DCT
2:18-cv-03435
L GJS Spin Master Ltd v. Mattel Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Spin Master Ltd. (Canada)
- Defendant: Mattel, Inc. (Delaware)
- Plaintiff’s Counsel: Erise IP, P.A.; Fitch, Even, Tabin & Flannery LLP
- Case Identification: 2:18-cv-03435, C.D. Cal., 05/22/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant Mattel maintains its headquarters and a regular and established place of business in the Central District of California, where the alleged acts of infringement occurred.
- Core Dispute: Plaintiff alleges that Defendant’s "Mecard" line of transformable toys infringes three patents related to toys that automatically transform from a compact, rollable shape into a character figure when triggered by a magnetic force.
- Technical Context: The technology concerns the design of spring-loaded, magnetically-activated transforming toys, a popular category in the toy market often associated with collectible games and animated series.
- Key Procedural History: The complaint alleges pre-suit communication with Mattel regarding Spin Master's intellectual property. Subsequent to the filing of this complaint, all asserted claims of all three patents-in-suit (U.S. Patent Nos. 8,500,508; 9,868,073; and 9,975,058) were cancelled in inter partes review (IPR) proceedings before the U.S. Patent and Trademark Office (IPR2019-00897, IPR2019-00900, IPR2019-00901). These cancellations raise fundamental questions about the continued viability of the infringement claims as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2006-02-20 | Priority Date for ’508, ’073, and ’058 Patents |
| 2013-08-06 | U.S. Patent No. 8,500,508 Issues |
| 2018-01-16 | U.S. Patent No. 9,868,073 Issues |
| 2018-03-23 | Accused Mecard Products Launch in U.S. (approx.) |
| 2018-05-22 | U.S. Patent No. 9,975,058 Issues |
| 2018-05-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,500,508, “Transformable Toy,” issued August 6, 2013
The Invention Explained
- Problem Addressed: The patent describes a need for miniaturized, "rollable" toys for use in shooting-style games, noting that prior art magnetic toys were not well-suited for such applications due to design limitations (ʼ508 Patent, col. 1:41-68).
- The Patented Solution: The invention is a toy that transforms from a first, rollable shape (e.g., a sphere) to a second, character shape. This is achieved through an internal mechanism containing a movable magnetic body and a locking system. In its default state, the toy is locked in the rollable shape. When the toy is rolled over an external magnetic source (like a metal-embedded card), the internal magnet is attracted, causing it to move and release the lock. This release allows spring-like biasing members to automatically unfold the toy’s exterior components into the character shape (ʼ508 Patent, Abstract; Fig. 5(a)-5(b)).
- Technical Importance: This technology enabled a play pattern where a compact, rolling object could dynamically and automatically transform upon reaching a specific point on a playing surface, forming the basis for games like the Plaintiff's "Bakugan" product line (ʼ508 Patent, col. 2:41-57).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶66).
- Essential elements of Claim 1 include:
- A main body element and at least one first moveable element.
- The moveable element can move from a first "rollable" position to a second "not rollable" position.
- The moveable element is permanently biased toward the second (open) position.
- A "catch means" cooperates with a "moveable releasable latch means" to hold the toy in the first position.
- The releasable latch means has a magnet and is moved out of engagement by attraction to a playing surface, causing rolling to cease.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,868,073, “Transformable Toy,” issued January 16, 2018
The Invention Explained
- Problem Addressed: The patent, part of the same family as the '508 patent, addresses the same challenge of creating compact, rollable toys that transform via magnetic activation (ʼ073 Patent, col. 1:42-col. 2:2).
- The Patented Solution: This patent details a two-part system: a "first toy component" (the transforming vehicle) and a "second toy component" (a separate activator, like a card). The first component has a body and auxiliary parts biased to an "open" position by an elastic element. A "locking component," comprising a "latch" and "keeper," retains the toy in its "closed," rollable form. The first component's locking mechanism has a first magnetically-responsive member, and the second component has a second one. When the two members are brought into proximity, the magnetic force causes the latch to disengage from the keeper, triggering the transformation (ʼ073 Patent, Abstract; col. 16:1-41).
- Technical Importance: The invention provides a more detailed description of the internal mechanics for a two-part (toy and activator) transforming system, focusing on a specific latch-and-keeper locking mechanism released by magnetic proximity (ʼ073 Patent, col. 2:49-65).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶75).
- Essential elements of Claim 1 include:
- A first toy component with a body and at least one rotatable auxiliary component.
- The first component is "rollable" in its closed position.
- An elastic element biases the auxiliary component to the open position.
- A locking component with a "latch" and "keeper" holds the toy in the closed position.
- A first magnetically-responsive member is associated with the locking component.
- A separate second toy component includes a second magnetically-responsive member.
- At least one of the two members is a magnet.
- Proximity of the two members causes the latch to disengage from the keeper, releasing the auxiliary component.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. 9,975,058
- Patent Identification: U.S. Patent No. 9,975,058, “Transformable Toy,” issued May 22, 2018.
- Technology Synopsis: This patent describes a transformable toy system consisting of a first toy component and a separate second toy component. The first component includes a body, at least one movable auxiliary component, and a locking assembly. The locking assembly contains a first magnetically-responsive member, a latch, a keeper, and an elastic element that urges the lock towards an engaged position. When the first component is rolled near the second component (which has a second magnetically-responsive member), the resulting magnetic force overcomes the elastic element, moves the locking assembly to a release position, and permits the toy to transform (ʼ058 Patent, Abstract; col. 2:5-39).
- Asserted Claims: The complaint asserts independent Claim 1 (Compl. ¶84).
- Accused Features: The complaint alleges that the Mecard vehicle's body, its movable character components, its internal spring-loaded magnetic latch, and the separate magnetic game card together embody the claimed system (Compl. ¶¶46-54).
III. The Accused Instrumentality
- Product Identification: The complaint identifies Mattel's "Mecard" line of transformable toys, using the "Mirinae" vehicle and its associated card as a representative example (Compl. ¶¶21, 23, 25).
- Functionality and Market Context: The Mecard toy is described as a vehicle that, when rolled over a "magical" game card, "instantly transform[s]" into a "fantastical battling warrior" (Compl. ¶32). The complaint includes photographs illustrating this functionality, showing the toy in a compact, wheeled vehicle form (the "first position") and an unfolded, character form (the "second position") (Compl. ¶26, p. 9). Further photographic evidence purports to show the internal mechanism, including a magnet on the vehicle's underside that triggers a latch release upon contact with the card, and a spring that provides the force for transformation (Compl. ¶¶27, 29, 38). The complaint positions the Mecard line as a direct competitor to Spin Master's successful "Bakugan" brand (Compl. ¶13).
IV. Analysis of Infringement Allegations
’508 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A toy comprising a main body element and at least one first moveable element associated with said main body element | The Mecard toy has a "main body element (vehicle shell)" and a "first moveable element (the vehicle base and character components)." A photo depicts these parts (Compl. ¶25, p. 6). | ¶25 | col. 7:42-45 |
| and moveable with respect thereto from a first position...in which the toy is rollable...to a second position in which...the toy is not rollable | The moveable element moves from a closed vehicle shape (first position) to an open character shape (second position) where it is not rollable. Photos show both states (Compl. ¶26, p. 9). | ¶26 | col. 8:36-40 |
| said at least one first moveable element being permanently biased toward said second position | A rotating connector and spring are arranged to permanently bias the moveable element toward the open, second position. A photo highlights the spring (Compl. ¶27, p. 10). | ¶27 | col. 6:33-36 |
| and being provided with catch means co-operable with moveable releasable latch means in said main body element to maintain...said first moveable element in said first position until said latch means is released | The toy is provided with a catch and a releasable latch that maintain the toy in its vehicle shape until the latch is released. A photo shows the engaged latch (Compl. ¶28, p. 11). | ¶28 | col. 7:6-20 |
| wherein said releasable latch means is provided with a magnet | The releasable latch of the Mecard toy is provided with a magnet, as shown in a photograph of the vehicle's underside (Compl. ¶29, p. 12). | ¶29 | col. 4:1-5 |
| whereby said releasable latch means is moveable out of engagement with said catch by attraction to said playing surface, whereby a rolling of the toy along the playing surface ceases... | When the toy rolls over a magnetic card, the latch moves out of engagement with the catch due to magnetic attraction, causing the toy to transform and cease rolling. | ¶30 | col. 15:39-41 |
- Identified Points of Contention:
- Scope Questions: A potential issue for the court is whether the '508 patent's terms "main body element" and "first moveable element," which describe a generic spherical toy in the patent's embodiment, can be construed to read on the distinct "vehicle shell" and "vehicle base" of the accused car-shaped toy.
- Technical Questions: Claim 1 requires that the "rolling of the toy...ceases" upon transformation. A key factual question is whether the Mecard toy actually stops all forward motion upon activation, or if it merely transforms while its momentum continues to carry it forward.
’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 towards the body to a closed position and rotatable away from the body to an open position | The Mecard vehicle (first toy component) includes a body (vehicle shell) and an auxiliary component (vehicle base/character parts) that rotates between a closed (vehicle) and open (character) position (Compl. ¶35, p. 15). | ¶¶33-35 | col. 10:20-24 |
| wherein in the closed position, the first toy component is rollable | In its closed vehicle form, the toy has wheels and is capable of rolling (Compl. ¶36, p. 17). | ¶36 | col. 2:34 |
| at least one auxiliary component elastic element...biases the at least one auxiliary component to the open position away from the body | A rotating spring connection (elastic element) biases the auxiliary component away from the body and toward the open character form (Compl. ¶38, p. 18). | ¶¶37-38 | col. 10:40-54 |
| a locking component...selectively positionable between a first, locked position...and a second, disengaged position...the locking component including a latch and a keeper | The toy includes a locking component with a latch and keeper that can be positioned in a locked state (vehicle form) or a disengaged state (character form) (Compl. ¶39, p. 22). | ¶39 | col. 12:5-9 |
| a first magnetically-responsive member associated with the locking component; and a second toy component separate...and including a second magnetically-responsive member | The vehicle's locking component has a magnet (first member), and the separate card accessory has a metal component (second member) (Compl. ¶¶40-41). | ¶¶40-41 | col. 12:9-12 |
| wherein upon the second magnetically-responsive member being brought into proximity of the first...the latch...moves to thereby disengage the latch from the keeper | When the card is brought into contact with the magnet in the vehicle, the latch disengages from the keeper, allowing the toy to transform (Compl. ¶43, p. 25). | ¶43 | col. 13:9-24 |
- Identified Points of Contention:
- Scope Questions: Claim 1 requires a "locking component" that includes both a "latch" and a "keeper." Practitioners may question whether the accused mechanism, depicted in the complaint (Compl. ¶39, p. 22), contains two distinct structures that meet the technical definitions of both terms as understood in the patent, or if it is a single, integrated release mechanism that functions differently.
V. Key Claim Terms for Construction
The Term:
"rollable"(asserted in claims of '508, '073, and '058 patents)- Context and Importance: This term is fundamental to the patents' stated goal of creating toys for shooting-style games. Its construction is critical because the accused product is a car with wheels, not the spherical object shown in the patents' primary embodiments. The dispute may turn on whether "rollable" simply means "capable of rolling on wheels" or implies a more specific, omnidirectional rolling capability.
- Intrinsic Evidence for a Broader Interpretation: The patent specifications state that the first shape may be selected from a group including not only "spheres" but also "vehicle shapes" (ʼ508 Patent, col. 3:60-68).
- Intrinsic Evidence for a Narrower Interpretation: The background section heavily emphasizes creating a toy suitable for "shooting games" through a "travel motion toy," and the primary embodiment is a "roughly spherical shape" (ʼ508 Patent, col. 1:41-47, col. 2:34).
The Term:
"catch means co-operable with moveable releasable latch means"('508 Patent, Claim 1)- Context and Importance: This limitation defines the core of the release mechanism in the '508 patent. The infringement analysis depends entirely on whether the physical components in the Mecard toy constitute the structures corresponding to these means-plus-function limitations.
- Intrinsic Evidence for Interpretation: The specification discloses the corresponding structure as interior locking portions (10c) on a T-shaped component that engage with U-shaped exterior locking portions (5c, 7c) on the toy's shell (ʼ508 Patent, col. 7:6-20; Fig. 5). A court would likely limit the scope of this "means" term to the disclosed structures and their equivalents.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Mattel induces infringement of all three patents. The factual basis for this claim is Mattel's provision of an "Instruction Sheet" with each product, which allegedly instructs end-users on how to perform the claimed steps of rolling the toy over the card to cause transformation (Compl. ¶¶61, 68, 77, 86).
- Willful Infringement: The complaint alleges willful infringement of the '508 and '073 patents. This allegation is based on alleged pre-suit knowledge, stating that "Spin Master has communicated with Mattel regarding Spin Master's intellectual property and Mattel's Infringing Products" (Compl. ¶60).
VII. Analyst’s Conclusion: Key Questions for the Case
At the time of filing, this case presented a classic dispute between toy industry competitors over core product features. However, subsequent procedural developments have fundamentally altered its landscape. The key questions are now primarily procedural rather than technical.
- A primary question is one of viability: Given that every asserted claim across all three patents-in-suit was subsequently cancelled in inter partes review proceedings, what legal basis remains for the infringement suit as currently pleaded? The case's survival may depend on whether Plaintiff can amend its complaint to assert any claims that survived the IPR challenges.
- Should the case proceed, a central issue would be one of structural correspondence: Do the specific mechanical components of Mattel's car-shaped Mecard toy, particularly its latch and spring assembly, meet the structural requirements of the claims, which were drafted based on embodiments of a spherical toy?
- A related question concerns claim scope: Can the term
"rollable,"which the patents tie to enabling "shooting games" with spherical objects, be construed broadly enough to cover a toy that rolls on four wheels in a linear fashion?