The ABB, Inc. v. ROY-G-BIV Corp. series of Inter-Partes Review (IPR) proceedings are the first such proceedings where the Patent Trial and Appeal Board (PTAB) has held that all of the challenged claims are patentable. In the related IPR proceedings, cases IPR 2013-00036, IPR2013-00282, IPR2013-00074, IPR2013-00063 and IPR2013-00286, the patents 8,073,557, 6,513,058 and 6,516,236 owned by ROY-G-BIV Corp. were challenged by ABB, Inc.
In International Flavors & Fragrances Inc. v. United States, Case 2013-00124 (Paper No. 12) the Board granted the first motion to amend by adding new substitute claims in an inter partes review. The Patent Owner only filed a Motion to Amend which was unopposed by the Petitioner.
In a final decision issued on April 21, 2014, the Patent Trial and Appeal Board (PTAB) invalidated the sole claim of Luv N’ Care’s design patent for a baby drinking cup (U.S. Patent D617,465) as being obvious over Luv N’ Care’s own prior art. The petition for inter partes review against the ‘465 patent was filed by Munchkin, Inc. and Toys “R” Us, Inc. on December 5, 2012, and the PTAB instituted the trial on April 25, 2013 after it determined that there was a reasonable likelihood that the claim of the D’465 patent would have been obvious over the prior art. Munchkin, Inc. and Toys “R” Us, Inc. v. Luv N’ Care, Ltd. (IPR2013-00072, Paper No. 28) is the first inter partes review final written decision regarding a design patent and demonstrates that design patents can be successfully challenged at the USPTO.