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Supreme Court Denies Certiorari in First Design Patent IPR to Reach Its Gates

Nov.05.2015

On Monday, in Luv n' Care, Ltd. v. Munchkin, Inc. (577 U.S. ___, No. 15-242, Nov. 2, 2015), the Supreme Court declined the opportunity to review the Federal Circuit's affirmance of the Patent and Trial Appeal Board (PTAB) decision in Munchkin, Inc. and Toys "R" Us, Inc., v. Luv n' Care, Ltd., (No. IPR2013-00072, U.S. Patent No. D617,465). The PTAB's decision was the first involving an Inter Partes Review (IPR) for a design patent. The Supreme Court's denial of certiorari was without comment and followed the Federal Circuit's April 14, 2015 affirmance without comment of the PTAB decision. 

At the PTAB, Munchkin, Inc. and Toys "R" Us (Petitioners) filed a petition requesting inter partes review of the sole claim of U.S. Patent No. D617,465 (the '465 Patent). Unpatentability was alleged to stem from obviousness under 35 U.S.C. 103 on the basis of two distinct references: (1) U.S. Application Publication No. 2007/0221604 A1, published September 27, 2007; and (2) U.S. Patent No. 6,994,225 B2, issued February 7, 2006. 

In reply, Luv n' Care (Respondent) argued that neither document was prior art owing to the relevant priority date of the '465 Patent. Although the '465 Patent was not filed until October 31, 2007, it claimed the benefit of a national stage application, whose parent international application dated back to August 5, 2003.

Owing to differences in the spout region of the "Drinking Cup" featured in the '465 Patent, the PTAB denied Respondent's claim to priority. The PTAB decision, undisturbed by the higher courts, emphasizes the criticality of adequate written description in the context of design patent applications. 

The PTAB's decision also begs the question of whether the written description examination guidelines for design patent applicants, which are due to be released by the USPTO in the near future, will reflect a more rigorous stance on this statutory requirement for design patents. Such a possibility was first suggested at the USPTO's annual Design Day event in April of 2014. 

Leaving the original PTAB decision on the first design patent IPR untouched, the Supreme Court's denial of certiorari compels consideration of the following observations by those with an interest in enforcing or challenging a design patent:

(1) For third parties who wish to challenge design patents, IPR is a viable option and may offer a more economical and more efficient alternative to District Court.

(2) Due to its historic focus on patentability, the PTAB may tend toward strict compliance with statutory requirements for patentability. 

(3) This PTAB decision may foreshadow increased scrutiny of statutory requirements for design patents during examination.

(4) For design patent applicants, when preparing any new application, it is essential to give full consideration to and provide ample disclosure for possible continuing applications.

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