Paper 14
`Trials@uspto.gov
`571-272-7822 Entered: June 23, 2016
`
`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 23, 2016
`
`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`I. INTRODUCTION
`Thorley Industries LLC, d/b/a 4Moms (“Petitioner”) filed a Petition
`(“Pet.”) requesting inter partes review of claims 1–18 of U.S. Patent No.
`9,027,180 B2 (“the ’180 patent,” Ex. 10011). Paper 1. Kolcraft Enterprises,
`Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 12
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314 and 37
`C.F.R. § 42.4(a).
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition shows “there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`After considering the Petition, the Preliminary Response, and
`associated evidence, we conclude that Petitioner has demonstrated a
`reasonable likelihood of prevailing in showing the unpatentability of all
`challenged claims. Thus, we institute an inter partes review as to
`claims 1–18 of the ’180 patent.
`
`A. Related Matters
`
`Petitioner and Patent Owner cite the following two judicial matters in
`the United States District Court for the Northern District of Illinois as
`involving the ’180 patent: (1) Kolcraft Enterprises, Inc. v. Thorley
`
`
`1 In the Notice of Filing Date, the Board identified defects in Petitioner’s
`exhibits that required correction. Paper 3, 2. In response, Petitioner timely
`filed corrected exhibits on January 5, 2016. See Paper 4; Exhibits 1001–19.
`To clarify the record, we will exercise our discretion and expunge the
`defective exhibits, which are the exhibits bearing a filing date in PRPS of
`December 16, 2015. See 37 C.F.R. § 42.7.
`2
`
`
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`Industries LLC, d/b/a 4Moms, 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.
`
`B. 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:
`
`
`
`3
`
`
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`Figure 1 depicts “an example play yard constructed in accordance with the
`teachings of the invention.” Ex. 1001, 1:39–40, 2:11.
`C. 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
`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.
`
`
`
`4
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`D. References
`
`Petitioner relies upon the following references:
`Johnston
`US 3,875,623
`Apr. 8, 1975
`Mariol
`US 4,985,948
`Jan. 22, 1991
`Tharalson et al.
`US 5,845,349
`Dec. 8, 1998
`Pasin
`US 6,004,182
`Dec. 21, 1999
`Rexroad
`US 6,076,448
`June 20, 2000
`Hartenstine
`US 6,510,570 B2
`Jan. 28, 2003
`Stoeckler
`US 7,063,096 B2
`June 20, 2006
`
`
`Ex. 1006
`Ex. 1003
`Ex. 1012
`Ex. 1009
`Ex. 1011
`Ex. 1013
`Ex. 1010
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–18 of the ’180 patent based on the
`asserted grounds of unpatentability set forth in the table below. Pet. 9, 28–
`59.
`Reference(s)
`Mariol and Pasin
`Mariol and Stoeckler
`Mariol and Rexroad
`Mariol and Johnston
`Tharalson
`Mariol, Pasin, and Hartenstine
`Mariol, Stoeckler, and
`Hartenstine
`Mariol, Rexroad, and Hartenstine § 103(a) 5 and 15
`
`Claims Challenged
`Basis
`§ 103(a) 1–4, 6–14, and 16–18
`§ 103(a) 1–4, 6–14, and 16–18
`§ 103(a) 1–4, 6–8, 10–14, 16, and 18
`§ 103(a) 1–8, 10–16, and 18
`§ 102
`7 and 8
`§ 103(a) 5 and 15
`§ 103(a) 5 and 15
`
`
`
`II. CLAIM CONSTRUCTION
`Petitioner proposes to construe the terms “enclosure,” “frameless
`enclosure,” and “corner bead” to mean, respectively, “something that
`encloses,” “an enclosure without a frame,” and “a bead at a corner.”
`Pet. 10–12. Patent Owner does not address Petitioner’s proposed
`
`
`
`5
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`constructions or offer alternative constructions for these claim terms.
`Prelim. Resp. 1.
`Based on the evidence of record, and for purposes of this Decision, we
`determine that the plain and ordinary meanings of the terms “enclosure,”
`“frameless enclosure,” and “corner bead” are readily apparent such that
`express constructions are not warranted. Furthermore, we determine that no
`other terms or phrases of the challenged claims require express constructions
`at this time.
`
`III. ANALYSIS
`A. Unpatentability Grounds Based on Mariol in View of Each of Pasin,
`Stoeckler, Rexroad, and Johnston
`
`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 allegedly
`teach the claimed subject matter and relies upon the Declaration of Mr. Bert
`L. Reiner (Ex. 1002, hereinafter, the “Reiner Declaration”) to support its
`positions. Pet. 13–51. Petitioner’s analysis, claim mapping, and supporting
`evidence have not been addressed substantively by Patent Owner at this
`stage of the proceeding. See Prelim. Resp. 1 (“In this Preliminary Response,
`Patent Owner does not substantively address the claim construction or
`obviousness arguments presented in the Petition.”). On this record, we are
`persuaded by Petitioner’s explanation and supporting evidence.
`
`
`
`6
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`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. Petitioner’s Contentions with Respect to Mariol
`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
`
`
`
`
`
`7
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`respect to each other.” Id. at 4:40–43. The playyard also includes “fabric
`assembly 50.” Id. at 5:20–25.
`Petitioner argues Mariol’s “upper horizontal support 14” and “lower
`horizontal support 16” teach the claimed upper and lower frames,
`respectively, recited in claims 1, 7, and 11. Pet. 13–14. Petitioner argues
`Mariol teaches these supports are “collapsible,” as recited in claims 1 and
`11, because they include hinges 60 and 24 that permit the supports to be
`folded. Id. at 14 (citing Ex. 1003, 4:44–56, 5:51–54, Fig. 1). Citing
`Mariol’s disclosure that the play yard can be “in an unfolded condition for
`operation and use” and “in a folded condition for storage,” Petitioner argues
`frame assembly 12 is “movable between an erected position and a collapsed
`position,” as recited in claim 7. Id. at 14 (citing Ex. 1003, 2:65–67).
`Petitioner argues 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, which are described as
`“vertical tubes,” have inner channels. Id. at 14–15 (quoting Ex. 1003,
`Abstract; citing Ex. 1003, Fig. 8; Ex. 1002 ¶¶ 34–35).
`Petitioner also argues 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
`
`
`
`8
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`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). Indeed, 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.
`Claims 1 and 11 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 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—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 corner beads.
`Pet. 18, 28–43.
`Next, we discuss Petitioner’s contentions with respect to Pasin,
`Stoeckler, Rexroad, and Johnston before turning to Petitioner’s rationale to
`combine.
`
`
`
`9
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`b. Petitioner’s Contentions with Respect to 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, 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.
`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. Pasin
`discloses:
`[E]ach 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.
`Id. at 3:9–16.
`
`
`
`10
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`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 and 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).
`
`c. Petitioner’s Contentions with Respect to 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. Stoeckler discloses “[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
`narrow than the cross-sectional area for the receipt of the keder profile.” Id.
`at 2:32–36.
`Figures 3 and 5 of Stoeckler are reproduced below:
`
`
`
`
`
`11
`
`
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`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 argues 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).
`
`d. Petitioner’s Contentions with Respect to 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. 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. Id. at 8:38–54. Referring
`to Figure 17B, Rexroad discloses:
`
`
`
`12
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`[M]ember 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.
`Id. at 8:64–9:3.
`Petitioner argues Rexroad’s 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).
`
`e. Petitioner’s Contentions with Respect to 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. Referring to
`Figure 2, Johnston discloses that “[t]wo sheets of fabric 4 are formed along
`edge portions to be joined with integral enlarged beads 5. The bead 5 of
`13
`
`
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`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.”
`Id. at 2:12–17. 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.
`Petitioner argues 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).
`
`f. Petitioner’s Rationales to Combine
`Petitioner presents a number of articulated reasons with rational
`underpinnings to support its argument that it would have been obvious to a
`person of ordinary skill in the art to modify Mariol to incorporate corner
`beads, as taught in Pasin, Stoeckler, Rexroad, and Johnston. Pet. 18–27.
`For example, Petitioner argues 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. Citing the
`testimony of its declarant, Mr. Reiner, Petitioner contends 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 presents additional reasons why its proposed modification of
`Mariol with the corner beads, as taught in Pasin, Stoeckler, Rexroad, and
`Johnston would have been obvious. See Pet. 21–27. On the current record,
`we are persuaded that Petitioner has presented a sufficient rationale to
`combine the teachings of Mariol with those of Pasin, Stoeckler, Rexroad,
`and Johnston.
`
`
`
`14
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`g. Conclusion as to Independent Claims 1, 7, and 11
`
`Petitioner’s explanation that claims 1, 7, and 11 would have been
`unpatentable over Mariol in view of each of Pasin, Stoeckler, Rexroad, and
`Johnston is supported by the record and persuasive at this stage in the
`proceeding. Thus, Petitioner has demonstrated a reasonable likelihood of
`prevailing on its assertion that independent claims 1, 7, and 11 would have
`been unpatentable over Mariol in view of each of Pasin, Stoeckler, Rexroad,
`and Johnston.
`
`2. Dependent Claims
`Petitioner further contends (1) dependent claims 2–4, 6, 8–10, 12–14,
`and 16–18 would have been obvious over Mariol in view of each of Pasin
`and Stoeckler; (2) dependent claims 2–4, 6, 8, 10, 12–14, 16, and 18 would
`have been obvious over Mariol in view of Rexroad; and (3) dependent
`claims 2–6, 8, 10, 12–16, and 18 would have been obvious over Mariol in
`view of Johnston. Pet. 43–51.
`Based on our review of Petitioner’s explanations and supporting
`evidence, which have not been addressed substantively by Patent Owner at
`this stage of the proceeding (see generally Prelim. Resp. 1–5), we are
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on its assertions that dependent claims 2–6, 8–10, and 12–18
`would have been obvious over the cited art.
`
`B. Unpatentability Grounds Based on Mariol in Combination with Each
`of Pasin, Stoeckler, and Rexroad, in Further View of Hartenstine
`
`Claim 5 depends from claim 4 and recites that “the channels follow
`curvatures of the posts.” Ex. 1001, 6:54–55. Claim 15 depends from claim
`14 and recites that “the channels follow respective curvatures of the posts.”
`15
`
`
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`Id. at 8:10–11 (emphasis added). Petitioner argues “Mariol does not
`explicitly disclose longitudinally-curved posts, though it does not explicitly
`mandate that the posts must be straight up-and-down either.” Pet. 57.
`Petitioner cites Hartenstine’s disclosure of a play yard with longitudinally-
`curved posts (legs 26) in Figures 2 and 3. Id. at 58. Petitoner argues it
`would have been obvious to a person of ordinary skill in the art “to modify
`Mariol’s vertical support rails 18 to be longitudinally-curved like
`Hartenstine’s legs 26” and, in that configuration, it would have been obvious
`“to have the channel for the corner bead run along the post,” i.e., follow
`curvatures of the posts. Id. Petitioner presents articulated reasoning with
`rational underpinning to support its obviousness argument, including that
`there are a finite number of design options for posts (straight or curved) and
`that modifying Mariol’s posts to be longitudinally-curved, as taught in
`Hartenstine, would yield predictable results. Id. at 58–59 (citing Ex. 1002
`¶ 80).
`Thus, Petitioner contends that Mariol in combination with each of
`Pasin, Stoeckler, and Rexroad, as explained in its contentions for claims 1, 4,
`11, and 14, in further view of Hartenstine renders obvious the subject matter
`of claims 5 and 15. Pet. 57–59. Petitioner’s explanation is supported by the
`record and persuasive at this stage of the proceeding. Consequently,
`Petitioner demonstrates a reasonable likelihood that it would prevail on its
`assertion that claims 5 and 15 would have been unpatentable over Mariol in
`combination with each of Pasin, Stoeckler, and Rexroad, in further view of
`Hartenstine.
`
`
`
`16
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`C. Unpatentability Ground Based on Tharalson
`
`Petitioner contends that independent claim 7 and dependent claim 8
`are anticipated by Tharalson. Pet. 9, 51–57. Tharalson discloses a playpen
`that can be converted into other configurations, including “a bassinet,
`changing table, or child’s bed-side sleeping enclosure.” Ex. 1012, 1:8–12.
`Figure 1 of Tharalson is reproduced below:
`
`
`Figure 1 depicts the playpen disclosed in Tharalson. Id. at 4:64–65. The
`playpen has a “frame assembly” having “upper horizontal rails 39,” “lower
`horizontal rails 32,” “front vertical rails 53,” and “back vertical rails 34.” Id.
`at 5:61–6:22, Fig. 1. The playpen has an “enclosure composed of four
`vertical panels, the front panel 43, back panel 44, two side panels 45, and
`two horizontal floor panels, the upper floor panel 46 and lower floor panel
`47.” Id. at 6:30–33. “The upper floor panel 46 is stitched to the bottom of
`each vertical panel (43, 44 and 45) and forms the floor of the unit . . . .” Id.
`at 6:38–40.
`
`
`
`17
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`Petitioner argues Tharalson’s “upper horizontal rails 39” and “lower
`horizontal rails 32” disclose an upper frame and a lower frame, respectively.
`Pet. 51 (citing Ex. 1002 ¶ 87). Citing Tharalson’s disclosure that the play
`pen can be folded and “collapse[d] inwardly into a compact unit,” Petitioner
`argues the frame assembly is “movable between an erected position and a
`collapsed position.” Id. at 52–53 (quoting Ex. 1012, 6:51–57; Ex. 1002
`¶ 88). Petitioner argues Tharalson’s vertical rails 53 and 34 disclose posts
`“positioned between the upper frame and the lower frame,” as recited in
`claim 7. Id. at 51–52 (citing Ex. 1002 ¶ 87). Petitioner contends Tharalson
`discloses an enclosure in which “floor panel 46 constitutes the bottom side
`of the enclosure, and the vertical panels 43, 44, and 45 constitute a first side,
`a second side, a third side, and a fourth side of the enclosure.” Id. at 53
`(citing Ex. 1002 ¶ 89). Petitioner argues the enclosure is “flexible” because
`the components of the enclosure are made of fabric. Id. at 53–54 (citing Ex.
`1012, 6:33–36, 40–42, 10:5–9; Ex. 1002 ¶ 90); see Ex. 1012, 10:5–6 (“The
`fabric of the sides, floors and enclosure must be strong, durable and
`washable”).
`Petitioner contends Tharalson discloses front vertical rails 53 have “an
`inner portion including a channel” in which a “corner bead” is threaded “to
`couple the enclosure to the post,” as required by claim 7. Pet. 54–56.
`Figures 4, 5, and 6 of Tharalson are reproduced below:
`
`
`
`
`
`
`
`
`
`18
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`Figure 4 depicts an enlarged view of the right front upper corner designated
`“4” in Figure 1. Ex. 1012, 5:5–7. Figure 5 “is a perspective view of the
`male and female components of the right front upper corner of FIG. 4 in
`separated configuration,” and Figure 6 “is a sectional view through line 6—6
`of” Figure 5. Id. at 5:8–11.
`Referring to Figure 6, Petitioner argues “[t]he inner walls of the open
`channels 83 in the female sections 37 constitute inner portions of the vertical
`rails 53.” Pet. 55 (citing Ex. 1002 ¶ 94). Petitioner also argues “female
`receiver 54” on each of front vertical rails 53, as depicted in Figure 3,
`discloses an inner portion on the rail including a channel. Id. at 55–56
`(citing Ex. 1012, 7:46–50, Fig. 3; Ex. 1002 ¶ 95). Petitioner argues that the
`elongate projection on “male section 38,” depicted in Figure 6, discloses a
`“corner bead.” Id. at 54–55 (citing Ex. 1002 ¶ 92). Petitioner contends “the
`elongate projections on the male sections 38 can be slidably threaded into
`the channels in the respective female section 37 or female receiver 54 to
`couple the front panel 43 of the enclosure to the front vertical posts 53 of the
`frame assembly,” thereby disclosing “a corner bead threaded into the
`channel to couple the enclosure to the post,” as recited in claim 7. Id. at 56
`(citing Ex. 1012, 6:4–52; Ex. 1002 ¶ 93).
`Claim 8 depends from claim 7 and recites that “the enclosure extends
`along the post between the upper frame and the lower frame.” Ex. 1001,
`7:4–6. Petitioner contends Tharalson discloses side panels 43, 44, and 45 of
`
`
`2 Petitioner mistakenly cites column 6, lines 49–50 for the cited material.
`Instead, based on our review of the arguments presented in Petition and the
`relevant disclosures in Tharalson, we presume Petitioner intended to cite to
`column 6, lines 4–5.
`
`
`
`19
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`the enclosure extending along front vertical rails 53 from lower horizontal
`rail 32 to upper horizontal rail 39. Pet. 57 (citing Ex. 1012, 6:33–36;
`Ex. 1002 ¶ 97).
`Petitioner’s explanation that claims 7 and 8 are anticipated by
`Tharalson, which has not been addressed substantively by Patent Owner at
`this stage of the proceeding (see generally Prelim. Resp. 1–5), is supported
`by the record and persuasive at this stage. Thus, Petitioner has demonstrated
`a reasonable likelihood of prevailing on its assertion that claims 7 and 8 are
`anticipated by Tharalson.3
`
`D. Patent Owner’s Arguments Regarding Redundancy
`Patent Owner requests that we deny institution as to those grounds
`that rely on the Stoeckler, Rexroad, and Johnston references under 37 C.F.R.
`§ 42.108, arguing: “Petitioner has not shown that the proposed grounds for
`rejection using the Stoeckler, Rexroad, and Johnston references have a
`meaningful distinction from the proposed rejections using the Pasin
`reference, and are therefore not entitled to consideration.” Prelim. Resp. 5.
`We disagree.
`In our view, Johnston is not redundant of Pasin for at least the reason
`that Petitioner relies on Johnston, but not Pasin, for teaching the limitations
`recited in claims 5 and 15. See Pet. 48–49. With respect to Stoeckler and
`Rexroad, Petitioner offers some rationale for why each reference “is
`
`
`3 Petitioner’s statement that “claim 11 is anticipated by Tharalson for the
`identical reasons set forth above with respect to independent claim 1”
`(Pet. 56) appears to be a typographical error because Petitioner does not
`allege claim 1 is anticipated by Tharalson. See Pet. 9, 51–57. Accordingly,
`we do not consider claims 1 and 11 to be challenged as anticipated by
`Tharalson.
`
`
`
`20
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`arguably superior to the others.” Id. at 59–60. For example, Petitioner
`argues Stoeckler uses the same terminology (“bead”) as the ’180 patent, and
`Petitioner argues Rexroad teaches one channel for attaching two sides, a
`feature relevant to claims 6, 10, and 13. Id. at 47, 59–60. Patent Owner
`counters that each purported advantage of Stoeckler and Rexroad also is
`found in Pasin. Prelim. Resp. 4–5 (citing Pet. 59; Ex. 1009, 1:26–29).
`However, Patent Owner does not cite a disclosure in Pasin that uses the term
`“bead,” and Patent Owner has not explained how the cited passage of Pasin
`teaches one channel for attaching two sides. See id.
`Because Petitioner has demonstrated a reasonable likelihood of
`prevailing on each of its asserted grounds based on Pasin, Stoeckler,
`Rexroad, and Johnston, and arguably has identified the relative strengths or
`weaknesses of these prior art references as they relate to certain limitations,
`we decline to exercise our discretion under 37 C.F.R. § 42.108 and deny
`institution as to the grounds based on Stoeckler, Rexroad, and Johnston for
`alleged “redundancy.”
`
`
`IV. CONCLUSION
`For the foregoing reasons, we conclude that the information presented
`in the Petition establishes that there is a reasonable likelihood that Petitioner
`would prevail in showing that claims 1–18 of the ’180 patent are
`unpatentable under 35 U.S.C. § 103(a) and that claims 7 and 8 are
`anticipated under 35 U.S.C. § 102. However, we have not made a final
`determination with respect to the patentability of these challenged claims.
`
`
`
`
`21
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1–18 of the ’180 patent on the
`following grounds:
`A. Claims 1–4, 6–14, and 16–18 as unpatentable under U.S.C.
`§ 103(a) over the combination of Mariol and Pasin;
`B. Claims 1–4, 6–14, and 16–18 as unpatentable under U.S.C.
`§ 103(a) over the combination of Mariol and Stoeckler; and
`C. Claims 1–4, 6–8, 10–14, 16, and 18 as unpatentable under U.S.C.
`§ 103(a) over the combination of Mariol and Rexroad; and
`D. Claims 1–8, 10–16, and 18 as unpatentable under U.S.C. § 103(a)
`over the combination of Mariol and Johnston;
`E. Claims 5 and 15 as unpatentable under U.S.C. § 103(a) over the
`combination of Mariol, Pasin, and Hartenstine;
`F. Claims 5 and 15 as unpatentable under U.S.C. § 103(a) over the
`combination of Mariol, Stoeckler, and Hartenstine;
`G. Claims 5 and 15 as unpatentable under U.S.C. § 103(a) over the
`combination of Mariol, Rexroad, and Hartenstine; and
`H. Claims 7 and 8 as anticipated under U.S.C. § 102 by Tharalson.
`FURTHERED ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
`will commence on the entry date of this decision.
`
`
`
`
`
`
`22
`
`
`
`IPR2016-00352
`Patent 9,027,180 B2
`
`PETITIONER:
`Mark Knedeisen
`mark.knedeisen@klgates.com
`
`Jason Engel
`jason.engel.PTAB@klgates.com
`
`Laurén Murray
`lauren.murray@klgates.com
`
`
`
`PATENT OWNER:
`Brian Lynch
`yttriumnitrate@gmail.com
`
`
`
`
`23
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
