Mattel, Inc. v. Spin Master Ltd.

1. Case Identification

• Case #: Unassigned
• Patent #: 8,500,508
• Filed: September 7, 2018
• Petitioner(s): Mattel, Inc.
• Patent Owner(s): Spin Master Ltd.
• Challenged Claims: 1-5

2. Patent Overview

• Title: Transformable Toy
• Brief Description: The ’508 patent discloses a rollable toy, such as a sphere, that transforms from a closed first shape to a non-rollable open second shape. The transformation is triggered by a magnetic latch mechanism that releases when the toy rolls into proximity with an external magnetic or metal material on a playing surface.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Tomiyama and Thompson

• Prior Art Relied Upon: Tomiyama (Japanese Patent Application Publication No. 38-009155) and Thompson (Patent 3,687,452).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tomiyama teaches a toy tank with a magnetically-actuated latch that releases when the tank drives over a magnet, causing a part (the turret) to pop off. Thompson teaches a spring-loaded, rollable toy ball that splits into two halves when a mechanical latch is released. Petitioner contended that combining Tomiyama's magnetic release trigger with Thompson's rollable, transforming ball discloses all limitations of independent claim 1. Specifically, the combined toy would be rollable in its closed state and non-rollable after magnetically triggering its opening, ceasing its roll.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine these references because they are in the same field of transformable toys and share the goal of creating a surprise transformation. A POSITA would be motivated to apply Tomiyama's well-understood magnetic release mechanism to Thompson's rollable toy to create a new and interesting play pattern (a ball that magically pops open) and to enhance interactivity.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in combining these known elements for their intended purposes, as it would be a predictable substitution of one type of latch release (mechanical) with another (magnetic) in a simple toy design.

Ground 2: Claims 1-5 are obvious over Tomiyama, Thompson, and Saucier

• Prior Art Relied Upon: Tomiyama (Japanese Patent Application Publication No. 38-009155), Thompson (Patent 3,687,452), and Saucier (Patent 7,306,504).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Tomiyama/Thompson combination to address the limitations of claim 5. Claim 5 requires "at least one second moveable element" hinged to the first moveable element. Petitioner asserted that Saucier teaches this element, as it discloses a transformable toy ball that opens to reveal a character with additional hinged appendages (called "revealers," such as feet) that can be opened further. Adding Saucier's hinged revealers to the transforming ball of Thompson/Tomiyama would satisfy the limitations of claim 5.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Saucier with the Tomiyama/Thompson toy to increase the toy's interactivity and playability. Adding secondary moving parts is a well-known method for making transformable toys more complex and enjoyable, and a POSITA would be motivated to do so to achieve this predictable result.
  • Expectation of Success (for §103 grounds): A POSITA would be fully capable of incorporating the simple, hinged secondary elements of Saucier into the design of another transformable ball toy with a high expectation of success.

Ground 3: Claims 1-5 are obvious over Tomiyama and Shannon

• Prior Art Relied Upon: Tomiyama (Japanese Patent Application Publication No. 38-009155) and Shannon (Patent 5,310,378).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative to Thompson. Petitioner argued that Shannon discloses a toy that transforms from a rollable ball into a rabbit doll, with hinged appendages that spring open when a fastener is released. Shannon explicitly suggests that magnets are a suitable type of fastener. Petitioner contended the combination of Tomiyama's magnetic release with Shannon's transforming ball teaches the claimed invention, as the resulting toy would be a rollable object held closed by a magnetic latch that opens upon rolling over an external magnet.
  • Motivation to Combine (for §103 grounds): Shannon expressly teaches that "there may be other types of fasteners including magnets," directly motivating a POSITA to incorporate a magnetic release. A POSITA would also be motivated to adapt the shape of Tomiyama’s vehicle to a more intriguing rollable sphere like Shannon’s to achieve a more interesting toy with the predictable result of movement over a magnet by rolling instead of on wheels.
  • Expectation of Success (for §103 grounds): The combination was argued to be a simple substitution of one known fastener type for another to achieve a predictable result, presenting no undue technical difficulties.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Aprile (WO 2006/051417), primarily using Aprile to explicitly teach a simple, low-cost magnetic latch where the magnet is placed directly on the latching element, further simplifying the mechanisms taught in other references.

4. Key Claim Construction Positions

• "Rollable": Petitioner argued for a construction where "rollable" means the toy as a whole moves forward by rotating around an axis or point, like a sphere. This construction is critical because Tomiyama discloses a tank that moves on wheels/treads, which does not "roll" in this manner. Petitioner contended the Patent Owner's asserted broader construction, which would include vehicles on wheels, is improper.
• "Latch means" and "Catch means": Petitioner argued these are means-plus-function terms under pre-AIA §112(6). The function of the "latch means" is to cooperate with the "catch means" to maintain a movable element in a first position until released. The corresponding structure in the ’508 patent was identified as the "locking component 10" and portions "5c and 7c" that engage it.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-5 of the '508 patent as unpatentable.