PTAB

IPR2017-00030

CHOIROCK CONTENTS FACTORY Co., Ltd. v. Saucier, Aldric

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1. Case Identification

2. Patent Overview

  • Title: TRANSFORMABLE TOY
  • Brief Description: The ’504 patent describes a transformable toy that changes from a compact, closed configuration (e.g., a sphere) to an open, revealed configuration (e.g., a figurine). The toy comprises two primary movable members hingedly connected, which pivot to reveal internal components like a display member and multiple "revealers" representing features like a head, arms, and feet.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-11 under §102 by Maruyama '693

  • Prior Art Relied Upon: Maruyama (JP Publication No. S60-128693) (’693 reference).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’693 reference, which discloses a "Shape-changing toy," teaches every limitation of claims 1-11. Petitioner asserted that the main body (1) of the Maruyama toy is the claimed "first movable member" and the leg portions (3b) are the "second movable member." These members are hingedly connected via a coupler (2b), allowing movement between a closed spherical state and an open robot state. The robot's body details, formed on the inside surface of the first member, constitute the "display member," and the various appendages that rotate into view—such as the head (1b), arms (2a, 3a), and legs (3b)—are the claimed "revealers." Dependent claims were also argued to be disclosed, including that the revealers have images formed thereon (claim 2) and that the movable members form a semi-circular shape (claim 10).

Ground 2: Anticipation of Claims 1-9, 11, and 13 under §102 by Obara

  • Prior Art Relied Upon: Obara (Patent 4,516,948).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Obara, which describes a toy that reconfigures from a tractor unit into a humanoid robot, anticipates the challenged claims. The tractor's body/cab (11) was mapped to the "first movable member," and the chassis (13) was mapped to the "second movable member." These are connected by a pivoting coupler (13a) that allows transformation. Petitioner argued Obara discloses a plurality of revealers, including the head (41), arms (12, 14, 40), and a base (13d), which are all concealed in the vehicle form and revealed in the robot form. Petitioner further argued Obara discloses the "cubic shape" limitation of claim 13, as the primary movable members (11 and 13) are generally squared off.

Ground 3: Obviousness of Claims 1-11, 13-14 under §103 over Maruyama ’258 in view of Obara

  • Prior Art Relied Upon: Maruyama (Patent Des. 287,258) (’258 patent) and Obara (Patent 4,516,948).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that the ’258 patent, a design patent for a "Reconfigurable Toy Robot," shows a toy visually identical to that in the ’504 patent, disclosing the core structure of two hinged, semi-circular movable members that open to reveal a figurine. To the extent that any functional or dynamic limitations—such as the requirement that revealers be "rotatably connected"—are not explicitly clear from the static images of the ’258 design patent, Petitioner argued these features are taught by Obara. Obara explicitly teaches making components like the head, arms, and feet movably or rotatably connected to the main body.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine the teachings of Obara with the design of the ’258 patent to enhance its functionality. Since the ’258 patent shows a "reconfigurable" toy, a POSA would have been motivated to incorporate known methods for articulation, such as the rotatably connected components taught by Obara, to increase the toy's configurability and play value.
    • Expectation of Success: A POSA would have had a reasonable expectation of success in this combination, as it involved applying conventional articulation techniques (from Obara) to a toy structure (from the ’258 patent) to achieve the predictable result of a more poseable and transformable toy.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 12, arguing it would have been obvious to add the claimed "lock" by modifying the combination of Maruyama ’258 and Obara with a locking mechanism disclosed in Matsuda (U.K. Patent Application No. GB2184663).

4. Key Claim Construction Positions

  • "first movable member" and "second movable member": Petitioner argued these terms should be construed broadly as "discrete components of varying shapes and sizes capable of pivoting towards or away from each other." This construction prevents the claims from being limited to the semi-circular shapes of the preferred embodiment, thereby broadening the scope to cover prior art like Obara's cubic-shaped toy.
  • "moving means" and "coupler": Petitioner argued these terms require a connection via one or more intermediate members that allow independent movement of the first and second movable members. This construction was used to map onto the specific linkage structures in the prior art that are not simple direct hinges.
  • "hingedly connected": For claim 1, which lacks a "coupler," Petitioner proposed a broad construction for "hingedly connected" to mean "any hinged connection...whether they are directly connected...or connected...via one or more intermediate structures." This ensures that prior art with either direct or indirect hinging mechanisms would meet the limitation.
  • "revealers": Petitioner proposed a broad construction of "any surface portion that is moved to expose to viewing that portion that previously was not exposed." This construction supports the argument that any part of the prior art toys that unfolds or rotates into view (e.g., arms, legs, head) meets the claim limitation, regardless of its specific form.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-14 of the ’504 patent as unpatentable.