DCT
2:18-cv-01046
Master Ltd v. Alpha Group US LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Spin Master Ltd. (Canada)
- Defendant: Alpha Group US, LLC (California); Auldey Toys of North America, LLC (California)
- Plaintiff’s Counsel: Erise IP, P.A.
- Case Identification: 2:18-cv-01046, C.D. Cal., 05/31/2018
- Venue Allegations: Venue is alleged to be proper as Defendants are said to reside in, conduct business in, and have committed substantial acts of infringement within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s "Screechers Wild!" line of transforming toys infringes two patents related to magnetically-activated transformable toy technology.
- Technical Context: The technology involves toys designed to automatically transform from a compact, rollable shape (like a vehicle) into an expanded character form upon proximity to a magnetic object, a feature central to gameplay in a competitive market segment.
- Key Procedural History: Plaintiff’s "Bakugan" brand, which launched in 2007, utilizes similar transformable toy technology. The patents-in-suit are part of a larger family of applications claiming priority back to 2006. The '073 Patent is subject to a terminal disclaimer, which may limit its enforceable term.
Case Timeline
| Date | Event |
|---|---|
| 2006-02-20 | Priority Date for '073 & '058 Patents |
| 2007-01-01 | Plaintiff's "Bakugan" product line launched |
| 2017-12-31 | Plaintiff announced "Bakugan" brand reboot (approx.) |
| 2018-01-16 | '073 Patent Issued |
| 2018-01-31 | Accused "Screechers Wild!" products launched (approx.) |
| 2018-05-22 | '058 Patent Issued |
| 2018-05-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,868,073 - "Transformable Toy"
- Patent Identification: U.S. Patent No. 9,868,073, "Transformable Toy", issued January 16, 2018 (Compl. ¶18; ’073 Patent, cover).
The Invention Explained
- Problem Addressed: The patent describes the technical difficulty of creating small, magnetic-force-expansion-style toys that are also "rollable" for use in shooting-style games, due to the challenge of fitting complex mechanisms into a compact form factor (’073 Patent, col. 1:49-67).
- The Patented Solution: The invention is a toy that transforms from a first "rollable" shape to a second, different shape. It contains an internal locking mechanism with a magnetic member. When an external magnetic force is applied (e.g., by rolling over a magnetic card), the magnetic member moves, releasing the lock. This allows spring-loaded ("elastic element") components to automatically unfold, transforming the toy into its second shape (’073 Patent, Abstract; col. 2:6-34).
- Technical Importance: This design enables the creation of compact, rollable toys that can transform suddenly and automatically as part of a game, adding an element of surprise and spectacle (’073 Patent, col. 2:47-54).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶69).
- The essential elements of claim 1 include:
- A first toy component with a toy body and at least one rotatable auxiliary component, which is "rollable" in its closed position.
- An elastic element that biases the auxiliary component toward the open position.
- A locking component with a latch and keeper to hold the auxiliary component in the closed position.
- A first magnetically-responsive member associated with the locking component.
- A separate second toy component with a second magnetically-responsive member.
- A transformation mechanism wherein bringing the two components into proximity causes the latch to move and disengage from the keeper, releasing the auxiliary component.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,975,058 - "Transformable Toy"
- Patent Identification: U.S. Patent No. 9,975,058, "Transformable Toy", issued May 22, 2018 (Compl. ¶20; ’058 Patent, cover).
The Invention Explained
- Problem Addressed: Like its related patent, the '058 Patent addresses the need for miniaturized, rollable toys that can transform via an external magnetic force for gameplay purposes (’058 Patent, col. 1:49-65).
- The Patented Solution: The invention details a transformable toy with a body and a movable auxiliary component held in a "rollable first position" by a "locking assembly." This assembly integrates an elastic element, a latch, a keeper, and a first magnetically-responsive member. When a separate second toy component (with its own magnetic member) gets close enough to generate a magnetic force, the first member responds, moving the locking assembly to a "release position" and allowing the auxiliary component to move to its second position (’058 Patent, Abstract; col. 16:1-41).
- Technical Importance: The invention provides a specific mechanical configuration for a magnetically-triggered transformation that allows a compact toy to maintain a rollable shape until activated during a game (’058 Patent, col. 2:47-54).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶78).
- The essential elements of claim 1 include:
- A first toy component with a body and at least one auxiliary component movable between a "rollable first position" and a second position.
- A "locking assembly" that includes a first magnetically-responsive member, an elastic element, a latch, and a keeper.
- The elastic element urges the locking assembly toward its locking position.
- A separate second toy component with a second magnetically-responsive member.
- A transformation mechanism wherein generating a magnetic force between the two components causes the locking assembly to move to a release position, permitting the auxiliary component to move.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The "Screechers Wild!" line of transformable toys, categorized as Level 1, Level 2, "future L2," and Level 3 vehicles (Compl. ¶¶25-32).
Functionality and Market Context
- The Screechers Wild! products are described as toy vehicles that transform into "beast-powered juggernauts" (Compl. ¶¶23, 26). This transformation is allegedly an "explosive, 360-degree flip morphing action" triggered when the vehicle makes contact with a separate, magnetically-responsive disk accessory (Compl. ¶¶34, 43, 45). The complaint provides a visual from the MonkeyWrench Vehicle's instruction sheet showing the vehicle rolling to capture a disk (Compl. ¶38, p. 12).
- The complaint alleges the products are sold through major national retailers and are supported by an animated web-series, suggesting a significant commercial presence aimed at a youth market (Compl. ¶¶22, 24, 60).
IV. Analysis of Infringement Allegations
'073 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first toy component including: a toy body; at least one auxiliary component coupled with the body and rotatable... to a closed position and rotatable away... to an open position, wherein in the closed position, the first toy component is rollable; | The main Screechers Wild! vehicle, which includes a vehicle base (body) and a character body (auxiliary component) that rotates from a closed "Vehicle form" to an open "Character form" (Compl. ¶¶36-37). | ¶36-38 | col. 16:2-10 |
| at least one auxiliary component elastic element... biases the at least one auxiliary component to the open position away from the body; | A spring inside the vehicle allegedly biases the character body to rotate away from the vehicle base into the open "Character Form" (Compl. ¶¶39-40). | ¶39-40 | col. 16:11-17 |
| a locking component associated with the toy body and selectively positionable between a first, locked position... and a second, disengaged position, the locking component including a latch and a keeper engaged with the latch when... in the first, locked position; | A locking mechanism on the vehicle's underside allegedly includes a latch and keeper that hold the character body in the closed "Vehicle Form" (Compl. ¶¶41, p. 16). | ¶41 | col. 16:18-28 |
| a first magnetically-responsive member associated with the locking component; and a second toy component separate from the first toy component and including a second magnetically-responsive member, | The vehicle's locking component allegedly includes a magnet, and the separate disk accessory allegedly includes a metal rim (Compl. ¶¶42-44). | ¶42-44 | col. 16:29-34 |
| wherein upon the second magnetically-responsive member being brought into proximity of the first... member, the latch... moves to thereby disengage the latch from the keeper and position the locking component in the second, disengaged position. | When the disk accessory contacts the magnet in the vehicle, the latch allegedly moves to disengage from the keeper, releasing the character body to transform (Compl. ¶45). | ¶45 | col. 16:35-41 |
'058 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first toy component including: a body; at least one auxiliary component that is movable relative to the body between a rollable first position and a second position; | The main Screechers Wild! vehicle, comprising a base (body) and a character body (auxiliary component) that moves between a "rollable first position" (Vehicle form) and a "second position" (Character form) (Compl. ¶¶49-50). | ¶49-50 | col. 16:2-7 |
| a locking assembly including: a first magnetically-responsive member, an elastic element, a latch, and a keeper, wherein the elastic element urges the locking assembly towards a locking position... | The vehicle allegedly contains a locking assembly with a magnet, a spring, a latch, and a keeper. The complaint provides an image showing the keeper engaged with the latch in the locked position (Compl. ¶53, p. 27). | ¶51-53 | col. 16:8-17 |
| a second toy component having a second magnetically-responsive member, wherein the second toy component is engageable with the body of the first toy component to bring the first... member... and the second... member... to generate a magnetic force, | The separate disk accessory has a magnetically-responsive member (metal rim) and is engageable with the vehicle body to bring the rim near the vehicle's magnet, generating a magnetic force (Compl. ¶¶54-55). | ¶54-55 | col. 16:18-25 |
| wherein upon generating the magnetic force, the first magnetically-responsive member responds to bring the locking assembly to a release position in which the latch and the keeper permit movement of the at least one auxiliary component... | Upon generating the magnetic force, the magnet allegedly moves the locking assembly to a release position, allowing the character body to move to its open "second position" (Compl. ¶56). | ¶56 | col. 16:26-34 |
Identified Points of Contention
- Scope Questions: Both patents claim a "rollable" first position or component. The specifications frequently describe this in the context of a "roughly spherical shape" (’073 Patent, col. 2:40). The infringement analysis may turn on whether the accused wheeled "vehicles" fall within the scope of "rollable" as contemplated by the patents, or if the patentees implicitly defined the term more narrowly.
- Technical Questions: The complaint alleges the same product infringes both patents. However, '073 claim 1 requires an elastic element that "biases the... auxiliary component to the open position," while '058 claim 1 requires an elastic element that "urges the locking assembly towards a locking position." A key question for the court will be whether the single spring mechanism identified in the accused product (Compl. ¶39) can, as a matter of fact, perform both of these distinct functions, or if there is a technical mismatch with the requirements of one or both claims.
V. Key Claim Terms for Construction
The Term: "rollable"
- Context and Importance: This term is central to the claimed invention's premise of being suitable for shooting-style games. Its construction is critical because the accused products are wheeled vehicles, whereas the patent specifications repeatedly use "spherical shapes" as the primary example of a rollable form (’073 Patent, col. 2:40-41). The definition will determine if the accused products can meet this fundamental limitation.
- Intrinsic Evidence for a Broader Interpretation: The claims themselves do not restrict "rollable" to any particular geometry, leaving it open to its plain and ordinary meaning, which could include an object with wheels (’073 Patent, col. 16:10).
- Intrinsic Evidence for a Narrower Interpretation: The specification's consistent linkage of "rollable" to "spherical shapes" may support an argument that the patentee acted as their own lexicographer, implicitly defining the term to mean sphere-like objects and disclaiming other forms like wheeled vehicles (’073 Patent, col. 1:5-6; col. 2:57).
The Term: "locking component" (’073 Patent) vs. "locking assembly" (’058 Patent)
- Context and Importance: The complaint maps the same physical parts of the accused product to both of these terms (Compl. ¶41, ¶51). Practitioners may focus on whether the structure and function of the accused mechanism can satisfy the potentially distinct definitions of a "component" versus an "assembly."
- Intrinsic Evidence for Interpretation: The '073 patent claims a "locking component" that includes a "latch and a keeper" and is "associated with the toy body" (’073 Patent, col. 16:21-28). The '058 patent claims a "locking assembly" which explicitly includes the "elastic element" as a part of the assembly itself, in addition to the latch, keeper, and magnetic member (’058 Patent, col. 16:11-14). The court may need to determine if the accused mechanism constitutes a single "assembly" that includes the spring, as required by the '058 patent, and if that same structure can simultaneously be considered the "component" of the '073 patent.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement for both patents, asserting that Defendants provide an "Instruction Sheet" with each product that explains to end-users how to operate the toy in the allegedly infringing manner (i.e., triggering the transformation with the disk) (Compl. ¶¶64, 71, 80).
Willful Infringement
The complaint pleads willfulness for the '073 Patent, alleging that "Spin Master has attempted to have conversations with Defendants regarding Spin Master’s intellectual property and Defendants’ Infringing Products," though it does not specify if these attempts occurred pre-suit or if Defendants were made aware of the specific patents (Compl. ¶¶63, 86).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "rollable," which the patent specifications consistently tie to "spherical shapes," be construed to cover the wheeled "race car/machine hybrids" that comprise the accused product line?
- A key evidentiary question will be one of functional distinction: does the single spring mechanism in the accused products perform the specific biasing function required by claim 1 of the '073 Patent (biasing the auxiliary part open) and the different function required by claim 1 of the '058 Patent (urging the locking mechanism closed), or is there a fundamental mismatch in technical operation with one or both claims?
- A central validity and damages question may arise from the patents' relationship: given that both patents stem from the same priority application and claim similar subject matter, the court may scrutinize the patents for non-statutory double patenting, an issue potentially highlighted by the terminal disclaimer filed for the '073 Patent.