Artsana USA, Inc.v.Kolcraft Enterprises, Inc.

Patent Trial and Appeal Board

Jun 4, 2015

13589777 (P.T.A.B. Jun. 4, 2015)

Trials@uspto.gov Paper 8
571-272-7822 Entered: June 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ARTSANA USA, INC.,
Petitioner,

v.

KOLCRAFT ENTERPRISES, INC.,
Patent Owner.
____________

Case IPR2015-00582
Patent 8,388,501 B2
____________

Before JAMES T. MOORE, HYUN J. JUNG, and
BARRY L. GROSSMAN, Administrative Patent Judges.

MOORE, Administrative Patent Judge

DECISION
Denying Inter Partes Review
Denying Motion for Joinder
37 C.F.R. § 42.108

I. INTRODUCTION
A. Background
Artsana USA, Inc. (“Petitioner”) filed a paper styled “Second Petition
for Inter Partes Review of U.S. Patent No. 8,388,501” (Paper 1, “Pet.”)
IPR2015-00582
Patent 8,388,501 B2

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seeking to institute an inter partes review of claims 1–20 of U.S. Patent No.
8,388,501 B2 (“the ’501 patent”) pursuant to 35 U.S.C. §§ 311–319.
Petitioner also filed a Motion for Joinder (Paper 3). The Motion for Joinder
seeks joinder to IPR2014-01053. Kolcraft Enterprises, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 7). We have jurisdiction
under 35 U.S.C. § 314, which provides that an inter partes review may not
be instituted “unless . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.”
Petitioner contends the challenged claims are unpatentable under
35 U.S.C. § 103 on the following specific grounds (Pet. 4–5):
References Basis Claims challenged
Tyco
1
in view of Graco
2
§ 103
1, 6, 7, 9, 10, 12 and
13
Tyco, Graco, and Dole
3
§ 103 2–5, 8 and 11
Tyco and Rupert
4
§ 103 14, 19, and 20
Tyco, Rupert, and Century
5
§ 103 15–18

For reasons discussed below, we decline to institute inter partes
review of the ’501 patent.

1
1995 Tyco Playtime Catalog copyright 1994 (“Tyco”) (Ex. 1015).
2
Graco Pack ’N Play Model No. 386-11-01 Owner’s Manual, copyright
2001 (“Graco”) (Ex. 1004).
3
U.S. Patent No. 3,223,098, Dec. 14, 1965 (“Dole”) (Ex. 1003).
4
U.S. Patent No. 2,948,287, Aug. 9, 1960 (“Rupert”) (Ex. 1006).
5
Century Fold-n-Go Care Center Instruction Manual dated 1998
(“Century”) (Ex. 1005).
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Patent 8,388,501 B2

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B. Related Proceedings
Petitioner informs us that the ’501 patent is at issue in Kolcraft
Enterprises, Inc. v. Artsana USA, Inc., No. 1:13-cv-04863 (N.D. Ill.). Pet.
1–2 and Ex. 1002. Patent Owner has requested adverse judgment in related
IPR2014-01053, also concerning the ’501 patent, which request has been
granted (Paper 24 in IPR2014-01053). Petitioner has moved for joinder with
IPR2014-01053 (Paper 3). There is also a copending inter partes review
petition pending, instituted May 29, 2015, and given number IPR2015-
00286 challenging U.S. Patent No. 8,764,612.

C. The ’501 Patent
The ’501 patent relates to a play gym which suspends an object over a
mat within a play yard. Ex. 1001, Abstract. Figure 2 is illustrative and is
reproduced below.

Figure 2 is a perspective view of a play gym and mat

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D. Illustrative Claim
As noted above, Petitioner challenges claims 1–20 of the ’501 patent,
of which claims 1, 9, and 14 are independent. Claim 1 is illustrative of the
challenged claims and is reproduced below:

1. An apparatus comprising:
at least one of a play yard or a bassinet;
a floor mat dimensioned to substantially cover a floor of
the play yard or the bassinet, the floor mat having a connector
positioned in proximity to a perimeter edge of the floor mat,
and the floor mat to couple to at least one of the play yard or the
bassinet when the floor mat is located within the play yard or
the bassinet; and
a play gym to suspend an object above the floor mat, the
play gym having a fastener to engage the connector of the floor
mat to couple the play gym to the floor mat, the floor mat to
couple the play gym to the play yard or the bassinet when the
play gym is positioned in one of the play yard or the bassinet.

II. DISCUSSION
Procedural Matters
Patent Owner filed suit against Petitioner asserting the ’501 patent.
The complaint was served upon the Petitioner on July 11, 2013. Paper 3 ¶1.
The instant Petition was filed January 20, 2015, more than a year from the
service date of the complaint in the infringement civil action.
Normally, such a Petition would be time barred. 35 U.S.C. § 315(b).
Under certain circumstances, a Petitioner can file a petition and request
joinder of the later proceeding, if instituted, with a previous proceeding.
35 U.S.C. § 315(c).
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In order for a proceeding to be joined with another, however, there
must be a motion filed for joinder to a proceeding, and the proceeding
sought to be joined with must be an ongoing proceeding.
37 C.F.R. § 42.122.
Patent Owner requested adverse judgment in IPR2014-01053 (Paper
23 in IPR2014-01053). Although Petitioner sought a delay in terminating
that proceeding via conference call, that request was denied, and adverse
judgment was entered on some of the claims of the ’501 patent.
The practical effect of that entry of judgment was to end IPR2014-
01053 as a proceeding. As Paper 3 seeks joinder to that particular inter
partes review proceeding, the motion for joinder must be denied.
Thus, without the benefit of joinder, the instant Petition fails to
comply with the time requirements of 35 U.S.C. § 315(b).
As a consequence, the instant petition is denied.

III. CONCLUSION
For the foregoing reasons, we deny the Petition because it was not
filed within the time limits imposed under 35 U.S.C. § 315(b).
.
IV. ORDER
For the reasons given, it is
ORDERED that the Motion for Joinder is DENIED, and
FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(b), no inter
partes review is instituted as to claims 1–20 of the ’501 patent.

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PETITIONER:

Anthony Volpe
Ryan O’Donnell
VOLPE AND KOENIG, P.C.
avolpe@vklaw.com
rodonnell@vklaw.com

PATENT OWNER:

Anthony E. Dowell
Brian P. Lynch
NIRO, MCANDREWS & DOWELL, LLC
aedowell@niro-mcandrews.com
blynch@niro-mcandrews.com