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.
`
`LUV N’ CARE, LTD.’S REPLY
`IN SUPPORT OF MOTION TO AMEND
`
`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
`
`
`__________________
`
`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.
`
`LUV N’ CARE, LTD.’S REPLY
`IN SUPPORT OF MOTION TO AMEND
`
`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
`
`
`
`I.
`
`The Proposed Amendment is Not Outside the Scope of IPR
`
`The allegations that Patentee’s amendment is outside the scope of IPR
`
`(Opposition-17 at 1-3), and that Patentee failed to point out an amendment to the
`
`claim language (Id. at fn. 1), are all without merit.1 Specifically, Petitioners allege
`
`that Exhibit 2002 is an improper amendment to delete “and described” from the
`
`claim. However, as per Patentee’s Motion, Exhibit 2002 is not an amendment. It is
`
`the initial specification from the ‘465 patent file wrapper. See, Motion-13 at 6, citing
`
`Exhibit 2 (Exhibit 2002). The claim language was never amended herein.
`
`II.
`
`Petitioners’ Response Improperly Raises New and Impermissible Grounds
`
`A.
`
`The Response Raises New Grounds
`
`For the first time, Petitioners make allegations regarding a recessed bottom, and
`
`a “cup without protrusions (or “ridges”)”. Both of those features were in the issued
`
`drawings of the ‘465 Patent; yet, neither was objected to in the Petition. As a result,
`
`those grounds were waived. Petitioners should not be allowed to belatedly raise new
`
`grounds not in their original Petition. To do so – now after Patentees’ filing of its
`
`Response and Motion – would be unfair to the Patentee.
`
`1 The issued patent includes a description of its broken lines, so the “as shown and
`described” language is proper. See, MPEP §§1503.01 II(c) and 1503.02 III. The
`recent amendment still includes broken lines and never deleted that language.
`
`1
`
`
`
`B.
`
`The Response Also Raises Impermissible Grounds
`
`“A Petitioner in an inter partes review may request to cancel as unpatentable
`
`1 or more claims of a patent only on a ground that could be raised under section 102
`
`or 103 ...” 35 U.S.C. 311(b) (emphasis added). Accordingly, all of Petitioners’
`
`allegations regarding invalidity under 112 are improper and should be rejected.2
`
`III. The Amended Claims are Entitled to Priority
`
`The present ‘465 Patent claims direct priority to the ‘106 Application, and the
`
`amended drawings correspond to the figures of the ‘106 application, as shown in the
`
`Patentee’s Motion and Exhibit 2003.3 As such, priority is proper.
`
`Petitioners’ argument that it is somehow forbidden to include any broken lines
`
`in the present ‘465 Patent is totally misplaced. It is directly inconsistent with Zahn.4
`
`A similar argument was also rejected by the Federal Circuit in Daniels.5 This case,
`
`2 Furthermore, as shown in Exhibit 2003, the views being patented are all
`consistent with each other. Petitioners’ figure comparison is inaccurate.
`
`3 “The parties agree that the parent application discloses no boundary that
`corresponds (either explicitly or implicitly) to this newly-added broken line.” Id.
`By adding a new line, Owens created a new shape not shown in the parent, which
`the Federal Circuit ruled to be impermissible new matter.
`
`4 See, In re Zahn, 617 F.2d 261, 267 (CCPA 1980). Zahn held that a design for an
`article of manufacture may be embodied in less than all of the article. It rejected a
`contrary, limited construction of 35 U.S.C. §171.
`
`5 In Daniels, a continuation was filed to delete a leaf design which was part of the
`parent. In re Daniels, 144 F.3d 1452, 1453 (Fed. Cir. 1998). The Court upheld
`
`2
`
`
`
`however, is even stronger than Daniels, since no lines have been deleted. The lines
`
`here are shown in the parent, with some being made broken here to be unclaimed.
`
`In addition, Petitioners’ reliance on Owens is misleading. In Owens, the
`
`patentee added a broken line in a continuation where no line at all existed in the
`
`parent. In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013). The present case is
`
`completely different. Here, existing solid lines were made broken.
`
`Moreover, this is a design patent application. As such, features such as the slit
`
`valves have been put in broken lines. Otherwise, the Petitioner would object on the
`
`grounds that the features are “functional” since the slits act as valves.
`
` In short, Petitioners’ position is inconsistent with established law and practice
`
`in which a Patentee may claim less than all of an article of manufacture.6 Contrary
`
`to the rule that Petitioners espouse, a Patentee is not hamstrung by having to claim
`
`every disclosed feature of an article.
`
`IV. The Claim Has Been Slightly Narrowed Not Broadened
`
`Petitioners’ claims of alleged broadening are likewise misplaced. It is
`
`undisputed that Petitioner has amended to claim elements which were not in the
`
`priority as the remaining design was nonetheless in the parent.
`
`6 Furthermore, the ‘106 Application repeatedly emphasizes that there are numerous
`variations for the features therein, different embodiments, and so forth.
`
`3
`
`
`
`issued claim, and it is traditionally accepted that adding elements narrows a claim.7
`
`Furthermore, Petitioners’ argument basically rests on an allegation that any
`
`change to a design patent results in a “broader” design that does not infringe the
`
`original. That position is contrary to Supreme Court and Federal Circuit precedent.
`
`After Egyptian Goddess, infringement is not based on “points of novelty” –
`
`isolated elements as Petitioners are arguing. Rather, infringement of a design patent
`
`must be based on the design as a whole. Hall v. Bed Bath & Beyond, Inc., 705 F.3d
`
`1357 (Fed. Cir. 2013). More particularly, the criterion for design patent infringement
`
`is that two designs are deemed substantially the same, if, in the eye of the ordinary
`
`observer, giving such attention as a purchaser usually gives, the resemblance is such
`
`as to deceive such an observer, inducing him to purchase one supposing it to be the
`
`other. Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L. Ed. 731 (1871).
`
`To an ordinary observer, the designs here are substantially the same – the
`
`minute changes made by amendment do not change the overall appearance. The
`
`overall designs in the drawings are so close that the product of either would infringe
`
`the other. As the Supreme Court explained, the standard is the ordinary observer, not
`
`the expert. To say that the ordinary observer will discern between the precise
`
`elliptical nature of a racetrack as opposed to an oval, or discern the exact thickness
`
`7 Although the narrowing here is minor, it is, nonetheless, still a narrowing.
`
`4
`
`
`
`of the rim, to allegedly change infringement, is not supported by any evidence.
`
`On the contrary, “minor differences between a patented design and an accused
`
`article's design cannot, and shall not, prevent a finding of infringement.”8 Petitioners’
`
`attempted focus on minor differences is contrary to the Supreme Court’s approach in
`
`Gorham, and contrary to Federal Circuit precedent as explained in Payless and Crocs.
`
`Moreover, drinking cups are very inexpensive items, so ‘such attention as a
`
`purchaser usually gives’ is low. This further confirms no effect on infringement.
`
`These designs are not judged by the long-considered contemplation associated with
`
`a costly purchase.
`
`Petitioners avoid any meaningful discussion of the overall design to the
`
`ordinary observer as required by law. Moreover, and notably, Petitioners have not
`
`provided a specific image of any design which would fall within the amended patent
`
`claim, but not the original claim. It was Petitioners’ burden to produce such evidence,
`
`but they did not meet that burden.
`
`In conclusion, Petitioners’ objections should all be rejected as set forth above.
`
`8 See, Payless Shoesource, Inc. v. Reebok Int'l, Ltd., 998 F.2d 985, 990 (Fed. Cir.
`1993)(difference in heel pieces does not change infringement by “admittedly
`similar” designs) (internal citation omitted); Crocs, Inc. v. ITC, 598 F.3d 1294,
`1303-04 (Fed. Cir. 2010) (minor differences will not avoid infringement).
`
`5
`
`
`
`Dated: November 25, 2013
`
`Respectfully submitted,
`
`/Morris E. Cohen/
`
`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
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`In connection with the above-referenced reexamination proceeding, I hereby
`certify that on November 25, 2013 the foregoing Luv n’ care, Ltd.’s Reply in
`Support of Motion to Amend is being served on the following counsel for the third
`party requesters in this matter via PRPS and electronic mail:
`
`A. Justin Poplin
`Lathrop & Gage, LLP
`2345 Grand Boulevard, Suite 2400
`Kansas City, Missouri 64108
`jpoplin@lathropgage.com
`
`Dated: November 25, 2013
`
`Respectfully submitted,
`
`/Morris E. Cohen/
`
`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
`
`7
`
`
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