Mattel Inc v. Spin Master Ltd

1. Case Identification

• Case #: IPR2018-01674
• Patent #: 9,975,058
• 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 ’058 patent discloses a rollable toy, such as a ball, that transforms from a closed first position to an open second position. The transformation is triggered by the release of a spring-loaded locking assembly that includes a magnetically-responsive member, which actuates when an external magnet is brought into proximity.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 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 discloses every limitation of the challenged claims. Wilhelm teaches a “toy vehicle grain car” that transforms from an “empty” to a “full” configuration. This vehicle is considered "rollable" on its wheels, consistent with a broad construction of the term. The transformation is initiated when the grain car enters a “grain loader” (the second toy component), where magnets in the loader act on a magnet within the car's latch mechanism. This magnetic force releases a spring-loaded “rotatable load” (the auxiliary component), which moves from a first concealed position to a second revealed position, making the car appear full. Petitioner asserted this structure meets all limitations of claims 1-5.

Ground 2: Claims 1-5 are anticipated by Tomiyama

• Prior Art Relied Upon: Tomiyama (Japanese Pat. No. 38-009155).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Tomiyama, which discloses a “self-destructing” tank toy, anticipates all challenged claims. The tank is "rollable" on its treads. It contains a locking assembly with a first magnet. When the tank moves over a second magnet resembling a landmine, the magnetic attraction triggers a latch release. This release allows a spring-loaded “push-out body” (the auxiliary component) to rotate upwards, pushing the tank’s turret off to simulate destruction. Petitioner mapped these elements to the limitations of claim 1, arguing that the dependent claims were also fully disclosed.

Ground 3: Claims 1-5 are obvious over Tomiyama in view of Shannon

• Prior Art Relied Upon: Tomiyama (Japanese Pat. No. 38-009155) and Shannon (Patent 5,310,378).
• Core Argument for this Ground:
  • Prior Art Mapping: Tomiyama taught the core magnetically-actuated, spring-loaded transformation mechanism in a wheeled toy. Shannon taught a toy that transforms from a rollable ball into a rabbit doll when a fastener is released. Petitioner argued that if the term “rollable” is narrowly construed to mean sphere-like rolling (not vehicle movement), Shannon supplies this limitation.
  • Motivation to Combine: A POSITA would combine these references to create a more interesting and surprising toy. Both references are in the same field of transformable toys and address the need for intriguing playthings. Petitioner argued a POSITA would find it obvious to apply Tomiyama’s known magnetic latch mechanism to Shannon’s known rollable ball form. Tomiyama suggested its mechanism could be used for any "desired shape," and Shannon taught that various fasteners, including magnets, could be used.
  • Expectation of Success: The combination would have been a predictable substitution of one known element (a tank body) for another (a ball shape) to achieve a predictable result (a ball that opens magnetically).

Ground 4: Claims 1-5 are obvious over Aprile in view of Thompson

• Prior Art Relied Upon: Aprile (WO PCT/IB2005/003489) and Thompson (Patent 3,687,452).
• Core Argument for this Ground:
  • Prior Art Mapping: Aprile disclosed a magnetically-actuated latch in a toy container or doll that springs open. The container had a partially rounded top but was not fully rollable. Thompson disclosed a fully rollable ball toy composed of two halves that spring open when a mechanical latch is released. Thompson provided the "rollable first position" element.
  • Motivation to Combine: A POSITA would combine Aprile's magnetic latch with Thompson's rollable ball form to improve the functionality and play value of Aprile's toy. Thompson expressly motivated this combination by stating its ball is "well suited to play a great variety of games," and Aprile stated its magnetic latch is usable in many applications. The combination would yield the predictable result of a ball that rolls and opens in response to a magnetic force.
  • Expectation of Success: The modification involved applying a known magnetic release mechanism to a known rollable toy, a straightforward design choice with a high expectation of success.

4. Key Claim Construction Positions

• "Rollable First Position": This term was central to the petition's arguments.
  • Petitioner's Proposed Construction: Petitioner argued the proper construction, based on the specification and prosecution history, is a form that enables an object to move forward by rotating as a whole around a point or axis, like a sphere or ovoid.
  • Alternative Construction: Petitioner acknowledged that the Patent Owner asserted a broader construction in co-pending litigation, which included vehicles that move forward on rotating wheels without the body itself rotating. Petitioner maintained that the challenged claims are unpatentable under either construction, presenting anticipation grounds (Wilhelm, Tomiyama) for the broader wheeled-vehicle construction and obviousness grounds (Tomiyama/Shannon, Aprile/Thompson) for the narrower sphere-like construction.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5 of Patent 9,975,058 as unpatentable.