Trials@uspto.gov
`571-272-7822
`
` Paper 30
`Entered: October 2, 2017
`
`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 IPR2016-00816 (Patent D604,970 S)
`Case IPR2016-00826 (Patent D616,231 S)1
`____________
`
`Before KEN B. BARRETT, JOSIAH C. COCKS, and JENNIFER S. BISK,
`Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1This Decision addresses the same legal and factual issues raised in
`IPR2016-00816 and IPR2016-00826. The patents at issue in both cases are
`related, and the arguments made by Petitioner largely are the same in both
`cases. Therefore, we issue one Decision to be entered in each case.
`
`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`
`
`Graco Children’s Products Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of the sole claim of U.S. Patent No.
`
`D604,970 S (Ex. 1001, “the ’970 patent”). IPR2016-00816, Paper 2
`
`(“Pet.”). Petitioner also filed a Petition requesting inter partes review of the
`
`sole claim of U.S. Patent No. D616,231 S. IPR2106-00826,2 Paper 2.
`
`Kolcraft Enterprises, Inc. (Patent Owner) did not file a Preliminary
`
`Response to the Petitions. The Board instituted a trial for the challenged
`
`claims. Paper 8 (“Dec. on Inst.”). Although Petitioner proposed eleven
`
`grounds of unpatentability, we instituted trial on only one asserted ground of
`
`unpatentability for obviousness. Dec. on Inst. 8, 23–24.
`
`
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(“PO Resp.”) to the Petition. Paper 10. Petitioner filed a Reply (“Reply”) to
`
`Patent Owner’s Response. Paper 21.
`
`
`
`Oral hearing was conducted on July 6, 2017. The record contains a
`
`transcript of the hearing. Paper 28 (“Tr.”).
`
`
`
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons discussed herein, we determine Petitioner has shown by a
`
`preponderance of the evidence that the claim of the ’970 patent and the
`
`
`
`2 Substantively similar papers were filed in both the subject cases. For
`clarity and expediency, we treat IPR2016-00816 as representative of
`IPR2016-00816 and IPR2016-00826. Unless indicated otherwise, all
`citations are to IPR2016-00816.
`
`2
`
`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`claim of the ’231 patent are unpatentable on the ground upon which we
`
`instituted inter partes review.
`
`B. Related Proceedings
`
`
`
`One or both parties identify, as a matter involving or related to the
`
`’970 patent, Kolcraft Enterprises, Inc. v. Graco Children’s Products Inc.,
`
`No. 1:15-cv-07950 (N.D. Ill.), and an Inter Partes Review involving the
`
`same parties and related patents, IPR2016-00810 (Patent No. D570,621 S).
`
`Pet. 2–3; Paper 5.
`
`C. The Instituted Grounds of Unpatentability
`
`
`
`We instituted inter partes review of the sole design claim of the ’970
`
`patent and sole design claim of the ’231 patent, both on the ground of
`
`obviousness under 35 U.S.C. § 103(a) over Chen ’3933.
`
`II. ANALYSIS
`
`
`
`Petitioner bears the burden of proving unpatentability of the
`
`challenged claims, and that burden never shifts to Patent Owner. Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). As discussed below, the burden of production, in certain
`
`circumstances, shifts to Patent Owner. Id. at 1379. To prevail, Petitioner
`
`must establish the facts supporting its challenge by a preponderance of the
`
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Petitioner relies on the
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`Declarations of Mr. Robert John Anders, dated March 30, 2016 (IPR2016-
`
`00816, Ex. 1002) and March 31, 2016 (IPR2016-00826, Ex. 1002) in
`
`
`
`3 US Patent No. D494,393 S to Chen, filed Jan. 7, 2004, issued Aug. 17,
`2004 (Ex. 1007).
`
`3
`
`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`support of its arguments. Patent Owner relies on the Declaration of Damon
`
`Oliver Casati Troutman and Edward B. Bretschger, dated December 29,
`
`2016 (Ex. 2008), in support of its arguments.
`
`A. The Designer of Ordinary Skill
`
`
`
`Petitioner’s expert, Mr. Anders, opines:
`
`A designer of ordinary skill in the art relevant to the ’970
`
`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 ¶ 48; see also IPR2016-00826, Ex. 1002 ¶ 45 (same for the ’231
`
`patent). Patent Owner does not contest this definition. For purposes of this
`
`Decision, we adopt Mr. Anders’s definition of the designer of ordinary skill.
`
`B. The ’970 Patent, the ’231 Patent, and the Claims
`
`
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`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
`
`patents, it is well-settled that a design is represented better by an illustration
`
`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 . . .
`
`various features of the claimed design as they relate to the . . . prior art.” Id.
`
`at 679–80; cf. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301,
`
`1314–15 (Fed. Cir. 2013) (remanding to the district court, in part, for a
`
`4
`
`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`“verbal description of the claimed design to evoke a visual image consonant
`
`with that design”).
`
`
`
`Both the ’970 patent and the ’231 patent are titled “Exposed Legs for
`
`a Play Yard,” and the claim of the ’970 patent recites “[t]he ornamental
`
`design for exposed legs for a play yard, as shown and described.” Ex. 1001
`
`(57); IPR2016-00826, Ex. 1001 (57) (“The ornamental design for the
`
`exposed legs for a play yard, as shown and described.”). The ’231 Patent
`
`issued from an application that was a continuation of the application that led
`
`to the issuance of the ’970 Patent. IPR2016-00826, Ex. 1001 (63);
`
`IPR2016-00816 (21).
`
`
`
`The ’970 patent contains seven figures. Figures 1 and 2 of the ’970
`
`patent are reproduced below.
`
`Figure 1 is “a perspective view of exposed legs for a play yard,” and
`
`Figure 2 is “a front view of the design of FIG 1.” IPR2016-00816, Ex.
`
`1001, 1. The description of the ’970 patent states “[t]here is no fabric
`
`covering the exposed legs shown in any of FIGS. 1–7.” Id. Additionally,
`
`
`
`5
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`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`“[t]he features shown in broken lines . . . do not form part of the claimed
`
`design.” Id.
`
`
`
`The ’231 patent contains five figures. Figures 1 and 2 of the ’231
`
`patent are reproduced below.
`
`
`
`Figure 1 is “a perspective view of a playard with exposed legs,” and Figure 2
`
`is “a front view of the playard of FIG 1.” IPR2016-00826, Ex. 1001, 1. As
`
`with the ’970 patent, the ’231 patent indicates that there is “no fabric
`
`covering the exposed legs” and similarly indicates that the features in broken
`
`lines in the form of only dashes are not part of the claimed design. Id.
`
`Additionally, the ’231 patent states “[t]he broken line consisting of dashes
`
`and dots in FIG. 1 is a boundary line that shows that the claimed design
`
`extends to the boundary line.” Id.; see id., Fig. 1 (the leg in the foreground
`
`with a vertical boundary line on the middle of that leg).
`
`
`
`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. In both the ’970 patent
`
`and the ’231 patent, the claimed features, those in solid lines, include curved
`
`6
`
`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
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`legs that bow outward. See Pet. 1 (Petitioner arguing “[t]he figures of the
`
`’970 Patent show a play yard with what appear to be curved legs that bow
`
`outward. As shown in Figure 1, the curved legs are depicted in solid lines,
`
`and thus are the only features claimed.”). In addition to the pronounced
`
`outwardly bowing legs, Petitioner notes, and we agree, that there is slight
`
`outward flaring at the top of the legs. See Pet. 23 (Petitioner arguing
`
`“Celestina-Krevh shows the legs flaring outward slightly at the top, as do the
`
`play yard legs shown in the ’970 Patent’s claimed design.”); id. at 22
`
`(“[B]oth designs [of the reference and of the ’970 patent] show legs that bow
`
`slightly outward at the top.”) (citing Ex. 1002 ¶ 119); cf. PO Resp. 5–6
`
`(Patent Owner addressing this feature).
`
`
`
`The claimed designs lack an outward flaring at the bottom of the legs.
`
`Tr. 43:4–13 (Patent Owner acknowledging “in the design patents that are at
`
`issue here, the ’231 and the ’970, there is no bottom flare on the legs.”).
`
`This lack of bottom flaring is in contrast to the design of the related patent
`
`US D570,621 S, which does have the bottom flaring on the leg. See
`
`Ex. 2007, 3–5, 16 (IPR2016-00810, Paper 8; decision denying institution of
`
`inter partes review, in part, because of this feature, and discussing the
`
`flaring of the bottom leg relative to the overall visual impression of that
`
`related design patent).
`
`
`
`As mentioned, the ’970 patent and the ’231 patent state that “[t]here is
`
`no fabric covering the exposed legs.” Ex. 1001, 1. In our Decision to
`
`Institute, we rejected, as unreasonably broad, Petitioner’s proposed
`
`construction where “no fabric covering” would encompass “tightly-fitting
`
`fabric [covering].” Dec. on Inst. 6 (quoting Pet. 13). We determined that
`
`“‘no fabric covering the . . . legs’ simply means what it says—that there is
`
`7
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`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`no fabric covering the legs.” Id. We maintain that construction for purposes
`
`of this Decision.
`
`C. The Status of Chen ’393 as Prior Art
`
`
`
`The threshold issue in this case is whether Chen ’393 is prior art to the
`
`challenged claims. See PO Resp. 6; Reply 1.
`
`
`
`Petitioner challenges the claims based on Chen ’393, which has a
`
`filing date of January 7, 2004. Ex. 1007 (22). The application that led to the
`
`issuance of the ’970 patent was filed on December 15, 2005.
`
`IPR2016-00816, Ex. 1001 (22). The application that led to the issuance of
`
`the ’231 patent was filed on July 8, 2009. IPR2016-00826, Ex. 1001 (22).
`
`Both challenged patents identify on their faces an earliest possible effective
`
`filing date of November 5, 2004. IPR2016-00816, Ex. 1001 (62);
`
`IPR2016-00826, Ex. 1001 (63). Thus, the filing date of Chen ’393 is earlier
`
`than that of either of the patents at issue.
`
`
`
`Because Petitioner offered Chen ’393 into evidence, which qualifies
`
`on its face as prior art under § 102(e), Patent Owner bears the burden of
`
`producing evidence antedating Chen ’393. See Dynamic Drinkware, LLC v.
`
`Nat’l Graphics, Inc., 800 F.3d 1375, 1378–80 (Fed. Cir. 2015). “The burden
`
`of production may entail ‘producing additional evidence and presenting
`
`persuasive argument based on new evidence or evidence already of record.’”
`
`Id. at 1379 (citation omitted). While the burden of production is a shifting
`
`burden, we again note that the burden of persuasion is on Petitioner to
`
`ultimately prove “unpatentability by a preponderance of the evidence,” and
`
`that this burden never shifts to Patent Owner. Id.
`
`
`
`“In the United States, the person who first reduces an invention to
`
`practice is ‘prima facie the first and true inventor.’” Mahurkar v. C.R. Bard,
`
`8
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`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (citation omitted). The standard of
`
`inventorship required for utility patents applies equally to design patents.
`
`Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002). “To antedate (or
`
`establish priority) of an invention, a party must show either an earlier
`
`reduction to practice, or an earlier conception followed by a diligent
`
`reduction to practice.” Purdue Pharma L.P. v. Boehringer Ingelheim
`
`GmbH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (citing Price v. Symsek, 988
`
`F.2d 1187, 1190 (Fed. Cir. 1993)).
`
`“To have conceived of an invention, an inventor must have formed in
`
`his or her mind ‘a definite and permanent idea of the complete and operative
`
`invention, as it is hereafter to be applied in practice.’” Mahurkar, 79 F.3d
`
`at 1577. “[A]n inventor’s testimony, standing alone, is insufficient to prove
`
`conception—some form of corroboration must be shown.” Price, 988 F.2d
`
`at 1194. “A ‘rule of reason’ analysis is applied to determine whether the
`
`inventor’s prior conception testimony has been corroborated.” Id. at 1195.
`
`“Conception ‘must be proven by evidence showing what the inventor has
`
`disclosed to others and what that disclosure means to one of ordinary skill in
`
`the art.’” Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1334 (Fed.
`
`Cir. 2011) (quoting In re Jolley, 308 F.3d 1317, 1321 (Fed. Cir. 2002)).
`
`“[T]he reduction to practice of a three-dimensional design invention
`
`requires the production of an article embodying that design.” Fitzgerald v.
`
`Arbib, 268 F.2d 763, 765 (CCPA 1959) (citation omitted); Dieterich v. Leaf,
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`89 F.2d 226, 229 (CCPA 1937) (“In the case of a three-dimensional article
`
`[that is the subject of a design patent application], . . . it seems to us that
`
`something more than a mere paper drawing is requisite to constitute actual
`
`reduction to practice.”).
`
`9
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`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`
`
`In the context of a design patent, it is improper merely to compare
`
`select, separate features of a referenced design to a claimed design. In re
`
`Harvey, 12 F.3d 1061, 1065 (Fed. Cir. 1993); id. at 1064 (In an obviousness
`
`analysis, it is error to rely upon a prior art reference as “a ‘design concept’
`
`rather than for its specific design characteristics.”). “In determining the
`
`patentability of a design, it is the overall appearance, the visual effect as a
`
`whole of the design, which must be taken into consideration.” Id. at 1065
`
`(quoting In re Rosen, 673 F.2d 388, 390 (CCPA 1982); see also In re Blum,
`
`374 F.2d 904, 907 (CCPA 1967) (“A design is a unitary thing and all of its
`
`portions are material in that they contribute to the appearance which
`
`constitutes the design.”).
`
`
`
`A party alleging diligence must account for the entire period during
`
`which diligence is required, Gould v. Schawlow, 363 F.2d 908, 919 (CCPA
`
`1966), and must provide corroboration with evidence that is specific both as
`
`to facts and dates, id. at 920; Kendall v. Searles, 173 F.2d 986, 993 (CCPA
`
`1949). The rule of reason does not dispense with the need for corroboration
`
`of diligence that is specific as to dates and facts. See Gould, 363 F.2d at
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`920; Kendall, 173 F.2d at 993; cf. Coleman v. Dines, 754 F.2d 353, 360
`
`(Fed. Cir. 1985) (referring to the need for independent corroboration to
`
`establish conception).
`
`
`
`We now turn to Patent Owner’s arguments and associated
`
`submissions concerning priority. Patent Owner filed only one substantive
`
`brief in these cases—a Patent Owner’s Response. In that brief, Patent
`
`10
`
`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`Owner relies on Ex. 20084, identified as “a redacted 37 C.F.R. § 131(a)[5]
`
`declaration signed by inventors Mr. Damon Oliver Casati Troutman and
`
`Mr. Edward B. Bretschger.” PO Resp. 2. Attached to that declaration were
`
`Exhibits A through H, undated documents showing various sketches and
`
`images of playards and portions thereof. Patent Owner did not produce
`
`expert testimony.
`
`
`
`Patent Owner also refers to several other Rule 131 Declarations filed
`
`during the prosecution of design and utility patents in its portfolio. Id. at 1–
`
`2. Patent Owner asserts that “[t]hroughout the prosecution histories of the
`
`patents related to Kolcraft’s Contours line of play yards, . . . [Patent Owner]
`
`Kolcraft has repeatedly sworn behind Wonderland’s Chen patents.” Id. at 1–
`
`2. To the extent that this constitutes an argument for priority of the design
`
`patents at issue in these cases, we do not find persuasive the assertion that
`
`Patent Owner has long maintained the position that the numerous patents in
`
`
`
`4 Patent Owner filed two documents identified as Exhibit 2008. The first
`was filed on January 3, 2017, and contains blank lines instead of dates. That
`document is the one discussed and relied upon in parties’ briefs. See, e.g.,
`PO Resp. 2 (filed January 3, 2017, and referring to the redacted declaration).
`A second Exhibit 2008 was filed on July 5, 2017—the day before the oral
`argument. In that second document, which Patent Owner characterizes as an
`unredacted version of the first document (Tr. 29–30), the blanks have been
`replaced with dates. In this Decision, we refer to the first filed Exhibit 2008.
`
`5 Rule 131 pertains to a type of declaration filed during patent prosecution.
`See 37 C.F.R. § 1.131(a) (“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.”). Nonetheless, in this case, we consider the
`Declaration (Exhibit 2008) filed in these trial proceedings.
`
`11
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`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
`
`its play yard family, including those not at issue in the current proceedings,
`
`are entitled to a priority date earlier than that of the “Chen patents.”
`
`
`
`Notwithstanding repeated warnings that no new arguments are
`
`allowed at oral argument, Patent Owner, for the first time at oral argument,
`
`referred to deposition testimony in support of its priority position. See
`
`Paper 9, 3 (Scheduling Order stating: “The patent owner is cautioned that
`
`any arguments for patentability not raised in the response will be deemed
`
`waived.”); Paper 24, 3 (Oral Argument Order stating: “The parties are
`
`reminded that, at the oral argument, they ‘may rely upon evidence that has
`
`been previously submitted in the proceeding and may only present
`
`arguments relied upon in the papers previously submitted.’” (citation
`
`omitted)); Tr. 4, 29–31 (again reminding Patent Owner and confirming that
`
`Patent Owner did not request additional briefing and did not file
`
`observations on cross-examination). In reaching our decision, we consider
`
`the arguments in the briefs, the evidence discussed in the briefs, and other
`
`timely arguments such as any properly raised arguments made during the
`
`oral hearing, for example, proper responsive arguments.
`
`
`
`We now turn to Patent Owner’s arguments concerning the declaration
`
`evidence. Patent Owner initially acknowledges that “the invention as a
`
`whole must be considered in an obviousness analysis,” but then compares
`
`individually three features of the claimed designs to the Exhibits of the
`
`Declaration (“Declaration Exhibits”). PO Resp. 3–6 (referring to Exhibits
`
`A–H of Ex. 2008). Conspicuously absent from Patent Owner’s Response is
`
`an explicit argument that any single Exhibit of the Declaration discloses the
`
`12
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`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
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`visual effect as a whole of either of the claimed designs6. See id. at 3–6; see
`
`also In re Harvey, 12 F.3d at 1065 (the proper analysis requires
`
`consideration of the visual effect as a whole, not design concepts); In re
`
`Blum, 374 F.2d at 907 (“A design is a unitary thing and all of its portions are
`
`material in that they contribute to the appearance which constitutes the
`
`design.”). Also absent from Patent Owner’s case is supporting expert
`
`testimony directed to whether any of the Declaration Exhibits discloses the
`
`claimed designs to the designer of ordinary skill in the art.
`
`
`
`Patent Owner argues that each of three individual features is shown in
`
`some of the Exhibits. The three features discussed by Patent Owner are
`
`“Curved Legs that Bow Outward,” “No Fabric Covering the Exposed Legs,”
`
`and “Outward Flaring at Top of Legs.” Id. at 3–6. Patent Owner’s
`
`Response does not address the claimed designs’ lack of an outward flaring at
`
`the bottom of the legs. Of the three features discussed, Patent Owner does
`
`not argue that any one of those features is shown in every Exhibit. For
`
`example, Patent Owner argues that “[t]he slight outward flaring at the top of
`
`the legs is clearly shown in Exhibits B, C, D, and E” while “[t]he absence of
`
`any fabric covering the exposed legs of the play yard is depicted in Exhibits
`
`A, E, and F.” PO Resp. 4, 5. For each of those Declaration Exhibits that
`
`Patent Owner identifies the presence of less than even these three design
`
`features (all Declaration Exhibits except E), Patent Owner has failed to
`
`provide the necessary linkage between the claimed designs and the
`
`documents. See Cordance, 658 F.3d at 1334 (affirming the district court’s
`
`
`
`6 As Petitioner notes (Reply 9), at least the general concept of a play yard
`having outwardly bowing legs is found in the prior art. See, e.g., Ex. 1003.
`
`13
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`

`

`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
`
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`grant of judgment as a matter of law where the patent owner failed to prove
`
`what the purported conception disclosure means to one of skill in the art).
`
`
`
`Of the three design features discussed by Patent Owner, only
`
`Exhibit E is common to all. At oral argument, Patent Owner, however,
`
`conceded that Exhibit E shows a bottom flare and acknowledged that the
`
`claimed designs do not have a flare at the bottom of the leg. Tr. 43:4–13,
`
`44:2–9. We agree that Exhibit E depicts an outward flaring at the bottom of
`
`the leg, and therefore find that Exhibit E does not depict the overall design
`
`of either the ’970 patent or the ’231 patent.
`
`
`
`The Declaration similarly is lacking. The inventors state that some of
`
`the three design features are shown in certain exhibits but do not state that
`
`all three features are shown in all exhibits. Ex. 2008 ¶ 5. The Declaration
`
`does not address the claimed designs’ lack of an outward flare at the bottom
`
`of the leg. The only exhibit common to all three identified design features is
`
`Exhibit G, and specifically Step 8. Id. We note that the inventors describe
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`Exhibit G, Step 8, as showing that the “outward surface of each of the posts
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`is substantially exposed,” id. (emphasis added), thus injecting an
`
`unexplained qualifier to the challenged patents’ requirement that “[t]here is
`
`no fabric covering the exposed legs.” IPR2016-00816, Ex. 1001 (the ’970
`
`patent), 1; see also IPR2016-00826, Ex. 1001 (the ’231 patent), 1 (“no fabric
`
`covering the exposed legs”); contra Ex. 2008, Exhibit G, Step 7 (“Stretch
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`the loose mesh out to meet the legs. Wrap it around until tight as seen in the
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`picture and tape in place with grey tape.”).
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`Further and as argued by Petitioner (Reply 8–9), the inventors’
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`Declaration is ambiguous in key areas. For example, the two inventors
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`collectively testify that Declaration Exhibits depict “a playard,” “playard rail
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`images,” “our inventive design,” “a prototype of a playard,” and “the
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`designs.” Ex. 2008 ¶¶ 4, 5. As Patent Owner notes, there are several
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`patents, including those not at issue here, “associated with Kolcraft’s
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`Contours line of play yards.” PO Resp. 1–2. The Declaration fails to
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`indicate what the declarants understood to be the claimed designs leaving it
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`unclear as to whether they are referring to the claimed designs specifically or
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`the overall concept embodied in the Contours playard family. Cf. Ex. 1024,
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`24:20–25:8 (Mr. Bretschger testifying, after counsel’s objection on the basis
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`that the question called for a legal conclusion of claim interpretation, that he
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`was unable to testify as to his contribution to the claimed design because he
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`is not an attorney). Rather, the Declarants’ focus on individual design
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`elements and the general concept of a play yard with bowed legs leaves us
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`unable to find that the inventors were referring to the proper frame of
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`reference—the overall visual appearance of the claimed designs of the ’970
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`and ’231 patents. Additionally and as discussed above, Patent Owner
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`concedes that at least some of the Exhibits lack design features of the
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`claimed design, thereby further calling into question any assertion by the
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`inventors that all the Exhibits evidence a conception or reduction to practice
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`of the claimed designs.
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`
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`The inventors’ assertions as to conception, diligence, and reduction to
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`practice are conclusory testimony from lay witnesses where there is no clear
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`indication that either declarant understood the meaning of those terms. Cf.,
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`e.g., Ex. 1024, 77:21–78:7 (Mr. Bretschger, in response to a question about
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`his understanding as to the date of first reduction to practice, stating: “Just
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`so that I’m clear, as a nonlawyer, first reduction to practice means what?”);
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`id. at 72:5–10 (Mr. Bretschger’s response to the question as to whether it is
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`his belief that Exhibit G reflects conception of the claimed design: “Yeah. I
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`mean, I need our lawyers to confirm that. But yes.”); id. at 75:14–21 (“the
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`conception of the invention started with Exhibit A.” (emphasis added)).
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`Patent Owner did not provide expert testimony to support its arguments of
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`antedating.
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`Lastly, the inventors’ testimony is not corroborated by non-inventor
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`testimony or other evidence. For example, Patent Owner at the hearing only
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`identified, as evidence of diligence, the inventors’ declaration and “the
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`testimony of the inventors.”7 Tr. 29:16–30:14. The Exhibits accompanying
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`the Declaration are undated and find identification, if at all, only via the
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`conclusory and uncorroborated testimony of the inventors. Thus, the
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`Exhibits do not corroborate any dates as to the alleged conception, diligence,
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`and reduction to practice. Cf. Gould v. Schawlow, 363 F.2d 908, 920
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`(CCPA 1966) (“The notebook is not adequate corroboration of diligence if it
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`establishes, in connection with other testimony, what Gould did but not
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`when he did it.”).
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`
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`We determine that Patent Owner’s arguments and submissions are
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`insufficient to evidence specific acts at specific times and lack a tie to the
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`
`
`7 Patent Owner presumably was referring to the cross-examination of the
`inventors. Patent Owner referred to the inventors’ deposition transcripts for
`the first time at oral argument, mentioning, in the context of diligence, “a
`weekly kind of correspondence,” “[a] computer CAD model . . . [t]hey
`would send that to [one of the named inventors],” and “regular dialogue
`going back and forth with those kind of documents: Word documents, JPGs,
`renderings, that [one of the named inventors] would have drawn up.”
`Tr. 33:2–3, 34:11–19. Other than what may be contained in the Declaration
`Exhibits, Patent Owner did not enter any such documents into the record.
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`overall visual impression of the claimed designs, and thus are inadequate to
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`evidence antedating conception, diligence, and reduction to practice.
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`Accordingly, Patent Owner has not satisfied its burden of production.
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`
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`Even assuming Patent Owner met its burden of production so as to
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`shift the burden of persuasion back to Petitioner, we determine Petitioner has
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`satisfied that burden. In reply to Patent Owner’s Response and associated
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`evidence, Petitioner argues that “[Patent Owner’s] terse, conclusory attempt
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`to swear behind Chen is wholly inadequate.” Reply 1. Petitioner further
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`argues “[t]he declaration and its exhibits do not establish that the inventors
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`conceived of the actual ornamental design claimed in the patent, rather than
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`the general concepts mentioned in the declaration and the select features
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`discussed in Kolcraft’s Patent Owner Response.” Id. at 2–3. Petitioner’s
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`Reply persuasively addresses and counters Patent Owner’s arguments and
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`evidence. See Reply 7–24. For the reasons discussed above and upon
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`weighing all the evidence directed to antedating the reference, we determine
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`Petitioner has demonstrated persuasively that the challenged patents are not
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`entitled to a priority date earlier than the filing date of Chen ’393.
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`Therefore, Chen ’393 is prior art to the ’970 patent and the ’231 patent.
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`D. The Alleged Obviousness of the Claimed Designs over Chen ’393
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`
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`As mentioned, Petitioner asserts that the claims of the ’970 patent and
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`the ’231 patent would have been obvious over Chen ’393 (Ex. 1007).
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`Pet. 37–39; Reply 1 (reiterating its obviousness challenge and arguing that
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`Patent Owner has waived any argument for patentability other than that
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`directed to the status of Chen ’393 as prior art). Patent Owner relies solely
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`on its argument that Chen ’393 is not prior art, and does not otherwise
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`dispute Petitioner’s contentions that the claims would have been obvious.
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`See PO Resp. passim. As such, Patent Owner has waived any argument
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`that—if Chen ’393 is prior art—the claim of the ’970 patent and the claim of
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`the ’231 patent would have been obvious. See, e.g., Paper 9, 3 (Scheduling
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`Order stating: “The patent owner is cautioned that any arguments for
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`patentability not raised in the response will be deemed waived.”).
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`Nonetheless, we review anew Petitioner’s arguments and the evidence
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`concerning the obviousness challenge.
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`Chen ’393 is a design patent titled “Top Rail of a Playpen.” Ex. 1007,
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`1. Figure 1 of Chen ’393 is shown below.
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`Figure 1 is a perspective view of an embodiment of Chen ’393. Id.
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`Petitioner argues that Chen ’393 discloses the same overall visual
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`impression and, to the extent there are any differences between Chen ’393
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`and the claimed design of the ’970 patent, the differences are de minimus,
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`and asserts that Chen ’393 “readily suggests minor alterations to one of
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`ordinary skill in the art to arrive at a hypothetical reference [the same as the
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`claimed design].” Pet. 37, 39. Petitioner provides side-by-side comparisons
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`of Chen ’393 and the claimed design (id. at 38) and relies on the testimony
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`of Mr. Anders (id. at 38–39; Ex. 1002 ¶¶ 166–172).
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`
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`Below is a side-by-side comparison of illustrative views of the design
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`of the ’970 patent and of Chen ’393:
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`
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`The figure above, on the left, is Figure 2 of the ’970 patent and is a front
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`view of the claimed design. Ex. 1001, 1. The figure above, on the right, is
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`Figure 2 of Chen ’393 showing a front elevational view. Ex. 1007, 1.
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`
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`For the ’231 patent, Petitioner offers arguments similar to those made
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`for the ’970 patent and relies on the testimony of Mr. Anders.
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`IPR2016-00826, Pet. 39–42; Ex. 1002 ¶¶ 162–168. Below is a side-by-side
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`comparison of illustrative views of the design of the ’231 patent and of
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`Chen ’393:
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`IPR2016-00816 (Patent D604,970 S)
`IPR2016-00826 (Patent D616,231 S)
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`The figure abov