Last week, the U.S. Patent and Trademark Office (“USPTO”) instituted its first inter partes review of a design patent, U.S. Patent No. D617,465 (“the ‘465 Patent”) assigned to Luv N’ Care, Ltd. Petitioners, Munchkin, Inc. and Toys “R” Us, Inc., successfully persuaded the Patent Trial and Appeal Board that “there is a reasonable likelihood that Petitioners would prevail with respect to the sole claim of the ‘465 Patent.”
The claim of the ‘465 Patent recites “the ornamental design for a drinking cup, as shown and described.” The ‘465 Patent includes five figures of a drinking cup having a vessel, collar, and spout. The Petitioners alleged that the claim of the ‘465 Patent was obvious over U.S. Published Patent Application No. 2007/0221604 published September 27, 2007 (“Hakim ‘604”) and, separately, obvious over U.S. Patent No. 6,994,225 issued February 7, 2006 (“Hakim ‘225”). The Petitioners also presented numerous combinations of references to assert that the claim of the ‘465 Patent was obvious. These additional obviousness arguments were grouped into nine categories according to the primary reference being asserted.
As an initial matter, the Board addressed the effective filing date of the claim of the ‘465 Patent since several asserted references were intervening prior art, in particular Hakim ‘604 and Hakim ‘225. The ‘465 Patent issued from U.S. Application Serial No. 29/292,909, which was filed on 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. The Board concluded that the claims were not entitled to the benefit of the filing date of the ‘106 Application, because the ‘106 Application did not have sufficient disclosure to demonstrate that the inventor possessed the claimed subject matter at the time of filing the ‘106 Application. In particular, the drawings of the ‘106 Application do not show the same design as the drawing of the ‘465 Patent.