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 designed to provide an enlarged and heightened interior space. The purported invention achieves this by coupling a central pole to the side poles via hinged center pole ribs, which are in turn connected to sliders on the side poles through support links.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Yang (Japanese Unexamined Utility Model Application Publication No. 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 claimed features, including side poles, scissor-type side ribs, sliders, connectors, and center pole ribs comprising two hinged rib members connected to the sliders via support links. However, Yang teaches a central "roof beam bearing" rather than an extended center pole. Petitioner asserted Lynch discloses an extended central apex portion (a center pole) constructed to stretch a tent's roof and increase headroom, which was the one element arguably missing from Yang.
  • Motivation to Combine: A POSITA would combine Yang and Lynch because both references address the same problem of creating collapsible canopies with increased headroom and easy setup. A POSITA would have been motivated to substitute Lynch’s extended center pole for Yang’s roof beam bearing to achieve the known benefits of increased headroom, improved roof pitch for shedding rainwater, and enhanced aesthetic appearance.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved a simple substitution of one known central support element for another to achieve a predictable result.

Ground 2: Obviousness over Yang in view of AAPA - Claims 1-3 are obvious over Yang in view of the Applicant Admitted Prior Art.

• Prior Art Relied Upon: Yang and Applicant Admitted Prior Art (AAPA) from the specification of the ’040 patent.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground is similar to Ground 1, with Yang providing the base frame structure. The AAPA, as described in the ’040 patent itself, discloses a conventional collapsible tent frame that includes an elongated center pole constructed for stretching and sustaining a tent roof.
  • Motivation to Combine: A POSITA seeking to improve Yang’s design to increase headspace would have looked to conventional designs, such as the AAPA. A POSITA would have been motivated to replace Yang’s roof beam bearing with the known center pole from the AAPA to gain headroom and create a steeper roof pitch to shed rainwater, which were known advantages of such a configuration.
  • Expectation of Success: The modification would have been a simple arrangement of old elements, each performing its known function, leading to predictable results.

Ground 3: Obviousness over Tsai in view of 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: Petitioner contended that Tsai discloses a collapsible tent frame structure that is nearly identical to the claimed invention, including the specific configuration of center pole ribs made of two hinged members connected to sliders via support links. However, Tsai teaches a central "head connector" rather than an elongated center pole. As in Ground 1, Lynch was cited for its teaching of an extended center pole that increases headroom.
  • Motivation to Combine: A POSITA would combine Tsai and Lynch as they address similar problems in the same field. A POSITA would have recognized that substituting Lynch's center pole for Tsai’s head connector would improve upon Tsai by providing more headspace and better tensioning of the roof fabric to reduce sag—known issues in the art that Lynch explicitly addressed.
  • Expectation of Success: A POSITA would have had a high expectation of success because the combination was straightforward, requiring little to no modification to Tsai's design to incorporate the well-known center pole concept from Lynch.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Yang in view of Berg (Patent 1,502,898); Tsai in view of AAPA; Tsai in view of Berg; and Tsai in view of Berg and Carter (Patent 5,511,572). These grounds relied on similar theories of substituting known central support elements (from Berg or AAPA) or adding known stability features (from Carter) to the base frames of Yang or Tsai.

4. Key Claim Construction Positions

• "center pole": Petitioner argued this term should be construed as a "centrally-disposed, long, slender object." This construction was based on the ordinary meaning of "pole" and its consistent depiction in the patent's figures. Petitioner contended that Patent Owner's proposed construction ("a centrally disposed element for stretching and sustaining a tent's roof") improperly reads the word "pole" out of the claim, rendering it meaningless.
• "constructed for stretching and sustaining a tent's roof": Petitioner argued this phrase should be construed to mean "made to heighten and hold up the tent covering." This construction was supported by the patent's description of the center pole's function to heighten the interior space and support the tent fabric.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d). The petition asserted that the primary prior art references relied upon—Yang, Tsai, Berg, and Carter—were not previously presented to or considered by the USPTO during the original prosecution of the ’040 patent. Although Lynch was cited by the examiner as an anticipatory reference, Petitioner argued its use in the petition was different. The petition relied on Lynch only as a secondary reference for its teaching of a center pole, a feature the Patent Owner did not dispute during prosecution. In contrast, the examiner's rejection and the Patent Owner's arguments focused on Lynch's center pole ribs, a teaching not relied upon by Petitioner. Therefore, the combinations and arguments in the petition were new and non-cumulative.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3 of the ’040 patent as unpatentable.