PTAB
IPR2017-00030
Choirock Contents Factory Co Ltd v. SauCier ALDRIC
Key Events
Petition
Table of Contents
petition
1. Case Identification
- Case #: IPR2017-00030
- Patent #: 7,306,504
- Filed: October 6, 2016
- Petitioner(s): Choirock Contents Factory Co., Ltd.
- Patent Owner(s): Spin Master, Ltd.
- Challenged Claims: 1-14
2. Patent Overview
- Title: Transformable Toy
- Brief Description: The ’504 patent discloses a transformable toy that changes from a first, closed configuration (e.g., a sphere) to a second, open configuration revealing a figurine. The toy comprises two primary movable members that are hingedly connected and pivot to reveal a display member and multiple movable "revealers" which form parts of the figurine, such as a head, arms, and feet.
3. Grounds for Unpatentability
Ground 1: Anticipation of Claims 1-11 under 35 U.S.C. §102
- Prior Art Relied Upon: Maruyama ’693 (Japanese Patent Publication No. S60-128693).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Maruyama ’693, which discloses a toy that transforms from a spherical body into a robot, teaches every element of claims 1-11. The robot's main body was mapped to the "first movable member," while its leg portions were mapped to the "second movable member." These members were shown to be hingedly connected via an intermediate coupler that satisfied the "moving means" limitation. Petitioner further asserted that the various robot components that emerge upon transformation—such as the head, arms, and legs—constituted the claimed "plurality of revealers" connected to a "display member" (the robot's body).
Ground 2: Obviousness of Claims 1-11 and 13-14 over Maruyama ’258 in view of Obara
- Prior Art Relied Upon: Maruyama ’258 (Patent Des. 287,258), Obara (Patent 4,516,948).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Maruyama ’258, a design patent, illustrates a reconfigurable toy robot that is visually identical to the embodiment depicted in the ’504 patent. Maruyama ’258 was alleged to disclose the core structure of two movable members that open to reveal a figurine with a head, arms, and feet. To the extent the static images of the design patent did not explicitly teach that these "revealers" were rotatably connected, Petitioner argued that Obara supplied this missing element by teaching a transformable toy with a movably mounted head and articulated arms.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Obara's teachings of movably connected components with the Maruyama ’258 toy to enhance its primary "reconfigurable" function. This modification would improve the toy's configurability and range of motion, which was argued to be a simple combination of known prior art elements to achieve a predictable and desirable result.
- Expectation of Success: A POSITA would have a high expectation of success, as the combination involved incorporating known articulation techniques from one transformable toy (Obara) into another (Maruyama ’258). The high degree of movability already suggested by the various configurations shown in Maruyama ’258 would make this a simple matter of design choice.
Ground 3: Obviousness of Claim 12 over Maruyama ’258 and Obara in view of Matsuda
Prior Art Relied Upon: Maruyama ’258, Obara, and Matsuda (U.K. Patent Application No. GB2184663).
Core Argument for this Ground:
- Prior Art Mapping: Building on the combination of Maruyama ’258 and Obara, this ground introduced Matsuda to teach the locking mechanism recited in dependent claim 12. Matsuda disclosed a "pop-up robot toy" with a specific lock mechanism (a projection engaging a hole) that releasably secures its two movable members in a closed state.
- Motivation to Combine: A POSITA would be motivated to add a releasable lock to the Maruyama ’258 toy to solve the known problem of transformable toys unintentionally opening during play or handling. Adding the locking mechanism from Matsuda would enhance user enjoyment and functionality, representing an obvious design improvement to yield a predictable result.
Additional Grounds: Petitioner asserted an additional anticipation challenge against claims 1-9, 11, and 13 based on Obara.
4. Key Claim Construction Positions
- "hingedly connected": Petitioner argued this term should be construed broadly to mean "any hinged connection...whether they are directly connected at a single hinge point or connected at multiple points via one or more intermediate structures." This construction was crucial for mapping the term onto prior art toys that used intermediate "coupler" or "moving means" structures between the two main body halves.
- "revealers": Petitioner proposed the construction "any surface portion that is moved to expose to viewing that portion that previously was not exposed." This broad, functional definition allowed Petitioner to identify various moving parts of the prior art toys (e.g., arms, legs, head) as satisfying this element, avoiding limitations to any specific shape or structure depicted in the ’504 patent.
5. Relief Requested
- Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of Patent 7,306,504 as unpatentable.
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