PTAB

IPR2023-00580

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

Log In

1. Case Identification

2. Patent Overview

  • Title: Collapsible Canopy
  • Brief Description: The ’738 patent discloses a collapsible canopy frame featuring a central locking mechanism. The frame includes supporting legs, inner retractable units forming a roof structure, and outer retractable units connecting adjacent legs, with the central lock designed to secure the canopy in an erected position.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rousselle and Tsai - Claims 1, 2, 4, and 14 are obvious 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 disclosed all major elements of the claimed canopy frame except for the specific structure of the outer retractable units. Rousselle taught a collapsible canopy with at least three supporting legs, inner retractable units that form a roof, and a central locking mechanism with top and bottom caps and a center pole. The key limitation added during prosecution—a plurality of outer retractable units comprising hinged X-shaped rod members—was allegedly disclosed by Tsai. Tsai taught using such X-shaped, scissors-type linkages between supporting legs to improve canopy stability. Petitioner contended that dependent claims 2, 4, and 14 were also rendered obvious, with Tsai teaching the sliding sleeves and fixed joints of claim 2, and Rousselle teaching the specific central lock features of claims 4 and 14.
    • Motivation to Combine: A POSITA would combine Tsai’s stability-enhancing X-shaped outer retractable units with Rousselle’s canopy frame to achieve a predictable improvement in structural stability. Tsai explicitly described its linkages as a solution to the instability of prior canopies where legs were only connected via a central structure, as in Rousselle. Furthermore, Rousselle suggested its locking mechanism could be used with various frame structures, inviting such a combination. The integration was presented as a simple addition of a known element to a known device to obtain predictable results.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because X-shaped outer retractable units were a well-known, conventional technique for improving the stability of collapsible shelters.

Ground 2: Obviousness over Rousselle, Tsai, and Ohnishi - Claims 4, 13, and 14 are obvious over Rousselle, Tsai, and Ohnishi.

  • Prior Art Relied Upon: Rousselle (Patent 6,345,639), Tsai (UK Application # GB2321913A), and Ohnishi (Patent 8,066,300).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Rousselle and Tsai for the overall canopy structure but introduced Ohnishi to disclose specific features of the central lock recited in claims 4, 13, and 14. Petitioner asserted that Ohnishi, which disclosed a central lock for a collapsible cart, taught using a movable locking piece that engages a grooved center pole. Specifically, Ohnishi's locking piece allegedly included a shaped through-hole with a larger section (for unlocking) and a smaller section that clamps a neck portion (groove) of the center pole in the locked state. This structure was argued to meet the limitations of a locking piece that moves radially, has a through-hole for the center pole, and clamps a groove when locked, as recited in claim 4. Ohnishi was also alleged to disclose the specific hole diameters and side-by-side arrangement recited in claim 13, and the annular groove and semispherical guide part recited in claim 14.
    • Motivation to Combine: A POSITA would have been motivated to substitute Ohnishi's locking piece into the Rousselle/Tsai canopy frame as a simple replacement of one known mechanical component with another known, functionally equivalent component. Ohnishi’s lock was designed to interact with a grooved center pole of the same essential design as Rousselle’s, making the substitution straightforward and predictable. The combination was presented as the use of a known technique (Ohnishi's lock) to improve a similar device (Rousselle's lock) to yield predictable results.
    • Expectation of Success: Success was reasonably expected because Ohnishi's locking piece was a known element in the art that interacted with a center pole essentially identical to Rousselle's, ensuring functional compatibility.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under Fintiv based on a co-pending district court litigation. Petitioner stated its intent to move for a stay in the litigation, noting the high likelihood of it being granted. It argued that investment in the parallel proceeding was minimal, as discovery was in its infancy and no claim construction had occurred. Petitioner further stipulated that if the IPR is instituted and the litigation is not stayed, it would not pursue invalidity in court based on the grounds or references in the Petition. Finally, Petitioner emphasized that the prior art combinations, particularly the inclusion of Tsai, have never been considered by the PTO, and the petition's merits strongly favor institution.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 4, 13, and 14 of the ’738 patent as unpatentable.