Walmart Inc v. CaraVan Canopy Intl Inc

1. Case Identification

• Case #: IPR2020-01026
• Patent #: 5,944,040
• Filed: June 1, 2020
• Petitioner(s): Walmart Inc.
• Patent Owner(s): Caravan Canopy International, Inc.
• Challenged Claims: 1-3

2. Patent Overview

• Title: Collapsible Tent Frame
• Brief Description: The ’040 patent is directed to a collapsible tent frame with an allegedly improved roof structure. The invention purports to increase the interior space of a canopy tent by coupling a center pole to the side poles via center pole ribs, distinguishing it from prior art where a center pole was coupled to the joints of scissor-ribs between the side poles.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yang and Lynch - Claims 1-3 are obvious over Yang in view of Lynch.

• Prior Art Relied Upon: Yang (Japanese Application # H1-61370) and Lynch (Patent 4,779,635).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yang discloses a collapsible tent frame with nearly all the claimed features, including side poles, side pole ribs (scissor assemblies), sliders, and center pole ribs. However, Yang teaches a central "roof beam bearing" rather than an elongated "center pole." Lynch was argued to cure this deficiency by disclosing a prominent center pole ("apex portion 50") explicitly designed to increase headroom in a similar collapsible canopy structure.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Yang and Lynch because both references address the same problem: creating a collapsible canopy with increased headroom that is easy to store. A POSITA would have been motivated to replace Yang’s roof beam bearing with Lynch’s extended center pole to achieve the known benefits of greater interior space and an improved roof pitch for shedding rainwater.
  • Expectation of Success: The structural similarities between the two tent frames meant that substituting Lynch’s center pole into Yang’s design was a simple modification. Petitioner argued this would yield predictable results, leading to a high expectation of success.

Ground 2: Obviousness over Tsai and Lynch - Claims 1-3 are obvious over Tsai in view of Lynch.

• Prior Art Relied Upon: Tsai (Patent 5,638,853) and Lynch (Patent 4,779,635).
• Core Argument for this Ground:
  • Prior Art Mapping: The argument paralleled Ground 1, but with Tsai as the primary reference. Petitioner asserted that Tsai teaches a nearly identical collapsible tent structure, including four vertical posts (side poles), scissor-type linkages (side pole ribs), and a roof portion with center pole ribs. However, Tsai's structure culminates in a central "head connector 7" rather than a distinct, elongated center pole. As in Ground 1, Lynch was relied upon to supply the teaching of a center pole.
  • Motivation to Combine: A POSITA would combine Tsai and Lynch to solve the known problem of reduced headroom in collapsible canopies. The motivation was to substitute Lynch’s apex portion 50 for Tsai’s head connector 7 to increase interior space and improve the roof pitch, which were known advantages of using a center pole.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination required little to no modification to Tsai's overall design.

Ground 3: Obviousness over Tsai, Berg, and Carter - Claims 1-3 are obvious over Tsai in view of Berg and Carter.

• Prior Art Relied Upon: Tsai (Patent 5,638,853), Berg (Patent 1,502,898), and Carter (Patent 5,511,572).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon a combination of Tsai and Berg to meet the limitations of claims 1 and 2, and adds Carter to address claim 3. Petitioner argued that the combination of Tsai and Berg (which teaches a simple tent with a center pole) teaches all elements of claims 1 and 2. Carter was introduced for its disclosure of a "foot portion 34" for engagement with the ground, which Petitioner argued meets the "claw member disposed at a lower end of each side pole" limitation of claim 3.
  • Motivation to Combine: A POSITA, seeking to improve the stability of the Tsai/Berg tent design, would have been motivated to incorporate Carter's foot portions. Since Tsai expressed a desire for a "solid and strong" tent structure, adding a known stability-enhancing feature like the footings taught by Carter was presented as an obvious design choice.
  • Expectation of Success: This was characterized as a simple substitution of a known element (a foot/claw member) for its known purpose (improving stability), leading to a predictable and successful result.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Yang in view of Applicant Admitted Prior Art (AAPA) and Berg, and Tsai in view of AAPA and Berg. These grounds relied on similar reasoning, using AAPA or Berg to supply the teaching of a center pole to the primary structures disclosed in Yang or Tsai.

4. Key Claim Construction Positions

• "center pole": Petitioner proposed construing this term to mean a "centrally-disposed, long, slender object." Petitioner argued this construction is consistent with the patent's use of "pole" in "side poles" and is supported by the figures and extrinsic dictionary definitions. It contended that the Patent Owner’s proposed construction ("a centrally disposed element for stretching and sustaining a tent's roof") was overly broad and would improperly read the structural requirement of a "pole" out of the claim.
• "constructed for stretching and sustaining a tent's roof": Petitioner proposed this phrase means "made to heighten and hold up the tent covering." This construction was based on the patent’s stated objectives and the functional descriptions of the center pole providing tension and support to the tent fabric.

5. Arguments Regarding Discretionary Denial

• Petitioner argued the Board should not exercise its discretion to deny institution under §325(d) because the petition raised new, non-cumulative prior art and arguments.
• It was asserted that the primary references—Yang, Tsai, Berg, and Carter—were never presented to or considered by the examiner during the original prosecution.
• While Lynch was cited during prosecution, it was used as a standalone anticipatory reference. Petitioner argued its use of Lynch in combination with new art, and for different teachings (the center pole, not the telescoping ribs the patentee distinguished), constituted a new argument.
• Petitioner contended the examiner materially erred by failing to consider references like Yang and Tsai, which allegedly taught the very hinged center pole ribs that the patentee used to overcome the rejection based on Lynch.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-3 of Patent 5,944,040 as unpatentable.