A PTAB panel has found that the sole claim of a design patent covering a drinking cup is invalid and the patent owner (“owner”) has not met its burden of proof on a motion to amend. During an inter partes review, an owner may amend the challenged claim(s) if the following requirements are met. First, the proposed amendment must be responsive to a ground of unpatentability at issue in trial. Second, the amendment may not enlarge the scope of the claim(s) or introduce new subject matter. In its final written decision, the Board determined that a claim covering the ornamental design for a drinking cup was obvious in view of the prior art and, in so finding, denied the owner’s motion to amend the claim. In its analysis, the Board noted that the owner’s motion to amend met the first requirement of being responsive to a ground of unpatentability because it “seeks to amend the claim such that it would be supported by the disclosure of [an earlier application], in order to disqualify [the prior art].” However, the Board ultimately denied the owner’s motion to amend because it impermissibly enlarged the scope of the challenged claim. Specifically, the Board compared the original and amended drawings and concluded that “the amended claim is broader than the issued claim…with respect to racetrack-shaped spout tips and raised rim vents, even though it may be narrower with respect to [other features].” Since the proposed amended claim was broader in some aspects compared to the original claim, the owner’s motion to amend was denied.

Munchkin, Inc. v. Luv N’ Care, Ltd., IPR2013-00072 (PTAB April 21, 2014) [Bisk, Wood, Fitzpatrick (opinion)]