Munchkin, Inc. v. SKIP HOP, INC

1. Case Identification

• Case #: IPR 2015-00653
• Patent #: 9,060,653
• Filed: January 29, 2015
• Petitioner(s): Munchkin, Inc.
• Patent Owner(s): Skip Hop, Inc.
• Challenged Claims: 12-21

2. Patent Overview

• Title: BATH SPOUT COVER
• Brief Description: The ’653 patent discloses a child safety device, specifically a cushioned cover designed to fit over a bathtub spout to protect infants and children from injury. The cover includes a body structure, a receiving area for the spout, and a strap for securing it in place.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 12-14 over Thorne, Lerner, and Daniels

• Prior Art Relied Upon: Thorne (Application # 2007/0130688), Lerner (Patent 4,709,429), and Daniels (Application # 2007/0175531).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Thorne discloses the fundamental elements of the bath spout cover claimed in independent claim 12, including a body with upper, side, and front portions defining a receiving area, and a securing strap. Petitioner asserted that Lerner, which also discloses a bath spout cover, teaches the missing limitation of an "elongated void extending along substantially an entire length of the upper portion." Finally, Petitioner contended that Daniels, which discloses a sink faucet extender, teaches the claimed method of strap attachment: "at least one aperture defined by one of the side portions... for receiving an end of the strap." Dependent claim 13 is met by Daniels' disclosure of two apertures, one on each side. Dependent claim 14 is met by the combination because the elongated void from Lerner is inherently adapted to fit over a shower diverter.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Thorne with Lerner to create a more universal spout cover. Thorne itself expresses a desire for “universal acceptance to the largest variety of commercially available bath spouts.” Lerner’s elongated void directly addresses this by accommodating spouts with diverter valves in various positions. A POSITA would look to other child safety and water spout devices like Daniels for a simple, low-cost method of attaching the strap, and would find Daniels' use of side apertures to be a known and suitable solution.
  • Expectation of Success: The combination involved applying known techniques (an elongated void for universality, side apertures for strap attachment) to a known device (a bath spout cover) to achieve predictable results.

Ground 2: Obviousness of Claims 12-14 over Thorne, Lerner, and Lister

• Prior Art Relied Upon: Thorne (Application # 2007/0130688), Lerner (Patent 4,709,429), and Lister (Patent 5,599,063).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to Ground 1. The combination of Thorne and Lerner was argued to teach all elements of claim 12 except for the strap attachment method, for the same reasons as in Ground 1. Here, Petitioner substituted Lister for Daniels. Lister, which discloses a baby bathing chair, teaches a strap that passes through apertures in the side portions of the chair. Petitioner argued this provides a direct parallel for modifying Thorne's strap attachment.
  • Motivation to Combine: The motivation was identical to that in Ground 1, with Lister serving as an alternative source for the same strap attachment concept. A POSITA seeking a common method to secure a child safety device in a bathtub would readily look to a device like the Lister bathing chair and apply its satisfactory, low-cost aperture-based strap attachment to Thorne's spout cover.
  • Expectation of Success: As with the Daniels combination, combining Lister's strap feature with Thorne's cover was presented as a simple substitution of one known element for another to obtain predictable results.

Ground 3: Obviousness of Claims 15-21 over Thorne and Daniels

• Prior Art Relied Upon: Thorne (Application # 2007/0130688) and Daniels (Application # 2007/0175531).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged independent claim 15. Petitioner asserted Thorne taught the basic body structure. The key limitations missing from Thorne were the specific strap attachment mechanism: an aperture in a side portion, with the strap traversing it, and an "end portion of the strap having a dimension larger than... the aperture" to hold it in place. Petitioner argued Daniels explicitly teaches this mechanism, showing an enlarged end of a strap that abuts the exterior surface to prevent it from pulling through the aperture. Dependent claims 16-21, which add features like preventing the strap from sliding back (claim 16), having two apertures (claim 17), and specific material properties (claims 18-21), were allegedly taught by the combination or were obvious material/design choices disclosed in Thorne itself.
  • Motivation to Combine: The motivation was to incorporate a secure, low-cost strap retention method into Thorne's spout cover. A POSITA would recognize that Thorne fails to specify how its strap is coupled and would look to analogous devices like Daniels. Daniels' use of an enlarged strap end to prevent pull-through is a simple, effective, and well-known mechanical solution that a POSITA would be motivated to adopt.
  • Expectation of Success: A POSITA would have a high expectation of success in combining the features, as it involved applying a basic mechanical fastening principle from Daniels to the Thorne device to solve a known problem.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 15-21 based on Thorne in view of Lister and Morris (Patent 3,910,634). In that combination, Lister was used to supply the side apertures, and Morris was used to supply the enlarged strap end, relying on a similar design modification theory.

4. Key Claim Construction Positions

• "end of the strap": Petitioner noted that the ’653 patent only discloses strap ends that are enlarged or angularly offset to prevent separation. However, to facilitate its obviousness argument, Petitioner accepted the Patent Owner's apparent broader construction (from infringement contentions) that does not require any enlargement or offset, such as a strap merely sewn to itself.
• "opening adapted to fit over a bath spout shower diverter": For claim 14, Petitioner argued this opening need not be a separate feature from the "elongated void" of the upper portion. The elongated void itself can serve as the opening for the diverter.
• "elastomeric material": For claims 18-21, Petitioner contended this term should be construed broadly to encompass deformable materials like rubbers and plastics, as described in the ’653 patent's specification.

5. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 12-21 of the ’653 patent as unpatentable under 35 U.S.C. §103.