UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT AND TRIAL APPEAL BOARD
`________________
`SATTLER
`TECH CORP.
`Petitioner
`v.
`YAQI LYU
`Patent Owner
`________________
`Patent No. D 910,645 S
`________________
`
`PETITION FOR POST-GRANT REVIEW
`
`OF U.S. PATENT NO. D910,645 S
`
`
`
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`

`

`
`
`Table of Authorities
`Table of Exhibits
`
`TABLE OF CONTENTS
`I.
`INTRODUCTION ………………………………………………………………….……...………… Page 1
`II.
`STANDING AND PROCEDURAL STATEMENTS ……………………….………….…… Page 1
`III.
` MANDATORY NOTICES ........................................................................................................Page 2
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ...................................................Page 2
`A.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ...............................................................Page 2
`B.
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) .........................................Page 2
`C.
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) .......................................................Page 2
` STATEMENT OF PRECISE RELIEF REQUESTED ........................................................Page 2
` ’645 PATENT BACKGROUND..............................................................................................Page 3
`A. Overview of the ’645 Patent ................................................................................................Page 3
`B. File Wrapper of the ‘645 Patent.......................................................................................Page 11
` COPYING FIGURES FROM ANOTHER............................................................................Page 21
`A. Overview of the Prior Publication by another…………………...……………………Page 21
`B. Comparison of the ‘645 Patent to LUMI STB-081…………………………………....Page 29
` CLAIM CONSTRUCTION …………………...........................................................................Page 31
` DETAILED EXPLANATION OF INVALIDITY..........................................................,....Page 31
`A. Legal Standards…………………………………..………………………………………………..Page 32
`1. Applicable Law Regarding Invalidity for Novelty………………………………Page 32
`2. THE CLAIM IS UNPATENTABLE UNDER THE ON-SALE AND PRIOR
`PUBLICATION BAR OF 35 U.S.C. § 102(a)(1)…………………………………….Page 36
` CONCLUSION……………………………………………………………………………………….Page 46
`
`IV.
`V.
`VI.
`VII.
`VIII.
`
`IX.
`
`

`

`Table of Authorities
`
`Statutes
`
`35 U.S.C. § 102(a)(1) ............................................................................................. 1, 3, 32, 34, 36
`
`37 C.F.R. § 42.208 ......................................................................................................................... 1
`37 C.F.R. § 42.204(a) ..................................................................................................................... 1
`37 C.F.R. § 42.206(a) ..................................................................................................................... 1
`37 C.F.R. § 10(b)…………………………………………………………………………………………………………………………1
`37 C.F.R. § 42.63(e)………………………………………………………………………………………………………………...…1
`37 C.F.R. § 42.8(b)(1) ..................................................................................................................... 2
`37 C.F.R. § 42.8(b)(2) ..................................................................................................................... 2
`37 C.F.R. § 42.8(b)(3) ..................................................................................................................... 2
`37 C.F.R. § 42.8(b)(4) ..................................................................................................................... 2
`37 C.F.R. § 42.22(a) ....................................................................................................................... 3
`
`35 U.S.C. § 112(a) and (b) ......................................................................................................... 18
`U.C.C. § 2-106 (AM. LAW INST. & UNIF. LAW COMM’N 2012)………………………………….…35, 36
`
`M.P.E.P. § 1503.02(III) ................................................................................................................. 20
`37 C.F.R. § 42.100(b) ................................................................................................................... 31
`
`
`Cases
`
`In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278-83 (Fed. Cir. 2015). ................................... 31
`Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,679 (Fed. Cir. 2008) ..................................... 32
`Dobson v. Dornan, 118 U.S. 10, 14 (1886) ................................................................................... 32
`
`High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) ........ 32
`Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293–94 (Fed. Cir. 2010) ......................... 19
`Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238, 1240-41, 1243
` (Fed. Cir. 2009) ........................................................................................................................... 33
`Gorham Co. v. White, 81 U.S. 511, 528 (1871) ................................................................................ 33
`Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (1984)………………………………………..33
`Hupp v. Siroflex of America Inc., 122 F.3d 1456, 1461 (Fed. Cir. 1997)…………...….…………..…34
`Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001)………………….….34
`Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)…………………………………………………………..34
`Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)…………………………………………34
`In re Wyer, 655 F.2d 221, 226 (CCPA 1981)……………………………………………………………………34
`In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)…………………………………………………………...34
`
`PGR2019-00029 ......................................................................................................................... 34
`
`

`

`Continental Plastic Containers v. Owens Brockway Plastic Products, Inc., 141 F.3d 1073,
`
`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988)……………….35
`Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355–60 (Fed. Cir. 2018)……………35
`1077 (Fed. Cir. 1998)………………………………………………………………………………………………………………..35
`Pfaff [v. Wells Electronics, Inc.], 525 U.S. [55], 67,68 [(1998)]…………………………….……………35
`Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 628, 633 (2019)…………………..…35
`Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1365 (Fed. Cir. 2016)…………………………………36
`
`
`
`
`
`
`

`

`TABLE OF EXHIBITS
`
`
`
`Description
`
`U.S. Patent No. D 910,645 S
`File Wrapper For The ‘645 Patent
`LUMI Page On Which The 2017-2018, Edition 26
`Catalog Appears
`Internet Archive Of LUMI’s 2017-2018, Edition 26
`Catalog
`LUMI Catalog Page With The Exact Product Shown
`In The ‘645 Patent
`LUMI Catalog Pages With More Detail Of The Exact
`Product Shown In The ‘645 Patent
`Internet Archive Of LUMI Website Offering The Exact
`Product Shown In The ‘645 Patent for sale and
`Published #1
`Internet Archive Of LUMI Website Offering The Exact
`Product Shown In The ‘645 Patent for sale and
`Published #2
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`Exhibit No.
`
`
`1001
`1002
`
`1003
` 1004
`1005
`
`1006
`
`
`
`1007
`
`
`
`1008
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`

`

`I. INTRODUCTION
`
`
`Sattler Tech Corp. (“SATTLER” or “Petitioner”) requests post-grant review of the
`claim of U.S. Patent No. D 910,645 S (Ex. 1001, “the ’645 Patent”), and cancellation of the
`claim as unpatentable under 35 U.S.C. § 102(a)(1) because an embodiment of the ’645
`Patent was on sale and had been published before its effective filing date. This Petition
`demonstrates that it is more likely than not that the claim of the ’645 Patent is
`unpatentable. 37 C.F.R. § 42.208.
`As an initial matter, the design claimed by the ’645 Patent was not invented by the
`applicant and/or inventor, as it was originally shown in another entity’s product catalogue
`available online and otherwise with a date from www.Archive.org (which regularly cache’s
`website content by date) long before the ‘645 Patent was filed. The claim of the ’645 Patent
`is therefore not directed at patentable subject matter. It should be invalidated on that basis.
`
`Petitioner certifies pursuant to 37 C.F.R. section 42.204(a) that the ’645 Patent is
`available for post-grant review and that Petitioner is not barred or estopped from
`requesting post-grant review of the ’645 Patent. This Petition is also filed within nine
`months from the February 16, 2021, issue date of the ’645 Patent.
`Petitioner files this petition in accordance with 37 C.F.R. section 42.206(a),
`and files concurrently with this petition a Power of Attorney and an Exhibit List
`pursuant to 37 C.F.R. sections 10(b) and 42.63(e), respectively.
`The required fee is paid via online Deposit Account payment.
`
`II. STANDING AND PROCEDURAL STATEMENTS
`
`
`
`Page 1 of 47
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`

`

`
`
`III. MANDATORY NOTICES
`
`A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel
`
`
`
`
`
`
`
`
`
`Back – Up Counsel
`
`
`Petitioner is the real party-in-interest.
`On information and belief, the sole judicial or administrative matters involving the
`’645 Patent is Case No. 1:21-cv-00471-LO-IDD in the United States District Court, Eastern
`District of Virginia.
`Michael L. Greenberg (Reg. No. 47,312)
`Stevan Lieberman
`GREENBERG & LIEBERMAN, LLC
`GREENBERG & LIEBERMAN, LLC
`1775 Eye Street, NW
`1775 Eye Street, NW
`Suite 1150
`Suite 1150
`Washington, DC 20006
`Washington, DC 20006
`Telephone: (202) 625-7000
`Telephone: (202) 625-7000
`Facsimile: (202) 625-7001
`Facsimile: (202) 625-7001
`Michael@APLegal.com
`stevan@aplegal.com
`
`Petitioner consents to service by e-mail at the addresses of counsel provided
`
`
`
`D. Service Information (37 C.F.R. § 42.8(b)(4))
`
`above.
`
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED
`
`
`
`Page 2 of 47
`
`

`

`Pursuant to 37 C.F.R. section 42.22(a), Petitioner states that the claim of the ’645
`Patent is unpatentable under 35 U.S.C. § 102(a)(1) because an embodiment of the ’645
`Patent was on sale before its effective filing date.
`Additionally, Petitioner states that the claim of the ’645 Patent is unpatentable
`under 35 U.S.C. § 102(a)(1) because an embodiment of the ’645 Patent was described in a
`printed publication before its effective filing date.
`The reference relied upon in this Petition was not before the Examiner during the
`prosecution of the '645 Patent. Thus, this Petition does not present the same or
`substantially the same prior art or arguments presented during the prosecution of the '645
`Patent. Petitioner seeks cancellation of the claim. Petitioner’s full statement of the reasons
`for the relief requested is set forth in detail in Section VIII below.
`
`
`V. ’645 PATENT BACKGROUND
`
`A. Overview of the ’645 Patent
`
`The ’645 Patent (Ex. 1001) is entitled “TABLE TOP MONITOR STAND.” It issued on
`February 16, 2021, from Application Ser. No. 29/709,932 (“the ’645 Application”), filed
`October 18, 2019. The ’645 Patent claims that which it purports to be a unique ornamental
`design for a table top monitor stand represented by the following perspective view FIG. 1:
`
`
`
`Page 3 of 47
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`

`

`
`(Ex. 1001 at 2.)
`The ’645 Patent contains 6 other figures, FIGS. 2-7, directed at a front elevational
`view, a rear elevational view, a right side elevational view, a left side elevational view, a top
`plan view, and a bottom plan view of the claimed design. FIG. 2 is a front elevational view
`of the claimed design:
`
`
`
`Page 4 of 47
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`

`

`
`
`
`
`(Ex. 1001 at 3.)
`A rear elevational view of the claimed design is shown in FIG. 3:
`
`(Ex. 1001 at 4.)
`FIG. 4 is a right side elevational view:
`
`
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`Page 5 of 47
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`

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`(Ex. 1001 at 5.)
`FIG. 5 is a left side elevational view:
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`Page 6 of 47
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`
`
`FIG! 5
`
`
`
`(Ex. 1001 at 6.)
`FIG. 6 is a top plan view:
`
`FIG. 6 is a top plan View:
`
`(Ex. 1001 at 6.)
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`
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`Page 7 of 47
`Page 7 of 47
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`
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`
`(Ex. 1001 at 7.)
`FIG. 7 is a bottom plan view:
`
`FIG. 7 is a bottom plan View:
`
`(Ex. 1001 at 7.)
`
`FIG.
`
`6
`
`
`
`Page 8 of 47
`Page 8 of 47
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`

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`(Ex. 1001 at 8.)
`As seen in the Figures, there are parts of figures that are shown in broken lines. As
`noted in the ‘645 Patent itself: “The broken lines in the drawings depict portions of the
`table top monitor stand that form no part of the claimed design.” The solid-lined parts of
`the design – or in other words, the claimed design -- are the following:
`1. The multiplicity of holes on the top of the design.
`2. The first outline of the top of the design.
`3. The second outline of the top of the design (slightly outside the first outline of
`the top of the design) that defines the top of the sidewall of the top of the design.
`
`
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`Page 9 of 47
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`

`

`4. The third outline of the top of the design, that defines the end of the bottom of
`the sidewall of the design.
`5. Four pairs of roughly vertical lines that appear at each top corner of the design,
`demarking each of the top corner pieces with lines that extend from the first
`outline of the top of the design, then bisect the second outline of the top of the
`design, and then end at the third outline of the top of the design.
`6. Four pairs of lines showing narrow legs.
`7. Four sectioning vertical lines that appear to divide each of the four narrow legs.
`8. Lines depicting four larger legs below the narrow first legs, the four larger legs
`having a larger diameter than the narrow first legs.
`9. Two lines along the length of each of the four larger legs.
`10. Several top lines seeming to indicate various circumferences of the top edge of
`each of the four larger legs.
`11. Several bottom lines seeming to indicate various circumferences of the bottom
`edge of each of the four larger legs.
`12. Small vertical lines that bisect the several bottom lines (the bottom lines
`seeming to indicate various circumferences of the bottom edge of each of the
`four larger legs), the small vertical lines shown in pairs at the bottom of each the
`four larger legs.
`As demonstrated below, the look of those individual elements—as well as the look
`of those elements together—was available in an online publication and for sale prior to one
`year before the date the patent application for the ‘645 Patent was filed. In fact, that online
`
`
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`Page 10 of 47
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`

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`publication and offer for sale was made by another – not the applicant and inventor of the
`‘645 Patent.
`
`
`The original figures filed for the ‘645 Patent as shown in the File Wrapper for ‘645
`Patent (Ex. 1002) are not the same figures that eventually issued as part of the granted ‘645
`Patent, although they are somewhat similar. The following figures were originally filed for
`the ‘645 Patent:
`
`B. File Wrapper of the ‘645 Patent
`
`
`
`Page 11 of 47
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`
`
`Fig. 1
`
`
`
` (Ex. 1002 at 88.)
`
`(Ex. 1002 at 88.)
`
`
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`Page 12 of 47
`Page 12 of 47
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`

`

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`Fig. 2
`
`(Ex. 1002 at 89.)
`
`(Ex. 1002 at 89.)
`
`
`
`Page 13 of 47
`Page 13 of 47
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`

`

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`
`(Ex. 1002 at 90.)
`
`(Ex. 1002 at 90.)
`
`
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`Page 14 of 47
`Page 14 of 47
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`
`
`(Ex. 1002 at 91.)
`
`
`(Ex. 1002 at 91.)
`
`
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`Page 15 of 47
`Page 15 of 47
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`

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`(Ex. 1002 at 92.)
`
`(Ex. 1002 at 92.)
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`
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`
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`
`
`Page 16 of 47
`Page 16 of 47
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`(Ex. 1002 at 94.)
`
`The above original figures of the ‘645 Patent were amended to the final figures that
`issued as the ‘645 Patent. The amendment occurred because the Patent Office rejected the
`above original figures as shown in pages 38-40 of the ‘645 Patent file wrapper as follows:
`
`
`
`
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`Page 17 of 47
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`

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`35 USC 112(a) and (b)
`
`Claim Rejection
`
`The claim is rejected under 35 USC. 112(a) and (b), as the claimed invention is not described in
`
`such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the
`
`same, and fails to particularly point out and distinctly claim the subject matter which the applicant
`
`regards as the invention.
`
`The claim is indefinite and nonenabling because of the following unclear portions:
`
`1. Due to the blurriness and scale of the drawings, it cannot be determined if the eight circular
`
`features pointed out below in Figure 1 are flush to the top surface or recessed within the
`
`design. Additionally, if they are recessed, it is unclear how far they are recessed. Based on
`
`the views provided, the appearances of these features cannot be determined without
`
`(Ex. 1002 at 38.)
`
`resorting to conjecture.
`
`(Ex. 1002 at 38.)
`
`
`
`
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`Page 18 of 47
`Page 18 of 47
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`

`

`It cannot be: determined if these
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`It cannot be determined from the drawings if the four features pointed out below in Figure 7
`
`are flush to the underside of the top surface or recessed within the design. Additionally, if
`
`they are recessed, it is unclear how far they are recessed. Based on the Views provided, the
`
`appearances of these features cannot be determined without resorting to conjecture.
`
`
`
`(Ex. 1002 at 39.)
`
`(Ex. 1002 at 39.)
`
`
`
`Page 19 of 47
`Page 19 of 47
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`

`

`It cannot be. determined if these
`
`features are. flush or recessed
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`To overcome this rejection, it is suggested that the design be shown clearly and consistently among
`
`the Views.
`
`If certain non-enabled portions of the design cannot be fully enabled without the
`
`introduction of new matter, applicant may be able to disclaim some areas or portions of the
`
`design that are considered indefinite and nonenabling by converting them to broken lines,
`
`so long as the amendment meets the written description requirement of 35 USC 112(a). It must be
`
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`
`If certain portions of the design are converted to broken lines, the following broken line statement
`
`must be added to the specification directly preceding the claim:
`
`--The broken lines shown in the drawings illustrate portions of the table top monitor
`
`stand that form no part of the claimed design.--
`
`
`
`(Ex. 1002 at 40.)
`
`
`
`(Ex. 1002 at 40.)
`
`
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`Page 20 of 47
`Page 20 of 47
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`

`

`In response to the above rejection, Applicant submitted the figures that eventually
`were printed as the ‘645 Patent. Importantly, the original figures submitted when the ‘645
`Patent was filed were previously available from another (not the applicant or inventor of
`the ‘645 Patent), more than one year prior to the filing date of the ‘645 Patent.
`
`
`VI. COPYING FIGURES FROM ANOTHER
`
`A. Overview of the Prior Publication by another
`
`The original figures, submitted when the ‘645 Patent was filed, were previously
`available publicly from LUMI, a leading manufacturer and exporter from China, in a 2017-
`2018, Edition 26 catalog, available at the Internet address link
`https://www.lumi.cn/upload/pdf2html/201708-003/mobile/index.html . (Ex. 1003) The
`Internet Archive, at www.Archive.org (which the United States Patent Office commonly
`cites as proof that a design was available publicly on the Internet and on sale) confirms that
`the above link was cached on August 26, 2017, at the following Internet Archive link:
`https://web.archive.org/web/20170826150215/http://www.lumi.cn/upload/pdf2html/2
`01708-003/mobile/index.html#p=1 (Ex. 1004)
`The Internet address link and Internet Archive link above show the front of the catalog as
`follows:
`
`
`
`Page 21 of 47
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`

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`2017-2018 / Edition 26
`
`
`
`FULL
`
`CATALOG
`
`._.'
`
`NOJ Ranked Exporter in China
`
`..‘_.-.|_. :......-,
`
`-'_I_:-IIIJII‘—_'
`
`
`
`Page 22 of 47
`Page 22 of 47
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`(Ex. 1003 at 1 and Ex 1004 at 1.)
`
`In particular, page 60 of the catalog located at the Internet address link
`https://www.lumi.cn/upload/pdf2html/201708-003/mobile/index.html#p=60 (Ex. 1005)
`shows the exact product shown in the ‘645 Patent, shown as the STB-081 (the red arrow
`has been added to point to the product, and note the line drawing of the product shown
`immediately below and to the left of the red arrow) as follows:
`
`
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`Page 23 of 47
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`

`

`
`
`UruqLsi.‘ Keyboard Slash
`
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`f1_
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`
`(Ex. 1005 at 1.)
`
`(Ex. 1005 at 1.)
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`Page 24 of 47
`Page 24 of 47
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`More detail is shown about the STB-081, when looking at the at 360 degree view, at
`Internet address link https://www.lumi.cn/en/lumi-ergo/monitor-laptop-risers/monitor-
`riser/stb-081 (Ex. 1006) in the following three images:
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`Page 25 of 47
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`(Ex. 1006 at 2.)
`
`(Ex. 1006 at 2.)
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`(Ex. 1006 at 3.)
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`(Ex. 1006 at 3.)
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`
`(Ex. 1006 at 4.)
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`(Ex. 1006 at 4.)
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`Page 26 of 47
`Page 26 of 47
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`And a black-and-white line drawing of the STB-081 is shown when clicking on the last
`thumbnail image at Internet address link https://www.lumi.cn/en/lumi-ergo/monitor-
`laptop-risers/monitor-riser/stb-081 (Ex. 1006) as below:
`
`(Ex. 1006 at 5.)
`
`Moreover, the Internet Archive, at www.Archive.org (which the United States Patent
`Office commonly cites as proof that a design was available publicly and on sale on the
`Internet) shows that the LUMI product STB-081 was, in fact, available more than a year
`prior to the application date of the ‘645 Patent, as shown at the following link
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`Page 27 of 47
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`https://web.archive.org/web/20170606140356/http://www.lumi.cn/en/lumi-
`ergo/monitor-risers (Ex. 1007) as follows:
`
`
`
`(Ex. 1007 at 1.)
`The date that the Internet Archive captured the above page was, as shown, on June 6, 2017.
`
`Another page was also captured in the Internet Archive, providing even more proof
`that the LUMI STB-081 was, in fact, available more than a year prior to the application date
`of the ‘645 Patent, is shown at the following link
`https://web.archive.org/web/20170623220910/http://www.lumi.cn/en/lumi-
`ergo/monitor-risers/monitor-riser/stb-081 (Ex. 1008) as follows:
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`Page 28 of 47
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`
`(Ex. 1008 at 1.)
`The date that the Internet Archive captured the above page was, as shown, on June 23,
`2017.
`
`
`The design of the ‘645 Patent was sold and publicized by another (not the
`Applicant or Inventor of the ‘645 Patent) more than one-year prior to the
`application date of the ’645 Patent. The following black-lined features of the ‘645
`Patent are identical to the LUMI STB-081:
`1. The multiplicity of holes on the top of the design.
`2. The first outline of the top of the design.
`
`B. Comparison of the ‘645 Patent to LUMI STB-081
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`Page 29 of 47
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`3. The second outline of the top of the design (slightly outside the first outline of
`the top of the design) that defines the top of the sidewall of the top of the design.
`4. The third outline of the top of the design, that defines the end of the bottom of
`the sidewall of the design.
`5. Four pairs of roughly vertical lines that appear at each top corner of the design,
`demarking each of the top corner pieces with lines that extend from the first
`outline of the top of the design, then bisect the second outline of the top of the
`design, and then end at the third outline of the top of the design.
`6. Four pairs of lines showing narrow legs.
`7. Lines depicting four larger legs below the narrow first legs, the four larger legs
`having a larger diameter than the narrow first legs.
`8. Several top lines seeming to indicate various circumferences of the top edge of
`each of the four larger legs.
`9. Several bottom lines seeming to indicate various circumferences of the bottom
`edge of each of the four larger legs.
`The following black-lined features of the ‘645 Patent are not shown in the LUMI
`STB-081; however, they are very de minimis, and would be very difficult – if not impossible
`– for the average observer to distinguish:
`1. Two lines along the length of each of the four larger legs.
`2. Four sectioning vertical lines that appear to divide each of the four narrow
`legs.
`3. Small vertical lines that bisect the several bottom lines (the bottom lines
`seeming to indicate various circumferences of the bottom edge of each of the
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`Page 30 of 47
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`four larger legs), the small vertical lines shown in pairs at the bottom of each
`the four larger legs.
`Moreover, the following black-lined features were originally filed in the ‘645 Patent
`and later made to be broken lines, and are identical to the LUMI STB-081 as previously
`published:
`1. The four circles towards the corners on the top of the design.
`2. The at least one projection emanating from the side of each of the four
`larger legs.
`3. The three holes on the side of each of the four larger legs.
`The ‘645 Patent (originally filed figures and resubmitted figures) and the LUMI STB-
`081 are the same.
`
`Pursuant to 37 C.F.R. section 42.100(b), the challenged claim “shall be
`given its broadest reasonable construction in light of the specification of the patent
`in which it appears.” See also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271,
`1278-83 (Fed. Cir. 2015).
`The language of the challenged claim does not need to be construed for
`purposes of the invalidity ground set forth in this petition. The claim language
`should therefore be given its plain meaning to a person of ordinary skill in the art.
`
`
`VII. CLAIM CONSTRUCTION
`
`VIII. DETAILED EXPLANATION OF INVALIDITY
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`A. Legal Standards
`
`1. Applicable Law Regarding Invalidity for Novelty
`
`The claim of the ’645 Patent is unpatentable under 35 U.S.C. § 102(a)(1) because an
`embodiment of the ’645 Patent was on sale before its effective filing date. The claimed
`design lacks novelty, as it was published by a party other than the applicant and/or
`inventor more than one year prior to the ‘645 Patent’s filing date.
`The claim of the ’645 Patent is therefore not directed at patentable subject matter,
`and it should therefore be invalidated.
`
`With respect to design patents, it is well-settled that a design is represented better
`
`by an illustration than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679
`(Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although
`preferably a design patent claim is not construed by providing a detailed verbal
`description, it may be “helpful to point out . . . various features of the claimed design as they
`relate to the . . . prior art.” Id. at 679–80; cf. High Point Design LLC v. Buyers Direct, Inc., 730
`F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to district court, in part, for a “verbal
`description of the claimed design to evoke a visual image consonant with that design”).
`When construing a design patent for an article that contains both functional and
`ornamental aspects, a patent owner “is entitled to a design patent whose scope is limited to
`[the ornamental] aspects alone and does not extend to any functional elements of the
`claimed article.” Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293–94 (Fed. Cir. 2010).
`The “ordinary observer” test for anticipation of a design patent is the same as that
`used for infringement, except that for anticipation, the patented design is compared with
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`the alleged anticipatory reference rather than an accused design. Int’l Seaway Trading Corp.
`v. Walgreens Corp., 589 F.3d 1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test
`for design patent infringement was first enunciated by the Supreme Court in Gorham Co. v.
`White, 81 U.S. 511 (1871), as follows:
`[I]f, in the eye of an ordinary observer, giving such attention as a purchaser
`usually gives, two designs are substantially the same, if the resemblance is
`such as to deceive such an observer, inducing him to purchase one supposing
`it to be the other, the first one patented is infringed by the other.
`Id. at 528. The ordinary observer test requires the fact finder to consider all of the
`ornamental features illustrated in the figures that are visible at any time in the “normal
`use” lifetime of the accused product, i.e., “from the completion of manufacture or assembly
`until the ultimate destruction, loss, or disappearance of the article.” Int’l Seaway, 589 F.3d
`at 1241. Further, although the ordinary observer test requires consideration of the overall
`prior-art and claimed designs,
`[t]he mandated overall comparison is a comparison taking into account
`significant differences between the two designs, not minor or trivial
`differences that necessarily exist between any two designs that are not exact
`copies of one another. Just as “minor differences between a patented design
`and an accused article’s design cannot, and shall not, prevent a finding of
`infringement” so too minor differences cannot prevent a finding of
`anticipation.
`Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423,
`1444 (1984)).
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`The Leahy–Smith America Invents Act (AIA) bars a person from receiving a patent
`on an invention that was “in public use, on sale, or otherwise available to the public before
`the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1).
`As noted in PGR2019-00029, when considering whether a claimed design is
`anticipated over a prior art disclosure the factual inquiry is the same as in utility patent
`applications, that is, the reference “must be identical in all material respects,” or put
`another way, the claimed design and the prior art design must be substantially the same.
`Hupp v. Siroflex of America Inc., 122 F.3d 1456, 1461 (Fed. Cir. 1997); Door-Master Corp. v.
`Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81
`U.S. 511, 528 (1871)). A printed publication can anticipate a patent’s claim and our
`reviewing court has interpreted Section 102
`in light of its purpose “to prevent withdrawal by an inventor . . . of that which
`was already in the possession of the public.” Medtronic, Inc. v. Barry, 891 F.3d
`1368, 1380 (Fed. Cir. 2018) (alteration in original) (quoting In re Wyer, 655
`F.2d 221, 226 (CCPA 1981)). “Because there are many ways in which a
`reference may be disseminated to the interested public, ‘public accessibility’
`has been called the touchstone in determining whether a reference
`constitutes a ‘printed publication’ . . . .” In re Hall, 781 F.2d 897, 898–99 (Fed.
`Cir. 1986). A reference is considered publicly accessible “upon a satisfactory
`showing that such document has been disseminated or otherwise made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art, exercising reasonable diligence, can locate it.” Wyer,
`655 F.2d at 226. “If accessibility is proved, there is no requirement to show
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`that particular members of the public actually received the information.”
`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir.
`1988).
`Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355–56 (Fed. Cir. 2018).
`Public accessibility to online material is sufficient for such material to be a “printed
`publication.” Id. at 1356–60.
`The “on-sale” bar under Section 102 applies to design patents. Continental Plastic
`Containers v. Owens Brockway Plastic Products, Inc., 141 F.3d 1073, 1077 (