PTAB

IPR2013-00580

Sensio Inc v. Select Brands Inc

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1. Case Identification

2. Patent Overview

  • Title: Multiple Crock Buffet Server
  • Brief Description: The ’447 patent claims the ornamental design for portions of two curved bowl-insert rims for a multiple crock buffet server. The claimed design is limited to the specific profile of the rims, with the main housing, lids, and handles shown in broken lines and disclaimed.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Shi ’429 - The single claim is anticipated under 35 U.S.C. § 102 or obvious under §103 over Shi ’429.

  • Prior Art Relied Upon: Shi ’429 (Chinese Utility Patent Application CN 101695429 A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shi ’429, which discloses a multiple crock buffet server, presents a virtually identical overall visual appearance to the claimed design. It contended that an ordinary observer would be deceived into believing the designs were the same, focusing on the visual identity of the two outer-most curved rims and their specific profile as depicted in both the patent and the prior art.
    • Motivation to Combine (for §103): As an alternative to anticipation, Petitioner asserted that Shi ’429 is a suitable primary reference disclosing "basically the same design characteristics" as the claimed design. It argued that no secondary reference was necessary because any minor differences, such as in the proportion of the curved rims, would represent obvious changes to a designer of ordinary skill.
    • Expectation of Success (for §103): The argument implied success was expected, as any potential modifications were characterized as simple and routine adjustments in proportioning.

Ground 2: Anticipation and Obviousness over Shi ’547 - The single claim is anticipated under §102 or obvious under §103 over Shi ’547.

  • Prior Art Relied Upon: Shi ’547 (Chinese Design Registration CN301010547).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Shi ’547, which depicts a buffet server with round serving bowls, discloses the same overall visual impression as the claimed design. The argument highlighted that Shi ’547 shows a very similar thick rim profile with rounded edges and discloses the same ornamental portions of the two outer-most curved rims.
    • Motivation to Combine (for §103): For the alternative obviousness ground, Petitioner again contended that Shi ’547 serves as a primary reference so similar to the claimed design that any differences are de minimus and no secondary reference is required.
    • Key Aspects: This ground heavily relied on the Patent Owner's pre-litigation letters accusing Petitioner's products with round bowls of infringing parent patents to the ’447 patent. Petitioner framed this as an admission that an ordinary observer would consider a design with round bowls to be identical to the claimed design, thereby strengthening the anticipation argument based on the round-bowled Shi ’547 reference.

Ground 3: Obviousness over Shi ’547 in view of Shi ’110 - The single claim is obvious over Shi ’547 in view of Shi ’110.

  • Prior Art Relied Upon: Shi ’547 (Chinese Design Registration CN301010547) and Shi ’110 (Chinese Invention Patent Application CN 101862110).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner designated Shi ’547 as a suitable primary reference disclosing a slow cooker with round bowls and overall design characteristics similar to the claimed design. The secondary reference, Shi ’110, was used for its disclosure of an oval-shaped bowl insert.
    • Motivation to Combine: A designer of ordinary skill would combine the references because both are contemporaneous slow cooker designs, making them "so related" that applying features from one to the other would be a natural design step. Petitioner argued that a designer would be motivated to apply the oval-shaped bowl from Shi ’110 to the outer-most bowl positions in the Shi ’547 design. The similarity in rim profiles between the two references was cited as further suggesting this modification.
    • Expectation of Success: Success would be expected as the combination amounted to a predictable substitution of one known bowl shape for another within the same type of kitchen appliance.

  • Additional Grounds: Petitioner asserted numerous additional anticipation and obviousness challenges based on other single prior art references, including Shi ’889, Lu ’763, Shi ’269, Shi ’069, and Lu ’762. It also asserted another combination ground based on Shi ’069 in view of Shi ’110. All grounds relied on similar visual comparison arguments.

4. Key Claim Construction Positions

  • Petitioner argued that under the broadest reasonable construction, the single claim of the ’447 patent is limited to the specific ornamental features shown in solid lines.
  • The claim was construed to cover: (1) portions of the curved rims of two bowl inserts, separated by any distance; and (2) rims having a specific profile in which the side slightly protrudes at the top with a rounded top edge and a less-rounded bottom edge.
  • Petitioner emphasized that the design explicitly disclaims the server base housing, control knobs, lids, lid holders, outer handle surfaces, and any spoon-rest notches, as these features are depicted in broken lines.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner's central contention, woven throughout multiple grounds, was that the Patent Owner's own actions defined the scope of the design.
  • It was argued that the Patent Owner’s pre-suit letters accusing buffet servers with round bowls of infringement constituted a binding admission. This admission, Petitioner contended, meant that an ordinary observer would be deceived into believing a design with round bowls is the same as the claimed design (which depicts oval bowls), making prior art with round bowls highly relevant for anticipation.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of the single claim of the ’447 patent as unpatentable.