Treasure Garden Inc v. ATLeisure LLC

1. Case Identification

• Case #: IPR2025-01006
• 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 an improved mechanism for raising, lowering, and adjusting the canopy angle. The mechanism features a sliding member that moves along the main support pole and includes a winding mechanism to open and close the canopy.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wang in view of Tung, Liu, or Bertola - Claims 1-7

• Prior Art Relied Upon: Wang (Chinese Utility Model Patent No. CN 201001460Y), Tung (Patent 6,478,037), Liu (Patent 5,284,171), and Bertola (German Application Publication No. DE20014895U1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang, a prior art cantilevered umbrella, disclosed nearly every element of claims 1-7. Wang taught a main pole, a sliding member movable along the pole, and a winding mechanism with a winder hub mounted on the sliding member to open and close the canopy via a line. Petitioner contended the only significant element not disclosed by Wang was the specific "locking means" recited in the ’492 patent. Wang used a simple "bolt-locking hoop structure" to secure the sliding member.
  • Motivation to Combine: The secondary references were introduced to supply the specific locking mechanisms required by the claims, which Petitioner argued were well-known alternatives in the art. A person of ordinary skill in the art (POSITA) would combine Wang with one of the secondary references to improve its functionality. Wang’s design was described as inconvenient. Tung taught a cam latch mechanism, Liu taught a teeth-and-pawl mechanism, and Bertola taught a spring-loaded pin-and-hole mechanism. Petitioner asserted a POSITA would replace Wang’s rudimentary bolt lock with one of these known, more user-friendly, and reliable locking structures to create a better, more easily adjustable umbrella.
  • Expectation of Success: A POSITA would have a high expectation of success, as this involved the simple substitution of one known mechanical locking component for another in a predictable field to achieve improved, foreseeable results.

Ground 2: Obviousness over Ma '763 in view of Ma '297 and Secondary References - Claims 1-7

• Prior Art Relied Upon: Ma ’763 (Patent 6,321,763), Ma ’297 (European Patent Application No. EP1602297), and further in view of Bertola, Tung, or Liu for specific dependent claims.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ma ’763, like Wang, disclosed a cantilevered umbrella with a sliding member for adjusting the canopy angle. However, instead of a winder hub, Ma ’763 used a different line securing device (locking device 17) and a primary rope loop to both move and lock the sliding member. Petitioner contended Ma ’297 taught the missing element: a winding mechanism with a winder hub (reel 18) for opening and closing an umbrella canopy. The argument was that a POSITA would first modify Ma ’763 by replacing its line securing device with the winder hub from Ma ’297. Then, similar to Ground 1, a POSITA would further modify the combination to include the specific locking means taught by Bertola, Tung, or Liu to satisfy the limitations of the dependent claims.
  • Motivation to Combine: A POSITA would combine Ma ’763 with Ma ’297 to make the umbrella easier to open and close. Further, a POSITA would be motivated to replace Ma ’763's rope-based locking system with a dedicated mechanical lock from Bertola, Tung, or Liu. This would improve durability by removing rope-and-pulley systems prone to wear, and it would decouple the canopy opening function from the angle adjustment function, which was a known issue with the Ma ’763 design. This separation of functions would allow for more convenient, independent adjustment of the canopy angle.
  • Expectation of Success: A POSITA would have a high expectation of success in combining these known elements to create a more durable and functionally independent umbrella, as the outcomes were predictable.

4. Key Claim Construction Positions

• "locking means for releasably securing" (Claim 1): Petitioner argued this term was a means-plus-function limitation governed by pre-AIA 35 U.S.C. §112, ¶ 6.
  • Proposed Construction: The function is "releasably securing the sliding member to the main pole at a selected location." The corresponding structures disclosed in the ’492 patent specification are:
    • (1) a cam lock structure (Fig. 4);
    • (2) a latch pin and hole structure (Fig. 7); and
    • (3) a ratchet teeth and pawl structure (Fig. 8), and their equivalents.
  • Significance: This construction is central to all invalidity grounds. It limits the scope of the claim to these three specific structures, which Petitioner argued were all well-known in the prior art and obvious to substitute into the primary reference designs of Wang or Ma ’763.

5. Arguments Regarding Discretionary Denial

• Discretionary Denial under §314(a) (Fintiv): Petitioner argued against discretionary denial, stating the Fintiv factors favored institution. It was asserted that the co-pending district court litigation was in its early stages, with no trial date set and discovery not yet advanced. Petitioner also stated it would move to stay the litigation.
• Discretionary Denial under §325(d): Petitioner argued against denial, contending that the petition raised new, non-cumulative prior art and arguments. The primary references of Wang and Ma '763, and the specific combinations asserted, were not before the examiner during the original prosecution of the ’492 patent.

6. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-7 of the ’492 patent as unpatentable.