Paper No. 8
`Trials@uspto.gov
`571.272.7822 Filed: September 28, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRACO CHILDREN’S PRODUCTS INC.,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00810
`Patent D570,621 S
`____________
`
`
`
`Before KEN B. BARRETT, JOSIAH C. COCKS, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571.272.7822 Filed: September 28, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRACO CHILDREN’S PRODUCTS INC.,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00810
`Patent D570,621 S
`____________
`
`
`
`Before KEN B. BARRETT, JOSIAH C. COCKS, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-00810
`Patent D570,621 S
`
`
`I.
`
`INTRODUCTION
`
`
`
`Graco Children’s Products Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of the sole claim of U.S. Patent No.
`
`D570,621 S (Ex. 1001, “the ’621 patent”). Paper 2 (“Pet.”). Kolcraft
`
`Enterprises, Inc. (Patent Owner) did not file a Preliminary Response to the
`
`Petition. Under 35 U.S.C. § 314, an inter partes review may not be
`
`instituted “unless . . . the information presented in the petition . . . shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.”
`
`
`
`After considering the information presented in the Petition, we
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`determine that Petitioner has not established a reasonable likelihood that it
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`would prevail with respect to the claim challenged in the Petition.
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`Accordingly, we do not authorize an inter partes review to be instituted as to
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`the challenged claim of the ’621 patent.
`
`A. Related Proceedings
`
`
`
`Both parties identify, as a matter involving or related to the ’621
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`patent, Kolcraft Enterprises, Inc. v. Graco Children’s Products Inc.,
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`No. 1:15-cv-07950 (N.D. Ill.). Pet. 3; Paper 4. Patent Owner identifies, as
`
`Inter Partes Reviews involving the same parties and related patents,
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`IPR2016-00810 (Patent No. D570,621 S), IPR2016-00816 (Patent No.
`
`D604,970 S), and IPR2016-00826 (Patent No. D616,231 S). Paper 4.
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`B. The ’621 Patent and the Claim
`
`
`
`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`
`Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). With regard to design
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`2
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`IPR2016-00810
`Patent D570,621 S
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`patents, it is well-settled that a design is represented better by an illustration
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`than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679
`
`(Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14
`
`(1886)). Although preferably a design patent claim is not construed by
`
`providing a detailed verbal description, it may be “helpful to point out . . .
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`various features of the claimed design as they relate to the . . . prior art.”
`
`Egyptian Goddess, 543 F.3d at 679–80; cf. High Point Design LLC v. Buyers
`
`Direct, Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to district
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`court, in part, for a “verbal description of the claimed design to evoke a
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`visual image consonant with that design”).
`
`
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`The ’621 patent is titled “Exposed Legs for a Play Yard,” and the
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`claim recites “[t]he ornamental design for exposed legs for a play yard, as
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`shown and described.” Ex. 1001 (57). The ’621 patent contains six figures.
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`Figures 1 and 4 are reproduced below.
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`
`
`
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`Figure 1 is “a perspective view of exposed legs for a play yard,” and
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`Figure 4 is “a front view of the design of FIG 1.” Id. at 1. The description
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`of the ’621 patent states “[t]here is no fabric covering the exposed legs
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`3
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`Patent D570,621 S
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`shown in any of FIGS. 1–6.” Id. Additionally, “[t]he features shown in
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`broken lines . . . do not form part of the claimed design.” Id.
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`
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`We determine that the following verbal descriptions will be helpful by
`
`pointing out “various features of the claimed design as they relate to the . . .
`
`prior art.” Egyptian Goddess, 543 F.3d at 679–80.
`
`
`
`The claimed features, those in solid lines, include curved legs that
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`bow outward. See Pet. 1 (Petitioner arguing “[t]he figures of the ’621 Patent
`
`show a play yard with what appear to be curved legs that bow outward. As
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`shown in Figure 1, the curved legs are depicted in solid lines, and thus are
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`the only features claimed.”). In addition to the pronounced outwardly
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`bowing legs, Petitioner notes, and we agree, that there is slight outward
`
`flaring at the top and bottom of the legs. See Pet. 23 (“[T]he ’621 Patent
`
`figures show the bottoms of the legs as having slight outward flaring like the
`
`tops of the legs.”); Ex. 1002 ¶ 155. Notwithstanding its recognition of the
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`bottom flaring, Petitioner, relying on the Declaration of Mr. Robert John
`
`Anders (Ex. 1002), argues “[t]his slight outward flaring [at the bottom of the
`
`legs] is irrelevant – it is not necessary to the visual impression created by the
`
`patented design as a whole.” Pet. 23 (citing Ex. 1002 ¶ 156); see also id.
`
`at 49 (same argument). Mr. Anders further opines that “the slight outward
`
`flaring at the bottom of the play yard legs is only a small, inconsequential
`
`portion of the overall arc shape of the play yard legs.” Ex. 1002 ¶ 156. We
`
`are not persuaded.
`
`
`
`During prosecution, the examiner noted that the originally submitted
`
`Figure 1 showed, at the bottom of the legs, “a slight flare outward that is not
`
`shown in the other views,” and required the applicant to make all the views
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`consistent. Ex. 1009, 19. This suggests that, at least, the examiner
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`4
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`Patent D570,621 S
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`considered the bottom flare more than merely inconsequential, as
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`Mr. Anders opines, and further suggests that the flare is necessary to the
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`visual impression created by the design as a whole. Additionally,
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`Mr. Anders’s testimony seemingly is contradictory in that he also asserts
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`that the addition, during prosecution, of the bottom flares to certain figures
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`constitutes new matter.1 Ex. 1002 ¶ 157. This implies that Mr. Anders
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`believes that the addition of a bottom flare yields a not insubstantially
`
`different visual impression. Further, Mr. Anders opines that “it would have
`
`been obvious to add flaring to the bottom of Celestina-Krevh’s legs to give
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`the same visual impression as the top of the legs.” Ex. 1002 ¶ 158. Implicit
`
`in this opinion is the assertion that a designer of ordinary skill would have
`
`recognized the difference between the top and bottom of the legs and would
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`allegedly have been motivated to modify the bottom to match the top in
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`order to create a particular overall visual appearance. See Apple, Inc. v.
`
`Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (obviousness of a
`
`design patent is assessed from the viewpoint of a designer of ordinary skill).
`
`Accordingly, Mr. Anders testimony, on the whole, confirms, and we
`
`conclude, that the bottom flare is not irrelevant to the overall visual
`
`impression of the claimed design.
`
`
`
`As mentioned, the ’621 patent states that “[t]here is no fabric covering
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`the exposed legs.” Ex. 1001, 1. Petitioner argues that “[t]he broadest
`
`reasonable interpretation of ‘no fabric covering’ . . . is not the complete
`
`
`
`1 We need not and do not reach the merits of Petitioner’s argument that the
`amendment of figures during prosecution constitutes new matter or the
`argument that the claim is nonenabling or indefinite. Pet. 6 n.2; see also id.
`at 23 n.3 (asserting “new matter”).
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`5
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`absence of fabric – just that the fabric does not conceal the silhouette or
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`outer contours of the curved legs.” Pet. 13. Petitioner reasons “[a]
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`form-fitting covering, such as paint, a tightly-fitting fabric, or plastic
`
`coating, may protect but it does not conceal, and is thus the broader
`
`interpretation.” Id. We conclude otherwise. It is unreasonably broad to
`
`construe “no fabric covering” as encompassing “tightly-fitting fabric
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`[covering].” We determine that, for purposes of this decision, “no fabric
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`covering the . . . legs” simply means what it says—that there is no fabric
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`covering the legs.
`
`
`
`For purposes of this decision, we need not reach Petitioner’s
`
`arguments (Pet. 12–13) concerning the scope of “exposed.”
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`Reference
`
`C. Applied References
`
`Exhibit No.
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`Ex. 1008
`
`Chen ’393
`
`US D494,393 S
`
`Filed Jan. 7, 2004;
`Issued Aug. 17, 2004
`FOLD ’N GO ÉLAN DELUXE CARE CENTER
`INSTRUCTION MANUAL, Century Products, Aug. 13, 20032
`(“the Fold ’N Go Manual”)
`Celestina-Krevh US D448,218 S
`Gottlieb
`US 3,187,352
`Chen ’683
`US D581,683 S
`
`Hartenstine
`
`US 6,510,570 B2
`
`Sept. 25, 2001
`June 8, 1965
`Filed Nov. 10, 2003;
`Issued Dec. 2, 2008
`Jan. 28, 2003
`
`
`
`Petitioner relies also on the Declaration of Mr. Robert John Anders,
`
`dated March 29, 2016, (Ex. 1002) in support of Petitioner’s arguments.
`
`
`
`2 Petitioner relies on a publication date for the Fold ’N Go Manual of August
`17, 2003, based on an internet search, rather than October 2000 as might be
`implied by the “10/00” printed on the cover. Pet. 51 n.11.
`
`6
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`Patent D570,621 S
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`D. Asserted Grounds of Unpatentability
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`
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`Petitioner asserts the following grounds of unpatentability for the
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`claim of the ’621 patent:
`
`Ground Reference[s]
`
`Celestina-Krevh
`
`Basis
`
`§ 102(b)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Celestina-Krevh in view of Gottlieb
`
`§ 103(a)
`
`Chen ’393
`
`Chen ’683
`
`Chen ’683
`
`Fold ’N Go Manual
`
`Fold ’N Go Manual
`
`§ 102(e)
`
`§ 102(e)
`
`§ 103(a)
`
`§ 102(b)
`
`§ 103(a)
`
`Fold ’N Go Manual in view of Gottlieb
`
`§ 103(a)
`
`Celestina-Krevh in view of Hartenstine
`
`§ 103(a)
`
`10
`
`Fold ’N Go Manual in view of Hartenstine § 103(a)
`
`II. ANALYSIS
`
`A. Principles of Law
`
`1. Anticipation
`
`
`
`The test for determining anticipation of a design patent claim is the
`
`ordinary observer test. Int’l Seaway Trading Corp. v. Walgreens Corp., 589
`
`F.3d 1233, 1240 (Fed. Cir. 2009). Under the ordinary observer test, a design
`
`patent claim is unpatentable if, “in the eye of an ordinary observer, giving
`
`such attention as a purchaser usually gives, two designs are substantially the
`
`same, if the resemblance is such as to deceive such an observer, inducing
`
`him to purchase one supposing it to be the other.” Id. at 1239 (quoting
`
`Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871) (ordinary observer test
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`7
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`IPR2016-00810
`Patent D570,621 S
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`applied in context of infringement)). “[T]he ordinary observer test requires
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`consideration of the design as a whole . . . .” Id. at 1243 (citations omitted).
`
`“The mandated overall comparison is a comparison taking into account
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`significant differences between the two designs, not minor or trivial
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`differences that necessarily exist between any two designs that are not exact
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`copies of one another . . . [and] minor differences cannot prevent a finding of
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`anticipation.” Id.
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`2. Obviousness
`
`
`
`“In addressing a claim of obviousness in a design patent, the ultimate
`
`inquiry is whether the claimed design would have been obvious to a designer
`
`of ordinary skill who designs articles of the type involved.” Apple, Inc. v.
`
`Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal quotation
`
`and citations omitted). This obviousness analysis generally involves two
`
`steps: first, “one must find a single reference, a something in existence, the
`
`design characteristics of which are basically the same as the claimed
`
`design”; second, “once this primary reference is found, other references may
`
`be used to modify it to create a design that has the same overall visual
`
`appearance as the claimed design.” High Point Design, LLC v. Buyers
`
`Direct, Inc., 730 F.3d 1301, 1311 (Fed. Cir. 2013) (internal quotation and
`
`citations omitted). In performing the first step, we must “(1) discern the
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`correct visual impression created by the patented design as a whole; and
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`(2) determine whether there is a single reference that creates basically the
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`same visual impression.” Id. at 1312 (internal quotation and citations
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`omitted).
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`8
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`B. The Designer of Ordinary Skill
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`
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`Petitioner does not appear to proffer a description of a person of
`
`ordinary skill in the art. Mr. Anders opines:
`
`A designer of ordinary skill in the art relevant to the ’621
`
`Patent would be an industrial designer of ordinary capabilities in
`the field of consumer product design, including foldable
`structures. A designer of ordinary skill would also be aware of
`prior art play yards or play pens, including, but not limited to,
`working with, designing, or evaluating juvenile products.
`
`Ex. 1002 ¶ 84. For purposes of this decision only, we proceed with the
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`understanding that the designer of ordinary skill is as Mr. Anders asserts.
`
`C. The Grounds of Alleged Anticipation by Celestina-Krevh and
`Obviousness over Celestina-Krevh in View of Gottlieb
`(Grounds 1 & 2)
`
`
`
`Petitioner asserts that the claim of the ’621 patent is anticipated by
`
`Celestina-Krevh (Ex. 1005) and would have been obvious over
`
`Celestina-Krevh in view of Gottlieb (Ex. 1006). Pet. 18–29. Both of these
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`references and the ground of obviousness over Celestina-Krevh and Gottlieb
`
`were before the Office during the prosecution of the application that led to
`
`the ’621 patent and the prosecution that led to a related patent, U.S. Patent
`
`No. D604,970 S (“the ’970 patent”). See Pet. 7; Ex. 1009 (prosecution
`
`history), 51, 55, 57; Ex. 1013 (decision of the Board of Patent Appeals and
`
`Interferences (BPAI) concerning the application that issued as the ’970
`
`patent).
`
`
`
`In determining whether to institute an inter partes review, we, acting
`
`on behalf of the Director, may take into account whether, and reject a
`
`petition to institute on a particular ground because, the same or substantially
`
`the same prior art or arguments previously were presented to the Office.
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`9
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`35 U.S.C. § 325(d) (“In determining whether to institute or order a
`
`proceeding under [chapter 32], chapter 30, or chapter 31, the Director may
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`take into account whether, and reject the petition or request because, the
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`same or substantially the same prior art or arguments previously were
`
`presented to the Office.”). For the reasons that follow, we find that the art
`
`and issues underlying the Celestina-Krevh-based grounds in the Petition
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`were considered substantively by the Office during prosecution of the
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`underlying patent applications that led to the issuance of the ’621 patent and
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`to the related ’970 patent, and we exercise our discretion to deny institution
`
`of review of these two grounds under 35 U.S.C. § 325(d).
`
`
`
`Celestina-Krevh is a design patent titled “Curved Legs for a Playard.”
`
`Ex. 1005, 1. Illustrative Figure 2 from Celestina-Krevh is shown below.
`
`
`
`Figure 2 is a front elevation view of curved legs for a play yard. Id. In
`
`articulating the obviousness ground, Petitioner relies on Gottlieb for the
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`disclosure of a play yard with legs isolated from the interior of the play yard
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`due to the netting being spaced away from the legs. Pet. 29.
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`
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`The exposed legs of the claimed design of the ’621 patent do not have
`
`fabric covering the legs. Petitioner asserts that Celestina-Krevh does not
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`disclose a fabric covering the legs.3 Pet. 24–26. The issue of whether this
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`assertion is correct was considered by the examiner and was the subject of a
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`decision on appeal by the Board of Patent Appeals and Interferences, the
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`predecessor of the Patent Trial and Appeal Board. Petitioner argues that the
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`examiner and Board were incorrect. Pet. 24–25.
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`
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`During the prosecution of the application that led to the issuance of
`
`the ’621 patent, the examiner entered a rejection of the claim as being
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`obvious over Celestina-Krevh in view of Gottlieb or Tigrett. Ex. 1009, 51.
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`The examiner found that the difference between the claimed invention and
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`Celestina-Krevh was the covered legs in Celestina-Krevh and reasoned that
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`it would have obvious to remove the covers to expose the legs as taught by
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`Gottlieb. Id. The applicant responded by arguing that the legs of
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`Celestina-Krevh were within fabric sleeves, that Celestina-Krevh is not an
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`appropriate primary reference because of this fabric covering, and that
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`Gottlieb does not provide a suggestion to one of ordinary skill to completely
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`eliminate the fabric covering in Celestina-Krevh. Id. at 59–61. After the
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`applicant filed an appeal brief, the examiner reopened prosecution and
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`apparently withdrew the Celestina-Krevh rejection. See id. at 127 (the
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`examiner reopening prosecution in light of the appeal brief and entering a
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`new ground of rejection).
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`
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`During the prosecution that led to the issuance of a related patent, the
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`’970 patent, the examiner similarly entered an obviousness rejection based
`
`
`
`3 For the reasons discussed above regarding the claimed design of the ’621
`patent, we find unpersuasive the alternative argument (Pet. 27–28) that a
`tight fabric covering anticipates a claimed design having no fabric covering.
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`on Celestina-Krevh and Gottlieb. Ex. 1012, 40. This time, the matter was
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`fully briefed on appeal to the Board by both the appellant and the examiner.
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`See id. at 78 (appeal brief); 120 (examiner’s answer); 129 (reply brief). In
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`the Answer, the examiner stated that “all of the figures of Celestina-Krevh
`
`show the legs of the play yard completely covered by some sort of
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`decorative fabric or other material.” Id. at 126. The Board found that the
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`legs in Celestina-Krevh “have what appear to be lengths of fabric wrapped
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`around the legs to cover the legs” and that “[t]he Celestina-Krevh patent
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`discloses and claims only play yard legs which are substantially completely
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`covered in fabric.” Id. at 193. The Board reversed the examiner,
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`determining that it would not have been obvious to modify Celestina-Krevh,
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`in light of Gottlieb, by removing the covering of the legs. Id. at 198.
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`
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`Petitioner has not provided persuasive reasoning or argument as to
`
`why we should revisit the Office’s determinations regarding the covering of
`
`the legs of Celestina-Krevh or of the obviousness of the claimed design over
`
`Celestina-Krevh and Gottlieb. Accordingly, we exercise our discretion
`
`under 35 U.S.C. § 325(d) to deny review of the claim of the ’621 patent on
`
`the asserted ground of anticipation by Celestina-Krevh and the asserted
`
`ground of obviousness over Celestina-Krevh in view of Gottlieb.
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`D. The Ground of Alleged Anticipation by Chen ’393 (Ground 3)
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`
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`Petitioner asserts that the claim is anticipated by Chen ’393. Pet. 30–
`
`45. The examiner, during the prosecution of the application that eventually
`
`issued as the ’621 patent, rejected the claim as being anticipated under 35
`
`U.S.C. § 102(a) by Chen ’393. Ex. 1009, 127. The applicant, relying on a
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`12
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`Rule 131 declaration4 (Ex. 1010) having five exhibits, argued that the
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`claimed design was invented prior to the earliest priority date of Chen ’393,
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`which, according to the applicant, is January 7, 2004. Ex. 1009, 2; see also
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`id. 38–40 (a copy, in the prosecution history, of the 131 Declaration and an
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`artifact sheet). The examiner reconsidered the rejection in light of this
`
`argument and determined that:
`
`The Rule 131 Declaration satisfies the evidence that the claimed
`design was invented prior to 1/2/04. Hence the patent to Chen
`D494393 is not considered prior art and the rejection under
`35 USC 102(a) is withdrawn. The claim is now allowable.
`
`Id. at 149.
`
`
`
`Petitioner argues that the Rule 131 declaration fails to serve as
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`adequate proof of either an actual reduction to practice or conception plus
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`diligence, and therefore is insufficient to antedate Chen ’393. See Pet. 38.
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`We have considered Petitioner’s argument and evidence, including the
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`testimony of Mr. Anders, concerning the priority issue with regard to
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`Chen ’393 and the ’621 patent. Petitioner has not persuaded us that we
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`should revisit the examiner’s determination regarding the same. For
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`example, we are not persuaded by Petitioner’s argument and the
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`corresponding testimony from Mr. Anders that “[t]he photographs that the
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`inventors submit in support of the Rule 1.131 Declaration are of low quality
`
`and insufficient to show that they embody the claimed design.” Pet. 42
`
`
`
`4 “When any claim of an application or a patent under reexamination is
`rejected, the applicant or patent owner may submit an appropriate oath or
`declaration to establish invention of the subject matter of the rejected claim
`prior to the effective date of the reference or activity on which the rejection
`is based.” 37 C.F.R. § 1.131(a).
`
`13
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`(footnote omitted; citing Ex. 1002 ¶ 56); see also Ex. 1002 ¶¶ 59, 61
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`(Mr. Anders stating that the photographs of Exhibits B and C to the 131
`
`Declaration are “so dark as to be indiscernible.”). As Petitioner explains, the
`
`criticized “photographs” and those apparently reviewed by Mr. Anders
`
`actually are photocopies, made by a third party enlisted by Petitioner, of the
`
`actual documents in the USPTO’s files (i.e. the documents before by the
`
`examiner). Pet. at 42 n.9. Without more from Petitioner, we decline to
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`assume the examiner and Petitioner’s expert reviewed photographs of the
`
`same quality. As an additional example, Mr. Anders’s opinions include
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`discussions of purported distinctions based on unclaimed aspects. See, e.g.,
`
`Ex. 1002 ¶ 61 (“[T]hese top rails [of Exhibit C to the Rule 131 Declaration]
`
`do not show what is shown in the ’621 Patent’s figures.”); id. at ¶ 67.
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`Accordingly, it is not clear to us that Mr. Anders’s opinions as to conception
`
`and reduction of practice are based on an appropriate consideration of the
`
`claimed design.
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`
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`Petitioner has not provided persuasive reasoning or argument as to
`
`why we should revisit the Office’s determination of priority. Accordingly,
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`we exercise our discretion under 35 U.S.C. § 325(d) to deny review of the
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`claim of the ’621 patent on the asserted ground of anticipation by Chen ’393.
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`E. The Grounds of Alleged Anticipation by Chen ’683 and Obviousness
`over Chen ’683 (Grounds 4 & 5)
`
`
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`Petitioner asserts that the claim of the ’621 patent is anticipated by or,
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`alternatively, would have been obvious over Chen ’683 (Ex. 1007). Pet. 45–
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`51. Chen ’683, an illustrative figure shown below, is a design patent
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`directed to a baby bed. Ex. 1007, 1.
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`14
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`Figure 1 is a perspective view of a baby bed. Id.
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`
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`For the anticipation ground, Petitioner argues “Chen ’683 . . .
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`discloses the same overall visual appearance as the claimed design of the
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`’621 Patent [and] [a]n ordinary observer would not take the claimed design
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`in the ’621 Patent for a new and different design.” Pet. 45. For purposes of
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`comparison of Chen ’683 with the claimed design, Petitioner provides the
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`following figure:
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`Pet. 48. The figure above is, on the left, a portion of Figure 2 (front
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`elevational view, Ex. 1007, 1) of Chen ’683 showing a leg and, on the right,
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`a portion of Figure 4 of the ’621 patent (front view, Ex. 1001, 1) also
`
`showing a leg. Petitioner argues that this side-by-side comparison shows
`
`that the reference’s leg and the leg of the claimed design are “almost
`
`identical” and “virtually identical.” Pet. 48. However, we note, and as
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`Petitioner apparently admits, the leg of Chen ’683 lacks the “slight outward
`
`flaring” at the bottom of the leg. See Pet. 49. Petitioner argues that the
`
`differences between the Chen ’683 design and the claimed design of the
`
`’621 patent are trivial and that the bottom flaring of the claimed design “is
`
`irrelevant and is not necessary to the visual impression created by the ’621
`
`Patent’s claimed design as a whole.” Id. at 49. For the reasons given above
`
`in the discussion of the construction of the claim of the ’621 patent, we are
`
`not persuaded that the bottom flare is irrelevant and, therefore, are not
`
`persuaded that its absence in Chen ’683 merely is a trivial difference.
`
`
`
`We also are not persuaded by Petitioner’s argument (Pet. 49) that the
`
`claimed design is anticipated because the bottom flare feature purportedly
`
`would have been obvious and therefore merely a trivial difference. See Int’l
`
`Seaway Trading Corp., 589 F.3d at 1239 (the test for anticipation is whether,
`
`to an ordinary observer, the two designs are substantially the same).
`
`Petitioner’s argument conflates anticipation with obviousness.
`
`
`
`Petitioner’s single-reference obviousness ground (Pet. 49–51) does
`
`not cure the deficiencies of the underlying anticipation ground. For
`
`example, Petitioner does not address with any specificity the bottom flare of
`
`the claimed design. Rather, Petitioner asserts:
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`16
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`To the extent that there is any disclosure in the ’621 Patent
`
`that is not plainly evident from Chen ’683 (e.g., any minor
`differences in leg curvature or any minor differences in
`proportion of the play yards), Chen ’683 readily suggests these
`minor alterations to one of ordinary skill in the art to arrive at a
`hypothetical reference.
`
`Pet. 50. This merely is unpersuasive, conclusory attorney argument.
`
`Petitioner does not, in its Chen ’683 obviousness ground, identify the bottom
`
`flare as one of these “minor differences” or explain adequately why one
`
`would have found it obvious to perform any “minor alterations” related to
`
`the bottom flare so as to arrive at the claimed design. Id.
`
`
`
`Accordingly, we find Petitioner has not demonstrated that there is a
`
`reasonable likelihood that it would prevail in showing that the challenged
`
`claim is anticipated or rendered obvious by Chen ’683.
`
`F. The Grounds of Alleged Anticipation by the Fold ’N Go Manual,
`Obviousness over the Fold ’N Go Manual, and Obviousness over the
`Fold ’N Go Manual in View of Gottlieb (Grounds 6, 7, & 8)
`
`
`
`Petitioner asserts that the claim of the ’621 patent is anticipated by
`
`and would have been obvious over the Fold ’N Go Manual. Pet. 51–56.
`
`Petitioner also asserts that the claimed design would have been obvious over
`
`the Fold ’N Go Manual in light of Gottlieb. Id. at 56–57.
`
`
`
`The Fold ’N Go Manual is a document containing several drawings of
`
`a device that may be used as a play yard or bassinet. Ex. 1004, passim. We
`
`understand Petitioner to rely on the perspective views on the front page and
`
`page 3 of the Fold ’N Go Manual. Pet. 52, 53, 55 (reproducing all or
`
`portions of the drawings on those pages); but see Ex. 1002 ¶ 213
`
`(Mr. Anders reproducing drawings from page 10 of the Fold ’N Go Manual).
`
`An illustrative drawing from the Fold ’N Go Manual is shown below.
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`17
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`The above-figure, from the cover page of the Fold ’N Go Manual, is a
`
`perspective view of the Fold ’N Go èlan Deluxe Care Center. Ex. 1004. For
`
`purposes of comparison of the Fold ’N Go Manual with the claimed design,
`
`Petitioner provides the following figure:
`
`
`
`Pet. 53. The figure above is, on the left, a portion of a drawing from the
`
`front page of the Fold ’N Go Manual showing a leg and, on the right, a
`
`portion of Figure 4 of the ’621 patent (front view, Ex. 1001, 1) also showing
`
`a leg. Petitioner, apparently referring to the side-by-side figure immediately
`
`18
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`IPR2016-00810
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`above, argues that shading at the top and bottom of the leg indicates inward
`
`curvature. Pet. 53 (citing Ex. 1002 ¶ 202). We fail to discern, and therefore
`
`cannot find, that the single leg of the Fold ’N Go Manual depicted above has
`
`the bottom flare of the claimed design. Additionally, Petitioner and its
`
`expert seemingly limit their review to the rightmost leg in the perspective
`
`drawing while failing to address the leftmost leg (the one with the wheel) or
`
`the legs in the figure of page 3 of the Fold ’N Go Manual (see Pet. 55),
`
`which lack any apparent flare at either the top or bottom. Because we are
`
`not persuaded that the Fold ’N Go Manual discloses a design substantially
`
`the same as the claimed design having a bottom flare, we need not reach
`
`Petitioner’s implied argument that the legs of the Fold ’N Go Manual do not
`
`have a fabric covering5. Pet. 54 (arguing that the legs lack discernable
`
`texture or surface treatment thus indicating unconcealed legs, and offering
`
`an alternative argument in the event that the Board finds the legs to be fabric
`
`covered).
`
`
`
`Petitioner’s articulation of the single-reference obviousness ground
`
`based on the Fold ’N Go Manual (Pet. 55–56) and of the ground of
`
`obviousness over the combination of the Fold ’N Go Manual and Gottlieb
`
`(id. at 56–57) do not cure the underlying defect of the Fold ’N Go Manual
`
`anticipation ground. Even if we were persuaded by Petitioner’s argument
`
`(id.) that it would have been obvious, in light of Gottlieb, to remove any
`
`fabric from the legs of the Fold ’N Go Manual, Petitioner does not explain
`
`
`
`5 We note, however, that the leg in foreground of the perspective view on the
`front page of the Fold ’N Go Manual appears, at the top of the leg, to have
`some kind of covering over a leg.
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`19
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`IPR2016-00810
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`adequately why it would have been obvious to add a bottom flare to the legs
`
`of the Fold ’N Go Manual so as to result in a design having the same overall
`
`appearance as the claimed design. See id. at 55–57.
`
`
`
`We find Petitioner has not demonstrated that there is a reasonable
`
`likelihood that it would prevail in showing that the challenged claim is
`
`anticipated or rendered obvious by the Fold ’N Go Manual or rendered
`
`obviousness by the combination of the Fold ’N Go Manual and Gottlieb.
`
`G. The Grounds of Alleged Obviousness over Celestina-Krevh in View of
`Hartenstine, and Obviousness over the Fold ’N Go Manual in View of
`Hartenstine (Grounds 9 & 10)
`
`
`
`Petitioner asserts that the claim of the ’621 patent would have been
`
`obvious over Celestina-Krevh in view of Hartenstine and would have been
`
`obvious over the Fold ’N Go Manual in view of Hartenstine. Pet. 57–60.
`
`Celestina-Krevh and the Fold ’N Go Manual have been discussed above.
`
`Hartenstine discloses “a playard having corner panels to isolate the legs of
`
`the playard from the interior space of the playard.” Ex. 1008, 1:5–7.
`
`Figure 10 of Hartenstine is included in the Petition (Pet. 58) and is shown
`
`below.
`
`
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`20
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`Figure 10 is “a perspective view of a playard having a corner panel [of one
`
`embodiment of Hartenstine].” Id. at 2:37–39.
`
`
`
`For both subject grounds, Petitioner argues that Hartenstine teaches
`
`leaving legs of a play yard uncovered and maintains that one would have
`
`found it obvious, based on this teaching, to remove any fabric material from
`
`the legs of the respective primary reference. Pet. 58–59, 59–60. As to the
`
`purported teaching of Hartenstine, Petitioner asserts:
`
`Hartenstine’s specification also discloses extending fabric
`
`panels interior to the legs so as to isolate the play yard legs from
`the
`interior space. ([Ex. 1008] at 2:67-3:10.) Spacing
`Hartenstine’s corner panels (14) inwardly away from the legs
`leaves the legs uncovered by the corner panels. (Id., Fig. 4.)
`
`Pet. 58; see id. (quoting from Ex. 1008, 4:54–56, which refers to isolating
`
`the legs from the interior). We are not persuaded.
`
`
`
`The purpose of Hartenstine’s flexible corner panels 14, which
`
`effectively are inserts spanning the two adjacent side panel portions 12, is to
`
`isolate the legs from the interior space so that a child cannot accidently come
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`into contact with a rigid leg. Ex. 1008, 2:67–3:10. It does not follow
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`necessarily that adding a panel internally results in the removal of coverin
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