PTAB

IPR2013-00120

LaRose Industries LLC v. CapRiola Corp

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Illuminated Toy Building Structures
  • Brief Description: The ’558 patent discloses illuminated toy building blocks designed for construction sets. Each block features a non-opaque body, at least two integral mechanical connectors (one male, one female), and two internal electrical conductors that traverse the body to connect an LED light source to the external connectors, allowing power to be transmitted between blocks.

3. Grounds for Unpatentability

Ground 1: Obviousness Over Teller and Rosen - 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 discloses all limitations of the challenged claims except for the use of a Light Emitting Diode (LED), instead teaching a generic "lamp" as the light source. Teller’s toy building modules include a light-transmissive body, male and female electrical connectors, and internal conductors. Critically, Petitioner asserted that Teller explicitly teaches the use of a "single bipolar connector, similar to a telephone jack," which combines positive and negative poles into one unit. Rosen was cited as a secondary reference that clearly discloses using LEDs within similar toy building blocks.
    • Motivation to Combine: Petitioner contended that the Examiner only allowed the ’558 patent after the patentee misrepresented that Teller failed to teach a single bipolar connector. With that alleged misrepresentation corrected, Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to make the simple substitution of the outdated lamp in Teller with the more efficient, durable, and commonly used LED taught by Rosen. This modification would improve the illumination of the toy, a predictable and desirable outcome.
    • Expectation of Success: A POSITA would have had a high expectation of success in replacing Teller's lamp with Rosen's LED, as it involved substituting one known light source for another to achieve a known benefit within the same field of toy construction sets.
    • Key Aspects: The central thrust of this ground was that the patent was issued based on a flawed premise created by the patentee during prosecution, and that correcting this understanding of the Teller reference renders the claims obvious.

Ground 2: Unpatentability Over Doherty - Claims 1-6, 8-22, 24, 26, and 27 are anticipated by Doherty; Claims 7, 23, and 25 are obvious over Doherty 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:

    • Prior Art Mapping: Petitioner asserted that Doherty, a reference not considered during prosecution, anticipates the majority of the challenged claims. Doherty was shown to disclose building blocks with translucent plastic bodies, three male and three female mechanical connectors, internal circuit boards that serve as electrical conductors, and an integrated LED light source. The connectors are described as complementary for mechanical and electrical connection. For the remaining claims (e.g., claim 7, which requires a 90-degree bend), Petitioner argued they are obvious by modifying Doherty's blocks with features known from other references.
    • Motivation to Combine (for §103 grounds): While Doherty teaches cubical and cylindrical blocks, it does not explicitly show a 90-degree bent block. Petitioner argued a POSITA would combine Doherty with Rosen, which teaches using connectors like "elbows in any angle," or with Taylor, which discloses a 90-degree light block. The motivation would be to increase the versatility and variety of shapes that could be built, a fundamental goal in the art of construction toys.
    • Expectation of Success: Combining Doherty’s block design with a known elbow or bend element from Rosen or Taylor was presented as a predictable design modification that would have yielded the claimed bent block with a high expectation of success.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 1-27 are anticipated or obvious over Atomic Blox (a printed publication related to the Doherty invention); anticipated or obvious over Lie (Patent 5,020,253) alone or in view of Rosen; and obvious over Taylor (Patent 4,096,379) in view of Rosen.

4. Key Claim Construction Positions

  • "connectors of the body" / "block having... connectors" / "body comprising... connectors": Petitioner argued that, based on the patentee's own statements during prosecution to distinguish the Rosen reference, these terms must be construed to mean that the connectors are permanent, non-removable parts of the block's body. This construction was central to Petitioner's argument, as the patentee had previously distinguished Rosen on the basis that Rosen’s connectors were removably attached rather than integral parts of a single body.

5. Relief Requested

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