Paper 25
`Trials@uspto.gov
`571-272-7822 Entered: June 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`THORLEY INDUSTRIES LLC, D/B/A 4MOMS,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00352
`Patent 9,027,180 B2
`____________
`
`
`
`
`Before MICHAEL R. ZECHER, BRIAN J. McNAMARA, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a)
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`THORLEY INDUSTRIES LLC, D/B/A 4MOMS,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00352
`Patent 9,027,180 B2
`____________
`
`
`
`
`Before MICHAEL R. ZECHER, BRIAN J. McNAMARA, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314 and
`37 C.F.R. § 42.108, Thorley Industries LLC, d/b/a 4Moms (“Petitioner”)
`challenges the patentability of claims 1–18 of U.S. Patent No. 9,027,180 B2
`(“the ’180 patent,” Ex. 1001), owned by Kolcraft Enterprises, Inc. (“Patent
`Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during trial. For the reasons discussed below, we
`determine that Petitioner has proven by a preponderance of the evidence that
`claims 1–18 of the ’180 patent are unpatentable. See 35 U.S.C. § 316(e) (“In
`an inter partes review instituted under this chapter, the petitioner shall have
`the burden of proving a proposition of unpatentability by a preponderance of
`the evidence.”).
`
`A. Procedural History
`On December 16, 2015, Petitioner requested an inter partes review of
`claims 1–18 of the ’717 patent. Paper 1, “Pet.” Patent Owner filed a
`Preliminary Response. Paper 12 (“Prelim. Resp.”). In a Decision on
`Institution of Inter Partes Review, we instituted trial of claims 1–18 on the
`following grounds of unpatentability:
`1. Whether claims 1–4, 6–14, and 16–18 are unpatentable under
`35 U.S.C. § 103(a) as having been obvious over Mariol1 and
`Pasin;2
`
`
`1 U.S. Patent No. 4,985,948, issued Jan. 22, 1991 (Ex. 1003).
`2 U.S. Patent No. 6,004,182, issued Dec. 21, 1999 (Ex. 1009).
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`2. Whether claims 1–4, 6–14, and 16–18 are unpatentable under
`35 U.S.C. § 103(a) as having been obvious over Mariol and
`Stoeckler;3
`
`3. Whether claims 1–4, 6–8, 10–14, 16, and 18 are unpatentable
`under 35 U.S.C. § 103(a) as having been obvious over Mariol and
`Rexroad;4
`
`4. Whether claims 1–8, 10–16, and 18 are unpatentable under
`35 U.S.C. § 103(a) as having been obvious over Mariol and
`Johnston;5
`
`5. Whether claims 5 and 15 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Mariol, Pasin, and
`Hartenstine;6
`
`6. Whether claims 5 and 15 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Mariol, Stoeckler, and
`Hartenstine;
`
`7. Whether claims 5 and 15 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Mariol, Rexroad, and
`Hartenstine;
`
`8. Whether claims 7 and 8 are unpatentable under 35 U.S.C. § 102(b)
`as anticipated by Tharalson.7
`
`Paper 14 (“Dec. on Inst.”), 22.
`During the trial, Patent Owner filed a Response (Paper 18, “PO
`Resp.”), and Petitioner filed a Reply (Paper 20, “Pet. Reply”). In addition,
`Petitioner filed a Motion to Exclude evidence. Paper 21. Patent Owner filed
`
`
`3 U.S. Patent No. 7,063,096 B2, issued June 20, 2006 (Ex. 1010).
`4 U.S. Patent No. 6,076,448, issued June 20, 2000 (Ex. 1011).
`5 U.S. Patent No. 3,875,623, issued Apr. 8, 1975 (Ex. 1006).
`6 U.S. Patent No. 6,510,570 B2, issued Jan. 28, 2003 (Ex. 1013).
`7 U.S. Patent No. 5,845,349, issued Dec. 8, 1998 (Ex. 1012).
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`an Opposition to Petitioner’s Motion to Exclude (Paper 23), and Petitioner
`filed a Reply in support of its Motion to Exclude (Paper 24).
`No oral hearing was held. See Paper 22 (ordering that no oral hearing
`would be held because neither party requested it).
`B. Related Matters
`
`Petitioner and Patent Owner cite the following two judicial matters in
`the U.S. District Court for the Northern District of Illinois as involving the
`’180 patent: (1) Kolcraft Enterprises, Inc. v. Thorley Industries LLC, No. 1-
`15-cv-07954; and (2) Kolcraft Enterprises, Inc. v. Graco Children’s
`Products Inc., No. 1-15-cv-07950. See Pet. 3; Paper 6.
`
`C. The ’180 Patent
`
`The ’180 patent is directed to foldable, portable “play yards.”
`Ex. 1001, Abstract. In particular, the ’180 patent discloses an exemplary
`play yard having
`
`a collapsible upper frame, a collapsible lower frame, and posts to
`support the upper frame above the lower frame. The posts
`include respective tracks. The example also includes a foldable,
`frameless enclosure operatively coupled to the upper frame, the
`lower frame and the posts. The enclosure has a plurality of sides
`and a bottom to define an enclosure volume. The enclosure also
`has a plurality of corner beads dimensioned for receipt in a
`respective one of the tracks to secure the enclosure to the posts.
`Ex. 1001, Abstract. Figure 1 of the ’180 patent is reproduced below:
`
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`Figure 1 depicts “an example play yard constructed in accordance with the
`teachings of the invention.” Ex. 1001, 1:39–40, 2:11.
`D. Illustrative Claims
`
`Claims 1, 7, and 11 are independent claims. Claims 2–6 depend
`
`directly or indirectly from independent claim 1; claims 8–10 depend from
`claim 7; and claims 12–18 depend directly or indirectly from claim 11.
`Claims 1 and 7 are illustrative of all the challenged claims and are
`reproduced below:
`
`1.
`
`A play yard comprising:
`a collapsible upper frame;
`a collapsible lower frame;
`posts to support the upper frame above the lower frame,
`the posts including respective channels; and
`a foldable, frameless enclosure operatively coupled to the
`upper frame, the lower frame and the posts, the enclosure having
`a plurality of sides and a bottom to define an enclosure volume,
`the enclosure having a plurality of corner beads dimensioned for
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`receipt in a respective one of the channels to secure the enclosure
`to the posts.
`
`
`Ex. 1001, 6:35–45.
`
`A play yard comprising:
`a frame movable between an erected position and a
`collapsed position, the frame including an upper frame and a
`lower frame;
`a post positioned between the upper frame and the lower
`frame, the post having an inner portion including a channel; and
`a flexible enclosure having a first side, a second side and
`a bottom side, a corner bead threaded into the channel to couple
`the enclosure to the post.
`
`7.
`
`
`Id. at 6:61–7:3.
`
`II. ANALYSIS
`A. Claim Construction
`
`In the Decision on Institution, we determined that the terms in the
`challenged claims did not need to be construed expressly (Dec. on Inst. 5–6),
`and we see no reason to modify that determination in light of the record
`developed at trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`B. Principles of Law
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`Although the elements must be arranged or combined in the same way as in
`the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
`
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`identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
`(Fed. Cir. 2009).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of non-obviousness (i.e., secondary considerations). Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`C. Level of Ordinary Skill in the Art
`
`Based on the record, we agree with Petitioner that the skill level of a
`person of ordinary skill in the art, at the relevant time for the ’180 patent,
`would have been that of “a mechanical engineer or industrial designer with
`five or more years of experience in product design and/or manufacturing,
`including for juvenile products such as play yards and the like (e.g., cribs,
`play pens, etc.), or equivalent educational and vocational experience.” Pet. 8
`(citing Ex. 1002 ¶ 24). Patent Owner does not dispute Petitioner’s assertion
`of the level of ordinary skill in the art.
`
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`D. Unpatentability Grounds Based on Mariol in View of Each of Pasin,
`Stoeckler, Rexroad, and Johnston
`(Claims 1–18)
`
`Petitioner contends that independent claims 1, 7, and 11 would have
`been obvious over Mariol in view of each of Pasin, Stoeckler, Rexroad, and
`Johnston. Pet. 9, 13–43. Furthermore, Petitioner contends that each
`dependent claim would have been obvious over Mariol in combination with
`at least one of Pasin, Stoeckler, Rexroad, and Johnston. Id. at 9, 43–51. In
`particular, Petitioner explains how the cited prior art references teach the
`claimed subject matter, provides reasoning as to why one of ordinary skill in
`the art would have been motivated to combine or modify their respective
`teachings, and relies upon the Declaration of Mr. Bert L. Reiner (Ex. 1002,
`hereinafter, the “Reiner Declaration”) to support its positions.8 Pet. 13–51.
`
`1. Independent Claims 1, 7, and 11
`
`Petitioner contends Mariol teaches all limitations of independent
`claims 1, 7, and 11, except for the use of “corner bead[s]” as recited in each
`independent claim. Pet. 13–16.
`
`a. Analysis of Mariol
`
`Petitioner contends Mariol discloses a play yard having “upper
`horizontal support 14” and “lower horizontal support 16,” and Petitioner
`contends that these upper and lower supports teach upper and lower frames,
`respectively, recited in claims 1, 7, and 11 and that these supports are
`
`
`8 According to Petitioner, Patent Owner did not depose Mr. Reiner. Pet.
`Reply 1. Furthermore, Patent Owner does not proffer the testimony of an
`expert to support its positions. Mr. Reiner’s testimony, therefore, is
`unrebutted.
`
`
`
`8
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`“collapsible,” as recited in claims 1 and 11. Pet. 13–14 (citing Ex. 1003,
`4:44–56, 5:51–54, Fig. 1). With respect to independent claim 7, Petitioner
`argues frame assembly 12 is “movable between an erect[ed] position and a
`collapsed position,” as recited in claim 7. Id. at 14 (citing Ex. 1003, 2:65–
`67).
`
`We are persuaded by Petitioner’s contentions, and we find Mariol
`discloses these limitations of claims 1, 7, and 11. In particular, Mariol
`discloses a foldable play yard, as depicted in Figure 1, reproduced below:
`
`
`Figure 1 depicts “a foldable playyard constructed in accordance with the
`principles of” Mariol. Ex. 1003, 4:16–18. Foldable playyard 10 has “frame
`assembly 12[, which] includes an upper horizontal support 14, a lower
`horizontal support 16 and vertical support rails 18, all pivotally coupled with
`respect to each other.” Id. at 4:40–43.
`
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`
`We find “upper horizontal support 14” and “lower horizontal support
`16” are “collapsible,” as recited in claims 1 and 11, because they include
`hinges 60 and 24 that permit the supports to be folded. Ex. 1003, 4:44–56,
`5:50–54, Fig. 1. For example, Mariol discloses: “The lower horizontal
`support has four sides but is constructed of eight rails 22 with central hinges
`24 connecting the rail pairs at the center of each side. Each hinge 24
`pivotally couples the rail pairs of each side by pins 26.” Ex. 1003, 4:46–50
`(emphasis added); see also Ex. 1003, 5:51–54 (“[H]inges 60 constitute
`locking components of the folding, unfolding and locking of the playyard
`between its folded, collapsed orientation and its opened operative
`orientation.”). Furthermore, we find Mariol teaches a “frame movable
`between an erected position and a collapsed position” because it discloses
`that the play yard can be “in an unfolded condition for operation and use”
`and “in a folded condition for storage.” Ex. 1003, 2:66–68.
`Petitioner further contends Mariol’s “vertical support rails 18” teach
`“posts to support the upper frame above the lower frame, the posts including
`respective channels,” as recited in claim 1, and “a post positioned between
`the upper frame and the lower frame, the post having an inner portion
`including a channel,” as recited in claim 7. Pet. 14–15 (citing Ex. 1003,
`Abstract, 4:40–44, Figs. 1, 8; Ex. 1002 ¶¶ 34, 35). Petitioner notes claim 11
`differs from claim 1 only in reciting “the posts defining respective
`channels,” rather than “including respective channels.” Id. at 16. Petitioner
`argues that Mariol’s vertical support rails 18 have inner channels. Id. at 14–
`15 (quoting Ex. 1003, Abstract; citing Ex. 1003, Fig. 8; Ex. 1002 ¶¶ 34–35).
`We are persuaded by Petitioner’s contentions, and we find Mariol
`discloses these limitations of claims 1, 7, and 11. In particular, Mariol
`
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`describes the vertical supports as “vertical tubes,” and Figure 8, which
`depicts a cross section of a vertical support rail, illustrates the rail as a tube.
`See Ex. 1003, Abstract, 4:29–31, 6:65–68, Fig. 8. We credit Mr. Reiner’s
`unrebutted testimony that Mariol’s disclosure of a tube teaches a post having
`a channel. See Ex. 1002 ¶ 35 (“Because the vertical support rails 18 are
`tubular, it is my opinion that Mariol’s vertical support rails 18 are essentially
`hollow and define an interior passageway or ‘respective channels’ as recited
`in independent claims 1 and 11 . . . .”).
`Petitioner also contends Mariol’s fabric assembly 50 teaches “a
`foldable, frameless enclosure operatively coupled to the upper frame, the
`lower frame and the posts, the enclosure having a plurality of sides and a
`bottom to define an enclosure volume,” as recited in claims 1 and 11, and “a
`flexible enclosure having a first side, a second side and a bottom side,” as
`recited in claim 7. Pet. 15–16 (citing Ex. 1003, 6:56–67; Ex. 1002 ¶¶ 36,
`37). We are persuaded by these contentions, and we find Mariol discloses
`these limitations. In particular, Mariol discloses “fabric assembly 50 . . . is
`of essentially box-like construction without a top” and “includes vertical
`side panels or walls 112 and a horizontal bottom panel or wall 114 all
`coupled together as to stitching to form a unitive fabric assembly with each
`panel or wall positively supported about its periphery by rails on all four
`sides.” Ex. 1003, 6:54–60. Because assembly 50 is fabric, we find Mariol
`teaches that it is “foldable,” as recited in claims 1 and 11, and “flexible,” as
`recited in claim 7. See Ex. 1002 ¶ 36.
`Claims 1 and 11 further recite “the enclosure having a plurality of
`corner beads dimensioned for receipt in a respective one of the channels to
`secure the enclosure to the posts,” and claim 7 recites “a corner bead
`
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`threaded into the channel to couple the enclosure to the post.” Petitioner
`acknowledges Mariol does not teach the use of “corner beads,” as claimed.
`Pet. 15. Rather, Mariol teaches the fabric assembly has “vertical hems 122,”
`which, according to Petitioner, “form corner sleeves, as opposed to corner
`beads.” Id. (citing Ex. 1003, 6:65–67).
`Petitioner cites four prior art references—namely, Pasin, Stoeckler,
`Rexroad, and Johnston—as teaching the use of “corner beads” for attaching
`material to a post or frame member, and Petitioner contends it would have
`been obvious to one of ordinary skill in the art to modify the play yard of
`Mariol such that the enclosure would couple to the frame using the corner
`beads taught by either Pasin, Stoeckler, Rexroad, or Johnston. Pet. 18, 28–
`43.
`
`Next, we discuss Petitioner’s contentions and our findings with
`respect to Pasin, Stoeckler, Rexroad, and Johnston before turning to
`Petitioner’s rationales for combining the teachings of Mariol with those of
`Pasin, Stoeckler, Rexroad, and Johnston.
`
`b. Analysis of Pasin
`
`Pasin is directed to the construction of “temporary structure[s],”
`including those “for the amusement of children, . . . such as simulated forts,
`houses, tents, tunnels, caves, etc.” Ex. 1009, 1:4–7, 1:39–41. “The
`structures . . . comprise a plurality of panels which may be formed of plastic,
`canvas, or from a variety of fabrics.” Id. at 1:27–29. Referring to Figure 1,
`Pasin discloses that the “structure is composed of a plurality of panels 12
`which are interconnected by means of joining frame members 14 and
`connectors 16.” Id. at 2:15–17.
`
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`Figures 4 and 6 of Pasin are reproduced below:
`
`
`
`
`Figure 4 depicts a joining frame member, and Figure 6 depicts “a fabric
`panel and associated rod formation.” Ex. 1009, 1:62, 2:1–3.
`Petitioner argues “Pasin uses beads at corners to attach the panels 12
`to the frame member 14.” Pet. 29. In particular, Petitioner contends rod
`formations 22 together with rods 27 and 29 teach “corner beads” that insert
`into “receptacle area 30” (channel) to attach panel 12 to joining frame
`member 14. Id. at 29–30 (citing Ex. 1009, 2:64–3:14, Figs. 4, 4A, 6, 6A,
`6B; Ex. 1002 ¶ 43).
`We are persuaded by Petitioner’s contentions, and we find Pasin
`teaches corner beads for attaching panel 12 to joining frame member 14.
`This finding is supported by the disclosure of Pasin reproduced above as
`well as Pasin’s disclosure that
`each of the joining frame members 14 includes a plurality of slots
`28 on its outer surface. Each slot extends inwardly to an enlarged
`receptacle area 30. The receptacle areas 30 are dimensioned for
`receiving the rod formations 22 or a rod 27 or 29 with the
`associated fabric material. Thus, the rod formations or rods are
`adapted to be forced through the slots 28 and then seated within
`the receptacle areas 30.
`Ex. 1009, 3:9–16.
`
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`c. Analysis of Stoeckler
`
`Stoeckler is directed to “collapsible tent structures” in which “a side
`cover made of fabric or keder 7 with an edge bead or flange or keder-profile
`8 or 9 is supported in a vertical position between two corner posts.”
`Ex. 1010, 1:18–25. Figures 3 and 5 of Stoeckler are reproduced below:
`
`
`Figure 5 depicts edge posts with an inserted side wall, and Figure 3 depicts a
`cross-section of the upper portion 1 of a post in Figure 5. Ex. 1010, 2:44–
`47.
`
`
`
`Petitioner contends beads 8 and 9 in Stoeckler teach “corner beads”
`that insert into the grooves or channels of the post to attach side covers 7 to
`the post. Pet. 32–33 (citing Ex. 1010, Abstract, 1:18, 2:32–36, Figs. 3, 5;
`Ex. 1002 ¶ 46).
`We are persuaded by Petitioner’s contentions, and we find Stoeckler
`teaches corner beads for attaching side covers 7 to the post. This finding is
`supported by the disclosure of Stoeckler reproduced above. It is further
`supported by Stoeckler’s disclosure that “[t]he keder-profile is a border
`thickening that is kept in a channel or groove in a rail and is held therein due
`to its shape. The opening slot for the side cover is thereby much more
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`narrow than the cross-sectional area for the receipt of the keder profile.”
`Ex. 1010, 2:32–36.
`
`d. Analysis of Rexroad
`
`Rexroad “relates to a material used in partitioning children’s play
`areas and industrial guards.” Ex. 1011, 1:6–7. Figures 13 and 17B of
`Rexroad are reproduced below:
`
`
`Figures 13 and 17B illustrate ways to attach mesh material 12’ to structural
`member 91. Id. at 8:38–9:3.
`Petitioner contends Rexroad’s support rod or rope 96 inserted into
`sleeve 92 teaches a “corner bead” that is inserted into “a channel
`(longitudinal slit 120) of an associated post (structural member 91) to secure
`(or couple) the enclosure (mesh 12’) to the post (structural member 91).”
`Pet. 36–38 (citing Ex. 1011, 8:38–9:1, Figs. 13, 17B; Ex. 1002 ¶ 52).
`We are persuaded by Petitioner’s contentions, and we find Rexroad
`teaches a corner bead to secure mesh 12’ to structural member 91. This
`finding is supported by the disclosure of Rexroad reproduced above, as well
`as Rexroad’s disclosure, referring to Figure 17B, that
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`member 91 has a longitudinal slit 120 which extends lengthwise
`therealong which is sufficiently wide to receive the width of the
`border 92 therein, but is to narrow enough to prohibit the member
`96 from passing therethrough. Thus the mesh 12, 12’ is held in
`place by the oversized diameter of the elongate member 96 to
`effect connection.
`Ex. 1011, 8:64–9:3. Furthermore, referring to Figure 13, Rexroad discloses
`inserting “support rod or rope 96” into “hollow border member 92” and
`using “plastic tie wrap 102 or lashing cord” to secure the support rod or rope
`so as to attach mesh 12’ to structural member 91. Ex. 1011, 8:38–54.
`
`e. Analysis of Johnston
`
`Johnston is directed to fabric joints. Ex. 1006, 1:2. Figures 2 and 4 of
`Johnston are reproduced below:
`
`Figure 2 depicts “a perspective view of the joint showing the meeting point
`of two adjacent short ribs forming sections of a longer rib,” and Figure 4
`depicts “a cross section of a joint at a corner.” Id. at 2:1–3, 7.
`Petitioner contends beads 5 in Johnston teach “corner bead[s]” that
`attach fabric 4 to ribs 1. Pet. 41 (citing Ex. 1006, Abstract, 1:6–9, 1:36, 2:7,
`Fig. 4; Ex. 1002 ¶ 55).
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`We are persuaded by Petitioner’s contentions, and we find Johnston
`teaches corner beads that attach fabric 4 to ribs 1. This finding is supported
`by the disclosure of Johnston reproduced above, as well as Johnston’s
`disclosure, referring to Figure 2, that “[t]wo sheets of fabric 4 are formed
`along edge portions to be joined with integral enlarged beads 5. The bead 5
`of each sheet is located within the respective passageway 2 and the portion
`of the sheet extending back from the bead passes through the respective
`slot 3.” Ex. 1006, 2:12–17. Furthermore, in the corner configuration of
`Figure 4, “the lateral slots 3 face in directions at right angles to one another.”
`Id. at 2:23–24.
`
`f. Rationales to Combine
`
`Petitioner presents a number of reasons, supported by evidence in the
`record, that a person of ordinary skill in the art would have been motivated
`to modify Mariol to incorporate the corner beads taught by each of Pasin,
`Stoeckler, Rexroad, and Johnston. Pet. 18–27. For example, for all of these
`references Petitioner contends that a person of ordinary skill in the art would
`have been “motivated to replace Mariol’s corner sleeves with the claimed
`corner beads to improve the manufacturability and ease of use of the play
`yard.” Pet. 26 (citing Ex. 1002 ¶¶ 66–67). As to each of the references,
`Petitioner also contends that using corner beads in place of the corner
`sleeves disclosed in Mariol would have been a matter of simple substitution
`of one known attachment technique for another. Id. at 19–21. Relying on
`the testimony of its declarant, Mr. Reiner, Petitioner contends that such a
`substitution would be straightforward and would yield the predictable result
`of attaching a flexible enclosure to corner posts. Id. (citing 1002 ¶¶ 60–63).
`Petitioner further contends that “[t]here are only a finite number of ways to
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`attach the enclosure to the corner posts,” and for all of these references,
`Petitioner argues that “corner beads provide an attachment that is durable
`and strong, which are desirable characteristics for juvenile products.” Pet.
`21, 24–25 (citing Ex. 1002 ¶¶ 62, 64; Ex. 1006, 1:31–32, 2:37–38).
`Petitioner’s contentions are supported by the unrebutted testimony of
`Mr. Reiner. With respect to ease of manufacturing using corner beads, Mr.
`Reiner testifies:
`It is desirable to manufacture juvenile products easily and
`economically. In my opinion, it would be easier to manufacture
`a play yard like Mariol’s to have corner beads instead of corner
`sleeves because it would be more difficult to sew the enclosure
`around curved posts, which would result in higher labor cost and
`more rejects.
`Ex. 1002 ¶ 66. Mr. Reiner further testifies: “In my opinion, it would be
`easier to use a play yard like Mariol’s but with corner beads instead of
`corner sleeves because it would be easier to collapse the play yard because
`there would be less bunching of the fabric in the corners.” Ex. 1002 ¶ 67.
`Mr. Reiner still further testifies:
`The corner beads disclosed in the secondary references perform
`the same function as the corner sleeves disclosed in Mariol—that
`is, attach a flexible enclosure to corner posts. Modifying the
`flexible enclosure of Mariol to include corner beads is merely the
`simple substitution of one known attachment technique—corner
`sleeves of the enclosure around the posts—with another known
`attachment technique —corner beads of the enclosure within the
`posts. . . .
`The replacement of a corner bead for Mariol’s corner
`sleeves is straightforward. Such a simple substitution does not
`require any special considerations or skills. And a [person
`having ordinary skill in the art] would recognize that using corner
`beads would realize the strength and durability associated with
`corner bead attachments. As such, the skill level of a [person
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`having ordinary skill in the art] at the relevant time, would allow
`the [person having ordinary skill in the art] to expediently
`evaluate corner beads to determine that they are functionally
`equivalent to corner sleeves for attaching a flexible enclosure to
`corner posts and use them as a substitute.
`In my opinion, the combination of Mariol’s play yard and
`the corner beads disclosed in the secondary references does not
`provide unpredictable results. The beads provide the exact result
`that a [person having ordinary skill in the art] would expect—the
`attachment of the enclosure to the corner posts.
`Ex. 1002 ¶¶ 60, 62–63.
`Patent Owner argues the use of corner beads would complicate
`manufacture and assembly of Mariol, making it unsatisfactory for its
`intended purpose “to more safely, efficiently, conveniently and
`economically fabricate and use foldable playyards.” PO Resp. 5–7 (quoting
`Ex. 1003, 2:33–35). In support of its argument, Patent Owner cites a
`decision denying inter partes reexamination of U.S. Patent 6,859,957
`(“Chen”). PO Resp. 5–7 (citing Ex. 2003). Patent Owner argues:
`In denying the request for reexamination (Exhibit 2002),
`the patent examiner noted that the Petitioner’s proposed
`modifications “would complicate the assembly of the crib . . . by
`replacing the simple sleeve and tube connection with a more
`complicated loop, rod, and tube arrangement in which the loop
`and rod must be slid or forced through the cavity for the length
`of the tube.” (Ex. 2003, Page 9). As in the Petitioner’s previous
`failed attempt to invalidate the Chen reference, the Petitioner’s
`proposed modification of the Mariol play yard in this proceeding
`complicates Mariol’s assembly from a “simple sleeve and tube
`connection” to one where a “loop and rod must be slid or forced
`through the cavity for the length of the tube.” Id.
`PO Resp. 6–7.
`We note at the outset that the patentability of Chen is not before us.
`Regardless, Patent Owner’s argument quotes only a portion of one paragraph
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`of the Examiner’s decision denying inter partes reexamination of Chen. The
`full paragraph in which the quoted portion appears is reproduced below:
`Still further, the Request has not shown why or how the
`modification of Oliphant by Colby would yield a predictable
`result with a reasonable expectation of success. The statement
`that the combination “increases the stability and durability of the
`connection between the frame and fabric member” is merely a
`conclusory statement, and the Request has not even alleged a
`predictable result. There is no showing that the modification
`actually would increase the stability or durability of the
`connection. Instead, the proposed modification using Colby
`would complicate the assembly of the crib of Oliphant by
`replacing the simple sleeve and tube connection with a more
`complicated loop, rod, and tube arrangement in which the loop
`and rod must be slid or forced through the cavity for the length
`of the tube.
`Ex. 2003, 9.
`This paragraph provides useful context and highlights an important
`distinction between the record before the Examiner in the request for inter
`partes reexamination of Chen and the record in this trial. In particular, in
`this trial, Petitioner proffers as evidence the unrebutted testimony of Mr.
`Reiner, who testifies that the use of corner beads has certain benefits, such as
`improved manufacturability and ease of usage. See Ex. 1002 ¶¶ 66, 67.
`Therefore, the record in this trial contains the type of evidence that the
`Examiner found lacking in the request for inter partes reexamination of
`Chen. Patent Owner’s assertion that Petitioner’s proposed modification
`would complicate assembly ignores the unrebutted testimony of Mr. Reiner.
`Patent Owner also argues that modifying the play yard of Mariol to
`use corner beads could introduce safety concerns that undermine Petitioner’s
`rationale to combine. PO Resp. 7–13. Patent Owner notes Mr. Reiner’s
`testimony that “[s]afety is paramount in designing products for infants and
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`young children” and that “an infant might suffocate in the enclosure if it
`became detached from the posts.” PO Resp. 8 (quoting Ex. 1002 ¶ 65).
`Patent Owner then gives examples of alleged potential safety issues with
`Petitioner’s proposed modification. PO Resp. 8–13.
`Patent Owner argues that, if an infant damages the vertical hems of
`Mariol, the side walls will still provide an enclosed space, as allegedly
`illustrated in the figures presented by Patent Owner that are reproduced
`below.
`
`
`PO Resp. 9. According to Patent Owner, the figure reproduced above on the
`left is Figure 8 from Mariol, and the figure on the right is a modified version
`of Figure 8 labeled “Hypothetical Damaged Hem.” PO Resp. 9. Patent
`Owner argues that using a corner bead instead of the vertical hem would
`remove the redundancy provided by the vertical hem, introducing safety
`concerns. PO Resp. 9–10.
`Patent Owner further argues that Mariol’s vertical hems are outside
`the vertical posts such that damage to the hems can be easily observed but
`that, in the modified play yard, the corner beads are within the vertical rails
`such that “it would be difficult for an adult to visualize damage to the corner
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`beads until a catastrophic failure occurs.” PO Resp. 10. According to Patent
`Owner, modifying the play yard of Mariol to include corner beads, therefore,
`would hinder the ability of an adult to see damage and repair it because,
`“[b]efore the users are able to replace damaged portions of a play yard, they
`must first be able to visualize and assess the damage done by infants.” PO
`Resp. 11.
`In Petitioner’s proposed modification, however, “the corner beads
`would be concealed within the posts such that tampering with the attachment
`features is prevented or at least deterred.” Pet. 26 (citing Ex. 1002 ¶ 65).
`Mr. Reiner testifies that “tampering with the
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