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
Category Archives: Motion to Amend
Final Written Decision (Design) – IPR2013-00072
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.
Addressing Motion to Compel and Denying Motion to Exclude IPR2013-00141-143, 150
The Board ordered production of pages of a deposition transcript requested by Petitioner; ordered Patent Owner’s replies on its motions to amend be revised; and denied Patent Owner’s motions to exclude evidence. Continue reading
Granting Motion to File Amended Motion to Amend CBM2013-00018
In its Order, the Board granted Patent Owner’s Motion for Leave to File an Amended Motion to Amend, but limited the subsequent briefing on the motion. Patent Owner stated that the amended motion would only change certain substitute claims to correct inadvertent errors, such as erroneously underlining certain phrases, failure to underline certain phrases, and omission of a limitation. Petitioner argued that no good cause existed to make the changes, that the addition of a limitation would alter the scope of the claim, and that allowing Patent Owner to cure defects raised by Petitioner in its opposition would create a disincentive for other petitioners to note such defects. The Board noted that allowing the amendment would reduce the number of issues to be considered and that good cause existed for the revisions because they are limited. However, the Board stated that because Patent Owner has argued that it is only making non-substantive revisions, Patent Owner cannot file any new argument in its supplemental papers. Further, the Board allowed Petitioner to file a supplemental opposition directed to the revised substitute claims, but did not authorize a reply from Patent Owner. Continue reading
Final Written Decision (Motion to Amend) IPR2013-00020
In the Final Written Decision, the Board held that claims 1-10, 13 and 14 of the ’364 Patent are unpatentable, but Petitioner was not able to show that claims 11, 12, and 15-24 are unpatentable. The Board also denied Patent Owner’s Motion to Amend. Continue reading
Denying Motion to Exceed Page Limits IPR2013-00402
In its Order, the Board denied a request by Patent Owner to file a consolidated motion to amend claims in two patents in two separate proceedings. The Board indicated that the two patents included different claims, and that the substitute claims would be different. Thus, the Board believed that a motion to amend claims should be separately filed in each proceeding. Continue reading
Final Written Decision (Motion to Amend) CBM2013-00005
In its Order, the Board granted Patent Owner’s request to cancel claims 1-4, denied Patent Owner’s request to add proposed claims 5-8, and dismissed Patent Owner’s motion to exclude evidence. Continue reading
Order Denying Motion to Terminate Ex Parte Reexamination IPR2013-00289
In its Order, the Board denied Petitioner’s Motion to Terminate, or alternatively stay, ex parte reexamination no. 90/013,148, in which Patent Owner had requested to amend the claims at issue in this proceeding. Petitioner argued that Patent Owner’s pursuit of amendments in the ex parte reexamination is inconsistent with Congress’s intent that the IPR tackle all issues at once and is also inconsistent with the Board’s guidance that ex parte reexamination is for structural changes to the claims. The Board was not persuaded by these arguments and instead found that the AIA does not prohibit Patent Owners from amending its claims by other means. Further, it agreed with Patent Owner that its pursuit of amendments in ex parte reexamination is not inconsistent with the guidance in this proceeding, and the Board did not restrict amendment via ex parte reexamination to complete restructuring of claim structure. The Board requested that Patent Owner notify the Board as soon as possible whenever the status of the ex parte reexamination changes. Continue reading
Granting Leave to File Revised Motion to Amend IPR 2013-00226
In its Order, the Board granted Patent Owner’s Motion for Leave to File a Revised Motion to Amend. Patent Owner stated that the revised motion would only change proposed substitute claims 17, 18, and 23 to recite “a” instead of “the” (or the like) and correct instances where Petitioner alleges the claims lack proper antecedent basis. Patent Owner asserted that good cause exists for authorizing the changes because they are non-substantive and would resolve any dispute as to whether the proposed substitute claim terms have the proper antecedent basis. Petitioner disputed Patent Owner’s assertions of good cause, but did not explain why. Continue reading
Final Written Decision and Denying Motion to Amend IPR2013-00029
In its Decision, the Board held that Xilinx had shown by a preponderance of the evidence that the challenged claims 1-3 of U.S. Patent No. 5,632,545 (“the ’545 Patent”) are unpatentable under 35 U.S.C. § 103(a). The Board denied Intellectual Ventures I LLC’s (“IV”) Motion to Amend Claims. Finally, the Board denied IV’s Motion to Exclude Evidence. Continue reading