PTAB Invalidates Patent in First IPR Trial of a Design Patent

On April 21, 2014, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a final written decision in the first inter partes review proceeding involving a design patent (IPR2013-00072).  In the decision, the PTAB found Luv n’ Care’s U.S. Design Patent No. D617465 for a baby’s drinking cup to be unpatentable under 35 U.S.C. § 103 as being obvious over the patent holder’s own prior art.  The petition for inter partes review was filed on December 5, 2012 by Munchkin Inc. against the ‘465 patent and trial was instituted on April 25, 2013.  A copy of the decision is available here.

During trial, the patent owner filed a motion to amend its claim such that it would be supported by the disclosure of its parent application in order to disqualify the references in the petition as prior art.  However, the PTAB denied this motion because the scope of the proposed amended claim was broader than the issued claim with respect to the spout tip and vent of the claimed drinking cup.  The PTAB found that the proposed amendment impermissibly sought to enlarge the scope of the claim.  The PTAB then concluded that “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” over the cited references.

A party to an inter partes review who is dissatisfied with the final written decision of the PTAB may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.  35 U.S.C.  § 141(c).

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Sterne, Kessler, Goldstein & Fox P.L.L.C. | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.