The Software IP Report

PTAB Invalidates First Design Patent in Inter Partes Review

By George Schooff

Categories: The Software IP Report, USPTO Post-Issue Proceedings

On April 22, 2014, the Patent Trial and Appeals Board (“PTAB”) ruled that a design patent claim in U.S. Patent No. D617,465 (the ‘465 Patent) is unpatentable as obvious.  Munchkin, Inc. v. Luv N’ Care Ltd., No. IPR2013-00072 at 2.  The PTAB’s decision comes less than a year after the proceeding was initiated, and is the first time a design patent was subject to inter partes review.

By way of background, in January 2012, Luv N’ Care sued Munchkin and Toys R Us in federal court for infringing the ‘465 patent.  On December 12, 2012, Munchkin and Toys R Us filed a petition requesting inter partes review of the ‘465 patent’s claim.  Munchkin and Toys R Us asserted that certain prior art (depicted below left) rendered the ‘465 patent claim (depicted below right) unpatentable as obvious.

design image 1

design image 2

After construing the ‘465 claim, the PTAB applied the “ordinary observer” test, and determined there was a reasonable likelihood that the observer would view the designs as substantially the same, and, therefore, be deceived.  On April 25, 2013, the PTAB granted Munchkin’s and Toys R Us’ petition for inter partes review.

On April 22, 2014, less than a year later, the PTAB issued its final decision, echoing its decision to initiate the review in the first place.  Per the PTAB, “Petitioner has shown by a preponderance of the evidence that the sole claim of the ‘465 patent is unpatentable.”

The Munchkin decision highlights two points:  First, inter partes review is not just for utility patents.  It’s also available for design patents.  Second, as in the utility patent context, the PTAB is willing to take a hard look at previously issued design patents to assess patentability under a preponderance-of-the-evidence standard.  The take away?  Those charged with design patent infringement should seriously consider whether the Patent Office presents a better, less expensive forum to adjudicate validity than an Article III court.