Board Invalidates Design Patent


In Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, Ltd., IPR 2013-00072, Paper 28 (April 28, 2014), the Board invalidated U.S. Patent No. D617,465. The Petition argued that the patent was not entitled to its priority date because of differences between the design patent drawings and the utility patent drawings from which it claimed priority, and thus an intervening reference anticipated or made obvious the claim:


The intervening prior art reference on the left is very similar to Fig. 1 of the patent. In response, the patent owner tried to revive its priority claim by amending the design patent claim (i.e., the drawings) to look more like the drawings in the utility patent priority application:



.  However, the Board determined that the amendment broadened the claim, and was thus inpermissable.  Unable to keep its priority claim, the intervening reference was very compelling, and the claim was cancelled.



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