Paper No. Filed: August 7, 2013
Filed on behalf of: Sensio, Inc. By: Kathleen A. Daley Elizabeth D. Ferrill
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4000 Facsimile: 202-408-4400 E-mail: [email protected]
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
SENSIO INC. Petitioner
v.
SELECT BRANDS, INC. Patent Owner
Patent D675,864
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. D675,864
- i -
Table of Contents
Table of Authorites .................................................................................................... v
I. Introduction ...................................................................................................... 1
II. Mandatory Notices Under 37 C.F.R. § 42.8 .................................................... 1
III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103 ............................ 2
IV. Grounds for Standing ....................................................................................... 2
V. Identification of Challenge .............................................................................. 2
VI. Background ...................................................................................................... 4
VII. Claim Construction .......................................................................................... 6
VIII. The Applicable Legal Standards...................................................................... 8
A. Anticipation ........................................................................................... 8
B. Obviousness ........................................................................................... 9
IX. Detailed Explanation of Grounds for Unpatentability Under the Broadest Reasonable Construction ................................................................ 10
A. Ground 1: The Claim Is Anticipated Under § 102(a) by Shi ’429 (Ex. 1002) .................................................................................... 11
B. Ground 2: The Claim Is Obvious Under § 103(a) Over Shi ’429 (Ex. 1002) ............................................................................................ 13
C. Ground 3: The Claim Is Anticipated Under § 102(a) by Shi ’889 (Ex. 1004) .................................................................................... 15
D. Ground 4: The Claim Is Obvious Under § 103(a) Over Shi ’889 (Ex. 1004) ............................................................................................ 17
E. Ground 5: The Claim Is Anticipated Under § 102(a) by Lu ’763 (Ex. 1006) ............................................................................................ 18
F. Ground 6: The Claim Is Obvious Under § 103(a) Over Lu ’763 (Ex. 1006) ............................................................................................ 21
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G. Ground 7: The Claim Is Anticipated Under § 102(b) by Shi ’547 (Ex. 1008) .................................................................................... 21
H. Ground 8: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) ............................................................................................ 24
I. Ground 9: The Claim Is Anticipated Under § 102(b) by Shi ’269 (Ex. 1010) .................................................................................... 25
J. Ground 10: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) .................................................................................... 27
K. Ground 11: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) in View of Perkins ’654 (Ex. 1014) .......................... 29
L. Ground 12: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) in View of Shi ’110 (Ex. 1015) ................................ 32
M. Ground 13: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) in View of Perkins ’654 (Ex. 1014) .......................... 35
N. Ground 14: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) in View of Shi ’110 (Ex. 1015) ................................ 38
X. Conclusion ..................................................................................................... 41
Appendix - List of Exhibits Certificate of Service
- iii -
Table of Authorities
Page(s) FEDERAL CASES
Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) ............................................................................ 9
Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002) ............................................................................ 6
Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) ..................................................................... passim
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) .......................................................................... 6, 8
In re Borden, 90 F.3d 1570 (Fed. Cir. 1996) .............................................................................. 9
In re Carter, 673 F.2d 1378 (C.C.P.A. 1982) .................................................................... 14, 26
In re Lamb, 286 F.2d 610 (C.C.P.A. 1961) .....................................................................passim
In re Nalbandian, 661 F.2d 1214, (C.C.P.A. 1981) ........................................................................... 9
In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) .............................................................................. 9
In re Stevens, 173 F.2d 1015 (C.C.P.A. 1949) .................................................................. passim
International Seaway Trading Copr. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) ...................................................................passim
KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................................................................ 10
Titan Titan Tire Corp. v. Goodyear Tire & Rubber Co, 566 F.3d 1372 (Fed. Cir. 2009) .......................................................................... 10
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FEDERAL STATUTES
35 U.S.C. § 102 .................................................................................................passim
35 U.S.C. § 103 .................................................................................................passim
Leahy-Smith America Invents Act Technical Corrections, Pub. L. No. 112-274, § 1(d)(1), 126 Stat. 2456 (2013) ........................................ 2
FEDERAL REGULATIONS
37 C.F.R. § 1.152 ....................................................................................................... 6
37 C.F.R. § 1.104 ....................................................................................................... 7
37 C.F.R. § 42.8 ......................................................................................................... 1
37 C.F.R. § 42.15 ....................................................................................................... 2
37 C.F.R. § 42.100 ..................................................................................................... 6
37 C.F.R. § 42.103 ..................................................................................................... 2
37 C.F.R. § 42.104 ..................................................................................................... 2
1
I. Introduction
Sensio Inc. (“Petitioner”) requests inter partes review of the claim of U.S.
Design Patent No. D675,864 (“the ’864 patent”) (Ex. 1021), assigned on its face to
Select Brands, Inc. (“Patent Owner”). This Petition shows by a preponderance of
the evidence that there is a reasonable likelihood that Petitioner will prevail on the
’864 patent based on prior art that anticipates or makes obvious the ’864 patent.
The ’864 patent should be found unpatentable and canceled.
II. Mandatory Notices Under 37 C.F.R. § 42.8
Real Party-in-Interest: Sensio Inc. is the real party-in-interest.
Related Matters: The Patent Owner has sued Petitioner, alleging
infringement of the ’864 patent. Select Brands, Inc. v. Sensio, Inc., 13-cv-2018
KHV/GLR (D. Ka). The ’864 patent claims priority to the filing date of U.S.
Design Patent No. D669,731 (“the ’731 patent”) (Ex. 1001).1
Lead and Back-Up Counsel and Service Information:
Lead Counsel Back-Up Counsel Kathleen A. Daley (Reg. No. 36,116) Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4098 Facsimile: 202-408-4400
Elizabeth D. Ferrill (Reg. No. 58,415) Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4445 Facsimile: 202-408-4400
1 A petition for inter partes review has also been filed on the ’731 patent.
2
E-mail: [email protected]; [email protected]
E-mail: [email protected]; [email protected]
III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103
The required fees are submitted herewith. If any additional fees are due at
any time during this proceeding, the Office is authorized to charge such fees to
Deposit Account No. 06-0916.
IV. Grounds for Standing
Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’864 patent is
available for inter partes review, and Petitioner is not barred or estopped from
requesting inter partes review of the ’864 patent on the grounds identified.2
V. Identification of Challenge
Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests inter partes review
based on the following prior art that was not cited during prosecution:
2 Although the ’864 patent issued on February 12, 2013, it is available for inter
partes review. See Leahy-Smith America Invents Act Technical Corrections, Pub.
L. No. 112-274, § 1(d)(1), 126 Stat. 2456 (2013).
3
Exhibit Description Publication/ Issue Date
Ex. 1002 CN 101695429 A to Shi et al. (“Shi ’429”) Apr. 21, 2010
Ex. 1003 Certified English Translation of Shi ’429
Ex. 1004 Chinese Design Registration CN301282889 to Shi (“Shi ’889”)
July 14, 2010
Ex. 1005 Certified English Translation of Shi ’889
Ex. 1006 Chinese Design Registration CN301383763 to Lu (“Lu ’763”)
Nov. 17, 2010
Ex. 1007 Certified English Translation of Lu ’763
Ex. 1008 Chinese Design Registration CN301010547 to Shi (“Shi ’547”)
Sept. 16, 2009
Ex. 1009 Certified English Translation of Shi ’547
Ex. 1010 CN 101564269 A to Shi (“Shi ’269”) Oct. 28, 2009
Ex. 1011 Certified English Translation of Shi ’269
Ex. 1012 Reserved
Ex. 1013 Reserved
Ex. 1014 U.S. Design Patent No. D590,654 to Perkins (“Perkins ’654”), filed Dec. 8, 2008
Apr. 21, 2009
Ex. 1015 CN 101862110 to Shi et al. (“Shi ’110”) Oct. 20, 2010
Ex. 1016 Certified English Translation of Shi ’110
Petitioner requests inter partes review based on the following grounds:
Ground Description 1 Anticipated under § 102(a) by Shi ’429 (Ex. 1002)
2 Obvious under § 103(a) over Shi ’429 (Ex. 1002)
3 Anticipated under § 102(a) by Shi ’889 (Ex. 1004)
4 Obvious under § 103(a) over Shi ’889 (Ex. 1004)
5 Anticipated under § 102(a) by Lu ’763 (Ex. 1006)
6 Obvious under § 103(a) over Lu ’763 (Ex. 1006)
7 Anticipated under § 102(b) by Shi ’547 (Ex. 1008)
8 Obvious under § 103(a) over Shi ’547 (Ex. 1008)
9 Anticipated under § 102(b) by Shi ’269 (Ex. 1010)
4
Ground Description 10 Obvious under § 103(a) over Shi ’269 (Ex. 1010)
11 Obvious under § 103(a) over Shi ’547 (Ex. 1008) in view of Perkins ’654 (Ex. 1014)
12 Obvious under § 103(a) over Shi ’547 (Ex. 1008) in view of Shi ’110 (Ex. 1015)
13 Obvious under § 103(a) over Shi ’269 (Ex. 1010) in view of Perkins ’654 (Ex. 1014)
14 Obvious under § 103(a) over Shi ’269 (Ex. 1010) in view of Shi ’110 (Ex. 1015)
Section VII explains how the claim should be construed and Section IX
explains how each claim element is found in the prior art.
VI. Background
The application for the ’864 patent was filed on August 8, 2012,3 and is
entitled “Multiple Crock Buffet Server.” The application contained a single claim
and seven figures and claimed priority to the then-pending U.S. Patent Application
No. 29/383,204, filed on January 13, 2011. The application was allowed on
October 19, 2012. At no point did applicants submit an Information Disclosure
Statement. The ’864 patent issued on February 12, 2013. On May 8, 2013,
Applicants submitted a request for Certificate of Correction with replacement
drawings figures 1 to 7, submitting that “[t]he drawing sheets from the issued
3 Because the application for the ’864 patent was filed prior to the effective date of
the America Invents Act (“AIA”), the pre-AIA statutes apply here.
5
patent all include figures and text with blurred lines that make the depicted design
difficult to view.” (May 8, 2013 Request for Certificate of Correction.) That same
day, the PTO issued a Certificate of Correction. (Ex. 1023.)
The day the ’864 patent issued, as a prelude to litigation, the Patent Owner
sent a letter to counsel for the Petitioner identifying the ’864 patent, which the
Patent Owner said is “directed to a multiple crock buffet server,” and asserting that
the Petitioner’s products infringe the ’864 patent. (Ex. 1018.) In that letter, the
Patent Owner identified nineteen of Petitioner’s Bella brand slow cooker model
numbers, that, according to the Patent Owner, have “features that appear to be
identical to those disclosed and claimed in the D’864 patent.” (Id.) Of the
nineteen different model numbers identified as being identical to the claimed
design, seven models contain round bowl inserts in the buffet server. (Ex. 1022.)
The Patent Owner subsequently filed suit against Petitioner in the U.S. District
Court for the District of Kansas, alleging that the Petitioner infringes the ’864
patent, and the related ’731 patent, by making and selling “multiple crock servers
that infringe upon the designs of and embody the subject matter claimed.” (Ex.
1020 at 2.) The Patent Owner included its February 12, 2012 letter (Ex. 1018)
with the complaint.
6
VII. Claim Construction
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). The scope of the ’864 patent is defined by the solid lines
depicted of the replacement figures 1-7 of the patent, submitted with the Certificate
of Correction, in conjunction with their descriptions. See, e.g., Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (citing 37 C.F.R. § 1.152);
see also Contessa Food Prods, Inc. v. Conagra, Inc., 282 F.3d 1370, 1378 (Fed.
Cir. 2002). “Given the recognized difficulties entailed in trying to describe a
design in words, the preferable course ordinarily will be [to not] attempt to
‘construe’ a design patent claim by providing a detailed verbal description of the
claimed design.” Egyptian Goddess, 543 F.3d at 679. But, the Federal Circuit said
that it would be “helpful to point out . . . various features of the claimed design as
they relate to the . . . prior art.” Id. at 680.
According to the specification, the figures 1-7 cover “a multiple crock buffet
server.” (’864 at description of figure 1.) The specification affirmatively
disclaims: the heated server base unit housing; server control knobs; insert lids
received by the bowl inserts; liners that receive the bowl inserts; outer handle
surfaces of each bowl insert; and the radial groove (i.e., spoon-rest notch) of each
bowl insert. (’864 specification, see also figures 1-7.)
7
As annotated below, figures 1 to 7 (reproduced from the Certificate of
Correction, Ex. 1025) depict a portion of three curved bowl-insert rims, having a
particular profile:
Fig. 1 (front perspective view)
Fig. 3 (top view)
Fig. 4 (enlarged
front view)
The claimed design does not include the outer handles or the “notch” for
resting a spoon.
While the figure description refer to “oval” lids and “oval” liners, the Patent
Owner, in its pre-filing letter to Petitioner, asserted that seven different models of
buffet servers each having round server bowls infringe the ’864 patent and have
features that are “identical” to those disclosed and claimed in the ’864 patent. (Ex.
1018.) In other words, the Patent Owner has clearly construed the ’864 patent as
covering slow cookers with both round and oval server bowls. This constitutes an
admission by the Patent Owner regarding the scope and thus patentability of the
’864 patent. The PTO can, and Petitioner submits should, use such this admission
by the Patent Owner in determining patentability. See 37 C.F.R. § 1.104(c)(3).
8
As a result, under the broadest reasonable construction, the claimed design
of the ’864 patent covers portions of the curved rim of three bowl inserts (not
including those portions of the rim containing the outer handles or the notch), as
shown above. Stated more specifically, the claim covers: (1) portions of the
curved rims of three bowl inserts; and (2) rims having the profile shown below, in
which the side of the rim slightly protrudes on the top (dot-dash line), with a
rounded top edge (larger dashed circle) and a less rounded bottom edge (smaller
dashed circle).
VIII. The Applicable Legal Standards
A. Anticipation
The ordinary observer test is the sole test for determining anticipation of a
design patent under 35 U.S.C. § 102. Int’l Seaway Trading Copr. v. Walgreens
Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009). This test considers whether an
ordinary observer, familiar with the prior art, would be deceived into believing
9
that, taken as a whole, the prior art reference and the claimed design are the same.
Egyptian Goddess, 534 F.3d at 675, 681.
B. Obviousness
“In the design patent context, 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.” Durling v. Spectrum Furniture
Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citing In re Rosen, 673 F.2d 388, 390
(C.C.P.A. 1982)); see also Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329
(Fed. Cir. 2012). This inquiry “focuses on the visual impression of the claimed
design as a whole and not on selected individual features.” In re Borden, 90 F.3d
1570, 1574 (Fed. Cir. 1996). In this case, the designer of ordinary skill would be
someone with background and training in the design of small kitchen appliances,
who is presumed to have knowledge of the prior art slow cookers. See In re
Nalbandian, 661 F.2d 1214, 1215-16 (C.C.P.A. 1981).
Next, the Federal Circuit uses a two-step obviousness determination process
for design patents. See Apple, 678 F.3d at 1329-31. First, “one must find a single
reference, ‘a something in existence, the design characteristics of which are
basically the same as the claimed design.’” Durling, 101 F.3d at 103. Second,
“other references may be used to modify [the primary reference] to create a design
that has the same overall visual appearance as the claimed design.” Id. The
10
secondary references may be used to modify the primary reference if the two are
“so related to the primary reference that the appearance of certain ornamental
features in one would suggest that application of those features to the other.”
Borden, 90 F.3d at 1575.
The hypothetical reference, created through the combination of the primary
and secondary references, and the claimed design are then analyzed using the
ordinary observer test. Int’l Seaway, 589 F.3d at 1241. The touchstone is the
similarity of overall appearance; small differences are inconsequential. “[T]he
mere fact that there are differences over the prior art structures is not alone
sufficient to justify a holding that the design is patentable.” In re Lamb, 286 F.2d
610, 611 (C.C.P.A. 1961); see also KSR International Co. v. Teleflex, Inc., 550
U.S. 398, 401 (2007) (stating that “a combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield predictable
results”); Titan Titan Tire Corp. v. Goodyear Tire & Rubber Co, 566 F.3d 1372,
1385 (Fed. Cir. 2009) (stating that “it is not obvious that the Supreme Court
necessarily intended to exclude design patents from the reach of KSR”).
IX. Detailed Explanation of Grounds for Unpatentability Under the Broadest Reasonable Construction
This Petition explains that the ’864 patent is invalid on multiple grounds.
The references presented by Petitioner provide visual disclosures that were not
considered by the Office during prosecution. The references and grounds are also
11
not cumulative 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 the Petitioner will prevail.
A. Ground 1: The Claim Is Anticipated Under § 102(a) by Shi ’429 (Ex. 1002)
Shi ’429 discloses the same overall visual impression as the claimed design,
and, as result, the claim is anticipated by Shi ’429 under 35 U.S.C. § 102(a). (Ex.
1002 at 6-8.) Shi ’429 is a Chinese utility patent application, filed on October 10,
2009 and published on April 21, 2010, prior to the priority date of the ’864 patent.
(Ex. 1003 at 1.) Therefore, Shi ’429 is a prior art printed publication under 35
U.S.C. § 102(a).
Shi ’429 has virtually an identical overall visual appearance to the ’864
patent:
12
Shi ’429 ’864
As shown below, Shi ’429 discloses the same three curved rims and the
same rim profile as the claim:
13
Shi ’429 with Figure 3 of the ’864 Patent Overlaid (in white)
When considered in the context of the ordinary observer test, an ordinary
observer familiar with the relevant prior art (see, e.g., Exs. 1002-1015) would be
deceived into believing that, taken as a whole, Shi ’429 is the same as the claimed
design. Thus, the claim is anticipated under 35 U.S.C. § 102(a) and the Petitioner
has established a reasonable likelihood that it will prevail on this ground of
rejection.
B. Ground 2: The Claim Is Obvious Under § 103(a) Over Shi ’429 (Ex. 1002)
In the alternative, Shi ’429 discloses the same overall visual impression as
the claimed design and, in view of the common knowledge of a designer having
ordinary skill in the art, any differences are de minimus and not sufficient to justify
a finding that the design is patentable. As a result, the claim is obvious under 35
14
U.S.C. § 103(a) over Shi ’429.
Shi ’429 is a suitable primary reference, because Shi ’429 discloses a slow
cooker with “basically the same design characteristics” as the claimed design.
Durling, 101 F.3d at 103. Indeed, Shi ’429 is so similar to the claimed design, that
no secondary reference is necessary.
To the extent that there are viewed to be any disclosure not plainly evident
from Shi ’429 (e.g., incomplete side view of figure 2 or any minor differences in
proportion of the curved rims), Shi ’429 readily suggests to these minor alterations
to one of ordinary skill 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”). Finally, considering this hypothetical Shi ’429 reference, the ordinary
observer would be deceived into believing that the hypothetical Shi ’429 is the
same as the claimed design. Int’l Seaway, 589 F.3d at 1240-41. Application of
such ordinary skill does not make the claimed design patentable over Shi ’429.
Stevens, 173 F.2d at 1015-16.
Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi ’429, and
the Petitioner has established a reasonable likelihood that it will prevail on this
ground of rejection.
15
C. Ground 3: The Claim Is Anticipated Under § 102(a) by Shi ’889 (Ex. 1004)
Shi ’889 discloses the same overall visual impression as the claimed design,
and, as a result, the claim is anticipated by Shi ’889 under 35 U.S.C. § 102(a). (Ex.
1003.) Shi ’889 is a Chinese design registration, filed on October 10, 2009 and
published on July 14, 2010, prior to the priority date of the ’864 patent. (Ex. 1004
at 1.) Therefore, Shi ’889 is a prior art printed publication under 35 U.S.C.
§ 102(a). Shi ’889 appears to be the companion design registration to Shi ’429
(Ex. 1002). Although similar to Shi ’429, because Shi ’889 discloses all six views
of the design, it is not cumulative of Shi ’429.
Shi ’889 has virtually an identical overall visual appearance to the ’864
patent:
16
Shi ’889 ’864
As shown below, Shi ’889 discloses the same portions of three curved rims
and the same rim profile as the claimed design:
Shi ’889 (in gray) with Figure 3 of the ’864 Patent Overlaid (in black)
17
When considered in the context of the ordinary observer test, an ordinary
observer familiar with the relevant prior art (see, e.g., Exs. 1002-1015), would be
deceived into believing that, taken as a whole, Shi ’889 is the claimed design.
Indeed, even minor variations between the claimed design and Shi ’889 does not
preclude a finding of anticipation because these variations, if any, do not change
the overall visual impression of the products at issue. Int’l Seaway, 589 F.3d at
1243. Thus, the claim is anticipated under 35 U.S.C. § 102(a), and the Petitioner
has established a reasonable likelihood that it will prevail on this ground of
rejection.
D. Ground 4: The Claim Is Obvious Under § 103(a) Over Shi ’889 (Ex. 1004)
To the extent that any minor differences are alleged between Shi ’889 and
the claimed design defeating anticipation under § 102(a), Shi ’889 discloses the
same overall visual impression as the claim and in view of the common knowledge
of a designer having ordinary skill in the art, any differences are de minimus and
not sufficient to justify a finding that the design is patentable under § 103(a). Shi
’889 is a suitable primary reference, because Shi ’889 discloses a slow cooker with
“basically the same design characteristics” as the claimed design. Durling, 101
F.3d at 103. Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi
’889, and the Petitioner has established a reasonable likelihood that it will prevail
on this proposed ground of rejection.
18
E. Ground 5: The Claim Is Anticipated Under § 102(a) by Lu ’763 (Ex. 1006)
Lu ’763 discloses the same overall visual impression as the claimed design
and, as result, the claim is anticipated by Lu ’763 under 35 U.S.C. § 102(a). (Ex.
1006.) Lu ’763 is a Chinese design registration, filed on June 23, 2010 and
published on November 17, 2010, prior to the priority date of the ’864 patent. (Ex.
1007 at 1.) Therefore, Lu ’763 is a prior art printed publication under 35 U.S.C.
§ 102(a). Because the disclosure of Lu ’763 is not the same as the other references
cited herein, it is not cumulative.
Focusing on portions of the design claimed in the ’864 patent, Lu ’763 has
virtually an identical overall visual appearance:
19
Lu ’763 ’864
Lu ’763 has a similar thick rim profile with rounded edges to the claimed
design. As shown below, Lu ’763 also discloses the same portions of the three
curved rims as the claimed design:
20
Lu ’763 (in gray) with Figure 3 of the ’864 Patent Overlaid (in black)
When considered in the context of the ordinary observer test, an ordinary
observer familiar with the relevant prior art (see, e.g., Exs. 1002-1016), would be
deceived into believing that, taken as a whole, Lu ’763 is the same as the claimed
design. Even minor variations between the claimed design and Lu ’763 does not
preclude a finding of anticipation because these variations, if any, do not change
the overall visual impression of the products at issue. Int’l Seaway, 589 F.3d at
1243. Thus, the claim is anticipated under 35 U.S.C. § 102(a) and the Petitioner
has established a reasonable likelihood that it will prevail on this proposed ground
of rejection.
21
F. Ground 6: The Claim Is Obvious Under § 103(a) Over Lu ’763 (Ex. 1006)
To the extent that any minor differences are alleged between Lu ’763 and the
claimed design defeating anticipation under § 102(a), Lu ’763 discloses the same
overall visual impression as the claim and, in view of the common knowledge of a
designer having ordinary skill in the art, any differences are de minimus and not
sufficient to justify a finding that the design is patentable under § 103(a). Lu ’763
is a suitable primary reference, because Lu ’763 discloses a slow cooker with
“basically the same design characteristics” as the claimed design. Durling, 101
F.3d at 103. Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Lu ’763
and, the Petitioner has established a reasonable likelihood that it will prevail on
this proposed ground of rejection.
G. Ground 7: The Claim Is Anticipated Under § 102(b) by Shi ’547 (Ex. 1008)
Shi ’547 discloses the same overall visual impression as the claimed design
and, as result, the claim is anticipated by Shi ’547 under 35 U.S.C. § 102(b). (Ex.
1008.) Shi ’547 is a Chinese design registration, filed on May 7, 2008 and
published on September 16, 2009, more than a year before the priority date of the
’864 patent. (Ex. 1009 at 1.) Therefore, Shi ’547 is a prior art printed publication
under 35 U.S.C. § 102(b). Because the disclosure of Shi ’547 is not the same as
the other references cited herein, it is not cumulative.
22
As discussed above, in a February 12, 2013 letter to the Petitioner asserting
infringement, the Patent Owner alleged that seven different slow cooker models,
all with round serving bowls, “appear to be identical” to the slow cooker products
“disclosed and claimed in the D’864 patent.” (Ex. 1018.) Over three months
earlier, the Patent Owner had made the same infringement allegations, asserting
that seven different slow cooker models with round serving bowls “have features
appear to be identical to those disclosed and claimed in the D’731.” (Ex. 1017.)
To make such an such infringement allegation, the Patent Owner’s position had to
be that an ordinary observer observing a buffet server with round serving bowls
would be deceived into thinking that it was the same as the patented design.
Presumably the Patent Owner gave the accused designs more attention than an
ordinary observer when saying that they are “identical” to and infringe the ’864
patent. The PTO should not ignore this admission by the Patent Owner that the
’864 patent covers buffet servers with curved server bowls, including round bowls,
and that an ordinary observer would be deceived into thinking that a buffet server
with round server bowls is the same as the claimed design.
Focusing on portions of the design claimed of the ’864 patent, and as
confirmed by the Patent Owner’s admission, Shi ’547 has virtually an identical
overall visual appearance:
23
Shi ’547 ’864
Shi ’547 also discloses a very similar rim profile with rounded edges as the
’864 patent. Further, Shi ’547 discloses the same portions of the three curved rims:
Shi ’547 (in gray) with Figure 3 of the ’864 Patent Overlaid (in black)
When considered in the context of the ordinary observer test, it is clear that
an ordinary observer familiar with the relevant prior art (see, e.g., Exs. 1002-1015),
24
would be deceived into believing that, taken as a whole, Shi ’547 is the same as the
claimed design. Minor variations between the claimed design and Shi ’547 does
not preclude a finding of anticipation because these variations, if any, do not
change the overall visual impression of the products at issue. Int’l Seaway, 589
F.3d at 1243. And, as discussed above, the Patent Owner’s infringement
allegations amount to an admission that an ordinary observer would be deceived if
there are variations in between the claimed design and a buffet server with round
bowls. Thus, the claim is anticipated under 35 U.S.C. § 102(b), and the Petitioner
has established a reasonable likelihood that it will prevail on this proposed ground
of rejection.
H. Ground 8: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008)
To the extent that any minor differences are alleged between Shi ’547 and
the claimed design defeating anticipation under § 102(a), Shi ’547 discloses the
same overall visual impression as the claimed design and in view of the common
knowledge of a designer having ordinary skill in the art, any differences are de
minimus and not sufficient to justify a finding that the design is patentable under
§ 103(a). Indeed, the Patent Owner’s assertion that a similar buffet server with
round serving bowl is identical to the claimed design and infringes the claimed
design, shows that any differences are de minimus. Shi ’547 is a suitable primary
reference, because Shi ’547 discloses a slow cooker with “basically the same
25
design characteristics” as the claimed design. Durling, 101 F.3d at 103. Thus, the
claim is obvious under 35 U.S.C. § 103(a) based on Shi ’547, and the Petitioner
has established a reasonable likelihood that it will prevail on this proposed ground
of rejection.
I. Ground 9: The Claim Is Anticipated Under § 102(b) by Shi ’269 (Ex. 1010)
Shi ’269 discloses the same overall visual impression as the claimed design
and, as result, the claim is anticipated by Shi ’269 under 35 U.S.C. § 102(b). (Ex.
1010 at 6-7.) Shi ’269 is a public disclosure of a Chinese patent application, filed
on May 7, 2009 and published on October 28, 2009, more than one year prior to
the priority date of the ’864 patent. (Ex. 1011 at 1.) Therefore, Shi ’269 is a prior
art printed publication under 35 U.S.C. § 102(b). Because the disclosure of Shi
’269 is not the same as the other references cited herein, it is not cumulative.
As confirmed by the Patent Owner’s admission that the claimed design
covers curved server bowls (both oval and round), Shi ’269 has virtually an
identical overall visual appearance as the ’864 patent, as shown in the annotated
figures:
26
Shi ’269 ’864
Shi ’269 discloses the same portions of the three curved rims as the claimed
design and has a thick rim profile with a rounded edges, wherein the upper rim
extends protrudes slightly.
27
Shi ’269 with Figure 3 of the ’864 Patent Overlaid (in black)
When considered in the context of the ordinary observer test, it is clear that
an ordinary observer familiar with the relevant prior art (see, e.g., Exs. 1002-1015),
would be deceived into believing that, taken as a whole, Shi ’269 is the same as the
claimed design. Indeed, as discussed above, the Patent Owner’s infringement
allegations amount to an admission that an ordinary observer would be deceived if
there are variations between the claimed design and a buffet server with round
bowls. Thus, the claim is anticipated by Shi ’269 under 35 U.S.C. § 102(b), and the
Petitioner has established a reasonable likelihood that it will prevail on this
proposed ground of rejection.
J. Ground 10: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010)
In the alternative, Shi ’269 discloses the same overall visual impression as
the 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
28
a finding that the design is patentable. Indeed, the Patent Owner’s assertion that a
similar buffet server with round serving bowl is identical to the claimed design and
infringes the claimed design, shows that any differences are de minimus. As a
result, the claim is invalid as obvious under 35 U.S.C. § 103(a) over Shi ’269.
Shi ’269 is a suitable primary reference, because Shi ’269 discloses a slow
cooker with “basically the same design characteristics” as the claimed design,
under its broadest reasonable construction. Durling, 101 F.3d at 103. Indeed, Shi
’269 is so similar to the claimed design, that no secondary reference is necessary.
To the extent that there are viewed to be any disclosure not plainly evident
from Shi ’269 (e.g., incomplete views in figures 2 and 3 or any minor differences
in proportion of portions of the curved rims), Shi ’269 readily suggests to these
minor alternations to one of ordinary skill to arrive at a hypothetical reference. See
Carter, 673 F.2d at 1380; see also Stevens, 173 F.2d at 1015-16. Finally,
considering this hypothetical Shi ’269 reference, the ordinary observer would be
deceived into believing that the hypothetical Shi ’269 is the same as the claimed
design. Int’l Seaway, 589 F.3d at 1240-41. Application of such ordinary skill
does not make the claimed design patentable over Shi ’269. Stevens, 173 F.2d at
1015-1016.
Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi ’269, and
the Petitioner has established a reasonable likelihood that it will prevail on this
29
proposed ground of rejection.
K. Ground 11: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) in View of Perkins ’654 (Ex. 1014)
Shi ’547 in view of Perkins ’654 discloses the same overall visual
impression as the claimed design. Any differences are de minimus and not
sufficient to justify a finding that the design is patentable. As a result, the claim is
invalid as obvious under 35 U.S.C. § 103(a) over Shi ’547 in view of Perkins ’654.
As explained in Section IX.G, Shi ’547 is prior art printed publication under
35 U.S.C. § 102(b). Perkins ’654 is a U.S. Design Patent, filed on Dec. 8, 2009
and published on Apr. 21, 2009, more than one year prior to the prioity date of the
’864 patent. (Ex. 1014 at 1.) Therefore, Perkins ’654 is also a prior art printed
publication under 35 U.S.C. § 102(b).
Shi ’547 is a suitable primary reference, because it discloses a slow cooker
with “basically the same design characteristics” as the claimed design, under its
broadest reasonable construction. Durling, 101 F.3d at 103. Although Petitioner
argues that Shi ’547 needs no secondary reference, if one is necessary, then Perkins
’654 can be used to modify Shi ’547 to create a design possessing the same overall
visual appearance as the claimed design. Id. Perkins ’654 is an appropriate
secondary reference in this instance because it is also a contemporaneous slow
cooker design, making it “so related” to Shi ’547 that Perkins ’654 would suggest
the application of its oval-shaped bowl rims to the set of three round-shaped rims
30
in Shi ’547 to arrive at a hypothetical Shi ’547-Perkins ’654 reference consisting of
three oval-shaped bowl inserts. Moreover, the similarity in rim profile of Shi ’547
and Perkins ’654 would further suggest the modification of Shi ’547 with the oval-
shaped rim of Perkins ’654. Perkins ’654 is not cumulative because, when
combined with Shi ’547, the disclosure of the resulting hypothetical reference is
not the same as any other reference cited herein.
31
Shi ’547
Perkins ’654
’864
Second, considering this Shi ’547-Perkins ’654 reference, the ordinary
observer would be deceived into believing that the Shi ’547-Perkins ’654 is the
same as the claimed design. Int’l Seaway, 589 F.3d at 1240-41. Any remaining
small differences between the Shi ’547-Perkins ’654 reference and the claimed
design are inconsequential and not sufficient to justify a holding that the claimed
32
design is patentable. Lamb, 286 F.2d at 611.
Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi ’547 in
view of Perkins ’654, and the Petitioner has established that there is a reasonable
likelihood that it will prevail on this proposed ground of rejection.
L. Ground 12: The Claim Is Obvious Under § 103(a) Over Shi ’547 (Ex. 1008) in View of Shi ’110 (Ex. 1015)
Shi ’547 in view of Shi ’110 discloses the same overall visual impression as
the claimed design. Any differences are de minimus and not sufficient to justify a
finding that the design is patentable. As a result, the claim is obvious under 35
U.S.C. § 103(a) over Shi ’547 in view of Shi ’110.
As explained in Section IX.H., Shi ’547 is prior art printed publication under
35 U.S.C. § 102(b). Shi ’110 is a Chinese invention patent application, filed on
January 28, 1010 and published on October 20, 2010, before the priority date of the
’864 patent. (Ex. 1015 at 1.) Therefore, Shi ’110 is also prior art printed
publication under 35 U.S.C. § 102(a).
Shi ’547 is a suitable primary reference, because Shi ’547 discloses a slow
cooker with “basically the same design characteristics” as the claimed design,
under its broadest reasonable construction. Durling, 101 F.3d at 103. Although
Petitioner argues that Shi ’547 needs no secondary reference, if one is necessary,
then Shi ’110 can be used to modify Shi ’547 to create a design possessing the
same overall visual appearance as the claimed design. Id. Shi ’110 is an
33
appropriate secondary reference in this instance because it is also a
contemporaneous slow cooker design, making it “so related” to Shi ’547 that Shi
’110 would suggest the application of its oval-shaped bowl insert to the set of three
round-shaped bowls in Shi ’547 to arrive at a hypothetical Shi ’547-Shi ’110
reference consisting of three oval-shaped bowl inserts. Moreover, the similarity in
rim profile of Shi ’547 and Shi ’110 would further suggest the modification of Shi
’547 with the oval-shaped bowl of Shi ’110. The resulting hypothetical reference
is not culmulative because it is not the same as any other reference cited herein.
35
Second, considering this Shi ’547-Shi ’110 reference, the ordinary observer
would be deceived into believing that the Shi ’547-Shi ’110 is the same as the
claimed design. Int’l Seaway, 589 F.3d at 1240-41. Any remaining small
differences between the Shi ’547-Shi ’110 reference and the claimed design are
inconsequential and not sufficient to justify a holding that the claimed design is
patentable. Lamb, 286 F.2d at 611.
Thus, the claim is obvious under 35 U.S.C. § 103(a) based on Shi ’547 in
view of Shi ’110, and the Petitioner has established a reasonable likelihood that it
will prevail on this proposed ground of rejection.
M. Ground 13: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) in View of Perkins ’654 (Ex. 1014)
Shi ’269 in view of Perkins ’654 discloses the same overall visual
impression as the claimed design. Any differences are de minimus and not
sufficient to justify a finding that the design is patentable. As a result, the claim is
obvious under 35 U.S.C. § 103(a) over Shi ’269 in view of Perkins ’654. As
explained in Sections IX.I. and IX.K., Shi ’269 and Perkins ’654 are a prior art
printed publication under 35 U.S.C. § 102(b).
Shi ’269 is a suitable primary reference, because Shi ’269 discloses a slow
cooker with “basically the same design characteristics” as the claimed design,
under its broadest reasonable construction. Durling, 101 F.3d at 103. Although
Petitioner argues that Shi ’269 needs no secondary reference, if one is necessary,
36
then Perkins ’654 can be used to modify Shi ’269 to create a design possessing the
same overall visual appearance as the claimed design. Id. Perkins ’654 is an
appropriate secondary reference in this instance because it is also a
contemporaneous slow cooker design, making it “so related” to Shi ’269 that
Perkins ’654 would suggest the application of its oval-shaped rim to the set of
three round-shaped bowls in Shi ’269 to arrive at a hypothetical Shi ’269-Perkins
’654 reference consisting of three oval-shaped bowls inserts. Moreover, the
similarity in rim profile of Shi ’269 and Perkins ’654 would further suggest the
modification of Shi ’269 with the oval-shaped rim of Perkins ’654. The Shi ’269-
Perkins’654 reference is not cumulative because the disclosure of the hypothetical
reference is not the same as other references cited herein.
37
Shi ’269
Perkins ’654
’864
Second, considering this Shi ’269-Perkins ’654 reference, the ordinary
observer would be deceived into believing that the Shi ’269-Perkins ’654 is the
same as the claimed design. Int’l Seaway, 589 F.3d at 1240-41. Any remaining
38
small differences between the Shi ’269-Perkins ’654 reference and the claimed
design are inconsequential and not sufficient to justify a holding that the claimed
design is patentable. Lamb, 286 F.2d at 611. Thus, the claim is obvious under 35
U.S.C. § 103(a) based on Shi ’269 in view of Perkins ’654, and the Petitioner has
established a reasonable likelihood that it will prevail on this proposed ground of
rejection.
N. Ground 14: The Claim Is Obvious Under § 103(a) Over Shi ’269 (Ex. 1010) in View of Shi ’110 (Ex. 1015)
Shi ’269 in view of Shi ’110 discloses the same overall visual impression as
the claimed design. Any differences are de minimus and not sufficient to justify a
finding that the design is patentable. As a result, the claim is obvious under 35
U.S.C. § 103(a) over Shi ’269 in view of Shi ’110. As explained in Sections IX.I.
and IX.L., Shi ’269 is a prior art printed publication under 35 U.S.C. § 102(b) and
Shi ’110 is prior art printed publication under 35 U.S.C. § 102(a).
Shi ’269 is a suitable primary reference, because Shi ’269 discloses a slow
cooker with “basically the same design characteristics” as the claimed design,
under its broadest reasonable construction. Durling, 101 F.3d at 103. Although
Petitioner argues that Shi ’269 needs no secondary reference, if one is necessary,
then Shi ’110 can be used to modify Shi ’269 to create a design possessing the
same overall visual appearance as the claimed design. Id. Shi ’110 is an
appropriate secondary reference in this instance because it is also a
39
contemporaneous slow cooker design, making it “so related” to Shi ’269 that Shi
’110 would suggest the application of its oval-shaped bowl insert to the set of three
round-shaped bowls in Shi ’269 to arrive at a hypothetical Shi ’269-Shi ’110
reference consisting of three oval-shaped bowl inserts. Moreover, the similarity in
rim profile of Shi ’269 and Shi ’110 would further suggest the modification of Shi
’269 with the oval-shaped bowl of Shi ’110. The resulting hypothetical reference is
not culmulative because it is not the same as any other reference cited herein.
40
Shi ’269
Shi ’110
’864
Second, considering this Shi ’269-Shi ’110 reference, the ordinary observer
would be deceived into believing that the Shi ’269-Shi ’110 is the same as the
claimed design. Int’l Seaway, 589 F.3d at 1240-41. Any remaining small
Appendix - List of Exhibits
Exhibit No.
Description
Ex. 1001 U.S. Design Patent No. D669,731 to Endres et al.
Ex. 1002 CN 101695429 A to Shi et al.
Ex. 1003 Certified English Translation of Shi ’429
Ex. 1004 Chinese Design Registration CN301282889 to Shi
Ex. 1005 Certified English Translation of Shi ’889
Ex. 1006 Chinese Design Registration CN301383763 to Lu
Ex. 1007 Certified English Translation of Lu ’763
Ex. 1008 Chinese Design Registration CN301010547 to Shi
Ex. 1009 Certified English Translation of Shi ’547
Ex. 1010 CN 101564269 A to Shi
Ex. 1011 Certified English Translation of Shi ’269
Ex. 1012 Reserved
Ex. 1013 Reserved
Ex. 1014 U.S. Design Patent No. D590,654 to Perkins
Ex. 1015 CN 101862110 to Shi et al.
Ex. 1016 Certified English Translation of Shi ’110
Ex. 1017 Letter from S. Brown to E. Manzo, dated October 31, 2012, re: U.S. Design Patent No. D669,731/Sensio Inc.’s Triple Oval Slow Cooker
Ex. 1018 Letter from S. Brown to E. Manzo, dated February 12, 2012, re: U.S. Design Patent No. D675,864/Sensio Inc.’s Triple Oval Slow Cooker
Ex. 1019 Reserved
Ex. 1020 Complaint, Select Brands, Inc. v. Sensio Inc., 13-cv-2108 (D. Kan. filed Mar. 1, 2013)
Ex. 1021 U.S. Design Patent No. D675,864 to Endres et al.
Ex. 1022 Declaration of Lisa Mac Ennis, dated June 28, 2013
Ex. 1023 Certificate of Correction for D675,864