UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Munchkin, Inc.
`
`Petitioner
`
`v.
`
`Luv N' Care, Ltd.
`
`Patent Owner
`
`Case IPR2013-00072
`
`Patent D61 7,465
`
`Opposition to Patent Owner's July 25, 2013 Motion to Amend
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Munchkin, Inc.
`
`Petitioner
`
`v.
`
`Luv N' Care, Ltd.
`
`Patent Owner
`
`Case IPR2013-00072
`
`Patent D61 7,465
`
`Opposition to Patent Owner's July 25, 2013 Motion to Amend
`
`
`
`Through this paper, the petitioner respectfully opposes Patent Owner's July
`
`25,2013 Motion to Amend (Paper 13). If any fee is necessary for this paper to be
`
`fully considered, the petitioner respectfully requests that all such fees be charged to
`
`Deposit Account No 12-0600 with reference to attorney docket number 533625.
`
`Patent Owner is being served a copy of this paper, as shown by the attached
`
`Certificate of Service.
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`I.
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`Introduction
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`Patent Owner's description of the proposed amendments is neither
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`comprehensive l nor accurate/ and the arguments in Paper 13 directed to priority
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`date are fundamentally flawed. As set forth below, the pending Motion to Amend
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`(Paper 13) should be denied at least because: (a) it does not only respond to a
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`ground of unpatentability involved in the trial; (b) it seeks to enlarge the scope of
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`the claim in the '465 Patent; (c) it does not clearly set forth support in the original
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`1 For example, it fails to point out that the claim language would be amended
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`from "as shown and described" to "as shown".
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`2 For example, the patent owner's characterization of the proposed drawing
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`amendments as narrowing the claim scope is wrong. And the patent owner's
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`statement that "no claimed features have been removed" is similarly wrong; for
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`example, the claimed smooth surface around the vent hole has been removed in
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`favor of a raised ridge.
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`disclosure for the amended claim; and (d) it does not clearly set forth support in the
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`earlier-filed disclosure for the amended claim. This violates 37 C.F.R. §§
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`42.121(a)(2)(i), 42. 121 (a)(2)(ii), 42.121(b)(1), and 42.121(b)(2), respectively.
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`But if the amendments proposed in Paper 13 are allowed, they nevertheless
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`do not overcome the invalidity problems addressed in the Request for Inter Partes
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`Review (Paper 3) and the Decision to Institute (Paper 8). And still further, the
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`proposed amendments raise new invalidity issues at least under 35 U.S.C. §§ 112
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`and 316(d)(3). These issues are discussed in detail in the petitioner's Reply to
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`Patent Owner's July 25,2013 Response.
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`II.
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`The proposed amendment is impermissibly outside the scope of IPR
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`The' 465 Patent as issued claims "the ornamental design for a drinking cup,
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`as shown and described." See Exh. 1002 at Claim. Although not addressed by
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`Patent Owner, the proposed amendment changes that language to simply "the
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`ornamental design for a drinking cup as shown"-without the "and described".
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`See Exh. 2002 at Claim. This amendment does not respond to a ground of
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`unpatentability involved in the trial, and thus should be denied for violating 37
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`C.F.R. § 42. 121(a)(2)(i). Further, by not even pointing out this proposed
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`amendment to the claim text, Patent Owner has violated the requirement to "show
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`the changes clearly". See 37 C.F.R. § 42.121(b). It is unknown how many other
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`edits were not shown clearly in the proposed amendments, and the burden to
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`identify these amendments is squarely on the patent owner. See id.
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`III. The proposed amendment impermissibly enlarges the claim scope
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`The best guidance provided by the USPTO is that a claim is broadened (has
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`an enlarged scope) if "any conceivable product or process" falls within the scope
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`of the amended claim (here, defined by the drawings) that would not have
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`infringed the original patent. See MPEP 1412.03. This is consistent with case law
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`on broadening. See, e.g., Thermalloy, 121 F.3d at 692 ("A new claim enlarges ifit
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`includes within its scope any subject matter that would not have infringed the
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`original patent."); Brady Const. Innovations, Inc. v. Perfect Wall, Inc., 290
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`Fed.Appx. 358, 363 (Fed. Cir. 2008); Tillotson, Ltd. v. Walbro Corp., 831 F.2d
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`1033, 1037 (Fed. Cir. 1987). Indeed, case law is well settled that "a claim is
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`broadened if it is broader in any respect than the original claim, even though it may
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`be narrowed in other respects." In re Rogoff, 261 F.2d 601, 603 (C.C.P.A. 1958)
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`(emphasis added).
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`So the test for broadening is not merely an accounting of claim elements,
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`with additional elements (or even the same number of elements) in an amended
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`claim necessitating a finding of no broadening. Instead, if even one conceivable
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`product falls outside the original claim but inside the scope of the amended claim,
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`there is broadening. In cases where the configuration has been changed (i.e.,
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`where amendments are not merely changing broken lines to solid lines), such edits
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`
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`would affect at least the outermost claim scope as illustrated below in FIGURE 1.
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`There, the original scope is represented by solid lines, and the amended scope is
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`represented by dashed lines. Common scope is where the two overlap, and
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`broadened scope is the non-overlapping dashed area.
`
`FIGURE 1
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`The Federal Circuit recently found that having less features in a design
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`patent context does not mean that the claim is more broad. In Apple, Inc. v.
`
`Samsung Elecs. Co., the prior art computer tablet included more features than in
`
`the design patent at issue, such as a sharply contrasting frame, a perforated comer,
`
`and sides that include projections and indentations. 678 F.3d 1314,1330-31 (Fed.
`
`Cir. 2012). If the more minimalist design claimed in the patent were more broad
`
`than the prior art, it could not be valid. See Philip v. Mayer, Rothkopf Indus., 635
`
`F .2d 1056, 1060 (2nd Cir. 1980) ("We have long held that a patent is invalid, no
`
`matter how ... original the invention it protects, if the applicant for the patent claims
`
`the invention so broadly that it encompasses already established prior art."); see
`
`also, Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357,
`
`1367 (Fed. Cir. 2002) (where a claim "reads on prior art, the patent is invalid");
`
`and see, Knapp v. Morss, 150 U.S. 221, 228 (1893) ("the rule is well established[:]
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`
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`that which infringes, if later, would anticipate, if earlier").
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`The Federal Circuit refused to invalidate the design patent, finding that the
`
`visual impression of each was different. Apple, 678 F.3d at 1328-32. To be clear,
`
`the reference having more features was not within the scope of (and thus was not
`
`more narrow than) the claimed design having less features. In sum, the broadening
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`inquiry focuses on differences in scope, not on whether more, less, or even the
`
`same number of elements are present.
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`In the case at hand, as in Apple, the different (in our case, amended) drawing
`
`features result in a different scope-and not simply a more narrow scope. So, in
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`accordance with the authority set forth above, the sole claim of the' 465 Patent
`
`must be considered impermissibly broadened.
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`Focusing in detail now on the amended drawings offered by Patent Owner to
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`replace those in the '465 Patent in an attempt to overcome the current indication of
`
`invalidity, differences include:3
`
`1.
`
`the overall perimeter shape a of the spout has been amended from
`
`oval-shaped to racetrack-shaped;4
`
`3 Reference letters are annotated on amended FIG. 3 of the '465 Patent as
`
`provided in FIGURE 2 herein.
`
`4 The USPTO has already found that the' 106 Application has a racetrack(cid:173)
`
`shaped spout tip, and that the '465 Patent claims an oval-shaped spout tip. See
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`5
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`
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`11.
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`the size of boundary b has been adjusted;
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`111.
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`the location of boundary b has been shifted from a center of the
`
`spout shape to a leftward location in replacement FIG. 3;5
`
`IV.
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`the valve has been amended to have a raised air valve border c; and
`
`v.
`
`proportions have been altered.6
`
`FIGURE 2
`
`Each of these amendments is substantive and materially changes the
`
`configuration and visual impression of the claimed design. In other words, these
`
`are not merely amendments where previously unclaimed (broken) lines are
`
`changed to solid lines. In stark contrast, the structural configuration of the design
`
`Paper 8 at p. 7. Patent Owner argues that the drawings now match those in the
`
`, 106 Application. See Paper 13 at p. 7; Paper 14 at p. 3.
`
`5The location and shape of b also affects the spout contour that leads up to b.
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`6 See Paper 13 at p. 6.
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`6
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`
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`is changed by Patent Owner's amendments. As a result, products could fall within
`
`the scope of the amended figures that would otherwise not fall within the scope of
`
`the original figures. For example, products having the raised air valve border c, the
`
`revised shapes a and b, and the amended proportions could infringe under the new
`
`drawings, while being outside of the claim scope of the original drawings.
`
`Looking at this issue in further detail, the test for infringement of a design
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`patent is set forth in Egyptian Goddess, Inc. v. Swisa, Inc.: "whether an ordinary
`
`observer, familiar with the prior art ... designs, would be deceived into believing the
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`[accused product] is the same as the patented [product]." 543 F.3d 665, 681 (Fed.
`
`Cir. 2008). As is clear from the USPTO's analysis of the proposed grounds of
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`invalidity in this case and in related reexamination 95/001,973, the art of drinking
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`cups is crowded. See Paper 8 at pp. 17-22; 5/10/2013 Office Action in Inter Partes
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`Reexamination 95/001,973 at pp. 6-21 (attached hereto as Exh. 1029). In this
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`crowded field, the noted differences "cannot be considered minor." See Egyptian
`
`Goddess, 543 F.3d at 683. Patent Owner's proposed drawing amendments alter the
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`claim scope as illustrated above in FIGURE 1 and cause the claim to now cover
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`products that would not be viewed by an ordinary observer as being covered under
`
`the original patent drawings. So the scope of the patent claim has been
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`impermissibly enlarged, and the Motion to Amend (Paper 13) should be denied
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`under 37 C.F.R. § 42. 121(a)(2)(ii).
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`7
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`
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`IV. The Motion to Amend fails to include sufficient support
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`The Motion to Amend (Paper 13) does not (and cannot) clearly set forth
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`support for the amended claim in both the' 465 Patent as filed and the '106
`
`Application.7 Simply put, neither includes the specific combination of features
`
`now claimed in the proposed amendments. While Patent Owner has addressed
`
`some individual features, the claimed design as a whole is absent from both the
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`'465 Patent and the' 106 Application. For example, neither specifically provides
`
`the five amended features discussed above in Section III along with: (a) a vent that
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`is not concave; (b) a vent without a slit line; (c) a nipple without slit lines; (d) a cup
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`without a recessed bottom; or (e) a cup without protrusions (or "ridges") on a
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`collar. Therefore, the Motion to Amend (Paper 13) should be denied for violating
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`37 C.F.R. §§ 42.121(b)(1) and 42.121(b)(2).
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`V.
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`Conclusion
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`F or all of the reasons set forth above, the pending Motion to Amend (Paper
`
`13) should be denied.
`
`7 This issue is similar to a problem with the' 465 Patent discussed in the
`
`petitioner's Reply to Patent Owner's July 25,2013 Response; namely, the '106
`
`Application fails to provide a written description of the invention claimed in the
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`'465 Patent, and thus cannot provide priority under 35 U.S.C. § 120. See Reply to
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`Patent Owner's July 25,2013 Response at pp. 11-15.
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`8
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`
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`Respectfully submitted,
`
`LATHROP & GAGE LLP
`
`A. Justin Poplin, Reg. No. 53,476
`2345 Grand Boulevard, Suite 2400
`Kansas City, Missouri 64108
`Tel No: 913-451-5130
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`9
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`
`
`PATENT
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Munchkin, Inc.
`
`Petitioner
`
`v.
`
`Luv N' Care, Ltd.
`
`Patent Owner
`
`Case IPR2013-00072
`
`Patent D617,465
`
`October 25,2013
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(3)
`
`The undersigned certifies that on October 25,2013, a copy of:
`
`• Opposition to Patent Owner's July 25,2013 Motion to Amend
`
`(9 pages);
`
`• Exhibit 1029 (24 pages); and
`
`10f2
`
`
`
`IPR20 13-00072
`D617,465
`
`• Certificate of Service Under 37 C.F.R. § 42.6(e)(3) (2 pages)
`
`were mailed by first class mail bearing sufficient postage to:
`
`Morris E. Cohen
`Goldberg Cohen, LLP
`1350 Avenue of the Americas, 4th Floor
`New York, New York 10019
`
`Respectfully Submitted,
`
`BY~~"'<~
`
`A. Justin Poplin, Reg. No. 53,476
`LATHROP & GAGE LLP
`2345 Grand Boulevard, Suite 2400
`Kansas City, Missouri 64108
`Tel: (913) 451-5130
`Fax: (813) 292-2001
`
`20f2
`
`
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