First Post Grant Review Petition Shows That Amending Claims Is Not Child's Play

by Foley & Lardner LLP
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The first Post Grant Review petition visible to the public was filed August 5, 2014, against U.S. Patent 8,684,420. The patent was granted from an application filed July 26, 2013, but claims priority through a series of continuation applications to an application filed September 8, 2011, and to a provisional application filed November 5, 2010. The Petitioners, LaRose Industries, LLC and Toys “R” Us-Delaware, Inc., allege that the patent is subject to post grant review because the granted claims allegedly are not supported by the original disclosure, and so have an effective filing date later than the March 16, 2013 critical date for post grant review.

The Patent at Issue

The patent at issue is U.S. Patent 8,684,420, directed to a “Brunnian link making device and kit,” also known as a Rainbow Loom® product. (The patent owner, Choon’s Design Inc., is the company behind the Rainbow Loom® craze.)

Independent claim 1 recites:

1. A device for creating an item consisting of a series of links, the device comprising: a base; and a plurality of pins supported on the base, wherein each of the plurality of pins includes a top portion for holding a link in a desired orientation and an opening on at least one side of each of the plurality of pins, wherein the plurality of pins comprises rows of offset pins spaced apart and extending upward from the base.

The claim limitation alleged to constitute new matter vis-à-vis the original specification is the “plurality of pins supported on the base.” The Petitioners allege that the original specification only describes devices where the base supports pin bars that in turn “include a plurality of pins.” That is, according to the Petitioners, the original specification does not describe any devices where pins are supported by a base, because in all of the described embodiments it is the pin bars, not the pins, that are supported by the base.

The Serious Consequences of Claim Amendments

The complicated effective date provisions of the first-to-file and post grant review sections of the America Invents Act (AIA) could make any claim amendment in a “pre-AIA” application a ticking time bomb that could bring the application or patent under those sections of the AIA if it is found to introduce “new matter” that is not supported by the original disclosure. Here, the claims at issue were the original claims of the “continuation” applications filed after March 16, 2013. Thus, if they are not supported by the earlier applications, they are presumptively entitled to the actual, post-AIA filing date of the application in which they were presented, and would be subject to post grant review.

The applicant did not “check the box” on the Application Data Sheet (ADS) indicating that the application “contains, or contained at any time, a claim to a claimed invention that has an effective fling date on or after March 16, 2013.” The Board’s first step in deciding whether to grant this petition may be to determine whether or not that box should have been checked.

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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.

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