Petition for Inter Partes Review of U.S. D846,728
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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` _________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________
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`CELLPAK, INC.
` Petitioner
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` v.
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` MAMBATE USA INC.
` Patent Owner
`___________________________________
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` U.S. Design Patent No. D846,728
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`___________________________________
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` Inter Partes Review No. Unassigned
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`___________________________________
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`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311-
`319 AND 37 C.F.R. § 42.100 ET SEQ.
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`

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`Petition for Inter Partes Review of U.S. D846,728
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`I.
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`TABLE OF CONTENTS
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`INTRODUCTION……………………………………………………......1
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`II. MANDATORY NOTICE UNDER 37 C.F.R. §42.8…………...……......1
`A. Real Party-In-Interest…………………………………………………1
`B. Fees……………………………………………...................................2
`C. Designation of Lead Counsel and Backup Counsel……………..........2
`D. Service Information…………………………………………………...2
`E. Power of Attorney……………………………….................................2
`F. Standing................................................................................................2
`III.
`IDENTIFICATION OF CHALLENGE………………………….............3
`IV. OVERVIEW OF THE ‘728 PATENT.......................................................3
`V. CLAIM CONSTRUCTION OF THE ‘728 PATENT...............................7
`A. Legal Standard for Claim Construction of a Design Patent………......7
`B. Claim Construction of the ‘728 Patent……………………………....10
`VI. THE APPLICABLE LEGAL STANDARD............................................12
`A. Anticipation………………………………………………………….12
`B. Inherency.............................................................................................13
`C. Obviousness........................................................................................13
`D. One of Ordinary Skill..........................................................................14
`VII. DETAILED EXPLANATION OF GROUNDS FOR UNPATENTA-
`BILITY UNDER THE BROADEST REASOBALE
`CONSTRUCTION...................................................................................15
`A. Ground 1: The Claim of the ‘728 Patent Would Have Been
`Anticipated By the ‘862 Patent Under 35 U.S.C. §102(a)(1).............15
`B. Ground 2: The Claim of the ‘728 Patent Would Have Been Rendered
`Obvious By the ‘862 Patent in View of the ‘427 Patent Under 35
`U.S.C. §103.........................................................................................20
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`i
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`Petition for Inter Partes Review of U.S. D846,728
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`VIII. CONCLUSION……………………………………………....................23
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`ii
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`TABLE OF AUTHORITIES
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`Cases
`Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc.,
`467 F.3d 1370, 1376 (Fed. Cir. 2006)……………………………..……………8
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`
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`
`
` Page
`
`
`Apple, Inc. v. Samsung Elecs. Co.,
`678 F.3d 1314, 1329 (Fed. Cir. 2012)……………………………..…………..13
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`Apple, Inc. v. Samsung Electronics Co.,
`No. 11-CV-01846-LHK, 2012 WL 3071477 (N.D. Cal. July 27, 2012)..............9
`
`
`In re Borden,
`90 F.3d 1570 (Fed. Cir. 1996)......................................................................14, 22
`
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`Crocs, Inc. v. Int’l Trade Comm’n,
`598 F.3d 1294 (Fed. Cir. 2010)..........................................................................13
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`Depaoli v. Daisy Mfg. Co.,
`No. 07-CV-11778-DPW, 2009 WL 2145721 (D. Mass. July 14, 2009)..............9
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`Durling v. Spectrum Furniture Co.,
`101 F.3d 100 (Fed. Cir. 1996).....................................................................passim
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`
`Egyptian Goddess, Inc. v. Swisa, Inc.,
`543 F.3d 665 (Fed. Cir. 2008)................................................................7, 8, 9, 12
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`
`High Point Design, LLC v. Buyers Direct, Inc.,
`730 F.3d 1301 (Fed. Cir. 2013)..........................................................................14
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`Int’l Seaway Trading Corp. v. Walgreens Corp.,
`589 F.3d 1233 (Fed. Cir. 2009)..............................................................12, 13, 16
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`King Pharm., Inc. v. Eon Labs, Inc.,
`616 F.3d 1267 (Fed. Cir. 2010)..........................................................................13
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`iii
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`In re Nalbandian,
`661 F.2d 1214 (C.C.P.A. 1981)..........................................................................14
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`Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC,
`739 F.3d 694 (Fed. Cir. 2014)..............................................................................8
`
`
`Schering Corp. v. Geneva Pharm.,
`339 F.3d 1373 (Fed. Cir. 2003)..........................................................................13
`
`SmithKline Beecham Corp. v. Apotex Corp.,
`403 F.3d 1331 (Fed. Cir. 2005)..........................................................................13
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`
`Starhome GmbH v. AT&T Mobility LLC,
`743 F.3d 849 (Fed. Cir. 2014)..............................................................................8
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`Times Three Clothier, LLC v. Spanx, Inc.,
`No. 13-CV-2157-DLC, 2014 WL 1688130 (S.D.N.Y. Apr. 29, 2014)...............8
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`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996).............................................................................9
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`Statutes
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`35 U.S.C. § 102................................................................................................passim
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`35 U.S.C. § 103................................................................................................passim
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`Other Authorities
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`37 C.F.R. § 42.8…….................................................................................................1
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`37 C.F.R. § 42.100(b)................................................................................................7
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`37 C.F.R. §42.104(a).................................................................................................2
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`37 C.F.R. § 42.104(b)................................................................................................3
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`77 Fed. Reg. 48756, 48764 (Aug. 14, 2012).............................................................7
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`iv
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`Petition for Inter Partes Review of U.S. D846,728
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`Exhibit List of Petition for Inter Partes Review of U.S. Patent No.
`D846,728
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`Exhibit No.
`Exhibit Description
`Exhibit 1001
`U.S. Design Patent No. D846,728 (“the ‘728 patent”)
`Exhibit 1002
`Prosecution History of the ‘728 Patent
`China Design Patent No. CN 302112862 S (“the ‘862 patent”) Exhibit 1003
`China Utility Model Patent No. CN 203927427U (“the ‘427
`Exhibit 1004
`patent”)
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`Petition for Inter Partes Review of U.S. D846,728
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`I.
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`INTRODUCTION
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`Cellpak Inc. (“Petitioner”) request inter partes review of the claim of U.S. Design Patent
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`No. D846,728 (“the ‘728 patent”) (Exhibit 1001), purportedly owned by MAMBATE USA
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`(“Patent Owner”). For the reasons set forth below, the sole claim of the ‘728 patent is
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`unpatentable because it would have been obvious in light of one primary prior art reference
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`considered in combination with a secondary reference. Alternatively, the claim is anticipated by
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`the primary prior art reference identified in this Petition, and is thus unpatentable.
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`The core purpose of the inter partes review, cancellation of an unpatentable claim, is
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`furthered by this Petition, as the challenged claim of the ‘728 patent should never have been
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`issued. Because Petitioner is at a minimum reasonably likely to prevail in showing
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`unpatentability, the Petition should be granted and trial instituted on the challenged claim as set
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`forth below.
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`II. MANDATORY NOTICE UNDER 37 C.F.R. §42.8
`Through counsel, Cellpak Inc. (“Petitioner”) hereby petitions for initiation of inter partes
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`review of the sole claim of the ‘728 patent, assigned to MAMBATE USA INC. (“Patent
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`Owner”). A copy of the ‘728 patent is attached as Exhibit 1001, and a copy of the prosecution
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`history of the ‘728 patent is attached as Exhibit 1002.
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`A. Real Party-In-Interest
`The real party-in-interest, Cellpak, Inc., is a California corporation with its principal
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`business address at 138 S Brent Cir., City of Industry, California 91789. No other entity is
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`controlling, directing, or funding the submission of this petition and any proceeding initiated as a
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`result therefrom. No related matters between Petitioner and Patent Owner as of the filing date of
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`Petition for Inter Partes Review of U.S. D846,728
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`the Petition.
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`B. Fees
`This petition is accompanied by a fee payment of $30,500, which includes the $15,500
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`inter partes review request fee, and the $15,000 inter partes review post-institution fee.
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`Petitioner further authorizes a debit from Deposit Account 506725 for whatever additional
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`payment is necessary in granting this petition.
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`C. Designation of Lead Counsel and Backup Counsel
`Lead Counsel for Petitioner is Che-Yang Chen (Reg. No. 64,015), of Law Office of
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`Michael Chen. Back-up counsel for Petitioner is Gary F. Wang (Reg. No. 44,392), of Law
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`Offices of Gary F. Wang.
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`D. Service Information
`As identified in the attached Certificate of Service, a copy of the present petition, in its
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`entirety, is being served to the address of the attorneys or agents of record for the ‘728 patent.
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`Petitioner may be served at its counsel, Law Office of Michael Chen and Law Offices of Gary F.
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`Wang. Petitioner consents to service via email to its lead and backup counsel at the following
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`email address: mchen@mcheniplaw.com.
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`E. Power of Attorney
`A power of attorney with designation of counsel is filed herewith in accordance 37
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`C.F.R. § 42.10(b).
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`F. Ground for Standing
`Petitioners certify that, under 37 C.F.R. § 42.104(a), the ‘728 patent is available for inter
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`partes review, and Petitioners are not barred or estopped from requesting inter partes review of
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`the ‘728 patent on the grounds identified in this Petition.
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`Petition for Inter Partes Review of U.S. D846,728
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`III.
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`IDENTIFICATION OF CHALLENGE
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`Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests inter partes review based on the
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`following prior art that was not cited during prosecution:
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`Exhibit
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` Exhibit 1003
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` Exhibit 1004
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`Description
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`Chinese design patent (CN 302112862S,
`“the ‘862 patent”) titled “野营风扇灯”
`translated to “Camping Light with Fan” in
`English.
`patent
`model
`utility
`Chinese
`(CN203927427U, “the ‘427 patent”) titled
`“ 野 营 用 风 扇 LED 灯 ” translated to
`“Camping LED Light with Fan” in English.
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`Publication Date
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`October 3, 2012
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`November 15, 2014
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`Petitioner requests inter partes review based on the following grounds:
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`Ground
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`Description
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`1
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`2
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`Anticipation under § 102 by the ‘862 patent titled “Camping Light with Fan”
`(Exhibit 1003).
`Obviousness under § 103 by the ‘862 patent (Exhibit 1003) in view of the ‘427
`patent titled “Camping LED Light with Fan” (Exhibit 1004).
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`Section V explains how the ‘728 patent’s sole claim should be construed, and Section VII
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`explains how each claim element is found in, or rendered obvious by, the prior arts.
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`IV. OVERVIEW OF THE ‘728 PATENT
`The ‘728 patent is entitled “LED CAMPING LANTERN WITH CEILING FAN” and
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`contains a single claim depicted in 7 figures for an ornamental design for an LED (light -
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`Petition for Inter Partes Review of U.S. D846,728
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`emitting diode) camping lantern with ceiling fan. FIG. 1 of the ‘728 patent is described as a
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`perspective view of an LED (light-emitting diode) camping lantern with ceiling fan; FIG. 2 is a
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`front view thereof; FIG. 3 is a rearview thereof; FIG. 4 is a left view thereof; FIG. 5 is a right
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`view thereof; FIG. 6 is a top view thereof; and FIG. 7 is a bottom view thereof. The drawings are
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`shown as below:
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`Ex. 1001, FIG. 1 is described as a perspective
`view of an LED (light-emitting diode) camping
`lantern with ceiling fan.
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`Petition for Inter Partes Review of U.S. D846,728
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`Ex. 1001, FIG. 2 is described as a front view of
`an LED camping lantern with ceiling fan.
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`Ex. 1001, FIG. 3 is described as a rear view of
`an LED camping lantern with ceiling fan.
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`5
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`Petition for Inter Partes Review of U.S. D846,728
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`Ex. 1001, FIG. 4 is described as a left view of
`an LED camping lantern with ceiling fan.
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`Ex. 1001, FIG. 5 is described as a right view of
`an LED camping lantern with ceiling fan.
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`6
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`Petition for Inter Partes Review of U.S. D846,728
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`Ex. 1001, FIG. 6 is described as a top view of
`an LED camping lantern with ceiling fan.
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`Ex. 1001, FIG. 7 is described as a bottom view
`of an LED camping lantern with ceiling fan.
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`V. CLAIM CONSTRUCTION OF THE ‘728 PATENT
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`A. Legal Standard for Claim Construction of a Design Patent
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`A claim subject to inter partes review receives the “broadest reasonable construction in
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`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012). As a design
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`patent, the scope of the ‘728 patent is defined by the claim (i.e., the drawings), in conjunction
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`with its description. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008)
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`Petition for Inter Partes Review of U.S. D846,728
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`(citing 37 C.F.R. § 1.152); also Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739
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`F.3d 694, 702 (Fed. Cir. 2014).
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`The Federal Circuit directs that “the preferable course ordinarily will be for a district
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`court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description
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`of the claimed design.” Egyptian Goddess, 543 F.3d at 679. However, the Federal Circuit has
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`noted that it can be “helpful to point out . . . various features of the claimed design as they relate
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`to the . . . prior art” and has stated that “it is important to emphasize that a district court’s
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`decision regarding the level of detail to be used in describing the claimed design is a matter
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`within the court’s discretion, and absent a showing of prejudice, the court’s decision to issue a
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`relatively detailed claim construction will not be reversible error.” Id. at 679-80.
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`Like a utility patent, the claim scope of a design patent may be limited by statements
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`made during prosecution. See id. at 680; Donald S. Chisum, Chisum on Patents § 23.05[7] (2013)
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`(“Decisions confirm that a design patent’s prosecution history may limit its scope”). The words
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`of a claim are generally to be given “their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art when read in the context of the specification and prosecution
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`history.” Starhome GmbH v. AT&T Mobility LLC, 743 F.3d 849, 856 (Fed. Cir. 2014). “A
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`patentee, however, can act as his own lexicographer to specifically define terms of a claim
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`contrary to their ordinary meaning.” Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467
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`F.3d 1370, 1376 (Fed. Cir. 2006). Similarly, a design patentee may “disavow[ ] the full scope of
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`a claim term either in the specification or during prosecution.” Times Three Clothier, LLC v.
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`Spanx, Inc., No. 13-CV2157-DLC, 2014 WL 1688130, at *2 (S.D.N.Y. Apr. 29, 2014) (citation
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`omitted).
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`Thus, in Egyptian Goddess, the Federal Circuit explained that a district court may guide
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`Petition for Inter Partes Review of U.S. D846,728
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`the fact finder by addressing certain issues that bear on the scope of a design patent claim,
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`including, inter alia, “the effect of any representations that may have been made during the
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`prosecution history.” 543 F.3d at 680 (citing Goodyear Tire, 162 F.3d 1113, 1116 (Fed. Cir.
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`1998)). The Court’s description in Egyptian Goddess of the use of the prosecution history in
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`determining the scope of a design patent is consistent with the claim construction process for
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`utility patents, which allows for statements made during prosecution to be considered as intrinsic
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`evidence defining the scope of a claim. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1582 (Fed. Cir. 1996) (“It is well-settled that, in interpreting an asserted claim, the court
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`should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the
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`specification and, if in evidence, the prosecution history.”) (citation omitted); also Apple, Inc. v.
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`Samsung Electronics Co., No. 11-CV-01846-LHK, 2012 WL 3071477, at *9 (N.D. Cal. July 27,
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`2012) (quoting Egyptian Goddess for this legal proposition and finding that “[m]oreover, the
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`prosecution history of the D′677 Patent establishes that the broken lines were intended to be
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`disclaimed. The patent application contained a broken line disclaimer, which remained through
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`the final amendment. Thus, it seems likely that the absence of a broken line disclaimer in the
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`D′677 Patent that was issued was inadvertent. Because the prosecution history supports the
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`broken line disclaimer, the public notice function regarding the meaning of the broken lines in
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`the D′677 is served. Thus, the D′677 Patent disclaims all subject matter but the front surface.)
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`(internal citations omitted); Depaoli v. Daisy Mfg. Co., No. 07-CV-11778-DPW, 2009 WL
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`2145721, at *6 (D. Mass. July 14, 2009) (“The scope of a design patent, like that of a utility
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`patent, may be limited by the applicant’s representations during the patent’s prosecution history.”)
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`(citations omitted).
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`Hence, although the claim construction process for design patents primarily involves
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`Petition for Inter Partes Review of U.S. D846,728
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`reference to the depiction of the claimed design (i.e., the drawing itself), the words used by the
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`patentee in describing that design may be highly relevant and limit the scope of a claim. This
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`includes the patentee’s use of words for the title of the design. See, e.g., Application of Zahn, 617
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`F.2d 261, 2653 (C.C.P.A. 1980) (finding that “[t]he title is of great importance in a design
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`application” and limiting the claimed design to only the shank of the drill bit, and not including
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`the cutting portion, when the title of the design patent – “Shank of Drill Bit” – was construed
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`together with the description of the figures).
`B. Claim Construction of the ‘728 Patent
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`The claim construction discussion herein is intended to aid this proceeding and does not
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`waive any arguments concerning lack of ornamentality, enablement, or functionality that may be
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`raised in litigation. Because claim terms may be construed according to different standards in
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`litigation versus PTO proceedings, Petitioners reserve the right to present different constructions
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`depending on the applicable standard and proceeding, should it be necessary. In particular,
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`Petitioners believe that the claimed design is invalid for a number of reasons that cannot be
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`raised in the context of an inter partes review proceeding. All such invalidity defenses are
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`expressly reserved.
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`For purposes here, claim construction of the ‘728 patent begins with the patentee’s claim
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`of “the ornamental design for an LED (light-emitting diode) camping lantern with ceiling fan
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`showing my new design.” Ex. 1001 at 1. The ‘728 patent contains seven figures—FIG. 1 is a
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`perspective view of an LED (light-emitting diode) camping lantern with ceiling fan; FIG. 2 is a
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`front view thereof; FIG. 3 is a rearview thereof; FIG. 4 is a left view thereof; FIG. 5 is a right
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`view thereof; FIG. 6 is a top view thereof; and FIG. 7 is a bottom view thereof.
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`Petition for Inter Partes Review of U.S. D846,728
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`1. The Prosecution History of the ‘728 Patent
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`The application that eventually issued as the ‘728 patent was filed on October 20, 2016
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`(see Exs. 1001 and 1002). The Notice of Allowance (NOA) was issued on January 22, 2019, the
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`issue fee was paid on February 19, 2019, and the ‘728 patent was issued on April 23, 2019. No
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`office action was issued during patent prosecution of the ‘728 patent (see Ex. 1002). Thus, the
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`‘728 patent will be construed by the claim (i.e., the drawings), in conjunction with its description
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`in a broadest reasonable manner.
`2. Analysis of the Potential Claim Elements
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`(a) A handle
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`The ‘728 patent’s title, sole claim and the description all designate that the claimed
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`design is for “an LED (light-emitting diode) camping lantern with ceiling fan.” See Ex. 1001.
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`Namely, the claimed design is used for outdoor activities such as camping, especially at the
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`nighttime. For user’s convenience, the claimed design has a handle for the user to carry and can
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`be used to hung the lantern at the camp site (see FIGs. 1 to 3 in Ex. 1001). It is noted that a hook
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`can be pivotally connected to the handle and received in a receiving hole of the handle when not
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`being used. See id. Therefore, “a handle” probably is a claim element.
`(b) A supporting unit
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` The ‘728 patent claims an LED camping lantern with ceiling fan that includes a
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`supporting unit, wherein the handle is pivotally connected to an upper portion of the supporting
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`unit while a fan (discussed below) is formed at bottom portion thereof (see FIGs. 1 to 5 in Ex.
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`1001). Therefore, “a supporting unit” probably is a claim element.
`(c) A fan
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`Petition for Inter Partes Review of U.S. D846,728
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`The ‘728 patent’s title, sole claim and the description all designate that the claimed
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`design is for “an LED camping lantern with ceiling fan.” See Ex. 1001. Therefore, “a fan”
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`probably is a claim element.
`(d) A base with LED lights
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`The ‘728 patent claims an LED camping lantern with ceiling fan. Since no specific
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`definition during the prosecution history of the ‘728 patent regarding the term “lantern,” its
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`ordinary meaning should apply. The term “lantern,” according to its ordinary meaning in
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`Merriam-Webster, is “a usually portable protective case for a light with transparent openings.”
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`In the claimed design, the LED lantern is supposed to be portable because it will be used for
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`camping as titled. Furthermore, the LED lights are disposed on a bottom portion of a base that
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`is underneath the fan, and are protected with three curved and transparent protective cases.
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`See FIG. 7 in Ex. 1001. Thus, “a base with LED lights” probably is a claim element.
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`VI. THE APPLICABLE LEGAL STANDARDS
`A. Anticipation
`The “ordinary observer test” is used to determine anticipation of a design patent under 35
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`U.S.C. § 102. See Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed.
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`Cir. 2009) (applying Egyptian Goddess to the test for anticipation). In the “ordinary observer
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`test,” the design as claimed is compared with a prior art reference and the Court determines
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`whether an ordinary observer, familiar with the prior art, would believe that, taken as a whole,
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`the prior art reference and the claimed design are the same. Egyptian Goddess, 534 F.3d 665,
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`675, 681 (Fed. Cir. 2008); Sensio, Inc. v. Select Brands, Inc., IPR2013-00500, Paper 8 at 8
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`(PTAB Feb. 11, 2014) (confirming use of the ordinary observer test for anticipation of a design
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`12
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`Petition for Inter Partes Review of U.S. D846,728
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`patent). This comparison thus takes into account only significant differences between two
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`designs; “minor differences cannot prevent a finding of anticipation.” Int’l Seaway, 589 F.3d at
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`1243; Sensio, IPR2013-00500, Paper 8 at 14. Comparison of the overall visual effect of the
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`designs looks to whether, to an ordinary observer, the claimed design and prior art are
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`substantially the same. See Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir.
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`2010) (citations omitted).
`B. Inherency
`Under the doctrine of inherent anticipation, a claim limitation that is not explicitly
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`disclosed by a prior art reference may be inherently anticipated if the limitation “is necessarily
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`present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339
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`F.3d 1373, 1377 (Fed. Cir. 2003). Inherent anticipation applies even if the inherent feature would
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`not have been recognized by one skilled in the art at the time of the invention. Id. at 1377-78.
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`The Federal Circuit has recognized “[t]he patent law principle ‘that which would literally
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`infringe if later in time anticipates if earlier.’” Id. at 1379 (quoting Bristol-Myers Squibb Co. v.
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`Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001)). A limitation claiming the “natural
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`result” flowing from the prior art’s limitations will be considered anticipated. King Pharm., Inc.
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`v. Eon Labs, Inc., 616 F.3d 1267, 1275-76 (Fed. Cir. 2010); SmithKline Beecham Corp. v.
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`Apotex Corp., 403 F.3d 1331, 1343-44 (Fed. Cir. 2005).
`C. Obviousness
`The test for determining obviousness of a design patent under 35 U.S.C. § 103 is
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`“whether the claimed design would have been obvious to a designer of ordinary skill who
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`designs articles of the type involved.” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103
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`(Fed. Cir. 1996) (citation omitted); see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314,
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`Petition for Inter Partes Review of U.S. D846,728
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`1329 (Fed. Cir. 2012). This inquiry “focuses on the visual impression of the claimed design as a
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`whole and not on selected individual features.” In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996)
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`(citations omitted). The inquiry “is whether one of ordinary skill would have combined teachings
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`of the prior art to create the same overall visual appearance as the claimed design.” Durling, 101
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`F.3d at 103.
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`The first step in an obviousness inquiry is to identify a single reference, which already
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`exists, that has “basically the same” design characteristics as the claimed design. Durling, 101
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`F.3d at 103 (citation omitted). Second, “other references may be used to modify [the primary
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`reference] to create a design that has the same overall visual appearance as the claimed design.”
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`Id. (citation omitted); see also High Point Design, LLC v. Buyers Direct, Inc., 730 F.3d 1301,
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`1311 (Fed. Cir. 2013). The secondary references may be used to modify the primary reference if
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`the two are “so related that the appearance of certain ornamental features in one would suggest
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`the application of those features to the other.” In re Borden, 90 F.3d at 1575 (citations omitted).
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`D. One of Ordinary Skill
`In this case, one of ordinary skill would be someone with a background and training in
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`lighting and lighting instrument design. In re Nalbandian, 661 F.2d 1214, 1215-16 (C.C.P.A.
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`1981) (“In design cases we will consider the fictitious person identified in [section] 103 as ‘one
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`of ordinary skill in the art’ to be the designer of ordinary capability who designs articles of the
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`type presented in the application.”). This person would be capable of understanding mechanical,
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`electrical and industrial designs, and the integration of lighting with the mechanical designs. This
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`person would routinely examine and specify mechanical and lighting designs as part of their job
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`responsibilities, and could be a professional in one of several different industries: a mechanical
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`designer, a person involved in the mechanical design, an electrical engineer, a lighting instrument
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`Petition for Inter Partes Review of U.S. D846,728
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`professional, or a person involved in the design of outdoor activity equipment. One of ordinary
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`skill could have either an undergraduate degree in mechanical/electrical engineering or the
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`equivalent training as part of his or her professional work at a lighting instrument manufacturer.
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`
`
`VII. DETAILED EXPLANATION OF GROUNDS FOR UNPATENT-
`ABILITY UNDER THE BROADEST REASOBALE CONSTRUCTION
`A. Ground 1: The Claim of the ‘728 Patent Would Have Been
`Anticipated By the ‘862 Patent Under 35 U.S.C. §102(a)(1)
`The LED camping lantern with ceiling fan embodying the claimed design of the ‘728
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`patent was patented in China prior to the effective filing date of the ‘728 patent (Ex. 1003). More
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`specifically, the Chinese patent titled “野营风扇灯” translated to “Camping Light with Fan” in
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`English was filed on July 09, 2012 to Bin Liu with Chinese Design Patent Application No.:
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`201230302428.3; and the Application was granted on October 03, 2012 with the Chinese Design
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`Patent No.: CN 302112862S (“the ‘862 patent”, Ex. 1003). Because the ‘862 patent was patented
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`more than one year prior to the effective filing date of the ‘728 patent, which is October 20,
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`2016, the ‘728 patent is subject to the post-AIA statute and is invalid under 35 U.S.C. §
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`102(a)(1).
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`The provisions of § 102 apply to design patents. See 35 U.S.C. § 171(b). Because the
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`‘728 patent is subject to the “first-to-file” provisions of the AIA because its effective filing date
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`is after March 16, 2013, the AIA 35 U.S.C. § 102(a)(1) applies. See AIA §3(n)(1). “A person
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`shall be entitled to a patent unless the claimed invention was patented, described in a printed
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`publication…or otherwise available to the public before the effective filing date of the
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`invention.” 35 U.S.C. §102(a)(1).
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`Petition for Inter Partes Review of U.S. D846,728
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`The appearance of the Camping Light with Fan in the ‘862 patent is nearly identical as
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`that of the claimed design in the ‘728 patent according to the ordinary observer test for
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`anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38,
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`1240, 93 USPQ2d 1001 (Fed. Cir. 2009). Two designs are substantially the same if their
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`resemblance is deceptive to the extent that it would induce an ordinary observer, giving such
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`attention as a purchaser usually gives, to purchase an article having one design supposing it to be
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`the other. Door-Master Corp. v. Yorktowne Inc., 256 F3d.1308 (Fed. Cir. 2001) citing Gorham
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`Co. v. White, 81 U.S. 511, 528 (1871).
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`The side-by-side comparison of different views of the camping lantern with ceiling fan in
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`the ‘728 patent and the ‘862 patent is shown below, wherein the camping lamp with ceiling fan
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`claimed in both the ‘728 and ‘862 patents includes (a) a handle, (b) a supporting unit, (c) a fan,
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`and (d) a base with LED lights located at a bottom portion of the base, wherein the handle is
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`pivotally connected to an upper portion of the supporting unit while the fan is formed at a bottom
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`portion of the supporting unit, and the base is pivotally connected to the supporting unit and
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`underneath the fan.
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`More importantly, the features stated above are virtually identical in both the ‘728 and
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`‘862 patents as shown in the side-by-side comparison in terms of each feature’s shape, position,
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`orientation, etc., and these features are arranged in a nearly identical manner in both patents. To
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`an ordinary observer, these two designs are substantially the same because not only the main
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`features including the handle (1), supporting unit (4), connecting arms (5), fan (6), base (7) and
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`LED lights (9) are virtually identical in terms of shape, position, orientation, etc., and arranged in
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`a nearly identical manner, but also the minor features such as the front recess (2), switches (3), a
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`plurality of droplet-shaped recesses (8), the arrangement of the LED lights (9), and even the
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`Petition for Inter Partes Review of U.S. D846,728
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`numbers of the droplet-shaped recesses (8) are virtually identical in both the ‘728 and ‘862
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`patents1. And based on the resemblance between these two designs discussed above, an ordinary
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`observer would be induced, giving such attention as a purchaser usually gives, to purchase the
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`camping lantern with ceiling fan claimed in the ‘728 patent supposing it to be that in the ‘862
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`patent, which was patented prior to the effective filing date of the ‘728 patent.
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`The claimed design of the Camping Light with Fan in the ‘862 patent was substantially
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`similar to the claimed design in the ‘728 patent, and more importantly was patented more than a
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`year ago prior to the effective filing date of October 20, 2016 of the ‘728 patent. Accordingly,
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`the ‘728 patent is invalid under 35 U.S.C. § 102(a)(1). The Board should institute inter partes
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`review and find the sole claim of the ‘728 patent unpatentable.
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`
`__________________
`1 Both the ‘728 patent and the ‘862 patent include a hook (10). The hook is supposed to be
`hingedly connected to the top of handle (9) as sho