UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MUNCHKIN, INC. AND TOYS “R” US, INC.
`Petitioners
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`v.
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`LUV N’ CARE, LTD.
`Patent Owner
`______________
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`CASE IPR2013-00072
`Patent D617,465
`______________
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`Before SALLY C. MEDLEY, JENNIFER S. BISK, and MICHAEL J.
`FITZPATRICK, Administrative Patent Judges.
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`LUV N’ CARE, LTD.’S MOTION TO AMEND ITS PATENT CLAIM
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`Morris E. Cohen (Reg. No. 39,947)
`Lee A. Goldberg (Reg. No. 38,894)
`GOLDBERG COHEN LLP
`1350 Avenue of the Americas, 4th Fl.
`New York, New York 10019
`Tel.: (646) 380-2087
`Fax: (646) 514-2123
`MCohen@GoldbergCohen.com
`LGoldberg@GoldbergCohen.com
`Attorneys for the Patent Owner
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`MUNCHKIN, INC. AND TOYS “R” US, INC.
`Petitioners
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`v.
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`LUV N’ CARE, LTD.
`Patent Owner
`______________
`
`CASE IPR2013-00072
`Patent D617,465
`______________
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`Before SALLY C. MEDLEY, JENNIFER S. BISK, and MICHAEL J.
`FITZPATRICK, Administrative Patent Judges.
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`LUV N’ CARE, LTD.’S MOTION TO AMEND ITS PATENT CLAIM
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`Morris E. Cohen (Reg. No. 39,947)
`Lee A. Goldberg (Reg. No. 38,894)
`GOLDBERG COHEN LLP
`1350 Avenue of the Americas, 4th Fl.
`New York, New York 10019
`Tel.: (646) 380-2087
`Fax: (646) 514-2123
`MCohen@GoldbergCohen.com
`LGoldberg@GoldbergCohen.com
`Attorneys for the Patent Owner
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`IPR2013-00072
`D617,465
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`Patent Owner Luv n’ care, Ltd. (“Luv n’ care” or “LNC”) hereby
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`respectfully moves to amend the claim of U.S. Patent No. D617,465 (“the ‘465
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`patent), the patent at issue in these proceedings. Per the Board’s Order of June 7,
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`2013, LNC is authorized to file this motion. (Paper 12.)
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`The ‘465 patent is a design patent, and hence contains one claim: “the
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`ornamental design for a drinking cup, as shown and described” in Figures 1-5 of
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`the ‘465 patent. See, the ‘465 patent. LNC moves to amend that claim by
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`amending the drawings of the ‘465 patent. The proposed amended drawings
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`representing the proposed amended claim are attached hereto in Exhibit 1 as
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`“Proposed Replacement Sheets.” For ease of reference, each of Figures 1-5 as they
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`currently appear in the ‘465 patent are reproduced below, side-by-side with the
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`proposed amended drawing:
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` ‘465 Patent – Fig. 1 Fig. 1 Proposed Amendment
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`IPR2013-00072
`D617,465
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`Fig. 2 Proposed Amendment
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`‘465 Patent – Fig. 2
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` ‘465 Patent – Fig. 3
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`Fig. 3 Proposed Amendment
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`3
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`IPR2013-00072
`D617,465
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`‘465 Patent – Fig. 4
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` Fig. 4 Proposed Amendment
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`‘465 Patent – Fig. 5
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` Fig. 5 Proposed Amendment
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`IPR2013-00072
`D617,465
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`As further discussed below, the proposed amendment does not add new
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`matter. Rather, it involves minor modifications to various claimed and unclaimed
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`features of the drinking cup design in order to conform those features to certain
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`figures of the ‘465 patent’s parent – U.S. Patent Application Serial No. 10/536,106
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`(“the ‘106 application”). (The ‘106 application was filed as application No.
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`PCT/US2003/024400 on August 5, 2003 and is currently pending before the
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`United States Patent and Trademark Office.) These changes to the drawings are
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`being made in response to the priority findings in the Board’s Decision of April 25,
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`2013 (“the Board’s Decision”), and to slightly narrow the scope of the claim.
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`In the Board’s Decision, findings were made regarding the shape of the
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`spout, and the slits, as they relate to the ‘465 patent’s ability to claim priority to its
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`parent ‘106 application. See, Decision of April 25, 2013 at page 7 (Paper 8). As a
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`result, the claimed shape of the spout as seen from above in Figure 3 has been
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`modified to more closely align with the precise drawing disclosure of the ‘106
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`application. Likewise, the unclaimed slits inside the spout and air vent in Figure 3
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`have been added to the drawings as well.1
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`1 Since these slits are unclaimed, they neither broaden nor narrow the scope of the
`claimed invention.
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`5
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`IPR2013-00072
`D617,465
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`The proportions of various claimed and unclaimed features of the drinking
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`cup design have also been altered slightly so as to more closely align the same with
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`the precise drawing disclosure of the ‘106 application. See, infra at p.7.
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`The claim has also been narrowed slightly by adding some features disclosed
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`in the parent ‘106 application. In particular, the round notches on the sides of the
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`spout portion of the design, which were unclaimed in the ’465 patent, are now
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`claimed in the proposed amended drawings. See, amended Figures 2 and 3. Also,
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`a raised rim has been added around the air vent. Compare Figure 2 from the ‘465
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`patent, with proposed amended Figure 2. As such, it is submitted that the proposed
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`amendment slightly narrows the claim of the ‘465 patent, with little effect on the
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`overall design, as two minor features have been added to the claim, and no claimed
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`features have been removed.
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`None of these changes, which are being made to conform the ‘465 drawings
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`to those of the ‘106 application, constitute new matter. The ‘465 patent’s original
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`specification as filed expressly incorporated by reference the disclosure of the ‘106
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`application. See, Exhibit 2 (the ‘465 patent’s specification as originally filed; that
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`incorporation language was never removed from the specification.)
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`Likewise, the fact that the proposed amended drawings are fully supported
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`by the drawings of the ‘106 application is shown by the schematic below. In that
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`schematic, examples of the original figures from the ‘106 application in whole or
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`IPR2013-00072
`D617,465
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`cropped (identified below as “Original” Figures) are displayed side-by-side with
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`the corresponding proposed amended drawings (identified by their figure number):
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`IPR2013-00072
`D617,465
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` FIGURE 1
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` Original FIG. 10(C)
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`IPR2013-00072
`D617,465
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` FIGURE 2
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` Original FIG. 10(B)
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`IPR2013-00072
`D617,465
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`In summary, the proposed amendments herein are fully supported by the
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`disclosure of the ‘106 application. As such, it is respectfully submitted that the
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`‘465 patent is entitled to the August 5, 2003 priority date of its parent ‘106
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`application.
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`The issues of continuity/priority were the only basis for citation of prior art
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`to invalidate the ‘465 patent (namely, the citation of Applicant’s own ‘106 priority
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`application and ‘225 patent as prior art). No other prior art has been identified that
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`affects patentability. Accordingly, in view of the foregoing amendments, it is
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`respectfully requested that the Board uphold the ‘465 patent’s priority to the ‘106
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`application, and find that the amended claim is patentable.
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`In conclusion, LNC respectfully requests that the Board grant the present
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`motion to amend the claim of the ‘465 patent, and issue favorable action on the
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`amended patent, for all of the reasons set forth above.
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`Dated: July 25, 2013
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`Respectfully submitted,
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`/Morris E. Cohen/
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`Morris E. Cohen (Reg. No. 39,947)
`Lee A. Goldberg (Reg. No. 38,894)
`GOLDBERG COHEN LLP
`1350 Avenue of the Americas, 4th Flr.
`New York, New York 10019
`646-380-2084 (phone-direct)
`646-380-2087 (phone-main)
`646-514-2123 (facsimile)
`Attorneys for the Patent Owner
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`IPR2013-00072
`D617,465
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`CERTIFICATE OF SERVICE
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`In connection with the above-referenced Inter Partes Review proceeding, I
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`hereby certify that on July 25, 2013, the foregoing Luv n’ care, Ltd.’s Motion to
`Amend its Patent Claim is being served on the following counsel for Petitioners
`in this matter via First Class Mail and electronic mail:
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`Dated: July 25, 2013
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`Dane A. Baltich
`Jeffrey Cooper
`ALSTON & BIRD LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280-4000
`dane.baltich@alston.com
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`Respectfully submitted,
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`/Morris E. Cohen/
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`Morris E. Cohen (Reg. No. 39,947)
`Lee A. Goldberg (Reg. No. 38,894)
`GOLDBERG COHEN LLP
`1350 Avenue of the Americas, 4th Flr.
`New York, New York 10019
`646-380-2084 (phone-direct)
`646-380-2087 (phone-main)
`646-514-2123 (facsimile)
`Attorneys for the Patent Owner
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