PTAB

IPR2021-00365

Global Shade Corp v. With U E Commerce Shanghai Co Ltd

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1. Case Identification

2. Patent Overview

  • Title: Collapsible Canopy
  • Brief Description: The ’710 patent discloses a collapsible canopy structure that uses a specific central locking mechanism to secure the frame in an erected position. The challenged claims are directed to the overall canopy assembly (claims 8, 9, 11) and the central lock mechanism itself (claim 7).

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 8-9 and 11 over Rousselle in view of Tsai

  • Prior Art Relied Upon: Rousselle (Patent 6,345,639) and Tsai (UK Application # GB2321913A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rousselle, which discloses a collapsible shelter with a central locking mechanism, teaches most limitations of independent claim 8, including the supporting legs, inner retractable units, and a center lock. However, Petitioner contended Rousselle lacks the claimed "plurality of outer retractable units connected between every two adjacent supporting legs." This limitation, Petitioner asserted, is taught by Tsai, which discloses a collapsible shelter with "linking assemblies" (scissors-type linkages) connecting adjacent legs to improve stability. The inner retractable units and the combined roof frame structure were also argued to be disclosed or suggested by the combination.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Tsai’s stability-enhancing outer retractable units with Rousselle’s canopy to address the known problem of instability in such structures. Petitioner noted that Rousselle expressly states its locking mechanism can be used with various frame structures, suggesting the modification.
    • Expectation of Success: A POSITA would have a reasonable expectation of success as outer retractable units were well-known components for canopies, and their addition to Rousselle's frame was a simple combination of known elements to achieve a predictable result.

Ground 2: Obviousness of Claims 8-9 and 11 over Chang in view of Tsai

  • Prior Art Relied Upon: Chang (WO 2000/023676) and Tsai (UK Application # GB2321913A).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an argument parallel to Ground 1. Petitioner asserted that Chang discloses a collapsible canopy with a central locking mechanism that meets most limitations of claim 8. Like Rousselle, Chang allegedly lacks the "outer retractable units" connecting adjacent legs. Petitioner again relied on Tsai to teach this missing element. Chang’s flexible poles and supporting poles were argued to constitute the claimed "inner retractable units" that form a roof frame.
    • Motivation to Combine: The motivation was identical to that in Ground 1: a POSITA would incorporate Tsai's outer retractable units into Chang's canopy to improve stability, a known benefit disclosed by Tsai.
    • Expectation of Success: As both Chang's canopy structure and Tsai's retractable units were known in the art, a POSITA would predictably and successfully combine them.

Ground 3: Anticipation and Obviousness of Claim 7 over Ohnishi

  • Prior Art Relied Upon: Ohnishi (Patent 8,066,300).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Ohnishi anticipates every limitation of claim 7, which is directed solely to a "center lock" mechanism. Ohnishi discloses a "connecting mechanism" for a collapsible stroller handlebar that Petitioner mapped to the claimed elements, including a center pole ("fixed shaft 63"), a clamping groove ("neck portion 63b"), and a spring-loaded locking piece. Critically, Petitioner argued that Ohnishi’s locking piece includes a "first through hole" with a small-diameter "clamping hole part" and a large-diameter "through hole part" arranged side-by-side, directly corresponding to the specific structure recited in claim 7.
    • Key Aspects: As an alternative, Petitioner argued that claim 7 is obvious over Ohnishi. To the extent any minor positional differences exist (e.g., the orientation of the "top cap" versus the "bottom cap"), a POSITA would have understood that Ohnishi's lock could be rotated without changing its function and would have been motivated to do so for advantageous positioning and easier alignment.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 8-9 and 11 over Tsai as the primary reference in view of the central lock mechanisms from either Rousselle or Chang.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be improper. They contended that the parallel district court litigation is at an early stage, with no claim construction or validity determinations made. Furthermore, Petitioner argued the IPR and litigation are not co-extensive, as claim 7 is challenged in the IPR but was not asserted in the litigation, which favors institution. Petitioner stated its intent to move for a stay of the litigation pending the outcome of the IPR.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 7-9 and 11 of the ’710 patent as unpatentable.