PTAB

IPR2017-01272

Spin Master Ltd v. SPHero Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Self-Propelled Device with Magnetically Coupled Accessory
  • Brief Description: The ’920 patent discloses a self-propelled spherical device with an internal drive system. The device is magnetically coupled to an external accessory that remains on top of the spherical housing as it rolls.

3. Grounds for Unpatentability

Ground 1: Obviousness over Smoot and Wilson - Claims 1-3, 6-8, 11, 13-18, and 21 are obvious over Smoot in view of Wilson.

  • Prior Art Relied Upon: Smoot (Patent 8,269,447) and Wilson (Application # 2012/0168240).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Smoot disclosed all key elements of independent claim 1: a self-propelled spherical device with an internal drive system, an internal component (support beam) extending from the drive system, and an external accessory (exterior drive) magnetically coupled to an internal magnet. Smoot’s device is controlled by an internal controller that receives commands from an unspecified "external source." Wilson was cited to teach the claimed external "controller device," such as a smartphone, that wirelessly communicates user commands to the spherical device. Petitioner asserted that Smoot inherently disclosed the angular displacement of its internal support beam during acceleration, a key limitation of claim 1. For dependent claims, Wilson was argued to teach using sensors for feedback control (claim 11), actuators for emotive actions like spinning (claims 13-14), and LEDs for illumination (claims 15-16).
    • Motivation to Combine: A POSITA would combine Wilson with Smoot because Smoot expressly taught that its device could receive commands from an "external source" for "outside control." Wilson provided a well-known example of such an external source: a user-operated computing device for remote control. The combination would predictably enable an operator to control Smoot's device, which already contained the necessary wireless communication and processing hardware to receive such commands.
    • Expectation of Success: Given the widespread use of remote controls for motorized devices, a skilled artisan would have had a high expectation of success in using Wilson’s external controller to provide the command signals for Smoot’s spherical device.

Ground 2: Obviousness over Smoot, Wilson, and Van Kommer - Claims 9 and 10 are obvious over the combination of Smoot, Wilson, and Van Kommer.

  • Prior Art Relied Upon: Smoot (Patent 8,269,447), Wilson (Application # 2012/0168240), and Van Kommer (Patent 6,584,376).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the Smoot/Wilson combination to address the limitations of claims 9 and 10, which required the hardware component to receive user input directly (e.g., voice commands) and maneuver the device accordingly. Van Kommer was introduced because it taught a mobile robot that receives and interprets direct user voice commands (e.g., 'forward', 'left') via a microphone and voice analysis module to control its movement.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to add Van Kommer’s voice control technology to the Smoot/Wilson system to improve the operator's control flexibility and make the device easier for laypersons to use. Voice control was a well-known technology for improving user interaction with robotic devices.
    • Expectation of Success: The integration of Van Kommer’s voice control circuitry into Smoot's internal controller was presented as a predictable modification. A skilled artisan would expect success in enabling the device to respond to voice commands, as it would not alter the fundamental mechanical operation of the spherical robot.

  • Additional Grounds: Petitioner asserted two additional grounds (Grounds 2 and 4) that added the "knowledge of a Person Having Ordinary Skill in the Art" to the primary combinations of Smoot/Wilson and Smoot/Wilson/Van Kommer, respectively. These grounds relied on the same core mapping and motivation arguments.

4. Key Claim Construction Positions

  • "a contact surface having a radius of curvature that conforms to an exterior surface of the spherical housing" (claim 1): Petitioner argued this term should be construed to include "a surface closest to the outer surface of the spherical housing that is formed to correspond to the outer surface," based on language in the specification.
  • "wherein the hardware component causes the drive system to perform a feedback action in response to an event or condition" (claim 11): Citing the specification's discussion of using sensors and a closed-loop controller to maintain velocity and control turns, Petitioner proposed this term requires "the hardware component performing feedback control to control operation of the drive system based on a sensed event or condition."
  • "wherein the processor illuminates... as a feedback response to a user interaction" (claim 16): Petitioner argued that because the ’920 patent specification did not define this term, its meaning should be informed by an incorporated parent application (’841 application). This parent application disclosed that a user gesture could be interpreted as a command to "alter illumination output," which Petitioner contended should be included in the term's construction.

5. Key Technical Contentions (Beyond Claim Construction)

  • Effective Filing Date: Petitioner argued the correct priority date for all challenged claims was August 13, 2014, not the earlier provisional date of January 5, 2011. This was based on the assertion that the "external accessory device" and its magnetic coupling were new matter first introduced in the ’235 application filed on that date. This later priority date was critical, as it made Smoot (2012) and Wilson (2012) valid prior art references under the AIA.
  • Inherent Disclosure in Smoot: A central technical argument, supported by an expert declaration, was that Smoot inherently disclosed the claim limitation of an "internal component to angularly displace" during maneuvering. Petitioner argued that the acceleration of Smoot's internal locomotive driver would necessarily cause its rigidly attached vertical support beam to pitch and displace from the vertical axis, even though this effect was not explicitly described in Smoot.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 6-11, 13-18, and 21 of the ’920 patent as unpatentable.