Article June 28, 2016

The Sippy Cup Saga

Despite its cutesy and unassuming name, the Sippy Cup, a type of spill-proof drinking cup designed for toddlers, has been the cause of a long drawn-out legal dispute which has already resulted in a seminal development for US Design Right law. The device utilises surface tension to prevent liquid from being spilled from the cup unless the child is drinking. Designed originally in 1988 by parent and engineer Richard Belanger, the first Sippy Cup created a new market for “training cups” intended to transition infants from bottle feeding to cup drinking.

The original product was protected by a US design patent. For those of you who aren’t familiar with this US IP right: design patents cover the aesthetic qualities of a three-dimensional object and offer the owner a monopoly on the design for a period of 14 years – as opposed to the 20 years afforded by a utility patent. They are granted by the US Patent and Trademark Office, which determines the eligibility of the design for protection by examining whether it is novel and non-obvious.

Of course, the design for the original Sippy Cup is long past its expiry; it is a successor product designed by Luv N’ Care Ltd. that has been at the centre of a recent high profile legal dispute. The Luv N’ Care Sippy Cup is one of the most successful on the market, and, likely as a consequence of this success, one of the most imitated. The company brought an action against Munchkin, Inc. and Toys “R” Us, Inc. in January 2012 alleging infringement of a single Design Patent D617,465. Rather than defend on the basis of non-infringement, the defendants chose to challenge the validity of the design patent on the basis that it lacked novelty. From a legal perspective, the dispute took an interesting turn at this point, as the defendants sought to use the recently instituted process of Inter Partes Review before the Patent Trials and Appeal Board (PTAB) to challenge the patent, making them the first to use the process for a design rather than utility patent.

The reviews carried out by the PTAB are far more limited in scope than a full trial and are concerned only with assessing the validity of a patent on the basis of novelty. Having such a limited scope of review makes the PTAB process significantly cheaper, at least in the short term; it also has the potential to offer a much swifter resolution of the dispute than a full trial.
That said the process is not without its pitfalls, both for patents in general and for design patents in particular. Also the PTAB has been accused of having little experience in the field of design patents.

In the case of the Luv N’ Care design the PTAB found that the design was in fact invalid due to lack of novelty, finding a number of examples of prior art which appeared to show designs for Sippy Cups substantially similar to the Patent Owner’s. Although the PTAB’s decision was later affirmed by the Federal Circuit, Luv N’ Care have sought a Supreme Court review of the invalidity proceedings on the basis that the PTAB failed to follow “fundamental” rules of due process when they raised two new issues during the trial without giving the company time to respond. It remains to be seen whether or not the Supreme Court will hear the petition, so the eventual outcome of the case remains unclear. The case does demonstrate one fact very clearly though: that even the simplest seeming products can generate lengthy and costly disputes.