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 IPR2013-00072 Patent D617,465 ___________________ Before SALLY C. MEDLEY, JENNIFER S. BISK, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. LUV N CARE, LTD.S RESPONSE TO THE BOARDS DECISION TO INSTITUTE INTER PARTES REVIEW Morris E. Cohen (Reg. No. 39,947) Lee A. Goldberg (Reg. No. 38,894) GOLDBERG COHEN LLP 1350 Avenue of the Americas, 4th Fl. New York, New York, 10019 Tel: (646) 380-2087 Fax: (646) 514-2123 MCohen@GoldbergCohen.com LGoldberg@GoldbergCohen.com

IPR2013-00072 D617,465 Receipt is acknowledged of the Decision of April 25, 2013 in the present inter partes review of U.S. Patent No. D617,465 (the 465 patent or the patent-at-issue), which 465 patent was filed as U.S. Serial No. 29/292,909 (the 909 application or the patent application). In response to the Decision, each of the issues raised therein is addressed below. Reconsideration and further examination of the application are respectfully requested. The Commissioner is hereby authorized to debit any and all amounts deemed required from Deposit Account No. 50-5393. Discussion of Amended Claim / Amended Drawings I. Issue of Continuity In the Office Action, a priority issue was raised as to the continuity of the 465 patent with respect to its parent. Further thereto, a motion to amend has been filed, including amended drawings. It is submitted that the amended drawings fully address all of the continuity objections. As acknowledged in the Office Action, the 465 patent is a continuation of Serial No. 10/536,106 (the 106 application or the parent application). The disclosure of the 106 application was fully incorporated by reference in the present

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IPR2013-00072 D617,465 465 patent, as part of the specification originally filed in the 909 application. See, 909 Original Specification filed October 31, 2007 at p.1. Accordingly, the patentee has amended the drawings herein, so as to conform the drawings in the 465 patent to those of its parent application. As shown in the attached amended drawings, the patentee has taken the figures from the issued 465 patent and digitally conformed them to various figures in the parent 106 application. As such, the present amendments are believed to address all of the objections raised by the Patent Office on page 7 of the Decision. In particular: i. The overall perimeter shape of the spout has been amended to match the race-track shape in Figure 8E of the 106 application, including structure and relative sizes.1 ii. In addition, the slits in the spout tip and vent have been added to the figures. Those slits have been included in dotted outline, as they are unclaimed subject matter.

The additional edges around the perimeter of Figure 8E are not shown in the attached replacement figures, since they are not visible due to the attachment of the lid to the screw ring.
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IPR2013-00072 D617,465 In addition, the claim has been narrowed very slightly. Specifically: (1) the minor notches on the spout portion have been added to the claim (by using solid, instead of broken lines); and (2) a raised rim around the air vent has been added. Both of these features are shown in the figures of the 106 application. An embodiment with notches, for example, is shown in Figure 10(b) of the 106 application, and an embodiment with the raised rim is shown in Figure 11(d). An illustration of the amended drawings in comparison to various figures, in whole or cropped, from the 106 application (labeled Original Fig.) is set forth in the Patent Owners Motion to Amend concurrently filed on todays date. As shown by the examples therein, the currently amended figures are consistent with the figures of the 106 application.2 As a result, in view of the above, it is submitted that continuity is present between the 106 application and the present patent, such that the patentee is entitled

The patentee notes that these amendments are not intended as an admission that the 465 patent was not previously entitled to priority. As further discussed below, the patentee believes that priority was present in view of the drawings and the statements in the written description in the parent. The present drawings have been amended without prejudice, however, to conform them to particular figures as discussed above, so as to expedite favorable action and an allowance.
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IPR2013-00072 D617,465 to the priority benefit of the 106 applications filing date. Recognition of that continuity and priority are respectfully requested. II. Rejections Over Prior Art Based on the loss of continuity, the Office Action had rejected the 465 patent as follows: (1) as being obvious under 35 U.S.C. 102(b) over Hakim U.S. Pub. 2007/0221604 (Hakim 604); as being obvious under 35 U.S.C. 102(b) over Hakim U.S. Pat. No. 6,994,225 (Hakim 225);

(2)

In view of the amendments herein to address the continuity issues, it is submitted that the present application is entitled to the August 5, 2003 filing date of the 106 parent application. As a result, withdrawal of the rejections is respectfully requested. In particular, the present application claims the priority of Hakim 604 (Hakim 604 being the same as the 106 parent). As a result, the 2007 publication of Hakim 604 and the Hakim 225 patent are not prior art. Accordingly, with the elimination of all of the primary references, it is respectfully submitted that the present patent is fully valid and patentable.

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IPR2013-00072 D617,465 Discussion of Initial Claim and Drawings Should the motion to amend be granted, it is submitted that the amended claim is patentable as set forth above. In the alternative, should leave to amend not be granted, the Patent Owner respectfully submits that the 465 patent claim remains patentable as originally issued. In particular, two objections were raised by the Patent Office on page 7 of the Decision. An objection was raised with respect to the oval shaped spout tip of the 465 patent, and to the absence of slits in the spout tip and vent. With respect to the oval shaped tip, the parent 106 application discloses in the written description that the spout tip can be oval shaped. See e.g., col. 12 lines 45 51 (in the preferred embodiment of the spout, the tube is in the shape of an oval when viewed from the top. Thus, the valve of the nipple preferably has an upper cylindrical section, and the valve of the spout preferably has an upper tubular section with an oval shape. Alternately, another shape may be provided if desired). With respect to the three slits, the Patent Owner notes that they were unclaimed subject matter. As a result, it is submitted that their lack of inclusion does not affect the drawings or the claim. In addition, the specification of the parent 106 application

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IPR2013-00072 D617,465 indicates that the application is not limited to any particular type of opening. See e.g., col. 8 lines 13 - 15 (Any other type of opening can also be used, including any combination of holes, slits, or so forth). As such, since the issued drawings of the 465 patent were supported by the specification of the parent 106 application, it is submitted that they were entitled to the priority of that parent. Conclusion In view of the foregoing amendments and remarks, reconsideration of the patent and favorable action are respectfully requested. 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, 4th Fl. New York, New York, 10019 Tel: (646) 380-2087 Fax: (646) 514-2123 MCohen@GoldbergCohen.com LGoldberg@GoldbergCohen.com

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IPR2013-00072 D617,465 CERTIFICATE OF SERVICE In connection with the above-referenced reexamination proceeding, I hereby certify that on July 25, 2013 the foregoing Luv n care, Ltd.s Response to the Boards Decision to Institute Inter Partes Review is being served on the following counsel for the third party requesters in this matter via First Class Mail and electronic mail: Dane A. Baltich ALSTON & BIRD LLP Bank of America Plaza 101 South Tryon Street, Suite 4000 Charlotte, North Carolina 28280-4000 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, 4th Fl. New York, New York, 10019 Tel: (646) 380-2087 Fax: (646) 514-2123 MCohen@GoldbergCohen.com LGoldberg@GoldbergCohen.com

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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 IPR2013-00072 Patent D617,465 ______________ 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, 4th Fl. New York, New York 10019 Tel.: (646) 380-2087 Fax: (646) 514-2123 MCohen@GoldbergCohen.com LGoldberg@GoldbergCohen.com Attorneys for the Patent Owner

IPR2013-00072 D617,465 Patent Owner Luv n care, Ltd. (Luv n care or LNC) hereby respectfully moves to amend the claim of U.S. Patent No. D617,465 (the 465 patent), the patent at issue in these proceedings. Per the Boards 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 The proposed amended drawings

amending the drawings of the 465 patent.

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

IPR2013-00072 D617,465

465 Patent Fig. 2

Fig. 2 Proposed Amendment

465 Patent Fig. 3

Fig. 3 Proposed Amendment

IPR2013-00072 D617,465

465 Patent Fig. 4

Fig. 4 Proposed Amendment

465 Patent Fig. 5

Fig. 5 Proposed Amendment

IPR2013-00072 D617,465 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 patents parent U.S. Patent Application Serial No. 10/536,106 (the 106 application). (The 106 application was filed as application No.

PCT/US2003/024400 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 Boards Decision of April 25, 2013 (the Boards Decision), and to slightly narrow the scope of the claim. In the Boards Decision, findings were made regarding the shape of the spout, and the slits, as they relate to the 465 patents 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

Since these slits are unclaimed, they neither broaden nor narrow the scope of the claimed invention. 5

IPR2013-00072 D617,465 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 patents original specification as filed expressly incorporated by reference the disclosure of the 106 application. See, Exhibit 2 (the 465 patents 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

IPR2013-00072 D617,465 cropped (identified below as Original Figures) are displayed side-by-side with the corresponding proposed amended drawings (identified by their figure number):

IPR2013-00072 D617,465

FIGURE 1

Original FIG. 10(C)

IPR2013-00072 D617,465

FIGURE 2

Original FIG. 10(B)

IPR2013-00072 D617,465 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 Applicants 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 patents 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, 4th Flr. New York, New York 10019 646-380-2084 (phone-direct) 646-380-2087 (phone-main) 646-514-2123 (facsimile) Attorneys for the Patent Owner 10

IPR2013-00072 D617,465 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 28280-4000 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, 4th Flr. New York, New York 10019 646-380-2084 (phone-direct) 646-380-2087 (phone-main) 646-514-2123 (facsimile) Attorneys for the Patent Owner

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