Final Written Decision (Claim Construction) – IPR2013-00058


Takeaway: If you are going to use an inventor declaration to support a claim construction, the declaration should not be conclusory and should cite to the specification or ordinary meaning for support.

In its Final Written Decision, the Board found that claims 1-34 of the ’575 Patent are unpatentable.  Specifically, the Board found that claims 1-34 are unpatentable as anticipated by or obvious over various different references and combinations of references, including Tessier ‘046, Cheng ‘467, Burk ‘710, Cutler ‘064, JP ‘507, McNeill ‘813, and JP ‘470. Continue reading

Final Written Decision IPR2013-00069


Takeaway: Inventor declarations supporting a claim construction should not be conclusory and should cite to the specification or ordinary meaning as support.

In its Final Written Decision, the Board found that claims 1-21 of the ’061 Patent are unpatentable. Specifically, the Board found that claims 1-5 and 7-20 are unpatentable as anticipated by Tessier, claim 6 is unpatentable as obvious over Tessier and Meer, and claim 21 is unpatentable as obvious over Tessier and JP. Continue reading

Order on Motion for Additional Discovery – IPR2013-00431; IPR2013-00449; IPR2013-00451; and IPR2013-00468


Takeaway: Authorization for the filing of a Motion for Additional Discovery can be sought in the event a declarant for the Petitioner gives opinions that purport to rely on statements to the declarant by the inventor of the challenged patent(s) and employees of the Patent Owner.

In its Order, the Board authorized Petitioner to file a Motion for Additional Discovery, and for Patent Owner to file an Opposition.  Petitioner in its Motion is required to state how much time it proposes for each requested deposition and to identify what specific issues will be addressed if the depositions are permitted.  The Motion must also explain why Petitioner believes that requested depositions of three individuals in question are “necessary in the interest of justice” consistent with the guidelines in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (March 5, 2013) (See USPTO Representative Orders, Decisions, and Notices). Continue reading

Order Regarding Request for Additional Discovery – IPR2013-00586


Takeaway: Refraining from requesting additional discovery prior to institution of trial does not waive a party’s opportunity to ask for additional discovery after institution of trial.

In its Order, the Board indicated that it wanted to review certain interrogatories proposed by Patent Owner before deciding whether to authorize Patent Owner’s proposed Motion for Additional Discovery.  Thus, the Board ordered Patent Owner to file a set of proposed interrogatories, five or fewer, within one week of the Board’s Order. Continue reading

Final Written Decision (Motion to Amend) – IPR2013-00093


Takeaway: In inter partes review, a claim of an unexpired patent is given its broadest reasonable interpretation (BRI) consistent with the specification in which it appears, and a motion to amend may be denied if it does not add patentable subject matter.

In its Final Written Decision, the Board found that the challenged claims of the ‘880 patent were unpatentable as anticipated and obvious in view of the prior art.  Also, the Board denied Patent Owner’s Motion to Amend. Continue reading

Denying Motion for Additional Discovery IPR2014-00041, 43, 51, 54, 55


Takeaway: In supporting a motion to compel additional discovery, the party seeking discovery must explain how the evidence and argument provided shows that it will uncover something useful that supports its theory.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery regarding the identity of any real parties-in-interest. Patent Owner sought a copy of the engagement or retainer agreements between counsel for Petitioner and various third parties, legal bills issued by counsel for Petitioner regarding services rendered in connection with this proceeding, patents or printed publications provided by third parties to Petitioner related to the patents-in-suit, an explanation of third party involvement in filing and preparing the Petition, and the identity of all individuals and entities that participated in preparing the Petition.  Patent Owner contended that this information was relevant to determine whether certain third parties were real parties-in-interest in this proceeding.  Patent Owner contended that if in fact the third parties were real parties-in-interest, then the proceedings should be terminated for failure to identify the third parties and because of the one-year bar. Continue reading

Granting Motion for Leave to File Motion to Compel Discovery IPR2013-00567, 68, IPR2014-00541


Takeaway: The Board does not have subpoena power so a party may not compel documents from third parties.

In its Order, the Board authorized Patent Owner to file a Motion to Compel Discovery of a report submitted by Petitioner’s declarant in an ITC proceeding. Patent Owner argued that it believed that the report contained testimony from Petitioner’s declarant that is inconsistent with his testimony in the inter partes review proceedings based upon a reference to the testimony in the decision of the ITC.  Patent Owner inquired about the possibility of a subpoena, either issued by the Board or through a District Court, to pursue production of the report from a third party.  Petitioner stated that it did not believe that the report contains inconsistent statements, and stated that neither it nor the declarant had copies of the report, which were destroyed in accordance with the protective order entered in the ITC proceeding. Continue reading

Decision Denying in part, Granting in part Request for Rehearing IPR2013-00472


Takeaway: The Board may grant a motion requesting rehearing on a decision for institution if a party can point to statements by the Board that directly contradict the known law on a subject.

In its Decision, the Board granted in part and denied in part Patent Owner’s Request for Rehearing on the Decision for Institution. Patent Owner’s request was based on two grounds: (1) that the Board misinterpreted the governing law regarding inherency; and (2) that the Board provided an improper construction of the claim term “concave.”  The Board stated that it reviews a rehearing of a decision on institution for an abuse of discretion, which can be determined if the decision was based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents unreasonable judgment in weighing relevant factors. Continue reading

Denying Request for Rehearing IPR2013-00494


Takeaway: When arguing for multiple grounds of unpatentability as to a single claim, Petitioner must show that those grounds are not redundant by making a meaningful distinction between the grounds. Otherwise, the Board may only institute trial on one of the grounds.

In its Order, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision Not to Institute an inter partes review as to any challenged claims of the ‘186 patent.  The Petitioner’s request failed to show that the Decision Not to Institute was an abuse of discretion. 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.