UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.
`Petitioner
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.
`Patent Owner
`_________________
`
`Case IPR2021-00449
`Patent No. 5,944,040
`_________________
`
`DECLARATION OF DR. JOHN D. PRATT
`
`Petitioner
`Exhibit Page 1 of 109
`
`Petitioners Exhibit 1024
`Patent 5,944,040
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.
`Petitioner
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.
`Patent Owner
`_________________
`
`Case IPR2021-00449
`Patent No. 5,944,040
`_________________
`
`DECLARATION OF DR. JOHN D. PRATT
`
`Petitioner
`Exhibit Page 1 of 109
`
`Petitioners Exhibit 1024
`Patent 5,944,040
`
`
`
`TABLE OF CONTENTS
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`Page No.
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`I.
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`INTRODUCTION .................................................................................. 3
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`II. LEGAL STANDARDS FOR PATENTABILITY................................... 5
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`III. PERSON OF ORDINARY SKILL IN THE ART ................................. 10
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`IV. U.S. PATENT NO. 5,944,040 ............................................................... 11
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`V. CLAIM INTERPRETATION ............................................................... 17
`
`VI. GROUND 1: CLAIMS 1-3 OF THE ’040 PATENT ARE
`OBVIOUS OVER YANG IN VIEW OF LYNCH ................................ 24
`
`VII. GROUND 2: CLAIMS 1-3 OF THE ‘040 PATENT ARE
`OBVIOUS OVER YANG IN VIEW OF ADMITTED PRIOR
`ART ...................................................................................................... 46
`
`VIII. GROUND 3: CLAIMS 1-3 OF THE 040 PATENT ARE
`OBVIOUS OVER YANG IN VIEW OF BERG ................................... 55
`
`IX. GROUND 4: CLAIMS 1-3 OF THE ’040 PATENT ARE
`OBVIOUS OVER TSAI IN VIEW OF LYNCH................................... 65
`
`X. GROUND 5: CLAIMS 1-3 OF THE ‘040 PATENT ARE
`OBVIOUS OVER TSAI IN VIEW OF ADMITTED PRIOR ART ...... 79
`
`XI. GROUND 6: CLAIMS 1-2 OF THE ‘040 PATENT ARE
`OBVIOUS OVER TSAI IN VTEW OF BERG..................................... 86
`
`XII. GROUND 7: CLAIMS 1-3 OF THE ‘040 PATENT ARE
`OBVIOUS OVER TSAI IN VIEW OF BERG AND CARTER ............ 91
`
`
`
`
`
`Petitioner
`Exhibit Page 2 of 109
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`
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`
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`I, John D. Pratt, declare as follows:
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`I. INTRODUCTION
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`1. My name is John D. Pratt, and I reside in Laguna Niguel, California. I
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`am a Principal of Argos Forensic Engineering (“Argos”). I am over eighteen years
`
`of age, and I would be competent to testify as to the matters set forth herein if I am
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`called upon to do so.
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`2.
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`I have been retained by Z-Shade Co., Ltd.; Costco Wholesale
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`Corporation; Lowe’s Home Centers, LLC; and Shelterlogic Corp. (collectively
`
`“Petitioner”) in connection with the above-captioned petition for inter partes review
`
`(“IPR”) of U.S. Patent No. 5,944,040 (the “’040 Patent” or “the Challenged Patent,”
`
`Ex-1001). The ’040 patent will be cited herein as “Ex. 1001” with additional column,
`
`line, and similar references to specific portions. 1 understand the ’040 Patent is
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`currently assigned to CARAVAN CANOPY INTERNATIONAL, INC. (“Patent
`
`Owner”).
`
`3.
`
`I have been asked by Petitioner to offer opinions regarding the ’040
`
`Patent, including whether claims 1-3 (which I will refer to collectively as the
`
`“Challenged Claims”) are unpatentable because they were obvious in view of certain
`
`prior art. This declaration sets for the opinions I have reached to date regarding these
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`matters.
`
`Petitioner
`Exhibit Page 3 of 109
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`
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`4.
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`In forming my opinions, I rely on my knowledge, training, and
`
`experience in the field and on documents and information referenced in this
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`Declaration.
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`5.
`
`I am being compensated by Petitioner at my standard hourly consulting
`
`rate for my time spent on this matter. My compensation is not contingent on the
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`substance of my opinions, on the outcome of the IPR, or on the outcome of any
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`related dispute between Petitioner and Patent Owner.
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`6.
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`Neither Argos nor I have a conflict of interest with respect to Petitioner
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`or Patent Owner.
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`7.
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`I reserve my ability to offer additional opinions in other dispute venues.
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`A. Background and Expertise
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`8. My CV is shown in Exhibit A to this declaration.
`
`B.
`
`Information Considered
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`9.
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`In forming my opinions, I have reviewed the ’040 Patent and
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`considered each document listed in Exhibit B and any other references cited in this
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`Declaration. In reaching my opinions, I have considered the viewpoint of a person
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`of ordinary skill in the art at the time of the ’040 Patent’s claimed priority date of
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`May 23, 1997. As explained below, I am familiar with the level of skill of a person
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`of ordinary skill in the art regarding the relevant technology at issue as of that time.
`
`Petitioner
`Exhibit Page 4 of 109
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`
`
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`I consider myself to have been a person of at least ordinary skill in the art as of the
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`claimed priority date.
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`II. LEGAL STANDARDS FOR PATENTABILITY
`
`10.
`
`In expressing my opinions and considering the subject matter of the
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`claims of the ’040 Patent, I am relying upon certain legal principles that counsel has
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`explained to me and that I have encountered in other work on intellectual property
`
`matters.
`
`11. First, I understand that for a claimed invention to be patentable, among
`
`other things, it must be new and not obvious in light of the information known to
`
`exist before the invention was made.
`
`12.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and generally
`
`includes patents and printed publications (e.g., books, articles, product manuals,
`
`company publications, etc.).
`
`13.
`
`I understand that the “prior art” includes patents and printed
`
`publications that existed before the earliest filing date (the “effective filing date”) of
`
`the patent. I also understand that a patent will be prior art if it was filed before the
`
`effective filing date, while a printed publication will be prior art if it was publicly
`
`available before that date.
`
`Petitioner
`Exhibit Page 5 of 109
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`
`
`
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`14.
`
`I understand that in this proceeding, it is Petitioner’s burden to prove
`
`that the Challenged Claims were anticipated by or were obvious in light of the prior
`
`art by a preponderance of the evidence. I understand that “a preponderance of the
`
`evidence” is evidence sufficient to show that a fact is more likely true than it is not
`
`true.
`
`15.
`
`I understand that in this proceeding, the claims must be given the
`
`meaning that the terms would have had to a person of ordinary skill in the art at the
`time of the ’040 Patent claimed priority date.1 The claims so interpreted are then to
`
`be evaluated for novelty in light of the prior art.
`
`16.
`
`I understand that in the proceeding for which I am submitting this
`
`declaration, the scope of prior art is limited to patents and printed publications. My
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`analysis compares the Challenged Claims to patents and printed publications that I
`
`understand are prior art to the Challenged Patent.
`
`17.
`
`I understand that one way prior art may render a claimed invention
`
`unpatentable and its associated patent claims invalid is when the prior art can be
`
`
`1Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
`
`Petitioner
`Exhibit Page 6 of 109
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`
`
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`shown to have made the claim “obvious” to a person of ordinary skill in the art.2 My
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`understanding of the legal standards for obviousness is set forth below.
`
`A. Obviousness
`
`18.
`
`I understand and have been instructed as to the definition of
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`“obviousness” in the context of U.S. patent law.
`
`19.
`
`I understand that patent claim is invalid if it would have been obvious
`
`to a person of ordinary skill in the art at the time the invention was made. I
`
`understand that the following standards govern the determination of whether a patent
`
`claim is obvious.
`
`20.
`
`I understand that the obviousness question requires consideration of
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`four factors:
`
`•
`
`•
`
`•
`
`•
`
`The scope and content of the prior art;
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`The differences between the prior art and the claims at issue;
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`The knowledge of a person of ordinary skill in the pertinent art; and
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`Whatever objective factors indicating obviousness or non-obviousness
`
`may be present in any particular case.
`
`
`21 am aware that there are other issues that may render patent claims invalid,
`
`but those are beyond the scope of this declaration.
`
`Petitioner
`Exhibit Page 7 of 109
`
`
`
`
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`21.
`
`I understand that the objective factors (“indicia”) that may bear on the
`
`question of obviousness or non-obviousness include whether the claimed invention
`
`proceeded in a direction contrary to the accepted wisdom in the field, whether there
`
`was a long-felt but unresolved need in the field that was satisfied by the claimed
`
`invention, whether others had tried but failed to make the claimed invention, whether
`
`others copied the claimed invention, whether the claimed invention achieved any
`
`unexpected results, whether the claimed invention was praised by others, whether
`
`others have taken licenses to use the claimed invention, whether experts or those
`
`skilled in the field of the claimed invention expressed surprise or disbelief regarding
`
`the claimed invention, and whether products incorporating the claimed invention
`
`have achieved commercial success.
`
`22.
`
`In addition, I understand that the obviousness inquiry should avoid
`
`relying on hindsight, and must adopt the perspective of a person of ordinary skill in
`
`the relevant art as of the patent’s effective filing date.
`
`23.
`
`1 also understand that under a proper obviousness analysis, any need
`
`or problem known in the field of endeavor at the time of invention and addressed by
`
`the patent can provide a reason for combining prior art elements in the manner
`
`claimed. I also understand combining familiar elements according to known
`
`methods is likely to be deemed obvious when it yields no more than predictable
`
`Petitioner
`Exhibit Page 8 of 109
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`
`
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`results. I further understand that the following are other factors that may show
`
`obviousness:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`a combination that only unites old elements with no change in their
`respective functions is unpatentable. As a result, the combination of
`familiar elements according to known methods is likely to be deemed
`obvious when it yields no more than predictable results,
`a predictable variation of a work in the same or a different field of
`endeavor is likely to be deemed obvious if a person of ordinary skill
`would be able to implement the variation,
`an invention is deemed obvious if it uses a known technique to improve
`a similar device in the same way, unless the actual application of the
`technique would have been beyond the skill of the person of ordinary
`skill in the art. In this case, a key inquiry is whether the improvement
`is more than the predictable use of prior art elements according to their
`established functions,
`an invention is deemed obvious if there existed at the time of invention
`a known problem for which there was an obvious solution encompassed
`by the patent’s claims.
`inventions that were “obvious to try”—chosen from a finite number of
`identified, predictable solutions, with a reasonable expectation of
`success—are likely to be deemed obvious,
`known work in one field of endeavor may prompt variations of it for
`use in either the same field or a different one based on design
`incentives or other market forces if the variations would have been
`predictable to one of ordinary skill in the art, and
`
`Petitioner
`Exhibit Page 9 of 109
`
`
`
`
`
`•
`
`an explicit teaching, suggestion, or motivation in the art to combine
`references, while not a requirement for a finding of obviousness, may
`be helpful in determining obviousness.
`24. Finally, I understand that even if a claimed invention involves more
`
`than substitution of one known element for another or the application of a known
`
`technique to a piece of prior art ready for improvement, the invention may still be
`
`obvious. I also understand that in such circumstances courts may need to look to
`
`interrelated teachings of multiple patents; the effects of demands known to the
`
`design community or present in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art to determine if the claimed
`
`invention is obvious.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`25.
`
`I considered several factors to determine the skill level of a person
`
`having ordinary skill in the art (“POSITA”) at the time of the claimed priority date
`
`of May 23, 1997, including the types of problems encountered in the art, the
`
`solutions to those problems, the pace of innovation in the field, the sophistication of
`
`the technology, and the education level of active workers in the field.
`
`26. Based on my knowledge, expertise, and the prior art cited in the ’040
`
`Patent, it is my opinion that a POSITA would have had a degree in the mechanical
`
`arts (or a related discipline) and at least two years of experiences in the design or
`
`Petitioner
`Exhibit Page 10 of 109
`
`
`
`
`analysis of mechanical devices, fabricated frames, and/or kinematic linkages, though
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`additional work experience could substitute for a formal degree and vice versa.
`
`
`
`IV. U.S. PATENT NO. 5,944,040
`
`27. U.S. Patent No. 5,944,040 was issued to Jung-Woo Jang on August 31,
`
`1999. The ’040 Patent application was filed in the U.S. Patent and Trademark Office
`
`(“USPTO”) on May 21, 1998, claiming priority to a foreign patent application in the
`
`Republic of Korea filed May 23, 1997.
`
`Petitioner
`Exhibit Page 11 of 109
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`
`
`
`
`
`I have reviewed the ’040 Patent and its three claims. The ’040 Patent
`
`28.
`
`relates to technology for providing a collapsible tent frame, specifically one which
`
`is “capable of making, pitching, or striking a tent easily and quickly when necessary
`
`and, more particularly, to a collapsible tent frame suitable for giving an enlarged and
`
`heightened interior space to users when pitching a tent.” (Ex. 1001, 1:5-10).
`
`Petitioner
`Exhibit Page 12 of 109
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`
`
`
`
`29.
`
`In general, the ’040 Patent teaches a collapsible tent frame which
`
`includes a plurality of side poles (four) coupled to each other via scissor-type ribs.
`
`These side poles are also each coupled to a center pole via a plurality of center poles
`
`ribs. When fully extended, the four side poles and center pole form a structure upon
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`which material can be stretched so as to provide shelter.
`
`30. More specifically, and with reference to Figure A and Figure B in this
`
`report, the ’040 Patent teaches a collapsible tent structure with side poles (10),
`
`coupled to each other via scissor-type side pole ribs (20). The upper arm of each of
`
`the plurality of side pole ribs is coupled to a stationary connector (60), while the
`
`lower arm is coupled to a slider (70) placed around the side poles. In this
`
`arrangement, as the tent structure is made to expand/contract, the lower arm of the
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`side pole ribs coupled to slider 70 is allowed to move along the side pole, thus
`
`allowing the scissor structure of the side pole ribs to close and open.
`
`31. Also shown in Figure A and Figure B are the center pole (50) coupled
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`to the side poles at connectors (60) via center pole ribs (30). These center pole ribs
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`also connect to the sliders (70) on the side poles via support links (40). As the tent
`
`structure is folded, the sliders (70) and connected support links (40) slide down the
`
`side poles, and the support links (40) pull down the center pole ribs (30), causing
`
`Petitioner
`Exhibit Page 13 of 109
`
`
`
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`the center pole ribs (30) to fold at hinge connections (30a). This folding movement
`
`enables the tent structure to collapse into a compact space.
`
`32. The ’040 Patent discusses that patents for collapsible tents with side
`
`poles, scissor-type connections between each side pole and attached to sliders and
`
`connectors on the side poles, and center poles with associated center pole ribs
`
`coupled to each other at the center pole already existed at the time the patent was
`
`filed (see Ex. 1001, 1:10-49). Further, the ’040 Patent also acknowledges that prior
`
`art patents also disclosed the striking and collapsing of the tent by the side poles
`
`moving together which forces the sliders attached to said side poles to move
`
`downwards (Ex. 1001, 1 :34-38), which is the same mechanism disclosed in the ’040
`
`Patent. However, the ’040 Patent identifies a problem with the prior art in that the
`
`center pole structure is connected (via the center pole ribs) to the side pole ribs
`
`directly via scissor-type connections, as opposed to being connected to the side poles
`
`directly. According to the ’040 Patent, this arrangement results in an inner frame
`
`structure which is overly burdensome because it limits interior head space (causing
`
`an obstacle for users entering or exiting the tent), adds unduly complicated
`
`construction requirements to the center pole (resulting in higher costs), and adds
`
`overall weight (which results in transportation difficulties). (Ex. 1001, 1:54-2:2).
`
`Petitioner
`Exhibit Page 14 of 109
`
`
`
`
`
`33. With regards to the identified prior art presenting an impediment to
`
`users exiting/entering the tent, the ’040 Patent specifies the problem in “limiting the
`
`height of the interior space”: “It is thus necessary for a user to be careful lest one
`
`bumps one’s head against the center pole ribs 3 or the connector 4 while going out
`
`of, coming into or standing in the tent” (Ex. 1001, 1:58-63).
`
`34. With regards to the added construction complexity and ease of
`
`transportation, the ’040 Patent teaches that the prior art identified in its application
`
`results in a “center pole . . . having a complex construction and increasing the
`
`production cost of the tent frame. Another problem of the above collapsible tent
`
`frame resides in that it is too heavy for a user to easily handle or move the frame.”
`
`(Ex. 1001, 1:66-2:2).
`
`35. The ’040 Patent attempts to ameliorate these claimed shortcomings in
`
`the identified prior art by attaching the center pole directly to the side poles (as
`
`opposed to the prior art connecting the center pole to the side pole ribs), including
`
`adding a support link between the center pole ribs and the side pole to aid in pitching
`
`and striking the tent. See Figure A and Figure B.
`
`36. The ’040 Patent contains 3 claims, all of which are being challenged in
`
`the current matter:
`
`1. A collapsible tent frame, comprising:
`
`Petitioner
`Exhibit Page 15 of 109
`
`
`
`
`
`a.) a center pole constructed for stretching and sustaining a tent’s
`
`roof when a tent is pitched with the tent frame;
`
`b.) a plurality of side poles coupled to each other through a plurality
`
`of scissor-type ribs, with upper ends of said ribs being hinged to
`
`connectors provided at top ends of said side poles and lower ends of
`
`said ribs being hinged to sliders movably fitted over said side poles;
`
`and
`
`c.) plurality of center pole ribs coupling said center pole to said
`
`connectors of the side poles, said center pole ribs individually
`
`comprising two rib members coupled to each other through a hinge
`
`joint and being hinged to the slider of an associated side pole through
`
`a support link, thus being collapsible at the hinge joint in accordance
`
`with a sliding motion of said slider along the side pole.
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`2. A collapsible tent frame according to claim 1, wherein said rib
`
`members of the center pole ribs have a substantially equal length.
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`3. A collapsible tent frame according to claim 2, further comprising a
`
`claw member disposed at a lower end of each side pole.
`
`Petitioner
`Exhibit Page 16 of 109
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`
`
`
`
`V. CLAIM INTERPRETATION
`
`37.
`
`I understand that the Patent Trial and Appeal Board uses the Phillips3
`
`standard for claim construction used in civil courts, which is to say that the claims
`
`must be given the meaning that the terms would have had to a person of ordinary
`
`skill in the art at the time of the ’040 Patent claimed priority date.
`
`38.
`
`I understand that the parties in the Underlying Litigation in totality
`
`dispute over six different terms in the ’040 Patent: “center pole,” “constructed for
`
`stretching and sustaining a tent’s roof,” “being collapsible at the hinge joint in
`
`accordance with a sliding motion of said slider along the side pole,” “hinge joint,”,
`
`“support link”, and “substantially equal length.”
`
`Center Pole
`
`39.
`
`Independent claim 1 recites “a center pole constructed for stretching
`
`and sustaining a tent’s roof when a tent is pitched.” (Ex. 1001, 4:28-29).
`
`40. Within the ’040 Patent, the term “pole” is used consistently to refer to
`
`long slender objects. Specifically, the term “pole” is used to refer to both “side poles”
`
`and the “center pole”, without any indication that the term should be understood
`
`differently within these two contexts. Therefore, a POSITA at the time of filing
`
`
`3Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
`
`Petitioner
`Exhibit Page 17 of 109
`
`
`
`
`would have understood that “center” and “side” describe the location of the pole and
`
`do not change the underlying definition or structure of a “pole”; in recognizing that
`
`a “side pole” as taught in the ’040 Patent is a long, slender object provided at the
`
`sides or corners of the tent (see side poles 10 in Figure A and Figure B in this report)
`
`from just a simple comparison, a POSITA would have similarly construed a center
`
`pole to be a “long, slender object located at the center of the tent.”
`
`41. This construction would have also been reinforced by how the center
`
`pole is used within the ’040 Patent. For example, a POSITA would have recognized
`
`that the center pole would need to be elongated so as to maximize vertical headspace
`
`within the tent and provide a maximum angle for water shedding. Additionally, a
`
`POSITA would have recognized that the width of the center pole defines how
`
`laterally compact the folded tent can be: a POSITA would have thus understood that
`
`the center pole needs to also be as slender as is practical. This “slender” condition
`
`also arises from the notion that a POSITA would have wanted the tent material to be
`
`supported at an apex, instead of a flat portion, again, to maximize water shedding
`
`capability. Therefore, the use of the term “center pole” within the ’040 Patent would
`
`have also led a POSITA to construe this term as both “long” and “slender.”
`
`42. For further guidance as to how to understand the term “center pole”, a
`
`POSITA would have also looked
`
`to dictionary definitions of “pole”
`
`Petitioner
`Exhibit Page 18 of 109
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`
`
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`contemporaneous with the claimed priority date of ’040 Patent, such as “a long,
`cylindrical, often slender piece of wood, metal, etc.,”4 and “a long, slender, usually
`
`cylindrical object (as a length of wood).”5 While these dictionary definitions taken
`
`as a whole indicate that a pole is generally cylindrical, within the context of the
`
`’040 Patent it is clear that no such limitation exists (i.e., the side poles are
`
`rectangular or square, and the embodiment of the center pole shown in Figure 3 of
`
`the ’040 Patent, Figure A in this report, is conical).
`
`43. Accordingly, a POSITA in view of the above requirements for a center
`
`pole (in addition to the ’040 Patent specification, claims, and figures) would
`
`interpret a center pole as a “centrally disposed, long, slender object.”
`
`Constructed for Stretching and Sustaining a Tent’s Roof
`
`44. Claim 1 of the patent claims a “center pole” (defined above in pars. 39-
`
`43) that is “constructed for stretching and sustaining a tent’s roof.” As the ’040
`
`Patent describes, the “canvas or other material” of the tent roof is “stretched over
`
`and sustained by a frame.” (Ex. 1001, 1:11-13). Specifically, the tent roof is most
`
`
`4 Ex. 1014 (Webster’s Encyclopedic Unabridged Dictionary of the English
`
`Language (1996)).
`
`5 Ex. 1015 (Merriam-Webster’s Collegiate Dictionary, Tenth Edition (2000)).
`
`Petitioner
`Exhibit Page 19 of 109
`
`
`
`
`often secured to the side poles and is held up by the center pole and center pole ribs.
`
`The center pole specifically heightens the tent roof to create tension in the fabric
`
`which prevents sagging. Sagging leads to instability and flapping due to wind or
`
`leaking due to a collection of rainwater. These are all common problems identified
`
`in the art.
`
`45. Moreover, the purpose of center pole within the ’040 Patent is to
`
`further heighten the interior space of the tent (see, e.g. Ex. 1001, 3:30-33). This
`
`addresses one of the key problems identified in the patent: prior art tents had
`
`“limit[ed] the height of the interior space.” (Ex. 1001, 1:56-64).
`
`46. Therefore, from the specification of the ’040 Patent, a POSITA would
`
`interpret “stretching and sustaining a tent’s roof” to mean the action of a center pole
`
`which both heightens and holds up the tent covering.
`
`47. This interpretation of stretching and sustaining comports with how
`
`dictionaries at the time of priority would have defined the terms also. For example,
`
`the 1996 Oxford Dictionary and Thesaurus defines “stretch” as “place or lie at full
`
`Petitioner
`Exhibit Page 20 of 109
`
`
`
`
`length or spread out (with a canopy stretched over them),”6 and Webster’s II New
`
`Riverside Dictionary, also from 1996, defines “sustain” as “[t]o hold up: support.”7
`
`48. Accordingly, a POSITA would have interpreted “constructed for
`
`stretching and sustaining a tent’s roof” to mean “made to heighten and hold up the
`
`tent covering.”
`
`Petitioner’s Constructions for the Remaining Terms
`
`49.
`
`I understand that Petitioner’s proposed constructions of the following
`
`additional terms in the Underlying Litigation: “being collapsible at the hinge joint in
`
`accordance with a sliding motion of said slider along a side pole”—construed to
`
`mean “when the tent frame is collapsed, the center pole ribs bend at the hinge joint,
`
`and the slider slides along the side pole”; “hinge joint”—construed to mean “a
`
`connector that pivots to raise or lower the collapsible tent frame”; and “support
`
`link”—construed to mean “a structure that connects a rib member with a slider
`
`associated with a side pole”. See Petitioners Opening Claim Construction brief in
`
`the Underlying Litigation, Ex. 1012. Patent Owner countered that each term merits
`
`its plain and ordinary meaning. Ex. 1012.
`
`
`6 Ex. 1016 (emphasis in original).
`
`7 Ex. 1017.
`
`Petitioner
`Exhibit Page 21 of 109
`
`
`
`
`
`50.
`
`It is my opinion that Petitioner’s proposed constructions in the
`
`Underlying Litigation are correct. I have been informed that Petitioner offered these
`
`constructions to aid the jury in understanding technical terms. As that issue is not
`
`present here, construction of those terms is not necessary for institution purposes or
`
`analysis of the obviousness of the Challenged Claims in this proceeding.
`
`51. Regarding the claim term “substantially equal length,” it is my opinion
`
`that this term is not explicitly defined or discussed within the ’040 Patent, and neither
`
`the specification nor the prosecution history provides any objective boundaries for
`
`this term to a POSITA.
`
`52. For the purposes of analyzing the scope of Claim 2 of the ’040 Patent,
`
`a POSITA would look to the ’040 Patent specification, which teaches: “The center
`
`pole ribs 30 individually comprise two rib members, which have the same
`
`construction and are coupled to each other through a hinge joint 30a” (Ex. 1001:66-
`
`3:1). A POSITA would understand that center pole ribs made from two rib members
`
`“having the same construction” would be within the plain and ordinary meaning of
`
`the term “substantially equal length”, even if the full scope of “substantially equal
`
`length” cannot be ascertained.
`
`Petitioner
`Exhibit Page 22 of 109
`
`
`
`
`
`A POSITA would have understood that “having the same construction” means
`
`having the same dimensions to a level relevant to collapsible tent consumer
`
`product technology. In that technology, “having the same construction” implies a
`
`common part on a bill of materials.
`
`
`
`Petitioner
`Exhibit Page 23 of 109
`
`
`
`
`
`A.
`
`VI. GROUND 1: CLAIMS 1-3 OF THE ’040 PATENT ARE
`OBVIOUS OVER YANG IN VIEW OF LYNCH
`
`Japanese Unexamined Utility Model Application H1-61370 for
`“Telescopic Instant Frame Assembled Building Structure”
`
`53.
`
`Japanese Unexamined Utility Model Application H1-61370 for a
`
`“Telescopic Instant Frame Assembled Building Structure” was filed by James Chow
`
`Lin Yang on October 15, 1987 and published on April 19, 1989. I will refer to this
`
`application herein as “Yang”, or “the Yang application”. Yang will be cited to the
`
`certified English Translation of Yang as “Ex. 1004” with additional pages indicated
`
`to the specific portions referenced. I am informed that Yang qualifies as prior art
`
`with respect to the ’040 Patent under 35 U.S.C. §102(b) as it was published nearly
`
`8 years before the claimed priority date of the ’040 Patent. The ’040 Patent inventor
`
`Jang did not disclose Yang with his filing, and the examiner did not review Yang
`
`during the ’040 Patent prosecution.
`
`54. Yang teaches to the same field of invention identified by the ’040
`
`Patent, that is, collapsible tents which are easily assembled and disassembled: “thus
`
`the present invention provides a telescopic frame assembled building structure
`
`having an easy and quick operation” (Ex. 1004, at 4-5).
`
`55. Moreover, (and as in the ’040 Patent) Yang identifies goals of reduced
`
`complexity of assembly, ease of transportation, and ease of entry and exit: “...the
`
`Petitioner
`Exhibit Page 24 of 109
`
`
`
`
`present invention, which has superior points such as follow [sic]: 1. Useful for
`
`carrying around due to integrated shape. 2. Saves time and energy because the
`
`frame assembly and folding operations are simple. 3. Neat and pretty after
`
`assembly is complete. 4. Can be moved and positioned at will. 5. No risk of being
`
`blown over by wind. 6. Highly mobile. 7. Convenient for aligning the location of
`
`the entrance/exit and raising the side bars for entrance and exit of persons. 8.
`
`The rooftop is pushed up to increase space for activities for which it is used”
`
`(emphasis added, Ex. 1004, at 5-6).
`
`56. Yang discloses a collapsible tent frame with side poles (“main column
`
`1” and “telescopic support column 2”) which are connected to each other via scissor-
`
`style side pole ribs (“side bars” 5a and 5b). As in the ’040 Patent, one arm of the
`
`side pole ribs is connected to a stationary connector (“upper fixed support bar shaft
`
`body” 4), and the other arm is coupled to the side poles via a movable slider (“lower
`
`moving support bar shaft body” 3). See (Ex. 1004, at 7-8) and Figure C.
`
`57. Yang also discloses a connecting hub (referred to as a “roof bearing
`
`beam shaft 8”) at the center of the tent which is used to provide support to the tent
`
`covering. Like the center pole in the ’040 Patent, the roof bearing beam shaft in Yang
`
`is connected to the side poles via ribs (roof support bars 7), which are coupled
`
`directly to a connector (4 in Yang) on the side poles, as well as being linked to the
`
`Petitioner
`Exhibit Page 25 of 109
`
`
`
`
`side pole sliders (3 in Yang) via support links (“support frame push-up bar” 9 in
`
`Yang).
`
`
`58. A claw member (“bottom stand piece” 21) is welded and fixed to the
`
`bottom of the side pole (“telescopic support column” 2) “to reinforce overall
`
`stability. (Ex. 1004, at 7).
`
`Petitioner
`Exhibit Page 26 of 109
`
`
`
`
`B. U.S. Patent No. 4,779,635 for “Collapsible Canopy With Telescoping
`Roof Support Structure”
`
`59. U.S. Patent No. 4,779,635 was issued to James P. Lynch on October 25,
`
`1988. I will refer to this application herein as “Lynch” or “the Lynch Patent”. Lynch
`
`will also be cited as “Ex. 1007, ” with additional pages indicated to the specific
`
`portions referenced. I am informed that Lynch qualifies as prior art with respect to
`
`the ’040 Patent under 35 U.S.C. §102( b) as it was published nearly 9 years before
`
`the claimed priority date of the ’040.
`
`60. Lynch teaches to the same field of invention as the ’040 Patent, that is,
`
`collapsible canopy tents which are readily portable. Notably, Lynch teaches a
`
`portable, temporary shelter with a large surface area which “includes a self-
`
`contained roof support structure that telescopically expands with the remaining
`
`support framework” (Ex. 1007, 1:10-16).
`
`61. Lynch identifies some of the same problems with prior art tents as those
`
`identified by the ’040 Patent and Yang (lack of interior head space, unduly
`
`complicated construction/assembly): “Accordingly, despite the advances of the
`
`above-described canopy structures, there remains a need for further improved
`
`canopy structure which provides a quick erectable temporary
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