Sensio Inc v. Select Brands Inc

1. Case Identification

• Case #: IPR2013-00501
• Patent #: D675,864
• Filed: August 7, 2013
• Petitioner(s): Sensio Inc.
• Patent Owner(s): Select Brands, Inc.
• Challenged Claims: The single claim of the patent.

2. Patent Overview

• Title: Multiple Crock Buffet Server
• Brief Description: The ’864 patent is a design patent directed to the ornamental design for portions of the curved rims of three bowl inserts for a multiple crock buffet server. The claimed design consists of the features shown in solid lines in the patent figures.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Shi '429 - The claim is anticipated under 35 U.S.C. §102(a) or, in the alternative, obvious under 35 U.S.C. §103(a) over Shi '429.

• Prior Art Relied Upon: Shi '429 (CN Application # 101695429).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shi '429, a Chinese utility patent application, discloses a buffet server design with a virtually identical overall visual appearance to the ’864 patent. Petitioner asserted that Shi ’429 shows the same arrangement of three curved rims and the same specific rim profile, featuring a slight protrusion on top, a rounded top edge, and a less rounded bottom edge. It was argued that an ordinary observer familiar with the prior art would be deceived into believing that the design of Shi ’429 and the claimed design are the same.
  • Motivation to Combine: For the alternative obviousness ground, Petitioner contended that Shi '429 is so similar to the claimed design that no secondary reference is necessary. Any minor differences, such as in proportion, were described as de minimus and would have been obvious modifications to a designer of ordinary skill in the art of small kitchen appliances.

Ground 2: Anticipation and Obviousness over Lu '763 - The claim is anticipated under §102(a) or, in the alternative, obvious under §103(a) over Lu '763.

• Prior Art Relied Upon: Lu '763 (Chinese Design Registration CN301383763).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lu '763, a Chinese design registration, discloses the same overall visual impression as the claimed design. It was argued that Lu '763 shows the same portions of three curved rims and possesses a similar thick rim profile with rounded edges. Petitioner contended that these similarities are sufficient to deceive an ordinary observer into believing the designs are identical, thereby anticipating the claim.
  • Motivation to Combine: In the alternative obviousness argument, Petitioner stated that Lu '763 serves as a suitable primary reference because it shares "basically the same design characteristics" as the claimed design. Any alleged differences were argued to be de minimus and insufficient to support patentability.

Ground 3: Obviousness over Shi '547 in view of Perkins '654 - The claim is obvious under §103(a) over Shi '547 in view of Perkins '654.

• Prior Art Relied Upon: Shi '547 (Chinese Design Registration CN301010547) and Perkins '654 (Patent D590,654).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Shi '547 is a suitable primary reference, as it discloses a slow cooker with the same basic three-bowl arrangement as the claimed design, but with round-shaped bowls. Perkins '654, a contemporaneous U.S. design patent, was presented as a secondary reference that discloses an oval-shaped bowl with a rim profile very similar to that claimed in the ’864 patent.
  • Motivation to Combine: Petitioner argued a designer of ordinary skill would combine these references because they are "so related" as contemporaneous slow cooker designs in the same field. This designer would be motivated to apply the specific oval-shaped rim design of Perkins '654 to the three-bowl buffet server arrangement taught by Shi '547 to achieve the overall visual appearance of the claimed design. The similarity in the rim profiles between Perkins '654 and the claimed design was cited as a further suggestion for the modification.
  • Expectation of Success: The petition implied a high expectation of success, as the combination involved the simple application of a known rim design (Perkins '654) to a known product configuration (Shi '547), resulting in a predictable final appearance.

• Additional Grounds: Petitioner asserted numerous additional anticipation and obviousness challenges. These included anticipation and obviousness grounds based on Shi '889 (a Chinese design registration) and Shi '269 (a Chinese patent application), which were argued to be visually similar to the claimed design. Further obviousness combinations included modifying Shi '547 or Shi '269 with Shi '110 (a Chinese invention patent application showing an oval bowl).

4. Key Claim Construction Positions

• Petitioner argued that the scope of the single claim of the ’864 patent, which depicts oval bowls, should be construed to also cover buffet servers with round bowls.
• This argument was based on a pre-suit infringement letter from the Patent Owner to the Petitioner. In the letter, the Patent Owner accused seven of Petitioner's slow cooker models—all featuring round bowls—of having features that "appear to be identical" to the design "disclosed and claimed in the D'864 patent." Petitioner asserted this constituted an admission by the Patent Owner as to the scope of the patent, which should be considered in determining patentability.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of the claim of the ’864 patent as unpatentable.