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[email protected] Paper 8
571-272-7822 Entered: April 25, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
MUNCHKIN, INC. AND TOYS R US, INC.
Petitioners
v.
LUV N CARE, LTD.
Patent Owner
____________
Case IPR2013-00072
Patent D617,465
____________
Before SALLY C. MEDLEY, JENNIFER S. BISK, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION
Institution ofInter Partes Review
37 C.F.R. 42.108
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I. BACKGROUNDOn December 5, 2012, Petitioners Munchkin, Inc. and Toys R Us,
Inc. filed a Petition requesting inter partes review of the sole claim of U.S.
Patent D617,465 (the 465 Patent)pursuant to 35 U.S.C. 311. Patent
OwnerLuv N Care, Ltd. did not file a Preliminary Response pursuant to 35
U.S.C. 313. We have jurisdiction under 35 U.S.C. 314.
Institution ofinter partes review is authorized by statute when the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition. 35 U.S.C. 314(a);see also 37 C.F.R. 42.108.
We determine that the petition demonstrates that there is a reasonable
likelihood that Petitioners would prevail with respect to the sole claim of the
465 Patent, and we therefore institute inter partes review.
A. Related ProceedingsThe parties identify pending litigation concerning the 465 Patent
brought by the Patent Owner and styledLuv N Care, Ltd.et al. v. Toys R
Us, Inc. et al., 1:12-cv-00228 (S.D.N.Y. filed Jan. 11, 2012). (Pet. 2; Patent
Owner Mandatory Notices 2; Ex. 1003.)
Petitioners additionally identify anInter Partes Reexamination of
related U.S. Patent D634,439 bearing control no. 95/001,973.
Patent Owner additionally identifiesLuv NCare, Ltd. et al. v. RegentBaby Products Corp., 10-9492 (S.D.N.Y. filed Dec. 21, 2010) andLuv N
Care, Ltd. v.Royal King Infant Prods Co. Ltd. et al., 10-cv-00461 (E.D.
Tex. filed Nov. 4, 2010). (Patent Owner Mandatory Notices 2.)
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B. The 465 PatentThe 465 Patent (Ex. 1002), entitled Drinking Cup, issued on June
8, 2010, names Nouri E. Hakim as inventor, and is assigned to Luv N Care,
Ltd. The claim of the 465 Patent recites the ornamental design for a
drinking cup, as shown and described. The 465 Patent includes five
Figures, reproduced below.
Figures 1-5 show front, right, top, bottom, and back views,
respectively, of a drinking cup having a vessel, collar, and spout.
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C. Prior Art Relied UponPetitioners challenge the patentability of the claim of the 465 Patent
as obvious under 35 U.S.C. 103(a) in view of the following items of
asserted prior art:
Ex. 1006 US 2007/0221604 A1 to Hakim, pub. Sep. 27, 2007
(Hakim604)
Ex. 1007 Japan Patent No. D1129061, pub. Dec. 17, 2001 (Japan 061)
Ex. 1008 Japan Patent Application No. 10-185624, pub. Jul. 1, 2000 as
2000-000288 (Japan 624)
Ex. 1009 US 6,880,713 B2 to Holley, iss. Apr. 19, 2005 (Holley)
Ex. 1010 US D359,417 to Chen, iss. Jun. 20, 1995 (Chen)
Ex. 1011 US D475,890 S to Mazonkey, iss. Jun. 17, 2003 (Mazonkey)
Ex. 1012 US D567,384 S to Sakulsacha et al., iss. Apr. 22, 2008
(Sakulsacha)
Ex. 1013 US 6,994,225 B2 to Hakim, iss. Feb. 7, 2006 (Hakim225)
Ex. 1014 Japan Patent No. D1369925, pub. Sep. 28, 2009 (Japan 925)
Ex. 1015 Japan Patent No. D1370096, pub. Sep. 28, 2009 (Japan 096)1
Ex. 1016 US D476,850 S to Featherston et al., iss. Jul. 8, 2003(Featherston)
Ex. 1017 US D354,416 to Cautereels et al., iss. Jan. 17, 1995
(Cautereels)
Ex. 1018 US D559,622 S to Carreno, iss. Jan. 15, 2008 (Carreno)
Ex. 1019 US 2002/0066741 A1 to Rees, pub. Jun. 6, 2002 (Rees)
1Petitioners do not supply a translation of Japan 925 (Ex. 1014) or
Japan 096 (Ex. 1015). Petitioners also do not identify the subsection(s) of35 U.S.C. 102 under which they contend that these references are prior art
to the 465 Patent nor do Petitioners assert requisite facts (e.g., publication
dates) to support such a determination. The Japan 925 and 096 references
both appear to have been filed on March 9, 2009, and published on
September 28, 2009. Accordingly, based on the record before us, they do
not qualify as prior art to the 465 Patent.
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Ex. 1020 US 5,839,581 to Vagedes, iss. Nov. 24, 1998 (Vagedes)
Ex. 1021 US D327,818 to Haralson et al., iss. Jul. 14, 1992 (Haralson)
Ex. 1022 US 6,321,931 B1 to Hakim et al., iss. Nov. 27, 2001
(Hakim931)
Ex. 1023 US 5,474,028 to Larson et al., iss. Dec. 12, 1995 (Larson)
Ex. 1024 US 6,422,415 B1 to Manganiello, iss. Jul. 23, 2002
(Manganiello)
Ex. 1025 US 6,102,245 to Haberman, iss. Aug. 15, 2000 (Haberman)
Ex. 1026 US 2,588,069 to Allen, iss. Mar. 4, 1952 (Allen)
Ex. 1027 US 5,330,054 to Brown, iss. Jul. 19, 1994 (Brown)
Ex. 1028 2003 New Product Directory, Juvenile Products ManufacturersAssociation (2003 JPMA Directory)
D. Proposed Grounds for ReviewThe Petition raises two grounds for review based on single references:
obviousness over Hakim 604 and obviousness over Hakim 225. (Pet. 4-5.)
Petitioners also challenge the patentability of the sole claim of the
465 Patent on numerous, multi-reference grounds that they have classified
into nine categories according to the primary reference being asserted, the
primary references being Hakim 604, Hakim 225, Japan 061, Japan 624,
Holley, Sakulsacha, Chen, Cautereels, and Mazonkey. (Pet. 4-7.)
Each categoryproposes the respective principal reference in view of
one or more of twenty additional references.2
Thus, the proposed grounds
must number in the hundreds, if not thousands. Although Petitioners are not
entitled to consideration of all such grounds,see Liberty Mutual Ins. Co. v.
2For each category, the Petition actually proposes a principal reference in
view of one or more oftwenty-two additional references but, as stated above,
two of Petitioners asserted references do not qualify as prior art.
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Progressive Casualty Ins. Co., Case CBM2012-00003 (PTAB Oct. 25,
2012), we will address them at least generally in the analysis that follows.
E. Effective Filing Date of the Sole Claim of the 465 PatentThe 465 Patent issued from U.S. Application Serial No. 29/292,909,
which was filed October 31, 2007, as a continuation of U.S. Application
Serial No. 10/536,106 (the 106 Application), which is the national stage
of PCT Patent Application PCT/US03/24400 filed August 5, 2003.
Petitioners assert various intervening prior art references, including
most notably Hakim 604 (published September 27, 2007) and Hakim 225
(issued February 7, 2006). Hence, we address Petitioners arguments
regarding the effective filing date of the claim of the 465 Patent.
To be entitled to a parents effective filing date under 35 U.S.C.
120, a continuation must comply with the written description requirement.3
In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013). The test for
sufficiency of the written description, which is the same for either a design
or a utility patent, has been expressed as whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.
Id. (quotingAriad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc)). In the context of design patents, the drawings
provide the written description of the invention. Thus, when an issue of
priority arises under 120 in the context of design patent prosecution, one
looks to the drawings of the earlier application for disclosure of the subject
3The written description requirement, which is now found at 35 U.S.C.
112(a), was codified previously at 35 U.S.C. 112, 1 (1975).
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matter claimed in the later application. Owens, 710 F.3d at 1366 (citations
omitted).
Petitioners argue that Hakim 604 [sic, the 106 Application]4
does
not provide written description support for the claim of the 465 Patent.
(Pet. 13-18.) Figure 12a of the 106 Application as filed is reproduced
below.
Figure 12a shows a top view of a spout, collar, and vessel although
the vessel is barely visible. Figure 12a does not show the same design as
that of the 465 Patent, as best viewed in Figure 3supra. For example, the
106 Application, which shows a racetrack-shaped spout tip, does not
disclose the claimed oval-shaped spout tip of the 465 Patent. Also, the 106
Application, which shows slits in the openings of the spout tip and vent,
does not disclose the broader design of the 465 Patent, which lacks any
such slits.
For at least these reasons, possession of the claimed design of the 465
Patent is not shown as of the filing date of the 106 Application.
4Hakim 604 is a published version of the 106 Application. The figures of
Hakim 604 relied upon by Petitioners in challenging priority are shown
identically in the 106 Application as filed. The Board enters as Exhibit
3001 the specification and figures of the 106 Application as filed.
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Accordingly, based on the present record, the challenged claim is not
entitled to the benefit of the filing date of the 106 Application. See In re
Salmon, 705 F.2d 1579, 1581 (Fed. Cir. 1983) (for section 120 to apply, the
first application must disclose the invention claimed in the second
application. With respect to the design patent involved in this case, those
provisions require that the stool design claimed in the second application
must be the same design disclosed in the parent application.) (citations
omitted).
II. PRINCIPLES OF LAWWhoever invents any new, original and ornamental design for an
article of manufacture may obtain a patent therefor, subject to the conditions
and requirements of this title. 35 U.S.C. 171. One of those requirements
is that the design be nonobvious. 35 U.S.C. 103(a);see also 35 U.S.C.
171 (The provisions of this title relating to patents for inventions shall
apply to patents for designs, except as otherwise provided.).
In addressing a claim of obviousness in a design patent, theultimate inquiry . . . is whether the claimed design would have
been obvious to a designer of ordinary skill who designs
articles of the type involved. To determine whether one of
ordinary skill would have combined teachings of the prior art to
create the same overall visual appearance as the claimed design,
the finder of fact must employ a two-step process. First, one
must find a single reference, a something in existence, the
design characteristics of which are basically the same as the
claimed design. Second, other references may be used tomodify the primary reference to create a design that has the
same overall visual appearance as the claimed design.
However, the secondary references may only be used to modify
the primary reference if they are so related to the primary
reference that the appearance of certain ornamental features in
one would suggest the application of those features to the other.
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Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314, 1329-30 (Fed.
Cir. 2012) (citations, brackets, and quotation marks omitted).
The role of the designer of ordinary skill lies only in determining
whether to combine earlier references to arrive at a single piece of art for
comparison with the potential design or to modify a single prior art
reference. Intl Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,
1240 (Fed Cir. 2009). Once that piece of prior art has been constructed,
obviousness, like anticipation, requires application of the ordinary observer
test[.]Id.The ordinary observer test was first enunciated by the Supreme
Court in Gorham Co. v. White, 81 U.S. 511 (1871) as a test for infringement
of a design patent and was stated as follows:
[I]f, in the eye of an ordinary observer, giving such attention as
a purchaser usually gives, two designs are substantially the
same, if the resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the other, the
first one patented is infringed by the other.
Id. at 528. [T]he ordinary observer is a person who is either a purchaser of,
or sufficiently interested in, the item that displays the patented designs [here,
a drinking cup with a spout to reduce spills] and who has the capability of
making a reasonably discerning decision when observing the accused items
design whether the accused item is substantially the same as the item
claimed in the design patent. Arminak and Assocs., Inc. v. Saint-Gobain
Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007).
InEgyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir.
2008) (en banc), the Federal Circuit held that the ordinary observer test is
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the sole controlling test for design patent infringement, id. at 678, and it has
since held that the test applies also to anticipation and obviousness
challenges of design patents. Intl Seaway, 589 F.3d at 1240 (obviousness,
like anticipation, requires application of the ordinary observer test).
III. ANALYSISA. Claim Construction
We generally give claim terms their ordinary and customary meaning
as would be understood by one of ordinary skill in the art. Phillips v. AWH
Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). In an inter partes
review, [a] claim in an unexpired patent shall be given its broadest
reasonable construction in light of the specification of the patent in which it
appears. 37 C.F.R. 42.100(b).
Design patents typically are claimed as shown in drawings, and claim
construction is adapted accordingly. Egyptian Goddess, 543 F.3d at 679. A
detailed verbal description of the claim, as is done often in the case of utility
patents, is not needed. Id. (citing Contessa Food Prods., Inc., 282 F.3d
1370, 1377 (Fed. Cir. 2002) (approving district courts construction of the
asserted claim as meaning a tray of a certain design as shown in Figures 1-
3). Indeed, the preferable course ordinarily will be for [us] not to attempt
to construe a design patent claim by providing a detailed verbal description
of the claimed design. Egyptian Goddess, 543 F.3d at 679.
The claim of the 465 Patent recites the ornamental design for adrinking cup, as shown and described. The 465 Patent shows a drinking
cup that includes three general components: a vessel, collar, and spout.
(Figs. 1-5.)
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The DESCRIPTIONof the 465 Patent merely identifies the various
views of the drinking cup depicted in the figures and additionally states that
[t]he broken lines in the figures illustrate portions of the drinking cup and
form no part of the claimed design.5(465 Patent cover page.)
We construe the claim to be the ornamental design of the drinking
cup, as illustrated in Figures 1-5, except that the broken lines do not form
part of the claimed design. See Owens, 710 F.3d at 1367, n.1 ([I]t is
appropriate to disclaim certain design elements using broken lines, provided
the application makes clear what has been claimed.)
Additionally, we find it helpful to describe verbally certain features of
the claim. See Egyptian Goddess, 543 F.3d at 679. (While it may be
unwise to attempt a full description of the claimed design, a court may find it
helpful to point out . . . various features of the claimed design as they relate
to the accused design and the prior art.)
The spout is not radially symmetrical; instead, it has a drinking tip
that is off center. Additionally, the tip of the spout is concave.The collar has a curved outer wall such that the top of the collar has a
smaller diameter than the bottom of the collar.
The vessel includes an hourglass-shaped envelope when viewed from
the front (Fig. 1) or back (Fig. 5). The midsection or waist portion of the
hourglass-shaped envelope includes three horizontally-oriented shallow
grooves that extend around the sides and back of the vessel. The grooves do
not extend around the front of the vessel. The vessel also includes two
5The broken lines are directed to a central portion of the bottom surface of
the vessel, two series of five grooved ribs on the sides of the collar, and two
notches adjacent to the top of the collar and bottom of the spout. (Figs. 1-5.)
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regions that are demarcated from one another by a curving line that
circumnavigates the vessel and slopes downward as it extends from rear to
front such that it reaches its lowest elevation on the front side of the vessel
as shown in Figure 1.
Petitioners assert that the vessel and collar do not form part of the
claim because they are functional. (Pet. 22;see also Pet. 10.) In other
words, Petitioners argue that the claim only covers the spout. But,
Petitioners have not asserted, let alone persuaded us, that the vessel and
collar arepurely functional. See Egyptian Goddess, 543 F.3d at 680 (other
issues that bear on the scope of the claim . . . include . . . distinguishing
between those features of the claimed design that are ornamental and those
that are purely functional);see also In re Garbo, 287 F.2d 192, 194 (CCPA
1961) (the design must have an unobvious appearance distinct from that
dictated solely by functional considerations). We agree that the vessel and
collar provide some function (e.g., the vessel holds liquid for drinking and is
configured to be grasped by a hand and the collar appears to secure the spoutto the top of the vessel). We are not persuaded, however, that the vessel and
collar are purely functional and not also ornamental.
For example, the curved outer wall of the collar does not appear to be
critical to, or even involved in, the securing of the spout to the vessel.
Rather, that feature appears to be ornamental. With respect to the vessel, we
are not persuaded that the three grooves that extend around the side and back
of the vessel and the relatively narrow waist portion of the hourglass-shaped
envelope are purely functional. Further, Petitioners do not even address the
curving line that circumnavigates the vessel dividing it into two regions,
which is ornamental based on the record before us.
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In sum, we construe the claim to be the ornamental design of the
drinking cup, including vessel, collar, and spout, as illustrated in Figures 1-5
except that the broken lines do not form part of the claimed design.
B. The Claim as Obvious Principally over Hakim 604Hakim 604 is entitled No-Spill Drinking Products and discloses a
drinking cup that is very similar in overall appearance to the drinking cup
claimed in the 465 Patent. Figure 10b of Hakim 604 is reproduced (below
left)juxtaposed with Figure 2 of the 465 Patent (below right).
Figure 10b of Hakim 604 and Figure 2 of the 465 Patent each show
a side view of a drinking cup having a vessel, collar, and spout. In these side
views, the drinking cups appear nearly identical to one another, except that
the 465 Patent disclaims some of the features using broken lines.
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Figure 10c of Hakim 604 is reproduced (below left) juxtaposed with
Figure 1 of the 465 Patent (below right).
Figure 10c of Hakim 604 and Figure 1 of the 465 Patent each show a
front view of the corresponding drinking cup. In these front views, the
drinking cups appear nearly identical to one another, except that, again, the
465 Patent disclaims some of the features using broken lines.
We determine that there is a reasonable likelihood, that, in the eye of
an ordinary observer, the designs are substantially the same, such that they
would deceive the observer, inducing him to purchase a drinking cup
embodying the design of Hakim 604 supposing it to be that of the
challenged claim. Accordingly, the Petition is granted as to review of the
patentability of the claim of the 465 Patent over Hakim 604.Petitioners have not persuaded us that any of the proposed secondary
references discloses any ornamental feature of the challenged claim better
than Hakim 604 does. Accordingly, the Petition is denied as to all grounds
for review based on Hakim 604 in view of any other reference(s).
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C. The Claim as Obvious Principally over Hakim 225Hakim 225 is also entitled No-Spill Drinking Products and
discloses a drinking cup that is very similar in overall appearance to the
drinking cup claimed in the 465 Patent. Figure 10b of Hakim 225 is
reproduced (below left) juxtaposed with Figure 2 of the 465 Patent (below
right).
Figure 10b of Hakim 225 and Figure 2 of the 465 Patent each show
a side view of a drinking cup having a vessel, collar, and spout. In these side
views, the drinking cups appear nearly identical to one another, except that
the 465 Patent disclaims some of the features using broken lines.
Figure 10c of Hakim 225 is reproduced (below left) juxtaposed withFigure 1 of the 465 Patent (below right).
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Figure 10c of Hakim 225 and Figure 1 of the 465 Patent each show a
front view of the corresponding drinking cup. In these front views, the
drinking cups appear nearly identical to one another, except that, again, the
465 Patent disclaims some of the features using broken lines.
We determine that there is a reasonable likelihood, that, in the eye of
an ordinary observer, the designs are substantially the same, such that they
would deceive the observer, inducing him to purchase a drinking cup
embodying the design of Hakim 225 supposing it to be that of the
challenged claim. Accordingly, the Petition is granted as to review of the
patentability of the claim of the 465 Patent over Hakim 225.
Petitioners have not persuaded us that any of the proposed secondary
references discloses any ornamental feature of the challenged claim better
than Hakim 225 does. Accordingly, the Petition is denied as to all groundsfor review based on Hakim 225 in view of any other reference(s).
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D. The Claim as Obvious Principally over Japan 061In design patent obviousness analysis, a primary reference must be
something in existence, the design characteristics of which are basically the
same as the claimed design in order to support a holding of obviousness.
Apple, 678 F.3d at 1331 (quotingIn re Rosen, 673 F.2d 388, 391 (CCPA
1982)).
Japan 061 is a non-English language document and a translation of it
has not been provided. It appears to disclose a spout that may be intended
for use with a vessel and collar but it does not actually disclose a vessel or
collar. (See, e.g., Ex. 1007 at 2.) As such, it is not a qualifying primary
reference, based on our construction above that the vessel and collar are part
of the overall claimed design of the 465 Patent. See Apple, 678 F.3d at
1332 (The offered designs do not create the same visual impression as
Apples claimed design and thus do not qualify as primary references. In the
absence of a qualifying primary reference, we hold that the district court
erred in concluding that there is likely to be a substantial question as to thevalidity of the D'889 patent.)
The Petition is denied as to all grounds for review based principally
on Japan 061.
E. The Claim as Obvious Principally over Japan 624The most relevant figure of the Japan 624 reference is reproduced
below.
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The figure appears to show a vessel, a separate mountable structure
providing two handles, a first collar, a spout, and a second collar. (See Ex.
1008-7.) The design characteristics of the Japan 624 reference are
substantially different than that of the challenged claim. For example, the
Japan 624 vessel lacks an hourglass shape and the reference shows handles
that stick out beyond the vessels walls. Additionally, the spout is radially
symmetrical and has a convex tip.
For at least these reasons, Petitioners have not persuaded us that Japan
624 is a qualifying primary reference. The Petition is denied as to all
grounds for review based principally on Japan 624.
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F. The Claim as Obvious Principally over HolleyHolley Figure 1 is reproduced below.
Figure 1 shows a vessel and a spout that can be screwed onto the
vessel without the need for separate collar. (Holley Fig. 1.) The design
characteristics of Holley are substantially different than that of the
challenged claim. For example, Holley appears to have an hourglass shape
that extends uniformly around the entire vessel instead of just three sides.
Also, the Holley vessel lacks the two regions of the 465 Patent that are
demarcated from one another by a curving line that circumnavigates the
vessel and that slopes downward as it extends from rear to front such that it
reaches its lowest elevation on the front side of the vessel as shown in Figure
1 of the 465 Patent. Holley also lacks a separate collar structure and lacks a
concave spout tip.
For at least these reasons, Petitioners have not persuaded us that
Holley is a qualifying primary reference. The Petition is denied as to all
grounds for review based principally on Holley.
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G. The Claim as Obvious Principally over SakulsachaSakulsacha discloses a design for a silicon spout. (Sakulsacha Claim,
Figs. 1-5.) It does not disclose a vessel or collar. As such, it is not a
qualifying primary reference, based on our construction above that the vessel
and collar are part of the overall claimed design of the 465 Patent.
The Petition is denied as to all grounds for review based principally
on Sakulsacha.
H. The Claim as Obvious Principally over ChenChen Figure 1 is reproduced below.
Figure 1 shows a vessel and a spout that appears to be directly mated
to the vessel without the need for collar. (Chen Fig. 1.) The design
characteristics of Chen are substantially different than that of the challenged
claim. For example, the Chen vessel lacks an hourglass shape, a separate
collar structure having a curved outer wall, and a spout with a concave tip.
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For at least these reasons, Petitioners have not persuaded us that Chen
is a qualifying primary reference. The Petition is denied as to all grounds for
review based principally on Chen.
I. The Claim as Obvious Principally over CautereelsCautereels Figure 1 is reproduced below.
Figure 1 shows a vessel with handles and a spout that appears to be
mated directly to the vessel without the need for a collar. (Cautereels Fig.
1.) The design characteristics of Cautereels are substantially different than
that of the challenged claim. For example, Cautereels includes two handles
that stick out beyond the vessels walls. Additionally, it lacks a separate
collar structure having a curved outer wall, and its spout lacks a concave tip.
For at least these reasons, Petitioners have not persuaded us that
Cautereels is a qualifying primary reference. The Petition is denied as to all
grounds for review based principally on Cautereels.
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J. The Claim as Obvious Principally over MazonkeyMazonkey Figure 1 is reproduced below.
Figure 1 shows a child cup and remote locating combination[.]
(Mazonkey cover page.) The child cup has a vessel with a spout that
appears to be mated directly to the vessel without the need for a collar.
(Mazonkey Fig. 1.) The design characteristics of Mazonkey are
substantially different than that of the challenged claim. For example,
Mazonkey appears to have an hourglass shape that extends uniformly around
the entire vessel instead of just three sides. Also, the Mazonkey vessel lacks
the two regions of the 465 Patent that are demarcated from one another by a
curving line that circumnavigates the vessel and that slopes downward as it
extends from rear to front such that it reaches its lowest elevation on the
front side of the vessel as shown in Figure 1 of the 465 Patent.
Additionally, Mazonkey lacks a separate collar structure having a curved
outer wall, and its spout lacks a concave tip.
For at least these reasons, Petitioners have not persuaded us that
Mazonkey is a qualifying primary reference. The Petition is denied as to all
grounds for review based principally on Mazonkey.
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IV. SUMMARYPetitioners Munchkin, Inc. and Toys R Us, Inc. have demonstrated
that there is a reasonable likelihood of prevailing on its challenge to the
patentability of the sole claim of the 465 Patent.
The Petition is granted as to the following grounds for review:
I. The sole claim as obvious overHakim 604; and
II. The sole claim as obvious overHakim 225.
V. ORDERIn consideration of the foregoing, it is hereby:
ORDERED that the Petition is granted as to the sole claim of the 465
Patent on the grounds identified as III above;
FURTHER ORDERED that the Petition is denied on all grounds not
identified as III above;
FURTHER ORDERED that pursuant to 35 U.S.C. 314(a), inter
partes review of the 465 Patent is hereby instituted commencing on the
entry date of this Order, and pursuant to 35 U.S.C. 314(c) and 37 C.F.R.
42.4, notice is hereby given of the institution of a trial; and
FURTHER ORDERED that an initial conference call with the Board
is scheduled for 2:00 PM ET on May 30, 2013. The parties are directed to
the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14,
2012) for guidance in preparing for the initial conference call, and should
come prepared to discuss any proposed changes to the Scheduling Order
entered herewith and any motions the parties anticipate filing during the
trial.
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PETITIONERS:
Dane Baltich
Alston & Bird LLP
PATENT OWNER:
Morris Cohen
Goldberg Cohen LLP