Hangzhou Taihe Trading Co. v. EP Family Corp.

• Docket Number: IPR2023-00658,Patent D934,012 S
• Decision Date: 01 September 2023
• Parties: HANGZHOU TAIHE TRADING CO., LTD. & NINGBO LIKEJU TRADING CO., LTD., Petitioner, v. EP FAMILY CORP., Patent Owner.
• Court: Patent Trial and Appeal Board

1

HANGZHOU TAIHE TRADING CO., LTD. & NINGBO LIKEJU TRADING CO., LTD., Petitioner, v. EP FAMILY CORP., Patent Owner.

IPR2023-00658

Patent D934,012 S

United States Patent and Trademark Office, Patent Trial and Appeal Board

September 1, 2023

Before JOSIAH C. COCKS, SCOTT A. DANIELS, and KIMBERL Y McGRAW Administrative Patent Judges.

DECISION GRANTING INSTITUTION OF INTER PARTES REVIEW 35 U.S.C. § 314

DANIELS, Administrative Patent Judge.

I. INTRODUCTION

Hangzhou Taihe Trading Co., LTD. & Ningbo Likeju Trading Co., LTD. ("Hangzhou" or "Petitioner") filed a Petition requesting inter partes review of the sole claim of U.S. Patent No. D934,012 S (Ex. 1001, "the '012 patent"). Paper 3 ("Pet."). EP Family Corp., ("EP" or "Patent Owner") filed a Preliminary Response to the Petition. Paper 7 ("Prelim. Resp.").

Under 35 U.S.C. § 314(a), an inter partes review may not be instituted "unless... there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claim.

A. Real Parties in Interest

Petitioner states that it is the real party in interest. Pet. 57. Patent Owner states that it is the real party in interest. Paper 4.

B. Related Matters

The parties indicate that the '012 patent has been asserted against the defendant in EP Family Corp. v. Changzhou Win Up Time Technology Co., Ltd, et al., Case No. 2:22-cv-04242 (CD. Cal.) ("the infringement action"). Pet. 81; Paper 6.

C. The '012 Patent (Ex. 1001)

Petitioner challenges the design claim in the '012 patent, issued October 26,2021, titled "Table Top," the claim recites "[t]he ornamental design for a table top, as shown and described." Ex. 1001, [54], [57], Figs. 1-23. Selected drawings illustrating the claim for the ornamental design for the table top are reproduced below:

(IMAGE OMITTED)

FIG. 23 Figure 23 is a perspective view of the claimed tabletop "shown in an environment of use." Id. at Description.

In addition to the table legs, we point out that both ends of the claimed table top are illustrated by broken lines, as well as dot-dashed broken lines. The '012 patent describes that "[t]he broken line portions of the tabletop in FIGS. 1 -23 represent portions of the article that form no part of the claim." Id. The '012 patent further describes that "[t]he dot-dash broken lines in FIGS. 1-3, 8-11 [,] 16-18[,] and 23 represent boundary lines and form no part of the claimed design." Id.; see 37 CF.R. § 1.152; see also MPEP § 1503.02, Subsection III ("Unclaimed subject matter may be shown in broken lines for the purpose of illustrating the environment in which the article embodying the design is used. Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof ").

(IMAGE OMITTED)

Figure 16, above, is an annotated perspective view of the claimed table top in eluding a wider portion (yellow) and a narrower portion (pink).^[1] Id.

(IMAGE OMITTED)

FIG. 17 Figure 17, above, is a front view of the table top illustrating the relative proportions of the wider and narrower portions of the table top as they are joined together. Id.

(IMAGE OMITTED)

FIG. 1 Figure 1, above, is a perspective view of just the wider portion of the table top. Id.

(IMAGE OMITTED)

FIG. 9 Figure 9, above, is a perspective view of just the narrower portion of the table top. Id.

(IMAGE OMITTED)

Figure 20, above, is an elevation view of an end of the claimed table top where the wider and narrower portions are joined as in Figures 16,17, and 23.

(IMAGE OMITTED)

FIG. 21 Figure 21, above, is an elevation view of a side of the claimed table top.

D. Prior Art and Asserted Grounds

Petitioner asserts that the claim would have been unpatentable on the following grounds:^[2]

Ground

Claim(s) Challenged

35 U.S.C. §

Reference(s)/Basis

102^[3]

Morgan^[4]

103

Morgan

103

Galant,^[5] Morgan

102

Bordonabe^[6]

103

Bordonabe

103

Galant, Bordonabe

102

Iannaccone^[7]

103

Iannaccone

103

Galant, Iannaccone

II. ANALYSIS

Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e);37C.F.R. § 42.1(d).

A. Anticipation

Notably for design patents, the "ordinary observer" test for anticipation is the same test used for infringement. See Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,1240 (Fed. Cir. 2009) (applying Egyptian Goddess holding to the test for anticipation). The ordinary observer test for design patent infringement was first enunciated by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871), as follows:

[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

Id. at 528. It is important to keep in mind for designs that the "ordinary observer" is not the same as a person of ordinary skill in the art. The ordinary observer is quite often a consumer, or purchaser, considering a product in the ordinary course of business. See Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113,1117 (Fed. Cir. 1998) ("[T]he focus is on the actual product that is presented for purchase, and the ordinary purchaser of that product.") In Egyptian Goddess, the Federal Circuit explained that the ordinary observer is also a person familiar with the prior art designs. Egyptian Goddess v. Swiza, Inc., 543 F.3d 665, 675-78 (Fed. Cir. 2008).

For purposes of determining anticipation, it is necessary to compare all the ornamental features of the claimed design to the prior art under the ordinary observer standard. Int'l Seaway, 589 F.3d at 1243 ("[T]he ordinary observer test requires consideration of the design as a whole.") (citation omitted). For purposes of comparison, the question is whether the claimed design and the prior art are substantially the same: "The mandated overall comparison is a comparison taking into account significant differences between the two designs... minor differences cannot prevent a finding of anticipation." Id.; see also Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294,1303 (Fed. Cir. 2010).

B. Obviousness

In a challenge to a design patent based on obviousness under 35 U.S.C. § 103, the ultimate inquiry is "whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved." Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314,1329 (Fed. Cir. 2012) (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)). This obviousness inquiry consists of two steps. Apple, 678 F.3d at 1329. In the first step, a primary reference (sometimes referred to as a "Rosen reference") must be found, "the design characteristics of which are basically the same as the claimed design." Id. (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)). This first step is itself a two-part inquiry under which "a court must both' (1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates 'basically the same' visual impression.'" High Point Design v. Buyers Direct, Inc., 730 F.3d 1301, 1311-12(Fed. Cir. 2013)(quoting Durling, 101 F.3d at 103).

In the second step, the primary reference may be modified by secondary references "to create a design that has the same overall visual appearance as the claimed design." Id. at 1311. However, the "secondary references may only be used to modify the primary reference if they are' so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.'" Burling, 101 F.3dat 103 (quoting In re Borden, 90 F.3d 1570,1575 (Fed. Cir. 1996)).

When evaluating prior art references for purposes of determining patentability of ornamental designs, the focus must be on actual appearances and specific design characteristics rather than design concepts. In re Harvey, 12 F.3d 1061,1064 (Fed. Cir. 1993); see also Apple, Inc., 678 F.3d at 1332 ("Rather than looking to the 'general concept' of a tablet, the district court should have focused on the distinctive 'visual appearances' of the reference and the claimed design.").

C. The Designer of Ordinary Skill

Petitioner asserts that "a designer of ordinary skill at the time would have been someone with a bachelors in furniture design or an equivalent field or two years of practical experience designing furniture." Pet. 18 (citing Ex. 1002 ¶¶ 33-36). Petitioner adds that "[a] higher level of skill is likely not warranted given the rudimentary nature of using two boards to make a tabletop." Id.

Patent Owner disputes Petitioner's asserted level of skill and disputes that the table top design is "rudimentary," arguing that "a designer of ordinary skill would have a minimum of 10 years of practical experience designing furniture." Prelim. Resp. 15. Patent Owner argues that the claimed table top "design is the result of substantial and sophisticated design ...