PTAB

IPR2018-00754

Lego Systems Inc v. FigureFun LLC

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1. Case Identification

2. Patent Overview

  • Title: Gaming Machine and System
  • Brief Description: The ’276 patent discloses a gaming machine that interacts with physical tokens containing a built-in IC chip. The system is designed to read game and player data from a token, transmit that data to an external server for management, and use the token to influence gameplay.

3. Grounds for Unpatentability

Ground 1: Obviousness over Levy and Lee - Claim 9 is obvious over Levy in view of Lee

  • Prior Art Relied Upon: Levy (Patent 5,190,285) and Lee (Patent 6,460,851).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Levy disclosed a video game system that met most limitations of claim 9. Levy's system utilized "intelligent" game pieces (which could be figurines) with re-programmable memory, a game board with an information reader (a card reader with an upward-facing slot), a display device showing game progress, and a data transmitter (a UART circuit) to couple the reader to a processor. However, Levy's memory was integral to its game piece. Petitioner asserted that Lee remedied this deficiency by disclosing a system where a transducer containing identification technology (a "token") could be detachably attached to a preexisting action figure.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Levy and Lee to improve the playability and commercial appeal of Levy's system. Lee provided an explicit motivation for making the electronic component detachable: it allows a single token to be used with a variety of preexisting action figures a child may already own. Applying this known technique to Levy's system would be a simple and logical step to enhance its functionality in a predictable way.
    • Expectation of Success: A POSITA would have a high expectation of success in creating a detachable memory token for Levy's figures, as it involved combining known components for their intended purposes to achieve a predictable improvement in modularity and user experience.

Ground 2: Obviousness over Mawle and Lee - Claim 9 is obvious over Mawle in view of Lee

  • Prior Art Relied Upon: Mawle (Patent 7,081,033) and Lee (Patent 6,460,851).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Mawle disclosed an interactive toy figure with an integral integrated circuit for storing game-related information. Mawle’s system included a game device with an upward-facing recess to receive the figure, a reader to download information from the figure’s memory, and a connector for linking to other game devices for multiplayer gameplay (inherently requiring a data transmitter). Like Levy, Mawle's memory component was not detachable from the figure. Lee, as in the previous ground, taught a game system using a token with identification circuitry that is attachable to and detachable from a figure.
    • Motivation to Combine: A POSITA would be motivated to modify Mawle’s design to incorporate Lee's detachable token. The rationale was to gain the recognized benefit of interchangeability. Lee's teaching provided a clear path to improving a system like Mawle’s by separating the electronic identity from the physical figure, allowing one electronic component to power an entire collection of toys. This would make the system more flexible and cost-effective for consumers.
    • Expectation of Success: The combination was presented as the application of a known technique (Lee's detachable token) to a similar device (Mawle's integrated-memory toy) to achieve the predictable advantage of modularity.

Ground 3: Obviousness over White and Lee - Claim 9 is obvious over White in view of Lee

  • Prior Art Relied Upon: White (Patent 6,650,870) and Lee (Patent 6,460,851).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that White disclosed a toy and game apparatus comprising a base unit and a separate character figure. The figure contained a passive tag with memory (an IC chip) and was placed in an upward-facing recess on the base unit. The base unit read information from the tag and included a display, a speaker, and an I/O interface for connection to a remote computer (acting as a data transmitter). Again, the memory tag was integral to the figure. Lee’s teaching of a detachable token was asserted to supply the missing element.
    • Motivation to Combine: A POSITA would combine White and Lee for the same reasons as with the prior combinations: to enhance the system's value and play pattern. Lee's explicit motivation—allowing a token to be used with various preexisting figures—was directly applicable to improving White’s system by making the electronic tag a separate, reusable component.
    • Expectation of Success: A POSITA would reasonably expect to successfully modify White's figure to use a detachable tag based on Lee's teachings, as it would be a straightforward design choice to achieve a known benefit.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Levy alone and Mawle alone, arguing these references taught nearly all claim limitations and that any missing elements would have been obvious modifications.

4. Key Claim Construction Positions

  • Petitioner argued for a construction where the terms "token" and "action figure" recited in the preamble of claim 9 are not positive limitations of the claimed "gaming machine." Instead, they merely describe the intended environment of use.
  • This construction was central to Petitioner's argument because if the token and figure are not part of the claimed invention, then the limitation requiring the action figure to be attached to the token in a "detachable manner" would not be a structural limitation of the gaming machine itself. This would broaden the claim and make it more susceptible to invalidation by prior art that discloses a suitable gaming machine, regardless of how that machine's corresponding game piece is constructed.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claim 9 of the ’276 patent as unpatentable under 35 U.S.C. §103.