Trials@uspto.

gov Paper 6
571-272-7822 Entered: November 13, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

MACSPORTS, INC.,
Petitioner,

v.

IDEA NUEVO, INC.,

Patent Owner.
____________

Case IPR2018-01006
Patent D752,890 S
____________

Before JOHN C. KERINS, GRACE KARAFFA OBERMANN, and

ROBERT L. KINDER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)
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Patent D752,890 S

I. INTRODUCTION
MacSports, Inc. (“Petitioner” or “MacSports”) filed a Petition to
institute an inter partes review of the claim for a “Foldable Club Chair” in
U.S. Patent No. D752,890 S (“the ’890 patent”). 1 Paper 2 (“Pet.”). Idea
Nuevo, Inc. (“Patent Owner”) did not file a Preliminary Response to the
Petition.
We have authority, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), to
determine whether to institute an inter partes review. Applying the standard
set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable
likelihood that Petitioner would prevail with respect to the challenged claim,
we conclude that the information presented in the Petition does not meet this
standard. Accordingly, we do not institute an inter partes review.
A. Related Proceedings
Petitioner states that it is not aware of any related matters involving
the 890 patent, including that there is no current or prior litigation between
Petitioner and Patent Owner, and that there are no other inter partes reviews
involving the ’890 patent. Pet. 3.
B. The ’890 Patent and Claim
The ’890 patent (Ex. 1001) issued on April 5, 2016. Id. at [10], [45].
The ’890 patent is titled “Foldable Club Chair,” and the claim is directed to
“[t]he ornamental design for a foldable club chair, as shown and described.”
Id. at [54], [57]. The ’890 patent includes seven drawing figures. Figures 2,
3, and 4 are reproduced below, and are illustrative of the claimed ornamental
design:

1
The Petition identifies MacSports, Inc., and Tofasco of America, Inc., as
the real parties-in-interest. Pet. 2.
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Depicted above are Figures 2, 3, and 4 of the ’890 patent, which are front
elevation, rear elevation, and right side elevation views, respectively, of the
claimed foldable club chair.
C. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent that will
not expire before a final written decision is issued shall be given its broadest
reasonable construction in light of the specification of the patent in which it

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appears.” 37 C.F.R. § 42.100(b)(2016). 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)).
Although preferably a design patent claim is not construed by providing a
detailed verbal description, it may be “helpful to point out . . . various
features of the claimed design as they relate to the . . . prior art.” Id. at 679–
80; cf. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314–
15 (Fed. Cir. 2013) (remanding to district court, in part, for a “verbal
description of the claimed design to evoke a visual image consonant with
that design”). When construing a design patent for an article that contains
both functional and ornamental aspects, a patent owner “is entitled to a
design patent whose scope is limited to [the ornamental] aspects alone and
does not extend to any functional elements of the claimed article.”
Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293–94 (Fed. Cir. 2010).
Petitioner posits that “no verbal claim construction is necessary” in
assessing the merits of Petitioner’s asserted grounds of unpatentability. Pet.
8–9. Petitioner does, as the court in Egyptian Goddess suggests can be
helpful, point out various features of the claimed design as they relate to the
prior art. Egyptian Goddess, 543 F.3d at 679–80; Pet. 13–25, 30–41.
Petitioner groups the described features as belonging to “frame related
members,” “curved upper support related members,” and a “cushion
member.” Id. For the purposes of deciding whether to institute based on the
Petition, we accept the descriptions, as far as they go, as accurately
describing the appearance of those aspects as contributing to the overall

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appearance of the claimed chair design. See Pet. 5–8 (Petitioner’s

description of the claimed design).

D. The Alleged Grounds of Unpatentability

Petitioner presents the following exhibits as references asserted to be
germane to the unpatentability of the challenged claim:
Exhibit 1004: referred to by Petitioner as “the CampingWorld.com
Webpages,” and presented as Exhibit A to Exhibit 1003, a declaration of
Christopher Butler of Internet Archive, attesting that the pages of the
attached Exhibit A are true and accurate copies of printouts of the webpages
identified in the footer of the printout; and
Exhibit 1006: referred to by Petitioner as “the CampingWorld.com
360,” and presented as Exhibit A to Exhibit 1005, a declaration of Jeffrey
Geisler of MacSports, attesting that the attached Exhibit A is a collection of
24 images comprising a 360-degree view of Petitioner’s “C932S-100”
product, which was available on the Camping World website “not later than
April 2014.” Ex. 1005 ¶ 5.
We refer hereinafter to Exhibit 1004 as “CampingWorld.com
Webpages,” and to Exhibit 1006 as “Camping World.com 360,” for
consistency with the Petition.
Petitioner contends that the challenged claim is unpatentable on the
following grounds (Pet. 6):

Reference(s) Basis
CampingWorld.com 360 § 102
CampingWorld.com Webpages § 103(a)
CampingWorld.com 360 in combination with § 103(a)

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CampingWorld.com Webpages

Apart from the evidence identified above, as well as the ’890 patent and its
file history (Ex. 1002), no other evidence or testimony accompanies the
Petition.

II. ANALYSIS
A. Principles of Law

1. Anticipation
The “ordinary observer” test for anticipation of a design patent is the
same as that used for infringement, except that for anticipation, the patented
design is compared with the alleged anticipatory reference rather than an
accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d
1233, 1238, 1240 (Fed. Cir. 2009). 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. The ordinary observer test requires the fact finder to consider all
of the ornamental features illustrated in the figures that are visible at any
time in the “normal use” lifetime of the accused product, i.e., “from the
completion of manufacture or assembly until the ultimate destruction, loss,
or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further,
although the ordinary observer test requires consideration of the overall
prior-art and claimed designs,

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[t]he 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. Just as
“minor differences between a patented design and an accused
article’s design cannot, and shall not, prevent a finding of
infringement” so too minor differences cannot prevent a finding
of anticipation.

Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp.,
728 F.2d 1423, 1444 (1984)).
2. 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. Id.
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, 730 F.3d at 1311–12 (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

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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.’”
Durling, 101 F.3d at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed.
Cir. 1996)).
B. The Designer of Ordinary Skill

Petitioner relies on the “prior art record,” consisting of the prior art
cited in the prosecution history of the ’890 patent (Ex. 1002) and in the
Petition (Ex. 1003–1006) as:
generally indicat[ing] that the designer of ordinary skill in the art
would be someone with a background or familiarity with
furniture design and particularly foldable chairs. The prior art
record further reflects that this is not a highly sophisticated area
of design or related technology. The prior art record also reflects
that the designer of ordinary skill would not need to be familiar
with advanced mechanical technology, as the relevant field of
prior art is limited to the ornamental aspects of relatively simple
consumer commodity chairs.
Pet. 28. For purposes of this Decision, we proceed with the understanding
that the designer of ordinary skill is as Petitioner asserts.

C. Anticipation Based on CampingWorld.com 360

A threshold issue concerning CampingWorld.com 360, as is
recognized and addressed by Petitioner, is whether the collection of
24 photographs in Exhibit 1006 is properly treated as a single printed
publication for the purposes of 35 U.S.C. § 102. Pet. 10–12. We understand
the testimony in the Geisler Declaration (Ex. 1005) to be that all 24 of these
images would be presented to, or accessible to, a person viewing Petitioner’s
C932S-100 product on the Camping World website, upon that person’s

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selection of the 360º view icon appearing on, for example, the Camping
World webpage reproduced at page 35 of Exhibit 1004. Ex. 1005 ¶¶ 5–6. 2
That testimony has not been challenged. On this record, therefore, the
collection of 24 images appears to be a collection of webpages that describe
a single product, from a single source, and may properly be regarded as
being a single printed publication. See, e.g., Halliburton Energy Servs., Inc.
v. Dynamic 3D Geosolutions LLC, IPR 2014-01186, 2015 WL 5565065
(PTAB Dec. 15, 2015).
Having determined that CampingWorld.com 360 is a single printed
publication, we turn to consider Petitioner’s assertion that the reference
anticipates the claim of the ’890 patent. The chair depicted in
CampingWorld.com 360 is, as is the chair in the ’890 patent, in the nature of
a folding club chair. Petitioner presents several side-by-side comparative
views of the two chairs, annotating the views with arrows and coloring, and
verbally explaining how a considerable number of the features appearing in
the ’890 claimed design appear in substantially similar form in the chair
design in CampingWorld.com 360. One example, intended to show a
substantially identical appearance of the legs of the frame, appears below:

2
We assume that the last sentence of paragraph 6 of Exhibit 1005 includes a
typographical error in stating that the Exhibit 1006 images were publicly
available “sometime before April 26, 2015,” whereas the intent was to state
“2014” instead of “2015.” This would be consistent with the statements in
paragraphs 4 and 5 preceding paragraph 6. Ex. 1005.

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Illustrated above, on the left, is a Petitioner-annotated version of Figure 2 of

the ’890 patent, which is a front elevation view, and, on the right, a
Petitioner-annotated version of a photograph appearing at page 21 of
CampingWorld.com 360, which is a front, partially perspective, view. Pet.
14. Similar rear views of the chairs are presented below:

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Illustrated above, on the left, is a Petitioner-annotated version of Figure 3 of

the ’890 patent, which is a rear elevation view, and, on the right, a
Petitioner-annotated version of a photograph appearing at page 9 of
CampingWorld.com 360, which is a rear, partially perspective, view. Pet.
14.
Petitioner additionally presents side views of the ’890 patented chair
and the CampingWorld.com 360 chair, as follows:

Illustrated above, on the left, is a Petitioner-annotated version of

Figure 4 of the ’890 patent, which is a side elevation view, and, on the right,
a Petitioner-annotated version of a photograph appearing at page 15 of
CampingWorld.com 360, which is a side, partially perspective, view.
Pet. 23. Petitioner explains that, at times, corresponding features between
the chair designs are colored the same color (see frame members in front and
rear views above) and, in other instances, the same colored arrows are used
to reference specific features. Id. at 13–24.
The Petition addresses many features contributing to the overall
appearance of the two designs, and, after discussing those features,
Petitioner avers that “applying the ordinary observer test, the design claimed

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in the ’890 Patent is substantially identical to the design disclosed by

CampingWorld.com 360.” Pet. 25. Petitioner maintains that
CampingWorld.com 360 “discloses each and every identifiable feature
depicted in the figures of the ’890 patent, as explained [in discussing the
side-by-side drawings].” Id.
There are, however, identifiable features depicted in the drawings
whose appearance clearly differs between the ’890 patent and the
CampingWorld.com 360 chair, and that Petitioner does not take account of
in assessing whether the overall appearances are substantially identical. As
can be seen in the above front views of the chairs, it is readily apparent that
the cushion member in the ’890 patent design is relatively flatter across the
top than is the cushion of the CampingWorld.com 360 chair. In the rear
views, it can readily be seen that the tubular members referred to by
Petitioner as being components of the “curved upper support related
members,” form a flatter upper profile in the ’890 design, whereas in the
CampingWorld.com 360 design, the similar components arch upwardly
forming the appearance of an apex. Because the cushion member is attached
to these tubular members, the greater degree of arch appears to account for
the different appearance at the top of the cushion seen in the front view.
Petitioner additionally does not address the remainder of the contour
of the cushion members or their positioning relative to the “frame related
members” (i.e., legs). As can be seen in the front, and especially the rear,
views reproduced above, the contour at the lower portion of the cushion
member in the ’890 design is broader and flatter than is the cushion member
in the CampingWorld.com 360 design. Again, the bottom portion of the
cushion in the CampingWorld.com 360 design appears to form a downward

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apex in the back view, giving the overview view of the cushion in the back a
distinctive diamond shape. Comparably, the overview view of the cushion,
in the back view (Fig. 3), of the ’890 patent design is rounded at the top and
bottom and more ovular shaped.
The contour and positioning of the cushion members also differs
noticeably, as best seen in the side views reproduced above. In the
’890 patent design, the upright (back) portion of the cushion has a gradual
slope and protrudes rearwardly a considerable distance behind the rear legs.
The upright (back) portion of the CampingWorld.com 360 cushion member
is less sloped and protrudes to only a minor extent behind the rear legs.
Petitioner identifies those portions by green arrows in its side view
comparison of the two designs, but fails to address, much less explain the
impact of, these differences in the anticipation analysis. Pet. 23.
Given that at least these differences in appearance have not been taken
into account in the Petition, 3 in considering the overall appearance of the
two chair designs, Petitioner’s assertions that the designs are substantially
identical and that the ’890 patent is anticipated by CampingWorld.com 360
(Pet. 25) are based on an incomplete consideration of the overall
appearances. In satisfying the requirements of 37 C.F.R. § 42.104(b), a
challenger of a design patent cannot simply ignore the differences in designs
without discussing how those differences would impact the ordinary
observer analysis, if at all. Petitioner, therefore, has not demonstrated a
reasonable likelihood that Petitioner would prevail with respect to the
challenged claim on the asserted ground of anticipation.

3
This discussion does not necessarily represent an exhaustive list of
differences between the designs not accounted for in the Petition.

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D. Obviousness Based on CampingWorld.com Webpages

Not unlike CampingWorld.com 360, Petitioner asserts that the
collection of 68 pages presented in Exhibit 1004, termed the
CampingWorld.com Webpages, are to be regarded as a single printed
publication for the purposes of assessing the alleged obviousness of the
claim in the ’890 patent. Pet. 29. In that, among the 68 pages of the exhibit,
several groups of pages bear different URL-encoded date stamps, we have
some doubt as to the viability of Petitioner’s argument. We need not reach
that issue, however, in deciding the issue of alleged obviousness.
Petitioner relies mainly, if not entirely, on images appearing on
pages 32 and 33 of the CampingWorld.com Webpages in its analysis, and
those two pages, among others, bear identical URL-encoded date stamps,
suggesting that they constitute two web pages that would have been
accessible at the same website as of January 19, 2013. Pet. 29; Ex. 1004,
32–33; Ex. 1003 ¶ 5. Accordingly, for the purpose of deciding this
challenge to the claim of the ’890 patent, pages 32 and 33 of the
CampingWorld.com Webpages, and the images appearing thereon, will be
regarded as being a single publication. See, e.g., Halliburton Energy Servs.,
2015 WL 5565065.
Petitioner asserts that the design represented by images appearing at
pages 32 and 33 of the CampingWorld.com Webpages is, “[i]n the eye of an
ordinary observer, giving such attention as a purchaser usually gives . . .
substantially the same as, if not identical to, that claimed in the ’890 patent,
such that the resemblance would deceive such an observer, inducing him to

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purchase one supposing it to be the other.” Pet. 28–29. 4 Petitioner asserts

that
[t]he CampingWorld.com Webpages disclose a foldable club
chair with “basically the same” design characteristics as the
claimed design, and any differences are de minimis. Durling,
101 F.3d at 103. Because the CampingWorld.com Webpages are
so similar to the design claimed in the ’890 Patent, no secondary
reference is necessary.
Pet. 30.
In support of this position, Petitioner provides a similar analysis to
that presented in the anticipation analysis, including side-by-side
comparisons of the comparable views of the CampingWorld.com Webpages
and the ’890 patent, together with textual descriptions of the alleged similar
features. Id. at 30–41. A first side-by-side comparison is of Figure 1 of the
’890 patent and page 32 of the CampingWorld.com Webpages, reproduced
below:

4
At the outset, Petitioner’s obviousness analysis is flawed because it is
conducted from the perspective of the “ordinary observer” and not from the
perspective of “a designer of ordinary skill who designs articles of the type
involved.” Apple, Inc., 678 F.3d at 1329. The obviousness assertion is
flawed for additional reasons, discussed herein.

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Illustrated above, on the left, is a Petitioner-annotated version of Figure 1 of

the ’890 patent, which is a perspective view, and, on the right, a
Petitioner-annotated version of a photograph appearing at page 32 of the
CampingWorld.com Webpages, which is a traditional perspective view.
Pet. 30–31.
A second side-by-side comparison is of Figure 2 of the ’890 patent
and page 33 of the CampingWorld.com Webpages, reproduced below:

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Illustrated above, on the left, is a Petitioner-annotated version of Figure 2 of

the ’890 patent, which is a front elevation view, and, on the right, a
Petitioner-annotated version of a photograph appearing at page 33 of the
CampingWorld.com Webpages, which is a front, partially perspective, view.
Pet. 31.
No other images or views are relied on by Petitioner. In specifically
discussing features of the curved upper support members to which the
cushion member is attached via fabric panels, Petitioner acknowledges that
features of the back and other side of the chair are not shown in the image on
page 32 of the CampingWorld.com Webpages, but maintains that “it would
have been obvious to continue the same pattern around the chair even if it is
not literally depicted” in that image. Pet. 36–37. Petitioner takes the same
position with respect to identified features of the cushion member. Id. at 39–
40.
Because the front, partially perspective, view at page 33 of the
CampingWorld.com Webpages evidences a general left side-right side

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symmetry about a vertical plane, we believe it to be reasonable to assume

that the portion of the unseen left side of the chair corresponding to what can
be seen of the right side of the chair at page 32, would be essentially a mirror
image of that view. However, it is evident from the page 32 perspective
view that virtually no portion of the rear of the chair can be seen.
Accordingly, it is essentially impossible to ascertain from pages 32 and 33 of
the CampingWorld.com Webpages themselves, the appearance of the rear
portion of the chair. Without that information, it is equally impossible to
determine what differences, if any, exist between the rear of the
CampingWorld.com Webpages chair and the ’890 patent claimed design,
and whether such differences would or would not affect the overall
appearance to the point of rendering the ’890 claimed design nonobvious.
Standing alone, that failure to address the rear portion of the chair, which is
undisputedly a feature of the claimed design, justifies denial of this ground.
Further, we discern a second, independent reason to deny this ground.
In the proposed obviousness ground involving a combination of
CampingWorld.com 360 and CampingWorld.com Webpages, discussed in
greater detail below, Petitioner represents that “the references . . . depict the
exact same product with the exact same product number,” and are “merely
different pictures of the exact same product.” Pet. 41. Assuming this to be
the case, the views illustrating the features of the rear of the
CampingWorld.com Webpages chair can be assumed to be the same as those
shown in at least pages 9 and 15 of Camping World.com 360, discussed
above with respect to the proposed ground of anticipation by
CampingWorld.com 360.

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As discussed in that analysis, there exist at least several differences in

appearance between the ’890 patent claimed design, and the
CampingWorld.com 360 chair design. Petitioner again includes no
discussion as to why these differences “are not sufficient to give rise to
patentability” over the CampingWorld.com Webpages. Pet. 40–41 (citing
MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir.
2014)). Furthermore, Petitioner appropriately recognizes that the
comparison between the claimed design and the prior art design is
considered “through the eyes of a designer of ordinary skill to determine if a
design patent is invalid for obviousness.” Id. at 27 (citing MRC Innovations,
747 F.3d at 1331; High Point Design, 730 F.3d at 1313). Notwithstanding,
Petitioner proffers no evidence as to whether the noted differences in the
visual appearance of the claimed design and the prior art design would have
been of any significance to the designer of ordinary skill in assessing the
overall appearances in an obviousness determination.
Petitioner therefore has not demonstrated a reasonable likelihood that
Petitioner would prevail with respect to the challenged claim on the asserted
ground of obviousness over the CampingWorld.com Webpages.

E. Obviousness Based on CampingWorld.com 360 and

CampingWorld.com Webpages
Petitioner proposes, in the event that:
CampingWorld.com 360 is not accepted as single anticipatory
reference or that the CampingWorld.com Webpages do not
disclose or render obvious any design characteristics found in the
’890 Patent, then it would be obvious to a designer of ordinary
skill in the art to combine CampingWorld.com 360 and the

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CampingWorld.com Webpages to include all of the depictions of

both references into a single hypothetical reference.
Pet. 41.
Petitioner avers that:
The motivation to combine is demonstrated by the fact that the
references are from the same website and depict the exact same
product with the exact same product number. Ex. 1005, pp. 2-3
at ¶¶ 4-5; Ex. 1004, pp. 25, 32-33, 35, 61-62. They are in fact
merely different pictures of the exact same product on the same
website.
Id.
Petitioner continues:
Having combined the references, comparing the hypothetical
reference to the claimed design of the ’890 Patent through the
eyes of a designer of ordinary skill shows that the ’890 Patent is
obvious. As shown above through the series of annotated
depictions of CampingWorld.com 360 and the
CampingWorld.com Webpages, a hypothetical reference of a
combination of CampingWorld.com 360 and the
CampingWorld.com Webpages teaches all claimed features of
the ’890 Patent.
Therefore, considering the CampingWorld.com 360 and the
CampingWorld.com Webpages, a designer of ordinary skill who
designs articles of the type involved would find that the claimed
’890 Patent design as a whole is substantially the same or has
the same overall visual appearance as the design of
CampingWorld.com 360 or the CampingWorld.com Webpages,
alone or in combination.
Id. at 42–43.
Petitioner’s obviousness analysis is fundamentally flawed and
couched in terms of utility obviousness. First, Petitioner does not establish
which of the two references is the primary, or Rosen, reference as required
for design patent obviousness. See High Point Design, 730 F.3d at 1311–12.

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Instead, Petitioner argues that “it would be obvious to a designer of ordinary

skill in the art to combine CampingWorld.com 360 and the
CampingWorld.com Webpages to include all of the depictions of both
references into a single hypothetical reference.” Pet. 41. Petitioner’s
analysis begins to combine references before effectively establishing why
either should qualify as a Rosen reference. As the Federal Circuit explained,
“[b]efore one can begin to combine prior art designs, however, 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. The analysis should not begin to combine features of other
references until after a primary, or Rosen, reference is determined to be a
substantially similar design. See id. (“Once this primary reference is found,
other references may be used to modify it to create a design that has the
same overall visual appearance as the claimed design.”). Petitioner’s
analysis ignore the basic requirement that a designer of ordinary skill in the
art must first consider something “in existence” without modification and
then determine whether the design “in existence” is basically the same as the
claimed design.
Petitioner alleges that the prior art references are of the same product
(Pet. 41–42) and thus it would be obvious “for a reasonable designer to
combine these references . . . to create the design claimed in the
’890 patent.” Id. at 42. Even still, Petitioner does not provide any indication
which features would be combined and which reference, if either, would
serve as the primary reference. The alleged prior art is not the chair itself,
but instead the references depicting the chair.

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Further, our analysis above, directed to the alleged anticipation of the

claimed design over CampingWorld.com 360, and the alleged obviousness
of the claimed design over the CampingWorld.com Webpages alone, address
Petitioner’s assertions in connection with this proposed ground of
unpatentability. Several noticeable differences exist between the visual
appearance of the claimed ’890 design, and either/both of the
CampingWorld.com 360 and CampingWorld.com Webpages chair designs.
Petitioner’s assertions that the designer of ordinary skill would view the
claimed design to be substantially the same as, or to have the same overall
appearance as, the chair design in these prior art references is based on
conclusory attorney argument and lacks evidentiary support. Pet. 41–43.
Petitioner, therefore, has not demonstrated a reasonable likelihood that
Petitioner would prevail with respect to the challenged claim on the asserted
ground of obviousness over a combination of the disclosures of
CampingWorld.com 360 and the CampingWorld.com Webpages.

III. CONCLUSION
We conclude that Petitioner has not demonstrated a reasonable
likelihood of prevailing with respect to its challenge to the patentability of
the ’890 patent claim.
IV. ORDER
For the reasons given, it is
ORDERED that the Petition is denied, and no trial is instituted.

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IPR2018-01006
Patent D752,890 S

PETITIONER:
Ryan W. Koppelman
Christopher TL Douglas
Dana Zottola
ALSTON & BIRD
ryan.koppelman@alston.com
christopher.douglas@alston.com
dana.zottola@alston.com

PATENT OWNER:

Stephen E. Murray
John D. Simmons
PANITCH SCHWARZE BELISARIO & NADEL LLP
smurray@panitchlaw.com
jsimmons@panitchlaw.com

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