Last month, the PTAB issued a final written decision in the first IPR based on a design patent. Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, Ltd, IPR 2013-00072 (Paper No. 28) (April 21, 2014). In that decision, the PTAB invalidated the sole claim of Design Patent No. D617,465, directed to a Drinking Cup.

Petitioners Munchkin and Toys “R” US requested an inter partes review of the ’465 patent, assigned to Luv N’ Care, maker of toddler drinking cups sold under the Nuby brand. The PTAB granted the petition and instituted the trial based on two references applied in obviousness rejections. In its response, Luv N’ Care conceded that the sole claim of the patent was not patentably distinct over the two references. But Luv N’ Care then argued that the two references were not prior art, because the ’465 patent was entitled to the effective filing date of its parent application, which was filed more than two years before either obviousness reference. To the extent that the ’465 patent was not supported by the parent application under 35 U.S.C. § 112, Luv N’ Care sought to amend the ’465 patent such that it would be supported.

First, the PTAB determined that the ’465 patent was not entitled to the effective filing date of its parent application, because, as depicted by the PTAB, the ’465 patent has multiple differences over the parent application:

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Specifically, these differences included: (1) the size of the outer boundary of the spout tip; (2) the oval shape of the claimed design spout tip, as compared to the “racetrack” shape of the parent application; and (3) the three concentric rings of the spout tip of the claimed design, not disclosed in the parent application.

Second, the PTAB denied Luv N’ Care’s motion to amend because it sought to enlarge the scope of the claim. In particular, the PTAB noted that the spout tip of the issued claim included three concentric rings, whereas the spout tip of the proposed amendment included only two rings.

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While the proposed amendment might be narrower in some respects, the PTAB determined that it was broader in others, and thus, not permissible.