Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`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 IPR2017-00299
`Patent 8,794,781 B2
`____________
`
`
`
`Before MICHAEL W. KIM, KRISTINA M. KALAN, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Declining to Institute Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d); 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 7
`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 IPR2017-00299
`Patent 8,794,781 B2
`____________
`
`
`
`Before MICHAEL W. KIM, KRISTINA M. KALAN, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Declining to Institute Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d); 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-00299
`Patent 8,794,781 B2
`
`
`I.
`
`INTRODUCTION
`Yotrio Corporation (“Petitioner”)1 filed a Petition for inter partes
`review of claims 1, 2, 4, and 5 (“the challenged claims”) of U.S. Patent
`No. 8,794,781 B2 (Ex. 1201, “the ’781 patent”). Paper 1 (“Pet.”).
`LakeSouth Holdings, LLC (“Patent Owner”) filed a Preliminary Response to
`the Petition. Paper 6 (“Prelim. Resp.”). 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.
`
`A. Related Proceedings
`The parties indicate that the ’781 patent has been asserted in
`LakeSouth Holdings, LLC v. Kohl’s Department Stores, Inc.,
`No. 3:16-CV-1024 (N.D. Tex.). Pet. 1; Paper 5, 2.
`Petitioner also challenges a related patent, U.S. Patent No. 6,612,713
`C1 (“the ’713 patent”), in IPR2017-00298. Pet. 1–2; Paper 5, 2.
`
`B. The ’781 Patent
`The ’781 patent relates to a “lawn or patio umbrella with an integral
`lighting system.” Ex. 1201, at [57]. Figure 1 of the ’781 patent is
`reproduced below.
`
`
`1 Petitioner identifies Kohl’s Department Stores, Inc., Kohl’s Illinois, Inc.,
`and Home Depot U.S.A., Inc. as additional real parties-in-interest. Pet. 1.
`
`
`
`2
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`IPR2017-00299
`Patent 8,794,781 B2
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`
`
`Figure 1 is “a fragmentary and sectional view of the preferred embodiment
`of the lighted umbrella with motorized opening and closing system,”
`according to the ’781 patent. Id. at 2:29–31. As seen in Figure 1, umbrella
`apparatus 11 includes umbrella portion 13 and hollow tubular pole
`portion 15. Id. at 3:14–15. Flexible canopy 17 covers umbrella portion 13
`and is supported by a plurality of rib members 19, 21, 23, 25, the rib
`members being hingedly coupled to pole portion 15. Id. at 3:21–25. As
`described in the ’781 patent, “[l]ighting system 26 provides high intensity
`light to umbrella apparatus 11 and the surrounding area.” Id. at 3:25–28.
`Lighting system 26 includes a plurality of light strands 27, 29, 31, 33
`attached to the rib members. Id. at 3:47–49.
`
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`3
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`IPR2017-00299
`Patent 8,794,781 B2
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`
`Umbrella apparatus 11 further includes power system 50 including
`power source 55, disposed in the hollow interior of pole portion 15 in the
`embodiment of Figure 1. Id. at 4:19–21. Power source 55 may be
`comprised of rechargeable batteries 55a. Id. at 4:20–23. 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 4:28–29. Power system 50 may be recharged
`by external power system charger 51 or alternate power system charger 62.
`Id. at 4:29–31, 4:43–48. Alternate power system charger 62 includes at least
`one solar cell 35 carried by upper cap portion 64. Id. at 4:42–43.
`Figure 4A of the ’781 patent is reproduced below.
`
`
`Figure 4A shows an embodiment of lighting system 26, in which the lighting
`system is recessed in rib member 301 (i.e., rib members 19, 21, 23, 25 of
`Figure 1). Id. at 2:40–42, 9:22–27. As shown in Figure 4A, cavity 303,
`adapted to receive light bulb 307, is formed within rib 301. Id. at 9:28–30.
`“[T]ranslucent material 305 extends along the entire length of the cavity 303
`
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`4
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`IPR2017-00299
`Patent 8,794,781 B2
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`to protect bulbs 307 from damage and undesirable exposure to weather and
`other conditions.” Id. at 9:30–32. Wire 311 “conductively connects all of
`the bulbs 307 installed in rib member 301, thereby forming an electrical
`circuit between bulbs 307 and the rechargeable power source.” Id. at 9:40–
`43. According to the ’781 patent, “recessed lighting, which is carried
`entirely within rib member 301 and is not otherwise exposed to the elements,
`is achieved.” Id. at 9:43–45.
`
`C. Illustrative Claim
`Of the challenged claims, claim 1 is independent, and claims 2, 4,
`and 5 depend therefrom. Claim 1 of the ’781 patent, reproduced below, is
`illustrative of the challenged claims:
`1. An umbrella apparatus comprising:
`a pole portion;
`an umbrella portion hingedly coupled to the pole portion,
`the umbrella portion having a plurality of radially extending rib
`members;
`a rechargeable electrical power system for providing
`electrical power to the umbrella apparatus;
`a solar energy system coupled to the pole portion, 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;
`a lighting system having a plurality of light emitting
`diodes conductively coupled to the rechargeable electrical power
`system, the light emitting diodes being recessed within the rib
`members; and
`
`
`
`5
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`IPR2017-00299
`Patent 8,794,781 B2
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`
`translucent materials disposed over the light emitting
`diodes for enhancing the light from the light emitting diodes.
`Ex. 1201, 16:26–46.
`
`D. The Applied References and Evidence
`Petitioner relies on the following references.
`Exhibit
`Reference
`Date
`U.S. Patent No. 2,960,094 (“Small”)
`Nov. 15, 1960 Ex. 1008
`U.S. Patent No. 6,089,727 (“Wu I”)
`July 18, 2000 Ex. 1007
`U.S. Patent No. 5,222,799 (“Sears”)
`June 29, 1993 Ex. 1013
`U.S. Patent No. 5,758,948 (“Hale”)
`June 2, 1998
`Ex. 1009
`U.S. Patent No. 6,439,249 B1 (“Pan”)
`Aug. 27, 2002 Ex. 1010
`U.S. Patent No. 727,495 (“Todd”)
`May 5, 1903
`Ex. 1205
`
`Petitioner further relies on the Declaration of Robert Smith-Gillespie
`(Ex. 1203).
`
`E. The Asserted Grounds
`Petitioner sets forth its challenges to claims 1, 2, 4, and 5 as follows.
`Pet. 4, 22–59.
`References2
`Small, Wu I, Sears (Todd)
`Small, Hale (Wu I, Sears, Todd)
`Small, Pan, Hale (Todd)
`Small, Pan, Sears (Todd)
`
`Claims Challenged
`1, 2, 4, 5
`1, 2, 4, 5
`1, 2, 4, 5
`1, 2, 4, 5
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`
`
`2 The references included in parentheses in the table are references upon
`which Petitioner relies as evidence of “the knowledge of a person of
`ordinary skill in the art” as taught by those references. See Pet. 4.
`
`
`
`6
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`Patent 8,794,781 B2
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`
`II. ANALYSIS
`Petitioner asserts several challenges to claims 1, 2, 4, and 5, as set
`forth above. See Pet. 4, 22–59. Patent Owner disagrees the asserted
`references render the challenged claims obvious (see Prelim. Resp. 29–61),
`and also argues that these grounds should be denied under 35 U.S.C.
`§ 325(d) (see id. at 14–29). 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. Relevant Prosecution History
`Patent Owner argues we should exercise our discretion under
`35 U.S.C. § 325(d) and reject the Petition because several of the references
`relied upon by Petitioner in its asserted grounds “were expressly considered
`by the Examiner during prosecution” of the application leading to the ’781
`patent. Prelim. Resp. 14. Before addressing the parties’ arguments with
`respect to 35 U.S.C. § 325(d), we discuss relevant portions of the
`prosecution history.
`U.S. Application No. 10/650,537 (“the ’537 application”), which
`matured into the ’781 patent, was filed on August 28, 2003. Ex. 1201, at
`[21], [22]. The ’537 application is a continuation of U.S. Application
`No. 10/068,424, which matured into the related ’713 patent. Id. at [63].
`The ’781 patent ultimately issued on August 5, 2014. Id. at [45]. During
`prosecution of the ’537 application, the Examiner issued several Office
`Actions, and Applicant filed several amendments and arguments in response.
`See generally Ex. 1202 (file history of the ’781 patent). We provide a
`summary of the relevant portions of the prosecution history here.
`
`
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`IPR2017-00299
`Patent 8,794,781 B2
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`
`In an Office Action dated April 4, 2006, the Examiner rejected certain
`of the pending claims based on Small, alone and in combination with various
`other references. Ex. 1202, 286, 290–293. In an Office Action dated
`October 20, 2006, the Examiner again rejected certain amended and newly
`added claims in view of Pan and Small, with or without various other
`references. Id. at 358, 365–371.
`Applicant filed a Declaration under 37 C.F.R. § 1.131, in an attempt
`to swear behind Pan. See id. at 377–425. The Examiner determined the
`Declaration was ineffective to overcome Pan, and in an Office Action dated
`June 8, 2007, sustained the prior rejections based at least in part on Pan, and
`presented additional rejections of certain claims in view of Small in
`combination with various other references. Id. at 469, 471, 474–480.
`Applicant then canceled all pending claims and presented new claims
`for examination, as well as arguments regarding the patentability of these
`new claims. See id. at 491–500. In an Office Action dated March 18, 2008,
`the Examiner again rejected certain of the newly added claims in view of
`Small in combination with various other references. Id. at 522–535. After
`the Examiner maintained the rejections in an Office Action dated
`December 15, 2008 (see id. at 606–624), Applicant appealed to the Board
`(see id. at 709–735). The Board reversed certain of the Examiner’s
`rejections, based on an interpretation of a reference not at issue in this
`proceeding. Id. at 951–958. Applicant canceled all claims for which the
`Board affirmed the Examiner’s rejections. Id. at 971–977. The ’537
`application then received a Notice of Allowance, and proceeded to issue.
`See id. at 980–987, 1058.
`
`
`
`8
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`IPR2017-00299
`Patent 8,794,781 B2
`
`
`B. Discretionary Institution and 35 U.S.C. § 325(d)
`Institution of an inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`37 C.F.R. § 42.108(a) (“The Board may authorize the review to proceed.”)
`(emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but
`never compelled, to institute an IPR proceeding”).
`Further, 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 35 U.S.C. § 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
`
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`IPR2017-00299
`Patent 8,794,781 B2
`
`cumulative to or substantially overlap with issues previously considered by
`the Office with respect to the patent.”).
`1. Whether the Petition Presents “the same or substantially
`the same prior art or arguments” as Previously
`Presented to the Office
`Regarding the first inquiry of the analysis under 35 U.S.C. § 325(d),
`Petitioner acknowledges each of Small and Pan were cited by the Examiner
`during prosecution of the ’537 application. Pet. 7–8, 15, 18; see also
`Ex. 1201, at [56]. The evidence of record shows that Wu I and Wu II3 also
`were cited by the Examiner, and that Hale was cited by Applicant in an
`Information Disclosure Statement (IDS). See Ex. 1201, at [56]. Thus, the
`Petition presents “the same prior art” previously considered by the Office.
`Accordingly, the first inquiry is satisfied.
`2. Whether it is Appropriate to Exercise Our Discretion to
`Deny Institution
`We now discuss the second inquiry, whether it is appropriate to
`exercise our discretion to deny institution. In this regard, we find that Small,
`Pan, Wu I4, and Hale have been before the Office in connection with the
`
`
`3 U.S. Patent No. 6,126,293, issued October 3, 2000. Ex. 1012. Wu II is a
`continuation-in-part of Wu I. Id. at [63].
`4 Although Petitioner does not expressly state that Wu II is part of its
`asserted grounds, Petitioner often discusses the two references as one, e.g.,
`“Wu I and Wu II disclose an umbrella” (Pet. 19); “Wu I and Wu II
`incorporate a lighting system” (id.); “Wu I and II also disclose an
`illuminating means” (id. at 20); “Wu I and II further disclose an umbrella
`cloth” (id.). Petitioner also relies on Wu II as evidence of the knowledge of
`one of skill in the art. See, e.g., id. at 25–26, 47. In any case, Wu II also
`was expressly cited by the Examiner during prosecution of the ’537
`application. Thus, our analysis would not change if Wu II were considered
`as part of the asserted grounds.
`
`
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`IPR2017-00299
`Patent 8,794,781 B2
`
`examination of the ’537 application in a manner that supports our exercise of
`discretion to deny institution.
`The Examiner expressly and substantively considered each of Small
`and Pan with respect to claims of the ’537 application. As noted above, and
`pointed out by Patent Owner (Prelim. Resp. 15–17), Small and Pan were
`applied by the Examiner against the claims of the ’537 application several
`times during prosecution. The evidence of record shows that the Examiner
`relied on Small, which is the primary reference relied upon by Petitioner in
`each of its grounds, in essentially the same manner as Petitioner—namely, as
`teaching “an umbrella utilizing a conventional battery in combination with a
`solar battery for providing an electrical supply” to components of the
`umbrella. Compare Pet. 23, 33, 43–44, with Ex. 1202, 290–293, 365–371,
`474–480, 522–535. Patent Owner further argues that “even though the
`issued claims differed slightly from the claims examined in view of Small
`and Pan, the Examiner combined Small and Pan for the same reasons
`Petitioner[] combine[s] them here—namely, to combine Pan’s lighting
`system with the solar-energy system of Small.” Prelim. Resp. 17–18 (citing
`Ex. 1202, 366–367). We agree. Compare Pet. 43–44, with Ex. 1202, 365–
`371. Further, Wu I and Hale also were considered by the Examiner. See
`Ex. 1201, at [56]; Ex. 1202, 199 (Notice of References Cited including
`Wu I), 483 (signed PTO/SB/08 indicating Examiner’s consideration of
`Hale).
`The circumstances here 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).
`
`
`
`11
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`IPR2017-00299
`Patent 8,794,781 B2
`
`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 patents that raise issues that are substantially the same
`as issues that were already before the Office with respect to the patent.”).
`Petitioner argues that “the combination of Small and Pan was not
`cited and relied upon in rejecting the patented claims.” Pet. 8. We agree
`with Patent Owner, however, and are not persuaded that 35 U.S.C. § 325(d)
`is applicable “only where rejections are traversed without amendment.”
`See Prelim. Resp. 18. Accepting Petitioner’s argument otherwise would
`essentially eviscerate 35 U.S.C. § 325(d) in most instances. Clearly the
`Examiner was aware of the previously relied-upon references during
`continuing prosecution. In fact, the Examiner continued to rely on Small in
`the last Office Action against the claims, prior to allowance. See Ex. 1202,
`606–624. Petitioner 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 prosecution and considered by the
`Examiner.
`Petitioner further argues that “the other references in the combinations
`relied upon herein did not form the basis for any rejections to any claims in
`the ’781 patent file history [and] the particular combinations presented
`[in the Petition] and the way in which they are applied to the claims were not
`before the Patent Office.” Pet. 8. We are unpersuaded that this alone,
`without further explanation, warrants institution. Finding otherwise would
`allow a petitioner to sidestep 35 U.S.C. § 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
`
`
`
`12
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`IPR2017-00299
`Patent 8,794,781 B2
`
`minor or inconsequential the substantive contribution of that additional
`reference.
`Regarding Todd, Petitioner relies upon this reference only as evidence
`of the knowledge of one of ordinary skill in the art. See Pet. 26 (citing Todd
`as evidence that a person of ordinary skill “would understand that the
`translucent material in such an arrangement would serve to enhance the light
`from the LED as was known in the art”); id. at 38 (citing Todd as evidence
`that “it was known that a translucent material disposed over the light would
`improve illumination”); id. at 47 (citing Todd as evidence that “the available
`options for covering lighting elements were known and understood by a
`[person of ordinary skill]” and that “it was known that translucent material
`disposed over a light source would improve illumination of a light source”);
`id. at 54–55 (citing Todd as evidence that “the available options for
`providing material over lighting elements would have been known and
`understood by a [person of ordinary skill]” and that “translucent material
`disposed over a light source would ‘improve illumination’”). We are not
`persuaded that Petitioner’s reliance on Todd in such a manner changes the
`fact that the same or substantially the same prior art was considered by the
`Examiner, as discussed above, or that Petitioner’s reliance on Todd should
`change our analysis under 35 U.S.C. § 325(d) of the grounds presented by
`Petitioner.
`Additionally, although Sears was not considered by the Examiner
`during prosecution, Petitioner relies on Sears in a substantively cumulative
`manner in the Petition. For example, in the ground based on Small, Wu I,
`and Sears, Petitioner argues “[a]lthough Petitioner believes that the
`combination of Small with Wu I invalidates the Challenged Claims, to the
`
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`IPR2017-00299
`Patent 8,794,781 B2
`
`extent necessary, the addition of Sears makes this more apparent.” Pet. 24
`(emphasis added). Similarly, in the ground based on Small, Pan, and Sears,
`Petitioner relies on Sears as teaching “a translucent material disposed over
`LEDs,” and argues that “[a]lthough the available options for providing
`material over lighting elements would have been known and understood by a
`[person of ordinary skill], Sears explicitly discloses the use of a translucent
`light cover over an LED light strip.” Id. at 54 (emphasis added) (internal
`citations omitted). Petitioner also presents an alternative approach, in which
`the “channel light and translucent diffuser assembly [of Sears] could be used
`in place of the Pan awning tube 3 and lighting elements.” Pet. 54–55.
`On balance, we are unpersuaded that the inclusion of Sears is a sufficient
`basis to alter appreciably our above analysis of the Office’s prior
`consideration of Small, Pan, Wu I, and Hale with respect to 35 U.S.C.
`§ 325(d).
`Having considered all of Petitioner’s and Patent Owner’s assertions in
`the aggregate, we determine that exercising our discretion to deny these
`grounds, for the reasons set forth above, is appropriate.
`
`III. CONCLUSION
`For the reasons set forth above, we exercise our discretion under
`35 U.S.C. § 325(d) and do not institute an inter partes review on any of
`claims 1, 2, 4, and 5 of the ’781 patent on any ground.
`
`IV. ORDER
`Accordingly, it is
`ORDERED that that no trial or inter partes review is instituted for any
`claim of U.S. Patent No. 8,794,781 B2 on any ground in this proceeding.
`
`
`
`14
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`Patent 8,794,781 B2
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`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
`
`
`
`
`
`
`
`15
`
`
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