PTAB

IPR2018-00042

Dynacraft BSC Inc v. Mattel Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Ride-On Vehicle with Blow-Molded Wheel
  • Brief Description: The ’543 patent relates to children's ride-on vehicles that include blow-molded plastic wheels. The core inventive concept is a wheel with "undercut treads," where the tread surface has raised portions and recessed portions, and the difference in radial distance between these portions meets a specific dimensional threshold (the larger of 1/8 inch or 0.1% of the wheel's diameter).

3. Grounds for Unpatentability

Ground 1: Obviousness over Damon, Perego, and Handbook - Claims 1, 5-8, and 10 are obvious over Damon, Perego, and the Plastic Blow Molding Handbook.

  • Prior Art Relied Upon: Damon (Application # 2005/0056474), Perego (Patent 5,924,506), and the Plastic Blow Molding Handbook (1990).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Damon disclosed all basic elements of the ride-on vehicle recited in independent claim 1, including the body, seat, drive assembly, and steering assembly. Perego was asserted to teach a similar toy vehicle with molded plastic wheels that feature undercut treads, disclosing every element of the claimed wheel structure except for the specific dimensional threshold of the undercut. The Plastic Blow Molding Handbook was introduced to teach that creating blow-molded parts with significant undercuts, including dimensions meeting or exceeding the claimed threshold, was well-known in the art using movable mold sections (slides). Petitioner contended the patent owner overcame an obviousness rejection during prosecution by incorrectly asserting that such large undercuts could not be produced by known methods. The dependent claims (5-8, 10) were argued to be obvious for the same reasons, as they recite additional wheel features or assembly components also found in the combination of Damon and Perego.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Damon and Perego to create a more realistic toy vehicle. The express motivation, taught by references like DeGraaff (Patent 4,513,981), was to simulate the appearance of adult vehicles, which have deep, aggressive treads like those on Perego's wheels. The Handbook provided the known method for manufacturing the desired deep undercut tread features in a blow-molded wheel.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the Handbook described established techniques for creating deep undercuts in blow-molded parts using movable slides—the same technique described in the ’543 patent itself. Applying this known manufacturing process to the wheel design of Perego was a straightforward implementation of known principles.

Ground 2: Obviousness over Damon and Felker - Claims 1, 5-8, and 10 are obvious over Damon and Felker.

  • Prior Art Relied Upon: Damon (Application # 2005/0056474) and Felker (Patent 3,910,332).
  • Core Argument for this Ground:
    • Prior Art Mapping: As in Ground 1, Damon was argued to disclose the foundational ride-on vehicle. Felker, which discloses a molded rubber tire for an adult vehicle, was asserted to teach a tread surface with an undercut between 5/16 and 7/16 inch. This dimension inherently meets the claimed threshold of being "greater than the larger of 1/8 inch and 0.1% of the wheel body’s diameter." Petitioner asserted that the "blow-molded" limitation of the claims should be given no patentable weight (see Section 4), making Felker's molded tire directly applicable. The combination of Damon's vehicle with Felker's tread design allegedly rendered claim 1 and its dependent claims obvious.
    • Motivation to Combine: The motivation was the same as in Ground 1: to make the children's ride-on vehicle taught by Damon more realistic by incorporating features of a full-sized vehicle tire. A POSITA would look to prior art for adult tires, such as Felker, to find suitable tread designs to simulate.
    • Expectation of Success: A POSITA would have reasonably expected success in applying the tread design from Felker to the wheels of Damon's vehicle. The ’543 patent analogizes its toy wheels to passenger car tires, and applying a known tread size from a standard tire to a toy wheel was argued to be well within the ordinary skill in the art.

4. Key Claim Construction Positions

  • "blow-molded": Petitioner dedicated significant argument to construing "blow-molded" as a product-by-process limitation that should be afforded no patentable weight. This construction was central to the invalidity arguments, particularly for Ground 2 where the Felker reference discloses a molded rubber tire, not a blow-molded plastic one.
  • Rationale for Construction:
    • The ’543 patent specification expressly states that the wheels could be formed by other suitable processes, such as injection molding, conceding that the process is not essential to the final product.
    • During prosecution of the ’543 patent, the Patent Owner elected claims drawn to the vehicle in response to a restriction requirement, effectively conceding that the vehicle claims were patentably distinct from the process claims because the claimed wheel could be made by other processes.
    • In a related application, the Patent Owner again treated "blow-molded" as a process limitation to distinguish prior art. Petitioner argued that under the doctrine of prosecution history estoppel, the Patent Owner could not reverse its position and now argue the term imparts a structural limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 5-8, and 10 of Patent 7,621,543 as unpatentable.