Mattel Inc v. Spin Master Ltd

1. Case Identification

• Case #: IPR2018-01672
• 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 second shape. The transformation is initiated when a magnetic latch is released by proximity to an external magnetic field, allowing spring-biased components to move into an open position.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tomiyama and Thompson - Claims 1-4 are obvious over Tomiyama in view of Thompson.

• Prior Art Relied Upon: Tomiyama (Japanese Pat. No. 38-009155) and Thompson (Patent 3,687,452).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tomiyama taught the core concept of the invention: a toy (a self-destructing tank) with a magnetically-actuated latch that releases when the toy moves over a magnet, causing a spring-loaded element to pop up. Petitioner asserted that Thompson taught the remaining key element: a toy that is rollable in a first, ball-shaped position and transforms into a non-rollable second position when a latch is released, causing its two halves to spring open. The combination of these references, Petitioner contended, disclosed all limitations of independent claim 1.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Tomiyama's magnetic release mechanism with Thompson's rollable, transforming ball. Both references are in the same field of transformable toys and aim to create an element of surprise. A POSITA would have been motivated to apply Tomiyama’s magnetic actuation to a rollable toy like Thompson’s to increase play value and create the predictable result of a ball that magnetically opens when rolled over a specific surface.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because the combination involved applying a known mechanism (magnetically-releasable latch) to a known type of toy (a rollable, opening ball) to achieve a predictable and expected function.

Ground 2: Obviousness over Tomiyama, Thompson, and Saucier - Claim 5 is obvious over Tomiyama and Thompson in view of Saucier.

• Prior Art Relied Upon: Tomiyama, Thompson, and Saucier (Patent 7,306,504).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Tomiyama and Thompson to further address the limitations of dependent claim 5. Claim 5 adds "at least one second moveable element, hinged to said at least one first moveable element." Petitioner argued Saucier taught this limitation by disclosing a transformable ball toy that opens to reveal a character with additional, secondarily hinged appendages (termed "revealers," such as feet) that also move from a closed to an open position.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to add secondary moving elements, as taught by Saucier, to the base combination of a transforming toy to increase its interactivity, playability, and visual appeal. Petitioner contended this was a common and obvious design choice in the field of transformable toys to make the final revealed shape more complex and interesting.

Ground 3: Obviousness over Tomiyama, Thompson, and Aprile - Claims 1-4 are obvious over Tomiyama and Thompson in view of Aprile.

• Prior Art Relied Upon: Tomiyama, Thompson, and Aprile (WO 2006/051417).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground provided an alternative basis for the limitation in claim 1 requiring the "releasable latch means is provided with a magnet." Petitioner argued that to the extent Tomiyama's more complex, mechanically-linked magnetic release was insufficient, Aprile explicitly taught this feature. Aprile disclosed a simple, low-cost, magnetically-actuated latch for toys where a magnet is placed directly on the latch member itself, which is then moved by an external magnet.
  • Motivation to Combine (for §103 grounds): Aprile explicitly provided motivations for using its latch, including low cost, simplicity, small dimensions, and ease of installation. A POSITA seeking to implement the magnetic release function of Tomiyama in a rollable toy like Thompson would be motivated to use Aprile's simpler, integrated magnetic latch design to simplify the overall mechanism, reduce cost, and make miniaturization easier, which the ’508 patent itself identifies as a design consideration for rollable toys.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Shannon (Patent 5,310,378), which teaches a rollable toy that transforms into a rabbit doll and explicitly suggests magnets as a possible fastener type. These grounds relied on similar rationales of combining known toy features to achieve predictable results.

4. Key Claim Construction Positions

• "Rollable": Petitioner proposed that "rollable" should be construed to mean that the toy as a whole moves forward by rotating around an axis or point, like a sphere or ball. This construction was argued to be consistent with the specification, which contrasts "rollable shapes" with non-rollable items like vehicles on wheels.
• "Latch means" / "Catch means": Petitioner argued these are means-plus-function terms under pre-AIA 35 U.S.C. §112(6). The claimed function is to cooperate to maintain a movable element in a first position until released. Petitioner identified the corresponding structure in the ’508 patent's specification as the "locking component 10" (the latch means) and the portions "5c and 7c" of the movable elements (the catch means).

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5 of Patent 8,500,508 as unpatentable under 35 U.S.C. §103.