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

Patent Trial and Appeal Board

Mar 6, 2015

13589777 (P.T.A.B. Mar. 6, 2015)

Trials@uspto.gov Paper 22
571-272-7822 Entered: March 6, 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 IPR2014-01053
Patent 8,388,501 B2
____________

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

MOORE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71

I. INTRODUCTION
Artsana USA, Inc. (“Petitioner”) filed a Corrected Petition (Paper 5,
“Pet.”) 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. Kolcraft Enterprises, Inc. (“Patent Owner”) filed a Preliminary
Response (Paper 11, “Prelim. Resp.”). The Board instituted review
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Patent 8,388,501 B2

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(Paper 14, “Dec.”). Petitioner seeks rehearing of that decision. (Paper 16
“Req. Reh’g”).
We have considered the Request for Rehearing and grant it in part.

II. STANDARD OF REVIEW
In a request for rehearing, the dissatisfied party must identify,
specifically, all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was addressed previously.
37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a
petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
III. ANALYSIS
A. Basis for Request and Requested Relief
Petitioner contends that our Decision is based upon the erroneous
determination that a document disclosing the Tyco Sesame Street Cozy Quilt
Gym (“Tyco”), which document is a declaration filed in litigation in New
Jersey in 1995, and was attached as Exhibit 1009 to Petitioner’s Petition, is
not a printed publication. Req. Reh’g 1. Petitioner then seeks institution of
inter partes review on grounds 4-7 of the Petition as relief. Id.
B. Printed Publications
A printed publication in the United States is prior art if it was
described in a printed publication prior to the applicant’s date of invention.
35 U.S.C § 102(a) (2000). Whether a document is a "printed publication" is
"a legal determination based on underlying fact issues." In re Hall, 781 F.2d
897, 899 (Fed. Cir. 1986). To qualify as a printed publication, a document
must be generally available. Northern Telecom, Inc. v. Datapoint Corp., 908
F.2d 931 (Fed. Cir. 1990). There must be sufficient evidence to find that
anyone could have had access to the documents by the exercise of
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reasonable diligence. Id. “Anyone” is “the pertinent part of the public,”
and “diligence” is “the diligence of persons interested in and of ordinary
skill in the subject matter or art.” In re Wyer, 655 F.2d 221, 226 (CCPA
1981).
C. The Asserted Error
Petitioner focuses its argument principally on the accessibility of the
records of a court. Req. Reh’g 5–7. “[A]ccessibility always was and is
the key inquiry.” Id. at 6 (emphasis in original). “[T]he key inquiry is
whether the reference was publicly accessible.” Id. at 7 (emphasis in
original). Petitioner cites two United States District court cases in support
of that argument. Req. Reh’g 6.
In Brian Jackson Associates, Inc. v. San Manuel Copper Corp., 259 F.
Supp. 793 (D. Ariz 1966) Petitioner asserts that the court determined that
licensee instructions found in the records of the United States Court of
Appeals for the Third Circuit qualified as publications within the meaning of
35 U.S.C. § 102. Id.
The pertinent part of the court’s decision is reproduced below:

There has been some contention as to whether the Instructions to the
Pierce-Smith Licensees are a publication within the meaning of 35
U.S.C. § 102. They are a part of the records of the United States
Courts of Appeals for the Third Circuit. Those of the public who have
an interest in them may easily obtain a copy. I find that this satisfies
the requirement of a “publication.”

259 F. Supp at 804.
In Wichester Carton Corp. v. Standard Box Co., 294 F. Supp. 1207
(D. Mass 1969), Petitioner asserts that the court determined that a published
judicial opinion of the Supreme Judicial Court of Massachusetts constituted
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a prior art publication that rendered two claims of the patent at issue invalid.
Req. Reh’g 6.
The pertinent part of the court’s decision is reproduced below:
The court concludes that the two plates in the 1962 opinion constitute
a prior publication of claims 1 and 2 of the Wischusen patent so that
the patent is invalid with respect to these claims.

294 F. Supp. 1213.
Petitioner then asserts “District Court records and documents satisfy
this ‘key inquiry’ and qualify as printed publications.” Req. Reh’g 7.
It is important to note that in one instance the actual opinion itself
constituted the prior art (e.g., the Massachusetts decision containing actual
photographs). We are not provided with the nature of the Instructions to the
Pierce-Smith Licensees other than they are a part of the court records and a
copy “may easily be obtained.” What that court’s determination was based
upon is unknown to us.
Petitioner’s position is that “[a]fter reading the published opinion that
contained a detailed description of Tyco (Petition Ex.1009), it would be a
reasonable exercise of due diligence to locate the publicly available case
file.” Req. Reh’g. 11.
Petitioner also asserts, without evidentiary citation, that the court
decision “was not the only means to locate the Conley Declaration and
accompanying exhibits.” Req. Reh’g. 9.
Petitioner’s arguments tend to conflate the District Court decision, the
case file, and the underlying individual documents in the litigation. While
the District Court decision itself may be a publication, searchable to those
interested, and an entire case file generally findable and accessible, we are
far less certain about the level of diligence required to find this specific
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declaration and exhibits without prior knowledge thereof, and whether that
level is reasonable.
As evidence, Mr. Morgan testifies that he discovered the case while
“seeing the report case at .” Ex. 2012 ¶ 3. Despite this infirmity in his
declaration, we believe it is probable that he did find the case.
Mr. Morgan further testified that he reviewed the case file, which we
agree as a whole is locatable exercising reasonable diligence, and made
scanned copies of certain docket numbers. Ex. 1012 ¶¶ 5 and 6.
However, the evidentiary record becomes sparse at this point in the
search for the specific documents forming Exhibit 1009. We are not
provided with the process Mr. Morgan used to determine the relevance of
those docket numbers. Did Mr. Morgan already know about the declaration
and was he looking for it based on prior knowledge, having used some other
means to locate it, as suggested could be done in the Request for Rehearing
at page 9?
We are not provided with copies of the court indexing documents he
used to identify and arrive at the relevant documents. Does the court’s index
identify the description of a play gym? Is the court’s index by declarant
name or by number only? What led Mr. Morgan to select docket numbers 1,
7, 9, 13, 14, 15, 23, 26, 28, 29, 30, 31, 50, 52, and 75? Ex. 1012 ¶ 6.
The Request for Rehearing specifically urges that one interested in its
subject matter could have readily used the district court decision as a
“roadmap” to locate the Conley Declaration and accompanying exhibits.
Req. Reh’g 9.
Our review of that published decision, Tyco Industries, Inc. v. Tiny
Love, Ltd., 914 F. Supp. 1068 (D.N.J. 1996) indicates that it references
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numerous possible designs, but we are not specifically pointed by Petitioner
to how the decision leads a researcher specifically to the Tyco document in
the stated “exercise of reasonable diligence.” So far as we can tell, Mr.
Conley is only referenced once in the decision at 914 F. Supp. 1077, and that
reference is only to the trial transcript.
1
No mention of his declaration
testimony or any photographs contained in the declaration are apparent to us
in the decision. We have not been provided with the trial transcript. As a
consequence, we are not persuaded that this evidence shows a “roadmap” to
Exhibit 1009.
In determining whether a reference was “publicly accessible” under
patent law provision barring patentability of an invention previously
described in a “printed publication,” a court must consider all of the facts
and circumstances surrounding the reference's disclosure and determine
whether an interested researcher would have been sufficiently capable of
finding the reference and examining its contents. In re Lister, 583 F. 3d
1307, 1312 (Fed. Cir. 2009).
In Lister, our reviewing court observed that once accessibility was
shown, an additional inquiry must be answered. The court indicated that one
must also “consider whether anyone would have been able to learn of its
existence and potential relevance.” Id. at 1314. A central piece of the
determination; specifically, why one would seek this particular declaration

1
“…The snaps on the periphery of the blanket are used to keep the blanket
folded in half when it is placed in the portable position. Lastly, the grommets
depicted in the patent are used to hang the toys. See, e.g., Tr. at 448, 449,
466–70 (testimony of Denny Conley, Tyco's expert on toy design, wherein
he testified regarding the functional aspects of the design claimed in the
Tiny Love patent as embodied in the GYMINI Gym).”
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in the case file, is lacking sufficient argument and evidence for us to find a
researcher would have cause to look for it.
Based on the evidentiary record before us, we have been provided
insufficient credible evidence to arrive at a determination that one searching
for prior art would be able to learn that the Tyco Exhibit was in existence
and potentially relevant.
We do agree that our first sentence at the top of page 32 of the
Decision on Institution was inartfully phrased (Req. Reh’g 7), and strike it.
We replace it with “While a published decision may qualify as a printed
publication, we decline to conclude on this record that a single underlying
deposition and its exhibits in the District Court case also necessarily qualify
as printed publications.”
IV. CONCLUSION
For the foregoing reasons, we determine Petitioner has not
demonstrated that the panel overlooked or misapprehended any issues or
facts in its Decision to Institute, nor abused its discretion. However, we do
take the opportunity to modify our decision as noted above. Accordingly,
the Request for Rehearing is denied as to the merits, and granted for the
limited modification above.
V. ORDER
For the reasons given, it is
ORDERED that, the Request for Rehearing is GRANTED IN PART,
and we modify our decision as indicated above. However, we decline to
alter our decision not to institute on grounds 4-7.

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PETITIONER:
Anthony Volpe
avolpe@vklaw.com

Ryan O’Donnell
rodonnell@vklaw.com

PATENT OWNER:
Anthony Dowell
aedowell@niro-mcandrews.com

Raymond Niro, r.
rnironjr@niro-mcandrews.com

Brian Lynch
blynch@niro-mcandrews.com