Trials@uspto.gov 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 of Inter Partes Review

37 C.F.R. § 42.108

Case IPR2013-00072

Patent D617,465

2

I. BACKGROUND

On 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

Owner Luv 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 of inter 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 Proceedings

The parties identify pending litigation concerning the ’465 Patent

brought by the Patent Owner and styled Luv 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 an Inter Partes Reexamination of

related U.S. Patent D634,439 bearing control no. 95/001,973.

Patent Owner additionally identifies Luv N’ Care, Ltd. et al. 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. et al., 10-cv-00461 (E.D.

Tex. filed Nov. 4, 2010). (Patent Owner Mandatory Notices 2.)

Case IPR2013-00072

Patent D617,465

3

B. The ’465 Patent

The ’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.

Case IPR2013-00072

Patent D617,465

4

C. Prior Art Relied Upon

Petitioners 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

(“Hakim ’604”)

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 (“Hakim ’225”)

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”)

1 Petitioners do not supply a translation of Japan ’925 (Ex. 1014) or

Japan ’096 (Ex. 1015). Petitioners also do not identify the subsection(s) of

35 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.

Case IPR2013-00072

Patent D617,465

5

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

(“Hakim ’931”)

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 Manufacturers

Association (“2003 JPMA Directory”)

D. Proposed Grounds for Review

The 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 category proposes 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.

2 For each category, the Petition actually proposes a principal reference in

view of one or more of twenty-two additional references but, as stated above,

two of Petitioners’ asserted references do not qualify as prior art.

Case IPR2013-00072

Patent D617,465

6

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 Patent

The ’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 Petitioner’s arguments

regarding the effective filing date of the claim of the ’465 Patent.

To be entitled to a parent’s 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. (quoting Ariad 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

3 The 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).

Case IPR2013-00072

Patent D617,465

7

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 3 supra. 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.

4 Hakim ’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.

Case IPR2013-00072

Patent D617,465

8

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 LAW

“Whoever 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, the

ultimate 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 to

modify 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.

Case IPR2013-00072

Patent D617,465

9

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.” Int’l 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 item’s

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).

In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir.

2008) (en banc), the Federal Circuit held that the “ordinary observer” test is

Case IPR2013-00072

Patent D617,465

10

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. Int’l Seaway, 589 F.3d at 1240 (“obviousness,

like anticipation, requires application of the ordinary observer test”).

III. ANALYSIS

A. 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 court’s 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 a

drinking 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.)

Case IPR2013-00072

Patent D617,465

11

The “DESCRIPTION” of 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

5 The 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.)

Case IPR2013-00072

Patent D617,465

12

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 are purely 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 spout

to 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.

Case IPR2013-00072

Patent D617,465

13

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 ’604

Hakim ’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.

Case IPR2013-00072

Patent D617,465

14

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).

Case IPR2013-00072

Patent D617,465

15

C. The Claim as Obvious Principally over Hakim ’225

Hakim ’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 with

Figure 1 of the ’465 Patent (below right).

Case IPR2013-00072

Patent D617,465

16

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 grounds

for review based on Hakim ’225 in view of any other reference(s).

Case IPR2013-00072

Patent D617,465

17

D. The Claim as Obvious Principally over Japan ’061

“In 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 (quoting In 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

Apple’s 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 the

validity 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 ’624

The most relevant figure of the Japan ’624 reference is reproduced

below.

Case IPR2013-00072

Patent D617,465

18

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 vessel’s 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.

Case IPR2013-00072

Patent D617,465

19

F. The Claim as Obvious Principally over Holley

Holley 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.

Case IPR2013-00072

Patent D617,465

20

G. The Claim as Obvious Principally over Sakulsacha

Sakulsacha 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 Chen

Chen 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.

Case IPR2013-00072

Patent D617,465

21

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 Cautereels

Cautereels 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 vessel’s 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.

Case IPR2013-00072

Patent D617,465

22

J. The Claim as Obvious Principally over Mazonkey

Mazonkey 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.

Case IPR2013-00072

Patent D617,465

23

IV. SUMMARY

Petitioners 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 over Hakim ’604; and

II. The sole claim as obvious over Hakim ’225.

V. ORDER

In 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 I – II above;

FURTHER ORDERED that the Petition is denied on all grounds not

identified as I – II 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.

Case IPR2013-00072

Patent D617,465

24

PETITIONERS:

Dane Baltich

Alston & Bird LLP

dane.baltich@alston.com

PATENT OWNER:

Morris Cohen

Goldberg Cohen LLP

mcohen@goldbergcohen.com