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Patent Trial and Appeal Board (PTAB) Invalidates Patent in First Inter Partes Review (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).

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© 2021 Sterne KesslerNational Law Review, Volume IV, Number 114
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About this Author

Tracy-Gene Durkin, Mechanical Patent Trademark Attorney, Sterne Kessler law firm
Director

Ms. Durkin leads the Mechanical Patent and Trademark Group.  With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet her clients' individual needs.  Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing.  She is sought out for her knowledge of...

202-772-8660
Mark W. Rygiel, Intellectual Property, Sterne Kessler Law Firm
Director

Mark Rygiel, a director in the Mechanical Group, counsels a broad spectrum of entities ranging from large multi-national companies to small start-ups in developing IP strategies and protecting new technologies.  Mr. Rygiel specializes in obtaining utility and design patent protection for cutting edge technologies in the consumer product, vehicle system, medical device, manufacturing, and e-commerce industries.  His practice also focuses on complex post-grant proceedings at the USPTO, analyzing patents for validity, infringement, and freedom-to-operate issues and providing related opinions...

202-772-8510
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