Trials@uspto.gov Paper 59
`571-272-7822 Date: February 15, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WALMART INC.; Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.,
`Petitioner,
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`IPR2020-010261
`Patent 5,944,040
`_______________
`
`Before BART A. GERSTENBLITH, JAMES J. MAYBERRY, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`JESCHKE, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of
`Final Written Decision Determining All Challenged Claims Unpatentable
`37 C.F.R. § 42.71(d)
`
`
`
`1 Z-Shade Co., Ltd.; Costco Wholesale Corporation; Lowe’s Home
`Centers, LLC; and ShelterLogic Corp., which filed a petition in IPR2021-
`00449, have been joined as petitioner in this proceeding.
`
`

`

`IPR2020-01026
`Patent 5,944,040
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`
`I. BACKGROUND
`Walmart Inc. filed a Petition to institute an inter partes review of
`claims 1–3 (the “challenged claims”) of U.S. Patent No. 5,944,040
`(Ex. 1001, “the ’040 patent”). Paper 1 (“Pet.”). Patent Owner, Caravan
`Canopy International, Inc., filed a Preliminary Response. Paper 8. With
`Board authorization (Paper 9), Petitioner timely filed a Preliminary Reply to
`Patent Owner’s Preliminary Response (Paper 10), and Patent Owner timely
`filed a Preliminary Sur-reply to Petitioner’s Preliminary Reply (Paper 11).
`We instituted trial as to the challenged claims. Paper 12. During trial,
`Patent Owner filed a Response (Paper 20, “PO Resp.”), Petitioner filed a
`Reply (Paper 27, “Pet. Reply”), and Patent Owner filed a Sur-reply
`(Paper 37, “PO Sur-reply”).
`After institution of trial in this proceeding, Z-Shade Co., Ltd.; Costco
`Wholesale Corporation; Lowe’s Home Centers, LLC; and ShelterLogic
`Corp.2 filed a petition in IPR2021-00449, asserting the same grounds as
`asserted in this proceeding, and moved to join this proceeding. See
`IPR2021-00449, Papers 5 (Petition) & 6 (Motion for Joinder). We instituted
`inter partes review of the challenged claims in IPR2021-00449 and granted
`the motion for joinder. See IPR2021-00449, Paper 11.
`An oral hearing was held on September 15, 2021, and a copy of the
`transcript was entered into the record. Paper 56. In the Final Written
`Decision, we determined that Petitioner had proven by a preponderance of
`
`
`2 We refer to Walmart Inc., Z-Shade Co., Ltd.; Costco Wholesale
`Corporation; Lowe’s Home Centers, LLC; and ShelterLogic Corp.
`collectively as “Petitioner.”
`
`
`2
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`IPR2020-01026
`Patent 5,944,040
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`the evidence that claims 1–3 would have been obvious to one of ordinary
`skill in the art based on Yang3 and Lynch4. Paper 57 (“Dec.”).
`Patent Owner timely filed a Request on Rehearing of the Final
`Written Decision. Paper 58 (“Request on Rehearing” or “Req. Reh’g”). For
`the reasons below, Patent Owner’s Request on Rehearing is denied.
`
`II. DISCUSSION
`A. Standard of Review
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. See 37 C.F.R. § 42.71(d) (2019). A request on
`rehearing “must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed” in the prior briefing. Id.
`B. Patent Owner’s Arguments on Rehearing as to the Asserted
`Obviousness of Claims 1–3 Based on Yang and Lynch
`In the Request on Rehearing, Patent Owner presents four issues
`allegedly misapprehended or overlooked as to the asserted ground based on
`Yang and Lynch. See Req. Reh’g 2–15. We address each of the four issues
`in turn below.
`
`
`3 Japanese Publication No. H1-61370 (with translation and affidavit),
`published April 19, 1989 (Ex. 1005 (Japanese version) and Ex. 1004
`(translation with affidavit), collectively “Yang”). With the Response, Patent
`Owner provided its own translation of Yang, as Exhibit 2030.
`4 US 4,779,635, issued October 25, 1988 (Ex. 1007, “Lynch”).
`
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`
`1. Whether the Board Misapprehended or Overlooked That
`Petitioner Improperly Recast its “Increased Headroom”
`Motivation
`First, Patent Owner contends that “the Board misapprehended and/or
`overlooked Patent Owner’s evidence and arguments” that “Petitioner
`improperly recast its ‘increased headroom’ ‘to increase space for activities’
`motivation in its Petition to ‘increased headroom’ for ‘stationary users’ in its
`Reply.” Req. Reh’g 1; id. at 2–7 (entire argument). For the reasons below,
`we are not persuaded that we misapprehended or overlooked this issue.
`Patent Owner argues that Petitioner has “recast” the alleged benefit of
`the “increased headroom” from modifying Yang with Lynch from
`“increased space for activities” to more space “for stationary users”:
`In its Reply, rather than rebut Patent Owner’s evidence and
`argument that Petitioner’s proposed modification to Yang would
`not “increase space for activities,” Petitioner went in a new
`direction with a new approach supported solely by new evidence,
`arguing that “[a] POSITA[5] would have been motivated to
`increase the total ceiling height, not just the clear ceiling height”
`because “[e]xtra headroom would enable taller persons to stand
`under the tent without their heads contacting the roof.”
`Req. Reh’g 3–4 (quoting Pet. Reply 19–20).
`As an initial matter, although Patent Owner asserted in the Sur-reply
`that “Petitioner recast[ed] its ‘increased headroom’ motivation” in the Reply,
`the basis for that argument was that Petitioner had allegedly improperly
`substituted “total ceiling height” in the Reply for the more general
`“headroom” in the Petition:
`Petitioner recasts its “increased headroom” motivation,
`also described as “increase[d] space for activities,” as increased
`
`
`5 “POSITA” is a person of ordinary skill in the art.
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`
`space under the canopy. This is improper. Petitioner repeatedly
`used “headroom”—not “space”— in the Petition and cited the
`’040 patent and prior art, which tie headroom to the canopy
`support structure. (EX-2014, ¶¶47-49, 53-55). Thus, Prof. Rake
`was reasonable in understanding “headroom” to mean “clear
`ceiling height.” Petitioner cannot fault Patent Owner for not
`intuiting its arguments.
`PO Sur-reply 14. The Final Decision addressed the Sur-reply argument,
`stating that “[w]e decline to limit the Petition in that way because, in the
`Reply, Petitioner clarifies that, with the term ‘headroom’ in the Petition,
`Petitioner meant ‘total ceiling height.’” Dec. 47 (citing Pet. Reply 19; SAS
`Inst. v. Iancu, 138 S. Ct. 1348, 1351 (2018) (stating the statute confirms that
`the petition “should guide the life of the litigation”)).
`In contrast, in the Rehearing Request, Patent Owner raises a different
`argument than that in the Sur-reply, framing Petitioner’s alleged “recasting”
`as changing “increased space for activities” to space “for stationary users.”
`Req. Reh’g 4 (arguing that “Petitioner improperly proceeded in a new
`direction with a new approach relying entirely on new evidence in its Reply
`by changing from ‘space for activities’ to space for ‘stationary users’”).
`Patent Owner seeks to rely on its general Sur-reply argument that the Reply
`relied on new evidence (see Req. Reh’g 4 (citing PO Sur-reply 3)), but that
`argument did not address this specific issue. See PO Sur-reply 3–4.
`Moreover, even if this argument were timely, we view Petitioner’s
`framing of the motivation as of the filing of the Reply as properly clarifying
`the motivation as of the filing of the Petition, in response to the Patent
`Owner Response. In other words, for the reasons below, Petitioner’s
`framing in the Reply is properly characterized as a “clarification of its prior
`position in response to [Patent Owner’s] arguments,” not “an entirely new
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`rationale” that should be excluded. Chamberlain Grp., Inc. v. One World
`Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019); Intelligent Bio-Sys., Inc. v.
`Illumina Cambridge, Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016).
`As noted in the Final Decision, Petitioner stated that modifying Yang
`based on Lynch provided “increased headroom inside the tent” (Dec. 43
`(quoting Pet. 36–37) (citing Klopp Pet. Decl. ¶ 72)) and stated that the
`modified design “would further push up the tent’s rooftop ‘to increase space
`for activities’ as well as creating more tension in the rooftop to reduce the
`risk of the rooftop ‘collapsing, bending, or leaking rainwater when raining’”
`(Pet. 40 (citing Ex. 1004 at 6–7; Klopp Pet. Decl. ¶¶ 74–79), quoted at Dec.
`42–43). Then, in response to Patent Owner’s arguments as to whether
`“headroom” in the Petition meant “total ceiling height” (as intended by
`Petitioner) or “clear ceiling height” (as argued by Patent Owner), Petitioner
`clarified its motivation by focusing on the benefit in the context of the
`asserted increased total ceiling height. See Dec. 43–46.
`Specifically, as noted in the Final Decision, Petitioner stated, in the
`Reply, that one of ordinary skill in the art “would have been motivated to
`increase the total ceiling height, not just the clear ceiling height” because
`“[t]he majority of space under a tent is between the rib members, limited
`only by the height of the roof, not the frame.” Pet. Reply 19 (citing Klopp
`Reply Decl. ¶¶ 112–113, 118, 121–123, 128–129), quoted at Dec. 44. As
`further noted in the Final Decision, in support, Dr. Klopp stated that
`“[i]ncreased headroom in some places under a tent is desirable for stationary
`users, especially for users of above average height.” Klopp Reply Decl.
`¶ 113, cited at Pet. Reply 19, quoted at Dec. 46.
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`
`With this, we view the focus in the Reply on increased headroom for
`“stationary users” as merely a clarification of the focus in the Petition on
`increased headroom for “space for activities.” Supporting this
`understanding, in the Sur-reply, Patent Owner acknowledges that standing
`is, in fact, an activity. See PO Sur-reply 14 n.9 (stating that “[u]nder
`Petitioner’s revised motivation, the only ‘activit[y]’ is ‘stand[ing]’”).6
`Patent Owner also argues that “Petitioner’s Reply was entirely silent
`as to how increasing only the canopy height (the total ceiling height) would
`‘increase space for activities’” and, vice versa, argues that “Petitioner also
`failed to explain how its original evidence cited in the Petition . . . supported
`its new ‘increased headroom’ for ‘stationary users’ motivation.” Req. Reh’g
`4–5. For the same reasons discussed above, we do not view Petitioner as
`providing new evidence that reasonably could have been understood as
`necessary as of the time of the filing of the Petition. As discussed above,
`Petitioner did not present the evidence in the Reply in support of an “an
`entirely new rationale” (Intelligent Bio-Systems, 821 F.3d at 1370), but as a
`“clarification of its prior position in response to [Patent Owner’s]
`
`
`6 Further, we do not limit the term “activity” to motion based on the
`testimony of Dr. Klopp, as argued in a footnote in the Sur-reply. See PO
`Sur-reply 14 n.9 (citing Ex. 2033, 19:11–21), cited at Req. Reh’g 10. In that
`testimony, Dr. Klopp addresses bullet point 8 in Patent Owner’s translation
`of Yang, which provides “The roof of the tent body is pushed up without the
`need for any type of pillar support in the center, increasing the activity space
`while in use.” Ex. 2030 at 8 (discussed at Ex. 2033, 19:1–21). With his
`testimony, we view Dr. Klopp as providing movement as merely an example
`of “activity.” See Ex. 2033, 19:11–21. Further, this discussion relates to the
`presence of a center support column on the ground in the prior art as to
`Yang, which would not be present in the modification from Yang to the
`modified device. See Dec. 41–43 (discussing the proposed modification).
`
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`arguments” as to the meaning of “headroom” (Chamberlain, 944 F.3d at
`925). Cf. Consolidated Trial Practice Guide 74 (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“TPG”) (“[A] reply
`or sur-reply that raises a new issue or belatedly presents evidence may not be
`considered. . . . Examples of indications that a new issue has been raised in
`a reply include new evidence necessary to make out a prima facie case for
`the patentability or unpatentability of an original or proposed substitute
`claim, such as newly raised rationale to combine the prior art references that
`was not expressed in the petition.”).
`Patent Owner also asserts that “the Board appears to have
`misapprehended the reason why Patent Owner’s Response focused on clear
`ceiling height, which was because that is the determinative factor of the
`‘space for activities’ under a tent as confirmed by the contemporaneous art
`cited by Petitioner in the Petition.” Req. Reh’g 7. We addressed this issue
`in the Final Decision, explaining that we will not limit Petitioner to
`increased clear ceiling height when increased total ceiling height is
`supported by the record as a motivation for the proposed modification of
`Yang based on Lynch. See Dec. 46–47. For these reasons, we are not
`persuaded that we misapprehended or overlooked this issue.
`2. Whether the Board Misapprehended or Overlooked That one
`of Ordinary Skill in the art Would not Have Modified Yang
`in View of Lynch to Increase Headroom
`Second, Patent Owner contends that “the Board misapprehended
`and/or overlooked Patent Owner’s evidence and arguments” “showing that a
`person of ordinary skill in the art . . . would not have been motivated to
`modify Yang based on Lynch to ‘increase[] headroom.’” Req. Reh’g 1; id.
`at 8–12 (entire argument). According to Patent Owner, the Board
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`misapprehended or overlooked Patent Owner’s arguments that
`“(1) Petitioner failed to provide legally sufficient evidence showing that a
`POSITA would have been motivated to increase only total ceiling height;
`and (2) Patent Owner’s evidence showing that a POSITA would have
`considered clear ceiling height—not total ceiling height—as the relevant
`factor for increasing ‘headroom.’” Id. at 8. For the reasons below, we are
`not persuaded that we misapprehended or overlooked this issue.
`As to the first point, Patent Owner contends that “[t]he only evidence
`relied upon by Petitioner in support of its ‘increased headroom’ for
`‘stationary users’ motivation is Dr. Klopp’s ipse dixit testimony, devoid of
`citation to any documentary evidence (contemporaneous or otherwise)
`showing that a POSITA would have been motivated to increase ‘headroom’
`for ‘stationary users.’” Req. Reh’g 8 (citing Dec. 46; Ex. 1025 ¶ 113)).
`According to Patent Owner, “Dr. Klopp’s ipse dixit reply testimony is
`legally insufficient to carry Petitioner’s burden.” Id. (citing TQ Delta, LLC
`v. CISCO Systems, Inc., 942 F.3d 1352, 1362 (Fed. Cir. 2019)).
`As an initial matter, this part of Patent Owner’s argument—that
`Petitioner’s motivation statement at issue is per se deficient as relying solely
`on Dr. Klopp’s testimony—is both new and incorrect. It is new in that
`Patent Owner fails to identify any location in the prior briefing that raises
`this specific issue. See Req. Reh’g 8–12; 37 C.F.R. § 42.71(d) (stating that a
`request on rehearing “must specifically identify . . . the place where each
`matter was previously addressed” in the briefing).
`This argument is also legally incorrect. In the discussion in TQ Delta
`cited by Patent Owner (Req. Reh’g 8–9), the Federal Circuit reversed a
`conclusion as to obviousness because the petitioner’s declarant failed to
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`adequately explain why one of ordinary skill in the art would have
`recognized that one relied-upon reference’s disclosure would have been
`understood as a solution to an issue identified in another relied-upon
`reference. TQ Delta, 942 F.3d at 1361–62. This discussion does not fault
`the petitioner for relying on only declarant testimony, but rather faults that
`testimony as “conclusory” and as failing to provide “meaning explanation”
`for the motivation to combine, with the panel noting that the declarant does
`not cite other evidence in support of the insufficient testimony. Id. at 1362.
`For the reasons previously discussed in the Final Decision, we
`“determine[d] that the increased total ceiling height—i.e., ‘headroom’ as
`used in the Petition—provides adequate ‘articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness’ based
`on the proposed modification.” Dec. 45 (quoting In re Kahn, 441 F.3d 977,
`988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007)).
`As part of that conclusion, we summarized Petitioner’s and
`Dr. Klopp’s extensive discussion of the motivation to raise the total ceiling
`height in Yang, using the center pole of Lynch, to increase headroom for
`stationary users. See Dec. 41–46. In that discussion, we included a graphic
`used by Dr. Klopp to persuasively convey how the proposed modification
`would provide the benefit of increased total ceiling height. See Dec. 45
`(citing Pet. Reply 20; Klopp Reply Decl. ¶ 118). On the facts here, we do
`not see as necessary separate documentary evidence—i.e., in addition to the
`testimony of an undisputed expert in the field—showing that raising the
`canopy of the device would increase total ceiling height for people standing
`underneath the canopy. For the same reasons discussed in the Final
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`Decision, we do not view this testimony by Dr. Klopp as conclusory or
`failing to provide “meaning explanation” for the motivation to combine,
`contrary to the situation in TQ Delta. See id. at 41–46.
`We turn now to the second part of this argument, that we
`misapprehended or overlooked “Patent Owner’s evidence showing that [one
`of ordinary skill in the art] would have considered clear ceiling height—not
`total ceiling height—as the relevant factor for increasing ‘headroom.’” Req.
`Reh’g 8. Patent Owner argues that one of ordinary skill in the art,
`“motivated to ‘increase[] headroom inside the tent’ would have increased the
`clear ceiling height, not only the total ceiling height.” Id. at 9 (citing PO
`Resp. 22–24; Rake Decl. ¶ 57).
`We addressed this argument in the Final Decision. There, we rejected
`Patent Owner’s argument that one of ordinary skill in the art would not have
`performed the proposed modification and just increased total ceiling height,
`but instead, would have performed a different modification to increase both
`clear ceiling height and total ceiling height. See Dec. 47. Based on the
`record developed at trial, we determined that increasing only total ceiling
`height (and not clear ceiling height) was sufficient reason to modify Yang
`based on Lynch, as proposed. See Dec. 45–48.
`As part of this argument, Patent Owner highlights the statement in the
`Final Decision that, “in his declaration, Mr. Rake appears to have already
`had this understanding [of Petitioner’s position] from the Petition and
`Dr. Klopp’s declaration.” Dec. 47 (citing Rake Decl. ¶ 50), quoted at Req.
`Reh’g 10. According to Patent Owner,
`the Board appears to have overlooked the second half of Prof.
`Rake’s sentence quoted in the [Final Decision], in which he goes
`on to state that, “in my opinion, a POSITA would have used
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`
`‘clear ceiling height’ in a proper analysis” and further overlooked
`the immediately subsequent paragraphs of his declaration, where
`he explains in detail why Petitioner’s use of “ceiling height” is
`wrong or, at the very least, lacked any evidence beyond
`conclusory expert testimony.
`Req. Reh’g 10 (citing PO Resp. 21–24; Rake Decl. ¶¶ 51–59).
`We did not misapprehend or overlook this statement by Mr. Rake or
`the related testimony. See Dec. 44 (citing PO Resp. 22–24; Rake Decl.
`¶¶ 47–57). Although Mr. Rake discusses why “clear ceiling height” may
`also be a relevant factor in designs (Rake Decl. ¶¶ 51–59), based on the
`record developed at trial, we determined that increasing only total ceiling
`height (and not clear ceiling height) was a sufficient reason to modify Yang
`based on Lynch, as proposed. See Dec. 45–48. To the extent argued, the
`record does not support that one of ordinary skill in the art would not have
`considered total ceiling height at all. See id. For the reasons below, we are
`not persuaded that we misapprehended or overlooked this issue.
`3. Whether the Board Misapprehended or Overlooked That
`Yang Already Accommodates Users of Above Average
`Height
`Third, Patent Owner contends that “the Board misapprehended and/or
`overlooked Patent Owner’s evidence and arguments” that “Yang already
`accommodates users of above average height.” Req. Reh’g 1; id. at 12
`(entire argument). Specifically, according to Patent Owner, the Board
`“overlooked Patent Owner’s evidence and argument that Yang already
`accommodates users of ‘above average height’ with its adjustable length
`side poles, which was supported by Dr. Klopp’s testimony that Yang’s
`adjustable length side poles ‘enable the user . . . [to] “fix the overall height”
`of the tent.’” Req. Reh’g 12 (quoting PO Sur-reply 15 (quoting Ex. 1025
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`¶ 202)). Patent Owner asserts that the Board “overlooked Patent Owner’s
`primary argument on this point and focused exclusively on Patent Owner’s
`alternative argument, ‘or would increase the length of the side poles if
`necessary.’” Id. (quoting Dec. 47). Patent Owner adds that “there is no
`evidence of record that Yang’s existing adjustable length side poles are
`insufficient to accommodate for ‘users of above average height.’” Id. For
`the reasons below, we are not persuaded that we misapprehended or
`overlooked this issue.
`In the highlighted argument in the Sur-reply, Patent Owner argued
`that one of ordinary skill in the art, “looking to accommodate taller users,
`would simply select the appropriate stop hole, or would increase the length
`of the side poles if necessary, which would not only accommodate a taller
`user between the ribs but at all areas under the ribs, and would actually
`providing increased space for activities.” PO Sur-reply 15 (citing Ex. 2033,
`96:20–99:18). In the Final Decision, we focused the summary of this
`argument on the second option of “increas[ing] the length of the side poles”
`to increase total ceiling height. See Dec. 47 (“In the Sur-reply, Patent
`Owner also argues that one of ordinary skill in the art would not have
`performed the proposed modification of Yang based on Lynch to provide
`more total ceiling height to taller users, but, instead, would have increased
`the length of the side poles.” (citing PO Sur-reply 15)).
`Even assuming that we overlooked the alleged “primary argument”
`(Req. Reh’g 12 )—“select[ing] the appropriate stop hole” (PO Sur-reply
`15)—the end result would be the same as increasing the length of the side
`poles: increased total ceiling height. And that argument fails for the same
`reasons discussed in the Final Decision: providing an alternative, other than
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`the proposed modification, that leads to a similar benefit, does not
`undermine the proposed modification. See Dec. 47 (citing In re Mouttet,
`686 F.3d 1322, 1334 (Fed. Cir. 2012) (that “better alternatives” may exist in
`the prior art “does not mean that an inferior combination is inapt for
`obviousness purposes”)). For these reasons, we are not persuaded that we
`misapprehended or overlooked this issue.
`4. Whether the Board Failed to Weigh the Negative
`Implications of Petitioner’s Modifications to Yang
`Fourth, Patent Owner contends that “the Board misapprehended
`and/or overlooked Patent Owner’s evidence and arguments” that “any
`benefit provided by modified Yang would have been outweighed by the
`negative impacts of the modification.” Req. Reh’g 1; id. at 12–15 (entire
`argument). For the reasons below, we are not persuaded that we
`misapprehended or overlooked this issue.
`According to Patent Owner, “the Board overlooked Patent Owner’s
`evidence that weighs against Petitioner’s modification to Yang in reaching
`its conclusion of obviousness.” Req. Reh’g 13. Patent Owner highlights the
`statement in the Final Decision that “the record does not support that the
`modified device would have increased the tension in the canopy or otherwise
`resulted in the ‘taut condition’ disclosed in Lynch” (Dec. 52) and argues that
`“the Board overlooked and/or misapprehended Patent Owner’s evidence and
`arguments that the negative impacts of modified Yang’s sagging canopy
`outweigh any alleged benefit of ‘increased headroom.’” Req. Reh’g 13–14.
`According to Patent Owner, “[t]he negative impacts of a sagging canopy, as
`in modified Yang, including instability, flapping, water pooling, and
`unsightliness, outweigh the only apparent benefit of Petitioner’s
`modification—‘increased total ceiling height [] even if only for certain
`
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`locations where a person might stand.’” Id. at 14 (citing PO Resp. 33,
`PO Sur-reply 3, 10, 16–18; Dec. 46).
`As an initial matter, Patent Owner has not adequately explained why
`the lack of a “taut condition” in the modified device necessarily means that
`“sagging” occurs. See Req. Reh’g 13–14. Further, even assuming that
`sagging was required in the modified device, Patent Owner does not identify
`where this argument—that the alleged sagging would outweigh any benefits
`of increased total ceiling height—was made in the prior briefing. See
`37 C.F.R. § 42.71(d) (“The request must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition, a reply, or
`a sur-reply.”). None of the citations to the prior briefing in this section of
`the Rehearing Request include that issue. See id. at 12–15 (citing PO Resp.
`11, 26–27, 33; PO Sur-reply 3–5, 10, 12, 16–18).
`Moreover, to the extent this argument is timely, in the Final Decision,
`we expressly weighed the alleged advantages and disadvantages, including
`the possibility of sagging, and determined that, on balance, the advantages
`outweighed the disadvantages. See Dec. 52–55. For example, we stated
`that, “even assuming the proposed modification caused some sagging and
`yet also increased total ceiling height, ‘a given course of action often has
`simultaneous advantages and disadvantages, and this does not necessarily
`obviate motivation to combine.’” Dec. 55 (quoting Medichem, S.A. v.
`Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). Because we view this
`issue as a new argument raised for the first time on rehearing, and if not, as
`an issue addressed in the Final Decision, we are not persuaded that we
`misapprehended or overlooked this issue.
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`C. Conclusion
`For the reasons above, Patent has not shown that we misapprehended
`or overlooking any arguments or evidence in determining that Petitioner had
`proven by a preponderance of the evidence that claims 1–3 of the
`’040 patent would have been obvious to one of ordinary skill in the art based
`on Yang and Lynch.
`
`III. ORDER
`For the reasons above, it is:
`ORDERED that Patent Owner’s Request on Rehearing is denied.
`
`16
`
`

`

`IPR2020-01026
`Patent 5,944,040
`
`FOR PETITIONER:
`
`David A. Reed
`Tyler McAllister
`Kathleen R. Geyer (pro hac vice)
`KILPATRICK TOWNSEND & STOCKTON LLP
`dreed@kilpatricktownsend.com
`tmcallister@kilpatricktownsend.com
`kgeyer@kilpatricktownsend.com
`Attorneys for Walmart Inc.
`
`Kerry Taylor
`Andrew M. Douglas
`Lauren K. Katzenellenbogen
`KNOBBE MARTENS OLSON & BEAR, LLP
`2KST@knobbe.com
`2AMD@knobbe.com
`2LXK@knobbe.com
`Attorneys for Z-Shade Co., Ltd. and Costco Wholesale Corporation
`
`Richard A. Neifeld
`NEIFELD IP LAW, PC
`rneifeld@neifeld.com
`Attorney for Lowe’s Home Centers, LLC
`
`Damian K. Gunningsmith
`CARMODY TORRANCE SANDAK AND HENNESSEY LLP
`dgunningsmith@carmodylaw.com
`Attorney for ShelterLogic Corp.
`
`William J. Brown, Jr.
`BROWN WEGNER LLP
`bill@brownwegner.com
`Attorney for Lowe’s Home Centers, LLC
`
`
`
`
`
`
`17
`
`

`

`IPR2020-01026
`Patent 5,944,040
`
`FOR PATENT OWNER:
`
`Kyle W. Kellar
`Jason C. Martone
`Steven French
`LEWIS ROCA ROTHGERBER CHRISTIE LLP
`kkellar@lewisroca.com
`jmartone@lewisroca.com
`sfrench@lewisroca.com
`
`18
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`