LaRose IndusTries LLC v. CapRiola Corp

1. Case Identification

• Patent #: 7,731,558
• Filed: January 23, 2013
• Petitioner(s): LaRose Industries, LLC and Larry Rosen
• Patent Owner(s): Jon Capriola (assigned to Capriola Corp.)
• Challenged Claims: 1-27

2. Patent Overview

• Title: Illuminated Toy Building Structures
• Brief Description: The ’558 patent discloses a system of illuminated toy building blocks. Each block features a non-opaque body, at least two integral mechanical connectors (one male, one female), two internal electrical conductors traversing the block between the connectors, and an LED electrically connected to the conductors. When blocks are connected, power can be transmitted between them to illuminate the LEDs.

3. Grounds for Unpatentability

Ground 1: Claims 1-27 are obvious over Teller in view of Rosen.

• Prior Art Relied Upon: Teller (Patent 3,696,548) and Rosen (Application # 2006/0134978).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Teller disclosed all elements of the independent claims except for the use of an LED as the light source. Teller taught a toy building module with a light-transmissive housing, male and female electrical connectors, and internal conductors connecting a lamp in parallel. The only missing element, an LED, was explicitly disclosed by Rosen as a light source within a building block.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references by substituting the lamp in Teller with the LED from Rosen. The petition asserted this was a simple substitution of one known light source for another, more efficient and modern equivalent, to gain the known advantages of LEDs (e.g., brightness, longevity, low cost), which the ’558 patent itself acknowledged.
  • Expectation of Success: A POSITA would have had a high expectation of success, as replacing a simple lamp with a simple LED in a basic circuit is a predictable and routine design choice in the field of toys.
  • Key Aspects: Petitioner’s central argument was that the patent was improvidently granted due to the patentee’s alleged misrepresentation to the USPTO. During prosecution, the patentee overcame a rejection over this same combination by arguing that Teller failed to teach a "single bipolar connector." The petition asserted that Teller explicitly taught this feature (suggesting a "telephone jack" type connector), meaning the Examiner’s sole basis for allowance was based on a misunderstanding of the prior art created by the patentee.

Ground 2: Claims 1-27 are unpatentable over Doherty alone or in view of Rosen and/or Taylor.

• Prior Art Relied Upon: Doherty (Application # 2007/0184722), Rosen (Application # 2006/0134978), and Taylor (Patent 4,096,379).

• Core Argument for this Ground: This ground asserted that Doherty, a prior art reference not cited during prosecution, anticipated the majority of the challenged claims under 35 U.S.C. §102(e) and rendered the few remaining dependent claims obvious under §103.

  • Prior Art Mapping:
    • Anticipation (Claims 1-6, 8-22, 24, 26, 27): Petitioner argued that Doherty disclosed every limitation of these claims. Doherty taught building blocks constructed from translucent plastic, each having multiple male and female connectors. The blocks contained an internal circuit board with an LED and electrical contacts that connected to adjacent blocks, allowing power to be transmitted through a series of connected blocks to illuminate the LEDs. Doherty also disclosed a power supply block with a switch.
    • Obviousness (Claims 7, 23, 25): These dependent claims added specific block shapes, such as a 90-degree bend. Petitioner argued these features were obvious additions to the Doherty system.
  • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to modify the blocks of Doherty to include different shapes, such as the "elbows in any angle" taught by Rosen or the 90-degree light block taught by Taylor. This was presented as a predictable design choice to enhance the versatility and play value of a construction toy set.
  • Expectation of Success: Combining known block shapes with Doherty's electrical system would have been straightforward with a high expectation of success.

• Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges against claims 1-27 based on combinations including: Atomic Blox (a 2005 product manual) alone or in view of Rosen or Taylor; Lie (Patent 5,020,253) alone or in view of Rosen; and Taylor (Patent 4,096,379) in view of Rosen. These arguments relied on similar rationales of component substitution and predictable design modifications.

4. Key Claim Construction Positions

• Petitioner argued for specific constructions that were central to its invalidity arguments, contending they were compelled by the patent’s specification and prosecution history.
• “connectors of the body” (Claim 1): Petitioner argued this phrase must be construed to mean connectors that are "permanent, non-removable parts of the body." This construction was based on arguments the patentee made during prosecution to distinguish the invention from Rosen, where the patentee characterized Rosen’s connectors as being removably attached rather than integral parts of a block body.
• Preamble Terms (Claims 1, 12, 18, 26): Petitioner asserted that preamble terms like “a building block” and “an illuminated toy building block set” merely stated the intended purpose and did not impose substantive limitations on the claims, as the body of the claims fully set forth the invention.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-27 of the ’558 patent as unpatentable under 35 U.S.C. §§ 102 and 103.