On Monday, April 21, the Patent Trial and Appeal Board handed down a milestone final decision, for the first time invalidating a design patent challenged in inter partes Review. Munchkin, Inc. v. Luv N' Care, Ltd., No. IPR2013-00072 (P.T.A.B. Apr. 21, 2014) (Paper No. 28).
Inter partes review is a relatively new procedure enacted through the America Invents Act of 2012. It permits a petitioner to challenge an issued patent in proceedings within the U.S. Patent & Trademark Office, as an alternative to federal district court litigation. The procedure has rapidly gained favor in the utility patent world as a quicker more cost-effective way to challenge low quality patents. This is the first time, however, that the procedure has been used to invalidate a design patent.
The challenge concerned U.S. Design Patent No. D617,465 (the "D'465 Patent"). A figure describing the claimed design, adapted from the PTAB's decision, is shown below:
The petitioners, Munchkin, Inc. and Toys "R" Us, asserted that the claimed design was obvious over two prior references U.S. Patent Publication NO. 2007/0221604 A1 and U.S. Patent No. 6,994,225. Luv N' Care did not argue the D'465 Patent was patentably distinct over the references (both references and the claimed design were to the same inventor), but instead tried to swear behind the references by claiming priority to an earlier utility application. Because the Board found the claimed design and the asserted priority application were different, it rejected Luv N' Care's priority claim and invalidated the D'465 Patent.
The final portion of the decision is worth deeper consideration.
A risk inherent in inter partes review is that the patentee is permitted a single opportunity to amend their claims to overcome prior art; a right not available in court. The caveat is that the amended claims cannot be broader than the issued claims. An open question exists as to whether a design patentee can take meaningful advantage of this opportunity to amend.
There is a distinction between design patent claims and utility patent claims with respect to the scope of the claimed inventions. We discussed this distinction at greater length in our coverage of the Federal Circuit's recent decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC. In short, while traditional utility patents may claim a range of inventions, design patents are limited to claiming specific designs, and there can be no assumption when two distinct designs are claimed that the range of designs between those two are claimed as well. If design patents generally do not claim a range, then how can any amendment to a design be considered either broader or narrower than an issued design?
The Board concluded, without drawing any bright line rules, that this question doomed Luv N' Care's proposed amendment. The amended design (a portion of which is shown below beside the issued design) was both broader in some ways and narrower in some ways than the issued design.
Specifically, the Board said:
Inter partes review is a relatively new procedure enacted through the America Invents Act of 2012. It permits a petitioner to challenge an issued patent in proceedings within the U.S. Patent & Trademark Office, as an alternative to federal district court litigation. The procedure has rapidly gained favor in the utility patent world as a quicker more cost-effective way to challenge low quality patents. This is the first time, however, that the procedure has been used to invalidate a design patent.
The challenge concerned U.S. Design Patent No. D617,465 (the "D'465 Patent"). A figure describing the claimed design, adapted from the PTAB's decision, is shown below:
The petitioners, Munchkin, Inc. and Toys "R" Us, asserted that the claimed design was obvious over two prior references U.S. Patent Publication NO. 2007/0221604 A1 and U.S. Patent No. 6,994,225. Luv N' Care did not argue the D'465 Patent was patentably distinct over the references (both references and the claimed design were to the same inventor), but instead tried to swear behind the references by claiming priority to an earlier utility application. Because the Board found the claimed design and the asserted priority application were different, it rejected Luv N' Care's priority claim and invalidated the D'465 Patent.
The final portion of the decision is worth deeper consideration.
A risk inherent in inter partes review is that the patentee is permitted a single opportunity to amend their claims to overcome prior art; a right not available in court. The caveat is that the amended claims cannot be broader than the issued claims. An open question exists as to whether a design patentee can take meaningful advantage of this opportunity to amend.
There is a distinction between design patent claims and utility patent claims with respect to the scope of the claimed inventions. We discussed this distinction at greater length in our coverage of the Federal Circuit's recent decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC. In short, while traditional utility patents may claim a range of inventions, design patents are limited to claiming specific designs, and there can be no assumption when two distinct designs are claimed that the range of designs between those two are claimed as well. If design patents generally do not claim a range, then how can any amendment to a design be considered either broader or narrower than an issued design?
The Board concluded, without drawing any bright line rules, that this question doomed Luv N' Care's proposed amendment. The amended design (a portion of which is shown below beside the issued design) was both broader in some ways and narrower in some ways than the issued design.
Specifically, the Board said:
[T]he proposed amended claim than the issued claim because it is broader with respect to racetrack-shaped spout tips and raised vents [(feature of the amended claim)], even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims [(features of the issued claim)]. . . . In other words, a drinking cup, having the racetrack-shaped spout tip and the raised rim vent of the proposed amended claim, could infringe the proposed amended claim based on its overall design, yet not infringe the issued claim.The Board's ruling leaves little room for patentees to propose amendments that will pass muster on the stringent inter partes review standards. While there is no per se rule that a design patent cannot be amended in IPR, patentees seeking to amend will have an uphill battle, to be sure.
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