UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
` ____________
`
`BOBA, INC.
`Petitioner
`
`v.
`
`THE ERGO BABY CARRIER, INC.
`PO
`
`____________
`
`Case No. TBD
`Patent No. 8,590,757
` ____________
`
`
`
` PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,590,757
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`
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`
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`
`
`
`TABLE OF CONTENTS
`
`Identification of Challenge (37 C.F.R. §42.104(b)) and Relief Requested
`
`I. INTRODUCTION ................................................................................................... 1
`II. SUMMARY OF THE ‘757 PATENT ....................................................................... 1
`A. Description of the Alleged Invention ...................................................... 1
`B. Summary of the Prosecution History ...................................................... 1
`III. REQUIREMENTS UNDER 37 C.F.R. §42.104 .................................................... 4
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ........................................ 4
`B.
` .............................................................................................................. 4
`1. Grounds For Challenge .................................................................. 4
`2. Level of Skill of a Person Having Ordinary Skill in the Art ......... 6
`3. Claim Construction Under 37 C.F.R. §42.104(b)(3) ..................... 6
`IV. THERE IS A REASONABLE LIKELIHOOD THAT CLAIMS 1-23 OF THE ‘757
`PATENT ARE UNPATENTABLE ...................................................................... 16
`A. Matey in view of Pettersen Renders Claims 1, 8-15, and 21-23 Obvious
`Under 35 U.S.C. §103(a) .................................................................... 16
`B. Matey in view of Pettersen in further view of Fair Renders Claim 2-4
`Obvious Under 35 U.S.C. §103(a) ..................................................... 42
`C. Matey in view of Pettersen in further view of Trekker Renders Claim 5-
`7 and 14 Obvious Under 35 U.S.C. §103(a) ...................................... 46
`D. Matey in view of Pettersen in further view of Christopher Renders
`Claims 16-17 Obvious Under 35 U.S.C. §103(a) .............................. 51
`E. Matey in view of Pettersen in further view of Fair and Trekker Renders
`Claims 18-20 Obvious Under 35 U.S.C. §103(a) .............................. 54
`F. Pettersen in view of Matey Renders Claims 1, 8-15, and 21-23 Obvious
`Under 35 U.S.C. §103(a) .................................................................... 59
`G. Pettersen in view of Matey in further view of Fair Renders Claim 2-4
`Obvious Under 35 U.S.C. §103(a) ..................................................... 77
`H. Pettersen in view of Matey in further view of Trekker Renders Claim 5-
`7, 10, and 14 Obvious Under 35 U.S.C. §103(a) ............................... 78
`
`
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`
`I. Pettersen in view of Matey in further view of Christopher Renders
`Claims 16-17 Obvious Under 35 U.S.C. §103(a) .............................. 80
`J. Pettersen in view of Matey in further view of Fair and Trekker Renders
`Claims 18-20 Obvious Under 35 U.S.C. §103(a) .............................. 82
`V. SECONDARY CONSIDERATIONS ....................................................................... 84
`VI. NO REDUNDANCY GROUNDS ......................................................................... 88
`VII. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(A)(1) ................................ 88
`A. Real Party-In-Interest and Related Matters ........................................... 88
`B. Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) .................... 89
`C. Notice of Service Information (37 C.F.R. § 42.8(b)(4)): ...................... 89
`D. Payment of Fees Under 37 C.F.R. §42.103 ........................................... 89
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` 2
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`
`I.
`
`Introduction
`
`Boba, Inc. (“Petitioner”) requests Inter Partes Review (“IPR”) of claims 1-
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`23 of US 8,590,757 (“the ‘757 Patent”) issued on November 26, 2013 and assigned
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`to The Ergobaby Carrier, Inc. (“PO”). Ex. 1001, ‘757 Patent.
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`II.
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`Summary of the ‘757 Patent
`A. Description of the Alleged Invention
`
`The ‘757 Patent discloses a child carrier that can be mounted on the front or
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`back of the wearer. Id. at Abstract, 1:16-18, Figs. 1, 2. The carrier includes an
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`adjustable waistband 20, a main panel 23, and adjustable shoulder straps 34 and
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`35, which couple to the main panel at 44, away from its bottom edge.
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`
`
`
`
`
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` Id. at Figs. 3, 1; also 2:65-3:24, 3:37-46.
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`B.
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`Summary of the Prosecution History
`
`The ‘757 Patent was filed December 3, 2007; is a continuation of US
`
`
`
` 1
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`7,322,498, filed September 9, 2004; and claims priority to Provisional Application
`
`60/501,396, filed September 10, 2003 (Ex. 1005, Provisional Application). Ex.
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`1001.
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`On October 6, 2009, as-filed claims 1-17 were rejected as obvious over
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`various prior art references. Ex. 1002,‘757 History, 10/6/2009 Rejection.
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`In response, PO cancelled claims 1-17 and added new claims 18-37,
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`including independent claims 18 and 36. Id. at 1/6/2010 Amendment. PO argued
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`that the prior art did not teach: 1) “the wearer’s torso is substantially open to the
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`area that carries the child”; 2) “both ends of each shoulder strap can couple to the
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`same side of the main panel,” and 3) “the first ends of each shoulder strap [] lift the
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`main panel to the outer side of the child carrying area.” Id. at pp.8-10.
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`On April 28, 2010, the Examiner rejected all claims, primarily as anticipated
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`by or obvious over US2002/0011503 (“Hwang”). Id. at 4/28/2010 Rejection.
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`PO then amended independent claims 18 and 34 to require, in part, “the
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`child carrier is configured to distribute the child’s weight to the wearer’s hips
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`through the waistband.” Id. at 7/28/2010 Amendment, pp.2, 5. PO argued that
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`Hwang does not teach: 1) “Distributing a Child’s Weight to the Wearer’s Hips”
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`(id. pp.8-10); and 2) “A Carrier Adapted to be Worn in Front and Rear Carrying
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`Positions” (id. pp.10-11).
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`On October 4, 2010, the Examiner rejected the claims, primarily as obvious
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`
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` 2
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`over US 4,492,326 (“Storm”) in view of Hwang. Id. at 10/4/2010 Rejection.
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`PO amended independent claims 18 and 34 to require, in part, “the main
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`panel so dimensioned to overhang the waistband to form a sling adapted to support
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`a majority of the child’s weight through the child’s hips and thighs” and “the width
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`of the bottom edge of the main panel is greater than a distance between the upper
`
`ends of the first and second shoulder straps.” Id. at 4/4/2011 Amendment, pp.1-2,
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`4-5. PO amended claim 18 to require the child carrier be configured to distribute
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`“at least a majority” of the child’s weight to the wearer’s hips through the
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`“waistband.” Id.
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`The Examiner again rejected all claims, primarily as anticipated by US
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`3,481,517 (“Aukerman”). Id. at 7/18/2011 Rejection.
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`PO amended independent claims 18 and 34 to require the “child carrying
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`area” be “open to the wearer’s torso,” and the upper ends of the shoulder straps be
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`coupled to the main panel “on a side of the child carrying area that is away from
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`the wearer when the child carrier is worn.” Id. at 11/18/2011 Amendment. PO also
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`added new independent claim 46 (corresponding to issued claim 21), which did not
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`include these limitations. Id. at pp.6-7.
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`The amended and new claims were allowed. Id. at 10/9/2012 Allowance. PO
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`then submitted an RCE and IDS, requesting the Examiner consider “evidence filed
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`against counterpart European Patent No. EP176512381 by a third party.” Id. at
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` 3
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`1/9/2013 RCE. A second Notice of Allowance issued on July 5, 2013. Id. at
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`7/5/2013 Allowance. The ‘757 Patent issued on November 26, 2013.
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`US 9,022,260 (“Child ‘260 Patent”) and US 9,380,887 (“Child ‘887 Patent”)
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`claim priority as continuation applications to the ‘757 Patent and include
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`substantially similar claims. Ex. 1003, Child ‘260 Patent; Ex. 1004, Child ‘260
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`History; Ex. 1006, Child ‘887 Patent; Ex. 1007, Child ‘887 History.
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`III. Requirements under 37 C.F.R. §42.104
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`
`Petitioner certifies that the ‘757 Patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting IPR challenging the claims.
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`Petitioner is not the owner of the ‘757 Patent. Petitioner has not filed a civil action
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`challenging the validity of any claim of the ‘757 Patent. This Petition is filed less
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`than one year after Petitioner was served with a complaint alleging infringement of
`
`the ‘757 Patent.
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`B.
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`Identification of Challenge (37 C.F.R. §42.104(b)) and Relief
`Requested
`
`In view of the prior art, evidence, and claims charts, claims 1-23 of the ‘757
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`Patent are unpatentable and should be cancelled. 37 C.F.R. §42.104(b)(1).
`
`1. Grounds For Challenge
`
`Based on the prior art identified below, IPR of claims 1-23 should be
`
`granted. 37 C.F.R. §42.104(b)(2). The review of patentability of claims 1-23 of the
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` 4
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`‘757 Patent is governed by pre-AIA 35 U.S.C. §§102 and 103.
`
` ‘757 Patent
`Proposed Statutory Rejections
`Claims
`1, 8-15, 21-23 Obvious under §103(a) over Matey [Ex. 1008] in view of
`Pettersen [Ex. 1009].
`
`2-4
`
`5-7, 14
`
`16-17
`
`18-20
`
`Obvious under §103(a) over Matey in view of Pettersen in
`further view of Fair [Ex. 1010].
`
`Obvious under §103(a) over Matey in view of Pettersen in
`further view of Trekker [Ex. 1011].
`
`Obvious under §103(a) over Matey in view of Pettersen in
`further view of Christopher [Ex. 1012].
`
`Obvious under §103(a) over Matey in view of Pettersen in
`further view of Fair and Trekker.
`
`1, 8-15, 21-23 Obvious under §103(a) over Pettersen in view of Matey.
`
`2-4
`
`Obvious under §103(a) over Pettersen in view of Matey in
`further view of Fair.
`
`5-7, 10, 14
`
`Obvious under §103(a) over Pettersen in view of Matey in
`further view of Trekker.
`
`16-17
`
`18-20
`
`Obvious under §103(a) over Pettersen in view of Matey in
`further view of Christopher.
`
`Obvious under §103(a) over Pettersen in view of Matey in
`further view of Fair and Trekker.
`
`
`Section IV identifies where each element of claims 1-23 is found in the prior
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`art patents and printed publications. 37 C.F.R. §42.104(b)(4). Exhibit numbers of
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`supporting evidence relied upon to support the challenges are provided above and
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`the relevance of the evidence to the challenges raised are provided in Section IV.
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`
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` 5
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`37 C.F.R. §42.104(b)(5). Exhibits 1001 – 1085 are also attached.
`
`2.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
`
`A person having ordinary skill in the art (“POSITA”) at the time of the
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`alleged invention of the ‘757 Patent (September 10, 2003) would have had at least
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`a bachelor’s degree in physics, biomechanics, ergonomics or a related field or an
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`equivalent number of years of working experience, in addition to one year of
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`biomechanics or ergonomics industry experience. Ex. 1013, Declaration of
`
`Richard N. Hinrichs, Ph.D. (“Hinrichs Decl.”) ¶¶22-25.
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`3.
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`Claim Construction Under 37 C.F.R. §42.104(b)(3)
`
`A claim subject to IPR receives the “broadest reasonable construction in
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`light of the specification of the patent in which it appears.” 37 C.F.R. §42.100(b).
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`Unless noted otherwise, Petitioner proposes, for purposes of IPR only, that the
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`claim terms of the ‘757 Patent are presumed to take on their ordinary and
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`customary meaning that the term would have to a POSITA. The claim
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`construction analysis is not, a concession by Petitioner as to the proper scope of
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`any claim term in litigation, and does not waive any argument in litigation that
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`claim terms in the ‘757 Patent are indefinite or otherwise invalid or unpatentable.
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`To the contrary, Petitioner notes that the challenged claims lack supporting written
`
`description, enablement and/or are indefinite pursuant to 35 U.S.C. §112.
`
`
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` 6
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`the child carrier is configured to distribute
`
`
`(a)
`
`-a majority of the child’s weight (claim 1)
`
`-70-90% of a child’s weight (claims 15, 22)
`
`-the child’s weight (claim 18)
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`to the wearer’s hips through the waistband
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`Petitioner submits that these clauses are not entitled to patentable weight
`
`because they are statements of a desired result, rather than an apparatus or specific
`
`structure to accomplish the desired result. Hewlett-Packard Co. v. Bausch & Lomb
`
`Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)(“[A]pparatus claims cover what a
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`device is, not what a device does.”); In re Schreiber, 128 F.3d at 1478–1479 (Fed.
`
`Cir. 1997)(“choosing to define an element functionally, i.e., by what it does,
`
`carries with it a risk,” as functional language is not given patentable weight if the
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`prior art structure can inherently perform the function); Euramax International,
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`Inc. v. Invisaflow, LLC, IPR2016–00423, Paper No. 9 at 8-9 (PTAB June 1,
`
`2016)(instituting IPR proceeding, language describing intended use of apparatus
`
`not entitled to patentable weight).
`
`During prosecution, PO amended the claims to require the shoulder straps be
`
`coupled “away from the bottom edge of the main panel” and that the child carrier
`
`is configured to “distribute the child’s weight to the wearer’s hips through the
`
`waistband.” Ex. 1002, ‘757 History at 7/28/2010 Amendment, pp.2, 4-5, 9. PO
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`then argued that the Figure 3 “harness arrangement” (below) – of (1) shoulder
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`
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` 7
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`straps in which “bottom ends [] are coupled to the main panel some distance away
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`from the bottom edge of the main panel,” and (2) a waistband “coupled to the
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`bottom edge of the main panel” – means that “[t]he waistband provides support
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`and therefore distributes the child’s weight to the wearer’s hips.” Id. at pp.8, 9;
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`also p.10.
`
`Adjustable Shoulder Straps
`Couple Away from the
`Bottom of the Carrier
`
`
`
`
`
`Adjustable Waistband
`Provides the Support at Bottom Edge of Main Panel
`
`
`
`Ex. 1001 at Fig. 3.
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`Subsequently,
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`the Examiner found
`
`that prior art references Storm,
`
`Auckerman, and Krich included an adjustable waistband and adjustable shoulder
`
`straps coupled away from the bottom edge of the main panel:
`
`
`
` 8
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`
`Ex. 1014, Storm Fig. 1 (left) and Ex. 1015, Aukerman Fig. 5 (right).
`
`
`
`
`
`
`
`
`
`
`
`Ex. 1016, Krich Fig. 1. The Examiner determined that the “waistband and
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`shoulder straps taught by [Storm and Aukerman] are adjustable such that by some
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`configuration of tightening or loosening each strap/band the carrier could distribute
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`the weight as claimed.” Ex. 1002, ‘757 History at 10/4/2010 Rejection, p.6 and
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`7/18/2011 Rejection, p.4; see generally 10/4/2010 Rejection, pp.5-6, 7/18/2011
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`Rejection, p.8. Noting that the “ability of the weight to be distributed as such is
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`largely dependent on the orientation, size, and weight of the child being carried,”
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`the Examiner determined that the weight distribution limitations were “functional
`
`
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` 9
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`language” and “deemed not to impose any patentably distinguishing structure
`
`over” the prior art. Id. at 10/4/2010 Rejection, pp.5, 6 (Storm and Auckerman); id.
`
`at 7/18/2011 Rejection, pp.4, 8 (same); also Ex. 1007, Child ‘887 History at
`
`11/27/2015 Rejection, pp.2-3 (Krich). PO has never disputed the Examiner’s
`
`determinations.
`
`
`
`Moreover, the ‘757 Patent provides no guidance for how the claimed carrier
`
`can be configured such that “a majority of” (claim 1) or “70-90% of” (claims 15
`
`and 22) or “the” (claim 18) child’s weight is distributed to the wearer’s hips
`
`through the waistband. Accordingly, these limitations are purely functional and
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`should be afforded no patentable weight.
`
`
`(b)
`
`“adapted to support a majority of the child’s weight through the
`child’s hips and thighs” (claims 1, 18, 23)
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`Like the weight distribution limitations in Section III.B.3(a), this limitation
`
`is not entitled to patentable weight because it is also a statement of a desired result,
`
`rather than an apparatus or specific structure to accomplish the desired result.
`
`During prosecution, the Examiner found this limitation to be functional and
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`entitled to no patentable weight. Ex. 1002, ‘757 History at 7/18/2011 Rejection,
`
`p.4; Ex. 1004, Child ‘260 History at 7/9/2014 Rejection, p.4; Ex. 1007, Child ‘887
`
`History at 11/27/2015 Rejection, pp.2-3; id. at 5/22/2015 Rejection, p.4. Patent
`
`Owner did not dispute this determination.
`
`Moreover, the ‘757 Patent provides no guidance for how the claimed carrier
`
`
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` 10
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`is “adapted to support a majority of the child's weight through the child's hips and
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`thighs” and states only: “The sling provides ample support for the child’s buttocks
`
`as well as for the back of the child’s legs.” Ex. 1001 at 3:23-24; also 5:49-54 (“It
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`will be appreciated that the child is secured in the baby carrier in a seated position,
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`with most of the child’s weight being dispersed through the hips and thighs,
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`thereby substantially eliminating compression of the spine (and potentially hip
`
`dysphasia) that occurs when a child is hanging in the carrier by the crotch.”). Also
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`Ex. 1002, ‘757 History at 4/4/2011 Amendment, pp.2, 4-5, 10-11. Accordingly,
`
`this limitation is purely functional and should be afforded no patentable weight.
`
`(c)
`
`
`
`“the child carrier is adapted to allow the wearer to [selectively]
`support the child in a position facing a front side of the wearer’s
`torso or in a position facing a back side of the wearer’s torso”
`(claims 1 and 18)
`
`“the child carrier is adapted to allow the wearer to select whether
`to support the child in a position facing the front side of the
`wearer's torso or the back side of the wearer's torso without
`modifying the configuration of the shoulder straps and waistband
`relative to the main panel” (claim 14)
`
`“wherein the child carrier is adapted to allow the wearer to select
`whether to support the child in a position facing the front side of
`the wearer's torso or a back side of the wearer's torso without
`modifying the configuration of the shoulder straps and waistband
`relative to the main panel while maintaining the child in a posture
`that supports the child's weight on the child's hips and thighs”
`(claim 20)
`
`Petitioner submits these limitations are not entitled to patentable weight
`
`because, as discussed in Sections III.B.3(a) and III.B.3(b), these limitations are
`
`
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` 11
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`statements of a desired result, rather than an apparatus or specific structure to
`
`accomplish the desired result. The USPTO found these limitations to be functional
`
`and entitled to no patentable weight. Ex. 1002, ‘757 History at 10/4/2010
`
`Rejection, p.5; id. at 7/18/2011 Rejection, p.4, 8; Ex. 1004, Child ‘260 History at
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`7/19/2014 Rejection, p.4; Ex. 1007, Child ‘887 History 5/22/2015 Rejection, p.4;
`
`id. at 11/27/2015 Rejection, p.3.
`
`
`(d)
`
`“a distance between the upper ends of the first and second
`shoulder straps” (claims 1, 21)
`
`“the distance between the first ends of the first and second
`shoulder straps” (claim 18)
`
`This limitation was added by amendment during prosecution. Ex. 1002, ‘757
`
`History at 4/4/2011 Amendment, pp.1-2, 4-5. The ‘757 patent specification
`
`discloses the upper “end” of each shoulder strap as being the area depicted as item
`
`43 in Figure 3:
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`
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` 12
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`
`
`
`Ex. 1001 at 3:40-42, Fig. 3. In the litigation, the parties disagree as to the plain and
`
`ordinary meaning of the phrase, as used in claims 1 and 21 and pursuant to the
`
`prosecution history. PO contends that this limitation should be construed as “a
`
`distance extending from the innermost point of the [upper/first] end of the first
`
`shoulder strap to the innermost point of the [upper/first] end of the second shoulder
`
`strap.” Petitioner thus contends that the broadest reasonable interpretation of “a
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`distance” or “the distance” between the upper/first ends of the shoulder straps
`
`should at least include a distance extending from the innermost points of the
`
`upper/first ends of the first and second shoulder strap.
`
`(e)
`
`
`
`“substantially rectangular” (claim 8) and “generally rectangular”
`(claim 18)
`
`It is unclear what the difference is, if any, between a “generally rectangular”
`
`and “substantially rectangular” main panel, as the ‘757 Patent depicts only one
`
`
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` 13
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`

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`main panel, which is not a rectangle:
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`
`
`
`
`
`Ex. 1001 Fig. 3. The ‘757 Patent discloses only a main panel “that is somewhat
`
`rectangular-shaped.” Id. at 3:5-7.
`
`
`
`During prosecution, the Examiner found the following carriers to have a
`
`“substantially rectangular” and “generally rectangular” main panel:
`
`
`
`
`
`
`
`
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` 14
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`Ex. 1014, Storm Figs. 1, 4; also Ex. 1002, ‘757 History 10/4/2010 Rejection, p.4
`
`(“Storm discloses . . . a substantially rectangular and flexible main panel 12”).
`
`
`
`
`
`
`
`
`
`Ex. 1015, Aukerman Fig. 5; also Ex. 1002, ‘757 History 7/18/2011 Rejection, p.6
`
`(“Aukerman teaches . . . a substantially generally rectangular, flexible main panel
`
`34”).
`
`Accordingly,
`
`the broadest reasonable
`
`interpretation of “substantially
`
`rectangular” and “generally rectangular” at least includes shapes consistent with
`
`the main panels of the Storm, Aukerman, and ‘757 Patent carriers.
`
`
`(f)
`
`“single flexible main panel” (claim 21)
`
`During prosecution, PO argued: “a carrier according to Claim 46
`
`[corresponding to issued claim 21] will have a single main panel (which may be
`
`formed of multiple pieces of material) that forms a child carrying area in
`
`cooperation with the wearer’s torso.” Ex. 1002, ‘757 History 11/18/2011
`
`Amendment, pp.10-11. Under the broadest reasonable interpretation, a “single
`
`
`
` 15
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`flexible main panel” may be formed of multiple pieces of material.
`
`IV. There is A Reasonable Likelihood that Claims 1-23 of the ‘757 Patent
`Are Unpatentable
`A. Matey in view of Pettersen Renders Claims 1, 8-15, and 21-23
`Obvious Under 35 U.S.C. §103(a)
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`Although the literature itself is undated, the “Baby Matey soft baby carriers”
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`NPL document, was submitted during prosecution of US 4,986,458 (“Linday”) and
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`is cited on the face of the issued patent. Ex. 1017, Linday at [56] (References Cited
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`include “Baby Matey Literature (date unknown)” as an “Other Publication”).
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`Linday issued on January 22, 1991. Id. Attached as Exhibit 1008 is a copy of the
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`“Baby Matey soft baby carriers” NPL document (“Matey”) that is present in the
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`Linday paper patent application file. Ex. 1018, Declaration of Shari White (“White
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`Decl.”), ¶3 and Appendix A thereto. Matey was at least publicly available as of
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`January 22, 1991, the date Linday issued. See 37 CFR §1.11 (a)(“The specification,
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`drawings, and all papers relating to the file of: A published application; a patent; or
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`a statutory invention registration are open to inspection by the public, and copies
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`may be obtained upon the payment of the fee[.]”); also MPEP §103; Ex. 1018,
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`White Decl., ¶4. Matey is prior art under U.S.C. §102(b).
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`Baby Matey is a soft carrier that supports multiple carrying positions,
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`including a “Front Carry” and “Back Carry.” See generally Ex. 1008, Matey. The
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`carrier is “an adaptation of the ancient oriental baby carrier used by mothers for
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`centuries.” Id. at 4, 7. Canadian Pat. No. 1332928 (“Pettersen”) published
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`November 8, 1994, and is prior art at least under 35 U.S.C. §102(b). Ex. 1009,
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`Pettersen. Matey, Pettersen, and the ‘757 Patent are directed toward frameless,
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`soft-sided child carriers. See e.g., Ex. 1001 1:14-16; Ex. 1008, Matey 1-2; Ex.
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`1009, Pettersen 1:1-34. The Matey, Pettersen, and ‘757 Patent carriers are similar
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`in structure, each including a main panel, adjustable waistband, and adjustable
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`shoulder straps that couple to the main panel away from the bottom edge. See, e.g.,
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`Ex. 1001 Fig. 3; Ex. 1008 at 2; Ex. 1009 at Fig. 1, 1:21-2:7.
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`Compare Ex. 1001 Fig. 1 with Ex. 1008 at 9 and Ex. 1009 Fig. 9A.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`Compare Ex. 1001 Fig. 2 with Ex. 1008 at 8 and Ex. 1009 Fig. 9. Thus, Matey and
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`Pettersen are analogous art to each other as well as to the ‘757 Patent.
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`Claim 1. A child carrier adapted to be worn by a human wearer for carrying a
`child, the child carrier comprising:
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`Ex. 1008, Matey 8, 9.
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`[1(a)] a waistband comprising a padded section, the waistband having an
`adjustable length positioned to be securely worn about the waist of the wearer
`and rest on the hips of the wearer;
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
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`Id. at 8.
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`Id. at 9.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
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`Id. at 7 (Deluxe carrier on left, Tropical on right); 3 (“Easy to use and fully
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`adjustable”), 8 (“Loosen waist strap to lower baby, or to reduce tightness at baby’s
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`neck”).
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`It was well known at the time of the invention to provide padding in the
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`waistband of a load bearing apparatus, such as a baby carrier. Ex. 1013, Hinrichs
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`Decl. ¶¶41-51, ¶84. Upon reading the disclosure of Pettersen, a skilled artisan
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`would have been motivated to include padding within the waistband along the
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`lower edge of the Matey carrier body for added user comfort. Id. ¶¶83-87; Ex.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`1009, Pettersen 1:28-30 (“the waistband having internal padding across the lower
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`edge of the main panel”); 6:19-221 (“This central portion 37 is also internally
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`padded and this padding extends part way along the portions 38 and 38A.”).
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`Making this modification would allow the wearer to comfortably utilize the carrier
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`for longer periods of time Ex. 1013, Hinrichs Decl. ¶86.
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`[1(b)(i)] a flexible main panel having, a bottom edge and opposing side edges,
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`The Matey carrier body (i.e., main panel) has bottom and opposing side
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`edges:
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`1
`For ease of review, Petitioner added line numbers on the left margin of pp.4-
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`15 of Pettersen, which are referred to herein.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
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`Ex. 1008, Matey 8; 7 (carrier made of “a soft, lightweight cotton blend fabric”),
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`generally 1-10.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
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`Side Edges
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`Bottom Edge
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`Id. at 7 (Deluxe left, Tropical right).
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`[1(b)(ii)] the flexible main panel adapted to form a child carrying area in
`cooperation with the wearer's torso that is open to the wearer's torso
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`Child Carrying
`Area
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`Compare Ex. 1001 Fig. 1 with Ex. 1008, Matey 9.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
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`Ex. 1008, Matey 8; see id. (Front Carry Instructions, Important Suggestions #2), 9
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`(Back Carry Instructions).
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`[1(b)(iii)] the main panel having the bottom edge joined to the waistband,
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`The waistband is joined to the bottom edge of the carrier body:
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`Id. at 8; 7 (“Baby Matey carriers are . . . double topstitched for added strength and
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`durability.”). As depicted, the Tropical carrier body is sewn along its entire bottom
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`edge to the waistband:
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`Additionally, a POSITA would recognize that the modified Matey carrier, which
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`includes internal padding within the waistband (see element 1(a)), would have a
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`waistband that is joined along the bottom edge of the main panel. Ex. 1013,
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`Hinrichs Decl. ¶87.
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`[1(b)(iv)] the main panel so dimensioned to overhang the waistband to form a
`sling
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`Sling
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`Compare Ex. 1001 Fig. 1 with Ex. 1008, Matey 9; see Matey 8, 9 (Front and Back
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`Carry Instructions).
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`[1(b)(v)] adapted to support a majority of the child's weight through the child's
`hips and thighs;
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`Element 1(b)(v) is not entitled to patentable weight. See Section III.B.3(b). If
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`this clause is deemed to be limiting, Matey has the structure claimed to achieve the
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`desired result and thus it is inherent that it could be adapted to support the child’s
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`weight as claimed. Ex. 1013, Hinrichs Decl. ¶¶89-96. The Matey waistband
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`includes a “drawstring” that allows the wearer to widen or narrow the amount of
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`cloth to support the child’s seat and legs when seated in the sling. Ex. 1008, Matey
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`7-9; also Matey applied to element 1(a). For newborns, the wearer is instructed as
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`follows:
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`Id. at 8 (“Hints”); 3 (“The front carry is comfortable for baby’s first year or more,
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`by supporting baby’s legs naturally.”).
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`Id. at 2. The Matey main panel extends along the child’s buttocks and across the
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`back of the child’s legs:
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`Id. at 8.
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`Id. at 9. It was well known at the time of the alleged invention that carriers
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`supporting infants in a position with deeply squatted legs (i.e., legs spread and
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`bent, preferably to a 90 degree angle) promote the healthy development of the
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`child’s hip joints. Ex. 1013, Hinrichs Decl. ¶¶66-74. A POSITA would understand
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
`that, at least a majority of the depicted child’s weight (i.e., at least 51%) is
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`supported through child’s hips and thighs. Id. at ¶¶89-96.
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`[1(c)] a first [/second] shoulder strap having an adjustable length forming a loop
`along a first [/second] of the opposing side edges, wherein an upper end of the
`first [/second] shoulder strap is coupled to the main panel to a first [/second] side
`of a vertical axis of the main panel and a lower end of the first [/second]
`shoulder strap is coupled to the main panel away from the bottom edge of the
`main panel to the first [/second] side of the vertical axis of the main panel;
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`The Matey includes adjustable shoulder straps that fasten via D-rings to the
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`carrier’s side straps.
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`Upper End of Shoulder
`Straps Coupled
`to Main Panel
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`Lower End of Shoulder
`Straps Coupled Away from
`Bottom Edge of Main Panel
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`Compare Ex. 1001 Fig. 1 with Ex. 1008, Matey 9.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
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`First End of Shoulder Straps
`Coupled at Top Corner
`of Main Panel
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`Second End of
`Shoulder Straps Coupled
`Away From Bottom Edge
`of Main Panel
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`Main Panel
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`Vertical Axis
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`Ex. 1008, Matey 7 (Deluxe left, Tropical right); id. (“Wide should[er] straps and
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`molded fit result in hours of comfort for parents and baby.”).
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`To the extent PO argues that the shoulder strap upper ends are not “coupled
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`to the main panel,” it would have been obvious at the time of the alleged invention
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`to make the shoulder straps of the carrier separate pieces of material that are sewn
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`to the main panel, or as described in Pettersen (see Section IV.F below). Ex. 1013,
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`Hinrichs Decl. ¶88. Such a configuration would result in more efficient
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` 29
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,590,757
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`manufacturing with less wasted material. Id.
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`Matey instructs the wearer to couple each shoulder strap “on the same sides”
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`of the carrier’s vertical axis for use in a Back Carry, such that each strap forms a
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