UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
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`PATENT TRIAL AND APPEAL BOARD
`
`YOTRIO CORPORATION,
`
`Petitioner
`
`v.
`
`LAKESOUTH HOLDINGS, LLC,
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`Patent Owner.
`
`U.S. Patent No. 6,612,713
`Title: Umbrella Apparatus
`
`Case No. IPR2017-_____
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`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,612,713
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`PATENT TRIAL AND APPEAL BOARD
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`YOTRIO CORPORATION,
`
`Petitioner
`
`v.
`
`LAKESOUTH HOLDINGS, LLC,
`
`Patent Owner.
`
`U.S. Patent No. 6,612,713
`Title: Umbrella Apparatus
`
`Case No. IPR2017-_____
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,612,713
`
`
`
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`Table of Contents
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`TABLE OF EXHIBITS ------------------------------------------------------------------ v
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`I.
`
`INTRODUCTION ---------------------------------------------------------------- 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ---------------------- 1
`
`A.
`
`Real Party-in-Interest ----------------------------------------------------- 1
`
`B.
`
`C.
`
`Related Matters ------------------------------------------------------------ 1
`
`Lead and Back-Up Counsel ---------------------------------------------- 2
`
`D.
`
`Service Information ------------------------------------------------------- 2
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`E.
`
`F.
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`Electronic Service --------------------------------------------------------- 2
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`Payment of Fees Pursuant to 37 C.F.R. § 42.103 --------------------- 3
`
`III.
`
`POWER OF ATTORNEY UNDER 37 C.F.R. § 42.10 ---------------------- 3
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`IV. REQUIREMENTS UNDER 37 C.F.R. §§ 42.22 AND 42.104 ------------- 3
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`A. Grounds for Standing ----------------------------------------------------- 3
`
`B.
`
`Statement of Precise Relief Requested and Identification of
`Challenge (§ 42.104(b)) -------------------------------------------------- 3
`
`V.
`
`THE CHALLENGED CLAIMS ARE UNPATENTABLE ----------------- 4
`
`1.
`
`2.
`
`3.
`
`A.
`
`The ’713 Patent ------------------------------------------------------------ 4
`
`Overview --------------------------------------------------------------------------- 4
`
`Summary of the Prosecution History ------------------------------------------- 6
`
`Level of Ordinary Skill in the Art ----------------------------------------------- 8
`
`B.
`
`Claim Construction ------------------------------------------------------- 10
`
`1.
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`“Recessed” ------------------------------------------------------------------------ 11
`
`C.
`
`Description of Prior Art References ------------------------------------ 11
`
`
`
`i
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`
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`1.
`
`2.
`
`3.
`
`4.
`
`Small ------------------------------------------------------------------------------- 13
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`Hale -------------------------------------------------------------------------------- 14
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`Pan --------------------------------------------------------------------------------- 15
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`Szekely----------------------------------------------------------------------------- 17
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`5. Wu I and Wu II ------------------------------------------------------------------- 18
`
`D. Ground 1: The Combination of Small and Pan Invalidates the
`Challenged Claims ------------------------------------------------------- 20
`
`1. Motivation to Combine Small and Pan ---------------------------------------- 20
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
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`7.
`
`8.
`
`The Combination of Small and Pan Renders Claim 2 Obvious ------------ 21
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`The Combination of Small and Pan Invalidates Claim 4-------------------- 23
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`The Combination of Small and Pan Invalidates Claim 15 ------------------ 23
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`The Combination of Small and Pan Invalidates Claim 16 ------------------ 25
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`The Combination of Small and Pan Invalidates Claim 24 ------------------ 25
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`The Combination of Small and Pan Invalidates Claim 25 ------------------ 26
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`The Combination of Small and Pan Invalidates Claim 28 ------------------ 28
`
`E.
`
`Ground 2: The Combination of Small and Pan Further in View of
`Szekely Invalidates Claims 2, 24, and 25 ----------------------------- 29
`
`1. Motivation to Combine Small and Pan and Szekely ------------------------- 29
`
`2.
`
`3.
`
`4.
`
`The Combination of Small and Pan with Szekely Invalidates Claim 2 --- 30
`
`The Combination of Small and Pan and Szekely Invalidates Claim 24 --- 31
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`The Combination of Small and Pan and Szekely Invalidates Claim 25 --- 32
`
`F.
`
`Ground 3: The Combination of Small and Pan Further in View of
`Wu I Invalidates Claims 15, 16, and 28 ------------------------------- 32
`
`1. Motivation to Combine Small and Pan and Wu I ---------------------------- 32
`
`
`
`ii
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`
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`2.
`
`The Combination of Small and Pan and Wu I Invalidates Claims 15, 16,
`and 28 ------------------------------------------------------------------------------ 33
`
`G. Ground 4: The Combination of Small and Hale Invalidates the
`Challenged Claims ------------------------------------------------------- 34
`
`1. Motivation to Combine Small and Hale --------------------------------------- 34
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
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`The Combination of Small and Hale Invalidates Claim 2 ------------------ 36
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`The Combination of Small and Hale Invalidates Claim 4 ------------------ 37
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`The Combination of Small and Hale Invalidates Claim 15 ----------------- 38
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`The Combination of Small and Hale Invalidates Claim 16 ----------------- 39
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`The Combination of Small and Hale Invalidates Claim 24 ----------------- 39
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`The Combination of Small and Hale Invalidates Claim 25 ----------------- 41
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`The Combination of Small and Hale Invalidates Claim 28 ----------------- 42
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`H. Ground 5: Claims 2, 24, and 25 Are Obvious Based on Small in
`View of Hale and Szekely ----------------------------------------------- 43
`
`1. Motivation to Combine Small and Hale with Szekely ---------------------- 43
`
`2.
`
`3.
`
`4.
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`The Combination of Small and Hale and Szekely Invalidates Claim 2 --- 44
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`The Combination of Small and Hale and Szekely Invalidates Claim 24 -- 45
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`The Combination of Small and Hale and Szekely Invalidates Claim 25 -- 45
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`I.
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`Ground 6: The Combination of Small and Wu I Invalidates Claims
`2, 4, 15, 16, 24, 25, and 28 ---------------------------------------------- 46
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`1. Motivation to Combine Small and Wu I -------------------------------------- 46
`
`2.
`
`The Combination of Small and Wu I Invalidates Claim 2, 4, 15, 16, 24, 25,
`and 28 ------------------------------------------------------------------------------ 47
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`VI. CLAIM CHARTS ---------------------------------------------------------------- 48
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`A.
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`Claim Charts Supporting Invalidity ------------------------------------ 48
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`
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`iii
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Claim 2 ---------------------------------------------------------------------------- 48
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`Claim 4 ---------------------------------------------------------------------------- 53
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`Claim 15 --------------------------------------------------------------------------- 54
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`Claim 24 --------------------------------------------------------------------------- 56
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`Claim 25 --------------------------------------------------------------------------- 59
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`Claim 28 --------------------------------------------------------------------------- 60
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`VII. CONCLUSION ------------------------------------------------------------------- 63
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`
`
`iv
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`
`
`Exhibit
`YOT-1001
`
`YOT-1002
`YOT-1003
`YOT-1004
`YOT-1005
`YOT-1006
`YOT-1007
`YOT-1008
`YOT-1009
`YOT-1010
`YOT-1011
`YOT-1012
`YOT-1013
`YOT-1014
`
`TABLE OF EXHIBITS
`
`Description
`U.S. Patent No. 6,612,713 to Kuelbs, including re-
`exam certificate (the “’713 patent”)
`File history of the ’713 patent
`File history of the Reexamination of the ’713 patent
`Declaration of Robert Smith-Gillespie
`U.S. Patent No. 2,087,537 to Finkel (“Finkel”)
`U.S. Patent No. 5,053,931 to Rushing (“Rushing”)
`U.S. Patent No. 6,089,727 to Wu (“Wu I”)
`U.S. Patent No. 2,960,094 to Small (“Small”)
`U.S. Patent No. 5,758,948 to Hale (“Hale”)
`U.S. Patent No. 6,439,249 to Pan (“Pan”)
`U.S. Patent No. 4,999,060 to Szekely (“Szekely”)
`U.S. Patent No. 6,126,293 to Wu (“Wu II”)
`U.S. Patent No. 5,222,799 to Sears (“Sears)
`LakeSouth Holdings, LLC’s Claim Construction Brief
`in LakeSouth Holdings, LLC v. Ace Evert, Inc., Case
`No. 3:14-CV-1348-N, Dkt. 45
`
`v
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`
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`I.
`
`INTRODUCTION
`
`Yotrio Corporation (“Yotrio”) requests Inter Partes Review (“IPR”) of
`
`claims 2, 4, 15, 16, 24, 25, and 28 (collectively, the “Challenged Claims”) of U.S.
`
`Patent No. 6,612,713 (“’713 patent”) (YOT-1001).1
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A.
`
`Real Party-in-Interest
`
`Petitioner Yotrio is the real party-in-interest, as well as Kohl’s Department
`
`Stores, Inc. Kohl’s Illinois, Inc. (collectively “Kohl’s”), and Home Depot U.S.A.,
`
`Inc. (“Home Depot”).
`
`B.
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`Related Matters
`
`Patent Owner LakeSouth Holdings, LLC (“LakeSouth” or “Patent Owner”)
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`sued Yotrio customers Kohl’s, and Home Depot alleging infringement of the ’713
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`patent in an action pending in the U.S. District Court for the Northern District of
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`Texas, Dallas Division, styled LakeSouth Holdings, LLC v. Kohl’s Department
`
`Stores, Inc., Civil Action No. 3:16-cv-01024 (“the ’1024 action”). The Patent
`
`Owner is asserting claims 2, 4, 15, 16, 24, 25 and 28 of the ’713 patent against
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`Kohl’s and Home Depot in the ’1024 action. In addition, an IPR Petition was filed
`
`against the ’713 patent on April 1, 2015, by Petitioner Ace Evert, Inc. (IPR2015-
`
`00987). That Petition was terminated pursuant to the PTAB’s grant of a joint
`
`
`1 The prosecution file history and re-examination file histories of the ’713 patent
`are provided as Exhibits YOT-1002 and YOT-1003, respectively.
`
`
`
`1
`
`
`
`motion to terminate due to settlement.
`
`In the ’1024 action, LakeSouth also asserts U.S. Patent No. 8,794,781 (the
`
`’781 patent), a continuation of the ’713 Patent. Yotrio challenges claims 1, 2, 4,
`
`and 5 of the ’781 Patent in an IPR Petition filed concurrently herewith.
`
`C.
`
`Lead and Back-Up Counsel
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`Yotrio hereby designates the following lead and back-up counsel:
`
`Lead Counsel
`
`Back-Up Counsel
`
`Li Chen (Reg. No. 46,284)
`Email: lchen@chenmalin.com
` Michael Fagan (Reg. No. 71,654)
`Email: mfagan@chenmalin.com
`
`Chen Malin LLP
`1700 Pacific Avenue, Suite 2400
`Dallas, Texas 75201
`Tel: (214) 627-9950
`Fax: (214) 627-9940
`
`Dwayne C. Norton (Reg. No. 48,435)
`Email: dnorton@chenmalin.com
`
`
`Chen Malin LLP
`1700 Pacific Avenue, Suite 2400
`Dallas, Texas 75201
`Tel: (214) 627-9950
`Fax: (214) 627-9940
`
`
`
`D.
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`Service Information
`
`Service on Yotrio may be made by e-mail to lead or backup counsel, mail or
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`hand delivery to: Chen Malin LLP, 1700 Pacific Avenue, Suite 2400, Dallas,
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`Texas 75201. Service may also be by fax to the number for lead counsel, which is
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`(214) 627-9940. Yotrio served a copy of this Petition, in its entirety, to the
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`correspondence address of record for the ’713 patent, as indicated in the attached
`
`Certificate of Service.
`
`E.
`
`Electronic Service
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`
`
`2
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`
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`Yotrio consents to electronic service by email directed to
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`lchen@chenmalin.com, dnorton@chenmalin.com, and mfagan@chenmalin.com
`
`F.
`
`Payment of Fees Pursuant to 37 C.F.R. § 42.103
`
`The requisite fee set forth in 37 C.F.R. § 42.15(a) either has been paid or
`
`authorized at the time of the filing of the Petition. The number of challenged
`
`claims does not exceed 20 claims, and thus no excess claim fees are required.
`
`III. POWER OF ATTORNEY UNDER 37 C.F.R. § 42.10
`
`Yotrio is filing, concurrently herewith, a power of attorney in accordance
`
`with 37 C.F.R. § 42.10(b).
`
`IV. REQUIREMENTS UNDER 37 C.F.R. §§ 42.22 AND 42.104
`
`A. Grounds for Standing
`
`Yotrio certifies that the ’713 patent is available for IPR and that Yotrio is not
`
`barred or estopped from requesting an IPR. The same is true with respect to Kohl’s
`
`and Home Depot.
`
`B.
`
`Statement of Precise Relief Requested and Identification of Challenge (§
`42.104(b))
`
`Yotrio herein demonstrates that there is a reasonable likelihood of prevailing
`
`(“RLP”) on at least one of the Challenged Claims. Specifically, this Petition,
`
`supported by the Declaration of Robert Smith-Gillespie (YOT-1004), demonstrates
`
`that the following references and the general knowledge of a person of ordinary
`
`skill, in the combinations described in detail below, render obvious claims 2, 4, 15,
`
`
`
`3
`
`
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`16, 24, 25, and 28 of the ’713 patent: U.S. Patent Nos. 2,960,094 (“Small”),
`
`5,758,948 (“Hale”), 6,439,249 (“Pan”), 4,999,060 (“Szekely”), and 6,089,297
`
`(“Wu I”). Accordingly, Yotrio requests that the Board institute an IPR of claims 2,
`
`4, 15, 16, 24, 25, and 28 and cancel those claims as invalid for being obvious under
`
`35 U.S.C. § 103 on the following grounds:
`
`2, 24, 25
`
`15, 16, 28
`
`2, 4, 15, 16, 24, 25,
`28
`
`2, 24, 25
`
`
`
`Ground
`Ground 1
`
`Ground 2
`
`Ground 3
`
`Ground 4
`
`Ground 5
`
`Ground 6
`
`
`
`Challenged Claims Basis for Challenge and References
`2, 4, 15, 16, 24, 25,
`Obvious based on Small in view of Pan, and
`28
`the knowledge of a person of ordinary skill in
`the art
`Obvious based on Small in view of Pan and
`Szekely, and the knowledge of a person of
`ordinary skill in the art
`Obvious based on Small in view of Pan and Wu
`I, and the knowledge of a person of ordinary
`skill in the art
`Obvious based on Small in view of Hale, and
`the knowledge of a person of ordinary skill in
`the art
`Obvious based on Small in view of Hale and
`Szekely, and the knowledge of a person of
`ordinary skill in the art
`Obvious based on Small in view of Wu I, and
`the knowledge of a person of ordinary skill in
`the art
`
`2, 4, 15, 16, 28
`
`V.
`
`THE CHALLENGED CLAIMS ARE UNPATENTABLE
`
`A.
`
`The ’713 Patent
`
`1. Overview
`
`The ’713 patent “relates in general to patio umbrellas, and in particular, to an
`
`improved patio umbrella with integral lighting system and other module electronic
`
`
`
`4
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`
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`systems and components.” (YOT-1001, 1:11-14). The Challenged Claims are
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`directed to an outdoor umbrella with a lighting system and rechargeable batteries,
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`which uses solar cells to recharge the rechargeable batteries, which in turn, power
`
`the lighting system. (YOT-1001, 12:26-57).
`
`Exemplary Figure 1 of the ’713 patent, reproduced below, illustrates an
`
`umbrella apparatus 11, which includes an umbrella portion 13 and a pole portion
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`15. The pole portion is coupled to and supports the umbrella portion, and the
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`umbrella portion is preferably retractable and may be moved between a raised, or
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`expanded open position, which is shown; and a lowered, or retracted, closed
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`position in which the umbrella portion is collapsed down about the pole portion.
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`(YOT-1001, 3:12-22).
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`
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`A flexible canopy 17 is attached to and covers the umbrella portion 13.
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`Canopy 17 is supported by a plurality of rib members 19, 21, 23, and 25, which are
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`
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`5
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`
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`preferably hingedly coupled to an upper portion of the pole portion 15. (YOT-
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`1001, 3:14-26). An integral lighting system 26 is carried by at least one of rib
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`members 19, 21, 23, and 25. (YOT-1001, 3:26-27). The lighting system provides
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`high intensity light to umbrella apparatus 11 and the surrounding area. (YOT-1001,
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`3:27-28). The umbrella apparatus also includes a base member 57 adapted to
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`receive the pole portion to support the umbrella apparatus in the upright position.
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`(YOT-1001, 3:32-34).
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`In accordance with an embodiment, shown in Figure 6, a power unit 725 is
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`provided for connection to the uppermost portion of the umbrella, and includes at
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`least one solar collector 727 and an interior battery compartment 707. (YOT-1001,
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`12:31-5). The solar collector collects solar energy and converts and utilizes the
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`energy to recharge a rechargeable power source that is maintained in the battery
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`compartment. (YOT-1001, 12:26-57). A light subassembly 721, which is
`
`connected to the umbrella, is conductively coupled to the power unit and energized
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`by the power source. (Id.)
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`2. Summary of the Prosecution History
`
`The original patent application included twenty claims. (YOT-1002 at 0093–
`
`97).2 The Patent Office rejected claim 1 and five other claims, but stated that claim
`
`
`2 Citations to YOT-1002 and YOT-1003 refer to the branded YOT-1002-XXXX
`and YOT-1003-XXXX numbering.
`
`
`
`6
`
`
`
`6, among others, which recited a lighting system carried by the canopy, would be
`
`allowable if rewritten to include the underlying independent claims. (YOT-1002 at
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`0128, 0133–134). Applicant cancelled the rejected claims and amended the
`
`remaining claims to obtain allowance of 14 claims. (YOT-1002 at 0147–49). None
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`of the references relied upon herein were cited by the Examiner.
`
`In 2005, an inter partes reexamination was initiated against the ’713 patent,
`
`resulting in amendments of all of the original claims, except claim 10 (not a subject
`
`of this Petition) and additional claims. Institution of this IPR is appropriate despite
`
`the prior reexam. First, 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. This alone is sufficient for institution despite the prior reexam. Further,
`
`the Examiner’s analysis of the references appears, at best, to be inconsistently
`
`applied. For example, the Examiner correctly maintained that proposed amended
`
`claim 1 was rendered obvious (see claim at YOT-1003 at 0916, and analysis
`
`rejecting at YOT-1003 at 1063–68). Indeed, the examiner explicitly states, “[W]ith
`
`regard to simply the teaching of a module carrying a solar energy system, Small
`
`teaches a solar panel on top of a disc shaped housing that could fairly be termed a
`
`module . . . .” (YOT-1003 at 1064–65). However, other similar claims (barely
`
`distinguishable from the rejected claim 1), for example claims 2 and 24, were
`
`allowed. (YOT-1003 at 1397–98). This further demonstrates the appropriateness of
`
`
`
`7
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`
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`instituting the requested review.
`
`With respect to the specific references relied upon herein, Small and Pan
`
`were cited in the prior reexam in limited ways, but not in the combination(s) and
`
`with respect to the particular claims discussed herein. Other references discussed
`
`herein, but not specifically relied upon, namely, Wu II and Rushing, were also
`
`included in the reexam in limited ways.
`
`Notably, the Patent Owner unsuccessfully attempted to swear behind Pan
`
`(and other references) using declarations pursuant to 37 CFR §1.131. (YOT-1003
`
`at 0344–48 (first declaration), 0703–10 (second declaration), 0610–611 (USPTO
`
`rejection of first declaration), 1099–111 (USPTO rejection of second declaration);
`
`01856 (patentee submission of declarations)).
`
`3. Level of Ordinary Skill in the Art
`
`Petitioner seeks institution based on obviousness grounds. Thus, in
`
`accordance with the Graham factors, a determination must be made of the level of
`
`ordinary skill in the art. The ’713 patent encompasses several disciplines including
`
`the mechanical, electrical, and lighting fields. However, the patent specification
`
`provides very little technical discussion beyond basic component assembly. In fact,
`
`the specification describes the various electronics systems simply as
`
`“components,” without much detail, implying that one need not be able to engineer
`
`the circuits of the system, but to simply apply readily available component
`
`
`
`8
`
`
`
`modules. (YOT-1004, ¶ 9).
`
`As an example, the specification states that an LED or fluorescent lighting
`
`subassembly may be “easily” used instead of cold cathode tube light
`
`subassemblies, as LED and fluorescent systems designed for use with solar and
`
`low voltage lighting are known in the art. (YOT-1001, 12:58-67). The specification
`
`further states that “[i]mplementation of LED, fluorescent, or other alternate light
`
`sources instead of cold cathode tube light subassembly 721 is [] straightforward
`
`and need not be further described in detail.” (YOT-1001, 12:67-13:3). In addition,
`
`the most intricate electrical diagrams are system level block diagrams (i.e., Figures
`
`5A, 5B, 10, 11), all of which are absent of any circuit design information or any
`
`novel electronic features unique to the ’713 patent. (YOT-1004, ¶ 9).
`
`As such, and as explained in the expert declaration submitted herewith, a
`
`person of ordinary skill in the art at the time of the purported invention of the ’713
`
`patent (“POSA”), would have at least a 2-year technical degree in electronics
`
`technology or electrical engineering technology, and at least three years of hands-
`
`on experience in equipment maintenance, repair, and/or electro-mechanical
`
`assembly and troubleshooting. (YOT-1004, ¶ 10).
`
`Further, a POSA is presumed to be aware of all pertinent art, thinks along
`
`conventional wisdom in the art, and is a person of ordinary creativity. For purposes
`
`of this Petition, the following references are relevant: U.S. Patent Nos. 2,087,537
`
`
`
`9
`
`
`
`(“Finkel”) (YOT-1005); 5,053,931 (“Rushing”) (YOT-1006); 6,089,727 (“Wu I”)
`
`(YOT-1007); 2,960,094 (“Small”) (YOT-1008); 5,758,948 (“Hale”) (YOT-1009);
`
`6,439,249 (“Pan”) (YOT-1010); 4,999,060 (“Szekely”) (YOT-1011); 6,126,293
`
`(“Wu II”) (YOT-1012); and 5,222,799 (“Sears”) (YOT-1013). As addressed in
`
`detail below, at or before the time of invention of the ’713 patent, a POSA would
`
`have been knowledgeable of the following in the art, as evidenced by the cited
`
`references: (i) umbrella incorporating lighting system (Finkel (YOT-1005),
`
`Rushing (YOT-1006), Wu I (YOT-1007), Wu II (YOT-1012), Pan (YOT-1010));
`
`(ii) light systems mounted to a support member, including use of channels for
`
`holding lights (Hale (YOT-1009), Pan (YOT-1010), Sears (YOT-1013)), hanging
`
`lights from support members (Rushing (YOT-1006)), and mounting lights to be
`
`recessed in a rib member (Wu I (YOT-1007), Wu II (YOT-1012)); (iii) use of light
`
`emitting diode (LED) with umbrellas (Wu I (YOT-1007), Wu II (YOT-1012)); (iv)
`
`use of solar power with lawn umbrellas (Small (YOT-1008)); and (v) use of solar
`
`power in outdoor lighting systems (Szekely (YOT-1011)). These features, further
`
`discussed and analyzed below, are indicative of the knowledge of a POSA at the
`
`time of the alleged invention. (See YOT-1004, ¶¶ 15-24, 29, 32).
`
`B.
`
`Claim Construction
`
`A claim term subject to inter partes review should be given its broadest
`
`reasonable interpretation (“BRI”) in light of the specification of the patent in which
`
`
`
`10
`
`
`
`it appears. 37 C.F.R. § 42.100(b). Yotrio requests that the Board give all claim
`
`terms not specifically construed herein their broadest reasonable construction.
`
`Yotrio in no way contends that the claim constructions used in this proceeding is
`
`the appropriate construction for a district court proceeding.
`
`1.
`
`“Recessed”
`
`The claim limitation “recessed,” for this matter, should be construed to mean
`
`“partially or fully recessed,” which is the same construction that the patent owner
`
`advocated in prior proceedings (see YOT-1014 at 13–15), and which a district
`
`court adopted.
`
`In arguing for a construction of the term “recessed,” the Patentee relied upon
`
`several embodiments in the specification of the ’713 patent, shown in Figures 1,
`
`2A, 3A, 4A, 4B, 4C, and 6, arguing that these implementations showed varying
`
`degrees of being recessed, consistent with Patentee’s partial or fully recessed
`
`construction. (See YOT-1014 at 14–15 (arguing construction based on patent and
`
`file history)). Accordingly, and for this petition, “recessed” under the BRI standard
`
`should be construed to mean “partially or fully recessed.”
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`C. Description of Prior Art References
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`The Challenged Claims, or subsets of those claims, are invalid based on
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`combinations of Small (YOT-1008), Hale (YOT-1009), Pan (YOT-1010), Szekely
`
`(YOT-1011), Wu I (YOT-1007), and the knowledge of a POSA. A brief
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`
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`11
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`
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`description of each reference follows. A detailed discussion of the references and
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`the particular grounds for invalidity are discussed at Sections D–I below, along
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`with the motivation to combine the references. In general, however, a POSA would
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`not have perceived any technical, commercial, or conceptual obstacles to
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`combining the disclosures of these references as set forth herein. (See YOT-1004, ¶
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`63).
`
`During the Reexamination of the ’713 patent, the USPTO twice rejected
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`Patent Owner’s attempts to antedate certain references using a 37 C.F.R. § 1.131(a)
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`declaration. Patent Owner first asserted to have conceived “prior to 13 November
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`2000” and employed diligent efforts through filing (YOT-1003 at 0344–48); then
`
`later, asserted it conceived “prior to 30 April 1999.” (YOT-1003 at 0703–10). The
`
`USPTO rejected Patent Owner’s assertions in both instances because, inter alia,
`
`the proffered evidence was inadequate in that it did not show that the inventor had
`
`a complete invention, and further, even if believed, did not show diligence for the
`
`relevant time period. (YOT-1003 at 610–611, 1099–111).
`
`At least due to the possibility that Patent Owner may once more attempt to
`
`antedate references herein, Petition requests that each ground for institution be
`
`evaluated regardless of its strength relative to other stated grounds. Yotrio in no
`
`way concedes that any attempt to antedate is appropriate and specifically reserves
`
`all rights with respect to any such attempts by Patent Owner.
`
`
`
`12
`
`
`
`1.
`
`Small
`
`Small issued on November 15, 1960, from an application filed on December
`
`3, 1957. (YOT-1008, Cover Page). Small is therefore prior art to the ’713 patent
`
`under at least 35 U.S.C. § 102(a), (b), and (e).
`
`Small, as shown in Figure 1 below, discloses a lawn or beach umbrella
`
`utilizing a conventional rechargeable battery, in combination with a solar battery
`
`arranged upon the top of the umbrella, for providing an electrical source of supply
`
`for actuating a drive motor for moving the umbrella into open position. The solar
`
`battery collects solar energy and is thus charged, providing the power source on a
`
`sunny day; and then charges the rechargeable storage battery, which can provide
`
`the power source when there is no sun. (YOT-1008, Abstract, 2:28-36, 2:53-64).
`
`Further, the rechargeable storage battery can be located inside the post 10
`
`and beneath the collapsible top 11, as shown in Figure 1. (YOT-1008, 2:28-36, Fig.
`
`1). Small also discloses that the storage battery 35 can be located anywhere along
`
`the post 10, or external to the post 10, as it is not essential that it be adjacent the
`
`solar battery 34. (YOT-1008, 2:32-36, Fig. 1). Thus, ostensibly the rechargeable
`
`storage battery 35 can be located directly under the solar battery 34 and above the
`
`collapsible top.
`
`
`
`13
`
`
`
`
`As disclosed in Small, umbrellas incorporating solar batteries for a power
`
`source, and used in conjunction with rechargeable batteries, were well known in
`
`the art over 40 years prior to the filing of the ’713 patent. (YOT-1008, 2:28-36).
`
`2.
`
`Hale
`
`Hale was filed on July 10, 1996 and issued on June 2, 1998. (YOT-1009,
`
`Cover Page). Hale is therefore prior art to the ’713 patent under at least 35 U.S.C.
`
`§ 102(a), (b), and (e). Hale has not previously been cited or relied upon by the
`
`USPTO in connection with the ’713 patent.
`
`Hale discloses a lighting display device, such as a decorated lighted tree, and
`
`in particular, Hale discloses a collapsible, light-supporting device that opens and
`
`closes similarly to an umbrella, and when illuminated, resembles a lighted outdoor
`
`tree or similar lighted object such as an umbrella. (YOT-1009, 1:4-8). Exemplary
`
`Figure 1 of Hale is shown below.
`
`
`
`14
`
`
`
`
`
`
`
`Importantly, Hale discloses a lighting structure carried by a canopy-like
`
`portion, which is conductively coupled to and powered by an electrical power
`
`source. For example, Hale discloses that each of a plurality of rib-like support
`
`members “has a generally C-shaped configuration with an open side facing the
`
`shaft and a plurality of spaced openings through a surface of each of the support
`
`members fac[ing] away from the shaft. Each of the openings is adapted to receive a
`
`light bulb from a string of lights, and the channel is adapted to receive a plurality
`
`of light sockets supporting the lights.” (YOT-1009, Abstract). Further, Hale
`
`discloses that electrical conductors connecting the lighting elements are recessed
`
`into the C-shaped channels. (See, e.g., YOT-1001, 9:57-62; YOT-1009, 3:1-7,
`
`3:36-48, Fig. 9).
`
`3.
`
`Pan
`
`
`
`15
`
`
`
`Pan was filed on November 13, 2000 and issued on August 27, 2002. (YOT-
`
`1010, Cover Page.) Pan is prior art to the ’713 patent under at least 35 U.S.C. §
`
`102(e).
`
`Pan discloses an outdoor umbrella with a lighting arrangement having a
`
`canopy-like structure containing rib members that are hingedly attached to a pole
`
`portion for opening and closing. (YOT-1010, Abstract). Pan incorporates an LED
`
`lighting system with multiple rib members to support a plurality of lighting
`
`elements. (See, e.g., YOT-1010, 1:57-2:14).
`
`Fig. 1 of Pan.
`
`
`
`In particular, Pan discloses “an outdoor umbrella . . . wherein the outdoor
`
`umbrella comprises an awning frame for supporting a fabric thereon and a lighting
`
`
`
`16
`
`
`
`arrangement.” (YOT-1010, 2:37-42). Pan also discloses a folding frame
`
`comprising a plurality of hollow awning tubes 3 radially extending from upper
`
`casing 1, and a supporting frame for supporting the awning frame comprising a
`
`stand 10 and a supporting shaft 7. (YOT-1010, 2:42-52). Pan also discloses that the
`
`switchable power supply can be a rechargeable battery such that no additional wire
`
`extension is needed for electrically connecting to an external power supply. (YOT-
`
`1010, 3:17-28).
`
`4.
`
`Szekely
`
`Szekely issued from an application filed on August 11, 1989, and issued on
`
`March 12, 1991. (YOT-1011, Cover Page). Szekely is therefore prior art to the
`
`’713 patent under at least 35 U.S.C. § 102(a), (b), and (e). Szekely was not cited to
`
`or discussed during the original prosecution of the ’713 patent or Reexamination.
`
`Thus, Szekely has not previously been cited or relied upon by the USPTO in
`
`connection with the ’713 patent.
`
`Figure 1 of Szekely is shown below. Szekely discloses a self-contained
`
`photovoltaic powered lawn or pathway light, and is a stand-alone lamp which
`
`includes a self-contained electrical power source such as a battery and which is
`
`maintained in a charged condition by a solar cell array. The electrical power from
`
`the battery is supplied to the light bulb when the solar cell array is not producing
`
`electricity, that is, when the ambient light falls below a predetermined level. (YOT-
`
`
`
`17
`
`
`
`1011, 1:56-65). Szekely discloses a bezel 22, which “defines an upper opening 32
`
`within which the solar cell array is disposed to receive the sunlight during the
`
`daylight hours to charge the battery contained within the light.” (YOT-1011, 2:32-
`
`35). Szekely also discloses a component tray assembly 90, secured in position at
`
`the bottom portion of the bezel 22, which includes a rechargeable battery 92.
`
`(YOT-1011, 3:36-53).
`
`
`
`Fig. 1 of Szekely.
`5. Wu I and Wu II
`
`
`
`Wu II results from a continuation-in-part claiming priority to Wu I. Wu I
`
`was filed on September 18, 1998, Ser. No. 09/157,464, and issued July 18, 2000.
`
`Wu II issued from an application filed on May 17, 1999, Ser. No. 09/314,196, and
`
`issued on October 3, 2000. (YOT-1007, YOT-1012, Cover Page). Wu I and II are
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`prior art to the ’713 patent under at least 35 U.S.C. § 102(a) and (e).
`
`Figure 1 of Wu II is exemplary and shown below. (See also Figs. 5, 17 of
`
`Wu I). Like the ’713 patent, Wu I and II disclose an umbrella with a lighting
`
`arrangement, including a canopy (cloth) containing rib members that are hingedly
`
`
`
`18
`
`
`
`attached to a pole portion for opening and closing. (YOT-1012, Abstract). Similar
`
`to Hale and Pan, Wu I and II incorporate a lighting system with multiple rib
`
`members to support a plurality of LED lighting elements. (YOT-1007, 2:37-46;
`
`YOT-1012, 2:50-56).
`
`
`
`
`
`In particular, Wu I and II disclose, inter alia, a central shaft 1 having a lower
`
`tube 1a and an upper tube 1b; a grip 11 formed on a lower portion of the lower
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`tube 1a; a rib assembly 2 having at least a top rib 21 pivotally secured to an upper
`
`notch 20 fixed on a top portion 12 of the shaft 1. Wu I and II also disclose an
`
`illuminating means 3 including a top illuminator 31 which may be a bulb or a light-
`
`emitting diode (LED) fixed on a top end of the shaft 1 and a plurality of tip
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`illuminators 32 each fixed on a tip end (or outer end) of an outer rib 24 and each
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`tip illuminator 32, which may be a LED, parallelly electrically connected to a
`
`power source; and a power supply means 4 for powering the illuminators 31, 32.
`
`
`
`19
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`
`
`(YOT-1007, 2:32-44; YOT-1012, 2:40-57). Wu I and II further disclose an
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`umbrella cloth 5 provided to cover the rib assembly 2.
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