Paper No. 12
`Trials@uspto.gov
`571-272-7822 Entered: May 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YOTRIO CORPORATION,
`Petitioner,
`
`v.
`
`LAKESOUTH HOLDINGS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00298
`Patent 6,612,713 C1
`____________
`
`
`Before MICHAEL KIM, KRISTINA M. KALAN, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Declining to Institute Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d); 37 C.F.R. § 42.108
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`
`INTRODUCTION
`I.
`Yotrio Corporation (“Petitioner”) requests an inter partes review of
`
`claims 2, 4, 15, 16, 24, 25, and 28 of U.S. Patent No. 6,612,713 C1
`(“the ’713 patent,” Ex. 1001). Paper 2 (“Pet.”). LakeSouth Holdings, LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” For the reasons explained below, we
`exercise our discretion under 35 U.S.C. § 325(d) and 37 C.F.R. § 42.108(a),
`and decline to institute inter partes review of the challenged claims.
`Related Proceedings
`A.
`The parties identify following pending proceeding involving the ’713
`patent: LakeSouth Holdings, LLC v. Kohl’s Dep’t Stores, Inc., Civil Action
`No. 3:16-cv-01024 (N.D. Tex.). Pet. 1; Paper 9, 2. Concurrently with the
`Petition in this proceeding, Petitioner filed a petition requesting an inter
`partes review of related U.S. Patent No. 8,794,781 B2 (“the ’781 patent”)
`(Case IPR2017-00299). Pet. 2; Paper 9, 2. In addition, an earlier petition
`was filed by a different petitioner requesting an inter partes review of the
`’713 patent. Ace Evert, Inc. v. LakeSouth Holdings, LLC, Case IPR2015-
`00987. Pet. 1. That petition was dismissed, pursuant to settlement, at the
`preliminary proceeding stage. IPR2015-00987, Paper 11.
`The ’713 Patent
`B.
`The ’713 patent, titled “Umbrella Apparatus,” issued on September 2,
`2003. Ex. 1001, at [45], [54]. The ’713 patent relates to a “lawn or patio
`umbrella with an integral lighting system that utilizes cold cathode ray tubes,
`
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`light emitting diodes (LED’s), or florescent lights, to provide relatively
`bright outdoor light for reading and other activities that require relatively
`high light intensities.” Ex. 1001, Abstract.
`Figure 1 of the ’713 patent is reproduced below:
`
`
`Figure 1 depicts the lighted umbrella with motorized opening and closing
`system according to the invention. Id. at 2:29–31. Umbrella apparatus 11
`
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`includes umbrella portion 13, hollow tubular pole portion 15, flexible
`canopy 17, and plurality of rib members 19, 21, 23, and 25. Id. at 3:14–23.
`Integral lighting system 26, which includes a plurality of light strands 27, 29,
`31, 33 attached to the rib members, is carried by at least one of rib members
`19, 21, 23, or 25, and provides high intensity light to umbrella apparatus 11
`and the surrounding area. Id. at 3:25–28, 3:50–52. Umbrella apparatus 11
`may include a base member adapted to receive pole portion 15. Id. at 3:33–
`35.
`
`Umbrella apparatus 11 further includes power system 50, having
`power source 55 preferably disposed in the hollow interior of pole portion
`15 in the embodiment of Figure 1. Id. at 4:23–25. Power source 55 may be
`comprised of rechargeable batteries 55a. Id. at 4:25–27. Power system 50
`provides electrical power to lighting system 26, as well as other unclaimed
`features of the umbrella apparatus, such as opening and closing system 40
`illustrated in Figure 1. Id. at 4:32–33. Power system 50 may be recharged
`by external power system charger 51 or alternate power system charger 62.
`Id. at 4:37–41, 4:45–49. Alternate power system charger 62 includes at least
`one solar cell 35 carried by upper cap portion 64. Id. at 4:47–48.
`The ’713 patent issued on September 2, 2003, from U.S. Patent
`Application No. 10/068,424. Ex. 1001, at [21], [45]. In 2005, Southern
`Sales & Marketing Group, Inc., not a party to this proceeding, requested an
`inter partes reexamination of claims 1–5 of the ’713 patent. Ex. 1003, 1.
`An Inter Partes Reexamination Certificate for the ’713 patent issued on
`September 23, 2013, canceling claims 1, 6, 7, and 9, confirming the
`patentability of claims 10–14, determining patentable claims 2, 3, and 8 as
`amended, determining patentable claims 4 and 5 dependent on an amended
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`claim, and determining patentable added claims 15–29. Ex. 1001,
`Certificate 1:17–25.
`
`Illustrative Claim
`C.
`Of the challenged claims 2, 4, 15, 16, 24, 25, and 28, only claims 4
`
`and 16 are dependent. Claim 2, shown below following reexamination and
`amendment, is illustrative of the challenged claims:
`2. An umbrella apparatus comprising:
`a base support portion;
`a pole portion coupled to the base support portion;
`a canopy portion hingedly coupled to the pole portion;
`a power module carried by the pole portion above the canopy
`portion, the power module having an upper portion and a
`lower portion;
`a rechargeable electrical power system for providing electrical
`power to the umbrella apparatus, the rechargeable electrical
`power system being disposed in the lower portion of the
`power module;
`a solar energy system carried by the upper portion of the power
`module, the solar energy system being adapted to collect solar
`energy and convert the solar energy into electrical energy, the
`solar energy system being conductively coupled to the
`rechargeable electrical power system, such that the solar
`energy collected and converted into electrical energy
`recharges the rechargeable electrical power system; and
`a lighting system carried by the canopy portion, the lighting
`system being conductively coupled to and powered by the
`rechargeable electrical power system.
`
`
`Ex. 1001, Certificate 1:27–49.
`
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`
`§ 103(a)
`
`§ 103(a)
`
`15, 16, 28
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`2, 4, 15, 16, 24, 25,
`28
`2, 24, 25
`
`2, 4, 15, 16, 24, 25,
`28
`
`Proposed Grounds of Unpatentability
`D.
`Petitioner asserts that the challenged claims of the ’713 patent are
`unpatentable based upon the following grounds:
`References
`Statutory Basis Claims Challenged
`Small,1 Pan,2 and knowledge of a
`§ 103(a)
`2, 4, 15, 16, 24, 25,
`person of ordinary skill in the art
`28
`Small, Pan, Szekely,3 and
`2, 24, 25
`knowledge of a person of ordinary
`skill in the art
`Small, Pan, Wu I,4 and knowledge
`of a person of ordinary skill in the
`art
`Small, Hale,5 and knowledge of a
`person of ordinary skill in the art
`Small, Hale, Szekely, and
`knowledge of a person of ordinary
`skill in the art
`Small, Wu I, and knowledge of a
`person of ordinary skill in the art
`
`
`
`The Petition is supported by the Declaration of Robert Smith-
`Gillespie (Ex. 1004).
`
`II. ANALYSIS
`As noted above, Petitioner challenges the patentability of claims 2, 4,
`15, 16, 24, 25, and 28 on numerous grounds. See Pet. 4, 20–63. Patent
`Owner disagrees the asserted references render the challenged claims
`
`
`1 U.S. Patent No. 2,960,094, issued November 15, 1960 (Ex. 1008)
`(“Small”).
`2 U.S. Patent No. 6,439,249 B1, issued August 27, 2002 (Ex. 1010) (“Pan”).
`3 U.S. Patent No. 4,999,060, issued March 12, 1991 (Ex. 1011) (“Szekely”).
`4 U.S. Patent No. 6,089,727, issued July 18, 2000 (Ex. 1007) (“Wu I”).
`5 U.S. Patent No. 5,758,948, issued June 2, 1998 (Ex. 1009) (“Hale”).
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`obvious (see Prelim. Resp. 29–58), and also argues that these grounds
`should be denied under 35 U.S.C. § 325(d) (see id. at 18–29). For the
`reasons that follow, we agree with Patent Owner regarding denial under
`35 U.S.C. § 325(d), and exercise our discretion to deny institution.
`A. 35 U.S.C. § 325(d)
`35 U.S.C. § 325(d) provides the following:
`
`
`
`In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take into
`account whether, and reject the petition or request because, the
`same or substantially the same prior art or arguments previously
`were presented to the Office.
`
`In determining whether to exercise our discretion under Section
`325(d), our first inquiry is to examine whether the Petition presents “the
`same or substantially the same prior art or arguments” as those previously
`presented to the Office. If that first inquiry is satisfied, we then move on to
`the second inquiry, which is to determine whether it is appropriate to
`exercise our discretion to deny institution. See 157 CONG. REC. S1376 (daily
`ed. Mar. 8, 2011) (statement of Sen. Kyl) (“[T]he second sentence of section
`325(d) . . . authorizes the Director to reject any . . . petition . . . on the basis
`that the same or substantially the same prior art or arguments previously
`were presented to the Office. This will prevent parties from mounting
`attacks on patents that raise issues that are substantially the same as issues
`that were already before the Office with respect to the patent. The Patent
`Office has indicated that it currently is forced to accept many requests . . .
`that are cumulative to or substantially overlap with issues previously
`considered by the Office with respect to the patent.”). We also consider the
`Board’s interest in deciding issues efficiently. See 37 C.F.R. § 42.1(b).
`
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`
`The Parties’ Arguments
`B.
`Petitioner anticipatorily argues that “[i]nstitution of this IPR is
`appropriate despite the prior reexam.” Pet. 7. First, Petitioner argues that
`“the particular combination of references and the way in which they are
`applied against the claims herein was not before the Examiner in the
`reexam” and that this alone “is sufficient for institution despite the prior
`reexam.” Id. Further, Petitioner argues, “the Examiner’s analysis of the
`references appears, at best, to be inconsistently applied.” Id. Regarding the
`specific references, Petitioner argues that “Small and Pan were cited in the
`reexam in limited ways, but not in the combination(s) and with respect to the
`particular claims discussed herein” and that Wu II6 was “also included in the
`reexam in limited ways.” Id. at 8. We address these arguments in turn,
`below.
`Patent Owner requests that the Board decline to institute review
`because the prior art asserted has already been considered. Prelim.
`Resp. 18–29. In response to Petitioner’s arguments, Patent Owner argues,
`first, that four prior art references relied upon in the Petition have already
`been considered by the Office. Id. at 19. More particularly, Patent Owner
`
`
`6 Wu II (U.S. Patent No. 6,126,293, issued October 3, 2000) is in the record
`as Ex. 1012. Wu II is a continuation-in-part of Wu I. Ex. 1012, at [63].
`Patent Owner points out that Petitioner discusses Wu I and Wu II together.
`Prelim. Resp. 19 n.2 (citing Pet. 18–20). Patent Owner maintains that the
`disclosures of Wu I and Wu II are largely identical with respect to
`Petitioner’s assertions. Id. Petitioner, in its discussion of Wu I and Wu II,
`does in fact discuss the two references as one, e.g., “Wu I and Wu II disclose
`an umbrella . . .” (Pet. 18); “Wu I and Wu II incorporate a lighting
`system . . .” (id. at 19); “Wu I and Wu II further disclose an umbrella
`cloth . . .” (id. at 20). We are not provided with any reasons to treat the
`disclosures of Wu I and Wu II as distinct.
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`argues that “Small, Pan, Wu, and Hale were all considered during the
`reexamination of the ’713 Patent.” Id. Patent Owner presents a variety of
`examples of portions of the reexamination of the ’713 patent that discuss
`Small, Pan, and Wu II. Id. at 19–25. Patent Owner further argues that Hale
`was relied upon by the third-party requestor in reexamination. Id. at 25.
`Analysis of Small, Pan, Wu I/II, and Hale
`C.
`Regarding the first inquiry, whether the same or substantially the
`same prior art or arguments previously were presented to the Office,
`Petitioner acknowledges that at least Small and Pan were before the Office
`during the reexamination of the ’713 patent. Pet. 8. The evidence of record
`shows that Wu II also was cited by the third-party requester and the
`Examiner (see Ex. 1003, 409, 1239), and that Hale was cited and relied upon
`by the third-party requester during its appeal of the reexamination (see id.
`at 1445). Thus, the Petition presents “the same prior art” previously
`considered by the Office. Accordingly, the first inquiry is satisfied.
`For the second inquiry, whether it is appropriate to exercise our
`discretion to deny institution, we find that Small, Pan, Wu I/II, and Hale
`have been before the Office in connection with the prosecution of the subject
`patent in a manner that supports our exercise of discretion to deny
`institution.
`Patent Owner argues that Small was substantively considered during
`the reexamination on several occasions. Prelim. Resp. 19–20 (citing
`Ex. 1003, 502–44, 1245–51, 1376–79). Patent Owner further argues that
`Pan was cited by the Examiner as an additional reference in response to the
`petition for inter partes reexamination, and thereafter substantively
`considered during the reexamination on several occasions. Id. at 20 (citing
`
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`Ex. 1003, 264–68, 502–44, 1245–51, 1376–79). Patent Owner argues that
`Wu II was considered and applied against claims during reexamination of
`the ’713 patent. Id. at 24 (citing Ex. 1003, 505, 510–27, 1376). The
`Examiner’s Action Closing Prosecution (“ACP”) expressly indicates that
`Small (item 15), Pan (item 6) and Wu II (item 4) were among the references
`“applied or addressed in this Office action.” Ex. 1003, 1239–40.
`Patent Owner further relies on the Examiner’s Reasons for
`Confirmation/Patentability in the ACP, which, according to Patent Owner,
`shows that the Examiner indicated that “none of the prior art of record
`(which at the time included Small, Pan, and Wu) disclosed certain elements
`of the issued claims.” Prelim. Resp. 25–27. We agree with Patent Owner’s
`assessment. In the Examiner’s Reasons for Confirmation/Patentability of
`the claims involved in the ’713 reexamination, she addressed each of the
`claims challenged in the present Petition. Ex. 1003, 1295–1300. The
`Examiner stated that claim 2 was patentable because “none of the art of
`record” (which at the time included Small, Pan, and Wu II, Ex. 1003, 1239–
`40) disclosed the elements of claim 2. Id. at 1295. Regarding claim 29,
`which issued as claim 15, and claim 72, which issued as claim 28, the
`Examiner similarly stated that those were patentable because the references
`“which qualify as prior art under 35 USC 102 for this claim” do not teach
`the respective limitations of the claims. Id. at 1297, 1300.
`All of Petitioner’s Grounds rely on Small as a primary reference.
`Grounds 2 and 3 additionally rely on Pan. Grounds 3 and 6 additionally rely
`on Wu I. Petitioner acknowledges the Examiner specifically considered
`Small, Pan, and Wu II during the inter partes reexamination. Pet. 8.
`
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`Grounds 4 and 5 additionally rely on Hale. We agree with Patent
`Owner that the third-party requestor in the reexamination of the ’713 patent
`presented Hale as a reference in its appeal brief. Prelim. Resp. 25 (citing
`Ex. 1003, 1445, 1452, 1505–09).
`Thus, we find that every one of Petitioner’s Grounds in this Petition
`involves at least two references that have been before the Office during the
`prosecution of the ’713 patent. Not only has the art been before the Office,
`but in the case of Small, Pan, and Wu I/II, we find that the Examiner has
`specifically considered and disposed of these references in an in-depth
`manner that indicates far more than a cursory review.
`Given that backdrop, we disagree with Petitioner’s assertion that,
`because the particular combination of references and the way in which they
`are applied against the claims herein were not before the Examiner in the
`reexamination, this is sufficient for institution. Pet. 7. Petitioner appears to
`take the position that references from the prosecution history that were used
`in connection with a variety of claims or arguments should be disregarded,
`where the grounds of unpatentability set forth in the Petition apply those
`references in a new combination of ways. We are unpersuaded that this
`alone, without further explanation, warrants institution. Finding otherwise
`would allow a petitioner to sidestep Section 325(d) for a reference used in a
`prior rejection, by merely combining it with another reference or adding any
`other reference to create an ostensibly different ground, no matter how
`minor or inconsequential the substantive contribution of that additional
`reference.
`Regarding Petitioner’s argument that “the Examiner’s analysis of the
`references appears, at best, to be inconsistently applied” (Pet. 7), Petitioner
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`provides a single example of an alleged inconsistency involving application
`of Small to certain claims. Id. at 7–8. However, we are unpersuaded that
`this single example from an inter partes reexamination that spanned eight
`years, and involved dozens of claims, presents an adequately detailed
`analysis of the allegedly inconsistent application of all the references
`sufficient to outweigh our above findings, and institute review. Similarly, in
`view of the complete facts and circumstances before us in this proceeding,
`Petitioner fails to explain adequately why such alleged inconsistency should
`impact our analysis under Section 325(d).
`Regarding the specific references, Petitioner argues that “Small and
`Pan were cited in the reexam in limited ways, but not in the combination(s)
`and with respect to the particular claims discussed herein” and that Wu II
`was “also included in the reexam in limited ways.” Id. at 8. We are
`unpersuaded, because Petitioner fails to present any argument distinguishing
`the Examiner’s prior consideration of Small, Pan, and Wu II. Petitioner also
`does not provide a compelling reason why we should re-adjudicate
`substantially the same prior art, applied in substantially the same manner, as
`that presented during reexamination and considered by the Examiner. We
`find that this would not be an efficient use of Board resources in this matter,
`as a request to have us reconsider these references in the combinations
`proposed by Petitioner would appear to fall squarely within the boundaries
`of “requests . . . that are cumulative to or substantially overlap with issues
`previously considered by the Office with respect to the patent.” 157 CONG.
`REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). Section 325(d)
`provides the Office with the discretion to deny a ground based on this exact
`scenario. See id. (“This will prevent parties from mounting attacks on
`
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`patents that raise issues that are substantially the same as issues that were
`already before the Office with respect to the patent.”).
`For the reasons set forth above, we exercise our discretion under
`Section 325(d), and deny the challenges to claims 2, 4, 15, 16, 24, 25, and 28
`as obvious over Small and Pan (Ground 1), claims 15, 16, and 28 as obvious
`over Small, Pan, and Wu I (Ground 3), claims 2, 4, 15, 16, 24, 25, and 28 as
`obvious over Small and Hale (Ground 4), and claims 2, 4, 15, 16, 24, 25, and
`28 as obvious over Small and Wu I (Ground 6).
`Analysis of Szekely
`D.
`Petitioner asserts that claims 2, 24, and 25 are unpatentable under
`35 U.S.C. § 103 as obvious over Small, Pan, and Szekely (Ground 2) and
`also are unpatentable under 35 U.S.C. § 103 as obvious over Small, Hale,
`and Szekely (Ground 5). Pet. 29–32, 43–46.
`Regarding Szekely, which was not previously considered by the
`Office, Patent Owner argues that it is non-analogous art and is cumulative of
`previously considered references. Prelim. Resp. 27.
`Our above analysis concerning Small, Pan, and Hale, in view of
`Section 325(d), is also largely applicable to these two grounds of
`unpatentability. We are cognizant that these two grounds of unpatentability
`additionally rely on Szekely. Regarding the role of Szekely in these two
`grounds, Petitioner asserts: “Small and Pan disclose each of the limitations
`of the Challenged Claims. However, Szekely discloses additional structure
`as it relates to the claimed power module, rechargeable electrical power
`system, and the solar energy system.” Pet. 30 (regarding Ground 2).
`Similarly, Petitioner asserts: “Small and Hale disclose each of the
`limitations of the Challenged Claims. However, Szekely discloses
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`additional structure as it relates to the claimed power module, rechargeable
`electrical power system, and the solar energy system.” Id. at 44 (regarding
`Ground 5). This “additional structure” is the only aspect of claims 2, 24, and
`25 for which Szekely is relied upon. We are unpersuaded that the inclusion
`of Szekely is a sufficient basis to alter appreciably our above analysis of
`Small, Pan, and Hale in view of Section 325(d).
`For the reasons set forth above, we exercise our discretion under
`Section 325(d), and deny the challenges to claims 2, 24, and 25 as obvious
`over Small, Pan, and Szekely (Ground 2), and as obvious over Small, Hale,
`and Szekely (Ground 5).
`
`III. CONCLUSION
`Having considered the totality of the circumstances and the evidence
`
`before us, and for the reasons set forth above, we exercise our discretion
`under 35 U.S.C. § 325(d) and decline to institute an inter partes review on
`any of claims 2, 4, 15, 16, 24, 25, and 28 of the ’713 patent on any ground.
`IV. ORDER
`In consideration of the foregoing, it is hereby
`
`ORDERED that that no trial or inter partes review is instituted for any
`
`claim of the ’713 patent on any ground in this proceeding.
`
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`
`FOR PETITIONER:
`Dwayne C. Norton
`Li Chen
`Michael Fagan
`Chen Malin LLP
`
`dnorton@chenmalin.com
`lchen@chenmalin.com
`mfagan@chenmalin.com
`
`PATENT OWNER:
`Andrew J. Wright
`Bruster PLLC
`
`andrew@brusterpllc.com
`
`
`
`
`
`