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In a final decision issued on April 21, 2014, the Patent Trial and Appeal Board (PTAB) invalidated the sole claim of Luv N’ Care’s design patent for a baby drinking cup (U.S. Patent D617,465) as being obvious over Luv N’ Care’s own prior art. The petition for inter partes review against the ‘465 patent was filed by Munchkin, Inc. and Toys “R” Us, Inc. on December 5, 2012, and the PTAB instituted the trial on April 25, 2013 after it determined that there was a reasonable likelihood that the claim of the D’465 patent would have been obvious over the prior art. Munchkin, Inc. and Toys “R” Us, Inc. v. Luv N’ Care, Ltd. (IPR2013-00072, Paper No. 28) is the first inter partes review final written decision regarding a design patent and demonstrates that design patents can be successfully challenged at the USPTO.

The drinking cup design claimed in the D’465 patent is reproduced above with the front, right, top, bottom and back views in Figures 1-5, respectively (Paper No. 28, page 4).

Munchkin and Toys “R” Us argued that the claim of the D’465 patent was unpatentable as obvious over two prior art references, issued to the same inventor. Luv N’ Care did not argue that the claim of the D’465 patent is patentably distinct from the references. Instead, Luv N’ Care argued that the references are not prior art because the D’465 patent is entitled to the effective filing date of its parent application (U.S. utility Application No. 10/536,106).

The design of the drinking cup in the parent ‘106 application is different from the design of the drinking cup of the D’465 patent. The petitioners argued that the ‘106 application does not provide sufficient written description support for the claim of the D’465 patent and that, as a result, the patent owner cannot claim priority to the ‘106 application. The PTAB noted several differences between the designs, and found that the disclosure of the ‘106 application does not reasonably convey to those skilled in the art that the inventor had possession of the claimed design of the D‘465 patent.

In response, Luv N’ Care filed a Motion to Amend Its Patent Claim on July 25, 2013 in an attempt to conform the features of the claimed design of the D’465 to the features of the design shown in the parent ‘106 application.

As shown in the comparison figure above (reproduced from paper No. 28, page 13), Luv N’ Care proposed an amendment to the spout tip such that the spout tip of the proposed amendment would be less round, i.e., like a racetrack, and would include two concentric rings instead of three,. Luv N’ Care also proposed an amendment to the vent (the circle on the right of the spout tip) such that it has two concentric rings instead of just one in order to show a raised rim around the vent.

However, the PTAB denied Luv N’ Care’s motion to amend because the proposed amendments sought to enlarge the scope of the claim of the D‘465 patent. Specifically, the PTAB noted that “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”, citing to 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.”) (Paper No. 28, page 14).

Luv N’ Care argued that the proposed amendment is a narrowing amendment and does not broaden the issued claim because, to “an ordinary observer,” the design of the proposed amendment and the design of the issued claim are “substantially the same” (Paper No. 28, page 14). However, the PTAB stated that “[p]atent owner does not direct us to, and we are not aware of, any authority that has applied the “ordinary observer” test . . . to compare the scope of two claims” (Paper No. 28, page 14). Thus, the PTAB denied the motion to amend..

Takeaway points of this decision: In a Motion to Amend during an inter partes review proceeding, the “ordinary observer” test is not an appropriate standard for comparing the scope of a proposed claim and the scope of the issued claim. Under 37 C.F.R. § 42.121, with prior approval by the PTAB, the patent owner has only one opportunity to amend a patent in an inter partes review proceeding, and the motion may be denied where: (1) the amendment does not respond to a ground of unpatentability involved in the trial; or (2) the amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter. In this decision, the PTAB primarily pointed to the proposed amendments to the spout tip and to the vent together as enlarging the scope of the claim. However, the PTAB did not elaborate on the more critical question of when a proposed amendment to a design is considered broader or narrower than an issued design. In this regard, the only guidance the PTAB provided in the decision is that a claim is broadened “if it is broader in any respect than the original claim, even though it may be narrowed in other respects”.