Trials@uspto.gov Paper No. 28
`Entered: April 21, 2014
`571-272-7822
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MUNCHKIN, INC. AND TOYS “R” US, INC.
`Petitioners
`
`v.
`
` LUV N’ CARE, LTD.
`Patent Owner
`____________
`
`Case IPR2013-00072
`Patent D617,465
`____________
`
`
`Before JENNIFER S. BISK, BENJAMIN D. M. WOOD, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`Entered: April 21, 2014
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MUNCHKIN, INC. AND TOYS “R” US, INC.
`Petitioners
`
`v.
`
` LUV N’ CARE, LTD.
`Patent Owner
`____________
`
`Case IPR2013-00072
`Patent D617,465
`____________
`
`
`Before JENNIFER S. BISK, BENJAMIN D. M. WOOD, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
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`Case IPR2013-00072
`Patent D617,465
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`I. BACKGROUND
`
`Munchkin, Inc. and Toys “R” Us, Inc. (collectively, “Petitioner”) filed
`a petition (Paper 3, “Pet.”) requesting an inter partes review of the sole
`claim of U.S. Patent D617,465 (Ex. 1002, “the ’465 patent”). Patent Owner,
`Luv N’ Care, Ltd., did not file a preliminary response. In an April 25, 2013,
`Decision to Institute (Paper 8, “Dec. on Pet.”), we granted the petition and
`instituted trial of the patent claim on the following grounds: (1) as obvious
`over US 2007/0221604 A1, published September 27, 2007 (Ex. 1006,
`“Hakim ’604”); and (2) as obvious over US 6,994,225 B2, issued February
`7, 2006 (Ex. 1013, “Hakim ’225”). Dec. on Pet. 23.
`After institution, Patent Owner filed a response (Paper 14, “PO
`Resp.”), and Petitioner filed a reply (Paper 18, “Pet. Reply”). Additionally,
`Patent Owner filed a motion to amend the claim (Paper 13, “Mot.”),
`Petitioner filed an opposition (Paper 17, “Pet. Opp.”), and Patent Owner
`filed a reply (Paper 19, “PO Reply”). Oral hearing was held on January 22,
`2014.1
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
`addresses issues and arguments raised during the trial. Issues and arguments
`raised prior to institution of trial, but not made during trial, are not addressed
`necessarily in this Decision.
`As discussed below, Petitioner has shown by a preponderance of the
`evidence that the sole claim of the ’465 patent is unpatentable, and Patent
`Owner has not met its burden of proof on the motion to amend.
`
`
`1 A transcript of the oral hearing is included in the record. Paper 26, “Tr.”
`2
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`Patent D617,465
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`A. Related Proceedings
`
`The following district court cases concerning the ’465 patent have
`been identified by one or more of the parties: (1) Luv N’ Care, Ltd. v. Toys
`“R” Us, Inc., 1:12-cv-00228 (S.D.N.Y. filed Jan. 11, 2012); (2) Luv N’
`Care, Ltd. v. Regent Baby Products Corp., 10-9492 (S.D.N.Y. filed Dec. 21,
`2010); and (3) Luv N’ Care, Ltd. v. Royal King Infant Prod’s Co. Ltd., 10-
`cv-00461 (E.D. Tex. filed Nov. 4, 2010). Paper 6, 2; Pet. 2.
`Petitioner additionally identifies an inter partes reexamination of
`related U.S. Patent D634,439 bearing control no. 95/001,973. Pet. 2.
`
`B.
`
`The ’465 Patent (Ex. 1002)
`
`The challenged ’465 patent is titled “Drinking Cup,” issued on June 8,
`2010, names Nouri E. Hakim as inventor, and is assigned to Patent Owner.
`Ex. 1002, 1. The claim of the ’465 patent recites “the ornamental design for
`a drinking cup, as shown and described.” Id.; see also Egyptian Goddess,
`Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (stating that
`“design patents ‘typically are claimed as shown in drawings’”) (quoting
`Arminak and Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314,
`1319 (Fed. Cir. 2007)). The ’465 patent includes five figures, reproduced
`below.
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`Figures 1-5 show front, right, top, bottom, and back views,
`respectively, of a drinking cup having a vessel, collar, and spout. Ex. 1002,
`1. The “DESCRIPTION” of the ’465 patent identifies these five views, and
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`states that “[t]he broken lines in the figures illustrate portions of the drinking
`cup and form no part of the claimed design.” 2 Id.; see also In re Owens, 710
`F.3d 1362, 1367 n.1 (Fed. Cir. 2013) (“[I]t is appropriate to disclaim certain
`design elements using broken lines, provided the application makes clear
`what has been claimed.”).
`
`II. TRIAL OF THE ISSUED CLAIM
`
`In instituting trial, we determined that there was a reasonable
`likelihood that the claim of the ’465 patent would have been obvious over
`each of Hakim ’225 and Hakim ’604. Dec. on Pet. 23. In response, Patent
`Owner does not argue that the claim is patentably distinct from those
`references. PO Resp. 6-7; Tr. 31:10-17. Rather, Patent Owner argues that
`the references are not prior art. PO Resp. 6-7; Tr. 31:10-17.
`Hakim ’225 issued February 7, 2006, and Hakim ’604 was published
`September 27, 2007. Ex. 1013, 1; Ex. 1006, 1. The ’465 patent issued from
`U.S. Application serial no. 29/292,909 (“the ’909 application”), which was
`not filed until October 31, 2007. Ex. 1002, 1. However, the ’909
`application was filed as a continuation of U.S. Application serial no.
`10/536,106 (“the ’106 application”), which is the national stage of PCT
`Patent Application PCT/US2003/024400, filed August 5, 2003.3 Ex. 1002,
`1; Ex. 1006, 1. Patent Owner argues that the claim of the ’465 patent is
`
`
`2 As shown in the figures, the broken lines are directed to a central portion of
`the bottom surface of the vessel, two series of five grooved ribs on the sides
`of the collar, and two notches adjacent to the top of the collar and bottom of
`the spout. Ex. 1002, Figs. 1-5.
`3 Hakim ’604 (Ex. 1006) is a publication of the ’106 application (Ex. 3001).
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`entitled to an effective filing date of August 5, 2003, thereby disqualifying
`Hakim ’225 and Hakim ’604 as prior art. PO Resp. 5-7.
`To be entitled to a parent’s effective filing date under 35 U.S.C.
`§ 120, a continuation must comply with the written description requirement.4
`Owens, 710 F.3d at 1366.
`The test for sufficiency of the written description, which is the
`same for either a design or a utility patent, has been expressed
`as “whether the disclosure of the application relied upon
`reasonably conveys to those skilled in the art that the inventor
`had possession of the claimed subject matter as of the filing
`date.”
`
`Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`(Fed. Cir. 2010) (en banc)).
`In the context of design patents, the drawings provide the
`written description of the invention. Thus, when an issue of
`priority arises under § 120 in the context of design patent
`prosecution, one looks to the drawings of the earlier application
`for disclosure of the subject matter claimed in the later
`application.
`
`
`Owens, 710 F.3d at 1366 (citations omitted).
`Petitioner argues that the ’106 application lacks written description
`support for the claim of the ’465 patent. Pet. 13-18. Petitioner’s argument is
`based, in part, on differences between the spout of the claimed design and
`the spout described and shown in the ’106 application. Pet. 16-18. Figure 3
`of the ’465 patent and Figure 12a of the ’106 application are reproduced
`below, side-by-side, with an annotation and with Figure 3 being rotated 90º
`
`
`4 The written description requirement, which is now found at 35 U.S.C.
`§ 112(a), was codified previously at 35 U.S.C. § 112, ¶ 1 (1975).
`6
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`counter-clockwise to align with Figure 12a.
`
`
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`Fig. 12a of the ’106 application
`
`
`Fig. 3 of ’465 patent
`(rotated 90º counter-clockwise)
`
`Figure 3 of the ’465 patent and Figure 12a of the ’106 application
`each illustrate a top view of a drinking cup having a spout, collar, and vessel,
`the vessels being barely visible. As can be seen, the claimed design of the
`’465 patent includes a spout tip that is different than that disclosed in the
`’106 application. Specifically, and as viewed from the top, (1) the outer
`boundary of the spout tip of the claimed design is larger than that of the ’106
`application; (2) the spout tip of the claimed design has a different, more
`rounded, oval shape than that of the racetrack shape of the spout tip in the
`’106 application; and (3) the spout tip of the claimed design has three
`concentric rings that the ’106 application does not disclose.
`Patent Owner argues that the ’106 application provides an adequate
`written description, based on the following disclosure:
`[I]n the preferred embodiment of the spout, the tube is in the
`shape of an oval when viewed from the top. Thus, the valve of
`the nipple preferably has an upper cylindrical section, and the
`valve of the spout preferably has an upper tubular section with
`an oval shape. Alternately, another shape may be provided if
`desired.
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`PO Resp. 6; Ex. 3001, 21.5 Although this excerpt from the ’106 application
`discloses that an oval or other shape may be used for the spout, it does not
`identify the specific shape of the spout in the claimed design or otherwise
`reasonably convey to those skilled in the art that the inventor had possession
`of the claimed design. See Ariad Pharms., 598 F.3d at 1351.
`For the foregoing reasons, the claim of the ’465 patent is not entitled
`to the benefit of the filing date of the ’106 application. Accordingly, Hakim
`’225 and Hakim ’604 are prior art to the claim of the ’465 patent, which
`would have been obvious over either reference. See Dec. on Pet. 13-16; see
`also PO Resp. 6-7 (not arguing the claim is patentably distinct over Hakim
`’225 or Hakim ’604); Tr. 31:10-17 (counsel for Patent Owner conceding that
`the claim is not patentable if it is denied the benefit of the filing date of the
`’106 application).
`
`III. MOTION TO AMEND
`
`During an inter partes review, a patent owner may file a motion to
`amend the patent. 35 U.S.C. § 316(d). The proposed amendment must be
`responsive to a ground of unpatentabilty at issue in the trial. 37 C.F.R.
`§ 42.121(a)(2)(i). Additionally, it may not enlarge the scope of the claim(s)
`or introduce new subject matter. Id. at § 42.121(a)(2)(ii); see also 35 U.S.C.
`§ 316(d)(3) (An amendment in an inter partes review “may not enlarge the
`scope of the claims of the patent or introduce new matter.”). A patent owner
`bears the burden to establish that it is entitled to the relief requested by its
`motion to amend. 37 C.F.R. § 42.20(c).
`
`5 Patent Owner erroneously cites to Hakim ’225, but the ’106 application, as
`filed, also includes the relied-upon quote. Compare Ex. 1013, 12:45-51 with
`Ex. 3001, 21.
`
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`Case IPR2013-00072
`Patent D617,465
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`A.
`
`The Proposed Amendment
`Patent Owner proposes to amend the claim of the ’465 patent by
`amending the five drawings to which the claim refers. Mot. 2. Patent
`Owner includes the proposed replacement drawings in Ex. 2001. See Mot. 2
`(referring to Exhibit 1 [sic, 2001]). Patent Owner also includes the
`replacement drawings in its motion, each juxtaposed with a corresponding
`drawing of the issued patent, as reproduced below, including Patent Owner’s
`captions.
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`‘465 Patent — Fig. 2 '
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`‘465 Patent — Fig. 3
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`Fig. 3 Proposed Amendment
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`‘465 Patent — Fig. 4
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`Fig. 4 Proposed Amendment
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`Mot. 2-4. Figures 1-5 of the issued patent and Figures 1-5 of the proposed
`amendment, reproduced above, side-by-side, show clearly the proposed
`change in claim scope, as required by 37 C.F.R. § 42.121(b).
`
`B.
`
`Responsiveness to a Ground of Unpatentability
`We instituted trial based on Hakim ’225 and Hakim ’604. Dec. on
`Pet. 23. In doing so, we made an initial determination that the claim of the
`’465 patent was not entitled, under 35 U.S.C. § 120, to the benefit of the
`filing date of the parent ’106 application because the claim was not
`adequately described therein pursuant to 35 U.S.C. § 112(a). Id. at 6-8. The
`motion to amend seeks to amend the claim such that it would be supported
`by the disclosure of the ’106 application, in order to disqualify Hakim ’225
`and Hakim ’604 as prior art. Mot. 10. As such, the proposed amendment is
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`responsive to a ground of unpatentability at issue in the trial, as required by
`37 C.F.R. § 42.121(a)(2)(i).
`Petitioner contends that the motion to amend includes one change that
`is not responsive to a ground of unpatentability at issue in the trial. Pet.
`Opp. 2-3. In particular, Petitioner contends that Patent Owner has sought to
`amend the claim, not only via the replacement drawings, but also by
`changing the language of the claim from “the ornamental design for a
`drinking cup, as shown and described” to “the ornamental design for a
`drinking cup as shown.” Id. at 2 (referring to Ex. 2002). However, that
`contention is based on a misapprehension by Petitioner that Patent Owner’s
`Exhibit 2002 is part of the proposed amendment. It is not. See Mot. 2
`(stating that Exhibit 1 [sic, 2001] contains the amendments), 6 (stating that
`Exhibit 2 [sic, 2002] is the ’909 application as originally filed).
`
`C.
`
`Enlargement of Claim Scope
`Petitioner contends that the proposed amended claim violates the
`prohibition on enlargement of claim scope in an inter partes review. See
`35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). Petitioner’s contention
`that the amendment would broaden the claim scope is based, in part, on
`differences between the spout tip of the issued claim and that of the
`proposed amended claim. Pet. Opp. 5-7. Those differences can be seen best
`in a side-by-side comparison of Figure 3 of the ’465 patent with the
`corresponding replacement drawing of the proposed amended claim, as
`reproduced below from page 3 of the motion to amend, including Patent
`Owner’s captions.
`
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`Figure 3 of the issued claim and Figure 3 of the proposed amended
`claim illustrate top views of the respective drinking cup designs. The spout
`tip (left of center in each drawing above) is egg-shaped in the issued claim,
`whereas it is racetrack-shaped in the proposed amended claim. Additionally,
`the spout tip of the issued claim includes three concentric rings, whereas that
`of the proposed amended claim includes only two concentric rings.
`Petitioner’s contention that the amendment would broaden the claim
`scope is based also on differences in the vent (right of center in each
`drawing above). Pet. Opp. 5-7. The slit that is present in the proposed
`amended claim is formed of a broken line. Thus, it is not part of the claim.
`However, another difference exists, which affects the scope of the claim.
`Specifically, the vent of the issued claim consists of a single circle, whereas
`the vent in the proposed amended claim includes two concentric rings,
`which are meant to signify that a raised rim has been added around the air
`vent. Mot. 6.
`Infringement of a design patent is based on the design “as a whole,”
`and does not require all “points of novelty” in the claimed design being
`present in the accused device. Egyptian Goddess, 543 F.3d at 677-78; Hall
`v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1363 (Fed. Cir. 2013). Patent
`
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`Owner relies on this distinction, between infringement of design patents and
`that of utility patents, to argue that the proposed amended claim is not
`broader than the issued claim because, to “an ordinary observer,” the designs
`are “substantially the same.” PO Reply 4 (emphasis added). However,
`Patent Owner does not direct us to, and we are not aware of, any authority
`that has applied the “ordinary observer” test—first enunciated as a test for
`infringement in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871)
`and adopted as the sole test for design patent infringement in Egyptian
`Goddess, 543 F.3d at 678—to compare the scope of two claims.
`The scope of the issued claim and the proposed amended claim are
`defined by the respective drawings. See id. at 679 (design patents typically
`are claimed as shown in the drawings). Those drawings differ with respect
`to the spout tip and the vent. Specifically, the proposed amended claim is
`broader than the issued claim because it is broader with respect to racetrack-
`shaped spout tips and raised rim vents, even though it may be narrower with
`respect to egg-shaped spout tips and vents without raised rims. See In re
`Rogoff, 261 F.2d 601, 603 (CCPA 1958) (“[A] claim is broadened if it is
`broader in any respect than the original claim, even though it may be
`narrowed in other respects.”). In other words, a drinking cup, having the
`racetrack-shaped spout tip and raised rim vent of the proposed amended
`claim, could infringe the proposed amended claim based on its overall
`design, yet not infringe the issued claim. See Thermalloy, Inc. v. Aavid
`Eng’g, Inc., 121 F.3d 691, 692 (Fed. Cir. 1997) (“A new claim enlarges if it
`includes within its scope any subject matter that would not have infringed
`the original patent.”). Therefore, the proposed amended claim would
`
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`enlarge the claimed subject matter in violation of 35 U.S.C. § 316(d)(3) and
`37 C.F.R. § 42.121(a)(2)(ii).
`
`IV. CONCLUSION
`
`Petitioner has demonstrated by a preponderance of the evidence that
`the sole claim of the ’465 patent is unpatentable under 35 U.S.C. § 103 as
`obvious over Hakim ’225 and over Hakim ’604.
`Patent Owner’s motion to amend is denied because it seeks to enlarge
`the scope of the claim.
`
`V. ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the claim of the ’465 patent is held unpatentable;
`FURTHER ORDERED that Patent Owner’s motion to amend the
`claim of the ’465 patent is denied; and
`FURTHER ORDERED that, because this is a final decision, parties to
`the proceeding seeking judicial review of the decision must comply with the
`notice and service requirements of 37 C.F.R. § 90.2.
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`PETITIONER:
`
`A. Poplin
`Hissan Anis
`LATHROP & GAGE LLP
`JPoplin@LathropGage.com
`hanis@lathropgage.com
`
`Dane Baltich
`ALSTON & BIRD LLP
`dane.baltich@alston.com
`
`PATENT OWNER:
`
`Morris Cohen
`Lee A. Goldberg
`GOLDBERG COHEN LLP
`mcohen@goldbergcohen.com
`lgoldberg@goldbergcohen.com
`
`
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`16
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