Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: May 17, 2021
`
`
`
`
`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.
`_______________
`
`IPR2021-00449
`Patent 5,944,040
`_______________
`
`Before BART A. GERSTENBLITH, JAMES J. MAYBERRY, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`JESCHKE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Date: May 17, 2021
`
`
`
`
`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.
`_______________
`
`IPR2021-00449
`Patent 5,944,040
`_______________
`
`Before BART A. GERSTENBLITH, JAMES J. MAYBERRY, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`JESCHKE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`
`I. BACKGROUND
`Z-Shade Co., Ltd.; Costco Wholesale Corporation; Lowe’s Home
`Centers, LLC; and ShelterLogic Corp. (collectively, “Petitioner”) filed a
`Petition to institute an inter partes review of claims 1–3 (the “challenged
`claims”) of U.S. Patent No. 5,944,040 (Ex. 1001, “the ’040 patent”).
`Paper 5 (“Pet.”). Concurrently, Petitioner filed a Motion for Joinder seeking
`to join Walmart Inc. v. Caravan Canopy International, Inc., IPR2020-01026
`(the “Walmart IPR”). Paper 6 (“Mot.”) at 1. Patent Owner, Caravan
`Canopy International, Inc., did not file a preliminary response1 and did not
`file an opposition to Petitioner’s Motion for Joinder.2
`For the reasons below, we institute this inter partes review of the
`challenged claims of the ’040 patent. We also grant the Motion for Joinder
`and join Petitioner to IPR2020-01026.
`A. Related Proceedings
`The parties identify a proceeding in the U.S. District Court for the
`Central District of California (the “District Court”) in which Patent Owner
`asserts the ’040 patent against Walmart Inc. (“Walmart”): Caravan Canopy
`International, Inc. v. Walmart Inc., 2:19-cv-06978 (C.D. Cal.), filed August
`12, 2019 (the “Walmart Litigation”). Pet. 88; Paper 8 (Patent Owner’s
`Mandatory Notices) at 1. The Walmart Litigation was stayed on August 19,
`2020. See Pet. 89; Ex. 1019 (order staying the Walmart Litigation).
`
`
`1 Under our rules, filing a Preliminary Response is optional. See
`37 C.F.R. § 42.107(a) (2020) (“The patent owner may file a preliminary
`response to the petition.” (emphasis added)).
`2 See 37 C.F.R. § 42.25(a)(1) (setting one month as the default time
`limit for opposing a motion).
`
`2
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`
`The parties also identify other proceedings in which Patent Owner has
`asserted or is asserting the ’040 patent:
`1. Caravan Canopy Int’l, Inc. v. The Home Depot USA, Inc., 8:19-
`cv-01072 (C.D. Cal.), filed May 31, 2019;
`2. Caravan Canopy Int’l, Inc. v. ShelterLogic Corp., 5:19-cv-
`01224 (C.D. Cal.), filed July 1, 2019;
`3. Caravan Canopy Int’l, Inc. v. Z-Shade Co. Ltd., 2:19-cv-06224
`(C.D. Cal.), filed July 18, 2019;
`4. Caravan Canopy Int’l, Inc. v. Lowe’s Home Centers, LLC,
`2:19-cv-06952 (C.D. Cal.), filed August 9, 2019;
`5. Caravan Canopy Int’l, Inc. v. Bravo Sports, 2:19-cv-06031
`(C.D. Cal.), filed July 12, 2019 (dismissed without prejudice);
`6. Int’l E-Z Up v. Caravan Canopy Int’l, Inc., 2:01-cv-06530
`(C.D. Cal.), filed July 30, 2001 (settled);
`7. Jang v. Caravan Canopy Int’l, Inc., 2:03-cv-01024 (C.D. Cal.),
`filed February 11, 2003 (settled).
`Pet. 88–89; Paper 8 at 1. On December 13, 2019, the District Court
`consolidated proceedings 1–4 listed above (collectively, “the Petitioner
`Litigations”) and the Walmart Litigation “for all purposes except for trial.”
`Ex. 1025 at 1. After the filing of the Petition in this proceeding, the District
`Court stayed the Petitioner Litigations. See Ex. 1026; see also Pet. 89
`(stating that “Petitioner intends to request a stay of the [Petitioner]
`Litigation[s] based on this pending IPR proceeding and the instituted
`Walmart IPR2020-01026”).
`
`3
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`
`B. Real Parties in Interest
`Petitioner identifies the following entities as real parties in interest:
`Z-Shade Co., Ltd.; Costco Wholesale Corporation; Lowe’s Home Centers,
`LLC; Lowe’s Companies, Inc.; and ShelterLogic Corp. Pet. 88. Patent
`Owner identifies itself as the sole real party in interest. Paper 8 at 1.
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–3 on the following grounds:
`
`Claim(s) Challenged
`1–3
`
`35 U.S.C. §
`103(a)
`
`Reference(s)/Basis
`Yang,3 Lynch4
`
`1–3
`
`1–3
`
`1–3
`
`1–3
`
`1, 2
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Yang, AAPA5
`
`Yang, Berg6
`
`Tsai,7 Lynch
`
`Tsai, AAPA
`
`Tsai, Berg
`
`
`3 Japanese Publication No. H1-61370 (with English-language
`translation and affidavit), published April 19, 1989 (Ex. 1005 (Japanese
`version), and Ex. 1004 (translation with affidavit), collectively “Yang”).
`4 US 4,779,635, issued October 25, 1988 (Ex. 1007, “Lynch”).
`5 Statements in the ’040 patent at column 1, lines 11–15; column 1,
`lines 18–25; and Figures 1 and 2 (“AAPA”). For clarity and consistency
`with the Petition, we use the term “AAPA” (for Applicant Admitted Prior
`Art (see Pet. 10)).
`6 US 1,502,898, issued July 29, 1924 (Ex. 1008, “Berg”).
`7 US 5,638,853, issued June 17, 1997 (Ex. 1006, “Tsai”).
`
`4
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`
`Claim(s) Challenged
`38
`
`35 U.S.C. §
`103(a)
`
`Reference(s)/Basis
`Tsai, Berg, Carter9
`
`Petitioner supports its challenges with a declaration from Dr. Richard
`W. Klopp, P.E. (Ex. 1003, “the Klopp Declaration”) and a declaration from
`Dr. John D. Pratt, P.E. (Ex. 1024, “the Pratt Declaration”).10
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding is substantively identical to the petition
`in the Walmart IPR. Compare Pet., with Walmart IPR, Paper 1; see also
`Mot. 3–4 (“The Walmart Petition and the present Petition are substantively
`identical; they contain the same grounds, based on the same prior art
`combinations, against the same claims and rely on the same evidence,
`including a substantively identical expert declaration.”), 5 (stating that “[t]he
`instant Petition copies verbatim the challenges set forth in the Walmart
`Petition and relies on a substantially identical expert declaration” and that
`“[t]he only differences between the instant Petition and the Walmart Petition
`relate to formalities of a different party filing the petition”). For the same
`reasons discussed in the Institution Decision in the Walmart IPR, which we
`
`
`8 Although Petitioner states that the ground of Tsai, Berg, and Carter
`renders unpatentable claims “1–3” (Pet. 10), for claims 1 and 2, Petitioner
`relies on only Tsai and Berg (id. at 82). Petitioner thus relies on the ground
`of Tsai, Berg, and Carter to address only claim 3.
`9 US 5,511,572, issued April 30, 1996 (Ex. 1009, “Carter”).
`10 Petitioner states that “Parallel cites in the format ‘1003/1024’ are
`respectively made to the declarations of Drs. Klopp and Pratt, which are
`identical in substance” and that the Petitioner “relies only on Ex. 1003 unless
`Dr. Klopp is not cross-examined for his testimony in Ex. 1003; under such
`instance, Petitioner relies only on Ex. 1024 instead of Ex. 1003.” Pet. 11.
`
`5
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`incorporate expressly herein, Petitioner demonstrates a reasonable likelihood
`of prevailing with respect to at least one of the challenged claims of the
`’040 patent. Walmart IPR, Paper 12 (Decision on Institution).
`Accordingly, we institute inter partes review of claims 1–3 of the
`’040 patent based on the asserted grounds of unpatentability in the Petition.
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PTAB Rules of
`Practice for Instituting on All Challenged Patent Claims and All Grounds
`and Eliminating the Presumption at Institution Favoring Petitioner as to
`Testimonial Evidence, 85 Fed. Reg. 79,120, 79,120 (Dec. 9, 2020) (to be
`codified at 37 C.F.R. pt. 42) (“[T]he Board will either institute review on all
`of the challenged claims and grounds of unpatentability presented in the
`petition or deny the petition.”). At this stage of the proceeding, we have not
`made a final determination as to any challenged claim or any underlying
`factual or legal issue.
`
`III. MOTION FOR JOINDER
`We first address whether Petitioner timely filed the Motion for
`Joinder. “Any request for joinder must be filed . . . no later than one month
`after the institution date of any inter partes review for which joinder is
`requested.” 37 C.F.R. § 42.122(b) (2020). Petitioner contends that its
`Motion for Joinder is timely as it was “filed within one month of the Board’s
`decision instituting trial in the Walmart IPR on December 15, 2020.”
`Mot. 3. We agree with Petitioner that the Motion for Joinder was timely
`filed; the Board instituted inter partes review in the Walmart IPR on
`December 15, 2020, and Petitioner filed the Motion for Joinder requesting to
`join the Walmart IPR on January 15, 2021.
`
`6
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`
`Acting under the designation of the Director, we have discretion to
`determine whether to join a party to an instituted inter partes review.
`35 U.S.C. § 315(c) (2018); 37 C.F.R. § 42.122(a). We may
`join as a party to [an instituted] inter partes review any person
`who properly files a petition under section 311 that . . . after
`receiving a preliminary response under section 313 or the
`expiration of the time for filing such a response . . . warrants the
`institution of an inter partes review under section 314.
`35 U.S.C. § 315(c). We have explained that a motion for joinder should
`(1) explain why joinder is appropriate, (2) discuss whether any new grounds
`of unpatentability are asserted in the second petition, (3) explain what
`impact, if any, joinder would have on the cost and schedule for the existing
`proceeding, and (4) address whether granting joinder will add to the
`complexity of briefing and/or discovery. Consolidated Trial Practice Guide
`76 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated
`(citing Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013)).
`As for why joinder is appropriate and whether any new grounds of
`unpatentability are asserted in this proceeding, Petitioner contends that it
`asserts the same grounds as in the Walmart IPR, that it presents nearly
`identical arguments, and that it relies on substantially the same evidence and
`supporting declaration statements. Mot. 5–7. Petitioner also contends that
`the Board will be determining the same issues and joinder would be the most
`efficient and economical manner in which to proceed. Id. at 6.
`Regarding what impact, if any, joinder would have on the cost and
`schedule for the existing proceeding, Petitioner argues that joinder would not
`affect the schedule in the Walmart IPR because “[t]here are no new issues
`for the Board to address, and Patent Owner will not be required to present
`
`7
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`any additional responses or arguments, or conduct any additional discovery.”
`Mot. 7. Petitioner also agrees to “adhere to all deadlines set by the Board’s
`Scheduling Order for the Walmart IPR.” Id. Petitioner further asserts that
`“no additional expert discovery will be needed” because, “[a]ssuming
`Walmart does not terminate its IPR before its expert [(Dr. Klopp)] is
`deposed, Petitioner[] agree[s] to rely entirely on, and be bound by, the expert
`declaration(s) and deposition(s) in the Walmart IPR, and Petitioner[] will
`waive [its] own expert declaration” by Dr. Pratt. Mot. 8.
`Lastly, with respect to whether granting joinder will add to the
`complexity of briefing and/or discovery, Petitioner “agrees to a[n]
`‘understudy’ role and will not raise any issues.” Mot. 8. Petitioner also
`agrees to the following conditions if Walmart remains “an active party”:
`a) All substantive filings will be consolidated, for which Walmart
`will maintain responsibility (i.e., Petitioner[] will rely on the
`filings of Walmart), unless a filing solely concerns issues that do
`not involve Walmart (e.g., Mandatory Notices);
`b) Petitioner[] shall rely on the grounds instituted by the Board
`in the Walmart IPR, and the arguments and discovery introduced
`by Walmart; Petitioner[] shall not raise grounds not already
`instituted by the Board in the Walmart IPR, or introduce
`argument or discovery not introduced by Walmart;
`c) Petitioner[] agree[s] not to seek discovery or depositions in
`this proceeding beyond any agreement reached between Patent
`Owner and Walmart concerning discovery and depositions for
`the Walmart IPR;
`d) Petitioner[] at deposition shall not request any direct, cross
`examination or redirect time beyond that permitted for Walmart
`alone; and
`e) Petitioner[] agree[s] to be bound by the expert deposition and
`declarations of Walmart’s expert [(Dr. Klopp)] and Petitioner
`will waive its own expert declaration [(by Dr. Pratt)], unless
`
`8
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`
`Walmart ceases to be an active participant in its IPR prior to its
`expert’s deposition.
`Mot. 9. Patent Owner did not respond to the Petition or to the Motion for
`Joinder. In view of Petitioner’s representations, we are persuaded that
`joinder is appropriate. We, therefore, grant the Motion for Joinder.
`
`IV. CONCLUSION
`We institute inter partes review of claims 1–3 of the ’040 patent based
`on the asserted grounds of unpatentability set forth in the Petition. We grant
`Petitioner’s Motion for Joinder and join Petitioner to IPR2020-01026.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–3 of U.S. Patent No. 5,944,040 is instituted with respect
`to the grounds set forth in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122(a), Petitioner’s Motion for Joinder is granted, and
`Petitioner is joined as a petitioner in IPR2020-01026;
`FURTHER ORDERED that, in view of the joinder, all further filings
`shall be made only in IPR2020-01026;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2020-01026 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order in IPR2020-01026,
`and any modifications thereto, shall govern the schedule of the joined
`proceeding;
`
`9
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`
`FURTHER ORDERED that, in IPR2020-01026, Petitioner will file
`each paper, except for any paper that does not involve the other party, as a
`single, consolidated filing with Walmart, subject to the page limits set forth
`in 37 C.F.R. § 42.24, and shall identify such filing as a consolidated filing;
`FURTHER ORDERED that, for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with
`Walmart, Petitioner must request authorization from the Board to file a
`motion for an additional paper or pages;
`FURTHER ORDERED that Petitioner will be bound by the
`deposition of Dr. Klopp and the Klopp Declaration, and Petitioner will
`waive the Pratt Declaration, unless Walmart ceases to be an active
`participant in IPR2020-01026 prior to the deposition of Dr. Klopp;
`FURTHER ORDERED that Petitioner shall collectively designate
`attorneys with Walmart to conduct the cross-examination of any witness
`produced by Patent Owner and the redirect of any witness produced by
`Walmart and Petitioner, within the timeframes set forth in 37 C.F.R.
`§ 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that Petitioner shall collectively designate
`attorneys with Walmart to present at the oral hearing, if requested and
`scheduled, in a consolidated argument;
`FURTHER ORDERED that the caption in IPR2020-01026 shall be
`changed to reflect joinder of Petitioner in accordance with the attached
`example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2020-01026.
`
`
`10
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`FOR PETITIONER:
`
`Kerry Taylor
`Andrew M. Douglas
`Lauren K. Katzenellenbogen
`KNOBBE MARTENS OLSON & BEAR, LLP
`2KST@knobbe.com
`2AMD@knobbe.com
`2LXK@knobbe.com
`
`Richard A. Neifeld
`NEIFELD IP LAW, PC
`rneifeld@neifeld.com
`
`Damian K. Gunningsmith
`CARMODY TORRANCE SANDAK AND HENNESSEY LLP
`dgunningsmith@carmodylaw.com
`
`FOR PATENT OWNER:
`
`Kyle W. Kellar (lead counsel)
`Jason C. Martone
`Sami I. Schilly
`LEWIS ROCA ROTHGERBER CHRISTIE LLP
`kkellar@lrrc.com
`jmartone@lrrc.com
`sschilly@lrrc.com
`
`
`
`
`11
`
`
`
`IPR2021-00449
`Patent 5,944,040
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WALMART INC.; Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.,
`Petitioner,
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
` IPR2020-0102611
`Patent 5,944,040
`_______________
`
`
`
`11 Z-Shade Co., Ltd.; Costco Wholesale Corporation; Lowe’s Home
`Centers, LLC; and ShelterLogic Corp., which filed a petition in IPR2021-
`00449, have been joined as petitioner in this proceeding.
`
`12
`
`
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