OWNER (has not made an appearance):
`
`Steven W. Weinrieb
`LAW OFFICES OF STEVEN W. WEINRIEB
`sweinrieb@gmail.com
`
`
`15
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