Graco - Petition For IPR D231

Filed: March 31, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

_________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________
GRACO CHILDRENS PRODUCTS INC.,
Petitioner,
v.
KOLCRAFT ENTERPRISES, INC.,
Patent Owner.
_________________
Case IPR2016-000826
Patent D616,231
_________________
PETITION FOR INTER PARTES REVIEW
IPR2016-00826
Petition for IPR of Patent D616,231

TABLE OF CONTENTS
I.
INTRODUCTION ...........................................................................................1
II.
MANDATORY NOTICES 37 C.F.R. 42.8(B) .......................................2

A. Real Parties in Interest .................................................................................... 2
B. Related Matters ............................................................................................... 3
C. Designation of Petitioners Counsel ............................................................... 3
D. Service Information ........................................................................................ 4
III.
FEE FOR IPR REQUEST 37 C.F.R. 42.15(A) .......................................4
IV.
GROUNDS FOR STANDING........................................................................4
V.
IDENTIFICATION OF CHALLENGE ..........................................................4
VI.
OVERVIEW OF THE 231 PATENT ............................................................6
VII. CLAIM CONSTRUCTION ............................................................................9

A. Legal Standard For Claim Construction Of A Design Patent ........................ 9
B. Claim Construction Of The 231 Patent ....................................................... 10
VIII. APPLICABLE LEGAL STANDARDS ........................................................15
A. Anticipation .................................................................................................. 15
B. Obviousness .................................................................................................. 17
IX.
DETAILED EXPLANATION OF THE GROUNDS FOR

UNPATENTABILITY ..................................................................................19
A. Ground 1 The Claim Is Anticipated Under 35 U.S.C. 102(b) By

Celestina-Krevh ............................................................................................ 20
1. The play yard legs of Celestina-Krevh are substantially similar to the
231 Patents claimed design ....................................................................20
2. Any differences between Celestina-Krevh and the 231 Patents claimed
design are trivial .......................................................................................26
3. Celestina-Krevh does not disclose a fabric covering on the legs .............27
4. A U.S. District Court found that Celestina-Krevh discloses a curved play
yard leg regardless of covering ................................................................29
5. Celestina-Krevh still discloses contours of curved play yard legs even if
covered by fabric and anticipates the 231 Patent claim ..........................30
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B. Ground 2 The Claim Is Obvious Under 35 U.S.C. 103(a) Over CelestinaKrevh ............................................................................................................ 31
C. Ground 3 The Claim Is Obvious Under 35 U.S.C. 103(a) Over CelestinaKrevh In View Of Gottlieb ........................................................................... 32
D. Ground 4 The Claim Is Anticipated Under 35 U.S.C. 102(e) By
DeHart ........................................................................................................... 34
E. Ground 5 The Claim Is Obvious Under 35 U.S.C. 103(a) Over
DeHart ........................................................................................................... 37
F. Ground 6 The Claim Is Obvious Under 35 U.S.C. 103(a) Over
Chen 393...................................................................................................... 39
G. Ground 7 The Claim Is Anticipated Under 35 U.S.C. 102(b) By The
Fold N Go Manual ....................................................................................... 42
H. Ground 8 The Claim Is Obvious Under 35 U.S.C. 103(a) Over The Fold
N Go Manual ............................................................................................... 46
I. Ground 9 The Claim Is Obvious Under 35 U.S.C. 103(a) Over The Fold
N Go Manual In View Of Gottlieb ............................................................. 47
J. Ground 10 The Claim Is Obvious Under 35 U.S.C. 103(a) Over
Celestina-Krevh In View Of Hartenstine ..................................................... 48
K. Ground 11 The Claim Is Obvious Under 35 U.S.C. 103(a) Over The
Fold N Go Manual In View Of Hartenstine ................................................ 50
X.
CONCLUSION..............................................................................................51
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TABLE OF AUTHORITIES
Page(s)
CASES
Apple, Inc. v. Samsung Elec. Co., Ltd.,
678 F.3d 1314 (Fed. Cir. 2012)................................................... 17, 33, 48, 51
Bonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,
402 U.S. 313 (1971) ...................................................................................... 29
Caterpillar, Inc. v. Miller International, Ltd.,
Case IPR2015-00416, Decision to Institute Inter Partes Review,
Paper No. 4 (PTAB July 9, 2015) ................................................................. 10
Contessa Food Prods., Inc. v. Conagra, Inc.,
282 F.3d 1370 (Fed. Cir. 2002)....................................................................... 9
Crocs, Inc. v. Intl Trade Commn,
598 F.3d 1294 (Fed. Cir. 2010)............................................................... 10, 17
Dobson v. Dornan,
118 U.S. 10 (1886) .......................................................................................... 9
Door-Master Corp. v. Yorktowne,
256 F.3d 1308 (Fed. Cir. 2001)......................................................... 16, 17, 30
Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996)........................................................... 31, 37, 41
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) ............................................ 9, 10, 16
Gorham Mfg. Co. v. White,
81 U.S. 511 (1871) ............................................................................ 16, 30, 45
High Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301 (Fed. Cir. 2013).............................................................. passim
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In re Blum,
374 F.2d 904 (C.C.P.A. 1967) ...................................................................... 13
In re Carter,
673 F.2d 1378 (C.C.P.A. 1982) ........................................................ 31, 37, 41
In re Cuozzo Speed Techs., LLC,
778 F.3d 1271 (Fed. Cir. 2015)....................................................................... 9
In re Haruna,
249 F.3d 1327 (Fed. Cir. 2001)..................................................................... 17
In re LAMB,
286 F.2d 610 (C.C.P.A. 1961) ...................................................................... 19
In re Rosen,
673 F.2d 388 (C.C.P.A. 1982) ...................................................................... 18
In re Stevens,
173 F.2d 1015 (C.C.P.A. 1949) .............................................................. 32, 41
Intl Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009).............................................................. passim
Litton Sys., Inc. v. Whirlpool Corp.,
728 F.2d 1423 (Fed. Cir. 1984)..................................................................... 17
MRC Innovations, Inc. v. Hunter Mfg., LLP,
747 F.3d 1326 (Fed. Cir. 2014).............................................................. passim
Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010)..................................................................... 10
Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373 (Fed. Cir. 2003)..................................................................... 15
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FEDERAL STATUTES
35 U.S.C. 102 ........................................................................................... passim

35 U.S.C. 103 ........................................................................................... passim
35 U.S.C. 112 ................................................................................................ 6, 7
35 U.S.C. 171 .................................................................................................. 17
FEDERAL REGULATIONS
37 C.F.R. 1.152 ................................................................................................. 9
37 C.F.R. 42.8 ................................................................................................... 2
37 C.F.R. 42.15 ................................................................................................. 4
37 C.F.R. 42.100 ............................................................................................... 9
37 C.F.R. 42.104 ............................................................................................... 4
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EXHIBIT LIST
Exhibit
No.
1001
Description
1005
U.S. Design Patent No. D616,231 (the challenged patent)

Declaration of Robert John Anders, IDSA, in Support of Petition for
Inter Partes Review of U.S. Patent No. D616,231
U.S. Design Patent No. D448,218 to Celestina-Krevh
Fold N Go lan Deluxe Care Center Instruction Manual, Century
Products
U.S. Patent No. 3,187,352 to Gottlieb
1006
U.S. Design Patent No. D500,213 to DeHart et al.
1007
U.S. Design Patent No. D494,393 to Chen
1008
U.S. Patent No. 6,510,570 to Hartenstine et al.
1009
Prosecution File History for U.S. Design Patent No. D616,231

In re Troutman et al., Appeal No. 2009-005005, Application No.
29/244,885 (BPAI Sept. 23, 2009)
dictionary.com definition of exposed
1002
1003
1004
1010
1011
1012
1013
1014
Prosecution File History for U.S. Design Patent No. D604,970

Order Denying Defendants Motion for Summary Judgment, Dkt.
No. 82, Graco Childrens Products Inc. v. Baby Trend, Inc., No.
2:10-cv-05897-JST (C.D. Cal. Oct. 12, 2011)
Google search results for Century Fold N Go elan Deluxe Care
Center
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I.
INTRODUCTION
Graco Childrens Products Inc. (Petitioner or Graco) requests inter
partes review of the claim of U.S. Design Patent No. D616,231 (the 231 Patent)
(Ex. 1001), assigned on its face to Kolcraft Enterprises, Inc. (Patent Owner or
Kolcraft). This Petition shows by a preponderance of the evidence, and
supported by the accompanying Declaration of Robert John Anders (Ex. 1002),
that there is a reasonable likelihood that Petitioner will prevail on invalidating the
231 Patent based on prior art that anticipates or renders obvious the 231 Patent
claim. The231 Patent should therefore be found unpatentable and cancelled.
The 231 Patent is a design
patent directed to the ornamental
design for Exposed Legs for a Play
Yard. The 231 Patent contains a
single claim and five figures
depicting a single embodiment. The
figures of the 231 Patent show a
play yard with what appear to be curved
231 Patent Figure 1
legs that bow outward. As shown in Figure 1, the curved legs are depicted in solid
lines with a boundary line extending down the center of leg in the foreground.
Thus, the only features that appear to be claimed are the portions of the legs shown
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in solid lines in certain figures and up to and including the boundary line in the one
leg shown in Figure 1.
Even beyond issues related to indefiniteness, what is fatal to the 231 Patent
claim is the fact that none of the elements of the claimed design are new. Play
yards with exposed legs, for example,
have been around for decades and are not
new. Even more, play yards with curved
legs had been well-known for many years
prior to the priority date of the 231 Patent.
For example, U.S. Design Patent No.
D448,218 to Celestina-Krevh (Celestina-
Fig. 1 Celestina-Krevh
Krevh) (Ex. 1003), filed by Graco in 2000, disclosed designs nearly identical to
the one claimed in the 231 Patent. Also in 2000, four years prior to the filing of
the 231 Patent, Century Products (which was later acquired by Petitioners parent
company) began to market and sell a play yard with curved legs. (Ex. 1004.)
II.
MANDATORY NOTICES 37 C.F.R. 42.8(B)

A.
Real Parties in Interest

Graco Childrens Products Inc. and its parent, Newell Rubbermaid, Inc., are
real parties-in-interest.
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B.
Related Matters
The Patent Owner has sued the Petitioner, alleging infringement of, inter
alia, the 231 Patent. Kolcraft Enterprises, Inc. v. Graco Childrens Products Inc.,
No. 1:15-cv-07950 (N.D. Ill.).
Petitioner has also filed the following petitions for inter partes review as to
other Kolcraft patents:
Case IPR2016-00810: Petition for inter partes review of U.S. Design
Patent No. D570,621 (the 621 Patent); and
Case IPR2016-00816: Petition for inter partes review of U.S. Design
Patent No. D604,970 (the 970 Patent).
Both the 621 Patent and the 970 Patent claim priority to the same application as
the 231 Patent. Kolcraft also asserted the 621 Patent and the 970 Patent against
Petitioner in the pending district court litigation.
C.
Designation of Petitioners Counsel

Petitioner identifies the following lead and backup counsel:
Lead Counsel
Backup Counsel
Gregory J. Carlin (Reg. No. 45,607) Walter Hill Levie III (Reg. No. 72,016)
John W. Harbin (pro hac vice to be filed)
Meunier Carlin & Curfman LLC
999 Peachtree Street, NE, Suite 1300
999 Peachtree Street, NE, Suite 1300
Atlanta, GA 30309
Atlanta, GA 30309
Tel: (404) 645-7700
Tel: (404) 645-7700
Fax: (404) 645-7707
Fax: (404) 645-7707
E-mail: gcarlin@mcciplaw.com;
E-mail: tlevie@mcciplaw.com;
litdocketing@mcciplaw.com
jharbin@mcciplaw.com
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D.
Service Information
Petitioner consents to electronic service in this proceeding via (1) filing
documents in the Patent Review Processing System (PRPS) or (2) emailing the
documents to the above-designated counsel (when not filed in PRPS).
III.
FEE FOR IPR REQUEST 37 C.F.R. 42.15(A)

The required fee of $23,000 is included with this Petition. The Director is
authorized to charge any additional fees required to Deposit Account No. 50-5226.
IV.
GROUNDS FOR STANDING

Pursuant to 37 C.F.R. 42.104(a), Petitioner certifies that the 231 Patent is
available for inter partes review and that it is not barred or estopped from
requesting inter partes review challenging the 231 Patent claim on the grounds
identified in this Petition. This Petition is being filed within one year of Petitioner
being served with a complaint for patent infringement.
V.
IDENTIFICATION OF CHALLENGE
Pursuant to 37 C.F.R. 42.104(b), Petitioner requests inter partes review of
the sole claim of the 231 Patent based on the following prior art:
Exhibit
1003
1005
1006
Description
U.S. Design Patent No. D448,218
to Celestina-Krevh (Celestina-Krevh)
U.S. Patent No. 3,187,352
to Gottlieb (Gottlieb)
to DeHart et al. (DeHart)
4
Filing
Date
May 5,
2000
June 7,
1962
June 30,
2003
Publication/
Issue Date
Sept. 25,
2001
June 8,
1965
Dec. 28,
2004
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Exhibit
Description
to Chen (Chen 393)
Fold N Go lan Deluxe Care Center
Instruction Manual, Century Products
(Fold N Go Manual)
U.S. Patent No. 6,510,570
to Hartenstine et al. (Hartenstine)
1007
1004
1008
Filing
Date
Jan. 7,
2004
Publication/
Issue Date
Aug. 17,
2004
N/A
Aug. 13,
2003
May 8,
2001
Jan. 28,
2003
Section VII(B), infra, explains how the claim should be construed under the
broadest reasonable interpretation. Under the broadest reasonable interpretation,
Petitioner requests inter partes review based on the following grounds:
Ground No.
1
2
3
4
5
6
7
8
9
10
11
Statutory Basis
Description
35 U.S.C. 102(b) Anticipated by Celestina-Krevh
35 U.S.C. 103(a) Obvious over Celestina-Krevh
Obvious over Celestina-Krevh in view
35 U.S.C. 103(a)
of Gottlieb
35 U.S.C. 102(e) Anticipated by DeHart
35 U.S.C. 103(a) Obvious over DeHart
35 U.S.C. 103(a) Obvious over Chen 393
35 U.S.C. 102(b) Anticipated by the Fold N Go Manual
35 U.S.C. 103(a) Obvious over the Fold N Go Manual
Obvious over the Fold N Go Manual in
35 U.S.C. 103(a)
view of Gottlieb
Obvious over Celestina-Krevh in view
35 U.S.C. 103(a)
of Hartenstine
Obvious over the Fold N Go Manual in
35 U.S.C. 103(a)
view of Hartenstine
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VI.
OVERVIEW OF THE 231 PATENT

The 231 Patent, entitled Exposed Legs for a Play Yard, was filed on July
8, 2009,1 as U.S. Patent Application No. 29/339,831 (the 831 Application). (Ex.
1001.) The 831 Application claimed priority to U.S. Patent Application
29/244,885 (the 885 Application), filed on December 15, 2005, and U.S.
Application No. 29/216,591 (the 591 Application), filed on November 5, 2004.
(Ex. 1001.) The 831 Application contained a single claim and seven figures. (Ex.
1009; Ex. 1002 30.) The figures were directed to an ornamental design for
exposed legs for a play yard. (Ex. 1009.)
In a non-final Office Action, the Office rejected the claim under 35 U.S.C.
112, first and second paragraphs, because 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. (Ex. 1009, 10/13/09 NFOA at 2.) The Office further
alleged that the claimed invention fails to particularly point out and distinctly
claim the subject matter which applicant regards as the invention. (Id.) The Office
identifed inconsistencies across the drawings, finding that the metes and bounds
Because the parent application for the 231 Patent was filed prior to the effective
date of the America Invents Act (AIA), the pre-AIA statutes apply here.
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of what is being claimed is not clear from the
inconsistent drawing[s]. (Id.) For instance, in
the perspective shown in originally-filed
Figure 1, the entire design is in dashed lines,
and thus unclaimed. Further, the Office
provisionally rejected the claim under the
Originally-filed Fig. 1
831 Application
doctrine of obviousness-type double patenting in

view of the claim in the 885 Application. (Id.)
In response, Applicants submitted an amended version of Figure 1 to add

solid lines and a boundary line to the legs.2 (Id. 2/11/10 Response at 4.) Applicants
also cancelled Figures 6 and 7 because the top and bottom views do not form part
of the claimed design. (Id.) Applicants also filed a terminal disclaimer as to the
970 Patent to overcome the provisional obviousness-type double patenting
rejection. (Id. 2/11/10 Terminal Disclaimer.) The 831 Application was thereafter
allowed on March 10, 2010. (Id.) The 231 Patent issued on May 25, 2010. (Id.)
Although not the proper subject of an inter partes review, and not before the
Board, Petitioner submits that the 231 Patent is also nonenabling and indefinite
under 35 U.S.C. 112. Petitioner reserves its rights to challenge the 231 Patent in
this regard.
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The 231 Patent contains the following figure descriptions and figures:
Figure 1 [A] perspective view of

a play yard with exposed legs.
(Ex. 1001 at description of Fig. 1.)
Figure 2 [A] front view of

the playard of FIG. 1[.]
(Id. at description of Fig. 2.)
Figure 3 [A] rear view of the

playard of FIG. 1[.]
Figure 4 [A] right side view of the

Figure 5 [A] left side view of the

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The description further provides:

There is no fabric covering the exposed legs shown in any of
FIGS. 1-5.
The features shown in broken lines consisting of only dashes in
FIGS. 1-5 are for illustrative purposes only and do not form part of the
claimed design. The broken line consisting of dashes and dots in FIG.
1 is a boundary line that shows that the claimed design extends to the
boundary line.
(Id. at description.)
VII. CLAIM CONSTRUCTION
A.
Legal Standard For Claim Construction Of A Design Patent

A claim subject to inter partes review receives the broadest reasonable
construction in light of the specification of the patent in which it appears. 37

C.F.R. 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271,
1279-81 (Fed. Cir. 2015). 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)).
The scope of the 231 Patent is defined by the solid lines (as opposed to the
broken or dashed lines) depicted in Figures 1-5, in conjunction with their
descriptions. See, e.g., Egyptian Goddess, 543 F.3d at 680 (citing 37 C.F.R.
1.152); see also Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370,
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1378 (Fed. Cir. 2002). [D]esign patents are typically claimed according to their
drawings, and claim construction must be adapted to a pictorial setting.
Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010) (citing
Crocs, Inc. v. Intl Trade Commn, 598 F.3d 1294, 1302-03 (Fed. Cir. 2010)). But,
the Federal Circuit has said that it may also be helpful to point out . . . various
features of the claimed design as they relate to . . . the prior art. Egyptian
Goddess, 543 F.3d at 680; see also Caterpillar, Inc. v. Miller International, Ltd.,
Case IPR2015-00416, Decision to Institute Inter Partes Review, Paper No. 4 at 5-6
(PTAB July 9, 2015) (agreeing with Petitioners proposed construction and finding
it helpful to describe verbally certain features of the claim). As a result,
Petitioner proposes a claim construction in view of the broadest reasonable
construction, based on the solid lines of the 231 Patent figures with additional
descriptions of certain features of the claimed design.
B.
Claim Construction Of The 231 Patent

According to the specification, the 231 Patent claims [t]he ornamental
design for the exposed legs for a play yard, as shown and described. (Ex. 1001 at
claim.) The specification states that [t]he features shown in broken lines
consisting of only dashes in FIGS. 1-5 are for illustrative purposes only and do not
form part of the claimed design. (Id. at description.) The specification further
provides that [t]here is no fabric covering the exposed legs shown in any of FIGS.
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1-5. (Id.) To address the boundary line shown in Figure 1, the specification states
that [t]he broken line consisting of dashes and dots in FIG. 1 is a boundary line
that shows that the claimed design extends to the boundary line. (Id.)
Although the law leans against construing figures of a design patent with
words, the 231 Patent claim includes the exposed legs as shown and described.
(Id. at claim.) The descriptions are in words. Therefore, based on the broadest
reasonable construction, it is appropriate and helpful to construe the terms
exposed and no fabric covering with appropriate verbiage.
In approaching claim construction for the 231 Patent, what proves difficult
is that the claimed design is unclear as to scope. For instance, when Figures 1-5 are
viewed together, they are so irreconcilable that Petitioner submits that they are
indefinite. The claimed portions of the legs conflict between Figure 1, Figures 2-3,
and Figures 4-5. Figure 1 shows the play yard at a perspective view with the short
side of Figure 4 or 5 angled 45 degrees from the viewer, with one leg entirely in
solid lines with white space in between, and another leg in the foreground which
includes a boundary line down the center. Because the boundary line is down the
center, the leg in the foreground is split into 90 degrees (one-half of the 180-degree
field of view) on either side of the solid line. Thus, the solid line is 135 degrees
(the 90 degrees shown plus the 45 degree perspective angle) from the panel shown
in Figures 4 and 5. The view of Figures 4 and 5, when the end of the play yard is
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rotated 45 degrees into full elevation view, then should show the solid line
separating a 45 degree (1/4) portion of the legs. Instead, Figures 4 and 5 show all
invisible lines.
Referring to Figures 2 and 3 (showing the front and rear sides of the play
yard, respectively), the full outer contours or silhouettes of two play yard legs are
seen in solid lines. Thus, the claimed surface from the orthogonal view of Figures
2 and 3 would be 180 degrees. Rotating the view 90 degrees from Figures 2 and 3
to Figures 4 and 5 would then leave 90 degrees of the legs still claimed and the
solid line should extend through the middle of the 180 degrees of the legs shown in
Figures 4-5. Instead, Figures 4 and 5 show all invisible lines.
In view the foregoing, Petitioner submits that the narrowest (and thus most
difficult to invalidate) construction for the 231 Patent would be to rely on the
designs shown in Figures 2 and 3 (covering a full 180 degrees within the solid
lines). Any art that would read on what is shown in Figures 2 and 3, would also
apply to the remaining figures of the 231 Patent, including Figure 1. Petitioner
thus proceeds in view of providing a broadest reasonable construction of the
narrowest possible claim what is shown in Figures 2 and 3.3
Petitioner admits this is confusing but the confusion arises because the 231
Patent claim is indefinite. Petitioner is therefore forced to concoct a theoretical
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Petitioner submits that the 231 Patent claim should be construed as curved
legs with the unconcealed outer contours shown in FIGS. 2-3. The most dominant
disclosures of Figures 2 and 3 of the 231 Patent are the play yard legs in solid
lines with white space between those lines. The Patent Owner made no attempt to
show internal contours or shading to denote, for example, shape or form. Design
patent practice provides for showing texture as surface ornamentation, material
composition, and even surface appearance, such as shininess, through use of
contours and/or shading. MPEP 1503.02. By using white space, the Patent Owner
eschewed being limited to a particular surface appearance. See In re Blum, 374
F.2d 904, 907, n.1 (C.C.P.A. 1967) (As the drawing constitutes substantially the
whole disclosure of the design, it is of utmost importance that it be so well
executed both as to clarity of showing and completeness that nothing regarding the
shape, configuration and surface ornamentation of the article sought to be patented
is left to conjecture.).
To properly embrace the lack of features shown in Figures 2 and 3, then, the
term exposed should not be restricted to any particular surface treatment,
material, or covering. If exposed were interpreted so narrowly as to mean
construction. If instead a broadest possible construction is used, Figures 4 and 5

would dictate the scope and the entire claim, which would be to invisible lines.
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uncovered, the scope of the 231 Patent claim would not capture curved legs with
any type of covering plastic or paint, for example. Instead, the Patent Owner, by
use of the term exposed, expressed its desire to capture the very thing shown by
Figures 2 and 3 the silhouette or outer contours of the legs.
Dictionary.com has two definitions for the term exposed which are
informative of possible constructions:
1. left or being without shelter or protection:
2. laid open to view; unconcealed.
(Ex. 1011.) In the 885 Application, to which the 231 Patent claims priority, the
construction argued by the Patent Owner, and adopted by the Examiner and the
BPAI, was number 1 that exposed meant the absence of a fabric covering. (See
Ex. 1010.) Instead, the number 2 definition is more informative and relevant. A
form-fitting covering, such as paint, a tightly-fitting fabric, or plastic coating, may
protect but it does not conceal, and is thus the broader interpretation.
The Board should also, then, view the term no fabric covering in the
context of the term exposed and the 231 Patent figures. The majority of early
play yards had legs at least partially covered by fabric soft goods that had enough
structure to conceal the contours of the underlying play yard structure. In this
context, the term no fabric covering is merely illustrative of the proper
construction of exposed. The broadest reasonable interpretation of no fabric
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covering then is not the complete absence of fabric just that the fabric does not
conceal the silhouette or outer contours of the curved legs. Otherwise, the 231
Patent claim would have the odd scope of covering any visible legs regardless of
whether made of, or covered by, plastic, paint, metal, etc., except for legs covered
by or made with fabric. The 231 Patent claim could then be designed around by
merely applying a coating of sheer, thin fabric, like a nylon or silk, that left the
contours of the curved legs entirely apparent the same as if painted or covered by
a thin plastic cover and yet still have the outer contours completely evident.
Accordingly, Petitioner proposes that the 231 Patent claim, under the
broadest reasonable interpretation, be construed as curved legs with the
unconcealed outer contours shown in FIGS. 2-3. As explained in further detail
below, Petitioner sets forth its grounds for unpatentability based on this broadest
reasonable interpretation.
VIII. APPLICABLE LEGAL STANDARDS
A.
Anticipation
A patent is invalid for anticipation if a single prior art reference discloses
each and every limitation of the claimed invention. Schering Corp. v. Geneva
Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Prior art under 35 U.S.C.
102(b) includes subject matter that was patented or described in a printed
publication in this or a foreign country . . . more than one year prior to the date of
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the application for patent in the United States. 35 U.S.C. 102(b). Prior art under
35 U.S.C. 102(e), on the other hand, includes the subject matter of certain
international applications, U.S. patent application publications, and certain U.S.
patents as of the applications respective U.S. filing date. See 35 U.S.C. 102(e);
see also MPEP 2136.
The sole test for determining invalidity of a design patent under 35 U.S.C.
102 is the ordinary observer test. See Intl Seaway Trading Corp. v. Walgreens
Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009) (applying the ordinary observer test
used for infringement analysis of a design patent in Gorham Mfg. Co. v. White, 81
U.S. 511, 528 (1871), to invalidity analysis of design patents). In an invalidity
analysis, the designs to be compared are the design as claimed and the prior art
reference. See Intl Seaway, 589 F.3d at 1240 (citing Egyptian Goddess, 543 F.3d
at 676). Under the ordinary observer test, a design patent is invalid if, 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. Gorham, 81
U.S. at 528; see also Intl Seaway, 589 F.3d at 1239; Door-Master Corp. v.
Yorktowne, 256 F.3d 1308, 1313 (Fed. Cir. 2001). This comparison takes into
account only significant differences between two designs; minor differences
cannot prevent a finding of anticipation. Intl Seaway, 589 F.3d at 1243; see also
16
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Door-Master, 256 F.3d at 1312-13. Application of the overall visual effect of the
designs in question is used to determine whether the claimed design and prior art
are substantially the same to an ordinary observer. See Crocs, 598 F.3d at 1303.
B.
Obviousness
Pursuant to 35 U.S.C. 171, provisions of [Title 35] relating to patents for
inventions shall apply to patents for designs, except as otherwise provided. 35

U.S.C. 171. As a result, 35 U.S.C. 103 (and all the case law interpreting that
statute) applies with equal force to a determination of the obviousness of either a
design or a utility patent. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423,
1441 (Fed. Cir. 1984); see also In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001) (Section 103 applies to design patents in much the same manner as it
applies to utility patents).
In the context of design patents, the ultimate inquiry under section 103 is
whether the claimed design would have been obvious to a designer of ordinary
skill who designs articles of the type involved. MRC Innovations, Inc. v. Hunter
Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir. 2014) (internal quotation and citations
omitted); see High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313
(Fed. Cir. 2013); Apple, Inc. v. Samsung Elec. Co., Ltd., 678 F.3d 1314, 1329 (Fed.
Cir. 2012).
The relevant inquiry is a two-step process. The first step is to identify a
17
IPR2016-00826
primary reference a single reference, a something in existence, the design

characteristics of which are basically the same as the claimed design. MRC
Innovations, 747 F.3d at 1331 (quoting In re Rosen, 673 F.2d 388, 391 (C.C.P.A.
1982)). The basically the same test requires consideration of the visual
impression created by the patented design as a whole. MRC Innovations, 747 F.3d
at 1331.
[O]nce this primary reference is found, other references may be used to
modify it to create a design that has the same overall visual appearance as the
claimed design. High Point Design, 730 F.3d at 1311 (internal quotation and
citations omitted). These secondary references, in order to modify the primary
reference, must be so related that the appearance of certain ornamental features in
one would suggest the application of those features to the other. MRC
Innovations, 747 F.3d at 1334 (finding that mere similarity in appearance is
sufficient to suggest that one should apply certain features to the other design).
When a secondary reference is so related to the primary reference, the similarity
in appearance among them is enough to motivate a designer of ordinary skill to
combine features from one with features from the other, to create a hypothetical
reference. Id. at 1334-35; see also High Point Design, 730 F.3d at 1315.
Once a hypothetical reference has been created, the next step is to analyze
the hypothetical reference and the claimed design through the eyes of a designer of
18
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ordinary skill to determine if a design patent is invalid for obviousness. See MRC
Innovations, 747 F.3d at 1331 (affirming district courts finding of a design patent
invalid as obvious in light of the prior art); High Point Design, 730 F.3d at 1313.
As with a reference for anticipation under 35 U.S.C. 102, the similarity of
the overall design for obviousness under 35 U.S.C. 103 is what is important;
small differences are inconsequential. See MRC Innovations, 747 F.3d at 1335
(finding insubstantial and obvious the addition of an ornamental surge stitching on
top of a garments existing seam, where no prior art had exactly the same stitching
as the claimed design); In re LAMB, 286 F.2d 610, 611-12 (C.C.P.A. 1961)
(upholding rejection of design claim as invalid because the slight change in some
dimensions over the prior art is insignificant).
IX.
DETAILED EXPLANATION OF THE GROUNDS FOR

UNPATENTABILITY
This Petition explains that the 231 Patent is invalid on multiple grounds.
The references presented by Petitioner provide visual disclosures, many of which

were not considered by the Office during prosecution. The references and grounds
are not redundant to each other given the different disclosures of the references. A
reasonable examiner would consider these references to be important in deciding
whether the claims are patentable, and this Petition demonstrates a reasonable
likelihood that Petitioner will prevail.
19
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A.
Ground 1 The Claim Is Anticipated Under 35 U.S.C. 102(b) By

Celestina-Krevh
Celestina-Krevh discloses the same overall visual appearance as the 231
Patent. (Ex. 1002 103.) An ordinary observer would not take the claimed design
in the 231 Patent for a new and different design. (Id.) As a result, the claim is
invalid under 35 U.S.C. 102(b).
Celestina-Krevh is a U.S. design patent, filed on May 5, 2000, as U.S.
Application No. 29/122,855. (Ex. 1003.) Celestina-Krevh issued on September 25,
2001, more than one year prior to the filing date of the 231 Patent. (Id.) Therefore,
Celestina-Krevh is prior art under 35 U.S.C. 102(b).
Celestina-Krevh specifically claims [t]he ornamental design for curved legs
for a playard. (Id. at claim (emphasis added).) The legs of the play yard disclosed
in Celestina-Krevh, which are exposed, have a virtually identical overall visual
appearance to the 231 Patents claimed design and thus anticipate the curved legs
with unconcealed outer contours shown in Figures 2 and 3 of the 231 Patent.
1.
The play yard legs of Celestina-Krevh are substantially similar to

the 231 Patents claimed design
Below are figures from the 231 Patent and Celestina-Krevh that show
respective views in a side-by-side format:
20
IPR2016-00826
View

231 Patent
Celestina-Krevh
Fig. 1
Fig. 1
Fig. 2
Fig. 2
Fig. 3
Fig. 3
Perspective
Front
Rear
21
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View

231 Patent
Celestina-Krevh
Fig. 4
Fig. 4
Right Side
Both the 231 Patents claimed design and Celestina-Krevh share many
common visual features, such that they are substantially similar (if not identical).
(Ex. 1002 103.) In fact, Mr. Anders was dismayed to see that that the 231
Patent is almost a direct reproduction of the design depicted . . . in CelestinaKrevh. (Id., 104 (emphasis added).) It is [Mr. Anderss] opinion that the named
inventors of the 231 Patent directly copied the drawings of Celestina-Krevh. (Id.)
Overlays of the 231 Patents design (shown in red) over the respective
figures of Celestina-Krevh (shown in black) show nearly identical shapes, sizes,
and designs:
22
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Fig. 1 of CelestinaKrevh with Fig. 1 of

231 Patent Overlaid

231 Patent Overlaid

231 Patent Overlaid
23
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(Ex. 1002, 105.) In fact, direct copying seems to be the only logical conclusion,
given that Celestina-Krevh issued on September 25, 2001 more than two years
before the 591 Application (to which the 231 Patent claims priority) was even
filed.
In view of the foregoing, it comes as little surprise that the 231 Patent and
Celestina-Krevh share the following features:
(1) both designs show the outer contours of legs of a play yard (id. 103);
(2) both designs are directed to rectangular play yards (id. 110);
(3) both designs show legs that have upright orientations (id. 112);
(4) both designs show legs of a play yard that are curved and gently bowing
outwards at the middle (id. 114);
(5) both designs show legs at the four corners of the play yard (id. 111);
(6) both designs show legs that are thin and elongated (id. 115);
(7) both designs show legs that bow slightly outward at the top (id. 116);
(8) both designs have proportionally similar height-to-width ratios (id.
109); and
(9) both designs have proportionally similar length-to-width ratios (id.).
As an initial matter, and regarding similarity (1), an ordinary observer can
easily see that both the 231 Patent and Celestina-Krevh show the outer contours of
legs of a play yard. In fact, the curved, exposed play yard legs of the 231 Patent
24
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appear substantially similar to, if not copy, those in Celestina-Krevh. (Id. 117118.)
Celestina-Krevh shows the play yard legs as having an upright orientation
and being positioned at the four corners of a rectangular play yard, as does the 231
Patent. Celestina-Krevh also shows the play yard legs as being thin and elongated.
So does the 231 Patent. Celestina-Krevh shows the legs as gently bowing
outwards in the middle, just like those in the 231 Patent.
Further, Celestina-Krevh shows the legs flaring outward
slightly at the top, as do the play yard legs shown in the
231 Patents claimed design. By way of example only, a
side-by-side comparison of the legs in Celestina-Krevh and
the 231 Patent is shown. As set forth herein, CelestinaKrevh shows the outer contours of the legs of a play yard
Fig. 2
Fig. 2
Celestina 231
-Krevh Patent
that are substantially similar to the 231 Patents claimed design. (Id.)
Moreover, regarding similarities (8) and (9) identified above, a comparison
of the 231 Patents Figure 1 and Celestina-Krevhs Figure 1 by an ordinary
observer shows that both designs have proportionately similar height-to-width and
length-to-width ratios:
25
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L
L
Fig. 1
231 Patent
2.
Fig. 1
Celestina-Krevh
Any differences between Celestina-Krevh and the 231 Patents

claimed design are trivial
To the extent any differences exist between Celestina-Krevh and the 231
Patents claimed design, they are trivial and do not prevent finding that the claimed
design of the 231 Patent is anticipated by Celestina-Krevh. (Ex. 1002 119.) The
Federal Circuit has determined that the 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. Intl Seaway, 589 F.3d at 1243. Put
differently, minor differences cannot prevent a finding of anticipation. Id.
For instance, the 231 Patent figures show legs that appear slightly thinner
than those disclosed in Celestina-Krevh. (Ex. 1002 120.) This slight difference in
width of the legs is irrelevant, especially when considering that that the overall
26
IPR2016-00826
shape and appearance of the legs are substantially similar. (Id.) See also Intl
Seaway, 589 F.3d at 1243.
3.
Celestina-Krevh does not disclose a fabric covering on the legs
The legs of the play yard disclosed in Celestina-Krevh are the tubular legs
themselves, rather than a fabric or another material encapsulating the claimed legs.
(Ex. 1002 78.) The Patent Owner argued during prosecution of the 885
Application an application containing a similar design as the 231 Patent and
which claims priority to the same 591 Application as the 231 Patent that the
legs of Celestina-Krevh are covered with fabric. Celestina-Krevh, however, does
not disclose fabric covering the legs of the play yard. (Id. 80.)
Celestina-Krevh does not disclose any shading or other lines indicating a
fabric or other material covering the legs, as is allowed in design patent practice.
(Id. 80, 89.) Because only the legs of the play yard are shown in solid lines and
contour lines, that subject matter is all that is claimed in Celestina-Krevh. (Id.
80.) It is a factual and legal error to add design elements to a design patent
drawing that are not claimed. (Id. 81.)
In the annotated version of Figure 1 of Celestina-Krevh, Mr. Anders
indicates with red arrows the shading lines that the Examiner and the BPAI
appeared to mistakenly identify as curved legs covered by fabric in the 885
Application. (Ex. 1002 82; see also Ex. 1010; Ex. 1012 6/26/07 NFOA at 2-3.)
27
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These contour lines are thinner,

intermittent lines within thicker, solid
outer lines and are shading lines that
connote the roundness or curvature. (Ex.
1002 83.) The MPEP itself provides
that such contour lines are used to denote
curvature. MPEP 1503.02. These thinner,
intermittent lines are therefore visually denoting roundness. (Ex. 1002 83.)
Celestina-Krevhs Figures 6 and 7 show some unknown feature4 that appears
to extend laterally away from each leg. (Id. 87.) As
shown in the enlarged (top) view of Figure 6, the
unclaimed environmental feature (denoted with red
boxes) is at some indeterminate vertical position and
does not necessarily obscure the legs. (Id. 88.) It could be positioned below the
legs, for example. (Id.) Even if the unknown feature does extend over the legs, the
unknown feature is not claimed (it is in broken lines) and does not add any
thickness to those legs or otherwise mask the contours of the legs. (Id.)
What the feature is comprised of, is indeterminate. (Ex. 1002 87.)
28
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4.
A U.S. District Court found that Celestina-Krevh discloses a

curved play yard leg regardless of covering
The United States District Court for the Central District of California
construed Celestina-Krevhs claimed design as encompassing exposed legs. (Ex.
1013.) In that case, Petitioner filed suit against Baby Trend, Inc., alleging
infringement of Celstina-Krevh. Baby Trend argued that the BPAI had previously
considered Celestina-Krevh and found that the legs of Celestina-Krevh were
fabric-covered. (Id. at 7.)5
In its summary judgment order, the district court first set forth that the
MPEP explains that surface shading may be necessary to show clearly the
character and contour of all surfaces of any 3-dimensional aspects of the design.
(Id. at 10 (quoting MPEP 1503.02).) The court found that the solid black lines on
the legs of the play yard in Celestina-Krevh without the surface shading show
curvature only in one dimension, and that [s]urface shading is necessary to show
As noted by the district court, Petitioner was not a party to the ex parte
proceeding that produced the BPAIs findings of fact, and the issue of whether
[Celestina-Krevh] claimed a fabric-covered leg does not appear to have been
litigated, by [Petitioner] or anyone else. (Ex. 1013 at 8.) Accordingly, the
[BPAIs] findings of fact cannot be binding on Graco. (Id. (citing Bonder-Tongue
Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329 (1971)).
29
IPR2016-00826
that the leg is also rounded in cross-section. (Id.) Thus, the court found that the
disputed outer lines are not broken lines, but rather surface shading lines. (Id.)
The prosecution history of [Celestina-Krevh] is consistent with the conclusion
that the disputed lines are shading lines. (Id. at 11.) Accordingly, the court
determined that Celestina-Krevh covers a curved playard leg, regardless of
covering. (Id. at 13.)
5.
Celestina-Krevh still discloses contours of curved play yard legs

even if covered by fabric and anticipates the 231 Patent claim
To the extent, however, that the Board finds that Celestina-Krevh shows a
material or fabric covering the legs, Celestina-Krevh still anticipates the 231
Patent claim. (Ex. 1002 122.) Regardless of any fabric or covering on the play
yard legs, Celestina-Krevh still discloses curved legs with unconcealed outer
contours that anticipate the 231 Patents claimed design. (Id. 123.) To the extent
fabric does cover the legs in Celestina-Krevh, the fabric provides such a tight
covering that an ordinary observer would be deceived, and the overall visual
impression is the same. (Id. 124.) See also Gorham, 81 U.S. at 528; Intl Seaway,
589 F.3d at 1239; Door-Master, 256 F.3d at 1313.
Any material or fabric on the legs of the play yard in Celestina-Krevh does
not conceal the outer contours of the legs. (Ex. 1002 123.) Because of the lack of
any structure or fabric that blocks the contours of the legs in Celestina-Krevh (id.),
any fabric or other unknown material covering the legs would only constitute a
30
IPR2016-00826
minor difference[]. Intl Seaway, 589 F.3d at 1243. For example, CelestinaKrevh shows in Figures 2 and 3 the outer contours of the legs. The 231 Patents
Figures 2 and 3 likewise show only those same contours for the legs.
B.
Ground 2 The Claim Is Obvious Under 35 U.S.C. 103(a) Over

Celestina-Krevh
In the alternative, Celestina-Krevh discloses the same overall visual
impression as the 231 Patents claimed design, and in view of the common
knowledge of a designer having ordinary skill in the art, any differences are de
minimus and not sufficient to justify a finding that the design is patentable. As a
result, the claim is obvious under 35 U.S.C. 103(a) over Celestina-Krevh.
Celestina-Krevh is a suitable primary reference because Celestina-Krevh
discloses a play yard with basically the same design characteristics as the
claimed design. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir.
1996). (See also Ex. 1002 129.) Indeed, Celestina-Krevh is so similar to the
claimed design, that no secondary reference is necessary. (Ex. 1002 129.)
To the extent that there is any disclosure in the 231 Patent that is not plainly
evident from Celestina-Krevh, Celestina-Krevh readily suggests these minor
alterations to one of ordinary skill in the art to arrive at a hypothetical reference.
See In re Carter, 673 F.2d 1378, 1380 (C.C.P.A. 1982). (See also Ex. 1002 130.)
For instance, in the event that any difference is found between the proportions of
the play yard or width or proportions of the curved legs, obvious changes in . . .
31
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proportioning involve ordinary skill only. In re Stevens, 173 F.2d 1015, 101516 (C.C.P.A. 1949). (See also Ex. 1002 130.)
Thus, considering this hypothetical Celestina-Krevh reference, an ordinary
observer would be deceived into believing that the hypothetical Celestina-Krevh is
the same as the claimed design. See Intl Seaway, 589 F.3d at 1240-41. Application
of such ordinary skill does not make the claimed design patentable over CelestinaKrevh. Stevens, 173 F.2d at 1015-16.
C.

Celestina-Krevh In View Of Gottlieb
The claim of the 231 Patent would have also been obvious under 35 U.S.C.
103(a) over Celestina-Krevh in view of Gottlieb.

Gottlieb is a U.S. utility patent, filed on June 7, 1962, as U.S. Application
No. 200,721. (Ex. 1005.) Gottlieb issued on June 8, 1965, more than one year prior
to the filing date of the 231 Patent. (Id.) Therefore, Gottlieb is prior art under 35
U.S.C. 102(b).
The purpose of the play yards in Celestina-Krevh and Gottlieb is to provide
a containment area for a child to sleep or play (Ex. 1002 134), and the play yards
in Celestina-Krevh and Gottlieb are thus in the same field of endeavor. See MRC
Innovations, 747 F.3d at 1334-35. Gottlieb discloses a play pen, or play yard, that
has four sides and is rectangular. (Ex. 1005 at 2:61-65; Ex. 1002 133.) Because
32
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both Celestina-Krevh and Gottlieb disclose and are directed to rectangular play
yards that include four legs at each of the four
legs
flexible
shroud
corners, Gottlieb is a proper secondary
reference because it is so related to CelestinaKrevh. MRC Innovations, 747 F.3d at 1334.

The legs (10) on the play yard in Gottlieb
are exposed and located adjacent the four
Fig. 1 Gottlieb
corners of the upper frame. (Ex. 1005 at 3:16-18; FIGS. 1 & 2; Ex. 1002 133.)
The legs of the play pen in Gottlieb are isolated from the interior part of the play
yard by a flexible shroud 14 . . . made of an open net greatly spaced away from
the four legs of the play yard. (Ex. 1005 at 3:7-8; FIG. 1; see also Ex. 1002 135.)
The claimed design of the 231 Patent would have been obvious to a
designer of ordinary skill of the type involved. Apple, 678 F.3d at 1319. Gottlieb
clearly suggests a slight modification of Celestina-Krevh to space CelestinaKrevhs fabric panels substantially away from the legs, leaving them uncovered.
(Ex. 1002 136.) As shown in Section IX(A)(1), supra, Celestina-Krevhs legs are
substantially similar to the 231 Patents claimed design and Gottlieb teaches
exposing the legs by spacing away the adjacent fabric panels.
The hypothetical prior art of Celestina-Krevh and Gottlieb thus has an
overall visual appearance substantially the same as the claimed design. See MRC
33
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Innovations, 747 F.3d at 1331. (See also Ex. 1002 137.)

D.
Ground 4 The Claim Is Anticipated Under 35 U.S.C. 102(e) By

DeHart
DeHart discloses the same overall visual appearance as the 231 Patent. (Ex.
1002 138.) An ordinary observer would not take the claimed design in the 231
Patent for a new and different design. (Id.) As a result, the claim is invalid under
35 U.S.C. 102(e).
DeHart is a U.S. design patent, filed on June 30, 2003, as U.S. Application
No. 29/185,439. (Ex. 1006.) DeHart issued on December 28, 2004. (Id.) Because
the filing date for DeHart falls before the filing date for the 231 Patent, DeHart is
prior art under 35 U.S.C. 102(e).
DeHart discloses a play yard with curved legs that have a substantially
similar overall visual appearance to the 231 Patents claimed design and thus
anticipates the curved legs with the outer contours shown in Figures 2 and 3 of the
231 Patent. (Ex. 1002 139.)
Both the 231 Patents claimed design and DeHart share many common
visual features, such that they are substantially similar. (Id. 141.) As shown in the
side-by-side comparisons below, the 231 Patent and DeHart share the following
features:
34
IPR2016-00826
(4) both designs show legs of a play yard that are curved and gently bowing
outwards in the middle (id. 151);
(7) both designs have similar upper frame shapes (id. 146);
(8) both designs have similar side panels for the play yard walls (id. 147);
144); and
View
231 Patent
DeHart
Fig. 1
Fig. 1
Perspective
Regarding similarities (1) and (2) above, an ordinary observer can easily see
that the 231 Patents claimed design and DeHart are both directed to the outer
35
IPR2016-00826
contours of the legs of a rectangular play yard. To better

illustrate, a side-by-side comparison of the curved legs in
DeHart and the 231 Patent is shown. As is apparent, both
legs have upright orientations (3), gently bow outwards in the
middle (4), and are thin and elongated (6).
Regarding similarities (7) and (8) above, the side-by-
Fig. 1
DeHart
side comparison of the two play yards by an ordinary observer
Fig. 1
231
Patent
shows that each play yard contains the same elements in the same size, proportion,
and position.
Regarding similarities (9) and (10) above, a comparison of the 231 Patent
and DeHart by an ordinary observer shows that both designs have proportionately
similar height-to-width and length-to-width ratios:
H
L
L
W
Fig. 1
231 Patent
Fig. 1
Chen 393
36
IPR2016-00826
E.

DeHart
To the extent any minor differences are alleged between DeHart and the
231 Patents claimed design, defeating anticipation under 35 U.S.C. 102(e),

DeHart discloses the same overall visual impression as the 231 Patents claimed
design, and in view of the common knowledge of a designer having ordinary skill
in the art, any differences are de minimus and not sufficient to justify a finding that
the design is patentable under 35 U.S.C. 103(a).
DeHart is a suitable primary reference because DeHart discloses a play yard
with basically the same design characteristics as the claimed design. Durling,
101 F.3d at 103. (See also Ex. 1002 155.) Indeed, DeHart is so similar to the
claimed design, that no secondary reference is necessary. (Ex. 1002 155.)
evident from DeHart, DeHart readily suggests minor alterations to one of ordinary
skill in the art to arrive at a hypothetical reference. See In re Carter, 673 F.2d at
1380. (See also Ex. 1002 156.) DeHart, for example, shows the curved legs in
dashed lines without any contour lines or shading. (Ex. 1002 156.) However, the
231 Patents figures also do not show any contour lines or shading. (Id.) And, it
would be obvious to convert the dashed lines into solid lines. (Id.)
DeHart only shows one perspective view, rather than multiple orthogonal
views. (Id. 157.) However, extending the rounded shape of the legs into multiple
37
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views would be obvious to a designer of ordinary skill based on the overall design
and symmetry of the play yard. (Id.) Further, and regarding symmetry, a designer
of ordinary skill in the art would know the preferred appearance of structural
components, such as those for a play yard, and thus would expect each leg of the
play yard to be the same. (Id. 158.)
DeHarts Figure 1 provides three views, in perspective, of the three legs
shown in Figure 1. (Id.) A designer of ordinary skill would expect and recognize
that given the perspective views of the three legs shown in Figure 1, the legs would
have a smooth surface between the edges of the legs, which are shown in dashed
lines. (Id.) A designer of ordinary skill in the relevant art would know and
understand that most structural components are comprised of tubing, and one
would expect a smooth surface extending between the views of the legs shown in
Figure 1 of DeHart. (Id. 159.)
A designer of ordinary skill in the art would also recognize the symmetry of
the play yard disclosed in DeHart by the symmetry of the bassinet, which needs to
hang from the upper frame of the play yard. (Id. 160.) The common knowledge
of a designer of ordinary skill in the art is only compounded by the fact that the
vast majority of prior play yards are symmetrical. (Id.)
Considering such a hypothetical reference, the designer of ordinary skill,
familiar with the prior art, would be deceived into believing that the hypothetical,
38
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slightly modified DeHart is the same as the 231 Patents claimed design. (Id.
161.) See also High Point Design, 730 F.3d at 1314-15. Minor modifications
easily conceived by a designer of ordinary skill do not make the claimed design
patentable over DeHart. See MRC Innovations, 747 F.3d at 1335.
F.

Chen 393
Chen 393 discloses the same overall visual impression as the 231 Patents
claimed design, and in view of the common knowledge of a designer having

ordinary skill in the art. (Ex. 1002 162.) To the extent there are any differences
between Chen 393 and the 231 Patent, the differences are de minimus and not
sufficient to justify a finding that the design is patentable under 35 U.S.C. 103(a).
Chen 393 is a U.S. design patent, filed on January 7, 2004, as U.S.
Application No. 29/196,878. (Ex. 1007.) Chen 393 issued on August 17, 2004.
(Id.) Because the filing date for Chen 393 falls before the filing date for the 231
Patent, Chen 393 is prior art under 35 U.S.C. 102(e).
Below are figures from Chen 393 and the 231 Patent that show the designs
in side-by-side format:
39
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View

231 Patent
Chen 393
Fig. 1
Fig. 1
Fig. 2
Fig. 2
Perspective
Front
As shown above, an ordinary observer can see that

the 231 Patents claimed design and Chen 393 are both
directed to the outer contours of the legs of a rectangular
play yard. (Ex. 1002 164.) To better illustrate, a side-byside comparison of the curved legs in Chen 393 and the
231 Patent is shown. As is apparent, both legs have upright
Fig. 2 Fig. 2
orientations, gently bow outwards in the middle, and are thin Chen 231
393 Patent
and elongated. (Id.) Both Chen 393 and the 231 Patent also show play yards with
40
IPR2016-00826
similar proportions. (Id.)

Chen 393 is a suitable primary reference because Chen 393 discloses a
play yard with basically the same design characteristics as the claimed design.
Durling, 101 F.3d at 103. (See also Ex. 1002 165.) Indeed, Chen 393 is so
similar to the claimed design, that no secondary reference is necessary. (Ex. 1002
165.)
evident from Chen 393 (e.g., any minor differences in leg curvature), Chen 393
readily suggests minor alterations to one of ordinary skill in the art to arrive at a
hypothetical reference. See In re Carter, 673 F.2d at 1380. (See also Ex. 1002
166.) Chen 393, for example, shows the curved legs in dashed lines without any
contour lines or shading. (Ex. 1002 167.) However, the 231 Patents figures also
do not show any contour lines or shading. (Id.) And, it would be obvious to convert
the dashed lines into solid lines. (Id.) Further, in the event that any difference is
found between the proportions or width of the curved legs, obvious changes in . . .
proportioning involve ordinary skill only. In re Stevens, 173 F.2d 1015, 101516 (C.C.P.A. 1949).
slightly modified Chen 393 is the same as the 231 Patents claimed design. (Ex.
41
IPR2016-00826
1002 168.) See also High Point Design, 730 F.3d at 1314-15. Minor
modifications easily conceived by a designer of ordinary skill do not make the
claimed design patentable over Chen 393. See MRC Innovations, 747 F.3d at
1335.
G.
Ground 7 The Claim Is Anticipated Under 35 U.S.C. 102(b) By

The Fold N Go Manual
The Fold N Go Manual discloses the same overall visual appearance as the
231 Patent. (Ex. 1002 169.) In view thereof, an ordinary observer would not take
the claimed design in the 231 Patent for a new and different design. As a result,
the claim is invalid under 35 U.S.C. 102(b).
The Fold N Go Manual is an instruction manual for the Fold N Go lan
Deluxe Care Center marketed and offered for sale by Century Products. (Ex.
1004.) The Fold N Go Manual was published by Century Products at least as early
as August 17, 2003,6 which is more than one year prior to the filing date of the
231 Patent. (Id.) Therefore, the Fold N Go Manual is prior art under 35 U.S.C.
Petitioner submits that the cover of the Fold N Go Manual lists 10/00 in the
footer, indicative of October 2000 as the publication date. A Google search

revealed a publication date of August 17, 2003, which still qualifies the Fold N
Go Manual as prior art under 35 U.S.C. 102(b). (Ex. 1014.) Petitioner thus
proceeds with the August 17, 2003, date.
42
IPR2016-00826
102(b).
Figures from the 231 Patent and the Fold N Go Manual are shown in a
side-by-side comparison:
231 Patent
Fold N Go Manual
Fig. 1
Front Page
Fig. 2
Page 3
Both the 231 Patents claimed design and the Fold N Go Manual share
many common visual features, such that they are substantially similar. (Ex. 1002
170.) For instance, they share the following features:
43
IPR2016-00826
(4) both designs shows legs of a play yard that are curved and gently bowing
outwards at the middle (id. 179);
(7) both designs have similar side panels (id. 182);
171); and
Regarding similarity (1), an ordinary observer can
easily see that both the 231 Patent and the Fold N Go
Manual show the outer contours of the legs of a play
yard. For instance, the shading at the top and bottom of
the legs in the Fold N Go Manual indicates inward
curvature of the leg at the top and bottom, while the lack
of shading on the leg (shown as the white area) indicates
the outward curvature of the leg. (Id. 177.) The 231
Front Pg.
Fold N
Go Manual
Fig. 2
231
Patent
Patent and the Fold N Go Manual are thus directed to or disclose rectangular play
44
IPR2016-00826
yards with curved legs. The curved legs have upright orientations and are
positioned in the four corners of the play yard. In fact, the curved legs of the 231
Patent and the Fold N Go Manual have similar curvature, as shown.
Further, the full front and side contours of the legs of the play yard of the
Fold N Go Manual are shown without any discernible texture or surface treatment
and thus indicative of the legs being unconcealed. (Id. 178.) Even to the extent
that the Board finds that the Fold N Go Manual shows a material or fabric
covering the legs of the play yard, the Fold N Go Manual still anticipates the 231
Patent claim. (Id. 184.) The Fold N Go Manual still discloses curved legs with
unconcealed outer contours that anticipate the 231 Patents claimed design
regardless of any fabric or covering on the play yard legs. (Id.) Whether any
fabric or other covering is present on the play yard legs of the Fold N Go
Manual does not change the overall visual impression by an ordinary observer.
(Id.) See also Gorham, 81 U.S. at 528; Intl Seaway, 589 F.3d at 1239. Further, any
fabric or other unknown material covering the legs would only constitute a minor
difference[]. Intl Seaway, 589 F.3d at 1243. (See also Ex. 1002 184.)
Both the 231 Patent and the Fold N Go Manual disclose rectangular play
yards that have proportionately similar height-to-width and length-to-width ratios,
as shown below:
45
IPR2016-00826
Front Pg.
Fold N Go Manual
Fig. 1
231 Patent
H.

The Fold N Go Manual
The Fold N Go Manual readily suggests to a designer of ordinary skill
minor alterations necessary to arrive at a hypothetical reference that is the same as

the design claimed by the 231 Patent. High Point Design, 730 F.3d at 1311. (See
also Ex. 1002 185.) The Fold N
Go Manual is substantially similar
to the 231 Patent. (Ex. 1002
186.) Thus, the Fold N Go
Manual provides a suitable
foundation as a primary reference
for an obviousness inquiry. (Id.) This
Fold N Go Manual, p. 3
accommodates the Fold N Go Manuals displaying of perspective views, rather

than multiple orthogonal views. (Id. 187.) For example, one of ordinary skill
46
IPR2016-00826
would know the rounded shape of the legs in multiple views due to their shading
and expected symmetry around the play yard, as shown. (Id.)
slightly modified Fold N Go Manual is the same as the 231 Patents claimed
design. (Id. 188.) See also High Point Design, 730 F.3d at 1314-15. Minor
modifications easily conceived by a designer of ordinary skill do not make the
claimed design patentable over the Fold N Go Manual. See MRC Innovations, 747
F.3d at 1335.
I.

The Fold N Go Manual In View Of Gottlieb
The claim of the 231 Patent would have also been obvious under 35 U.S.C.
103(a) over the Fold N Go Manual in view of Gottlieb.

Both the Fold N Go Manual and Gottlieb serve the purpose of providing a
containment area for a child to sleep or play. (Ex. 1002 192.) Gottlieb is thus a
proper secondary reference because it is so related to the Fold N Go Manual.
MRC Innovations, 747 F.3d at 1334.
As discussed above in Section IX(C), Gottlieb discloses legs of a play yard
that are exposed and isolated from the interior portion of the play yard. (Ex. 1002
191; Ex. 1005 at 3:16-18, FIGS. 1-2.)
The claimed design of the 231 Patent would have been obvious to a
47
IPR2016-00826
designer of ordinary skill of the type involved. Apple, 678 F.3d at 1319. Gottlieb
clearly suggests a slight modification of the Fold N Go Manual to space any
alleged fabric panels substantially away from the legs, leaving them completely
uncovered. (Ex. 1002 193.) As shown in Section IX(G), supra, the Fold N Go
Manuals legs are substantially similar to the 231 Patents claimed design and
Gottlieb teaches exposing the legs by spacing away adjacent fabric panels. The
hypothetical prior art of the Fold N Go Manual and Gottlieb thus has an overall
visual appearance substantially the same as the claimed design. (Id.)
J.

Celestina-Krevh In View Of Hartenstine
Celestina-Krevh in view of Hartenstine creates hypothetical prior art that
teaches the same overall visual appearance as the 231 Patents claimed design.
Further, any element of the 231 Patents claimed design that is not disclosed by
Celestina-Krevh is taught by Hartenstine.
Hartenstine is a U.S. utility patent, filed on May 8, 2001, as U.S. Application
No. 09/850,136. (Ex. 1008.) Hartenstine issued on January 28, 2003, more than
one year prior to the filing date of the 231 Patent. (Id.) Therefore, Hartenstine is
prior art under 35 U.S.C. 102(b).
The purpose of the play yards in both Celestina-Krevh and Hartenstine is to
provide a containment area for a child to sleep or play, and the play yards in
Celestina-Krevh and Hartenstine are thus in the same field of endeavor. See MRC
48
IPR2016-00826
Innovations, 747 F.3d at 1334-35. Hartenstine is a proper secondary reference

because it is so related to Celestina-Krevh. Id. at 1334.
At a minimum, Hartenstine discloses, teaches, and suggests the unconcealed
outer contours of a play yard leg. For instance, Hartenstines Fig. 10 contemplates
corner panels 14" for a playard having
straight legs 26" to isolate the legs from
the interior space of the playard . . . .
(Ex. 1008 at 4:54-56.) As shown in
Figures 8, 9, and 10, Hartenstine
provides a visual impression that the legs
Fig. 10 Hartenstine
of the play yard are exposed. (Id.) Yet further, Hartenstine discloses that [t]he legs
can be . . . bowed outwardly. (Id. at abstract.)
Hartenstines specification also discloses extending fabric panels interior to
the legs so as to isolate the play yard legs from the interior space. (Id. at 2:673:10.) Spacing Hartenstines corner panels (14) inwardly away from the legs leaves
the legs uncovered by the corner panels. (Id., Fig. 4.) Hartenstine thus discloses
exposed legs on a play yard that bow outwardly.
As set forth in Section IX(A)(1), supra, Celestina-Krevh satisfies the
substantially similar standard required for anticipation under 35 U.S.C. 102(b).
To the extent that the legs in Celestina-Krevh are determined to be covered or
49
IPR2016-00826
overlaid with an unknown material, a designer skilled in the art would have easily
combined the Celestina-Krevh invention of curved legs with legs not enclosed in
an unknown material, such as depicted in Hartenstine.
A hypothetical prior art reference can be created by removing any alleged
fabric or material on the play yard legs of Celestina-Krevh and spacing it inwards
of the legs like the play yard legs in Hartenstine. After the modification, CelestinaKrevh has an overall visual appearance substantially the same as the claimed
design. See MRC Innovations, 747 F.3d at 1331.
K.

The Fold N Go Manual In View Of Hartenstine
The Fold N Go Manual in view of Hartenstine creates hypothetical prior art
that teaches the same overall visual appearance as the 231 Patents claimed
design. Further, any element of the 231 Patent that is not disclosed by the Fold N
Go Manual is taught by Hartenstine.
Because the purpose of the play yards in both the Fold N Go Manual and
Hartenstine is to provide a containment area for a child to sleep or play, both
references are in the same field of endeavor, and Hartenstine is a proper secondary
reference because it is so related to the Fold N Go Manual. MRC Innovations,
747 F.3d at 1334-35.
As set forth above in Section IX(J), Hartenstine discloses exposed legs on a
play yard that bow outwardly. (See Ex. 1008 at 2:63-3:10, 4:54-56, FIGS. 7, 8 &
50
IPR2016-00826
10.) A hypothetical prior art reference can be created with a slight modification of
the Fold N Go Manual, as suggested by Hartenstine, by removing any alleged
fabric on the play yard legs of the Fold N Go Manual and spacing it inwards of the
legs like the play yard legs in Hartenstine.
After such modification, the Fold N Go Manual has an overall visual
appearance substantially the same as the claimed design, as shown in Section
IX(G), supra, and the 231 Patents claimed design would have been obvious to a
designer of ordinary skill of the type involved. Apple, 678 F.3d at 1319.
X.
CONCLUSION
For the reasons set forth above, Petitioner has established a reasonable
likelihood that it will prevail in establishing the unpatentability of the claim of the
231 Patent. As a result, this Petition should be granted, inter partes review should
be instituted, and the 231 Patent claim should be found invalid under the statutory
grounds identified above.
DATED: March 31, 2016.
Respectfully submitted,
/Gregory J. Carlin/
Gregory J. Carlin, Reg. No. 45,607
Walter Hill Levie III, Reg. No. 72,016
MEUNIER CARLIN & CURFMAN LLC
999 Peachtree Street, N.E., Suite 1300
Atlanta, Georgia 30309
Telephone: (404) 645-7700
Facsimile: (404) 645-7707
Counsel for Petitioner
51
IPR2016-00826

CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. 42.6(e) and 42.105, I certify that on March 31,

2016, a copy of this Petition and all exhibits were served on the counsel of record
for the Patent Owner by depositing with the U.S. Postal Service, Priority Mail
Express:
Hanley, Flight & Zimmerman, LLC
150 S. Wacker Drive, Suite 2200
Chicago, IL 60606
A courtesy copy of the petition has also been served by e-mail on the
following counsel representing the Patent Owner in related district court litigation:
Raymond P. Niro, Jr.
Kyle D. Wallenberg
Anisha A. Mehta
Niro McAndrews, LLC
200 West Madison St., Suite 2040
Chicago, IL 60606
rnirojr@niro-mcandrews.com
kwallenberg@niro-mcandrews.com
amehta@niro-mcandrews.com
/Walter Hill Levie III/
Walter Hill Levie III
Reg. No. 72,016
999 Peachtree St. NE, Suite 1300
Atlanta, GA 30309
52

Graco - Petition For IPR D231

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Graco - Petition For IPR D231

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Filed: March 31, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

Petition for IPR of Patent D616,231

MANDATORY NOTICES 37 C.F.R. 42.8(B) .......................................2

FEE FOR IPR REQUEST 37 C.F.R. 42.15(A) .......................................4

GROUNDS FOR STANDING........................................................................4

IDENTIFICATION OF CHALLENGE ..........................................................4

OVERVIEW OF THE 231 PATENT ............................................................6

VII. CLAIM CONSTRUCTION ............................................................................9

DETAILED EXPLANATION OF THE GROUNDS FOR

A. Ground 1 The Claim Is Anticipated Under 35 U.S.C. 102(b) By

Petition for IPR of Patent D616,231

Petition for IPR of Patent D616,231

Petition for IPR of Patent D616,231

Petition for IPR of Patent D616,231

35 U.S.C. 102 ........................................................................................... passim

Petition for IPR of Patent D616,231

U.S. Design Patent No. D616,231 (the challenged patent)

U.S. Design Patent No. D500,213 to DeHart et al.

U.S. Design Patent No. D494,393 to Chen

U.S. Patent No. 6,510,570 to Hartenstine et al.

Prosecution File History for U.S. Design Patent No. D616,231

Prosecution File History for U.S. Design Patent No. D604,970

Petition for IPR of Patent D616,231

231 Patent Figure 1

Petition for IPR of Patent D616,231

MANDATORY NOTICES 37 C.F.R. 42.8(B)

Real Parties in Interest

Petition for IPR of Patent D616,231

Designation of Petitioners Counsel

Petition for IPR of Patent D616,231

FEE FOR IPR REQUEST 37 C.F.R. 42.15(A)

GROUNDS FOR STANDING

Petition for IPR of Patent D616,231

Petition for IPR of Patent D616,231

OVERVIEW OF THE 231 PATENT

Petition for IPR of Patent D616,231

doctrine of obviousness-type double patenting in

In response, Applicants submitted an amended version of Figure 1 to add

Petition for IPR of Patent D616,231

Figure 1 [A] perspective view of

Figure 2 [A] front view of

Figure 3 [A] rear view of the

Figure 4 [A] right side view of the

Figure 5 [A] left side view of the

Petition for IPR of Patent D616,231

The description further provides:

Legal Standard For Claim Construction Of A Design Patent

construction in light of the specification of the patent in which it appears. 37

Petition for IPR of Patent D616,231

Claim Construction Of The 231 Patent

Petition for IPR of Patent D616,231

Petition for IPR of Patent D616,231

Patent claim is indefinite. Petitioner is therefore forced to concoct a theoretical

Petition for IPR of Patent D616,231

construction. If instead a broadest possible construction is used, Figures 4 and 5

Petition for IPR of Patent D616,231

Petition for IPR of Patent D616,231

Petition for IPR of Patent D616,231

Petition for IPR of Patent D616,231

inventions shall apply to patents for designs, except as otherwise provided. 35

Petition for IPR of Patent D616,231

primary reference a single reference, a something in existence, the design