Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2016-00816,
Wallenberg, Niro McAndrews LLC, Chicago, IL, argued for
appellant. Also represented by Raymond P. Niro, Jr.
W. Harbin, Meunier Carlin & Curfman, LLC, Atlanta, GA,
argued for appellee. Also represented by Gregory Joseph
Carlin, Walter Hill Levie, III, Warren James Thomas.
Moore, Reyna, and Chen, Circuit Judges.
Enterprises, Inc. appeals the decision of the United States
Patent Trial and Appeal Board finding U.S. Design Patent Nos.
D6O4, 97O and D616, 231 unpatentable as obvious in light of
the prior art. The primary issue on appeal is whether
Kolcraft Enterprises, Inc. antedated the prior art with
evidence of its prior conception, diligence, and reduction to
practice. The Board determined that Kolcraft Enterprises,
Inc. did not. We agree. Accordingly, we affirm.
Enterprises, Inc. ("Kolcraft") is the assignee of
U.S. Design Patent No. D6O4, 97O S ("the '970
patent") and U.S. Design Patent No. D616, 231 S
("the '231 patent"). The '970 and '231
patents are both titled "Exposed Legs for a Play
Yard" and have an effective filing date of November 5,
2004. Each patent has one claim.
'970 patent contains seven figures. Figures 1 and 2 are
48-49. Figure 1 is "a perspective view of exposed legs
for a play yard," and Figure 2 is "a front view of
the design of FIG. 1." J.A. 46, 48-49. The '970
patent also states that "[t]here is no fabric covering
the exposed legs shown in any of FIGS. 1-7." J.A. 46.
The dashed lines do not form part of the claimed design.
See MPEP § 1503.02 (9th ed. 2018).
'231 patent has five figures. Figures 1 and 2 are
provided below. Figure 1 is "a perspective view of a
playard with exposed legs." J.A. 52. Figure 2 is "a
front view of the playard of FIG. 1." Id.
"There is no fabric covering the exposed legs shown in
any of FIGS. 1-5." Id.
March 30, 2016, Graco Children's Products, Inc.
("Graco") filed a petition for inter
partes review ("IPR") challenging the '970
patent. A day later, Graco filed a second IPR petition
challenging the '231 patent. Graco proposed eleven
grounds of unpatentability for each patent, including a
ground for each patent that the claim is obvious in light of
U.S. Design Patent No. D494, 393 assigned to Chen ("Chen
'393"). The United States Patent Trial and Appeal
Board ("Board") ...