Final Written Decision IPR2013-00500

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Takeaway: If a patent owner relies upon reduction of practice by a third party to pre-date a prior art reference, the patent owner must have proof beyond inventor testimony that it conceived of the claimed invention and that it communicated the claimed invention to the third party.

In its Final Written Decision, the Board found that the sole claim of the ’731 Patent is unpatentable. The ’731 Patent relates to “[t]he ornamental design for a multiple crock buffet server” “with two or more oval server bowl inserts situated adjacent opposite ends of the heated server base unit housing.” The parties accepted the Board’s interpretation of the claims from the Decision on Institution. Continue reading

Decision Denying Institution IPR2014-00542

Takeaway: A challenge based on functionality under 35 U.S.C. § 171 is not permitted in an inter partes review because it is not based on 35 U.S.C. § 103 nor is it based on prior art that consists of a patent or printed publication.

In its Decision, the Board denied Petitioner’s Petition for inter partes review of the sole design patent claim of the ’731 patent, because the Board was not persuaded that there was a reasonable likelihood that Petitioner would prevail on at least one alleged ground of unpatentability with respect to the claim of the ’731 patent.  Thus, no trial was instituted.

The ’731 patent relates to a truck headlamp.  As for claim construction, the parties had disagreed “whether functional elements of the design form part of the claim.”  Petitioner had argued that “the design feature of a given embodiment cannot be the result of functional or mechanical considerations, and therefore the functional elements of the headlamp of the ’731 patent do not form part of the claim.”  In contrast, it was Patent Owner’s position that “whether or not these elements are functional, they must be considered and construed as part of the visual impression created by the patented design as a whole.”

The Board agreed with Patent Owner on this point, indicating that Petitioner had impermissibly conflated “invalidity based on functionality under 35 U.S.C. § 171 with invalidity based on obviousness under 35 U.S.C. § 103.”  Citing High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013), the Board stated that whether a design patent is “primarily ornamental” is distinct from the nonobviousness requirement.

The Board went on to note that “a challenge based on functionality under 35 U.S.C. § 171 is not permitted in an inter partes review because it is not based on 35 U.S.C. § 103 nor is it based on prior art that consists of a patent or printed publication.”  Thus, the Board agreed with Patent Owner that the allegedly functional elements identified by Petitioner had to be considered when conducting the obviousness analysis of the visual impression created by the patented design as a whole.

The Board then addressed Petitioner’s challenge to the sole claim of the ’731 patent, all of which involved obviousness positions under 35 U.S.C. § 103.  Each of the asserted grounds of unpatentability relied upon Kobayashi as the primary reference.  Petitioner proposed to modify the headlamp of Kobayashi “by adding a side Lamp D,5 adding striations and a checkered surface pattern, and curving the bezel.”  But the Board did not agree with Petitioner that the headlamp of the ’731 patent and Kobayashi headlamp have essentially the same shape.  Because of this and other differences, the Board found that “a designer of ordinary skill would [not] have viewed the Kobayashi lamp to give the same visual impression as the ’731 patent.”  Thus, the Board concluded that Petitioner had not shown a reasonable likelihood of prevailing with regard to any of the grounds of unpatentability.  The Board went on to state that “[e]ven if Kobayashi were a valid primary reference, which we have determined above it is not, the modification proposed by Petitioner would not result in ‘the same overall visual appearance as the claimed design.’

Dorman Products, Inc. v. Paccar, Inc., IPR2014-00542
Paper 10: Decision Denying Institution of Inter Partes
Review
Dated: September 5, 2014
Patent D525,731 S

Before: James T. Moore, Phillip J> Kauffman, and Philip J. Hoffmann
Written by: Kauffman
Related Proceeding: Dorman Products Inc. v. PACCAR, Inc., Civil Action No. 2:13-cv-06383-JD (E.D. Pa.)

Authorizing Sur-Reply and Motion for Observation of Cross-Examination IPR2013-00580

Takeaway: Consistent with 37 C.F.R. § 42.53, testimony generally may be taken at any reasonable time and location within the United States.

In its Order, the Board authorized Patent Owner to file a sur-reply to Petitioner’s Reply to Patent Owner Response, but did not authorize Petitioner to file any response to the sur-reply. Also, the Board authorized Patent Owner to file a motion for observations on cross-examination of Mr. Lance Rake, and Petitioner was authorized to file responses to the observations. Continue reading

Final Written Decision (Design) – IPR2013-00072

Takeaway: A design patent claim is only entitled to a claim for priority if the earlier-filed priority document provides adequate written description support under 35 U.S.C. 112(a);lack of priority cannot be corrected by an amendment that would enlarge the scope of the claim.

In its Order, the Board found that Petitioner had shown by a preponderance of the evidence that the lone claim of the ‘465 design patent is unpatentable.  As with all design patents, the ‘465 patent only contained a single claim.  Petitioner asserted that the claim of the ‘465 patent would have been obvious in view of either of two cited references, namely, Hakim ‘604 and Hakim ‘225.  Rather than arguing that the claim was patentably distinct from Hakim ‘604 and Hakim ‘225, Patent Owner asserted that these references were not prior art because the ‘465 patent was entitled to a date of priority that preceded these references.  In this regard, the ‘465 patent was a continuation of a ‘909 application, which was a continuation of a ‘106 application, which was a national stage of a PCT ‘400 application.

The Board found that the sole claim of the ‘465 patent was not entitled to the benefit of the filing date of the ‘106 application because the ‘106 application lacked written description support for the claim of the ‘465 patent under 35 U.S.C. § 112(a).  According to the Board, the ‘106 application did not “identify the specific shape of the spout in the claimed design or otherwise reasonably convey to those skilled in the art that the inventor had possession of the claimed design.”  Because the claim of the ‘465 patent was not entitled to the filing date of the ‘106 application, Hakim ‘225 and Hakim ‘604 were prior art to the claim of the ‘465 patent.  Thus, the Board found the claim of the ‘465 patent unpatentable as obvious in view of these references.

Patent Owner had proposed to amend the claim of the ‘465 patent by replacing each of five drawings presented in the patent.  The Motion to Amend sought to amend the claim so that it would be supported by the disclosure of the ‘106 application, thus disqualifying Hakim ‘225 and Hakim ‘605 as prior art.  The Board denied the Motion to Amend because it sought to enlarge the scope of the claim of the ‘465 patent.

Munchkin, Inc. and Toys “R” Us, Inc. v. Luv N’ Care, Ltd., IPR2013-00072
Paper 28: Final Written Decision

Dated: April 21, 2014

Patent D617,465
Before: Jennifer S. Bisk, Benjamin D. M. Wood, and Michael J. Fitzpatrick
Written by: Fitzpatrick
Related Proceedings: Luv N’ Care, Ltd. v. Toys “R” Us, Inc., 1:12-cv-00228 (S.D.N.Y. filed Jan. 11, 2012); Luv N’ Care, Ltd. v. Regent Baby Products Corp., 10-9492 (S.D.N.Y. filed Dec. 21, 2010); Luv N’ Care, Ltd. v. Royal King Infant Prod’s Co. Ltd., 10-cv-00461 (E.D. Tex. Filed Nov. 4 2010); and Inter Partes Reexamination Control No. 95/001,973.