UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. MUNCHKIN, INC. AND TOYS R US, INC. Petitioners

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1 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 IPR Patent Before SALLY C. MEDLEY, JENNIFER S. BISK, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. LUV N CARE, LTD. S MOTION TO AMEND ITS PATENT CLAIM Morris E. Cohen (Reg. No. 39,947) Lee A. Goldberg (Reg. No. 38,894) GOLDBERG COHEN LLP 1350 Avenue of the Americas, 4 th Fl. New York, New York Tel.: (646) Fax: (646) MCohen@GoldbergCohen.com LGoldberg@GoldbergCohen.com Attorneys for the Patent Owner

2 Patent Owner Luv n care, Ltd. ( Luv n care or LNC ) hereby respectfully moves to amend the claim of U.S. Patent No. ( the 465 patent), the patent at issue in these proceedings. Per the Board s Order of June 7, 2013, LNC is authorized to file this motion. (Paper 12.) The 465 patent is a design patent, and hence contains one claim: the ornamental design for a drinking cup, as shown and described in Figures 1-5 of the 465 patent. See, the 465 patent. LNC moves to amend that claim by amending the drawings of the 465 patent. The proposed amended drawings representing the proposed amended claim are attached hereto in Exhibit 1 as Proposed Replacement Sheets. For ease of reference, each of Figures 1-5 as they currently appear in the 465 patent are reproduced below, side-by-side with the proposed amended drawing: 465 Patent Fig. 1 Fig. 1 Proposed Amendment 2

3 465 Patent Fig. 2 Fig. 2 Proposed Amendment 465 Patent Fig. 3 Fig. 3 Proposed Amendment 3

4 465 Patent Fig. 4 Fig. 4 Proposed Amendment 465 Patent Fig. 5 Fig. 5 Proposed Amendment 4

5 As further discussed below, the proposed amendment does not add new matter. Rather, it involves minor modifications to various claimed and unclaimed features of the drinking cup design in order to conform those features to certain figures of the 465 patent s parent U.S. Patent Application Serial No. 10/536,106 ( the 106 application ). (The 106 application was filed as application No. PCT/US2003/ on August 5, 2003 and is currently pending before the United States Patent and Trademark Office.) These changes to the drawings are being made in response to the priority findings in the Board s Decision of April 25, 2013 ( the Board s Decision ), and to slightly narrow the scope of the claim. In the Board s Decision, findings were made regarding the shape of the spout, and the slits, as they relate to the 465 patent s ability to claim priority to its parent 106 application. See, Decision of April 25, 2013 at page 7 (Paper 8). As a result, the claimed shape of the spout as seen from above in Figure 3 has been modified to more closely align with the precise drawing disclosure of the 106 application. Likewise, the unclaimed slits inside the spout and air vent in Figure 3 have been added to the drawings as well. 1 1 Since these slits are unclaimed, they neither broaden nor narrow the scope of the claimed invention. 5

6 The proportions of various claimed and unclaimed features of the drinking cup design have also been altered slightly so as to more closely align the same with the precise drawing disclosure of the 106 application. See, infra at p.7. The claim has also been narrowed slightly by adding some features disclosed in the parent 106 application. In particular, the round notches on the sides of the spout portion of the design, which were unclaimed in the 465 patent, are now claimed in the proposed amended drawings. See, amended Figures 2 and 3. Also, a raised rim has been added around the air vent. Compare Figure 2 from the 465 patent, with proposed amended Figure 2. As such, it is submitted that the proposed amendment slightly narrows the claim of the 465 patent, with little effect on the overall design, as two minor features have been added to the claim, and no claimed features have been removed. None of these changes, which are being made to conform the 465 drawings to those of the 106 application, constitute new matter. The 465 patent s original specification as filed expressly incorporated by reference the disclosure of the 106 application. See, Exhibit 2 (the 465 patent s specification as originally filed; that incorporation language was never removed from the specification.) Likewise, the fact that the proposed amended drawings are fully supported by the drawings of the 106 application is shown by the schematic below. In that schematic, examples of the original figures from the 106 application in whole or 6

7 cropped (identified below as Original Figures) are displayed side-by-side with the corresponding proposed amended drawings (identified by their figure number): 7

8 FIGURE 1 Original FIG. 10(C) 8

9 FIGURE 2 Original FIG. 10(B) 9

10 In summary, the proposed amendments herein are fully supported by the disclosure of the 106 application. As such, it is respectfully submitted that the 465 patent is entitled to the August 5, 2003 priority date of its parent 106 application. The issues of continuity/priority were the only basis for citation of prior art to invalidate the 465 patent (namely, the citation of Applicant s own 106 priority application and 225 patent as prior art). No other prior art has been identified that affects patentability. Accordingly, in view of the foregoing amendments, it is respectfully requested that the Board uphold the 465 patent s priority to the 106 application, and find that the amended claim is patentable. In conclusion, LNC respectfully requests that the Board grant the present motion to amend the claim of the 465 patent, and issue favorable action on the amended patent, for all of the reasons set forth above. Dated: July 25, 2013 Respectfully submitted, /Morris E. Cohen/ Morris E. Cohen (Reg. No. 39,947) Lee A. Goldberg (Reg. No. 38,894) GOLDBERG COHEN LLP 1350 Avenue of the Americas, 4 th Flr. New York, New York (phone-direct) (phone-main) (facsimile) Attorneys for the Patent Owner 10

11 CERTIFICATE OF SERVICE In connection with the above-referenced Inter Partes Review proceeding, I hereby certify that on July 25, 2013, the foregoing Luv n care, Ltd. s Motion to Amend its Patent Claim is being served on the following counsel for Petitioners in this matter via First Class Mail and electronic mail: Dane A. Baltich Jeffrey Cooper ALSTON & BIRD LLP Bank of America Plaza 101 South Tryon Street, Suite 4000 Charlotte, North Carolina dane.baltich@alston.com Dated: July 25, 2013 Respectfully submitted, /Morris E. Cohen/ Morris E. Cohen (Reg. No. 39,947) Lee A. Goldberg (Reg. No. 38,894) GOLDBERG COHEN LLP 1350 Avenue of the Americas, 4 th Flr. New York, New York (phone-direct) (phone-main) (facsimile) Attorneys for the Patent Owner 11