May 1, 2014
First-Ever Design Patent Held Invalid Under IPR Procedure
Munchkin Inc. et al. v. Luv N’ Care Ltd. (IPR2013-00072)
In a recent final decision in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) found a design patent owned by Luv N’ Care Ltd. relating to drinking cups to be unpatentable as obvious over two prior art references. This was the first final decision by the PTAB concerning a design patent that was involved in an IPR.
The U.S. Patent and Trademark Office (USPTO) instituted an IPR of the design patent in question on April 25, 2013. About one year later, on April 21, 2014, the PTAB held that this design patent was invalid as being obvious over Luv N’ Care Ltd.’s own prior patent applications. The decision is important because it shows that design patents can be successfully challenged under the IPR procedures of the America Invents Act (AIA). Prior final decisions have only involved utility patents.
Decision Not to Initiate IPR Is Not Appealable
St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp.
In re: Dominion Dealer Solutions LLC
In re: Procter & Gamble Co.
In three precedential orders involving the above-mentioned cases, the U.S. Court of Appeals for the Federal Circuit found that under the AIA, it does not have authority to hear appeals of the PTAB’s decisions on whether to institute an IPR. Whether a party may challenge the institution (or non-institution) of a review after the PTAB issues its final written decision remains open to question, but the Federal Circuit declined to address this issue.
The Federal Circuit determined that it did not have jurisdiction to hear appeals arising from the USPTO Director’s denial of petition for inter partes review. For example, and with respect to the St. Jude case, the court noted that while the PTAB’s “final written decision” at the end of an IPR is appealable, the Director’s decision whether to institute an IPR proceeding is not. Thus, the court dismissed St. Jude’s appeal for lack of jurisdiction. The court reached the same result in the other cases.
If you have any questions regarding the cases above, please contact Fitch Even partner Timothy R. Baumann, the author of this alert.
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