UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
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`PATENT TRIAL AND APPEAL BOARD
`
`YOTRIO CORPORATION
`
`Petitioner,
`
`v.
`
`LAKESOUTH HOLDINGS, LLC
`
`Patent Owner.
`
`U.S. Patent No. 8,794,781
`Title: Umbrella Apparatus
`
`
`
`Case No. IPR2017-_____
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,794,781
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`PATENT TRIAL AND APPEAL BOARD
`
`YOTRIO CORPORATION
`
`Petitioner,
`
`v.
`
`LAKESOUTH HOLDINGS, LLC
`
`Patent Owner.
`
`U.S. Patent No. 8,794,781
`Title: Umbrella Apparatus
`
`
`
`Case No. IPR2017-_____
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,794,781
`
`
`
`
`
`
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`Table of Contents
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`TABLE OF EXHIBITS ----------------------------------------------------------------- iv
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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.
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`Service Information ------------------------------------------------------- 2
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`E.
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`F.
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`Electronic Service --------------------------------------------------------- 2
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`Payment of Fees Pursuant to 37 C.F.R. § 42.103 --------------------- 3
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`III.
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`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
`
`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
`
`A.
`
`The ’781 Patent ------------------------------------------------------------ 4
`
`Overview --------------------------------------------------------------------------- 4
`
`Summary of the Prosecution History ------------------------------------------- 7
`
`Level of Ordinary Skill in the Art ----------------------------------------------- 8
`
`B.
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`Claim Construction ------------------------------------------------------- 11
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`“Recessed” ------------------------------------------------------------------------ 11
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`“enhancing” ----------------------------------------------------------------------- 12
`
`i
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`1.
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`2.
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`3.
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`1.
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`2.
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`
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`
`
`C.
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`Description of Prior Art References ------------------------------------ 13
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`1.
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`2.
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`3.
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`Small ------------------------------------------------------------------------------- 15
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`Hale -------------------------------------------------------------------------------- 16
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`Pan --------------------------------------------------------------------------------- 17
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`4. Wu I and Wu II ------------------------------------------------------------------- 19
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`5.
`
`Other Aspects of the Prior Art -------------------------------------------------- 21
`
`D. Ground 1: Claims 1, 2, 4, and 5 Are Obvious Based on Small and
`Wu I, with Sears and the Knowledge of a POSA (as taught by Todd)
` ------------------------------------------------------------------------------ 22
`
`1. Motivation to Combine Small and Wu I, with Sears ------------------------ 22
`
`2.
`
`3.
`
`4.
`
`5.
`
`The Combination of Small and Wu I with Sears Invalidates Claim 1 ----- 24
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`The Combination of Small and Wu I, with Sears, Invalidates Claim 2 --- 29
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`The Combination of Small and Wu I, with Sears, Invalidates Claim 4 --- 31
`
`The Combination of Small and Wu I, with Sears, Invalidates Claim 5 --- 33
`
`E.
`
`Ground 2: Claims 1, 2, 4, and 5 Are Obvious Based on Small and
`Hale and the Knowledge of a POSA (as taught by Wu I, Sears and
`Todd) ----------------------------------------------------------------------- 33
`
`1. Motivation to Combine Small and Hale --------------------------------------- 33
`
`2.
`
`3.
`
`4.
`
`5.
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`A POSA’s Combination of Small and Hale Invalidates Claim 1 ---------- 35
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`The Combination of Small and Hale Invalidates Claim 2 ------------------ 40
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`The Combination of Small and Hale Invalidates Claim 4 ------------------ 42
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`The Combination of Small and Hale Invalidates Claim 5 ------------------ 43
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`F.
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`Ground 3: Claims 1, 2, 4, and 5 Are Obvious Based on Small and
`Pan with Hale and the Knowledge of a POSA (as taught by Todd) 43
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`1. Motivation to Combine Small, Pan, and Hale -------------------------------- 43
`
`
`
`ii
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`
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`2.
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`3.
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`4.
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`5.
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`The Combination of Small, Pan, and Hale Invalidates Claim 1 ------------ 46
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`The Combination of Small, Pan, and Hale Invalidates Claim 2 ------------ 50
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`The Combination of Small, Pan, and Hale Invalidates Claim 4 ------------ 51
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`The Combination of Small, Pan, and Hale Invalidates Claim 5 ------------ 52
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`G. Ground 4: Claims 1, 2, 4, and 5 Are Obvious Based on Small and
`Pan with Sears and the Knowledge of a POSA (as taught by Todd)
` ------------------------------------------------------------------------------ 53
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`1. Motivation to Combine Small, Pan, and Sears ------------------------------- 53
`
`2.
`
`3.
`
`4.
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`5.
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`The Combination of Small, Pan, and Sears Invalidates Claim 1 ----------- 54
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`The Combination of Small, Pan, and Sears Invalidates Claim 2 ----------- 57
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`The Combination of Small, Pan, and Sears Invalidates Claim 4 ----------- 58
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`The Combination of Small, Pan, and Hale Invalidates Claim 5 ------------ 59
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`VI. CONCLUSION ------------------------------------------------------------------- 59
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`
`
`iii
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`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
`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 v. Ace Evert, Inc., Case No.
`3:14-CV-1348-N, Dkt. 45, LakeSouth Holdings, LLC’s
`Claim Construction Brief
`U.S. Patent No. 8,794,781 to Kuelbs (the “’781
`patent”)
`File history of the ’781 patent
`Declaration of Robert Smith-Gillespie
`U.S. Patent No. 2,244,737 to Stewart et al. (“Stewart”)
`U.S. Patent No. 727,495 to Todd (“Todd”)
`
`
`iv
`
`Exhibit
`YOT-1001
`
`YOT-1002
`YOT-1003
`YOT-1005
`YOT-1006
`YOT-1007
`YOT-1008
`YOT-1009
`YOT-1010
`YOT-1011
`YOT-1012
`YOT-1013
`YOT-1014
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`YOT-1201
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`YOT-1202
`YOT-1203
`YOT-1204
`YOT-1205
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`I.
`
`INTRODUCTION
`
`
`
`Yotrio Corporation (“Yotrio”) requests Inter Partes Review (“IPR”) of
`
`claims 1, 2, 4, and 5 (collectively, the “Challenged Claims”) of U.S. Patent No.
`
`8,794,781 (“’781 patent”) (YOT-1201).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.,
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`Inc. (“Home Depot”).
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`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 ’781
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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
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`Stores, Inc., Civil Action 3:16-cv-01024 (“the ‘1024 action”).The Patent Owner is
`
`asserting claims 1, 2, 4, and 5 of the ’781 patent against Kohl’s and Home Depot in
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`the ‘1024 action.
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`Further, in the ‘1024 action, LakeSouth also asserts U.S. Patent No.
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`6,612,713 (“’713 patent”), a parent of the ’781 patent. Yotrio challenges claims 2,
`
`
`1 The prosecution file history of the ’781 patent is provided as Exhibits YOT-1202.
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`
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`1
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`
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`
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`4, 15, 16, 24, 25, and 28 of the ’713 patent in an IPR Petition filed concurrently
`
`herewith. A Petition was previously filed against the ’713 patent on April 1, 2015,
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`by Ace Evert, Inc. (IPR2015-00987), but was terminated on July 8, 2015, subject
`
`to a settlement between the parties.
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`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.
`
`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 ’781 patent, as indicated in the attached
`
`Certificate of Service.
`
`E.
`
`Electronic Service
`
`
`
`2
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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 this 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 ’781 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-1203), demonstrates
`
`that a person of ordinary skill in the art at the time of the invention would have
`
`combined the following references and their general knowledge to render claims 1,
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`
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`3
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`
`
`
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`2, 4, and 5 of the ’781 patent obvious, as detailed in the passages that follow: (i)
`
`U.S. Patent Nos. 2,960,094 (“Small”), 6,089,297 (“Wu I”), 5,222,799 (“Sears”),
`
`5,758,948 (“Hale”), 6,439,249 (“Pan”), and 727,495 (“Todd”). Accordingly,
`
`Yotrio requests that the Board institute an IPR of claims 1, 2, 4, and 5 and cancel
`
`those claims as invalid for being obvious under 35 U.S.C. § 103 on the following
`
`grounds:
`
`
`
`Ground Challenged Claims
`Ground 1
`1, 2, 4, and 5
`
`Ground 2
`
`1, 2, 4, and 5
`
`Ground 3
`
`1, 2, 4, and 5
`
`Ground 4
`
`1, 2, 4, and 5
`
`
`
`Basis for Challenge and References
`Obvious based on Small and Wu I, with Sears
`and the knowledge of a person of ordinary skill
`in the art (as taught by Todd)
`Obvious based on Small and Hale, and the
`knowledge of a person of ordinary skill in the
`art (as taught by Wu I, Sears, and Todd)
`Obvious based on Small and Pan, with Hale,
`and the knowledge of a person of ordinary skill
`in the art (as taught by Todd)
`Obvious based on Small and Pan, with Sears,
`and the knowledge of a person of ordinary skill
`in the art (as taught by Todd)
`
`V.
`
`THE CHALLENGED CLAIMS ARE UNPATENTABLE
`
`A.
`
`The ’781 Patent
`
`1.
`
`Overview
`
`The ‘781 patent issued on August 5, 2014. Claim 1 is the only independent
`
`claim and is representative. (YOT-1201, 16:25-46).
`
`As set forth in the ’781 patent specification, the invention “relates in general
`
`to patio umbrellas, and in particular, to an improved patio umbrella with integral
`
`
`
`4
`
`
`
`
`
`lighting system and other modular electronic systems and components.” (YOT-
`
`1201, 1:15-18). The Challenged Claims are directed to an umbrella apparatus with
`
`a rechargeable electrical power system, a solar energy system coupled to the
`
`rechargeable electrical power system, a light emitting diode (LED) lighting system,
`
`and translucent material disposed over the LEDs. (YOT-1201, e.g., 16:25-46).
`
`Figure 1 of the ’781 patent, reproduced below, shows a lighted umbrella
`
`with a solar energy system in accordance with the purported invention. The figure
`
`shows an umbrella apparatus 11, which includes an umbrella portion 13 and a pole
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`portion 15. (YOT-1201, 3:12-16). Pole portion 15 is coupled to and supports
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`umbrella portion 13, and umbrella portion 13 is preferably retractable and may be
`
`moved between a raised, or expanded, open position, which is shown; and a
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`lowered, or retracted, closed position in which the umbrella portion is collapsed
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`down about pole portion 15. (YOT-1201, 3:15-21).
`
`
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`5
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`
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`A flexible canopy 17 is attached to and covers umbrella portion 15. (YOT-
`
`1201, 3:21-22). Canopy 17 is supported by a plurality of rib members 19, 21, 23,
`
`and 25, which are preferably hingedly coupled to an upper portion of the pole
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`portion 15. (YOT-1201, 3:22-25). An integral lighting system 26 is carried by at
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`least one of rib members 19, 21, 23, and 25. (YOT-1201, 3:25-26). Lighting
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`system 26 provides high intensity light to umbrella apparatus 11 and the
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`surrounding area. (YOT-1201, 3:27-28). The umbrella apparatus also includes a
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`base member 57 adapted to receive the pole portion to support the umbrella
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`apparatus in the upright position. (YOT-1201, 3:31-33).
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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-1201,
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`12:1-10). Solar collector 727 collects solar energy and utilizes the energy to
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`recharge a rechargeable power source that is maintained in battery compartment
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`707. (YOT-1201, 12:28-31). A light subassembly 721, which is connected to the
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`umbrella, is conductively coupled to the power unit and energized by the power
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`source. (YOT-1201, 12:19-21).
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`In accordance with another embodiment, shown in Figs. 4A-C, the ’781
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`patent discloses that a plurality of lighting elements 307 are recessed into a rib
`
`member 301. (YOT-1201, 9:24-26, Figs. 4A-C). In addition, a translucent material
`
`
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`6
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`
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`305 extends along the cavity to protect bulbs 307 from damage and undesirable
`
`exposure to weather and other conditions. (YOT-1201, 9:30-32). Translucent
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`material 305 may be smooth or textured to “accentuate or enhance the light.”
`
`(YOT-1201, 9:32-34). This is depicted in Fig. 4A reproduced below.
`
`2.
`
`Summary of the Prosecution History
`
`
`
`The ’781 patent is a continuation of U.S. Patent No. 6,612,713 (which is the
`
`subject of an Inter Partes Review petition, filed concurrently with the present
`
`petition).
`
`Relevant to the present petition, during prosecution the examiner issued
`
`rejections involving Small on April 4, 2006 (YOT-1202-0286), on October 20,
`
`2006 (YOT-1202-0358), on June 8, 2007 (YOT-1202-0469), on March 18, 2008
`
`(YOT-1202-0522), and on December 15, 2008 (YOT-1202-0606), and the
`
`Examiner issued rejections involving Pan on October 20, 2006 (YOT-1202-0358),
`
`and on June 8, 2007 (YOT-1202-0469). Notably, the Examiner’s October 20, 2006
`
`non-final rejection involved combinations of Small and Pan. (YOT-1202, -0365, -
`
`
`
`7
`
`
`
`
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`0370, -0371). In response, Applicant attempted to antedate the Pan reference with a
`
`declaration under 37 C.F.R. § 1.131 (“131 Declaration”), which the examiner
`
`rejected, sustaining the rejections based on Small and Pan. (YOT-1202,-0471). In
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`addition, however, in the Office Action rejecting the offered 131 Declaration, the
`
`Examiner identified a number of additional grounds for rejecting the then pending
`
`claims, i.e., the Examiner found additional ways to demonstrate that the claims
`
`were invalid. (YOT-1202, -0474-0480). Thereafter, Applicant cancelled all of the
`
`claims and presented a new set. (YOT-1202, -0492). In rejecting the new set of
`
`claims, the Examiner did not rely on the combination of Small and Pan. (YOT-
`
`1202,-0522-0535). The Examiner’s new rejection was the subject of an appeal that
`
`eventually resulted in the allowance of the claims of the ’781 patent. (YOT-1202, -
`
`0669). Thus, the combination of Small and Pan was not cited and relied upon in
`
`rejecting the patented claims. Similarly, 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. In any event, the particular combinations presented herein
`
`and the way in which they are applied to the claims were not before the Patent
`
`Office.
`
`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
`
`
`
`8
`
`
`
`
`
`ordinary skill in the art. The ’781 patent encompasses several disciplines including
`
`the mechanical, electrical, and lighting fields. However, the patent specification
`
`provides very little technical discussion beyond basic component assembly. (See,
`
`e.g., YOT-1201, 1:15-18).
`
`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-1201, 12:37-41). 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-1201, 12:41-44). 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 ’781 patent. (YOT-1203, ¶ 9).
`
`As such, and as explained in the expert declaration Robert Smith Gillespie
`
`submitted herewith, a person of ordinary skill in the art at the time of the purported
`
`invention of the ’781 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
`
`
`
`9
`
`
`
`
`
`electro-mechanical assembly and troubleshooting. (YOT-1203, ¶ 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
`
`(“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), 5,222,799 (“Sears”) (YOT-1013), 2,244,737 (“Stewart”)
`
`(YOT-1204), and 727,495 (“Todd”) (YOT-1205). As addressed in detail below, at
`
`or before the priority date for the ’781 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), Wu I (YOT-1007), Wu II
`
`(YOT-1012)), and hanging lights from support members (Rushing (YOT-1006));
`
`(iii) use of light emitting diodes (LEDs) with umbrellas (Wu I (YOT-1007), Wu II
`
`(YOT-1012), Pan (YOT-1010)); (iv) use of solar power with lawn umbrellas
`
`(Small (YOT-1008)); (v) use of solar power in outdoor lighting systems (Szekely
`
`(YOT-1011)); and (vi) use of materials disposed over lighting in umbrellas or
`
`
`
`10
`
`
`
`
`
`similar devices, including translucent (Finkel (YOT-1005, 2:3-5), Hale (YOT-
`
`1009, 4:16-18), Stewart (YOT-1204, 3:50-54), Todd (YOT-1205, 4:46-51)) and
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`transparent (Finkel (YOT-1005, 2:3-5), Wu I (YOT-1007, 3:37-39), Wu II (YOT-
`
`1012, 4:18-19), Stewart (YOT-1204, 3:50-54)). These features, further discussed
`
`and analyzed below, are indicative of the knowledge of a POSA at the time of the
`
`alleged invention. (See YOT-1203, ¶¶ 16-28).
`
`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
`
`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 for “recessed” in prior proceedings regarding related U.S. Patent No.
`
`6,612,713 (the “’713 patent”) (YOT-1014 at 13-15), and which a district court
`
`adopted. And “unless otherwise compelled . . . the same claim term in the same
`
`patent or related patents carries the same construed meaning.” In re Rambus Inc.,
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`11
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`
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`694 F.3d 42, 48 (Fed. Cir. 2012) (citing Omega Eng’g, Inc. v. Raytek Corp., 334
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`F.3d 1314, 1334 (Fed. Cir. 2003)).
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`In arguing for a construction of the term “recessed,” the Patentee relied upon
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`several embodiments in the specification of the ’713 patent (and ’781 patent),
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`shown in Figures 1, 2A, 3A, 4A, 4B, 4C, and 6, arguing that these implementations
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`showed varying degrees of being recessed, consistent with Patentee’s partial or
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`fully recessed construction. See YOT-1014 at 14-15 (arguing construction based
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`on patent and file history). Accordingly, and for this petition, “recessed” under the
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`BRI standard should be construed to mean “partially or fully recessed.”
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`2.
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`“enhancing”
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`The claim limitation “enhancing” appears in independent claim 1 as follows:
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`“translucent materials disposed over the light emitting diodes for enhancing the
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`light from the light emitting diodes.” YOT-1201, 16:44-46 (emphasis added).
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`Every other claim depends from claim 1; thus, the term is implicated in all claims.
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`For purposes of this Petition, the BRI should be applied to this term.
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`Notably however, the term “enhancing” appears in the specification of the
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`’781 patent in two contexts only: (i) a discussion of the desirability of improved
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`umbrellas (YOT-1001, 1:28-31); and (ii) that a translucent material “may have a
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`smooth surface or be textured to accentuate or enhance the light from bulbs” (id.,
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`9:32-34, 9:61-63, 10:33-35). The specification does not, however, inform a POSA
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`
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`12
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`
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`how to determine if the translucent material is “enhancing,” and does not inform a
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`POSA how much “enhancing” is required to satisfy the claim. (YOT-1203, ¶13).
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`The prosecution history is no more enlightening. The limitation containing
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`“enhancing” was presented in a new set of claims late in prosecution, after the
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`Applicant cancelled all previous claims. (YOT-1202, -0492). In subsequent
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`exchanges between the USPTO and the Applicant, the term “enhancing” was not
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`further defined. (YOT-1202, -0522 (3/18/2008 Final OA), -0570 (9/18/2008
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`Amendment), -0606 (12/15/2008 Non-Final OA)). Thus, the intrinsic record
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`provides no guidance as to what constitutes “enhancing” in satisfaction of claim 1.
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`This term is either a term of degree or a purely subjective term that requires
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`a particularized analysis, for which the patent does not provide guidance.
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`DATAMIZE, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005)
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`(“When a word of degree is used the district court must determine whether the
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`patent’s specification provides some standard for measuring that degree,” and
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`“when faced with a purely subjective phrase like ‘aesthetically pleasing,’ a court
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`must determine whether the patent’s specification supplies some standard for
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`measuring the scope of the phrase.”); see also Andrulis Pharm. Corp. v. Celgene
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`Corp., Case No. 13-1644 (RGA), 6/16/2015 Order (D. Del.).
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`C. Description of Prior Art References
`
`The Challenged Claims are invalid based on various combinations of Small
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`
`
`13
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`
`
`
`
`(YOT-1008), Hale (YOT-1009), Pan (YOT-1010), Wu I (YOT-1007), Sears
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`(YOT-1013) and the knowledge of a POSA. A brief description of each reference
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`follows. A detailed discussion of the references, including the motivation for
`
`combining the various references and the grounds for invalidity are discussed at
`
`Sections D, E, F and G below. In general, a POSA would not have perceived any
`
`technical, commercial, or conceptual obstacles to combining the disclosures of
`
`these references as set forth herein. (See YOT-1203, ¶ 28-39).
`
`During the Reexamination of the parent ’713 patent, the USPTO twice
`
`rejected Patent Owner’s attempts to antedate certain references using a 37 C.F.R. §
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`1.131(a) declaration. Patent Owner first asserted it “conceived of the claimed
`
`invention in the United States prior to 13 November 2000” and employed diligent
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`efforts through filing (YOT-1003, 0344-48), then later, asserted it “conceived of
`
`the claimed invention and reduced it to practice in the United States prior to 30
`
`April 1999” (YOT-1003, 0703-10). The USPTO rejected Patent Owner’s
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`assertions in both instances because, inter alia, the proffered evidence was
`
`inadequate because it did not show that the inventor had a complete invention, and
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`further, even if believed, did not show diligence for the relevant time period.
`
`(YOT-1003, 610-611, 1099-111). Patent Owner also attempted to antedate
`
`references in the prosecution of the ’781 patent, although again this was rejected
`
`
`
`14
`
`
`
`by the USPTO. (YOT-1202, 0390-0397, 0471).
`
`
`
`At least due to the possibility that Patent Owner may once more attempt to
`
`antedate references herein, Petitioner requests that each ground for institution be
`
`evaluated regardless of its strength relative to other stated grounds. Yotrio in no
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`way concedes that any attempt to antedate is appropriate and specifically reserves
`
`all rights with respect to any such attempts by Patent Owner.
`
`1.
`
`Small
`
`Small issued from an application filed on December 3, 1957, Ser. No.
`
`700,501, and issued on November 15, 1960. (YOT-1008, Cover Page). Small is
`
`therefore prior art to the ’781 patent under at least 35 U.S.C. § 102(a), (b), and (e).
`
`Small was cited in the prosecution history of the ’781 patent, but was not cited
`
`against the Challenged Claims in the combination presented in this Petition.
`
`Figure 1 of Small, shown 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
`
`
`
`15
`
`
`
`
`
`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).
`
`
`
`2.
`
`Hale
`
`
`
`Hale issued from an application filed on July 10, 1996, Ser. No. 677,832,
`
`and issued on June 2, 1998. (YOT-1009, Cover Page). Hale is therefore prior art to
`
`the ’781 patent under at least 35 U.S.C. § 102(a), (b), and (e). Hale was not relied
`
`upon by the USPTO to reject any of the Challenged Claims of the ’781 patent
`
`during prosecution.
`
`Although not specifically disclosing an umbrella, 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
`
`
`
`16
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`
`
`below.
`
`
`
`
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`Importantly, Hale discloses a lighting structure carried by a canopy-like
`
`
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`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
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`members “has a generally C-shaped configuration with an open side . . . adapted to
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`receive a light bulb from a string of lights, and the channel is adapted to receive a
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`plurality of light sockets supporting the lights.” (YOT-1009, Abstract). Further,
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`Hale discloses that electrical conductors connecting the lighting elements are
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`recessed into the C-shaped channels. (YOT-1009, 3:1-7, 3:36-48; Fig. 9). Hale also
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`discloses that a conical cap 56 which houses bulb 58 is translucent.
`
`3.
`
`Pan
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`Pan issued from an application filed on November 13, 2000, Ser. No.
`
`
`
`17
`
`
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`
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`09/712,071, and issued on August 27, 2002, and is therefore prior to the ’781
`
`patent priority date. (YOT-1010, Cover Page). Pan is prior art to the ’781 patent
`
`under at least 35 U.S.C. § 102(e). Pan was cited in the prosecution history of the
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`’781 patent, but was not cited against the Challenged Claims in the combination
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`presented in this Petition.
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`Pan discloses an outdoor umbrella with a lighting arrangement. Pan
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`discloses a canopy-like structure containing rib members that are hingedly attached
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`to a pole portion for opening and closing. (YOT-1010, Abstract). Similar to Hale,
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`Pan incorporates a lighting system with multiple rib members to support a plurality
`
`of lighting elements. (YOT-1010, 1:57-2:14).
`
`Fig. 1
`
`
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`In particular, Pan discloses “an outdoor umbrella . . . wherein the outdoor
`
`
`
`18
`
`
`
`
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`umbrella comprises an awning frame for supporting a fabric thereon and a lighting
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`arrangement.” (YOT-1010, 2:37-52). Pan also discloses that the switchable power
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`supply can be a rechargeable battery such that no additional wire extension is
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`needed for electrically connecting to an external power supply. (YOT-1010, 3:17-
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`28).
`
`4. Wu I and Wu II
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`Wu II results from a continuation-in-part claiming priority to Wu I. Wu I
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`was filed on September 18, 1998, Ser. No. 09/157,464, and issued July 18, 2000.
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`Wu II issued from an application filed on May 17, 1999, Ser. No. 09/314,196, and
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`issued on October 3, 2000. (YOT-1007, YOT-1012, Cover Page). Wu I and II are
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`prior art to the ’781 patent under at least 35 U.S.C. § 102(a) and (e). Wu I and II
`
`were not relied upon by the USPTO to reject any of the Challenged Claims of the
`
`’781 patent during the prosecution of the ’781 patent.
`
`Figure 1 of Wu II is shown below. (See also Figs. 5, 17 of Wu I). Wu I and
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`II disclose an umbrella with a lighting arrangement, including a canopy (cloth)
`
`containing rib members that are hingedly 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
`
`
`
`19
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`
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`lighting elements, which can be LEDs. (YOT-1007, 2:37-46; YOT-1012, 2:50-56).
`
`
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`
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`In particular, Wu I and II disclose, inter alia, a central shaft 1 having a lower
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`tube 1a and an upper tube 1b; a grip 11 formed on a lower portion of the lower
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`tube 1a; and a rib assembly 2 having at least a top rib 21 pivotally secured to an
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`upper notch 20 fixed on a top portion 12 of the shaft 1. Wu I and II also disclose an
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`illuminating means 3 including a top illuminator 31 which may be a bulb or a light-
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`emitting diode (LED) fixed on a top end of the shaft 1 and a plurality of tip
`
`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, para
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