Treasure Garden Inc v. ATLeisure LLC

1. Case Identification

• Case #: IPR2025-01005
• Patent #: 8,104,492
• Filed: May 22, 2025
• Petitioner(s): Treasure Garden, Inc.
• Patent Owner(s): ATLeisure, LLC
• Challenged Claims: 1-7

2. Patent Overview

• Title: Cantilevered Umbrella
• Brief Description: The ’492 patent discloses a cantilevered umbrella with a mechanism for raising, lowering, and adjusting the angle of the canopy. The purported improvement involves a sliding member on the main pole that includes a winding mechanism for opening and closing the canopy.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 5-7 by Wang ’109

• Prior Art Relied Upon: Wang ’109 (Chinese Utility Model Patent No. CN 201076109Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang ’109, which was not before the examiner, discloses every limitation of claims 1 and 5-7. Wang ’109 teaches a cantilevered umbrella with a sliding "positioning mechanism" that moves along a vertical pole to adjust the canopy angle. Crucially, this sliding member includes a winding mechanism with a crank handle and a winder hub ("rope reel wheel") for tensioning a line to open and close the canopy, directly teaching the limitation added during prosecution to overcome prior art. Petitioner asserted Wang ’109 also discloses a ratchet teeth and pawl structure corresponding to the "locking means" of claim 1.
  • Key Aspects: This ground relies on the argument that the ’492 patent is not entitled to its provisional filing date, making Wang ’109, which issued in June 2008, valid prior art.

Ground 2: Anticipation of Claims 1 and 5-7 by Wang ’439

• Prior Art Relied Upon: Wang ’439 (Chinese Utility Model Patent No. CN 201197439Y).
• Core Argument for this Ground:
  • Prior Art Mapping: As an alternative to Ground 1, Petitioner contended Wang ’439 also anticipates claims 1 and 5-7. Similar to Wang ’109, Wang ’439 describes a cantilevered umbrella with a sliding "handle mechanism" that incorporates a cranking mechanism and winder hub ("rope winding wheel") for canopy operation. Petitioner argued this reference discloses all structural elements of claim 1, including the main pole, sliding member with a mounted winder hub, brace, arm, and canopy. For the "locking means," Wang ’439 discloses a latch pin and hole structure that Petitioner mapped to one of the corresponding structures for that term in the ’492 patent.
  • Key Aspects: This ground also depends on the ’492 patent being denied its provisional priority date, as Wang ’439 issued in February 2009.

Ground 3: Obviousness of Claims 1-7 over Glatz ’980, Wang ’460, and other art

• Prior Art Relied Upon: Glatz ’980 (Patent 6,014,980), Wang ’460 (Chinese Utility Model Patent No. CN 201001460Y), Bertola ’895 (German Application Publication No. DE20014895U1), Tung ’037 (Patent 6,478,037), and Liu ’171 (Patent 5,284,171).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Glatz ’980 teaches a cantilevered umbrella with a sliding member to adjust canopy angle, but instead of a winder hub, it uses a simple cleat to secure the operating line. Wang ’460 explicitly teaches a winder hub with a crank mounted on a sliding member for opening and closing an umbrella canopy. Petitioner argued claims 1 and 5-7 are obvious by modifying Glatz ’980 to replace its cleat with the known winder hub from Wang ’460. For dependent claims 2-4, which recite specific "locking means," Petitioner combined the Glatz/Wang combination with secondary references that teach those exact structures: Tung ’037 for the cam lock (claim 2), Liu ’171 for the ratchet/pawl (claim 3), and Bertola ’895 for the pin/hole mechanism (claim 4).
  • Motivation to Combine: A POSITA would combine Glatz ’980 and Wang ’460 to improve the ease of use, safety, and mechanical advantage of the Glatz umbrella, consistent with the stated goals of both references. Substituting the cleat with a well-known winder hub was a simple substitution of one known element for another to obtain predictable results. Similarly, a POSITA would be motivated to incorporate the known, more effective locking mechanisms from Tung, Liu, and Bertola into the base umbrella design to improve safety and usability.
  • Expectation of Success: The proposed modifications involved the straightforward application of known technologies (winder hubs, specific locking mechanisms) to a known umbrella design, yielding predictable improvements in functionality and safety.

4. Key Claim Construction Positions

• "locking means for releasably securing": Petitioner contended this term in claim 1 is a means-plus-function limitation under pre-AIA 35 U.S.C. §112, ¶ 6. The claimed function is "releasably securing the sliding member to the main pole at a selected location." The three corresponding structures disclosed in the ’492 patent specification are:
  • A cam lock member mechanism (Fig. 4).
  • A latch pin and hole structure (Fig. 7).
  • A ratchet teeth and pawl structure (Fig. 8).
• This construction is critical because Petitioner’s invalidity grounds map prior art directly onto these specific structures or their known equivalents.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued claims 1 and 5-7 of the ’492 patent are not entitled to the May 5, 2008 filing date of their provisional application. The petition asserted that the non-provisional application, filed May 5, 2009, added new matter by significantly altering the cam lock structure shown in Figure 4 and its corresponding description. Because this new structure is one of the three structures corresponding to the "locking means" limitation, the scope of the claims was broadened beyond the provisional's disclosure. This alleged lack of written description support makes the effective filing date May 5, 2009, rendering Wang ’109 (June 2008) and Wang ’439 (Feb. 2009) valid §102 prior art.

6. Arguments Regarding Discretionary Denial

• §314(a) / Fintiv: Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation is in its early stages, with no trial date set and minimal resources expended.
• §325(d): Petitioner contended denial under §325(d) is inappropriate because the primary prior art references (Wang ’109, Wang ’439, Glatz ’980) are new and were never considered by the examiner. Further, Petitioner asserted the examiner did not properly evaluate the patent’s priority claim, which is a central issue in the petition.

7. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-7 of the ’492 patent as unpatentable.