43 for 48: First Design Patent Placed Into Inter Partes Review Trial

iStock_000011216568XSmallMunchkin, Inc. and Toys “R” Us were successful in challenging a Luv N’ Care, Ltd. design patent in a case styled as Munchkin, Inc. and Toys “R” Us, Inc. v. Luv N’ Care, Ltd. (IPR2013-00072), involving U.S. Pat. No. D617,465. The ‘465 patent, entitled “Drinking Cup,” described an ornamental design for a drinking cup having a vessel, collar, and spout.

The Board began by evaluating the prior art relied upon by Patent Challengers in their challenge of the claim in the ‘465 patent. Two grounds for challenge were based on obviousness in light of a single reference.  From there, however, Patent Challengers raised numerous additional multi-reference grounds classified into seven categories, with each category proposing a principal reference in view of several additional references. Since this resulted in the proposed grounds numbering in the hundreds or thousands, the Board noted that Patent Challenger was not entitled to have all such grounds considered, but the Board did address the grounds in a general manner.

The first issue the Board had to face was the proper priority date for the ‘465 patent.  Because a continuation application must comply with the written description requirement to be entitled to a parent’s effective filing date, the Board pointed out that, when an issue of priority arises “in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application.”  Order at 6-7.  To this end, the Board agreed with Patent Challenger that the parent disclosure did not provide written description support for the claim of the ‘465 patent.

After establishing priority dates relevant to the ‘465 design, the Board began a claim construction analysis. The Board construed the claim to be for the ornamental design of the drinking cup and proceeded to give verbal descriptions of the features of the design seen in the drawings; specifically, a vessel, collar, and spout. Further, the Board rejected the Patent Challengers’ argument that the vessel and collar do not form part of the claim because they are functional. The Board based this decision on the fact that Patent Challengers did not persuade them that the vessel and collar were purely functional and not also ornamental. Order at 12-13.

Next, the Board began its analysis of Patent Challengers’ asserted grounds of unpatentability. The design of the drinking cup of the ‘465 patent was shown to be similar enough to the design of a drinking cup described by two separate single references that “in the eye of an ordinary observer, the designs are substantially the same, such that they would deceive the observer.”  Order at 14.  Accordingly, the Board held that the there was a reasonable likelihood that the ‘465 patent claim was obvious over the two cited references and granted the Petition. To complete the record, the Board then generally considered the hundreds of additional obviousness grounds, finding that the designs in those references were substantially different from those of the ’465 patent and, denying the additional grounds.

In the end, design patents are not immune from the pro-Patent Challenger wave that has characterized the first months of IPR practice.