Select Brands v. Sensio - MTS Brief

7/27/2019 Select Brands v. Sensio - MTS Brief

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UNITED STATES DISTRICT COURTFOR THE DISTRICT OF KANSAS

SELECT BRANDS, INC.,

Plaintiff,

v.

SENSIO, INC.,

Defendant.

Case No. 13-cv-2108 KHV/GLR

MEMORANDUM IN SUPPORT OF SENSIO INC.S

MOTION TO STAY PENDING INTER PARTES REVIEW

Defendant Sensio Inc. submits this memorandum in support of its Motion requesting the

Court to stay all proceedings in this case while the U.S. Patent & Trademark Office (PTO)

considers whether to institute trial on Sensios separate Petitions for Inter Partes Review of the

two design patents asserted in this case, U.S. Design Patent No. D669,731 (the 731 patent)

and U.S. Design Patent No. D675,864 (the 864 patent) for the reasons stated herein. (Exs. 1

and 2.) The following section provides background to this request and explains why this Courts

precedent favors a stay in a situation like this one.

I. BACKGROUNDSelect Brands filed a complaint on March 1, 2013, alleging that Sensio infringes the 731

and 864 patents both entitled Multiple Crock Buffett Server. (D.I. 1.) Sensio answered on

July 2, 2013, denying infringing and asserting that the 731 and 864 patents are invalid. (D.I.

7.) Discovery has not yet started and a trial date has not been set.

The 731 and 864 patents are design patents, each containing a single claim shown in the

accompanying figures and described in the specification. By convention only the solid lines in

the figures are claimed. As is the practice in design patents, full or solid lines in the figures show

Case 2:13-cv-02108-KHV-GLR Document 15 Filed 08/09/13 Page 1 of 17


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the elements included in the claim. Whereas, the elements depicted in dashed or broken lines are

not claimed. The specifications of the 731 and 864 patents also explain that the elements

depicted in broken lines are for illustrative purposes only and form no part of the claimed design.

The figures of the 731 and 864 patents mostly contain dashed or broken lines, meaning that

most of the features in the figures are not claimed. Looking at one of four embodiments in the

731 patent, removing the broken lines reveals that Select Brands has claimed some curved

portions of a server bowl. Specifically, figures 1-7 show that a portion of a pair of curved bowl

insert rims, having a particular profile are claimed.

Fig. 1(front perspective view)



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Fig. 3

(top view)

Fig. 4(enlarged front view)

Unlike utility patents, a design patent may only have a single claim, although the specification

may include more than one alternative embodiment. See 37 C.F.R. 1.153(a). Such embodiments

may be presented in a single design patent only if they involve a single inventive concept. In re

Rubinfield, 270 F.2d 391, 392-93 (C.C.P.A. 1959). If a design patent contains more than one



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inventive concept, the PTO will ask the applicant to choose a single inventive concept to

maintain in the application, canceling the others. See 35 U.S.C. 121. Accordingly, when

multiple embodiments appear in a single design patent, those embodiments are by definition not

patentably distinct, because they must only involve a single inventive concept. Thus, because

the four separate embodiments in the 731 patent are not patentably distinct,1 Sensio only needs

to show that one of those embodiments is anticipated by or obvious from the prior art to

invalidate the patent. See In re Klein, 987 F.2d 1569, 1570 (Fed. Cir. 1993) (holding that [T]he

single claim covers plural alternative embodiments and [the] rejection is proper if the prior art

demonstrates the obviousness of any one of them).

When the 731 and 864 patents issued, Select Brands sent separate letters to counsel for

Sensio, identifying the patents and alleging infringement of those patents. Specifically, in an

October 31, 2012, letter, Select Brands identified, by model number, fourteen of Sensios Bella

brand slow cooker models and said that these products have features that appear to be identical

to those disclosed and claimed in the D731 patent. (Ex. 3 at Ex. 1017) And on February 12,

2013, Select Brands again sent a similar letter, this time identifying sixteen of Sensios Bella

brand slow cooker models and alleging that these products have features that appear to be

identical to those disclosed and claimed in the D864 and/or the D731 patent. (Ex. 3 at Ex.

1018.) Seven of the model numbers identified in the two letters as being identical to the claimed

design, contain round server bowls or crocks in the buffet server. (Ex. 3 at Ex. 1019.)

1During prosecution of the 731 patent, the PTO identified figures 1-7, figures 8-14,

figures 15-21, and figures 66-72 as separate embodiments of a single design, (Ex. 4.) Figures60-65 were renumbered as figures 22-28 in the issued 731 patent.



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(Id. at 4.) The rest have oval crocks in the buffet server.

Select Brands followed through on the threats in these letters with the current lawsuit. As

result, Select Brands has taken the position for litigation that the 731 and 864 patents cover

both round and oval server bowls. Because there are numerous pieces of prior art showing

multi-crock buffet servers having both round and oval crocks, Sensio filed petitions seeking inter



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partes review of both patents at the PTO. For instance, Shi 429 is a Chinese utility patent

application CN 101696429 to Shi et al. (Shi 429), filed on October 10, 2009 and published on

April 21, 2010, and is prior art to the 731 and 864 patents. (Ex. 3 at Exs. 1002, 1003.) It

discloses the same overall visual impression as the design claimed in those patents. This chart

compares Shi 429 to the first embodiment of the 731 patent.



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Shi 429

Likewise, there are many

bowls, similar to those that Selec

and 864 patents. For instance,

al. (Shi 264), filed on May 7,

the 731 and 864 patents.

7

First Embodiment

pieces of prior art showing a buffet server with

t Brands said are identical to the design clai

hi 547 is a Chinese design registration CN301

2008 and published on September 16, 2009, an

of 731

round server

ed in the 731

10547 to Shi et

is prior art to



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(Ex. 3 at Exs. 1008, 1009.)

On August 7, 2013, Sens

PTO based on these prior art ref

separate grounds for unpatentabi

patent. (See Exs. 1 and 2, Petiti

II. THE PTOS INTER PInter partes review is a n

America Invents Act (AIA).

scattered sections of 35 U.S.C. (

efficient mechanism to reconsid

319. Inter partes review proceed

judges with competent legal kn

to be a less costly alternative to i

Inter Partes Review Proceedings

Covered Business Method Paten

77 Fed. Reg. 48,680, at 48,680 (

engage[] in a transparent proces

(emphasis added); see also id. at

duplication of efforts. In particu

8

io filed Petitions for Inter Partes Review of bot

rences, along with six other references, and set

lity of the 731 patent and 14 separate grounds

ns for Inter Partes Review.)

RTES REVIEW PROCESS

w administrative proceeding created by the Le

ub. Law No. 112-29, 125 Stat. 284 (codified as

011)). With it, Congress armed the PTO with

r the validity of previously issued patents. 35

ings are decided by a three-judge panel of admi

wledge and scientific ability, 35 U.S.C. 6, a

nvalidity challenges in district courts. Changes

, Post-Grant Review Proceedings, and Transitio

s, Final Rule (USPTO Inter Partes Review Im

ug. 14, 2012) (stating that the AIA allows the

s to create a timely, cost-effective alternative t

48,721 ([I]t is anticipated that the rules will m

lar, the AIA provides more coordination betwee

patents with the

ing forth 16

or the 864

hy-Smith

amended in

fast and

.S.C. 311-

nistrative patent

nd are intended

to Implement

nal Program for

plementation),

TO to

litigation)

inimize

n district court



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infringement litigation and inter partes review to reduce duplication of efforts and costs.); 157

Cong. Rec. S952 (daily ed. Feb. 8, 2011) (statement of Sen. Charles Grassley) (stating that inter

partes review is intended to provide a faster, less costly alternative[] to civil litigation to

challenge patents.).

The inter partes review process is simple, streamlined, and on a controlled timeline. A

party starts the process by filing a petition requesting that the Patent Trial and Appeals Board

(the Board) cancel one or more claims of a patent. 35 U.S.C. 311; 37 C.F.R. 42.104.

Within three months of receiving the petition, the patent owner may file a preliminary response.

35 U.S.C. 313; 37 C.F.R. 42.107(b). Within three months of receiving the patent owners

preliminary response, the Board must decide whether to institute trial. 35 U.S.C. 314. To have

a trial instituted, the petition needs to show a reasonable likelihood that the petitioner [will]

prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. 314(a).

If a trial is instituted, the patent owner has three months (unless an earlier deadline is set

by the Board) to file a more complete response addressing any ground for unpatentability that

was not already denied by the Board. 37 C.F.R. 42.120. The patent owner is automatically

permitted one motion to amend the patent, 37 C.F.R. 42.121, and after a limited period of

discovery by both parties, 37 C.F.R. 42.51,the Board conducts a hearing at which both parties

may be heard, 37 C.F.R. 42.70.

Ultimately, the Board is required to issue its final written decision as to the patentability

of any patent claim challenged by the petitioner and any new claim added by amendment within

one year of instituting trial. 35 U.S.C. 316(a)(11), 318(a). [F]or good cause shown that

statutory deadline may be extended by six months. 35 U.S.C. 316(a)(11). But such

[e]xtensions of the one-year period are anticipated to be rare. PTO Inter Partes Review



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Implementation, 77 Fed. Reg. at 48,695. Indeed, the AIA requires the PTO to implement

regulations prescribing sanctions for dilatory tactics in the conduct of inter partes review

proceedings. 35 U.S.C. 316(a)(6); 37 C.F.R. 42.12.

Once the Board issues its final written decision, the petitioner in the inter partes

proceeding is thereafter estopped from asserting in litigation any ground of invalidity that

petitioner raised or reasonably could have raised during the inter partes review. 35 U.S.C.

315(e)(2). Further, the patent owner is subject to intervening rights as to any claims that were

amended during the inter partes review. 35 U.S.C. 318(c). That is, the patent owner would not

be allowed to recover damages based on infringement of a claim that was amended during the

inter partes review. See, e.g., Seattle Box Co. v. Indus. Crating and Packing Inc., 756 F.2d 1574,

1579 (Fed. Cir. 1985) (interpreting 35 U.S.C. 252, which is the intervening rights provision

referenced in 35 U.S.C. 318(c) related to inter partes review).

III. LEGAL STANDARDSFederal district courts have inherent power to control their dockets by staying

proceedings. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1998); see also

Braintree Labs., Inc. v. Nephro-Tech, Inc., No. 96-2459-JWL, 1997 WL 942237, at *8 (D. Kan.

Feb. 26, 1997) (A motion to stay an action pending the resolution of a related matter in the

United States Patent and Trademark Office is directed to the sound discretion of the court.

(quotingRosenthal Mfg. Co. v. Thermal Equip., Inc., No. 85-2630-S, 1988 WL 383034, at *1 (D.

Kan. Oct. 12, 1988))).

While it appears that no court in the Tenth Circuit has considered a motion to stay for a

pending inter partes review proceeding, this Court has granted stays in connection with patent

reexaminations. See Braintree, 1997 WL 94237, at *8-10. In determining whether to grant a

stay due to a patent reexamination, courts have applied a three-factor test:



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(1)whether a stay will simplify the issues in question and streamline the trial and reducethe burden of litigation on the parties and on the court;

(2)whether discovery is complete and whether a trial date has been set; and(3)

whether a stay would unduly prejudice the nonmoving party or present a clear tacticaladvantage for the moving party.

See, e.g., eSoft, Inc. v. Blue Coat Sys., Inc., 505 F. Supp. 2d 784, 787 (D. Colo. 2007). Recently,

other courts have applied this three-factor test to requests for stays pending inter partes reviews

as well. See, e.g., NUtech Ventures v. Norman Noble, Inc., No. 12-cv-2326, slip. op. at 3-5 (N.

D. Ohio May 30, 2013);Regents of Univ. of Michigan v. St. Jude Med., Inc., No. 12-12908, 2013

WL 2393340 at *2 (E.D. Mich. May 31, 2013); Star Envirotech v. Redline, SACV 12-01816,

2013 WL 1716068 at *2 (C.D. Cal. Apr. 3, 2013).

This Court considered similar factors when deciding whether to stay an action pending a

patent reexamination proceeding at the PTO. See Braintree, 1997 WL 94237, at *8-10. In fact,

this Court has identified many benefits to staying an action pending a determination by the PTO

on a reexamination request:

1. All prior art presented to the Court will have been first

considered by the PTO, with its particular expertise.

2. Many discovery problems relating to prior art can be alleviated

by the PTO examination.

3. In those cases resulting in effective invalidity of the patent, the

suit will likely be dismissed.

4. The outcome of the reexamination may encourage a settlementwithout the further use of the Court.

5. The record of reexamination would likely be entered at trial,thereby reducing the complexity and length of the litigation.

6. Issues, defenses, and evidence will be more easily limited in

pre-trial conferences after a reexamination.



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7. The cost will likely be reduced both for the parties and the

Court.

Id. at*9. As this Court said, [i]t is clear from the cases . . . there is a liberal policy in favor of

granting motions to stay the outcome of USPTOs reexamination or reissuance proceedings. Id.

(quotingASCII Corp. v. STD Entertainment USA, 844 F. Supp. 1378, 1381 (N.D. Cal. 1994));

Scriptpro LLC v. Wal-Mart Stores, Inc., No. 05-2244-CM, 2006 WL 2294859, at * 1 (D. Kan.

Aug. 8, 2006).

IV. ARGUMENTIn this case, all of the factors to be considered weigh in favor of granting a stay. This

case is in its infancy, and inter partes review may not only simplify issues for trial, but also

eliminate the need for this case to go forward at all. A design patent has only one claim. And in

this case the minimal design that is actually claimed in the 731 and 864 patents is shown

throughout the prior art. Moreover, Select Brands itself has asserted that its patents cover buffet

servers with both round and oval serving bowls. Given that there are numerous pieces of prior

art showing such configurations, Sensio and this Court should not be put through the time and

expense of litigation when the matter can be resolved quickly and efficiently at the PTO. If the

single claims in the 731 and 864 patents are found unpatentable at the PTO, this case cannot

proceed. And Select Brands will suffer no prejudice because inter partes review is a fast

proceeding, and it can still pursue its case in this Court if it emerges with a patent that it has a

basis for asserting against Sensio.

A. Inter Partes Review May Simplify the Issues for TrialBecause the single claim in each of the 731 and 864 patents is challenged in the

Petitions for Inter Partes Review currently before the PTO, those review proceedings are likely



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to simplify issues for trial in this case.2

If the Board institutes trial on the petition (which will be

known within six months by statute), the potential outcomes of the inter partes review are that:

(1) the claims of one or both patents will be cancelled; (2) the claims of one or both patents will

be amended; and/or (3) the claims of one or both patents will be confirmed as patentable over the

prior art considered by the Board.

If the claims of one or both patents are cancelled by the Board, this Court will not need to

consider them. If the claim of either patent is amended, judicial resources will have been

conserved because the Court and parties will not have expended resources on an invalid claim

that had to be amended. Also, if the claim either patent is amended, the patent owners damages

will be limited to the period after the amendment. See 35 U.S.C. 318(c); see alsoSeattle Box

Co., 756 F.2d at 1579. And Sensio will be estopped from later raising the same invalidity

arguments in this action. 35 U.S.C. 315(e)(2). Moreover, to secure allowance of the

challenged claims, Select Brands may make arguments or take positions that are inconsistent

with its infringement contentions. In that case, Select Brands may be estopped from asserting

infringement. In other words, even if the claims are not cancelled, their scope may change

whether through amendment or arguments so the inter partes review proceeding could

significantly simply issues for trial. See Semiconductor Energy Lab. Co.v. Chimei Innolux

Corp., 2012 WL 7170593, at *2-4 (C.D. Cal. Dec. 19, 2012) (staying a case pending inter partes

review, stating that [a]s this Court has previously noted, the amended standards for granting

2The only situation in which issues will not be simplified is if inter partes review is not

instituted by the PTO. As explained below, the PTO is statutorily obliged to make that decisionwithin six months. Moreover, the PTOs published statistics show that it has instituted inter

partes review in 89% of the petitions it has considered. See USPTO FY 2013 Process Production

Report, available athttp://www.uspto.gov/ip/boards/bpai/stats/

process/fy2013_apr_b.jsp (last visited August 6, 2013) (reporting that in forty-nine of the fifty-five petitions considered to date, trials have been instituted).



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inter partes review probably results in an even higher likelihood than under the prior standard

that the issues in this action will be simplified by the reexamination);Ever Win Intl Corp. v.

Radioshack Corp., 902 F. Supp. 2d 503, 505-06 (D. Del. 2012) (granting stay pending

reexamination and finding there [was] the potential for the simplification of issues for trial,

either by reducing the number of claims at issue, confirming the validity of the surviving claims,

or narrowing the scope of a modified claim.); Scriptpro, 2006 WL 2294859, at *1 (staying case

pending reexamination because it would simplify issues). As result, this factor weighs in favor

of staying this action.

B.

Discovery Has Not Begun and No Trial Date Has Been Set

This action has only just begun. The scheduling conference has not yet taken place and

discovery has not started. Indeed, as of this filing, the parties have not yet exchanged mandatory

initial disclosures pursuant to Fed. R. Civ. P. 26(a)(1), agreed to a protective order, served

discovery requests, or the like. See, e.g., Smarter Agent, LLC, 889 F. Supp. 2d at 675 (granting

stay and noting, among other things, that essentially nothing has happened in this case beyond

the briefing of the instant motion to stay); Semiconductor Energy Lab. Co., 2012 WL 7170593,

at *2-4 (granting a stay pending inter partes review where fact discovery had begun but not

finished, no depositions had been taken, the parties had not briefed the court on claim

construction, and no claim construction order had issued);Braintree, 1997 WL 94237, at *10

(staying a case pending reexamination and noting that the case is only a few months old).

Because this case is in its infancy, this factor, too, weighs in favor of a stay.

C. A Stay Would Not Prejudice or Present a Tactical Disadvantage to SelectBrands

As explained above, the patent statute requires that the Board decide whether to institute

trial concerning the challenged claims within six months. See 35 U.S.C. 314(b); 37 C.F.R.



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42.107(b). If trial is instituted, the patent statute further requires that the Board issue a final

written decision regarding the patentability of the claims within one year. See 35 U.S.C.

316(a)(11).3

Thus, at most, Sensios motion seeks an eighteen month stay of this litigation, the

time period within which the entire inter partes review proceeding must be completed. If the

Board decides not to institute trial, then the stay would last only six months. Such limited

timeframes, either of which has a discernible end in sight, will not unduly prejudice Select

Brands.

In sum, because any prejudice to Select Brands is minimal, and there is no tactical

disadvantage to Select Brands in granting a limited stay, this factor also weighs in favor of

staying this action.

V. CONCLUSIONThe potential to simplify or eliminate issues at this early stage of this suit, without unduly

prejudicing Select Brands, supports staying this action pending Sensios Petitions for Inter Partes

Review. Accordingly, Sensio requests that the Court grant its motion for a stay.

3Although the statute allows an additional six months for good cause shown, the PTO

has indicated that it does not anticipate relying on that provision very often. PTO Inter PartesReview Implementation, 77 Fed. Reg. at 48,695.



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Dated this 9t

day of August 2013. Respectfully submitted,

STINSON MORRISON HECKER LLP

By: s/ Daniel D. Crabtree

Daniel D. Crabtree KS #10903STINSON MORRISON HECKER LLP

1201 Walnut, Suite 2900Kansas City, MO 64106

Telephone: (816) 842-8600

Facsimile: (816) [email protected]

J. Michael Jakes admitted pro hac vice

Kathleen A. Daley admitted pro hac viceElizabeth D. Ferrill admitted pro hac vice

FINNEGAN, HENDERSON, FARABOW,GARRETT & DUNNER, LLP901 New York Avenue, NW,

Washington, DC 20001-4413

Telephone: (202) 408-4098Facsimile: (202) 408-4400

[email protected]

[email protected]

[email protected]

Attorneys for Defendant Sensio, Inc.



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CERTIFICATE OF SERVICE

I hereby certified that on the 9th day of August, 2013, I electronically filed the foregoing

with the Clerk of the Court using the CM/ECF system which sent notification of such filing tothe following participants:

Matthew B. WaltersMichael ElbeinScott R. Brown

HOVEY WILLIAM LLP84 Corporate Woods10801 Mastin Boulevard, Suite 1000Overland Park, Kansas 66210

Attorneys for Plaintiff

s/ Daniel D. CrabtreeAttorney for Defendant Sensio, Inc.



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UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF KANSAS

SELECT BRANDS, INC.,

Plaintiff,

v.

SENSIO, INC.,

Defendant.

Case No. 13-cv-2108 KHV/GLR

I, ELIZABETH D. FERRILL, hereby declare and state that:

I am an attorney duly licensed to practice in all courts of the state of Virginia and the

District of Columbia; an associate of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.;

and one of the attorneys of record for Defendant Sensio Inc. I have been admitted to this Court

pro hac vice for the purposes of this civil action. The facts set forth herein are of my own

personal knowledge and, if sworn, I could and would testify competently to them. I am

submitting this Declaration in support of Sensio Incs Motion to Stay Pending Inter Partes

Review.

1. Attached hereto as Exhibit 1 is a true and correct copy of the Petition for InterPartes Review for D699,731, filed by Sensio at the U.S. Patent and Trademark Office on August

7, 2013.

2. Attached hereto as Exhibit 2 is a true and correct copy of the Petition for InterPartes Review for D675,864, filed by Sensio at the U.S. Patent and Trademark Office on August

7, 2013.

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3. Attached hereto as Exhibit 3 is a true and correct copy of Exhibits 1001 to 1023,filed by Sensio at the U.S. Patent and Trademark Office on August 7, 2013, in connection with

the Petitions for Inter Partes Review listed above.

4. Attached hereto as Exhibit 4 is a true and correct copy of an Office Action issuedby the U.S. Patent and Trademark Office on April 20, 2012 in connection with the prosecution of

the U.S. Patent No. D699,731.

I declare under penalty of perjury under the laws of the United States of America that the

foregoing is true and correct to the best of my knowledge, information, and belief.

Dated: August 9, 2013 By: /s/ Elizabeth D. Ferrill

Elizabeth D. Ferrill



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EXHIBIT

1



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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]

[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 D699,731

PETITION FORINTER PARTESREVIEW OF U.S. PATENT NO. D669,731



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- i -

Table of Contents

Table of Authorites .................................................................................................. iii

I. Introduction ...................................................................................................... 1II. Mandatory Notices Under 37 C.F.R. 42.8 .................................................... 1III. Payment of Fees Under 37 C.F.R. 42.15(a) and 42.103 ............................ 2IV. Grounds for Standing ....................................................................................... 2V. Identification of Challenge .............................................................................. 2VI. Background ...................................................................................................... 4VII. Claim Construction .......................................................................................... 7VIII. The Applicable Legal Standards.................................................................... 12

A. Anticipation ......................................................................................... 12B. Obviousness ......................................................................................... 13

IX. Detailed Explanation of Grounds for Unpatentability Under theBroadest Reasonable Construction ................................................................ 14A. Ground 1: Embodiments 1, 2, and 3 Are Anticipated Under

102(a) by Shi 429 (Ex. 1002) .......................................................... 15B. Ground 2: Embodiments 1, 2, and 3 Are Obvious Under

103(a) Over Shi 429 (Ex. 1002) ...................................................... 18C. Ground 3: Embodiment 1 Is Anticipated Under 102(a) by Shi

889 (Ex. 1004) .................................................................................... 19D. Ground 4: Embodiment 1 Is Obvious under 103(a) over Shi

889 (Ex. 1004) .................................................................................... 21E. Ground 5: Embodiment 1 Is Anticipated Under 102(a) by Lu

763 (Ex. 1006) .................................................................................... 22F. Ground 6: Embodiment 1 Is Obvious under 103(a) over Lu

763 (Ex. 1006) .................................................................................... 24



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G. Ground 7: Embodiment 1 Is Anticipated Under 102(b) by Shi547 (Ex. 1008) .................................................................................... 25

H. Ground 8: Embodiment 1 Is Obvious under 103(a) over Shi547 (Ex. 1008) .................................................................................... 28

I. Ground 9: Embodiments 1, 2, and 3 Are Anticipated Under 102(b) by Shi 269 (Ex. 1010) ......................................................... 29

J. Ground 10: Embodiments 1, 2, and 3 Are Obvious Under 103(a) Over Shi 269 (Ex. 1010) ...................................................... 32

K. Ground 11: Embodiment 2 Is Anticipated Under 102(b) byShi 069 (Ex. 1012) ............................................................................. 33

L. Ground 12: Embodiment 2 Is Obvious Under 103(a) over Shi069 (Ex. 1012) .................................................................................... 36M. Ground 13: Embodiment 1 Is Obvious Under 103(a) Over Shi

547 (Ex. 1008) in View of Perkins 654 (Ex. 1014) .......................... 38N. Ground 14: Embodiments 1, 2, and 3 Are Obvious Under

103(a) Over Shi 269 (Ex. 1010) in View of Perkins 654 (Ex.

1014) .................................................................................................... 41O. Ground 15: Embodiments 1, 2, and 3 Are Obvious Under

103(a) Over Shi 269 (Ex. 1010) in View of Shi 110 (Ex.

1015) .................................................................................................... 44P. Ground 16: Embodiment 2 Is Obvious Under 103(a) Over Shi

069 (Ex. 1012) in View of Shi 110 (Ex. 1015) ................................ 47X. Conclusion ..................................................................................................... 50Appendix - List of Exhibits

Certificate of Service



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Table of Authorities

Page(s)

FEDERAL CASES

Apple, Inc. v. Samsung Elecs. Co.,678 F.3d 1314 (Fed. Cir. 2012) ................................................................... 13, 14

Contessa Food Products, Inc. v. Conagra, Inc.,

282 F.3d 1370 (Fed. Cir. 2002) ............................................................................ 7

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) .......................................................................... 7, 8

In re Borden,

90 F.3d 1570 (Fed. Cir. 1996) ...................................................................... 13, 14

In re Carter,

673 F.2d 1378 (C.C.P.A. 1982) ............................................................. 19, 34, 38

In re Klein,

987 F.2d 1569 (Fed. Cir. 1993) .................................................................. passim

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) .......................................................................... 13

In re Rosen,673 F.2d 388 (C.C.P.A. 1982) ........................................................................... 13

In re Rubinfield,

270 F.2d 391 (C.C.P.A. 1959) ............................................................................. 8

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



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- iv -

KSR International Co. v. Teleflex, Inc.,

550 U.S. 398 (2007) ............................................................................................ 14

Titan Titan Tire Corp. v. Goodyear Tire & Rubber Co,

566 F.3d 1372 (Fed. Cir. 2009) ......................................................................... 14

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 ....................................................................................................... 8

37 C.F.R. 1.104 ..................................................................................................... 12

37 C.F.R. 42.8 ......................................................................................................... 1

37 C.F.R. 42.15 ....................................................................................................... 2

37 C.F.R. 42.100 ..................................................................................................... 7

37 C.F.R. 42.103 ..................................................................................................... 2

37 C.F.R. 42.104 ..................................................................................................... 2



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Telephone: 202-408-4098

Facsimile: 202-408-4400

E-mail:

[email protected];

[email protected]

Telephone: 202-408-4445

Facsimile: 202-408-4400

E-mail:

[email protected];

[email protected]

III. Payment of Fees Under 37 C.F.R. 42.15(a) and 42.103The 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 StandingPetitioner certifies that, under 37 C.F.R. 42.104(a), the 731 patent is

available for inter partes review, and Petitioner is not barred or estopped from

requesting inter partes review of the 731 patent on the grounds identified.2

V. Identification of ChallengePursuant 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:

2Although the 731 patent issued on October 30, 2012, it is available forinter

partes review. See Leahy-Smith America Invents Act Technical Corrections, Pub.

L. No. 112-274, 1(d)(1), 126 Stat. 2456 (2013).



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Exhibit DescriptionPublication/

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. 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 547Ex. 1010 CN 101564269 A to Shi (Shi 269) Oct. 28, 2009


Ex. 1012 CN 100577069 to Shi (Shi 069) Jan. 6, 2010


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


Petitioner requests inter partes review based on the following grounds:

GroundChallenged

EmbodimentsDescription

1 1, 2, 3 Anticipated under 102(a) by Shi 429 (Ex. 1002)

2 1, 2, 3 Obvious under 103(a) over Shi 429 (Ex. 1002)

3 1 Anticipated under 102(a) by Shi 889 (Ex. 1004)

4 1 Obvious under 103(a) over Shi 889 (Ex. 1004)5 1 Anticipated under 102(a) by Lu 763 (Ex. 1006)

6 1 Obvious under 103(a) over Lu 763 (Ex. 1006)

7 1 Anticipated under 102(b) by Shi 547 (Ex. 1008)

8 1 Obvious under 103(a) over Shi 547 (Ex. 1008)



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GroundChallenged

EmbodimentsDescription

9 1, 2, 3 Anticipated under 102(b) by Shi 269 (Ex. 1010)

10 1, 2, 3 Obvious under 103(a) over Shi 269 (Ex. 1010)

11 2 Anticipated under 102(b) by Shi 069 (Ex. 1012)12 2 Obvious under 103(a) over Shi 069 (Ex. 1012)

13 1 Obvious under 103(a) over Shi 547 (Ex. 1008) in

view of Perkins 654 (Ex. 1014)

14 1, 2, 3 Obvious under 103(a) over Shi 269 (Ex. 1010) in

view of Perkins 654 (Ex. 1014)

15 1, 2, 3 Obvious under 103(a) over Shi 269 (Ex. 1010) in

view of Shi 110 (Ex. 1015)

16 2 Obvious under 103(a) over Shi 069 (Ex. 1012) inview 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. BackgroundThe application for the 731 patent was filed on January 13, 2011,

3and is

entitled Multiple Crock Buffet Server. The application contained a single claim

and 72 figures, depicting ten embodiments. On April 20, 2012, the Examiner

required restriction between seven Groups: Group I: embodiments 1 (figures 1-7),

2 (figures 8-14), 3 (figures 15-21), and 10 (figures 66-72); Group II: embodiments

4 (figures 22-28) and 5 (figures 29-35); Group III: embodiment 6 (figures 36-43);

3Because the application for the 731 patent was filed prior to the effective date of

the America Invents Act (AIA), the pre-AIA statutes apply here.



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Group IV: embodiment 7 (figures 44-50); Group V: embodiment 8 (figures 51-59);

and Group VI: embodiment 9 (figures 60-65). (April 20, 2012 Restriction Reqt at

2.) The applicants elected to proceed with Group I, canceled the remaining

figures, amended certain remaining figures, and renumbered figures 66-72 to

figures 22-28. (July 2, 2012 Amendment.) The application was then allowed. At

no point did applicants submit an Information Disclosure Statement.

The 731 patent issued on October 30, 2012 and contains four embodiments,

which the Examiner deemed to be patentably indistinct:

Embodiment 1 (figures 1-7) two or more oval server bowl inserts situated

adjacent opposite ends of the heated server base unit housing (731 patent at

description of figure 1.)

Embodiment 2 (figures 8-14) two or more oval server bowl inserts covering

various buffet server housing lengths (731 patent at description of figure 8.)



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Embodiment 3 (figures 15-21) two or more oval server bowl inserts (731

patent at description of figure 15.)

Embodiment 4 (figures 22-28) multiple crock buffet server (731 patent at

description of figure 22.)

The day after the 731 patent issued, as a prelude to litigation, the Patent

Owner sent a letter to counsel for the Petitioner identifying the 731 patent, which

the Patent Owner said is directed to a multiple crock buffet server, and asserting

that the Petitioners products infringe the 731 patent. (Ex. 1017.) In that letter,

the Patent Owner identified fourteen of Petitioners 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 D731 patent. (Id.) Of the



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As illustrated below, the first embodiment (figures 1-7) depicts a portion of a

pair of 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 descriptions refer to oval server bowl inserts, figures

1-7 show both the inner and outer portion of the outer handle in dashed lines. As a

result, under the broadest reasonable construction, the first embodiment covers

portions of a curved rim of bowl inserts (not including those portions of the rim

containing the outer handles or the notch), as shown above, in the emphasized

figures. Stated more specifically, the first embodiment

covers: (1) the curved portions of two rims of two bowl

inserts situated adjacent opposite ends of the heated

server base unit housing; and (2) rims having the

following profile, in which the side of the rim slightly

protrudes on the top (dot-dash line), with a rounded top



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edge (larger dashed circle) and a less rounded bottom edge (smaller dashed circle).

For the second embodiment (figures 8-14), the specification likewise

disclaims: the top and bottom of the housing; the control knobs, the lid holders, the

oval liners that receive the bowl inserts, the outer handle surfaces, the spoon-rest

notch, bosses, and housing feet. (731 patent at description of figures 8, 9, and 11.)

Figures 8-11 and 13 include the drawing convention for a design having

indeterminate length, as confirmed by the specification.

While the specification says that the second embodiment covers two or

more oval server bowl inserts (731 patent at description of figures 8), the Patent

Owner, in its pre-filing letters to Petitioner, asserted that seven different models of

buffet servers each having round server bowls infringe the 731 patent and have

features that are identical to those disclosed and claimed in the 731 patent. (Ex.

1017.) In other words, the Patent Owner has clearly construed the 731 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

731 patent. The PTO can, and the Petitioner submits should, use such an

admission by the Patent Owner in determining patentability. See 37 C.F.R.

1.104(c)(3). As a result, the second embodiment should be construed under the

broadest reasonable construction to include at least two curved server bowl inserts



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under the broadest reasonable construction, the fourth embodiment covers a curved

server bowl positioned perpendicularly to another curved server bowl.

Petitioner notes certain inconsistencies between the figures and the

specification. For instance, the front outer handles appear claimed in figure 2, but

are disclaimed in the specification. In addition, portions of the front and rear face

of the housing appear claimed in figures 4-7, but only partially claimed in figures 1

and 2, and not shaded as claimed in any figures. Nonetheless, under the broadest

reasonable construction, these features are not part of the claim.

In sum, as reflected by the four embodiments of the claimed design, which

are by definition not patentably distinct, under the broadest reasonable

construction, the claimed design should be construed to encompass portions of two

curved rims (oval or round), having the profile shown above, with or without bowl

inserts, separated by any width and arranged in any configuration.

VIII. The Applicable Legal StandardsA. AnticipationThe ordinary observer test is the sole test for determining anticipation of a

design patent under 35 U.S.C. 102. Intl 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

that, taken as a whole, the prior art reference and the claimed design are the same.



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Egyptian Goddess, 534 F.3d at 675, 681.

B. ObviousnessIn 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

and who is presumed to have knowledge of the prior art slow cookers. SeeIn 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

secondary references may be used to modify the primary reference if the two are



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14

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. Intl 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 ofKSR).

IX. Detailed Explanation of Grounds for Unpatentability Under theBroadest Reasonable Construction

This Petition explains that the 731 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

not cumulative to each other given the different disclosures of the references. A



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reasonable examiner would consider these references to be important in deciding

whether the claims are patentable, and this Petition demonstrates a reasonable

likelihood that Petitioner will prevail.

A. Ground 1: Embodiments 1, 2, and 3 Are Anticipated Under 102(a) by Shi 429 (Ex. 1002)

Shi 429 discloses the same overall visual impression as embodiments 1, 2,

and 3, and, as result, the claimed design 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 filing date

of the 731 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 first

embodiment of the 731 patent:



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Shi 429 First Embodiment of 731

As shown below, Shi 429 discloses the same curved rims and the same rim

profile as first embodiment:



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Shi 429 Third Embodiment of 731

Similarly, Shi 429 discloses the second embodiment, because that

embodiment does not specify any distance between its claimed bowl inserts.

With three embodiments anticipated by Shi 429, the claim is anticipated

under 35 U.S.C. 102(a). See Klein, 987 F.2d at 1570. And the Petitioner has

established a reasonable likelihood that it will prevail on this ground of rejection.

B. Ground 2: Embodiments 1, 2, and 3 Are Obvious Under 103(a)Over Shi 429 (Ex. 1002)

In the alternative, Shi 429 discloses the same overall visual impression as

embodiments 1, 2, and 3, and in view of the common knowledge of a designer

having ordinary skill in the art, any differences arede 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 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



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no secondary reference is necessary.

As to the first, second, and third embodiments, 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, a need to collapse some layers of figure 5, 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. Intl 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. See

Klein, 987 F.2d at 1570. And the Petitioner has established a reasonable likelihood

that it will prevail on this ground of rejection.

C. Ground 3: Embodiment 1 Is Anticipated Under 102(a) by Shi889 (Ex. 1004)

Shi 889 discloses the same overall visual impression as embodiment 1 and,

as result, the claimed design is anticipated by Shi 889 under 35 U.S.C. 102(a).

(Ex. 1004.) Shi 889 is a Chinese design registration, filed on October 10, 2009



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and published on July 14, 2010, prior to the filing date of the 731 patent. (Ex.

1005 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 first

embodiment of the 731 patent:


As shown below, Shi 889 discloses the same portions of curved rims and

the same rim profile as the claimed design:



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embodiment 1 defeating anticipation under 102(a), Shi 889 discloses the same

overall visual impression as embodiment 1 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. See Klein, 987 F.2d at 1570. Therefore, the Petitioner has established a

reasonable likelihood that it will prevail on this proposed ground of rejection.

E. Ground 5: Embodiment 1 Is Anticipated Under 102(a) by Lu763 (Ex. 1006)

Lu 763 discloses the same overall visual impression as embodiment 1 and,

as result, the claimed design 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 filing date of the 731 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 first embodiment of the

731 patent, Lu 763 has virtually an identical overall visual appearance:



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Lu 763 First Embodiment of 731

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 two curved

rims as the claimed design:

Lu 763 (in gray) with First Embodiment of 731 Overlaid (in black)



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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 first

embodiment of 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. Intl Seaway, 589 F.3d at 1243.

With even one embodiment anticipated by Lu 763, the claim is anticipated

under 35 U.S.C. 102(a). See Klein, 987 F.2d at 1570. Therefore, the Petitioner

has established a reasonable likelihood that it will prevail on this proposed ground

of rejection.

F. Ground 6: Embodiment 1 Is Obvious under 103(a) over Lu 763(Ex. 1006)

To the extent that any minor differences are alleged between Lu 763 and

embodiment 1 defeating anticipation under 102(a), Lu 763 discloses the same



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



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F.3d at 103. Thus, the claim is obvious under 35 U.S.C. 103(a) based on Lu

763. See Klein, 987 F.2d at 1570. Therefore, the Petitioner has established a

reasonable likelihood that it will prevail on this proposed ground of rejection.

G. Ground 7: Embodiment 1 Is Anticipated Under 102(b) by Shi547 (Ex. 1008)


as result, the claimed design 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 filing date of the

731 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.

As discussed above, in an October 31, 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 D731 patent. (Ex. 1017.) Three months later, the

Patent Owner made the same infringement allegations, asserting that seven

different slow cooker models with round serving bowls have features that appear

to be identical to those disclosed and claimed in the D864 and/or D731. (Ex.

1018.) To make such an such infringement allegation, the Patent Owners position

had to be that an ordinary observer observing a buffet server with round serving



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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 731

patent. The PTO should not ignore this admission by the Patent Owner that the

731 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 in the first embodiment of the

731 patent, and as confirmed by the Patent Owners admission, Shi 547 has

virtually an identical overall visual appearance:




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Shi 547 discloses a very similar rim profile with rounded edges as the first

embodiment of the 731 patent. Further, Shi 547 discloses the same portions of

two curved rims:

Shi 547 (in gray) with First Embodiment of 731 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 547 is the same as the

first embodiment of 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. Intl Seaway, 589 F.3d at 1243. And, as discussed above, the Patent



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Owners 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.

With even one embodiment anticipated by Shi 547, the claim is anticipated

under 35 U.S.C. 102(b). See Klein, 987 F.2d at 1570. And the Petitioner has

established a reasonable likelihood that it will prevail on this proposed ground of

rejection.

H. Ground 8: Embodiment 1 Is Obvious under 103(a) over Shi 547(Ex. 1008)

To the extent that any minor differences are alleged between Shi 547 and

embodiment 1 defeating anticipation under 102(a), Shi 547 discloses the same



not sufficient to justify a finding that the design is patentable under 103(a).

Indeed, the Patent Owners assertion that a similar buffet server with round serving

bowls 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 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. See Klein, 987 F.2d at

1570. Therefore, the Petitioner has established a reasonable likelihood that it will



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prevail on this proposed ground of rejection.

I. Ground 9: Embodiments 1, 2, and 3 Are Anticipated Under 102(b) by Shi 269 (Ex. 1010)

Shi 269 discloses the same overall visual impression as embodiments 1, 2,

and 3, and, as result, the claimed design 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 filing date of the 731 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 Owners admission that the claimed design

covers curved server bowls (both oval and round), Shi 269 has virtually an

identical overall visual appearance to the first embodiment of the 731 patent, as

shown in the annotated figures:



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Shi 269 discloses the same portions of two curved rims as the claimed

design and has a thick rim profile with a rounded edges, wherein the upper rim

extends protrudes slightly.



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Shi 269 with First Embodiment of 731 Overlaid (in white)

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

first embodiment of the claimed design. Indeed, as discussed above, the Patent

Owners 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.

Likewise, as to the second and third embodiments, Shi 269 discloses

portions of two curved rims with bowl inserts in its exploded view (see Ex. 1010 at

7 (figure 5) (emphasis added)):



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Shi 269 Third Embodiment of 731

Likewise, Shi 269 discloses the second embodiment, because that embodiment

does not specify any distance between its claimed bowl inserts.

Thus, the claim is anticipated by Shi 269 under 35 U.S.C. 102(b). See

Klein, 987 F.2d at 1570. And the Petitioner has established a reasonable likelihood

that it will prevail on this proposed ground of rejection.

J. Ground 10: Embodiments 1, 2, and 3 Are Obvious Under 103(a)Over Shi 269 (Ex. 1010)


embodiments 1, 2, and 3, and in view of the common knowledge of a designer

having ordinary skill in the art, any differences arede minimus and not sufficient to

justify a finding that the design is patentable. Indeed, the Patent Owners 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.



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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.

As to the first, second, and third embodiments, 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, a need to collapse some layers of figure 5, 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. Intl 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 1015-16.

Thus, the claim is obvious under 35 U.S.C. 103(a) based on Shi 269. See

Klein, 987 F.2d at 1570. Therefore, the Petitioner has established a reasonable

likelihood that it will prevail on this proposed ground of rejection.

K. Ground 11: Embodiment 2 Is Anticipated Under 102(b) by Shi069 (Ex. 1012)




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as result, the claimed design is anticipated by Shi 069 under 35 U.S.C. 102(b).

(Ex. 1012 at 6-7.) Shi 069 is a utility model specification, filed on May 7, 2008

and published on Jan. 6, 2010, more than one year prior to the filing date of the

731 patent. (Ex. 1013 at 1.) Therefore, Shi 069 is a prior art printed publication

under 35 U.S.C. 102(b). Because the disclosure of Shi 069 is not the same as

the other references cited herein, it is not cumulative.

As confirmed by the Patent Owners admission that the claimed design

covers curved server bowls (both round and oval), Shi 069 has virtually an

identical overall visual appearance to the second embodiment of the 731 patent:



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Shi 069 Second Embodiment of 7314

(emphasis added)

Shi 069 discloses the same portions of two curved rims, as shown below,

(where the claimed design covers any distance between the rims), the same bowl

inserts, and has a thick rim profile with a rounded edges.

4Figure 10 has been altered to remove the spacing between the bowl inserts.



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Shi 069 with Second Embodiment of 731 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 069 is the same as the second

embodiment of the claimed design.

With even one embodiment anticipated, the claim is anticipated by Shi 069

under 35 U.S.C. 102(b). See Klein, 987 F.2d at 1570. Therefore, the Petitioner

has established a reasonable likelihood that it will prevail on this proposed ground

of rejection.

L. Ground 12: Embodiment 2 Is Obvious Under 103(a) over Shi069 (Ex. 1012)


embodiment 2 and in view of the common knowledge of a designer having



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ordinary skill in the art, any differences are de minimus and not sufficient to justify

a finding that the design is patentable. Indeed, the Patent Owners 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 obvious under 35 U.S.C. 103(a) over Shi 069.


cooker with basically the same design characteristics as embodiment 2 of the

claimed design, under its broadest reasonable construction. Durling, 101 F.3d at

103. Shi 069 is so similar to the claimed design, that no secondary reference is

necessary.

To the extent that there is viewed to be any disclosure in embodiment 2 that

is not plainly evident from Shi 069 (e.g., incomplete views in figures 3 and 4, a

need to collapse some layers of figure 5, or any minor differences in proportion of

the curved rims), Shi 069 readily suggests to these minor alterations 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

069 reference, the ordinary observer would be deceived into believing that the

hypothetical Shi 069 is the same as the claimed design. Intl Seaway, 589 F.3d at

1240-41. Application of such ordinary skill does not make the second embodiment

of the claimed design patentable over Shi 069. Stevens, 173 F.2d at 1015-1016.



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With even one embodiment made obvious, the claim is obvious under 35

U.S.C. 103(a) based on Shi 069. See Klein, 987 F.2d at 1570. Therefore, the

Petitioner has established that there is a reasonable likelihood that it will prevail on

this ground of rejection.

M. Ground 13: Embodiment 1 Is Obvious Under 103(a) Over Shi547 (Ex. 1008) in View of Perkins 654 (Ex. 1014)

Shi 547 in view of Perkins 654 discloses the same overall visual

impression as embodiment 1. 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 filing date of the

731 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 embodiments 1. Id. Perkins 654 is an appropriate secondary



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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 two round-shaped rims separated by a

single-bowl distance in Shi 547 to arrive at a hypothetical Shi 547-Perkins 654

reference. 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.



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Shi 547

Perkins 654

First Embodiment of 731

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. Intl 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

design is patentable. Lamb, 286 F.2d at 611.



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With even one embodiment made obvious, the claim is obvious under 35

U.S.C. 103(a) based on Shi 547 in view of Perkins 654. See Klein, 987 F.2d at

1570. Therefore, the Petitioner has established that there is a reasonable likelihood

that it will prevail on this proposed ground of rejection.

N. Ground 14: Embodiments 1, 2, and 3 Are 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 embodiments 1, 2, and 3. 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.M respectively, Shi 269 and Perkins

654 are a prior art printed publication under 35 U.S.C. 102(b).



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 Perkins 654 can be used to modify Shi 269 to create a design possessing the

same overall visual appearance as embodiments 1, 2 or 3. 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 two



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round-shaped bowls separated by a single-bowl distance in Shi 269 to arrive at a

hypothetical Shi 269-Perkins 654 reference. 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-Perkins654

reference is not cumulative because the disclosure of the hypothetical reference is

not the same as other references cited herein.

Shi 269

Perkins 654

First Embodiment of 731

Second, considering this Shi 269-Perkins 654 reference, the ordinary



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observer would be deceived into believing that the Shi 269-Perkins 654 is the

same as the claimed design. Intl Seaway, 589 F.3d at 1240-41. Any remaining

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.

Similarly, when one of ordinary skill considers the figure 5 of Shi 269 in

view of the oval-shape of Perkins 654, the hypothetical reference that results

(which would be similar to the first hypothetical reference except that it would

disclose the oval bowl inserts in addition to the oval rims), the ordinary observer

would be deceived into believing that this second Shi 269-Perkins 654 is the

same as the claimed design. Intl Seaway, 589 F.3d at 1240-41.

Shi 269 Perkins 654

Third Embodiment of 731



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Thus, the claim is obvious under 35 U.S.C. 103(a) based on Shi 269 in

view of Perkins 654. See Klein, 987 F.2d at 1570. Therefore, the Petitioner has


rejection.

O. Ground 15: Embodiments 1, 2, and 3 Are 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

embodiments 1, 2, and 3. 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 Section IX.I, Shi 269 is a 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 filing date of the

731 patent. (Ex. 1016 at 1.) Therefore, Shi 110 is also prior art printed

publication under 35 U.S.C. 102(a).



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 embodiments 1, 2 or 3. Id. Shi 110 is an



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appropriate secondary reference in this instance because it is also a

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 two

round-shaped bowls separated by a single-bowl distance in Shi 269 to arrive at a

hypothetical Shi 269-Shi 110 reference. 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.



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Shi 269

Shi 110

Third Embodiment of 731

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. Intl Seaway, 589 F.3d at 1240-41. Any remaining small



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differences between the Shi 269-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 269 in

view of Shi 110. See Klein, 987 F.2d at 1570. Therefore, the Petitioner has


rejection.

P. Ground 16: Embodiment 2 Is Obvious Under 103(a) Over Shi069

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