Graco - Petition For IPR D621

Paper 1
Filed: March 29, 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 IPR2016-00810
Patent D570,621
_________________
PETITION FOR INTER PARTES REVIEW
IPR2016-00810
Petition for IPR of Patent D570,621

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 ........................................................................................ 3
III.
FEE FOR IPR REQUEST 37 C.F.R. 42.15(A) .......................................3
IV.
GROUNDS FOR STANDING........................................................................3
V.
IDENTIFICATION OF CHALLENGE ..........................................................4
VI.
OVERVIEW OF THE 621 PATENT ............................................................5
VII. CLAIM CONSTRUCTION ............................................................................9

A.Legal Standard For Claim Construction Of A Design Patent ........................ 9
B. Claim Construction Of The 621 Patent ....................................................... 11
VIII. APPLICABLE LEGAL STANDARDS ........................................................14
A.Anticipation .................................................................................................. 14
B. Obviousness .................................................................................................. 15
IX.
DETAILED
EXPLANATION
OF
THE
GROUNDS
FOR
UNPATENTABILITY ..................................................................................18
A.Ground 1 The Claim Is Anticipated Under 35 U.S.C. 102(b) By

Celestina-Krevh ............................................................................................ 18
1. The play yard legs of Celestina-Krevh are substantially similar to the
621 Patents claimed design ....................................................................19
2. Any differences between Celestina-Krevh and the 621 Patents claimed
design are trivial .......................................................................................22
3. Celestina-Krevh does not disclose a fabric covering on the legs .............24
4. A U.S. District Court found that Celestina-Krevh discloses a curved play
yard leg regardless of covering ................................................................26
5. Celestina-Krevh still discloses contours of curved play yard legs even if
covered by fabric and anticipates the 621 Patent claim ..........................27
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B. Ground 2 The Claim Is Obvious Under 35 U.S.C. 103(a) Over CelestinaKrevh In View Of Gottlieb ........................................................................... 28
C. Ground 3 The Claim Is Anticipated Under 35 U.S.C. 102(e) By Chen
393 ............................................................................................................ 30
1. Chen 393 anticipates the 621 Patent claim ............................................30
2. The inventors failed to show an earlier invention date than Chen 393 ..35
a. Applicable legal standards ..................................................................36
b. The alleged facts set forth in the Rule 1.131 Declaration are
insufficient ...........................................................................................38
c. The Patent Owner failed to establish conception ................................40
d. The Patent Owner failed to establish reduction to practice ................42
D.Ground 4 The Claim Is Anticipated Under 35 U.S.C. 102(e) By Chen
683 ............................................................................................................ 45
1. The play yard legs of Chen 683 are substantially similar to the 621
Patents claimed design ............................................................................45
2. Any differences between Chen 683 and the 621 Patents claimed design
are trivial ...................................................................................................49
E. Ground 5 The Claim Is Obvious Under 35 U.S.C. 103(a) Over Chen
683 ............................................................................................................ 49
F. Ground 6 The Claim Is Anticipated Under 35 U.S.C. 102(b) By The
Fold N Go Manual ....................................................................................... 51
G.Ground 7 The Claim Is Obvious Under 35 U.S.C. 103(a) Over The Fold
N Go Manual ............................................................................................... 55
H.Ground 8 The Claim Is Obvious Under 35 U.S.C. 103(a) Over The Fold
N Go Manual In View Of Gottlieb ............................................................. 56
I. Ground 9 The Claim Is Obvious Under 35 U.S.C. 103(a) Over CelestinaKrevh In View Of Hartenstine...................................................................... 57
J. Ground 10 The Claim Is Obvious Under 35 U.S.C. 103(a) Over The
Fold N Go Manual In View Of Hartenstine ................................................ 59
X.
CONCLUSION..............................................................................................60
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TABLE OF AUTHORITIES
Page(s)
CASES
ABB Inc. v. Roy-G-Biv Corp.,
Cases IPR2013-00062 & 00282, Final Decision,
Paper No. 84 (PTAB Apr. 11, 2014) ............................................................ 38
Apple, Inc. v. Samsung Elec. Co., Ltd.,
678 F.3d 1314 (Fed. Cir. 2012)................................................... 16, 29, 57, 60
Bonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,
402 U.S. 313 (1971) ...................................................................................... 26
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)..................................................................... 10
Cooper v. Goldfarb,
240 F.3d 1378 (Fed. Cir. 2001)..................................................................... 38
Cordance Corp. v. Amazon.com, Inc.,
658 F.3d 1330 (Fed. Cir. 2011)..................................................................... 36
Crocs, Inc. v. Intl Trade Commn,
598 F.3d 1294 (Fed. Cir. 2010)............................................................... 10, 15
Dieterich v. Leaf,
89 F.3d 226 (C.C.P.A. 1937) ........................................................................ 37
Dobson v. Dornan,
118 U.S. 10 (1886) ........................................................................................ 10
Door-Master Corp. v. Yorktowne,
256 F.3d 1308 (Fed. Cir. 2001)............................................................... 15, 27
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Durling v. Spectrum Furniture Co.,

101 F.3d 100 (Fed. Cir. 1996)....................................................................... 50
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) ................................................ 10, 15
Fitzgerald v. Arbib,
268 F.2d 763 (C.C.P.A. 1959) ...................................................................... 37
Garmin Intl, Inc. v. Cuozzo Speed Techs., LLC,
Case IPR2012-00001, Final Decision,
Paper No. 59 (PTAB Nov. 13, 2013) ............................................................ 37
Genentech, Inc. v. Chiron Corp.,
220 F.3d 1345 (Fed. Cir. 2000)..................................................................... 38
Geo. M. Martin Co. v. All. Mach. Sys. Intl LLC,
618 F.3d 1294 (Fed. Cir. 2010)..................................................................... 34
Gorham Mfg. Co. v. White,
81 U.S. 511 (1871) ............................................................................ 15, 27, 54
High Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301 (Fed. Cir. 2013)................................................... 16, 17, 55, 56
In re Blum,
374 F.2d 904 (C.C.P.A. 1967) ...................................................................... 12
In re Carter,
673 F.2d 1378 (C.C.P.A. 1982) .................................................................... 50
In re Cuozzo Speed Techs., LLC,
778 F.3d 1271 (Fed. Cir. 2015)....................................................................... 9
In re Garner,
508 F.3d 1376 (Fed. Cir. 2007)..................................................................... 41
In re Haruna,
249 F.3d 1327 (Fed. Cir. 2001)..................................................................... 16
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In re Harvey,
12 F.3d 1061 (Fed. Cir. 1993)....................................................................... 38
In re Jolley,
308 F.3d 1317 (Fed. Cir. 2002)..................................................................... 36
In re LAMB,
286 F.2d 610 (C.C.P.A. 1961) ...................................................................... 18
In re NTP, Inc.,
654 F.3d 1279 (Fed. Cir. 2011)............................................................... 36, 37
In re Rosen,
673 F.2d 388 (C.C.P.A. 1982) ...................................................................... 16
In re Steed,
802 F.3d 1311 (Fed. Cir. 2015)..................................................................... 37
In re Stevens,
173 F.2d 1015 (C.C.P.A. 1949) .............................................................. 50, 51
Intl Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009).............................................................. passim
Iron Dome LLC v. E-Watch, Inc.,
Case IPR2014-00439, Decision to Institute,
Paper No. 16 (PTAB Aug. 4, 2014) .............................................................. 44
Litton Sys., Inc. v. Whirlpool Corp.,
728 F.2d 1423 (Fed. Cir. 1984)..................................................................... 16
Mahurkar v. C.R. Bard, Inc.,
79 F.3d 1572 (Fed. Cir. 1996)....................................................................... 36
MRC Innovations, Inc. v. Hunter Mfg., LLP,
747 F.3d 1326 (Fed. Cir. 2014).............................................................. passim
Price v. Symsek,
988 F.2d 1187 (Fed. Cir. 1993)............................................................... 37, 38
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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)..................................................................... 14
FEDERAL STATUTES
35 U.S.C. 102 ........................................................................................... passim
35 U.S.C. 103 ........................................................................................... passim
35 U.S.C. 112 .................................................................................................... 6
35 U.S.C. 171 .................................................................................................. 15
FEDERAL REGULATIONS
37 C.F.R. 1.131 ........................................................................................... 6, 36
37 C.F.R. 1.152 ............................................................................................... 10
37 C.F.R. 42.8 ................................................................................................... 2
37 C.F.R. 42.15 ................................................................................................. 3
37 C.F.R. 42.100 ............................................................................................... 9
37 C.F.R. 42.104 ........................................................................................... 3, 4
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EXHIBIT LIST
Exhibit
No.
1001
Description
1005
U.S. Design Patent No. D570,621 (the challenged patent)

Declaration of Robert John Anders, IDSA, in Support of Petition for
Inter Partes Review of U.S. Patent No. D570,621
U.S. Design Patent No. D494,393 to Chen
Fold N Go lan Deluxe Care Center Instruction Manual, Century
Products
U.S. Design Patent No. D448,218 to Celestina-Krevh
1006
U.S. Patent No. 3,187,352 to Gottlieb
1007
U.S. Design Patent No. D581,683 to Chen
1008
U.S. Patent No. 6,510,570 to Hartenstine
1009
Prosecution File History for U.S. Design Patent No. D570,621

Rule 131 Declaration of Damon Oliver Casati Troutman and Edward
B. Bretschger and Exhibits A-F thereto
dictionary.com definition of exposed
1002
1003
1004
1010
1011
1012
1013
1014
1015
1016
Prosecution File History for U.S. Design Patent No. D604,970

In re Troutman et al., Appeal No. 2009-005005, Application No.
29/244,885 (BPAI Sept. 23, 2009)
U.S. Design Patent No. D604,970 to Troutman
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. D570,621 (the 621 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
621 Patent based on prior art that anticipates or renders obvious the 621 Patent
claim. The621 Patent should therefore be found unpatentable and cancelled.
The 621 Patent is a design patent directed to the ornamental design for
Exposed Legs for a Play Yard. The
621 Patent contains a single claim
and six figures depicting a single
embodiment. The figures of the 621
Patent show a play yard with what
appear to be curved legs that bow
outward. As shown in Figure 1, the
621 Patent Figure 1
curved legs are depicted in solid lines, and thus are the only features claimed.
Fatal to the 621 Patent claim, however, is the fact that none of the elements
of the claimed design are new. Play yards with exposed legs, for example, have
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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
621 Patent. For example, U.S. Design
Patent No. D494,393 to Chen (Chen
393) (Ex. 1003) disclosed designs
Fig. 1 Chen 393
nearly identical to the one claimed in the 621 Patent. The Patent Owner did not
differentiate Chen 393 during prosecution, but instead swore behind Chen 393
with an unsupported Rule 1.131 Declaration.
In 2000, four years prior to the filing of the 621 Patent, Century Products
(which was later acquired by Petitioners parent company) began to market and
sell a play yard with curved legs. (Ex. 1004.) Also as early as 2000, Graco filed a
U.S. design application, which later issued in 2001, showing a play yard with
curved legs with exposed contours. (Ex. 1005.)
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 621 Patent. Kolcraft Enterprises, Inc. v. Graco Childrens Products Inc.,
No. 1:15-cv-07950 (N.D. Ill.).
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
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 621 Patent is
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available for inter partes review and that it is not barred or estopped from
requesting inter partes review challenging the 621 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 621 Patent based on the following prior art:
Exhibit
Description
U.S. Design Patent No. D448,218
to Celestina-Krevh (Celestina-Krevh)
U.S. Patent No. 3,187,352
to Gottlieb (Gottlieb)
to Chen (Chen 393)
to Chen (Chen 683)
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)
1005
1006
1003
1007
1004
1008
Filing
Date
May 5,
2000
June 7,
1962
Jan. 7,
2004
Nov. 10,
2003
Publication/
Issue Date
Sept. 25,
2001
June 8,
1965
Aug. 17,
2004
Dec. 2,
2008
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
Statutory Basis
Description
35 U.S.C. 102(b) Anticipated by Celestina-Krevh
Obvious over Celestina-Krevh in view
35 U.S.C. 103(a)
of Gottlieb
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Ground No.
3
4
5
6
7
8
9
10
VI.

Statutory Basis
35 U.S.C. 102(e)
35 U.S.C. 102(e)
35 U.S.C. 103(a)
35 U.S.C. 102(b)
35 U.S.C. 103(a)
Description
Anticipated by Chen 393
Anticipated by Chen 683
Obvious over Chen 683
Anticipated by the Fold N Go Manual
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
OVERVIEW OF THE 621 PATENT

The 621 Patent, entitled Exposed Legs for a Play Yard, was filed on
December 15, 2005,1 as U.S. Patent Application No. 29/244,886 (the 886
Application). The 886 Application claimed priority to U.S. Patent Application
29/216,591, filed on November 5, 2004. The 886 Application contained a single
claim and six figures. The figures were directed to an ornamental design for
exposed legs for a play yard. (Ex. 1001; Ex. 1002, 29-30.)
In a non-final Office Action, the Office objected to the drawing due to an
inconsistency therein. The bottom-most portions of the leg members in [F]igure 1
show a slight flare outward that is not shown in the other views. Hence a new
drawing is now required wherein [F]igure 1 has been made consistent with the
Because the parent application for the 621 Patent was filed prior to the effective
date of the America Invents Act (AIA), the pre-AIA statutes apply here.
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other views. (Ex. 1009, 3/2/06 NFOA at

2; Ex. 1002, 31.) The Office included
an annotated version of Figure 1, as
shown. (Ex. 1009, 3/2/06 NFOA.) The
Office also rejected the claim under 35
U.S.C. 102(b) as clearly anticipated by Chen 6,954,949 . . . . The shape and
appearance of Chen 6,954,949 is identical in all material respects to that of the
claimed design. (Id. at 2.)
Applicants did not pursue the Offices direction to modify Figure 1 in
response to the non-final Office Action. Rather, they submitted amended Figures
2-5 to conform to Figure 1.2 (Ex. 1009, 6/2/2006 Response at 4.) Applicants also
submitted a declaration pursuant to 37 C.F.R. 1.131 (hereinafter Rule 1.131
Declaration) to address the Offices rejection of the claim as anticipated by Chen,
U.S. Patent No. 6,954,949 (Chen 949). (Ex. 1010.)
In a subsequent non-final Office Action, the Office withdrew the rejection
Although not the proper subject of an inter partes review, and not before the
Board, Petitioner submits that the 621 Patent is also nonenabling and indefinite
under 35 U.S.C. 112(a) and (b). Petitioner reserves its rights to challenge the
Patent Owners amendment as, among other things, introducing new matter.
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under 35 U.S.C. 102(b), but set forth a new rejection under 35 U.S.C. 103(a),
alleging that the claim is unpatentable over Celestina-Krevh in view of Gottlieb or
U.S. Patent No. 3,162,865 to Tigrett (Tigrett). (Ex. 1009, 6/27/06 NFOA at 2.)
The Office specifically found that [t]he appearance of the play yard legs claimed
herein is strikingly similar to the Celestina-Krevh play yard legs, the essential
difference being simply that the legs are exposed. Both Gottlieb and Tigrett show
the commonplace exposed legs on a play yard. (Id.) The Office thus concluded
that it would have been obvious to remove the cover of the Celestina-Krevh to
show the exposed legs as shown by either Gottlieb or Tigrett. (Id.)
In response, and apparently relying on the Offices (we believe mistaken)
assumption that the legs of Celestina-Krevh design are not exposed, Applicants
argued that a person of ordinary skill in the art would never use Gottlieb or Tigrett
to modify Celestina-Krevh because doing so would allegedly eliminate the
claimed invention of Celestina-Krevh. (Id. 11/30/06 Response at 2, 4.)
The Office did not accept Applicants argument. In a final Office Action, the
Office again rejected the claim under 35 U.S.C. 103 as unpatentable over
Celestina-Krevh in view of Gottlieb or Tigrett. (Id. 1/26/07 final OA at 2.) Again
it is held that it would have been obvious to a person of ordinary skill in the art at
the time the article was made to simply remove the cover of Celestina-Krevh to
show the exposed legs as taught by either Gottlieb or Tigrett. (Id.)
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Applicants thereafter filed a Notice of Appeal from the Examiner to the

Board of Patent Appeals and Interferences (BPAI) (id. 4/16/07 Notice of
Appeal), and filed an Appeal Brief on August 16, 2007. (Id.) Upon filing of
Applicants Appeal Brief, prosecution of the 886 Application was reopened by the
Examiner. (Id. 11/20/07 NFOA at 2.) In a non-final Office Action, the Office
rejected the claim under 35 U.S.C. 102(a) as anticipated by Chen 393,
concluding that [t]he shape and appearance of the play yard legs of [Chen 393]
are identical in all material respects to that of the claimed design[.] (Id.)
In response, Applicants argued that, based on the Rule 131 Declarations that
had been previously submitted, Chen 393 is not prior art under 35 U.S.C.
102(a). (Id. 2/18/08 Response at 2.) The 886 Application was thereafter allowed
on April 11, 2008. (Id.) The 621 Patent issued on June 10, 2008. (Id.)
The 621 Patent contains the following figure descriptions and figures:
Figure 2 [A] right side view of the

design of FIG. 1.
(Id. at description of Fig. 2.)
Figure 1 [A] perspective view of

exposed legs for a play yard.
(Ex. 1001 at description of Fig. 1.)
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Figure 3 [A] left side view of the

design of FIG. 1.
Figure 4 [A] front view of the

design of FIG. 1.
Figure 5 [A] rear view of the design

of FIG. 1[.]
Figure 6 [A] top view of the design

of FIG. 1.
The description further provides that [t]here is no fabric covering the exposed legs
shown in any of FIGS. 1-6. The features shown in broken lines are for illustrative
purposes only and do not form part of the claimed design. (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,
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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 621 Patent is defined by the solid lines (as opposed to the
broken or dashed lines) depicted in Figures 1-6, 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,
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 621 Patent figures with additional
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descriptions of certain features of the claimed design.

B.
Claim Construction Of The 621 Patent

According to the specification, the 621 Patent claims [t]he ornamental
design for 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 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. 1-6. (Id.)
Although the law leans against construing figures of a design patent with
words, the 621 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.
During prosecution, the Examiner simply concluded that the legs are
exposed. (Ex. 1009 6/26/07 NFOA at 2.) Petitioner believes that the Office failed
to properly construe the 621 Patent claim when deciding that exposed and no
fabric covering means the total absence of a fabric covering from the curved legs.
The 621 Patent claim instead should be construed as curved legs with the
unconcealed outer contours shown in FIGS. 1-6. The most dominant disclosures
of the 621 Patent are the figures showing legs in solid lines with white space
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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 the figures, 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 uncovered, the
scope of the 621 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 the
figures 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:
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2. laid open to view; unconcealed.

(Ex. 1011.) The construction argued by the Patent Owner, and adopted by the
Examiner, during prosecution was number 1 that exposed meant the absence of a
fabric covering. (See Ex. 1009 6/26/07 NFOA at 2; 11/30/06 Response at 2-4.)
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 621 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
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 621
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 621 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
13
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a thin plastic cover and yet still have the outer contours completely evident.
Accordingly, Petitioner proposes that the 621 Patent claim, under the
broadest reasonable interpretation, be construed as curved legs with the
unconcealed outer contours shown in FIGS. 1-6. 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
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
14
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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
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
15
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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
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
16
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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
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
17
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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 621 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.
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 Figures 1-6
of the 621 Patent. An ordinary observer would not take the claimed design in the
621 Patent for a new and different design. 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. 1005.) Celestina-Krevh issued on September 25,
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2001, more than one year prior to the filing date of the 621 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 and strikingly
similar overall visual appearance to the 621 Patents claimed design and thus
anticipate the curved legs with unconcealed outer contours shown in Figures 1-6 of
the 621 Patent. (See Ex. 1009, 6/27/06 NFOA at 2.)
1.
The play yard legs of Celestina-Krevh are substantially similar to

the 621 Patents claimed design
Below are figures from the 621 Patent and Celestina-Krevh that show
respective views in a side-by-side format:
View
621 Patent
Celestina-Krevh
Fig. 1
Fig. 1
Perspective
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View

621 Patent
Celestina-Krevh
Fig. 4
Fig. 2
Fig. 2
Fig. 4
Front
Right Side
Both the 621 Patents claimed design and Celestina-Krevh share many
common visual features, such that they are substantially similar. (Ex. 1002 140.)
As shown in the side-by-side comparisons above, the 621 Patent and CelestinaKrevh share the following features:
(1) both designs show the outer contours of legs of a play yard (id. 148);
(2) both designs are directed to rectangular play yards (id. 145);
(3) both designs show legs that have upright orientations (id. 147);
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(4) both designs show legs of a play yard that are curved and gently bowing
outwards at the middle (id. 149);
(5) both designs show legs at the four corners of the play yard (id. 146);
(6) both designs show legs that are thin and elongated (id. 150);
(7) both designs show legs that bow slightly outward at the top (id. 151);
(8) both designs have proportionally similar height-to-width ratios (id.
144); 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 621 Patent and Celestina-Krevh show the outer contours of
legs of a play yard. In fact, the curved, exposed play yard legs of the 621 Patent
copy the claimed curved legs [disclosed] inCelestina-Krevh. (Id. 152-153.)
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 621
Patent. Celestina-Krevh also shows the play yard legs as being thin and elongated.
So does the 621 Patent. Celestina-Krevh shows the legs as gently bowing
outwards in the middle, just like those in the 621 Patent. Further, Celestina-Krevh
shows the legs flaring outward slightly at the top, as do the play yard legs shown
in the 621 Patents claimed design. By way of example only, a side-by-side
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comparison of the legs in Celestina-Krevh and the 621

Patent is shown. As set forth herein, Celestina-Krevh shows
the outer contours of the legs of a play yard that are
substantially similar to the 621 Patents claimed design.
(Id. 153.)
Moreover, regarding similarities (8) and (9) identified
above, a comparison of the 621 Patents Figure 1 and
Fig. 2
Fig. 4
Celestina 621
-Krevh Patent
Celestina-Krevhs Figure 1 by an ordinary observer shows that both designs have

proportionately similar height-to-width and length-to-width ratios:
H
H
L
W
L
W
Fig. 1
621 Patent
2.
Fig. 1
Celestina-Krevh
Any differences between Celestina-Krevh and the 621 Patents

claimed design are trivial
To the extent any differences exist between Celestina-Krevh and the 621
Patents claimed design, they are trivial and do not prevent finding that the claimed
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design of the 621 Patent is anticipated by Celestina-Krevh. (Ex. 1002 154.) 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 621 Patent figures show the bottoms of the legs as having
slight outward flaring like the tops of the legs. (Ex. 1002 155.) This slight
outward flaring is irrelevant it is not necessary to the visual impression created
by the patented design as a whole. (Id. 156.) See also Intl Seaway, 589 F.3d at
1243. Even if the slight outward flaring at the bottom of the legs was considered
relevant, it would have been obvious to add flaring to the bottom of CelestinaKrevhs legs to give the same visual impression as the top. (Ex. 1002 158.) If it
were not obvious, then the 621 Patents original Figure 1, which suggested the
bottom flare on only two legs (only in two-dimensions, without even any contour
lines), would not have provided support for amending the remaining Figures 2-5 to
include a bottom flare.3 (Id. 157.)
Patent Owner cannot have its cake and eat it too. It has to choose whether to reset
its filing date (at least) for adding new matter to Figures 2-5, or admit that it would
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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.
(Id. 117.) The Patent Owner argued during prosecution of the 886 Application
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. 118.)
Celestina-Krevh does not disclose any shading or other lines indicating a
fabric or other material covering the legs as allowed in design patent practice.
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.) It is a factual and
legal error to add design elements to a design
patent drawing that are not claimed. (Id. 119.)
In an annotated version of Figure 1 of
Celestina-Krevh, Mr. Anders indicates with red
arrows the shading lines that both the Examiner
and the BPAI4 appeared to mistakenly identify
be obvious to add a bottom flare to the shape.

4
During prosecution of U.S. Application No. 29/244,885 (the 885 Application),
which claimed priority to the same application as the 886 Application, Applicants
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as curved legs covered by fabric. (Ex. 1002 121.) These contour lines are thinner,
intermittent lines within thicker, solid outer lines and are shading lines that connote
the roundness or curvature. (Id. 122.) 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 122.)
Celestina-Krevhs Figures 6 and 7 show some unknown feature5 that appears
to extend laterally away from each leg. (Id. 126.) 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. 127.) It could be positioned below the legs, for
example. (Id.) Even if the unknown feature does extend over the legs, the unknown
faced a similar rejection under 35 U.S.C. 103(a) over Celestina-Krevh in view of

Gottlieb or Tigrett. (Ex. 1012, 6/28/07 NFOA at 2.) As in the 886 Application,
Applicants filed a Notice of Appeal; however, the Examiner did not reopen
prosecution in that case, and Applicants and the Examiner submitted appeal
briefing. (See id.) On September 23, 2009, the BPAI entered its decision and
reversed the Examiner. (Ex. 1013.)
5
What the feature is comprised of, is indeterminate. (Ex. 1002 126.)

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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.)
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.
1015.) 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.)6
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
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. 1015 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)).
26
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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
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 621 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 621
Patent claim. (Ex. 1002 160.) Regardless of any fabric or covering on the play
yard legs, Celestina-Krevh still discloses curved legs with unconcealed outer
contours that anticipate the 621 Patents claimed design. (Id. 161.) 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. 162.) 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 161.) Because of the lack of
27
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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
minor difference[]. Intl Seaway, 589 F.3d at 1243. For example, CelestinaKrevh shows in Figure 6 the full contours of the leg. (Ex. 1001, Fig. 6; Ex. 1002
163.) The outer-most radius and two lateral sides of the legs are clearly shown in
solid lines. (Ex. 1002 164.) The 621 Patent figures likewise show only those
same three sides the outer radius and two lateral sides of the legs. (Id. 165.)
B.
Ground 2 The Claim Is Obvious Under 35 U.S.C. 103(a) Over

Celestina-Krevh In View Of Gottlieb
The claim of the 621 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. 1006.) Gottlieb issued on June 8, 1965, more than one year prior
to the filing date of the 621 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 170), 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. 1006 at 2:61-65; Ex. 1002 169.) Because
both Celestina-Krevh and Gottlieb disclose and are directed to rectangular play
28
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yards that include four legs at each of the four corners, Gottlieb is a proper
secondary reference because it is so related to Celestina-Krevh. MRC
Innovations, 747 F.3d at 1334.
flexible
shroud
The legs (10) on the play yard in Gottlieb

are exposed and located adjacent the four corners
of the upper frame. (Ex. 1006 at 3:16-18; FIGS. 1
& 2.) The legs of the play pen in Gottlieb are
legs
Fig. 1 Gottlieb
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. (Id. at 3:7-8;
FIG. 1; see also Ex. 1002 171.)
The claimed design of the 621 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 172.) As shown in Section IX(A)(1), supra, Celestina-Krevhs legs are
substantially similar to the 621 Patents claimed design and Gottlieb teaches
exposing the legs by spacing away any 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
Innovations, 747 F.3d at 1331. (See Ex. 1002, 173.)
29
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C.
Ground 3 The Claim Is Anticipated Under 35 U.S.C. 102(e) By

Chen 393
Chen 393 not only discloses the same overall visual appearance as Figures
1-6 of the 621 Patent, the figures in the 621 Patent appear to be a direct copy of
Chen 393. (Ex. 1002 174.) An ordinary observer would not take the claimed
design in the 621 Patent for a new and different design. As a result, the claim is
anticipated by Chen 393 and thus invalid under 35 U.S.C. 102(e).
Chen 393 is a U.S. design patent, filed on January 7, 2004, as U.S.
Application No. 29/196,878. (Ex. 1003.) Chen 393 issued on August 17, 2004.
(Id.) Because the filing date for Chen 393 falls before the filing date for the 621
Patent, Chen 393 is prior art under 35 U.S.C. 102(e).
1.
Chen 393 anticipates the 621 Patent claim
Chen 393 discloses play yard legs that have a virtually identical overall
visual appearance to the 621 Patents claimed design and thus anticipate the
curved legs with the outer contours shown in Figures 1-6 of the 621 Patent.
Chen 393 was cited during prosecution. (See Ex. 1009, 11/20/07 NFOA.)
The Patent Owner did not dispute the Offices conclusion that [t]he claim is
clearly anticipated by [Chen 393] and that [t]he shape and appearance of the
play yard legs of [Chen 393] are identical in all material respects to that of the
claimed design . . . . (Id. at 2 (emphasis added).)
Both the 621 Patents claimed design and Chen 393 share many common
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visual features, such that they are substantially similar (if not identical). (Ex. 1002
177.) In fact, Mr. Anders was dismayed to see that the 621 Patent is almost a
direct reproduction of the design depicted as environmental structures in Chen
393. (Id. 175.) It is [Mr. Andress] opinion that the named inventors of the
621 Patent directly copied the drawings of Chen 393, and then claimed the
curved legs claimed in Celestina-Krevh. (Id. 175.)
As shown in the side-by-side comparisons below, the 621 Patent and Chen
393 share the following features:
outwards in the middle (id. 190);
(8) both designs have similar upper frame shapes (id. 183);
(9) both designs have identical side panels for the play yard walls (id. 184);
(10) both designs have identical half-moon shaped handles (id. 185);
(11) both designs have identical feet (id. 186);
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181); and
View
621 Patent
Chen 393
Fig. 1
Fig. 1
Fig. 4
Fig. 2
Perspective
Front
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View

621 Patent
Chen 393
Fig. 2
Fig. 5
Right Side
Overlays of the 621 Patents design over the respective figures of the Chen
393 also show nearly identical shapes, sizes, and designs:
Fig. 1 of Chen 393

with Fig. 1 of 621
Patent Overlaid
Fig. 2 of Chen 393

with Fig. 4 of 621
Patent Overlaid
33
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Fig. 5 of Chen 393

with Fig. 2 of 621
Patent Overlaid
(Ex. 1002, 176.)7

Regarding similarities (1) and (2) above, an ordinary
observer can easily see that the 621 Patents claimed design and
Chen 393 are both directed to the outer contours of the legs of a
rectangular play yard. To better illustrate, a side-by-side
comparison of the curved legs in Chen 393 and the 621 Patent
is shown. As is apparent, both legs have upright orientations (3),
Fig. 2 Fig. 4
Chen 621
393 Patent
Notwithstanding the foregoing, and as shown by the overlays above, the existence
of any [i]ndepedently made, simultaneous inventions, made within a

comparatively short space of time, of the 621 Patent, is persuasive evidence
that the claimed apparatus was the product only of ordinary mechanical or
engineering skill. Geo. M. Martin Co. v. All. Mach. Sys. Intl LLC, 618 F.3d
1294, 1305 (Fed. Cir. 2010) (citations omitted). For at least this reason, the 621
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gently bow outwards in the middle (4), are thin and elongated (6), and bow slightly
outward at the top (7).
Regarding similarities (8), (9), (10), and (11) above, the side-by-side
comparison of the two play yards by an ordinary observer shows that each play
yard contains identical elements in the same size, proportion, and position.
Regarding similarities (12) and (13) above, a comparison of the 621 Patent
and Chen 393 by an ordinary observer shows that both designs have
proportionately similar, if not identical, height-to-width and length-to-width ratios:
Fig. 1
Chen 393
Fig. 1
621 Patent
2.
The inventors failed to show an earlier invention date than Chen

393
When faced with rejections under 35 U.S.C. 102 as anticipated by Chen

393 and Chen 949, the Patent Owner did not dispute the Offices conclusions as
Patent is also obvious in view of Chen 393.

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to anticipation. Rather, Applicants relied on a Rule 1.131 Declaration, which

allows an inventor to swear that he or she conceived and reduced the invention to
practice prior to the filing date of the otherwise invalidating prior art. See In re
NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). As a result, the examination of
the 886 Application by the Office continued without further consideration of Chen
393.
a.
Applicable legal standards
Patent Owner bears the burden to establish facts . . . in character and

weight, as to establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application. 37 C.F.R. 1.131(b). To have
conceived of an invention, an inventor must have formed in his or her mind a
definite and permanent idea of the complete and operative invention, as it is
hereafter to be applied in practice. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572,
1577 (Fed. Cir. 1996) (citation omitted). Conception must be proven by evidence
showing what the inventor has disclosed to others and what that disclosure means
to one of ordinary skill in the art. Cordance Corp. v. Amazon.com, Inc., 658 F.3d
1330, 1334 (Fed. Cir. 2011) (quoting In re Jolley, 308 F.3d 1317, 1321 (Fed. Cir.
2002)). [A]n inventors testimony, standing alone, is insufficient to prove
36
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conceptionsome form of corroboration must be shown. Price v. Symsek, 988

F.2d 1187, 1194 (Fed. Cir. 1993).
As the Federal Circuit has explained, conception by an inventor, for the
purpose of establishing priority, can not [sic] be proved by his mere allegation nor
by his unsupported testimony where there has been no disclosure to others or
embodiment of the invention in some clearly perceptible form, such as drawings or
model, with sufficient proof of identity in point in time. Id. (citation omitted).
Such corroboration is also required in inter partes review. Garmin Intl, Inc. v.
Cuozzo Speed Techs., LLC, Case IPR2012-00001, Final Decision, Paper No. 59 at
20-21 (PTAB Nov. 13, 2013). A rule of reason is used to evaluate all pertinent
evidence . . . so that a sound determination of the credibility of the inventors story
may be reached. Price, 988 F.2d at 1195.
On the other hand, reduction to practice for a design patent requires the
production of an article embodying that design. Fitzgerald v. Arbib, 268 F.2d 763,
765 (C.C.P.A. 1959); see also Dieterich v. Leaf, 89 F.3d 226, 229 (C.C.P.A. 1937).
Patent Owner bears the burden of showing actual reduction to practice. See In re
Steed, 802 F.3d 1311, 1317-18 (Fed. Cir. 2015) (citing In re NTP, 654 F.3d at
1291) (The burden of showing actual reduction to practice is on the party seeking
its benefit.). And [t]o establish reduction to practice, the inventor must prove that
he made an embodiment of the invention that met all the limitations of the claim.
37
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Cooper v. Goldfarb, 240 F.3d 1378, 1382 (Fed. Cir. 2001); see also Genentech,
Inc. v. Chiron Corp., 220 F.3d 1345, 1352 (Fed. Cir. 2000). Further, for design
patents, the focus is not on concepts but on the claimed design. See In re Harvey,
12 F.3d 1061, 1064 (Fed. Cir. 1993).
The Board has observed that the corroboration requirement is not limited to
conception, and [i]t applies also to inventor testimony regarding . . . reduction to
practice. ABB Inc. v. Roy-G-Biv Corp., Cases IPR2013-00062 & 00282, Final
Decision, Paper No. 84 at 9 (PTAB Apr. 11, 2014). A rule of reason analysis is
also used to evaluate corroboration of a reduction to practice. See Price, 988 F.2d
at 1196.
b.
The alleged facts set forth in the Rule 1.131 Declaration are
insufficient
The Patent Owner, based on the prosecution history for the 621 Patent,
failed to meet the requirements of either actual reduction to practice or conception
plus diligence. In their Rule 1.131 Declaration, each inventor provided one
sentence the exact same sentence related to conception: We invented the
design claimed in the instant application prior to the January 2, 2004 Chinese
priority date of the Chen Patent.8 (Ex. 1010 3.) The inventors then refer to
Petitioner notes that the Chen Patent referred to in the Rule 1.131 Declaration
is U.S. Patent No. 6,859,957 to Chen (Chen 957). Chen 957 has a priority date
38
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Exhibit A to the declaration, which

allegedly shows a sketch of [the
inventors] inventive design dated
________________, a date prior to
January 2, 2004. (Id.) Other than
the undated sketch, which does
not show the 621 Patents claimed
Rule 1.131 Declaration Exhibit A
design, neither inventor offers any
other documents or testimony from others corroborating conception.
As with conception, the inventors make a single sweeping statement related
to reduction to practice: Further, we reduced the inventive design to practice prior
to the January 2, 2004 Chinese priority date of the Chen Patent. (Id. 3.) The
inventors then refer to two photographs taken of one such reduction to practice
(id. 3, Exs. B & C), and then two other photographs that allegedly show another
reduction to practice of [their] inventive design (id. 4, Exs. D & E). The four
photographs from Exhibits B-E are shown below.
of January 2, 2004, which was allegedly antedated by the Rule 1.131 Declaration.
Applicants relied again on this Rule 1.131 Declaration to swear behind Chen
393, which has a priority date of January 7, 2004.
39
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Exhibits B-E to the Rule 1.131 Declaration (Ex. 1010)
Exhibit B
Exhibit C
Exhibit D
Exhibit E
Aside from the four photographs, the declaration provides no further

testimony, documents, or evidence related to reduction to practice. The inventors
did not describe how the photographs support their claims of reduction to practice.
The inventors did not submit an actual physical prototype or article embodying the
claimed design.
c.
The Patent Owner failed to establish conception
In their Rule 1.131 Declaration, the inventors wholly fail to address either
how the design shown in the single undated sketch is substantially the same as
40
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those features shown in the 621 Patent or how such sketch allegedly embodies
the 621 Patents claimed design. (Ex. 1002 48 & 50.) For instance, the
inventors provided no details about the design or the form of the design. (Id. 50.)
Yet further, the undated sketch does not provide the evidence necessary to
establish conception.
For instance, the sketch provides only one view (a perspective view), and
thus fails to provide any evidence of the concepts appearance from the rear, the
left side, the right side, the top, or the bottom. (Id. 51.) Further, the proportions of
the play yard shown in the sketch appear different than those shown in the 621
Patent. (Id. 52.) The legs in the sketch also appear covered with some type of
material. (Id.) The legs shown in the sketch vary in shape and size from each other,
not to mention that all of the legs in the sketch appear dramatically different than
those shown in the 621 Patent. (Id. 53.)
The single statement by each inventor cannot serve to cross corroborate
each others testimony. See, e.g., In re Garner, 508 F.3d 1376, 1380 (Fed. Cir.
2007). This is especially true where the inventors have provided the exact same
testimony without any further details supporting this alleged conception. And
without any such evidence showing conception, no determination can be made as
to whether the design, as allegedly conceived, is the same as the claimed design.
Because, at a minimum, the evidence fails to show conception, the evidence
41
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necessarily cannot demonstrate diligence from conception to reduction to practice.

Petitioner nonetheless addresses the reduction to practice prong of the analysis.
d.
The Patent Owner failed to establish reduction to practice
The photographs that the inventors submit in support of the Rule 1.131
Declaration are of low quality and insufficient to show that they embody the
claimed design.9 (Ex. 1002 56.) For instance, the photographs attached to the
Rule 1.131 Declaration present, at best, only perspective views. (Id. 57.) There is
no evidence of the prototypes appearance from the rear, the left side, the right
side, the top, or the bottom. (Id.) Also, some of the claimed design elements, such
as the legs of the play yard, appear to be made of different types of material or may
be covered in some way. It is thus impossible to confirm whether the prototypes in
the photographs support the 621 Patents statement that [t]here is no fabric
Petitioner submits that copies of Exhibits A-F to the Rule 1.131 Declaration are
not available via PAIR. Petitioner thus enlisted a third party, Harris & Associates
of Lorton, Virginia, to travel to the USPTO to make photocopies of the USPTOs
files containing Exhibits A-F, using the USPTOs copier. The copies presented
herein are the best available to Petitioner at this time. Petitioner thus reserves all
rights to amend or supplement its Petition should other copies of the Exhibits A-F
be made available, or any other evidence presented.
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covering the exposed legs . . . . As a result, the photographs of the prototypes are
not sufficient to show that any prototype embodies the claimed design. (Id. 57.)
As an initial matter, the photographs fail to provide a view of every side of
the alleged prototype. (Id. 57.) Rather, only perspective views are provided. (Id.
57.) In Exhibit A to the Rule 1.131 Declaration, for instance, the inventors
provide a mere sketch which is a drawing, and not a product. (Id. 48.) And fatal
to the sketch is that the proportions appear different than those claimed in the 621
Patent. (Id. 53.) The second and third photographs, shown as Exhibits B and C,
respectively, are so dark as to be indiscernible. (Id. 59 & 61.) In fact, the
Exhibit C photograph shows what appears to be a covering
on the play yard legs. (Id. 61.) The Exhibit D photograph
seems to show that the play yard legs are tubes (e.g., the
back leg, which is a tube) that are covered with plastic
sheaths. (Id. 63.) The Exhibit D photograph also shows a
play yard that lacks any side or end panels. (Id. 64.) Yet
further, the height-to-width ratio of the play yard legs in the
621 Patent and Exhibit D is different, as shown. (Id. 65.)
As to the Exhibit E photograph, that photograph is also too
Ex. 1010
at Ex. D
Fig. 1
621
Patent
dark to ascertain whether the legs are covered or not. (Id. 71.) Finally, Exhibit
F to the Rule 1.131 Declaration does not connect the dates to the previous sketch
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and photographs shown at Exhibits A-E. (Id. 74.)

The Patent Owner has also failed to produce a prototype. (Id. 77.) Any
prototype must establish that the named inventors built an article that embodies the
claimed design of the 621 Patent and not just any concept for a play yard with
curved legs or an article that embodies the general idea of a play yard with curved
legs. The Patent Owner has not shown sufficient detail or views of the claimed
design in the scant evidence submitted.
Given the limitations necessarily imposed by the photographs attached to the
inventors declarations, and the scant evidence related to the alleged prototypes, it
would be impossible for a designer of ordinary skill to determine from the views
shown if the legs of the play yard are shaped like those shown in the 621 Patent,
not to mention whether the legs are exposed or are covered in some type of
material (such paint or thin plastic). (Id. 75.)
Neither the inventors nor the Patent Owner have corroborated a reduction to
practice of any prototype embodying the claimed invention. The provision of hardto-discern photographs with an incomplete number of views plainly does not
suffice. If the Board were to institute trial, the Petitioner would have a chance to
inspect an actual prototype (to the extent one exists). See Iron Dome LLC v. EWatch, Inc., Case IPR2014-00439, Decision to Institute, Paper No. 16 at 5-8
(PTAB Aug. 4, 2014) (instituting trial and finding that Patent Owner did not
44
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properly swear behind a prior art reference, despite the fact that, during earlier
prosecution, the Examiner found that the prior art was properly antedated).
In view of the foregoing, Chen 393 qualifies as prior art under 35 U.S.C.
102(e), and Petitioner has established a reasonable likelihood that 621 Patent
claim is anticipated by Chen 393.
D.
Ground 4 The Claim Is Anticipated Under 35 U.S.C. 102(e) By

Chen 683
Chen 683 lists the same inventor as Chen 393. It thus comes as little
surprise that Chen 683 likewise discloses the same overall visual appearance as
the claimed design of the 621 Patent. An ordinary observer would not take the
claimed design in the 621 Patent for a new and different design.
Chen 683 is a U.S. design patent, filed as U.S. Application No. 29/193,511
on November 10, 2003. (Ex. 1007.) Chen 683 issued on December 2, 2008. (Id.)
Because the filing date for Chen 683 falls before the filing date for the 621
Patent, Chen 683 is prior art under 35 U.S.C. 102(e).10
1.
The play yard legs of Chen 683 are substantially similar to the
621 Patents claimed design
The legs of the play yard disclosed in Chen 683 have a substantially similar
10
The inventors Rule 1.131 Declaration to remove Chen 957 only alleged a
conception and reduction to practice date prior to January 2, 2004. (Ex. 1010.)
45
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overall visual appearance to the design claimed in the 621 Patent. As shown in the
side-by-side comparisons below, the 621 Patent and Chen 683 share the
following features:
(1) both designs show the outer contours of legs of a play yard;
(2) both designs are directed to rectangular play yards;
(3) both designs show legs that have upright orientations;
outwards at the middle;
(5) both designs show legs at the four corners of the play yard;
(6) both designs show legs that are thin and elongated;
(7) both designs show legs that bow slightly outward at the top;
(8) the curvature of the legs in both designs is substantially similar, if not
identical;
(9) both designs have similar side panels for the play yard walls;
(10) both designs have similar feet;
(11) both designs have proportionally similar height-to-width ratios; and
(12) both designs have proportionally similar length-to-width ratios.
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View

621 Patent
Chen 683
Fig. 1
Fig. 1
Fig. 4
Fig. 2
Fig. 2
Fig. 5
Perspective
Front
Right Side
Regarding similarities (1) and (2) above, an ordinary observer can easily see
that both the 621 Patent and Chen 683 are directed to the outer contours of legs
47
IPR2016-00810
of a rectangular play yard. Chen 683 shows the play yard legs as having an
upright orientation and being positioned at the four corners of a play yard, as does
the 621 Patent. Chen 683 shows the play yard legs as being thin and elongated.
The play yard legs in the 621 Patents claimed design are
likewise thin and elongated. Chen 683 further shows that the
legs are gently bowing outwards at the middle with a slight
outward bow at the top of the leg. So does the 621 Patent. In
fact, the curvature of the outer contours of the play yard legs of
the 621 Patent and Chen 683 are almost identical, as shown in
the side-by-side comparison. Chen 683 thus shows the outer
contours of the legs of a play yard that are virtually identical to
Fig. 2 Fig. 4
Chen 621
683 Patent
the 621 Patents claimed design, exceeding the substantially similar standard.
Regarding similarities (9) and (10) above, even a casual comparison of Chen
683 and the 621 Patent by an ordinary observer shows that each play yard
contains similar side panels and feet. Moreover, regarding similarities (11) and
(12), a comparison of the 621 Patents Figure 1 and Chen 683s Figure 1 by an
ordinary observer shows that both designs have proportionately similar height-towidth and length-to-width ratios:
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Fig. 1
621 Patent
2.
Fig. 1
Chen 683
Any differences between Chen 683 and the 621 Patents claimed
design are trivial
The differences between the 621 Patents claimed design and the disclosure
of Chen 683 are trivial. For instance, the 621 Patent figures show the bottoms of
the legs as having slight outward flaring like the tops of the legs. This slight flaring
is irrelevant and is not necessary to the visual impression created by the 621
Patents claimed design as a whole. See Intl Seaway, 589 F.3d at 1243. Even
assuming, arguendo, that the slight outward flaring at the bottom of the legs was
considered relevant, it would have been obvious to add flaring to the bottom of
legs of Chen 683 to give the same visual impression as the top. See Section
IX(A)(2) & n.3, supra.
E.

Chen 683
In the alternative, Chen 683 discloses the same overall visual impression as
49
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the 621 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 621
Patent claim is obvious under 35 U.S.C. 103(a) over Chen 683.
Chen 683 is a suitable primary reference because Chen 683 discloses a
play yard with legs showing unconcealed outer contours with basically the same
design characteristics as the claimed design. Durling v. Spectrum Furniture Co.,
101 F.3d 100, 103 (Fed. Cir. 1996). Indeed, Chen 683 is so similar to the claimed
design that no secondary reference is necessary.
To the extent that there is any disclosure in the 621 Patent that is not plainly
evident from Chen 683 (e.g., any minor differences in leg curvature or any minor
differences in proportion of the play yards), Chen 683 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 In re
Stevens, 173 F.2d 1015, 1015-16 (C.C.P.A. 1949) (obvious changes in . . .
proportioning involve ordinary skill only). Chen 683, for example, shows the
curved legs in dashed lines without any contour lines or shading. However, the
621 Patents figures also do not show any contour lines or shading. And, it would
be obvious to convert the dashed lines into solid lines.
Finally, considering this hypothetical Chen 683 reference, the ordinary
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IPR2016-00810
observer would be deceived into believing that the hypothetical Chen 683 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 Chen 683.
Stevens, 173 F.2d at 1015-16.
F.
Ground 6 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
Figures 1-6 of the 621 Patent. In view thereof, an ordinary observer would not
take the claimed design in the 621 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, 2003,11 which is more than one year prior to the filing date of the
621 Patent. (Id.) Therefore, the Fold N Go Manual is prior art under 35 U.S.C.
11
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. 1016.) Petitioner thus
proceeds with the August 17, 2003, date.
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102(b). The Fold N Go Manual was not considered during prosecution of the
886 Application.
Figures from the 621 Patent and the Fold N Go Manual are shown below
in a side-by-side comparison:
621 Patent
Fold N Go Manual
Fig. 1
Front Page
Both the 621 Patents claimed design and the Fold N Go Manual share
many common visual features, such that they are substantially similar. (Ex. 1002
195.) For instance, they share the following features:
(4) both designs shows legs of a play yard that are curved and gently bowing
outwards at the middle (id. 205);
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(8) both designs have similar side panels (id. 208);
196); and
Regarding similarity (1), an ordinary observer can easily see that both the
621 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. 202.) The 621
Patent and the Fold N Go Manual are thus directed to or
disclose rectangular play 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
Front Pg.
Fold N Go
Manual
Fig. 4
621
Patent
legs of the 621 Patent and the Fold N Go Manual have almost identical curvature,
as shown. (Id. 204.)
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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 are thus indicative of the legs being unconcealed. (Id. 203.) 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 621
Patent claim. The Fold N Go Manual still discloses curved legs with unconcealed
outer contours that anticipate the 621 Patents claimed design regardless of any
fabric or covering on the play yard legs. (Id. 210.) 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 210.)
Both the 621 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:
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L
W
Fig. 1
621 Patent
G.
Front Pg.
Fold N Go Manual

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 621 Patent. High Point Design, 730 F.3d at 1311. The
Fold N Go Manual is not only similar to the 621 Patent, it is substantially similar
in all material respects. (Ex. 1002 212.)
Thus, the Fold N Go Manual provides a
suitable foundation as a primary reference for
an obviousness inquiry. (Id.) This
accommodates the Fold N Go Manuals
Fold N Go Manual, p. 3
displaying of perspective views, rather than multiple orthogonal views. (Id. 213.)
For example, one of ordinary skill would know the rounded shape of the legs in
55
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multiple views due to their shading and expected symmetry around the play yard,
as shown. (Id.)
Considering such a hypothetical reference, the designer of ordinary skill,
familiar with the prior art, would be deceived into believing that the hypothetical,
slightly modified Fold N Go Manual is the same as the 621 Patents claimed
design. (Id. 214.) 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.
H.

The Fold N Go Manual In View Of Gottlieb
The claim of the 621 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 218.) 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(B), Gottlieb discloses legs of a play yard
that are exposed and isolated from the interior portion of the play yard. (Ex. 1002
217; Ex. 1006 at 3:16-18, FIGS. 1-2.)
The claimed design of the 621 Patent would have been obvious to a
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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 219.) As shown in Section IX(F), supra, the Fold N Go
Manuals legs are substantially similar to the 621 Patents claimed design and
Gottlieb teaches exposing the legs by spacing away any 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.)
I.

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 621 Patents claimed design.
Further, any element of the 621 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 621 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
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Innovations, 747 F.3d at 1334-35. Hartenstine is a proper secondary reference

because it is so related to Celestina-Krevh. MRC Innovations, 747 F.3d 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
Fig. 10 Hartenstine
playard . . . . (Ex. 1008 at 4:54-56.) As shown in Figures 8, 9, and 10, Hartenstine

provides a visual impression that the legs 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
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IPR2016-00810
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.
J.

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 621 Patents claimed
design. Further, any element of the 621 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(I), 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 &
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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(F), supra, and the 621 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 given above, Petitioner has established a reasonable
likelihood that it will prevail in establishing the unpatentability of the claim of the
621 Patent. As a result, this Petition should be granted, inter partes review should
be instituted, and the 621 Patent claim should be found invalid under the statutory
grounds identified above.
DATED: March 29, 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
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CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. 42.6(e) and 42.105, I certify that on March 29,

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
61

Graco - Petition For IPR D621

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Paper 1

Filed: March 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

Petition for IPR of Patent D570,621

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

FEE FOR IPR REQUEST 37 C.F.R. 42.15(A) .......................................3

GROUNDS FOR STANDING........................................................................3

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

OVERVIEW OF THE 621 PATENT ............................................................5

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

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

Petition for IPR of Patent D570,621

Petition for IPR of Patent D570,621

Petition for IPR of Patent D570,621

Durling v. Spectrum Furniture Co.,

Petition for IPR of Patent D570,621

Petition for IPR of Patent D570,621

Richardson v. Stanley Works, Inc.,

Petition for IPR of Patent D570,621

U.S. Design Patent No. D570,621 (the challenged patent)

U.S. Patent No. 3,187,352 to Gottlieb

U.S. Design Patent No. D581,683 to Chen

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

Prosecution File History for U.S. Design Patent No. D570,621

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

Petition for IPR of Patent D570,621

621 Patent Figure 1

Petition for IPR of Patent D570,621

been around for decades and are not

Fig. 1 Chen 393

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

Real Parties in Interest

Petition for IPR of Patent D570,621

Designation of Petitioners Counsel

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

GROUNDS FOR STANDING

Petition for IPR of Patent D570,621

Petition for IPR of Patent D570,621

OVERVIEW OF THE 621 PATENT

Petition for IPR of Patent D570,621

other views. (Ex. 1009, 3/2/06 NFOA at

Petition for IPR of Patent D570,621

Petition for IPR of Patent D570,621

Applicants thereafter filed a Notice of Appeal from the Examiner to the

Figure 2 [A] right side view of the

Figure 1 [A] perspective view of

Petition for IPR of Patent D570,621

Figure 3 [A] left side view of the

Figure 4 [A] front view of the

Figure 5 [A] rear view of the design

Figure 6 [A] top view of the design

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 D570,621

Petition for IPR of Patent D570,621

descriptions of certain features of the claimed design.

Claim Construction Of The 621 Patent

Petition for IPR of Patent D570,621

Petition for IPR of Patent D570,621

2. laid open to view; unconcealed.

Petition for IPR of Patent D570,621

Petition for IPR of Patent D570,621

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