UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Man Wah Holdings Limited,

Petitioner

v.

Raffel Systems, LLC,

Patent Owner

Case PGR: Unassigned

Patent No. D821,986

Issued: July 3, 2018

First Named Inventor: Kenneth G. Seidl

Title: Switch

PETITION FOR POST GRANT REVIEW

OF U.S. PATENT NO. D821,986
 CONTENTS

I. MANDATORY NOTICES ................................................................................1

A. Real Parties in Interest ....................................................................................1

B. Related Matters ...............................................................................................1

C. Lead and Back-Up Counsel ............................................................................1

D. Service Information ........................................................................................2

E. Payment of Fees .............................................................................................2

II. GROUNDS FOR STANDING AND IDENTIFICATION OF CHALLENGE 2

A. Standing ..........................................................................................................2

B. Statutory Grounds for Each Claim .................................................................2

III. THE '986 PATENT .........................................................................................4

A. The Subject Matter Of The '986 Patent ..........................................................4

B. The Prosecution Of The '986 Patent ...............................................................7

IV. THE PRIOR ART ............................................................................................8

A. Proposed Primary Reference Raffel_sample .................................................8

1. Raffel_sample Qualifies As Prior Art ....................................................8

2. The Disclosure Of Raffel_sample ........................................................10

B. Proposed Primary Reference Kintec_Solution.............................................11

1. Kintec_Solution Qualifies As Prior Art ...............................................11

2. The Disclosure Of Kintec_Solution .....................................................11

C. Proposed Secondary Reference Hua-Dali ....................................................13

1. Hua-Dali Qualifies As Prior Art ...........................................................13

2. The Disclosure Of Hua-Dali .................................................................13

i
 D. Background Reference CN204315857 (Rectangular Hole) .........................15

1. CN204315857 Qualifies As Prior Art ..................................................15

2. The Disclosure Of CN204315857 ........................................................15

V. DESIGNER HAVING ORDINARY SKILL IN THE ART ...........................16

VI. CLAIM CONSTRUCTION .............................................................................16

VII. THERE IS A REASONABLE LIKELIHOOD THAT THE SOLE CLAIM OF

THE '986 PATENT IS UNPATENTABLE .....................................................19

A. Legal Standard ..............................................................................................19

1. The Primary Reference .........................................................................20

2. Secondary References...........................................................................22

B. Ground 1: The Claim Is Anticipated by Raffel_sample...............................23

C. Ground 2: The Claim Is Rendered Obvious By Kintec_Solution In View

Of Hua-Dali ..................................................................................................24

VIII. CONCLUSION ................................................................................................32

ii
Exhibit List

Exhibit Description

1001 U.S. Patent No. D821,986

1002 Prosecution History of U.S. Patent No. D821,986

1003 Complaint filed for Raffel Systems, LLC v. Man Wah Holdings LTD
Inc et al., Case 2:18-cv-01765 (WIED) on November 8, 2018

1004 Copy of the email and the email attachment received from Raffel by
Man Wah on November 17, 2015 to offer for sale of Raffel’s products

1005 English translation of the email received from Raffel by Man Wah on
November 17, 2015 to offer for sale of Raffel’s products

1006 Copy of European Union Intellectual Property Office Design

Registration number 001863556-0004 on May 13, 2011

1007 Copy of Chinese design patent No. 303948579 published on November

30, 2016

1008 Copy of Chinese patent No. CN 204315857 patented on May 6, 2015

1009 English translation of Chinese patent No. CN 204315857

1010 Linghua Huang Declaration

1011 Professor Mingshao Zhang Declaration

iii
 In accordance with 35 U.S.C. § 321, Petitioner Man Wah Holdings Limited

(“Man Wah”) respectfully requests post grant review (“PGR”) of the sole claim of

U.S. Patent No. D821,986 (“the ’986 Patent”) (Ex. 1001), which is owned by Raffel

Systems, LLC ("Raffel" or "Patent Owner"), and cancel that claim because it is

unpatentable in view of prior sale, prior art patents and printed publications.

I. MANDATORY NOTICES

A. Real Parties in Interest (37 C.F.R. § 42.8(b)(1))

The real party-in-interest, pursuant to 37 C.F.R. § 42.8(b)(1), is Man Wah

Holdings Limited.

B. Related Matters (37 C.F.R. § 42.8(b)(2))

The '986 patent is presently at issue in the action titled Raffel Systems, LLC v.

Man Wah Holdings LTD Inc et al., Case 2:18-cv-01765 (WIED). A copy of the

complaint filed on November 8, 2018 is provided as Exhibit 0003.

C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))

Petitioner provides the following designation of counsel, to which all

correspondence should be addressed.

Lead Counsel Backup Counsel

Shen Wang (Reg. No. 71,847)
ARCH & LAKE LLP
Postal and Hand Delivery Address
203 N LaSalle Street
Suite 2100
Chicago, Illinois 60601
Telephone: (636) 235-5390
Hao Tan (Reg. No. 73,711)
ARCH & LAKE LLP
Postal and Hand Delivery Address
203 N LaSalle Street
Suite 2100
Chicago, Illinois 60601
Telephone: (312) 375-9408

1
 Facsimile: (312) 614-1873 Facsimile: (312) 614-1873
Email: shenwang@archlakelaw.com Email: haotan@archlakelaw.com

D. Service Information (37 C.F.R. § 42.8(b)(4))

Please address all correspondence to the lead and backup counsel above.

E. Payment of Fees (37 C.F.R. § 42.103)

The Office is authorized to charge Deposit Account No. 60-2239 for any

fees required for this Petition, including the fee set forth in 37 C.F.R. § 42.15,

and for any other required fees.

II. GROUNDS FOR STANDING AND IDENTIFICATION OF

CHALLENGE

A. Standing

Petitioner certifies that the ’986 Patent is available for PGR. Petitioner is not

barred or estopped from requesting this PGR.

B. Statutory Grounds for Each Claim

Petitioner requests PGR for ‘986 patent in view of the following references:

1 Certified Raffel’s on sale product description for a power recline and

headrest control. (“Raffel_sample”)
2 European Union Intellectual Property Office Registration No.
001863556-00004. (“Kintec_Solution”)
3 Chinese Patent Office Registration Serial No. 303948579. (“Hua-
Dali”)
4 Chinese patent No. CN 204315857 U. (“CN204315857”)

2
 References 1-4 qualify as prior art under 35 U.S.C. § 102(a) because each of

them was patented, described in a printed publication, or in public use, on sale, or

otherwise available to the public before the effective filing date of the ‘986 patent

on January 31, 2017.

None of the references relied upon in this Petition were before the Examiner

during the prosecution of the '986 patent. Thus, this Petition does not present the

same or substantially the same prior art or arguments presented during the

prosecution of the '986 patent.

Petitioner requests cancellation of the challenged claim under the following

statutory grounds:

Ground 35 U.S.C. References(s)

1 § 102 Raffel_sample

2 § 103 Kintec_Solution In View Of Hua-Dali

Section VII demonstrates, for each of the statutory grounds, that there is a

reasonable likelihood that the Petitioner will prevail. See 35 U.S.C. § 314(a).

Additional explanation and support for each ground is set forth in the expert

declaration of Professor Mingshao Zhang (Exhibit 1011).

3
III. THE '986 PATENT

A. The Subject Matter Of The '986 Patent

The application for the '986 patent was filed on January 31, 2017 and issued

on July 3, 2018. See Ex. 1001. The '986 patent is titled "[s]witch" and claims "[t]he

ornamental design for a switch, as shown and described." Id. The '986 patent incudes

six figures depicting a three-quarter perspective view, a front elevational view, a left

side elevational view, a right side elevational view, a top plan view, and a bottom

plan view of a switch design. Id. These figures are reproduced below:

4
5
Ex. 1001, Figs. 1-6.

It is important to note that what is claimed in the '986 patent is not the entire

switch in above drawings. Per the Description in the '986 patent, "[t]he broken lines

shown in FIGS. 1 through 6 are for the purpose of illustrating environment, and form

no part of the claimed design." Id. at Description. Figure 1 depicts a perspective

view of the switch showing four buttons and a central component, a rectangle hole

and a four-sided rectangular surface with four corners rounded which are drawn in

6
solid line and are claimed. Id. The other portions of the switch that are drawn in

broken lines are not claimed. Id. Figures 2-6 show different angles of the switch. Id.

According to Figures 1-6, portions below the rectangular surface are in broken lines

and thus are not claimed. Id. As shown in Figure 5, the portions inside the

rectangular surface having the similar shape of the rectangular surface are in broken

lines and are not claimed. Id. Two circular holes on the surface are also in broken

lines and are not claimed. Id. In Figure 1 and Figure 5, four buttons and the central

component have outer circles that are in broken lines and are not claimed. Id.

Finally, as shown in Figure 1, portions inside the rectangle hold on the surface are

in broken lines and thus are not claimed. Id.

The sole claim of the '986 patent is discussed in detail in Section VI, Claim

Construction.

B. The Prosecution Of The '986 Patent

None of the prior art references relied upon in this Petition were disclosed by

Raffel or cited by the Examiner during prosecution. See Ex. 1002. When assessing

the patentability of the claimed design, the Examiner never addressed the prior art

relied upon in this Petition. Id. The Examiner accordingly never considered the

arguments or the prior art combinations presented in this Petition. Id.

7
IV. THE PRIOR ART

Raffel filed the patent application for the '986 patent on January 31, 2017.

See Ex. 1001. No earlier priority date is claimed. Id. Thus, the priority date for

the ‘986 patent is January 31, 2017. As discussed below, the prior art references

relied upon in this Petition are either design patents that are patented or published

before January 31, 2017 or the products with description that were offered for

sale at least one year before January 31, 2017.

A. Proposed Primary Reference Raffel_sample

1. Raffel_sample Qualifies As Prior Art

Raffel_sample qualifies as prior art because it was on sale to the public before

the effective filing date of January 31, 2017 for the ‘986 patent. See Ex. 1004, Ex.

1005 and Ex. 1010.

On November 17, 2015, Raffel’s wholly owned subsidiary Xiamen Raffel

communicated an offer via email to sell products to Man Wah. See Ex. 1004. As

stated in the November 17, 2015 email, a document is attached to the email. Id. In

the attached document of the November 17, 2015 email, Raffel_sample is included1.

See Ex. 1010. It is stated in the attached document that “[t]hese documents are

1
Declaration of Linhua Huang certified that Raffel_sample is included in the
attachment on November 17, 2015 email. See Ex. 1010, ¶¶4 and 5.

8
available on www.raffel.com.” See Ex. 1004 The partial images including

Raffel_sample product and the statement are reproduced and annotated below.

Ex. 1004 at Pages 3 and 4.

As shown above, Raffel offers to sell Man Wah Raffel_sample product which

is highlighted in the red box. The offer includes the product description, price and

taxes. See Ex. 1004. Additionally, it is stated in the attached document that “[t]hese

documents are available on www.raffel.com.” Id. No passwords and/or special links

are provided in the attached document for accessing www.raffel.com, thus

www.raffel.com is deemed accessible publicly. Ex. 1011, ¶ 26. Therefore,

9
Raffel_sample is on sale to the public at least on November 17, 2015, which is

fourteen (14) months before the priority date January 31, 2017 for the ‘986 patent.

Id. As such, Raffel_sample qualifies as a prior art for the ‘986 patent.

2. The Disclosure Of Raffel_sample

According to the description in the attached document and email dated

November 17, 2015, Raffel_sample is one product that among a number of products

that Raffel offers to sell to Man Wah. See Ex. 1004. Raffel_sample is a control for

power recline and headrest of a sofa. See Ex. 1004 and Ex. 1005. As shown in the

attached document in the November 17, 2015 email and is reproduced below,

Raffel_sample has four buttons and a central component. See Ex. 1004.

Raffel_sample also has a rectangular hole on the surface used for a universal serial

bus (USB) charging port. Id. The buttons, the central component, the rectangular

hole for USB charging port are all are sitting on a four-sided surface with four

corners rounded. Id. The product is reproduced below.

Ex. 1004 at page 3.

10
 As shown above, four buttons of Raffel_sample have a similar size and shape

and are arranged in a cluster to form a rectangular shape. See Ex. 1004. One central

component is positioned in the middle of the cluster formed by the four buttons and

has a smaller size relative to the size of the four buttons. Id. The Raffel_sample

surface has a rectangular hole that is positioned away from the button group. Id.

B. Proposed Primary Reference Kintec_Solution

1. Kintec_Solution Qualifies As Prior Art

Kintec_Solution qualifies as prior art because it was published and publicly

accessible more than one year before the effective filing date of January 31, 2017

for the ‘986 patent. See Ex. 1006. Kintec_Solution is a design that is registered with

European Union Intellectual Property Office with a registration number 001863556-

00004. Id. Kintec_Solution was published on June 6, 2011 which is more than one

year before the priority date January 31, 2017 for the ‘986 patent. Id.

Kintec_Solution thus qualifies as prior art for the ‘986 patent.

2. The Disclosure Of Kintec_Solution

According to the design class provided, Kintec_Solution is categorized as

“switches.” See Ex. 1006. As shown in the registration images (two images with top

views are reproduced below) in European Union Intellectual Property Office,

Kintec_Solution has four rounded buttons and one circular central component. Id.

The central component is in the middle of the four rounded buttons. Id.

11
Kintec_Solution also has a four-sided surface with four corners round and the four

rounded buttons and the central component are on the surface. Id.

Ex. 1006 at page 1.

As shown above, the four buttons of Kintec_Solution are arranged in cluster

to form a rectangular shape. See Ex. 1006. The central component has a circular

shape and is positioned within the cluster defined by the four buttons. Id. The four

buttons and the central component are all defined within a four-sided surface where

each of the four corners is rounded. Id.

12
 C. Proposed Secondary Reference Hua-Dali

1. Hua-Dali Qualifies As Prior Art

Hua-Dali qualifies as prior art because it was published and publicly

accessible before the effective filing date of January 31, 2017 for the ‘986 patent.

See Ex. 1007. Hua-Dali is a design that is registered with Chinese Patent Office with

a serial number of 303948579. Id. Hua-Dali was published on November 30, 2016

which is earlier than the priority date January 31, 2017 for the ‘986 patent. Id. Hua-

Dali thus qualifies as prior art for the ‘986 patent.

2. The Disclosure Of Hua-Dali

Hua-Dali is titled “[f]our-way button switch.” See Ex. 1007. Under the

description, Hua-Dali is used for “electrical equipment switch.” Id. As shown in

registration images (two images with top views are reproduced below) in Chinese

Patent Office, Hua-Dali has a four-sided surface with four corners rounded. Id. On

the surface, there are four outside components and one circular central component

that is in the middle of the four buttons. Id. On the surface, there is one rectangle

hole that is away from the button group on the surface. Id.

13
Ex. 1007 at pages 2 and 3.

Two top views of Hua-Dali from different angles are shown above. See Ex.

1007. As shown, there is one rectangle hole on the surface of Hua-Dali, and the

rectangular hole is on one side of the button group and is away from the button group.

Id.

14
 D. Background Reference CN204315857 (Rectangular Hole)

1. CN204315857 Qualifies As Prior Art

CN204315857 is a Chinese patent and qualifies as prior art because it was

patented one year before the effective filing date of January 31, 2017 for the ‘986

patent. See Ex. 1008 and Ex. 1009. CN204315857 is a Chinese patent that was

issued on May 6, 2015 having a patent no. CN 204315857 U. Id. The issue date

May 6, 2015 for CN204315857 is more than one year before the priority date January

31, 2017 for the ‘986 patent. Id. Thus, CN204315857 qualifies as a prior art for the

986 patent.

2. The Disclosure Of CN204315857

CN204315857 is directed to a hand-operated switch having a control panel

that includes control buttons used for controlling a sofa. Ex. 1009 at Description. As

described in the Abstract of CN204315857 and shown in Figure 1 of the originally

filed application (reproduced below), CN204315857 has a rectangular hole on the

control panel that can be used for a USB for allowing conveniently charge the mobile

device. See Ex. 1008.

15
Ex. 1008, Fig. 1.

As shown above, the reproduced Figure 1 shows a control panel with the

control buttons 5. See Ex. 1008. In Figure 1, a rectangular hole 6 is shown to be

included in the control panel and can be used for a USB charging port for

“conveniently charging the mobile device.” Id.

V. DESIGNER HAVING ORDINARY SKILL IN THE ART

A Designer Having Ordinary Skill In The Art (DHOSITA) would generally

have had either (i) a degree in Industrial Engineering or Mechanical Engineering

who has taken product design courses or (ii) two years of work experience creating

industrial designs. Ex. 1011, ¶ 20.

VI. CLAIM CONSTRUCTION

In a post grant review, the challenged claim should be construed in accordance

with the ordinary and customary meaning of such claim as understood by one of

16
ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R.

§ 42.100(b). Because of this rule, for the purpose of this post grant review, Petitioner

has employed the ordinary and customary meaning construction of the challenged

claim throughout this Petition.

For purposes of this Petition, Petitioner believes that the following written

description points out the various features comprising the overall appearance of

the design claimed in the '986 patent as they relate to the prior art: (a) a four-sided

surface with four corners rounded; (b) four rounded buttons; (c) a rounded central

component in the middle of the four rounded buttons; and (d) a rectangular hole

away from the four-button group. Ex. 1011, ¶ 38. Petitioner purposefully has not

provided a detailed verbal description, but submits this claim construction because

it may be "helpful to point out . . . various features of the claimed design as they

relate to the . . . prior art." Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,

680 (Fed. Cir. 2008).

As illustrated below in reproduced Fig. 5 below, the ‘986 patent claims a

switch including a four-sided surface with four corners rounded; four rounded

buttons; a rounded central component in the middle of the four rounded buttons;

and a rectangular hole away from the four-button group. Ex. 1011, ¶ 38.

17
Ex. 1001, Fig. 5.

Petitioner addresses each of these four elements below.

(a) A four-sided Surface

As shown above, the claimed switch of the ‘986 patent includes a four-sided

surface with four corners rounded. The four-sided surface has a substantially

rectangular shape. Ex. 1011, ¶ 40. The four corners of the substantially

rectangular shaped surface are all rounded. Id.

(b) Four Rounded Buttons

The claimed switch of the ‘986 patent has four rounded buttons on the four-

sided surface. Ex. 1011, ¶ 41. As shown above, the four rounded buttons are

arranged in a cluster to form a group on the surface in rectangular shape. Id.

18
 (c) A Rounded Central Component

In the middle of the four rounded buttons, the claimed switch of the ‘986

patent has a central component. Ex. 1011, ¶ 42. As shown above, the central

component is rounded in a circular shape. Id. The central component and the

found rounded buttons are closed to each other. Id.

(d) A Rectangular Hole

On one side of the button group, a rectangular hole is included in the claimed

switch of the ‘986 patent. Ex. 1011, ¶ 43. As shown above, the rectangular hole

is on one side of the four-button group and is away from the group. Id.

VII. THERE IS A REASONABLE LIKELIHOOD THAT THE SOLE

CLAIM OF THE '986 PATENT IS UNPATENTABLE

A. Legal Standard

A claim is unpatentable under § 102 if a single prior art reference discloses all

the limitations arranged or combined in the same way as in the claim. Kennametal,

Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). A reference

can anticipate a claim even if it “does not expressly spell out all the limitations

arranged or combined as in the claim, if a person of skill in the art, reading the

reference, would at once envisage the claimed arrangement or combination.” Id.

(internal quotations omitted).

19
 The test for obviousness of a design patent under 35 U.S.C. § 103 is "whether

the claimed design would have been obvious to a designer of ordinary skill who

designs articles of the type involved." Durling, 101 F.3d at 103 (citation omitted). In

assessing obviousness, the Board "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

LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1312 (Fed. Cir. 2013) (internal quotations

omitted) (emphasis added). "[O]ther 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. at 1311.

1. The Primary Reference

It is important to note that the "basically the same" test does not require that

the designs to be identical. Such a requirement would completely eliminate

obviousness as a basis for invalidity because "if the designs were identical, no

obviousness analysis would be required." MRC Innovations, Inc. v. Hunter MFG,

LLP, 747 F.3d 1326, 1333 (Fed. Cir. 2014). Indeed, the Federal Circuit held that

even if a prior art reference were to lack a key feature, it could still constitute a

primary reference. Id. at 1333, n.3 (noting that the V2 jersey reference ,relied upon

as a secondary reference, could also constitute a primary reference even though "the

ornamental surge stitching truly alters the 'overall visual appearance' of the design.").

20
 In MRC, the Federal Circuit cited and discussed certain of its previous

decisions involving notably discernible design differences that were still found to be

de minimis:

See Jore Corp. v. Kouvato, Inc., 117 F. App'x 761, 763 (Fed. Cir. 2005)

(finding prior art drill bit to be a primary reference despite containing a

smooth cylindrical shaft rather than the grooved hexagonal shaft of the

claimed design); In re Nalbandian, 661 F.2d 1214, 1217-18 (CCPA

1981) (finding tweezer design obvious in light of prior art reference that

contained vertical rather than horizontal fluting and straight rather than

curved pincers). Id.

It should also be noted that a single primary prior art reference alone can

render obvious a design patent, if the differences are de minimis. Id. In the

Nalbandian case, the CCPA affirmed a decision of the Patent and Trademark Office

Board of Appeals in which the Board found a design patent to be obvious in view of

a primary reference and certain secondary references. However, the CCPA decided

that "we consider it unnecessary to rely on those [secondary] references" in finding

obviousness. In re Nalbandian, 661 F.2d at 1215. The CCPA found that "[t]he

differences in the finger grips of a slightly different shape and the straight, rather

than slightly curved pincers, are de minimis." Id. at 1217 (emphasis added).

Furthermore, the CCPA found that change from vertical fluting to horizontal

21
fluting (illustrated below) was "well within the skill of an ordinary designer in the

art to make the modification of the fluting and that it would have been obvious to do

so." Id. at 1217-18.

The CCPA was clear that “[s]uch changes do not achieve a patentably distinct

design.” Id. at 1218. The CCPA's decision was cited in the 2014 Federal Circuit

MRC decision as properly decided, noting that Nalbandian decision found the

"tweezer design obvious in light of prior art reference that contained vertical rather

than horizontal fluting and straight rather than curved pincers." MRC, 747 F.3d at

1333.

2. Secondary References

Secondary references may be used to modify the primary reference if the two

are “so related that the appearance of certain ornamental features in one would

suggest the application of those features to the other.” MRC, 747 F.3d at 1334. (Fed.

Cir. 1996) (citations omitted). Note that finding obviousness does not require that

22
the combined prior art references be identical to the design patent. In re Lamb, 286

F.2d 610, 611 (C.C.P.A. 1961) (“[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.”). The test is whether the “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.” High Point Design LLC. v. Buyers Direct, Inc., 730 F.3d

1301, 1311 (Fed. Cir. 2013) (emphasis added).

B. Ground 1: The Claim Is Anticipated by Raffel_sample

Raffel_sample anticipates the ornamental designed claimed in the '986 patent

because it discloses the each and every element of the design claimed in the '986

patent including: (a) a four-sided surface with four corners rounded; (b) four rounded

buttons; (c) a rounded central component in the middle of the four rounded buttons;

and (d) a rectangular hole away from the four-button group. Demonstratives showing

where elements (a), (b), (c) and (d) are located in both Raffel_sample and in the '986

patent are provided in the sections below. Ex. 1011, ¶ 45.

23
Ex. 1001, Fig. 1 and Ex. 1004 at Page 3.

As shown above, each and every element of the design claimed in ‘986 patent

is present in Raffel_sample. Ex. 1011, ¶ 45. Thus, Raffel_sample anticipates the

‘986 patent.

C. Ground 2: The Claim Is Rendered Obvious By Kintec_Solution In

View Of Hua-Dali

1. Kintec_Solution Qualifies As A Primary Reference

Because It Provides “Basically The Same Visual
Impression” As The '986 Patent

Kintec_Solution provides “basically the same visual impression” as the design

claimed in the '986 patent because it discloses the following key elements of the

design claimed in the '986 patent: (a) a four-sided surface with four corners rounded;

(b) four rounded buttons; and (c) a rounded central component in the middle of the

four rounded buttons. Demonstratives showing where elements (a), (b), and (c) are

24
located in both Kintec_Solution and in the '986 patent are provided in the sections

below. Ex. 1011, ¶ 46.

As illustrated below, both Kintec_Solution and the '986 patent depict a

switch with buttons on a surface. Ex. 1011, ¶ 47.

Ex. 1001, Fig. 5 and Ex. 1006 at Page 1.

2. Any Differences Between Kintec_Solution And The '986

Patent Are De Minimis And Would Have Been Obvious To A
DHOSITA

As shown above, the differences between Kintec_Solution and the '986

patent are (1) the ‘986 patent has a rectangular hole on the surface apart from the

four buttons while Kintec_Solution does not have this rectangular hole and (2)

the four rounded buttons of Kintec_Solution have the oval shape and are not as

circular as the rounded buttons depicted in the '986 patent. Ex. 1011, ¶ 48.

25
 However, these slight differences do not alter the fact that Kintec_Solution

"creates basically the same visual impression" as the '986 patent. Id.

It is worth reiterating that the "basically the same" test does not require

that the designs to be identical. Such a requirement would completely eliminate

obviousness as a basis for invalidity because "if the designs were identical, no

obviousness analysis would be required." MRC, 747 F.3d at 1333. Indeed, even

when looking at the design created by the combination of a primary prior art

reference with a secondary prior art reference, "the 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 at 611. The seminal

Nalbandian case and the differences noted in that case between the claimed

design and the single, primary reference relied upon by the C.C.P.A. to find

obviousness are instructive.

In re Nalbandian, 661 F.2d at 1215.

26
 In the Nalbandian case, the C.C.P.A found that "[t]he differences in the

finger grips of a slightly different shape and the straight, rather than slightly

curved pincers, are de minimis." In re Nalbandian, 661 F.2d at 1217 (emphasis

added). In addition, the CCPA found that change from vertical fluting to

horizontal fluting was "well within the skill of an ordinary designer in the art to

make the modification of the vertical grooves and that it would have been obvious

to do so." Id. at 1217-18. Based on these findings, the C.C.P.A. did not even need

to resort to a secondary reference. Id. at 1215.

Similarly, as discussed below, the slight differences between

Kintec_Solution and the '986 patent are de minimis.

a) Adding A Rectangular Hole To The Surface Apart From

Four Buttons Would Have Been De Minimis

The switch of the ‘986 patent shows a rectangular hole on the surface apart

from the four buttons. Adding such a rectangular hole on the surface of

Kintec_Solution would have been a de minimis change that would have been

obvious to a DHOSITA. Ex. 1011, ¶ 49.

A DHOSITA would have known that a rectangular hole on the surface of a

button switch for controlling such as a sofa reclining controller or the like can serve

a functional purpose to provide an opening for a universal serial bus (USB) which

can be used for conveniently charging a mobile device or the like. Ex. 1011, ¶ 50.

27
As disclosed in CN204315857, on a control panel that includes control buttons

used for controlling a sofa, a USB charging opening is included for conveniently

charging a mobile device. See Ex. 1009.

Accordingly, it would have been a de minimis change to add a rectangular

hole on the surface apart from the four buttons to the switch. This would have been

an obvious design modification to a DHOSITA. First, Kintec_Solution has five

openings on the surface including four buttons and the central component, thus,

Kintec_Solution already teaches that one can have an opening on the surface. Ex.

1011, ¶ 51. Second, as discussed in CN204315857, adding a rectangular hole on

the surface of a button switch can provide an USB charging opening that can be

used for conveniently charging a mobile device or the like. Id. Third, adding a

rectangular hole on one side of four-button group has a limited number of design

choices, especially given that four buttons and the central component are close to

each other and one of four sides of the button group can be added with a rectangular

hole. Id.

This fact was well known to DHOSITAs. Id. The difference here involves

merely adding a rectangular hole apart from the four-button group on the surface

of a button switch, especially when a DHOSITA would understand that there are

functional reasons or other immediately apparent and obvious design reasons to

do so. Ex. 1011, ¶ 52. This design change does not alter any existing elements of

28
the original design. Id. Thus, this design change is less than the design changes

found to be de minimis in the Nalbandian case. Ex. 1011, ¶ 53.

b) Varying The Shape Of The Rounded Buttons From

Circular To Oval Is De Minimis

Varying the oval shaped buttons in Kintec_Solution to circular shape

buttons is a de minimis design change that would have been obvious to a

DHOSITA. Ex. 1011, ¶ 54.

A DHOSITA would have found it obvious to alter the oval shaped buttons

of Kintec_Solution to different shapes. Ex. 1011, ¶ 55. Both the oval shaped

button and the circular button are rounded buttons. Id. As such, the circular

rounded button for a switch is a de minimis obvious design variation of

Kintec_Solution. Id. Accordingly, it would have been immediately apparent and

well within the knowledge and skill of a DHOSITA to alter the oval shaped

buttons in Kintec_Solution to arrive the claimed design of the '986 patent. Id.

The difference here involves merely taking existing elements and altering

the shape of the existing elements slightly. Ex. 1011, ¶ 56. The altered design has

a similar ornamental effect as the original design. This design change is far less

significant than the design changes found to be de minimis in the Nalbandian case.

Id.

29
 3. Hua-Dali Teaches Adding The Rectangular Hole To
The Surface Apart From Four Buttons

Kintec_Solution and Hua-Dali are both "so related that the appearance of

certain ornamental features in one would suggest the application of those features

to the other." MRC, 747 F.3d at 1334 (Fed. Cir. 1996) (citations omitted); See Ex.

1006 and Ex. 1007. Kintec_Solution and Hua-Dali both relate to a switch with

buttons. Id. (noting that the secondary references were for the same products as for

the primary reference). Ex. 1011, ¶ 57. Moreover, Kintec_Solution and Hua-Dali

both disclose the ornamental design with a group having four outside components

on a four-sided surface. Id.

Hua-Dali discloses the design of the button switch that has four outside

components, one central component, and a rectangular hole on the surface that is

away from the button group. Ex. 1011, ¶ 58. A comparison of the design of the

'986 patent and Hua-Dali is provided below:

Ex. 1001, Fig. 1; Ex. 1007 at Page 3.

30
 A DHOSITA would have found it obvious to add the rectangular hole on

the surface taught by Hua-Dali in the design of the primary reference

Kintec_Solution. Ex. 1011, ¶ 59. First, Kintec_Solution and Hua-Dali are both

directed to a switch with buttons where four components of the switch are formed

to a group together on a four-sided surface. Id. Second, as discussed above, a

DHOSITA would have known the benefits of adding a rectangular hole for a USB

which can be used for conveniently charging a mobile device or the like, as

discussed in CN204315857. Id. Third, as shown above, Kintec_Solution already

has five openings including four for buttons and one for the central component on

the surface. Id. A DHOSITA would have found it obvious to add a sixth opening

for the rectangular hole on the surface. Id. A DHOSITA would have found it

obvious to add a rectangular hole away from the button group on the surface when

the design of Hua-Dali design is available in front of the DHOSITA. Id. Both the

Hua-Dali design and the Kintec_Solution design are reproduced below.

31
Ex. 1007 at page 2 and Ex. 1006 at page 1.

As shown above, the four buttons and the central component of

Kintec_Solution are grouped together. It would be obvious to add a rectangular

hole in the design of Hua-Dali to Kintec_Solution that is away from the button

group. Ex. 1011, ¶ 60. There are only a limited number of design choices for

adding of the rectangular opening on the surface Kintec_Solution to be away

from the button group. Id. A DHOSITA would have found it obvious to add the

rectangular opening on the surface Kintec_Solution on any one side of the button

group. Id. Thus, it would be obvious for a DHOSITA to add the rectangular hole

on one side of Kintec_Solution on the surface to arrive the ‘986 design with the

teaching of Hua-Dali. Id.

Therefore, Hua-Dali would explicitly teach a DHOSITA to modify

Kintec_Solution to arrive at the claimed design of the '986 patent.

VIII. CONCLUSION

For all of the foregoing reasons, there is at least a reasonable likelihood that

Man Wah will prevail in this challenge to the '986 patent. Therefore, Man Wah

respectfully requests that the Board grant Man Wah’s Petition and institute post

grant review of the '986 patent.

32
Date: January 4, 2019 Respectfully submitted,

/ Shen Wang/
Shen Wang, Reg. No. 71,847
Arch & Lake LLP
203 N LaSalle Street, Suite 2100
Chicago, IL 60601
Tel. No. 636.236.5390
Fax No. 312.614.1873
shenwang@archlakelaw.com

Attorney For Petitioner

33
 CERTIFICATE OF WORD COUNT

I hereby certify that the foregoing Petition for Post Grant Review of U.S.

Patent No. D821,986 includes the following number of words (as calculated by

Microsoft Word), excluding those in the table of contents, table of authorities,

mandatory notices, certificate of service, certificate of word count, and appendix of

exhibits: 5980.

Date: January 4, 2019 Respectfully submitted,

/ Shen Wang/
Shen Wang, Reg. No. 71,847
Arch & Lake LLP
203 N LaSalle Street, Suite 2100
Chicago, IL 60601
Tel. No. 636.236.5390
Fax No. 312.614.1873
shenwang@archlakelaw.com

Attorney For Petitioner

34
 CERTIFICATE OF SERVICE

I hereby certify on January 4, 2019, that a true and correct copy of the Petition

for Post Grant Review of U.S. Patent No. D821,986 was served in its entirety via e-

mail and UPS to the Patent Owner by serving the correspondence address of record

for the ’986 Patent:

TYLER J. SISK
CASIMIR JONES, S.C.
2275 DEMING WAY STE. 310
MIDDLETON, WI 53562

Date: January 4, 2019 Respectfully submitted,

/ Shen Wang /
Shen Wang, Reg. No. 71,847
Arch & Lake LLP
203 N LaSalle Street, Suite 2100
Chicago, IL 60601
Tel. No. 636.236.5390
Fax No. 312.614.1873
shenwang@archlakelaw.com

Attorney For Petitioner

35