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
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.