PTAB

IPR2018-01673

Mattel Inc v. Spin Master Ltd

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Transformable Toy
  • Brief Description: The ’073 patent describes a rollable toy, such as a ball, that can transform from a closed first shape to an open second shape. The transformation is initiated by a spring-based mechanism that is released by a magnetically-actuated latch when an external magnet is brought into proximity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tomiyama and Shannon - Claims 1-20 are obvious over Tomiyama in view of 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: Petitioner argued that Tomiyama disclosed a "self-destructing" toy tank that transformed via a magnetically-actuated latch. When the tank drove over a landmine-shaped magnet, an internal magnet was pulled, releasing a spring-loaded "push-out body" (an auxiliary component) that caused the tank's turret to pop off. Petitioner contended that Shannon disclosed a toy transformable from a rollable ball shape into a rabbit doll figure. Shannon's toy used spring-loaded appendages (auxiliary components) that were held in the closed ball position by a fastener and sprang open upon release. The combination of Tomiyama’s magnetic latch mechanism with Shannon’s rollable, transforming ball body allegedly disclosed all limitations of the independent claims.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to create a more interesting and easy-to-use transformable toy. Both references operated in the same field and sought to entertain children with a surprise transformation. Petitioner argued a POSITA would find it obvious to replace Shannon’s generic fastener with Tomiyama’s magnetically-releasable latch to achieve a new play pattern where a ball rolls over a magnetic activator and springs open. Shannon itself suggested that various fasteners, including magnets, could be used.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved applying a known type of fastener (a magnetic latch) to a known type of toy (a spring-loaded transformable ball) to achieve the predictable result of magnetic activation.

Ground 2: Anticipation by Wilhelm - Claims 1-3, 5-6, and 8 are anticipated by Wilhelm

  • Prior Art Relied Upon: Wilhelm (Patent 6,592,427).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wilhelm taught every limitation of the challenged claims in a single reference. Wilhelm disclosed a toy grain car (a rollable "first toy component") containing a "rotatable load" (an "auxiliary component") that was spring-loaded. In its closed position, the car appeared empty. The rotatable load was held in place by a release mechanism ("locking component") that included a flexible partition with an attached magnet ("first magnetically-responsive member"). When the grain car entered a grain loader ("second toy component") containing other magnets ("second magnetically-responsive member"), the magnetic attraction moved the flexible partition, releasing the latch. The spring then forced the rotatable load to flip over, revealing a simulated grain surface and making the car appear full (the "open position"). Petitioner contended this single device met all claim limitations, including a rollable body, a spring-biased auxiliary component, and a complete magnetically-actuated latch system.

Ground 3: Obviousness over Aprile and Shannon - Claims 1-20 are obvious over Aprile in view of Shannon

  • Prior Art Relied Upon: Aprile (International Publication No. WO 2005/003489) and Shannon (Patent 5,310,378).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Aprile disclosed a simple, low-cost, magnetically-actuated latch for use in toys like containers or dolls. The latch, biased by a spring, held a toy container's lid closed until an external magnet was brought near, causing the latch to release and the lid to spring open. As in Ground 1, Shannon provided the underlying concept of a rollable ball toy with spring-loaded appendages that transformed into a figure upon release of a fastener.
    • Motivation to Combine: The motivation to combine Aprile and Shannon was similar to that for combining Tomiyama and Shannon. A POSITA would be motivated to use Aprile's simple and effective magnetic latch in Shannon's transformable ball. Aprile explicitly taught that its latch was beneficial for applications requiring low cost, small dimensions, and ease of installation, all of which are desirable characteristics for a mass-produced ball toy. The combination was presented as a predictable use of a known fastener to achieve a known result in a known toy.
    • Expectation of Success: A POSITA would expect success in implementing Aprile’s simple latch in Shannon’s toy, as it was a straightforward substitution of one type of fastener for another to achieve the predictable function of magnetic release.

  • Additional Grounds: Petitioner asserted an additional anticipation challenge against claims 1-3 and 5-8 based on Tomiyama alone, arguing that if "rollable" is construed to include vehicles on wheels, Tomiyama's toy tank taught every element.

4. Key Claim Construction Positions

  • "Rollable": This term was central to the invalidity arguments. Petitioner argued for a construction where "the toy as a whole moves forward by rotating around an axis or point, like a ball." This construction was based on the specification's emphasis on "spherical shapes" for use in "shooting-type" games. Petitioner contrasted this with a broader construction, allegedly asserted by the Patent Owner in related litigation, that would include vehicles that move via the rolling of wheels but do not roll themselves. The validity of the anticipation and obviousness arguments involving the Tomiyama and Wilhelm toy vehicles depended heavily on the adoption of this broader construction.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’073 patent as unpatentable.