Sensio Inc v. Select Brands Inc

1. Case Identification

• Case #: IPR2013-00500
• Patent #: D669,731
• Filed: August 7, 2013
• Petitioner(s): Sensio Inc.
• Patent Owner(s): Select Brands, Inc.
• Challenged Claims: The single design claim (covering embodiments 1-4).

2. Patent Overview

• Title: Multiple Crock Buffet Server
• Brief Description: The ’731 patent claims the ornamental design for a multiple crock buffet server. The design is defined by four patentably indistinct embodiments, with the core claimed features being portions of the curved rims of two or more server bowl inserts having a specific profile, as shown in solid lines in the patent figures.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Shi '429 - The single claim (embodiments 1-3) is anticipated under 35 U.S.C. § 102(a) or, alternatively, obvious under 35 U.S.C. § 103(a) over Shi ’429.

• Prior Art Relied Upon: Shi (CN Application # 101695429 A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shi ’429, a Chinese utility patent application, disclosed a buffet server design with a virtually identical overall visual appearance to the claimed design. Specifically, Petitioner asserted that Shi ’429 showed the same curved rims and rim profile for the bowl inserts, such that an ordinary observer would be deceived into believing the designs were the same. The anticipation argument was applied to the first three embodiments of the ’731 patent.
  • Motivation to Combine (for §103): For the alternative obviousness ground, Petitioner contended that any minor differences in proportion or detail between Shi ’429 and the claimed design were de minimus. These differences would have represented obvious modifications for a designer of ordinary skill in the art of small kitchen appliances.

Ground 2: Obviousness over Shi '547 and Perkins '654 - The single claim (embodiment 1) is obvious over Shi '547 in view of Perkins '654.

• Prior Art Relied Upon: Shi (Chinese Design Registration # CN301010547), Perkins (Patent D590,654).
• Core Argument for this Ground:
  • Prior Art Mapping: Shi ’547 was presented as a primary reference disclosing a multi-bowl slow cooker with round serving bowls that is “basically the same” as the claimed design under the Durling test. Perkins ’654, a contemporaneous U.S. design patent, was used as a secondary reference teaching an oval-shaped bowl with a rim profile similar to the claimed design.
  • Motivation to Combine: Petitioner argued a designer would combine these references because they are contemporaneous designs in the same field of slow cookers. This close relationship would suggest to a designer of ordinary skill the application of the oval-shaped rim from Perkins to the multi-bowl arrangement of Shi ’547.
  • Expectation of Success: The combination would predictably result in a hypothetical design that an ordinary observer would find to be the same as the claimed design in embodiment 1.

Ground 3: Obviousness over Shi '269 and Shi '110 - The single claim (embodiments 1-3) is obvious over Shi '269 in view of Shi '110.

• Prior Art Relied Upon: Shi (CN Application # 101564269 A), Shi (CN Application # 101862110 A).

• Core Argument for this Ground:

  • Prior Art Mapping: Following a similar logic, Shi ’269 served as the primary reference, showing a slow cooker with round bowls and design characteristics basically the same as the claimed design. Shi ’110, another Chinese patent application, was introduced as a secondary reference that taught an oval-shaped bowl insert.
  • Motivation to Combine: The motivation was based on the references being contemporaneous slow cooker designs in the same field of art. This would make it obvious to a designer to apply the oval bowl shape from Shi ’110 to the multi-bowl configuration of Shi ’269. The similarity in rim profiles between the references would further suggest the modification.
  • Expectation of Success: Petitioner argued the resulting hypothetical design would have the same overall visual appearance as the claimed embodiments, rendering them obvious.

• Additional Grounds: Petitioner asserted numerous other grounds, including anticipation and obviousness challenges based individually on Shi (Chinese Design Registration # CN301282889), Lu (Chinese Design Registration # CN301383763), Shi (Chinese Design Registration # CN301010547), Shi (CN Application # 101564269 A), and Shi (CN Application # 100577069). Additional obviousness combinations included Shi ’269 over Perkins ’654 and Shi ’069 over Shi ’110, all relying on similar arguments of identical overall visual impression or de minimus design modifications.

4. Key Claim Construction Positions

• Petitioner argued that because the patent’s four embodiments were deemed patentably indistinct by the Examiner during prosecution, a showing that any single embodiment is unpatentable is sufficient to invalidate the entire design claim.
• Petitioner contended that the claimed design should be construed to cover both oval and round server bowls. This argument was based on the Patent Owner’s pre-litigation letters, which accused Petitioner's products featuring round bowls of infringement. Petitioner asserted this constituted an admission as to the claim's broad scope, which was central to invalidity grounds relying on prior art with round bowls.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of the single claim of Patent D669,731 as unpatentable.