Trials@uspto.gov
`571-272-7822
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`
`
`
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` Paper 8
`Entered: April 25, 2013
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MUNCHKIN, INC. AND TOYS “R” US, INC.
`Petitioners
`
`v.
`
` LUV N’ CARE, LTD.
`Patent Owner
`____________
`
`Case IPR2013-00072
`Patent D617,465
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 8
`Entered: April 25, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MUNCHKIN, INC. AND TOYS “R” US, INC.
`Petitioners
`
`v.
`
` LUV N’ CARE, LTD.
`Patent Owner
`____________
`
`Case IPR2013-00072
`Patent D617,465
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Case IPR2013-00072
`Patent D617,465
`
`
`I. BACKGROUND
`
`On December 5, 2012, Petitioners Munchkin, Inc. and Toys “R” Us,
`
`Inc. filed a Petition requesting inter partes review of the sole claim of U.S.
`
`Patent D617,465 (the “’465 Patent”) pursuant to 35 U.S.C. § 311. Patent
`
`Owner Luv N’ Care, Ltd. did not file a Preliminary Response pursuant to 35
`
`U.S.C. § 313. We have jurisdiction under 35 U.S.C. § 314.
`
`Institution of inter partes review is authorized by statute when “the
`
`information presented in the petition filed under section 311 and any
`
`response filed under section 313 shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. §314(a); see also 37 C.F.R. § 42.108.
`
`We determine that the petition demonstrates that there is a reasonable
`
`likelihood that Petitioners would prevail with respect to the sole claim of the
`
`’465 Patent, and we therefore institute inter partes review.
`
`A. Related Proceedings
`
`The parties identify pending litigation concerning the ’465 Patent
`
`brought by the Patent Owner and styled Luv N’ Care, Ltd. et al. v. Toys “R”
`
`Us, Inc. et al., 1:12-cv-00228 (S.D.N.Y. filed Jan. 11, 2012). (Pet. 2; Patent
`
`Owner Mandatory Notices 2; Ex. 1003.)
`
`Petitioners additionally identify an Inter Partes Reexamination of
`
`related U.S. Patent D634,439 bearing control no. 95/001,973.
`
`Patent Owner additionally identifies Luv N’ Care, Ltd. et al. v. Regent
`
`Baby Products Corp., 10-9492 (S.D.N.Y. filed Dec. 21, 2010) and Luv N’
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`Care, Ltd. v. Royal King Infant Prod’s Co. Ltd. et al., 10-cv-00461 (E.D.
`
`Tex. filed Nov. 4, 2010). (Patent Owner Mandatory Notices 2.)
`
`
`
`2
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`Case IPR2013-00072
`Patent D617,465
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`B.
`
`The ’465 Patent
`
`The ’465 Patent (Ex. 1002), entitled “Drinking Cup,” issued on June
`
`8, 2010, names Nouri E. Hakim as inventor, and is assigned to Luv N’ Care,
`
`Ltd. The claim of the ’465 Patent recites “the ornamental design for a
`
`drinking cup, as shown and described.” The ’465 Patent includes five
`
`Figures, reproduced below.
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`
`
`
`Figures 1-5 show front, right, top, bottom, and back views,
`
`
`
`respectively, of a drinking cup having a vessel, collar, and spout.
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`
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`3
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`Case IPR2013-00072
`Patent D617,465
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`C.
`
`Prior Art Relied Upon
`
`Petitioners challenge the patentability of the claim of the ’465 Patent
`
`as obvious under 35 U.S.C. § 103(a) in view of the following items of
`
`asserted prior art:
`
`Ex. 1006 US 2007/0221604 A1 to Hakim, pub. Sep. 27, 2007
`(“Hakim ’604”)
`
`Ex. 1007
`
`Japan Patent No. D1129061, pub. Dec. 17, 2001 (“Japan ’061”)
`
`Ex. 1008
`
`Japan Patent Application No. 10-185624, pub. Jul. 1, 2000 as
`2000-000288 (“Japan ’624”)
`
`Ex. 1009 US 6,880,713 B2 to Holley, iss. Apr. 19, 2005 (“Holley”)
`
`Ex. 1010 US D359,417 to Chen, iss. Jun. 20, 1995 (“Chen”)
`
`Ex. 1011 US D475,890 S to Mazonkey, iss. Jun. 17, 2003 (“Mazonkey”)
`
`Ex. 1012 US D567,384 S to Sakulsacha et al., iss. Apr. 22, 2008
`(“Sakulsacha”)
`
`Ex. 1013 US 6,994,225 B2 to Hakim, iss. Feb. 7, 2006 (“Hakim ’225”)
`
`
`
`Ex. 1014
`
`Ex. 1015
`
`Japan Patent No. D1369925, pub. Sep. 28, 2009 (“Japan ’925”)
`Japan Patent No. D1370096, pub. Sep. 28, 2009 (“Japan ’096”)1
`
`Ex. 1016 US D476,850 S to Featherston et al., iss. Jul. 8, 2003
`(“Featherston”)
`
`
`Ex. 1017 US D354,416 to Cautereels et al., iss. Jan. 17, 1995
`(“Cautereels”)
`
`
`Ex. 1018 US D559,622 S to Carreno, iss. Jan. 15, 2008 (“Carreno”)
`
`
`
`Ex. 1019 US 2002/0066741 A1 to Rees, pub. Jun. 6, 2002 (“Rees”)
`
`
`1 Petitioners do not supply a translation of Japan ’925 (Ex. 1014) or
`Japan ’096 (Ex. 1015). Petitioners also do not identify the subsection(s) of
`35 U.S.C. § 102 under which they contend that these references are prior art
`to the ’465 Patent nor do Petitioners assert requisite facts (e.g., publication
`dates) to support such a determination. The Japan ’925 and ’096 references
`both appear to have been filed on March 9, 2009, and published on
`September 28, 2009. Accordingly, based on the record before us, they do
`not qualify as prior art to the ’465 Patent.
`
`
`
`4
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`Case IPR2013-00072
`Patent D617,465
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`Ex. 1020 US 5,839,581 to Vagedes, iss. Nov. 24, 1998 (“Vagedes”)
`
`Ex. 1021 US D327,818 to Haralson et al., iss. Jul. 14, 1992 (“Haralson”)
`
`Ex. 1022 US 6,321,931 B1 to Hakim et al., iss. Nov. 27, 2001
`(“Hakim ’931”)
`
`
`Ex. 1023 US 5,474,028 to Larson et al., iss. Dec. 12, 1995 (“Larson”)
`
`
`
`Ex. 1024 US 6,422,415 B1 to Manganiello, iss. Jul. 23, 2002
`(“Manganiello”)
`
`
`Ex. 1025 US 6,102,245 to Haberman, iss. Aug. 15, 2000 (“Haberman”)
`
`
`
`Ex. 1026 US 2,588,069 to Allen, iss. Mar. 4, 1952 (“Allen”)
`
`Ex. 1027 US 5,330,054 to Brown, iss. Jul. 19, 1994 (“Brown”)
`
`
`
`Ex. 1028
`
`2003 New Product Directory, Juvenile Products Manufacturers
`Association (“2003 JPMA Directory”)
`
`D.
`
`Proposed Grounds for Review
`
`The Petition raises two grounds for review based on single references:
`
`obviousness over Hakim ’604 and obviousness over Hakim ’225. (Pet. 4-5.)
`
`Petitioners also challenge the patentability of the sole claim of the
`
`’465 Patent on numerous, multi-reference grounds that they have classified
`
`into nine categories according to the primary reference being asserted, the
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`primary references being Hakim ’604, Hakim ’225, Japan ’061, Japan ’624,
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`Holley, Sakulsacha, Chen, Cautereels, and Mazonkey. (Pet. 4-7.)
`
`Each category proposes the respective principal reference “in view of
`
`one or more of” twenty additional references.2 Thus, the proposed grounds
`
`must number in the hundreds, if not thousands. Although Petitioners are not
`
`entitled to consideration of all such grounds, see Liberty Mutual Ins. Co. v.
`
`
`2 For each category, the Petition actually proposes a principal reference in
`view of one or more of twenty-two additional references but, as stated above,
`two of Petitioners’ asserted references do not qualify as prior art.
`
`
`
`5
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`Patent D617,465
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`Progressive Casualty Ins. Co., Case CBM2012-00003 (PTAB Oct. 25,
`
`2012), we will address them at least generally in the analysis that follows.
`
`E.
`
`Effective Filing Date of the Sole Claim of the ’465 Patent
`
`The ’465 Patent issued from U.S. Application Serial No. 29/292,909,
`
`which was filed October 31, 2007, as a continuation of U.S. Application
`
`Serial No. 10/536,106 (“the ’106 Application”), which is the national stage
`
`of PCT Patent Application PCT/US03/24400 filed August 5, 2003.
`
`Petitioners assert various intervening prior art references, including
`
`most notably Hakim ’604 (published September 27, 2007) and Hakim ’225
`
`(issued February 7, 2006). Hence, we address Petitioner’s arguments
`
`regarding the effective filing date of the claim of the ’465 Patent.
`
`To be entitled to a parent’s effective filing date under 35 U.S.C.
`
`§ 120, a continuation must comply with the written description requirement.3
`
`In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013). “The test for
`
`sufficiency of the written description, which is the same for either a design
`
`or a utility patent, has been expressed as ‘whether the disclosure of the
`
`application relied upon reasonably conveys to those skilled in the art that the
`
`inventor had possession of the claimed subject matter as of the filing date.’”
`
`Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`
`(Fed. Cir. 2010) (en banc)). “In the context of design patents, the drawings
`
`provide the written description of the invention. Thus, when an issue of
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`priority arises under § 120 in the context of design patent prosecution, one
`
`looks to the drawings of the earlier application for disclosure of the subject
`
`
`3 The written description requirement, which is now found at 35 U.S.C.
`§ 112(a), was codified previously at 35 U.S.C. § 112, ¶ 1 (1975).
`
`
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`6
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`Patent D617,465
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`matter claimed in the later application.” Owens, 710 F.3d at 1366 (citations
`
`omitted).
`
`Petitioners argue that Hakim ’604 [sic, the ’106 Application]4 does
`
`not provide written description support for the claim of the ’465 Patent.
`
`(Pet. 13-18.) Figure 12a of the ’106 Application as filed is reproduced
`
`below.
`
`
`
`Figure 12a shows a top view of a spout, collar, and vessel although
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`the vessel is barely visible. Figure 12a does not show the same design as
`
`that of the ’465 Patent, as best viewed in Figure 3 supra. For example, the
`
`’106 Application, which shows a racetrack-shaped spout tip, does not
`
`disclose the claimed oval-shaped spout tip of the ’465 Patent. Also, the ’106
`
`Application, which shows slits in the openings of the spout tip and vent,
`
`does not disclose the broader design of the ’465 Patent, which lacks any
`
`such slits.
`
`For at least these reasons, possession of the claimed design of the ’465
`
`Patent is not shown as of the filing date of the ’106 Application.
`
`
`4 Hakim ’604 is a published version of the ’106 Application. The figures of
`Hakim ’604 relied upon by Petitioners in challenging priority are shown
`identically in the ’106 Application as filed. The Board enters as Exhibit
`3001 the specification and figures of the ’106 Application as filed.
`
`
`
`7
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`Case IPR2013-00072
`Patent D617,465
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`Accordingly, based on the present record, the challenged claim is not
`
`entitled to the benefit of the filing date of the ’106 Application. See In re
`
`Salmon, 705 F.2d 1579, 1581 (Fed. Cir. 1983) (“for section 120 to apply, the
`
`first application must disclose ‘the invention’ claimed in the second
`
`application. With respect to the design patent involved in this case, those
`
`provisions require that the stool design claimed in the second application
`
`must be the same design disclosed in the parent application.”) (citations
`
`omitted).
`
`II. PRINCIPLES OF LAW
`
`“Whoever invents any new, original and ornamental design for an
`
`article of manufacture may obtain a patent therefor, subject to the conditions
`
`and requirements of this title.” 35 U.S.C. § 171. One of those requirements
`
`is that the design be nonobvious. 35 U.S.C. § 103(a); see also 35 U.S.C.
`
`§ 171 (“The provisions of this title relating to patents for inventions shall
`
`apply to patents for designs, except as otherwise provided.”).
`
`In addressing a claim of obviousness in a design patent, the
`ultimate inquiry . . . is whether the claimed design would have
`been obvious to a designer of ordinary skill who designs
`articles of the type involved. To determine whether one of
`ordinary skill would have combined teachings of the prior art to
`create the same overall visual appearance as the claimed design,
`the finder of fact must employ a two-step process. First, one
`must find a single reference, a something in existence, the
`design characteristics of which are basically the same as the
`claimed design. Second, other references may be used to
`modify the primary reference to create a design that has the
`same overall visual appearance as
`the claimed design.
`However, the secondary references may only be used to modify
`the primary reference if they are so related to the primary
`reference that the appearance of certain ornamental features in
`one would suggest the application of those features to the other.
`
`
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`8
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`Case IPR2013-00072
`Patent D617,465
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`Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314, 1329-30 (Fed.
`
`Cir. 2012) (citations, brackets, and quotation marks omitted).
`
`The role of the designer of ordinary skill “lies only in determining
`
`whether to combine earlier references to arrive at a single piece of art for
`
`comparison with the potential design or to modify a single prior art
`
`reference.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,
`
`1240 (Fed Cir. 2009). “Once that piece of prior art has been constructed,
`
`obviousness, like anticipation, requires application of the ordinary observer
`
`test[.]” Id.
`
`The “ordinary observer” test was first enunciated by the Supreme
`
`Court in Gorham Co. v. White, 81 U.S. 511 (1871) as a test for infringement
`
`of a design patent and was stated as follows:
`
`[I]f, in the eye of an ordinary observer, giving such attention as
`a purchaser usually gives, two designs are substantially the
`same, if the resemblance is such as to deceive such an observer,
`inducing him to purchase one supposing it to be the other, the
`first one patented is infringed by the other.
`
`
`Id. at 528. “[T]he ordinary observer is a person who is either a purchaser of,
`
`or sufficiently interested in, the item that displays the patented designs [here,
`
`a drinking cup with a spout to reduce spills] and who has the capability of
`
`making a reasonably discerning decision when observing the accused item’s
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`design whether the accused item is substantially the same as the item
`
`claimed in the design patent.” Arminak and Assocs., Inc. v. Saint-Gobain
`
`Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007).
`
`In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir.
`
`2008) (en banc), the Federal Circuit held that the “ordinary observer” test is
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`
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`9
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`Case IPR2013-00072
`Patent D617,465
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`the sole controlling test for design patent infringement, id. at 678, and it has
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`since held that the test applies also to anticipation and obviousness
`
`challenges of design patents. Int’l Seaway, 589 F.3d at 1240 (“obviousness,
`
`like anticipation, requires application of the ordinary observer test”).
`
`III. ANALYSIS
`
`A. Claim Construction
`
`We generally give claim terms their ordinary and customary meaning
`
`as would be understood by one of ordinary skill in the art. Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). In an inter partes
`
`review, “[a] claim in an unexpired patent shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b).
`
`Design patents typically are claimed as shown in drawings, and claim
`
`construction is adapted accordingly. Egyptian Goddess, 543 F.3d at 679. A
`
`detailed verbal description of the claim, as is done often in the case of utility
`
`patents, is not needed. Id. (citing Contessa Food Prods., Inc., 282 F.3d
`
`1370, 1377 (Fed. Cir. 2002) (approving district court’s construction of the
`
`asserted claim as meaning “a tray of a certain design as shown in Figures 1-
`
`3”). Indeed, “the preferable course ordinarily will be for [us] not to attempt
`
`to ‘construe’ a design patent claim by providing a detailed verbal description
`
`of the claimed design.” Egyptian Goddess, 543 F.3d at 679.
`
`The claim of the ’465 Patent recites “the ornamental design for a
`
`drinking cup, as shown and described.” The ’465 Patent shows a drinking
`
`cup that includes three general components: a vessel, collar, and spout.
`
`(Figs. 1-5.)
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`10
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`The “DESCRIPTION” of the ’465 Patent merely identifies the various
`
`views of the drinking cup depicted in the figures and additionally states that
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`“[t]he broken lines in the figures illustrate portions of the drinking cup and
`
`form no part of the claimed design.”5 (’465 Patent cover page.)
`
`We construe the claim to be the ornamental design of the drinking
`
`cup, as illustrated in Figures 1-5, except that the broken lines do not form
`
`part of the claimed design. See Owens, 710 F.3d at 1367, n.1 (“[I]t is
`
`appropriate to disclaim certain design elements using broken lines, provided
`
`the application makes clear what has been claimed.”)
`
`Additionally, we find it helpful to describe verbally certain features of
`
`the claim. See Egyptian Goddess, 543 F.3d at 679. (“While it may be
`
`unwise to attempt a full description of the claimed design, a court may find it
`
`helpful to point out . . . various features of the claimed design as they relate
`
`to the accused design and the prior art.”)
`
`The spout is not radially symmetrical; instead, it has a drinking tip
`
`that is off center. Additionally, the tip of the spout is concave.
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`The collar has a curved outer wall such that the top of the collar has a
`
`smaller diameter than the bottom of the collar.
`
`The vessel includes an hourglass-shaped envelope when viewed from
`
`the front (Fig. 1) or back (Fig. 5). The midsection or “waist” portion of the
`
`hourglass-shaped envelope includes three horizontally-oriented shallow
`
`grooves that extend around the sides and back of the vessel. The grooves do
`
`not extend around the front of the vessel. The vessel also includes two
`
`
`5 The broken lines are directed to a central portion of the bottom surface of
`the vessel, two series of five grooved ribs on the sides of the collar, and two
`notches adjacent to the top of the collar and bottom of the spout. (Figs. 1-5.)
`
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`11
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`regions that are demarcated from one another by a curving line that
`
`circumnavigates the vessel and slopes downward as it extends from rear to
`
`front such that it reaches its lowest elevation on the front side of the vessel
`
`as shown in Figure 1.
`
`Petitioners assert that the vessel and collar do not form part of the
`
`claim because “they are functional.” (Pet. 22; see also Pet. 10.) In other
`
`words, Petitioners argue that the claim only covers the spout. But,
`
`Petitioners have not asserted, let alone persuaded us, that the vessel and
`
`collar are purely functional. See Egyptian Goddess, 543 F.3d at 680 (“other
`
`issues that bear on the scope of the claim . . . include . . . distinguishing
`
`between those features of the claimed design that are ornamental and those
`
`that are purely functional”); see also In re Garbo, 287 F.2d 192, 194 (CCPA
`
`1961) (“the design must have an unobvious appearance distinct from that
`
`dictated solely by functional considerations”). We agree that the vessel and
`
`collar provide some function (e.g., the vessel holds liquid for drinking and is
`
`configured to be grasped by a hand and the collar appears to secure the spout
`
`to the top of the vessel). We are not persuaded, however, that the vessel and
`
`collar are purely functional and not also ornamental.
`
`For example, the curved outer wall of the collar does not appear to be
`
`critical to, or even involved in, the securing of the spout to the vessel.
`
`Rather, that feature appears to be ornamental. With respect to the vessel, we
`
`are not persuaded that the three grooves that extend around the side and back
`
`of the vessel and the relatively narrow waist portion of the hourglass-shaped
`
`envelope are purely functional. Further, Petitioners do not even address the
`
`curving line that circumnavigates the vessel dividing it into two regions,
`
`which is ornamental based on the record before us.
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`12
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`In sum, we construe the claim to be the ornamental design of the
`
`drinking cup, including vessel, collar, and spout, as illustrated in Figures 1-5
`
`except that the broken lines do not form part of the claimed design.
`
`B.
`
`The Claim as Obvious Principally over Hakim ’604
`
`Hakim ’604 is entitled “No-Spill Drinking Products” and discloses a
`
`drinking cup that is very similar in overall appearance to the drinking cup
`
`claimed in the ’465 Patent. Figure 10b of Hakim ’604 is reproduced (below
`
`left) juxtaposed with Figure 2 of the ’465 Patent (below right).
`
`
`
`
`
`
`
`
`
`Figure 10b of Hakim ’604 and Figure 2 of the ’465 Patent each show
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`a side view of a drinking cup having a vessel, collar, and spout. In these side
`
`views, the drinking cups appear nearly identical to one another, except that
`
`the ’465 Patent disclaims some of the features using broken lines.
`
`
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`13
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`Figure 10c of Hakim ’604 is reproduced (below left) juxtaposed with
`
`Figure 1 of the ’465 Patent (below right).
`
`
`
`Figure 10c of Hakim ’604 and Figure 1 of the ’465 Patent each show a
`
`
`
`
`
`front view of the corresponding drinking cup. In these front views, the
`
`drinking cups appear nearly identical to one another, except that, again, the
`
`’465 Patent disclaims some of the features using broken lines.
`
`We determine that there is a reasonable likelihood, that, in the eye of
`
`an ordinary observer, the designs are substantially the same, such that they
`
`would deceive the observer, inducing him to purchase a drinking cup
`
`embodying the design of Hakim ’604 supposing it to be that of the
`
`challenged claim. Accordingly, the Petition is granted as to review of the
`
`patentability of the claim of the ’465 Patent over Hakim ’604.
`
`Petitioners have not persuaded us that any of the proposed secondary
`
`references discloses any ornamental feature of the challenged claim better
`
`than Hakim ’604 does. Accordingly, the Petition is denied as to all grounds
`
`for review based on Hakim ’604 in view of any other reference(s).
`
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`14
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`C.
`
`The Claim as Obvious Principally over Hakim ’225
`
`Hakim ’225 is also entitled “No-Spill Drinking Products” and
`
`discloses a drinking cup that is very similar in overall appearance to the
`
`drinking cup claimed in the ’465 Patent. Figure 10b of Hakim ’225 is
`
`reproduced (below left) juxtaposed with Figure 2 of the ’465 Patent (below
`
`right).
`
`
`
`
`
`
`
`
`
`Figure 10b of Hakim ’225 and Figure 2 of the ’465 Patent each show
`
`a side view of a drinking cup having a vessel, collar, and spout. In these side
`
`views, the drinking cups appear nearly identical to one another, except that
`
`the ’465 Patent disclaims some of the features using broken lines.
`
`Figure 10c of Hakim ’225 is reproduced (below left) juxtaposed with
`
`Figure 1 of the ’465 Patent (below right).
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`15
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`Case IPR2013-00072
`Patent D617,465
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`Figure 10c of Hakim ’225 and Figure 1 of the ’465 Patent each show a
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`front view of the corresponding drinking cup. In these front views, the
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`drinking cups appear nearly identical to one another, except that, again, the
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`’465 Patent disclaims some of the features using broken lines.
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` We determine that there is a reasonable likelihood, that, in the eye of
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`an ordinary observer, the designs are substantially the same, such that they
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`would deceive the observer, inducing him to purchase a drinking cup
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`embodying the design of Hakim ’225 supposing it to be that of the
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`challenged claim. Accordingly, the Petition is granted as to review of the
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`patentability of the claim of the ’465 Patent over Hakim ’225.
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`Petitioners have not persuaded us that any of the proposed secondary
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`references discloses any ornamental feature of the challenged claim better
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`than Hakim ’225 does. Accordingly, the Petition is denied as to all grounds
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`for review based on Hakim ’225 in view of any other reference(s).
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`16
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`Case IPR2013-00072
`Patent D617,465
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`D.
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`The Claim as Obvious Principally over Japan ’061
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`“In design patent obviousness analysis, a primary reference must be
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`‘something in existence, the design characteristics of which are basically the
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`same as the claimed design in order to support a holding of obviousness.’”
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`Apple, 678 F.3d at 1331 (quoting In re Rosen, 673 F.2d 388, 391 (CCPA
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`1982)).
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`Japan ’061 is a non-English language document and a translation of it
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`has not been provided. It appears to disclose a spout that may be intended
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`for use with a vessel and collar but it does not actually disclose a vessel or
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`collar. (See, e.g., Ex. 1007 at 2.) As such, it is not a qualifying primary
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`reference, based on our construction above that the vessel and collar are part
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`of the overall claimed design of the ’465 Patent. See Apple, 678 F.3d at
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`1332 (“The offered designs do not create the same visual impression as
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`Apple’s claimed design and thus do not qualify as primary references. In the
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`absence of a qualifying primary reference, we hold that the district court
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`erred in concluding that there is likely to be a substantial question as to the
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`validity of the D'889 patent.”)
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`The Petition is denied as to all grounds for review based principally
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`on Japan ’061.
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`E.
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`The Claim as Obvious Principally over Japan ’624
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`The most relevant figure of the Japan ’624 reference is reproduced
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`below.
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`17
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`Case IPR2013-00072
`Patent D617,465
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`The figure appears to show a vessel, a separate mountable structure
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`providing two handles, a first collar, a spout, and a second collar. (See Ex.
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`1008-7.) The design characteristics of the Japan ’624 reference are
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`substantially different than that of the challenged claim. For example, the
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`Japan ’624 vessel lacks an hourglass shape and the reference shows handles
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`that stick out beyond the vessel’s walls. Additionally, the spout is radially
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`symmetrical and has a convex tip.
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`For at least these reasons, Petitioners have not persuaded us that Japan
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`’624 is a qualifying primary reference. The Petition is denied as to all
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`grounds for review based principally on Japan ’624.
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`18
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`Case IPR2013-00072
`Patent D617,465
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`F.
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`The Claim as Obvious Principally over Holley
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`Holley Figure 1 is reproduced below.
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`
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`Figure 1 shows a vessel and a spout that can be screwed onto the
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`vessel without the need for separate collar. (Holley Fig. 1.) The design
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`characteristics of Holley are substantially different than that of the
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`challenged claim. For example, Holley appears to have an hourglass shape
`
`that extends uniformly around the entire vessel instead of just three sides.
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`Also, the Holley vessel lacks the two regions of the ’465 Patent that are
`
`demarcated from one another by a curving line that circumnavigates the
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`vessel and that slopes downward as it extends from rear to front such that it
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`reaches its lowest elevation on the front side of the vessel as shown in Figure
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`1 of the ’465 Patent. Holley also lacks a separate collar structure and lacks a
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`concave spout tip.
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`For at least these reasons, Petitioners have not persuaded us that
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`Holley is a qualifying primary reference. The Petition is denied as to all
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`grounds for review based principally on Holley.
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`Case IPR2013-00072
`Patent D617,465
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`G.
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`The Claim as Obvious Principally over Sakulsacha
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`Sakulsacha discloses a design for a silicon spout. (Sakulsacha Claim,
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`Figs. 1-5.) It does not disclose a vessel or collar. As such, it is not a
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`qualifying primary reference, based on our construction above that the vessel
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`and collar are part of the overall claimed design of the ’465 Patent.
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`The Petition is denied as to all grounds for review based principally
`
`on Sakulsacha.
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`H.
`
`The Claim as Obvious Principally over Chen
`
`Chen Figure 1 is reproduced below.
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`
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`Figure 1 shows a vessel and a spout that appears to be directly mated
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`to the vessel without the need for collar. (Chen Fig. 1.) The design
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`characteristics of Chen are substantially different than that of the challenged
`
`claim. For example, the Chen vessel lacks an hourglass shape, a separate
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`collar structure having a curved outer wall, and a spout with a concave tip.
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`20
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`Case IPR2013-00072
`Patent D617,465
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`For at least these reasons, Petitioners have not persuaded us that Chen
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`is a qualifying primary reference. The Petition is denied as to all grounds for
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`review based principally on Chen.
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`I.
`
`The Claim as Obvious Principally over Cautereels
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`Cautereels Figure 1 is reproduced below.
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`
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`Figure 1 shows a vessel with handles and a spout that appears to be
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`mated directly to the vessel without the need for a collar. (Cautereels Fig.
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`1.) The design characteristics of Cautereels are substantially different than
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`that of the challenged claim. For example, Cautereels includes two handles
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`that stick out beyond the vessel’s walls. Additionally, it lacks a separate
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`collar structure having a curved outer wall, and its spout lacks a concave tip.
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`For at least these reasons, Petitioners have not persuaded us that
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`Cautereels is a qualifying primary reference. The Petition is denied as to all
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`grounds for review based principally on Cautereels.
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`21
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`Case IPR2013-00072
`Patent D617,465
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`J.
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`The Claim as Obvious Principally over Mazonkey
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`Mazonkey Figure 1 is reproduced below.
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`
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`Figure 1 shows a “child cup and remote locating combination[.]”
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`(Mazonkey cover page.) The child cup has a vessel with a spout that
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`appears to be mated directly to the vessel without the need for a collar.
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`(Mazonkey Fig. 1.) The design characteristics of Mazonkey are
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`substantially different than that of the challenged claim. For example,
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`Mazonkey appears to have an hourglass shape that extends uniformly around
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`the entire vessel instead of just three sides. Also, the Mazonkey vessel lacks
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`the two regions of the ’465 Patent that are demarcated from one another by a
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`curving line that circumnavigates the vessel and that slopes downward as it
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`extends from rear to front such that it reaches its lowest elevation on the
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`front side of the vessel as shown in Figure 1 of the ’465 Patent.
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`Additionally, Mazonkey lacks a separate collar structure having a curved
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`outer wall, and its spout lacks a concave tip.
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`For at least these reasons, Petitioners have not persuaded us that
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`Mazonkey is a qualifying primary reference. The Petition is denied as to all
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`grounds for review based principally on Mazonkey.
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`Patent D617,465
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`IV. SUMMARY
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`Petitioners Munchkin, Inc. and Toys “R” Us, Inc. have demonstrated
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`that there is a reasonable likelihood of prevailing on its challenge to the
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`patentability of the sole claim of the ’465 Patent.
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`The Petition is granted as to the following grounds for review:
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`I.
`
`II.
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`The sole claim as obvious over Hakim ’604; and
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`The sole claim as obvious over Hakim ’225.
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`In consideration of the foregoing, it is hereby:
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`V. ORDER
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`ORDERED that the Petition is granted as to the sole claim of the ’465
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`Patent on the grounds identified as I – II above;
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`FURTHER ORDERED that the Petition is denied on all grounds not
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`identified as I – II above;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’465 Patent is hereby instituted commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of a trial; and
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`FURTHER ORDERED that an initial conference call with the Board
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`is scheduled for 2:00 PM ET on May 30, 2013. The parties are directed to
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`the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14,
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`2012) for guidance in preparing for the initial conference call, and should
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`come prepared to discuss any proposed changes to the Scheduling Order
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`entered herewith and any motions the parties anticipate filing during the
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`trial.
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`23
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`
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`Case IPR2013-00072
`Patent D617,465
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`PETITIONERS:
`Dane Baltich
`Alston & Bird LLP
`dane.baltich@alston.com
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`PATENT OWNER:
`
`Morris Cohen
`Goldberg Cohen LLP
`mcohen@goldbergcohen.com
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`24
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