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.
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.