Professional Documents
Culture Documents
D752,890
Petition For Inter Partes Review
Paper No.
MACSPORTS, INC.
Petitioner
v.
IDEA NUOVA, INC.,
Patent Owner
I. INTRODUCTION ...........................................................................................1
A. Real Parties-In-Interest..........................................................................2
B. Related Matters......................................................................................3
D. Service Information...............................................................................3
i
(1) The ’890 Patent vs. CampingWorld.com 360: Frame
Related Members ......................................................................13
V. CONCLUSION..............................................................................................43
ii
TABLE OF AUTHORITIES
Page(s)
Cases
Apple, Inc. v. Samsung Elec. Co., Ltd.,
678 F.3d 1314 (Fed. Cir. 2012) ....................................................................26, 27
In re Borden,
90 F.3d 1570 (Fed. Cir. 1996) ............................................................................26
iii
In re GPAC,
57 F.3d 1573 (Fed. Cir. 1995) ............................................................................28
In re Haruna,
249 F.3d 1327 (Fed. Cir. 2001) ..........................................................................26
In re Lamb,
286 F.2d 610 (Cust. & Pat. App. Feb. 6, 1961)..................................................29
Okajima v. Bourdeau,
261 F.3d 1350 (Fed. Cir. 2001) ..........................................................................28
iv
Statutes
35 U.S.C. § 102.................................................................................................passim
35 U.S.C. § 103.................................................................................................passim
Other Authorities
37 C.F.R. § 1.152 .......................................................................................................8
37 C.F.R. § 42.15(a)...................................................................................................4
v
EXHIBIT LIST
Ex. 1001 – U.S. Design Patent No. D752,890 (the “’890 Patent”)
CampingWorld.com (“CampingWorld.com”)
Ex. 1006 – Exhibit A to Declaration of Jeffrey Geisler: 360 Degree View of Club
vi
I. INTRODUCTION
Over four years before the filing of Patent No. D752,890 (the ’890 Patent),
Petitioner sold chairs that were substantially the same as the design claimed by the
’890 Patent. Petitioner files this petition to stop the ’890 Patent from being used to
cast doubt in the market on Petitioner’s ability to continue selling its own chairs.
As documented below and in the attached exhibits, Petitioner sold its own
stamped, and stored webpages and images from Camping World’s website, which
were all publicly available well before the filing date. These pages and images are
printed publications and depict a “Foldable Club Chair” substantially the same as
the one claimed in the ’890 Patent. A side-by-side comparison speaks volumes:
The Prior Art – Dated 2013 The ’890 Patent – Filed 2015
(Ex. 1004) (Ex. 1001)
1
As can be seen by the ordinary observer, the chairs are virtually identical in all
material respects. As a result, Camping World’s prior art webpages anticipate the
under 35 U.S.C. § 103. This is true whether Camping World’s webpages are
references. There are no patentable or significant differences between the prior art
publications and the chair claimed by the ’890 Patent. The overall similarity is
invalidating the ’890 Patent based on prior art that anticipates and/or renders
obvious the sole claim of the ’890 Patent. As a result, the Patent Trial and Appeal
Board should: (i) institute a trial in this proceeding, (ii) ultimately find the ’890
2
B. Related Matters
Petitioner is not aware of any related matters involving the ’890 Patent.
There is no current or prior litigation between the Petitioner and the Patent Owner,
C. Designation of Counsel
Lead counsel for Petitioner is Ryan W. Koppelman (Reg. No. 58,307).
Back-up counsel for Petitioner is Christopher TL Douglas (Reg. No. 56,950) and
D. Service Information
Petitioner consents to electronic service at ryan.koppelman@alston.com,
Lead Counsel
Ryan W. Koppelman
Alston & Bird
1950 University Ave, 5th Floor
East Palo Alto, CA 94303
(650) 838-2009
3
Back-up Counsel Back-up Counsel
Christopher TL Douglas Dana Zottola
Alston & Bird Alston & Bird
Bank of America Plaza 1950 University Ave, 5th Floor
101 S. Tryon St., Ste. 4000 East Palo Alto, CA 94303
Charlotte, NC 28280 (650) 838-2044
(704) 444-1119
E. Payment Of Fees
As required by 37 C.F.R. § 42.103, Petitioner authorizes the Patent Office to
charge Deposit Account No. 16-0605 for the Petition fee set forth in 37 C.F.R.
and that the Petitioner is not barred or estopped from requesting an inter partes
review challenging the patent claims on the grounds identified in this petition.
that the petitioner would prevail with respect to at least one of the claims
unpatentability explained below, Petitioner submits that this Petition meets the
4
III. IDENTIFICATION OF CHALLENGE – 37 C.F.R. § 42.104(b)(1)-(3)
A. Identification of the Challenged Claim
Per 37 C.F.R. § 42.104(b)(1), the Petitioner identifies the sole claim of the
’890 Patent as being challenged by this petition. The single claim of ’890 Patent
claims: “The ornamental design for a foldable club chair, as shown and described.”
5
By way of additional background, the ’890 is entitled “Foldable Club Chair”
and was issued on April 5, 2016. Ex. 1001, p. 1. The patent application from
which the ’890 Patent issued was filed on January 8, 2015 and assigned U.S. Patent
Application No. 29/514,110. Ex. 1001, p. 1. The face of the ’890 Patent lists
Benjamin S. Akkad as the sole inventor and lists Idea Nuova, Inc. as the assignee.
Ex. 1001, p. 1.
the sole claim of the ’890 Patent and that it be cancelled based on the following
Ground Description
Under 35 U.S.C. § 102, the ’890 Patent is anticipated by a printed
1 publication in the form of the CampingWorld.com 360 as a single
reference.
2 Under 35 U.S.C. § 103, the ’890 Patent is obvious over the
CampingWorld.com Webpages.
3 Under 35 U.S.C. § 103, the ’890 Patent is obvious over a
combination of the CampingWorld.com 360 and the
CampingWorld.com Webpages.
Petitioner requests inter partes review based on the following prior art that
6
Exhibit Description Publication Date
1004 CampingWorld.com Webpages January 19, 2013
1006 CampingWorld.com 360 April, 2014
correspondingly, therefore, at least one weakness) relative to the other. See Liberty
Mut. Ins. Co. v. Progressive Cas. Ins. Co., No. CBM2012-00003, 2016 WL
9494791, at *2 (P.T.A.B. Oct. 25, 2012). While both the CampingWorld.com 360
relied upon solely in Ground 1 – provides several additional views not available in
relied upon solely in Ground 2 – are significantly older and have some additional
The scope of a design patent is defined by the solid lines depicted in the
drawing of the patent in conjunction with their descriptions. See, e.g., Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (citing 37 C.F.R.
7
§ 1.152). “Design patents are typically claimed according to their drawings, and
claim construction must be adapted to a pictorial setting.” Crocs, Inc. v. Int’l Trade
Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010); Richardson v. Stanley Works, Inc.,
597 F.3d 1288, 1293-94 (Fed. Cir. 2010). “Given the recognized difficulties
detailed verbal description of the claimed design.” Egyptian Goddess, 543 F.3d at
679. But, the Federal Circuit has said that it would be “helpful to point out . . .
various features of the claimed design as they relate to . . . the prior art.” Id. at 680.
When construing a design patent for an article that contains both functional and
ornamental aspects, a patent owner only “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.” In an inter partes review, the Board construes
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016).
takes the position that no verbal claim construction is necessary for purposes of
8
resolving this straightforward Petition. See Egyptian Goddess, 543 F.3d at 679.
The claimed drawings and the prior art images are easily and readily comparable to
the cited prior art through ordinary observation. Also consistent with Federal
Circuit guidance, Petitioner will verbally “point out ... various features of the
claimed design as they relate to ... the prior art,” as part of Petitioner’s comparison
§ 102 is the “ordinary observer test.” See Int’l Seaway Trading Corp. v. Walgreens
Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009). In an invalidity analysis, the designs
to be compared are the design as claimed and the prior art reference. Id., at 1240
(citing Egyptian Goddess, 543 F.3d at 676); Sensio, Inc. v. Select Brands, Inc., No.
use of the ordinary observer test for anticipation of a design patent by comparing it
Applying the “ordinary observer test,” a court should find a design patent
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
9
other.” Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871); Int’l Seaway, 589
F.3d at 1239; Door-Master Corp. v. Yorktowne, 256 F.3d 1308, 1313 (Fed. Cir.
2001); Bernhardt LLC v. Collezione Europa U.S., Inc., 422 F. Supp. 2d 561, 564
(M.D.N.C. 2006) (finding design patent invalid under the ordinary observer test).
This comparison takes into account only significant differences between two
589 F.3d at 1243 (relying on Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423,
1444 (1984)); Door-Master, 256 F.3d at 1312, 1313; Sensio, 2014 WL 2507791,
*4. 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
Grounds.
Chair. See Ex. 1004, p. 35 (showing “360 View” icon on the webpage with a url
encoded date stamp of “20140426…”, i.e. April 26, 2014, per Ex. 1003, ¶ 5), p.
61-62 (showing the individual image for the “360 View” icon with a url encoded
date stamp of “20140216…”, i.e. February 16, 2014, per Ex. 1003, ¶ 5), Ex. 1005,
10
pp. 2-3; Ex. 1006. The Board has properly treated multiple webpages as a single
printed publication under 35 U.S.C. § 102(a). See, e.g., Haliburton Energy Servs.,
*9 (P.T.A.B. Jan. 12, 2015); Crestron Elecs., Inc. v. Intuitive Bldg. Controls, Inc.,
No. IPR2015-01379, 2015 WL 13631028, at *10 (P.T.A.B. Dec. 15, 2015). The
single printed publication. 2015 WL 5565065 at *10. Here, all of the webpages
www.campingworld.com. (Ex. 1004, pp. 35, 61; Ex. 1005, pp. 2-3; Ex. 1006.)
would have been interested in reading the CampingWorld.com website pages, all
For example, the ordinary artisans would have been interested in both the general
product listing of the club chair listed on Camping World’s webpage (Ex.1004, pp.
35, 61), and “more images” of the product, as well as the 360 view, which includes
different prospective views of the XL Outdoor Club Chair (Ex. 1004, pp. 35, 61;
Ex. 1006).
11
In fact, the webpages, as a whole, sufficiently describe the inherent aspects
*10 (citing In Re Baxter Travenol Labs, 952 F.2d 388, 390 (Fed. Cir. 1991) and
Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010)). The
detailed features of the Club Chair, as well as different prospective views of the
XL Outdoor Club Chair, help an ordinarily skilled artisan understand the product.
forth in the exhibits, which was published well before Jan. 8, 2015, the filing date
of the ’890 Patent, constitutes a single prior art reference, specifically a prior
publication, under Section 102(a). Indeed, the priority of the publication date is
corroborating Internet Archive date stamps of the 360 View icon. See Ex. 1004, p.
35 (showing “360 View” icon on the webpage with a url encoded date stamp of
“20140426…”, i.e., April 26, 2014, per Ex. 1003, ¶ 5), p. 61 (showing the
individual image for the “360 View” icon with a url encoded date stamp of
“20140216…”, i.e. February 16, 2014, per Ex. 1003, ¶ 5), Ex. 1005, pp. 2-3; Ex.
1006.
12
same as, if not identical to, that claimed in the ’890 Patent, such that the
’890 Patent.
Members
Patent are evident from a simple comparison of the depictions of frame related
members in CampingWorld.com 360 to the drawings of the ’890 Patent. The ’890
Patent, in the annotated FIGs. 1-5 and 7 below, depicts a foldable club chair having
13
Ex. 1001, FIG. 2 (annotated) Ex. 1006, p. 21 (annotated)
14
Ex. 1001, FIG. 4 (annotated) Ex. 1006, p. 15 (annotated)
15
Ex. 1001, FIG. 7 (annotated)
The ’890 Patent, in the annotated FIGs. 1-5 and 7 above, depicts a foldable
club chair having at least four base joints (highlighted in pink). Each of the two
front base joints connects to exactly two leg members, and each of the two rear
base joints connects to exactly three leg members. The front leg members
(highlighted in magenta) cross and connect to each other at a middle joint and
curved upper support member. Each of the front folding joints has a circle thereon.
A pair of right side diagonal leg members (highlighted in turquoise) cross and
connect to each other at a middle joint denoted by a circle and extend up to the
folding joints (one front folding joint highlighted in yellow and one rear folding
periwinkle) cross and connect to each other at a middle joint denoted by a circle
and extend up to the folding joints (one front folding joint highlighted in yellow
and one rear folding joint highlighted in red). Each one of a pair of rear vertical
16
leg members (highlighted in green) extends from a rear base joint (highlighted in
pink) up through a rear folding joint (highlighted in red) to partially support the
club chair having at least four base joints (highlighted in pink). Each of the two
front base joints connects to exactly two leg members, and each of the two rear
base joints connects to exactly three leg members. The front leg members
(highlighted in magenta) cross and connect to each other at a middle joint and
curved upper support member. Each of the front folding joints has a circle thereon.
A pair of right side diagonal leg members (highlighted in turquoise) cross and
connect to each other at a middle joint denoted by a circle and extend up to the
folding joints (one front folding joint highlighted in yellow and one rear folding
periwinkle) cross and connect to each other at a middle joint denoted by a circle
and extend up to the folding joints (one front folding joint highlighted in yellow
and one rear folding joint highlighted in red). Each one of a pair of rear vertical
leg members (highlighted in green) extends from a rear base joint (highlighted in
pink) up through a rear folding joint (highlighted in red) to partially support the
17
(2) The ’890 Patent vs. CampingWorld.com 360: Curved Upper Support
Related Members
Patent are further evident from a simple comparison of the depictions of the curved
’890 Patent. The ’890 Patent, in the annotated FIGs. 2-6 below, depicts a foldable
The curved upper support members of the ’890 Patent include a pair of
features at the front of the chair (highlighted with a blue outline). Each of the
features at the front of the chair has a circle thereon. The curved upper support
18
members of CampingWorld.com 360 include a pair of features at the front of the
chair (highlighted with a blue outline). The features at the front of the chair each
19
Ex. 1001, FIG. 5 (annotated) Ex. 1006, p. 4 (annotated)
The curved upper support members of the ’890 Patent, depicted in Figs. 2-6
(reproduced and annotated above), include fabric panels (highlighted with a red
outline) through which the curved upper support member is threaded such that the
cushion member is attached to the curved upper support member. Two joints
(highlighted with a yellow outline) for aiding in folding the curved upper support
member are situated on either side of a fabric panel at the rear of the foldable chair.
20
Two joints (highlighted with a green outline) connect the rear vertical leg members
to the curved upper support member. Two joints (highlighted in turquoise) are
situated on either side of the curved upper support member to aid in folding the
curved upper support member. The curved upper support member is exposed
reproduced and annotated above, include fabric panels (highlighted with a red
outline) through which the curved upper support member is threaded such that the
cushion member is attached to the curved upper support member. Two joints
(highlighted with a yellow outline) for aiding in folding the curved upper support
member are situated on either side of a fabric panel at the rear of the foldable chair.
Two joints (highlighted with a green outline) connect the rear vertical leg members
to the curved upper support member. Two joints (highlighted in turquoise) are
situated on either side of the curved upper support member to aid in folding the
curved upper support member. The curved upper support member is exposed
Patent are further evident from a simple comparison of the depictions of the
21
The ’890 Patent, in the annotated FIGs. 2-5 and 7 below, depicts a foldable club
The ’890 Patent depicts a cushion member having a back portion (referenced
arrows).
The cushion member of the ’890 Patent includes two straps (referenced by
orange arrows) at the rear bottom of the cushion member for attaching the cushion
22
rear bottom of the cushion member for attaching the cushion member to the rear
The cushion member of the ’890 Patent includes indentations in the back
and side portions that are identical to those of the ’890 Patent.
23
Ex. 1001, FIG. 5 (annotated) Ex. 1006, p. 4 (annotated)
blue arrow) extending above the curved upper support member and related
(referenced by a blue arrow) extending above the curved upper support member
24
Accordingly, applying the ordinary observer test, the design claimed in the
every identifiable feature depicted in the figures of the ’890 Patent as explained
above.
Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871); Int’l Seaway Trading Corp. v.
Walgreens Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009); Door-Master Corp. v.
Yorktowne, 256 F.3d 1308, 1313 (Fed. Cir. 2001); Bernhardt LLC v. Collezione
the ’890 Patent cannot prevent a finding of anticipation. Int’l Seaway, 589 F.3d at
1243 (relying on Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (1984));
purchaser usually gives, the CampingWorld.com 360 and ’890 Patent designs are
25
D. Legal Standards for Obviousness of a Design Patent
“Section 103 applies to design patents in much the same manner as it applies
to utility patents.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (citations
omitted); In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (citations omitted)
claimed design as a whole is substantially the same, or has the same overall visual
appearance, as the prior art, the patented design is obvious. See MRC Innovations,
Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir. 2014); High Point Design
LLC v. Buyer’s 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); Durling v.
Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996).
design characteristics which are “basically the same” as the claimed design. MRC
Innovations, 747 F.3d at 1331; High Point Design, 730 F.3d at 1311 (internal
quotation and citations omitted). “[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). The secondary references may only be
used to modify the primary reference if they are so related to the primary reference
26
that the appearance of certain ornamental features in one would suggest the
application of those features to the other. Apple, Inc., 678 F.3d at 1329-1330
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; High
Once a hypothetical prior art reference has been created by combining the
with the claimed design through the eyes of a designer of ordinary skill to
determine if a design patent is invalid for obviousness. See MRC Innovations, 747
F.3d at 1331; 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
irrelevant. See MRC Innovations, 747 F.3d at 1335 (finding insubstantial and
existing seam, where no prior art had exactly the same stitching as the claimed
design).
27
E. The Designer of Ordinary Skill in the Art
Based on the prior art in the prosecution history (Ex. 1002) and cited in this
Petition (Exs. 1003-1006), the types of problems encountered in the art and the
prior art solutions to those problems are evident. See In re GPAC, 57 F.3d 1573,
1579 (Fed. Cir. 1995) (listing potentially relevant factors for level of skill). The
prior art record generally indicates that the designer of ordinary skill in the art
particularly foldable chairs. The prior art record further reflects that this is not a
highly sophisticated area of design or related technology. The prior art record also
reflects that the designer of ordinary skill would not need to be familiar with
advanced mechanical technology, as the relevant field of prior art is limited to the
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of
specific findings on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need for testimony is
not shown.’”); see also Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d
28
substantially the same as, if not identical to, that claimed in the ’890Patent, such
that the resemblance would deceive such an observer, inducing him to purchase
one supposing it to be the other. Ex. 1004, pp. 32-33 (showing the individual
image for with a url encoded date stamp of “20130119…,” i.e. January 19, 2013,
per Ex. 1003, ¶ 5). Indeed, the CampinWorld.com should be treated as single
reference for all the reasons explained above, and in particular pages 32 and 33 of
Exhibit 1004 should be treated as one reference for purposes of obviousness here.
See, e.g., Haliburton Energy Servs., Inc. v. Dynamic 3D Geosolutions LLC, No.
To the extent that there are any differences between the CampingWorld.com
Webpages and the design of the ’890 Patent, the CampingWorld.com Webpages
discloses the same overall visual impression as the claimed design of the ’890
Patent. Any differences are de minimis and not sufficient to justify a finding that
the design is patentable. In re Lamb, 286 F.2d 610, 611 (Cust. & Pat. App. Feb. 6,
1961). As a result, the claim is invalid as obvious under 35 U.S.C. § 103(a) over
29
The CampingWorld.com Webpages disclose a foldable club chair with
“basically the same” design characteristics as the claimed design, and any
Members
the ’890 Patent are evident from a simple comparison of the depictions of frame
Patent. The ’890 Patent, in the annotated FIGs. 1-5 and 7 below, depicts a foldable
the annotated depictions below, depicts a foldable club chair having frame related
members.
30
Ex. 1001, FIG. 1 (annotated) Ex. 1004, p. 32 (annotated)
31
Ex. 1001, FIG. 5 (annotated) Ex. 1001, FIG. 7 (annotated)
The ’890 Patent, in the annotated FIGs. 1-5 and 7 above, depicts a foldable
club chair having at least four base joints (highlighted in pink). Each of the two
front base joints connects to exactly two leg members, and each of the two rear
base joints connects to exactly three leg members. The front leg members
(highlighted in magenta) cross and connect to each other at a middle joint and
curved upper support member. Each of the front folding joints has a circle thereon.
A pair of right side diagonal leg members (highlighted in turquoise) cross and
connect to each other at a middle joint denoted by a circle and extend up to the
folding joints (one front folding joint highlighted in yellow and one rear folding
periwinkle) cross and connect to each other at a middle joint denoted by a circle
and extend up to the folding joints (one front folding joint highlighted in yellow
32
and one rear folding joint highlighted in red). Each one of a pair of rear vertical
leg members (highlighted in green) extends from a rear base joint (highlighted in
pink) up through a rear folding joint (highlighted in red) to partially support the
a foldable club chair having at least four base joints (highlighted in pink). Each of
the two front base joints connects to exactly two leg members, and each of the two
rear base joints connects to exactly three leg members. The front leg members
(highlighted in magenta) cross and connect to each other at a middle joint and
curved upper support member. Each of the front folding joints has a circle thereon.
A pair of right side diagonal leg members (highlighted in turquoise) cross and
connect to each other at a middle joint denoted by a circle and extend up to the
folding joints (one front folding joint highlighted in yellow and one rear folding
periwinkle) cross and connect to each other at a middle joint denoted by a circle
and extend up to the folding joints (one front folding joint highlighted in yellow
and one rear folding joint highlighted in red). Each one of a pair of rear vertical
leg members (highlighted in green) extends from a rear base joint (highlighted in
33
pink) up through a rear folding joint (highlighted in red) to partially support the
the ’890 Patent are further evident from a simple comparison of the depictions of
the drawings of the ’890 Patent. The ’890 Patent, in the annotated FIGs. 2-6
below, depicts a foldable club chair having curved upper support related members
below, depicts a foldable club chair having curved upper support related members
or characteristics.
34
Ex. 1001, FIG. 2 (annotated) Ex. 1004, p. 33 (annotated)
The curved upper support members of the ’890 Patent include a pair of
features at the front of the chair (highlighted with a blue outline). Each of the
features at the front of the chair has a circle thereon. The curved upper support
front of the chair (highlighted with a blue outline). The features at the front of the
35
Ex. 1001, FIG. 4 (annotated) Ex. 1001, FIG. 5 (annotated)
The curved upper support members of the ’890 Patent, depicted in Figs. 2-6
(reproduced and annotated above), include fabric panels (highlighted with a red
outline) through which the curved upper support member is threaded such that the
cushion member is attached to the curved upper support member. Two joints
(highlighted with a yellow outline) for aiding in folding the curved upper support
36
member are situated on either side of a fabric panel at the rear of the foldable chair.
Two joints (highlighted with a green outline) connect the rear vertical leg members
to the curved upper support member. Two joints (highlighted in turquoise) are
situated on either side of the curved upper support member to aid in folding the
curved upper support member. The curved upper support member is exposed
These features are show by the side view annotated in red and green on
Exhibit 1004 p. 32. It can only be seen from the side, but the patent figures merely
replicate the pattern around the chair. It would have been obvious to continue the
same pattern around the chair even if it is not literally depicted in Exhibit 1004 p.
32 or 33. In any event, the overall design remains virtually identical and any such
minor differences are not sufficient to give rise to patentability over the cited
references. See MRC Innovations, 747 F.3d at 1335 (emphasizing the similarity of
the overall design for obviousness and minimizing as irrelevant small differences
the ’890 Patent are further evident from a simple comparison of the depictions of
’890 Patent. The ’890 Patent, in the annotated FIGs. 2-5 and 7 below, depicts a
37
foldable club chair having a cushion member. The CampingWorld.com Webpages
The ’890 Patent depicts a cushion member having a back portion (referenced
turquoise arrows).
The cushion member of the ’890 Patent includes two straps (referenced by
orange arrows) at the rear bottom of the cushion member for attaching the cushion
member to the rear vertical leg members. The cushion member of the
38
at the rear bottom of the cushion member for attaching the cushion member to the
The cushion member of the ’890 Patent includes indentations in the back
portion, bottom portion, and side portions. The cushion member of the
portion, and side portions that are identical to those of the ’890 Patent.
39
Ex. 1001, FIG. 4 (annotated) Ex. 1001, FIG. 5 (annotated)
blue arrow) extending above the curved upper support member and related
section (referenced by a blue arrow) extending above the curved upper support
Again, these features are show by the side view annotated in red and green
on Exhibit 1004 p. 32. It can only be seen from the side, but the patent figures
merely replicate the pattern around the chair. It would have been obvious to
continue the same pattern around the chair even if it is not literally depicted in
Exhibit 1004 p. 32 or 33. In any event, the overall design remains virtually
identical and any such minor differences are not sufficient to give rise to
40
patentability over the cited references. See MRC Innovations, 747 F.3d at 1335
(emphasizing the similarity of the overall design for obviousness and minimizing
patent).
render obvious any design characteristics found in the ’890 Patent, then it would be
360 and the CampingWorld.com Webpages to include all of the depictions of both
demonstrated by the fact that the references are from the same website and depict
the exact same product with the exact same product number. Ex. 1005, pp. 2-3 at
¶¶ 4-5; Ex. 1004, pp. 25, 32-33, 35, 61-62. They are in fact merely different
pictures of the exact same product on the same website, and the law allows for
WL 13631028, at *10.
41
Furthermore, the earliest Internet Archive capture of Petitioner’s chair goes
back to December of 2010 with customer comments about purchases dated April
2010. Ex. 1004, pp. 67-68. That Internet Archive capture from 2010 only includes
a single front view of the chair, but it is evident it is the same chair as the later
captures in 2013 and 2014. Ex. 1005, pp. 2-3 at ¶¶ 4-5; Ex. 1006; Ex. 1004, pp. 32-
33, 61-62. The 2010 capture is the same color and also has the same “Catalog item
#42645.” Having been sold on the market for almost 5 years before the Patent
Owner filed for its patent further indicates how obvious it would have been for a
create the design claimed in the ’890 Patent. This was not some new design at the
time of filing. It was wholly derivative and obvious in view of Petitioner’s long
existing design.
the claimed design of the ’890 Patent through the eyes of a designer of ordinary
skill shows that the ’890 Patent is obvious. As shown above through the series of
and the CampingWorld.com Webpages teaches all claimed features of the ’890
Patent.
42
Therefore, considering the CampingWorld.com 360 and the
the type involved would find that the claimed ’890 Patent design as a whole is
substantially the same or has the same overall visual appearance as the design of
combination. Accordingly, the design claimed in the ’890 Patent is obvious under
Webpages.
V. CONCLUSION
For the foregoing reasons, Petitioner respectfully requests that Trial be
/Ryan W. Koppelman/
Ryan W. Koppelman (Reg. No. 58307)
Christopher TL Douglas (Reg. No. 56,950)
Dana Zottola (Reg. No. 65,942).
43
VI. CERTIFICATE OF WORD COUNT
Pursuant to 37 C.F.R. § 42.24, the undersigned attorney for the Petitioner
declares that this Petition (Sections I-V) has a total of 7,172 words, according to
/Ryan W. Koppelman/
Ryan W. Koppelman (Reg. No. 58307)
44
VII. CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. § 42.6(e)(4)(i) et seq. and 37 C.F.R. § 42.105(b), the
undersigned hereby certifies that, on May 2, 2018, a true and complete copy of this
petition for inter partes review and all supporting exhibits (1001 – 1006) were
provided by UPS, cost prepaid, to the Patent Owner by serving the correspondence
/Ryan W. Koppelman/
Ryan W. Koppelman (Reg. No. 58307)
45