Post-grant Review

Design Patents & Reexamination - A Discussion With Design Patent Expert Philippe Signore

February 22, 2010
Philippe Signore was recently interviewed on Oblon, Spivak's Patents Post Grant Law Blog. The text of that interview is below.


Design Patents & Reexamination -- A Discussion with Design Patent Expert Philippe Signore

Design patents are significantly different from utility patents in that design patents do not protect function, but instead, protect ornamental features.  Design patent are defined in scope by the content of the drawings  as opposed to the words of a set of claims. Further, design patents are accorded a patent term of 14 years from issue, as opposed to 20 years from filing.
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BPAI Emphasizes Obviousness Test in Reversing Inter Partes Design Patent Reexamination

April 28, 2010
In inter partes reexamination 95/000,034, Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. An obviousness determination for a utility patent must consider the perspective of one of ordinary skill in the art to which the invention pertains. For design patents, obviousness is based on the perspective of designer of ordinary skill who designs articles of the type involved. As this case demonstrates, failing to appreciate the distinction can lead to dire consequences for third party requesters.


Please click here for full article with images.
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Patentability of Bank of America Corp.’s Design Patent Affirmed

January 25, 2011
As reported in Oblon Spivak’s Patents Post-Grant blog, the U.S. Court of Appeals for the Federal Circuit affirmed the patentability of Bank of America Corp.’s design patent for a miniature credit card, agreeing that a patent examiner erred in initially rejecting the patent claim as obvious.  The decision was made without explanation. 


A discussion of the inter partesreexamination that led to the Federal Circuit appeal can be found here.
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PTAB: Munchkin v. Luv N'Care - Final Decision in IPR

May 1, 2014
On April 21, 2014 the USPTO’s Patent Trial and Appeal Board issued a final written decision in Munchkin Inc. et al. v. Luv N’ Care Ltd. (IPR2013-00072), the inter partes review of Luv N’ Care Ltd.’s design patent for a baby drinking cup.

The PTAB found Luv N’ Care Ltd.’s D 617,465 patent (the ’465 patent) unpatentable. This is the first time that the USPTO hasinvalidated a design patent under a post-grant review process created by the America Invents Act.

The ‘465 patent claims a drinking cup. Figures 2 and 3 are reproduced below.



In January 2012, Luv N’ Care filed an infringement suit for the ’465 patent in the Southern District of New York, against Toys R Us and Munchkin (NYSD-2-12-cv-00228).

In the complaint, Luv N’ Care stated that it had “generated hundreds of millions of dollars in revenue from the sale of goods under their trademarks and trade dress,” and that a series of competitors had allegedly “all deliberately copied [Luv N’ Care’s] designs, to illegally profit from them.”

Luv N’ Care sued the Defendants on counts of alleged infringement, trade dress infringement and unfair competition, federal trademark dilution, unfair competition under New York law, violation of New York general business law, and contributory infringement.

The ‘465 patent was also involved in the Luv N’ Care Ltd v. Regent Baby Products Corp, 10-9492 (S.D.N.Y filed Dec. 21, 2010), and Luv N’ Care Ltd v. Royal King Infant Prod’s Co. Ltd, 10-cv-00461 (E.D. Tex. Filed Nov. 4, 2010). Luv N’ Care settled with Royal King Infant Prod’s Co. Ltd, with Royal King agreeing to cease and desist from manufacture and sales of products likely to cause confusion.

In December 2012, Toys R Us and Munchkin (‘the Petitioners’) filed a petition for inter partes review, alleging that the ’465 patent was obvious in view of two references, US 2007/0221604 (the ’604 reference) and US 6,994,225 (the ’225 reference). This was the first inter partes review initiated by the USPTO for a design patent. 

The Patent and Trials Appeal Board (PTAB) determined that there was reasonable likelihood that the claim of the ‘465 patent would have been obvious over each of the ‘225 and ‘604 reference, and granted the petition for review.

First, Luv N’ Care argued that its ‘465 patent was entitled to an earlier effective filing date of US Application No. 10/536,106 (the ‘106 application), thereby disqualifying the ‘225 and ‘604 references. In response, the Petitioners argued that the ‘106 application lacked written description support for the ‘465 patent, based on differences in the spout.

Figures from both the ‘465 patent and the ‘106 application are shown below, as reproduced from the PTAB’s final written decision:



In its written decision, the PTAB stated the following differences “(1) the outer boundary of the spout tip of the claimed design is larger than that of the ‘106 application. … (2) the spout tip of the claimed design has a different, more rounded, oval shape than that of the racetrack shape of the spout tip in the ‘106 application; and (3) the spout tip of the claimed design has three concentric rings that the ‘106 application does not disclose.”

The PTAB further noted that although the ‘106 application stated that an oval or other shape may be used for the spout, 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.” Accordingly the PTAB concluded that the ‘465 patent was not entitled to the filing date of the ‘106 application. The written decision notes that counsel for Luv N’ Care conceded that the claim was not patentable if denied the benefit of the filing date.

Second, Luv N’ Care submitted a motion to amend the patent. As reiterated by the PTAB, a motion to amend the patent must be responsive to a ground of unpatentability at issue in the trial, and it may not enlarge the scope of the claims, or introduce new matter. The patent owner bears the burden to establish that it is entitled to the relief requested by its motion to amend.

The amendment proposed by Luv N’ Care is shown in part below for Figure 3:



The PTAB stated that the “spout tip (left of center in each drawing above) is egg-shaped in the issued claim, whereas it is racetrack-shaped in the proposed amended claim. Additionally, the spout tip of the issued claim includes three concentric rings, whereas that of the proposed amended claim includes only two concentric rings.”

In its written decision, the PTAB stated that Luv N’ Care effectively argued that the proposed amended claim “is not broader than the issued claim because to ‘an ordinary observer,’ the designs are ‘substantially the same.’” However, the PTAB stated that it was not “aware of any authority that has applied the ‘ordinary observer’ test … to compare the scope of two claims.” The PTAB further noted that “the proposed amended claim is broader than the issued claim because it is broader with respect to racetrack-shaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims.”

The PTAB held that the Petitioners had “shown by a preponderance of evidence that the sole claim of the ‘465 patent is unpatentable, and [Luv N’ Care] has not met its burden of proof on the motion to amend.”
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Munchkin v. Luv N’Care – CAFC Affirms PTAB

April 16, 2015
On April 14, 2015, the U.S. Court of Appeals for the Federal Circuit ("CAFC") affirmed the Patent Trial and Appeal Board’s decision that Luv N' Care's U.S. Patent Number D617,465 ("the '465 patent") was unpatentable. The PTAB’s decision was the first inter partes review initiated by the USPTO for a design patent. The CAFC issued a Rule 36 judgment that affirmed this decision without opinion.  For reference, Figures 2 and 3 from the '465 patent are provided below.   
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Copyright © Oblon, McClelland, Maier & Neustadt, L.L.P. | Disclaimer
The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important design patent issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.