PTAB

IPR2019-00897

Choirock Contents Factory Co Ltd v. Spin Master Ltd

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1. Case Identification

2. Patent Overview

  • Title: Transformable Toy
  • Brief Description: The ’508 patent discloses a toy designed to transform from a rollable first shape, such as a sphere, into a second, non-rollable shape. The transformation is triggered when the toy rolls over a playing surface containing a magnetic element, which actuates a magnetically-releasable latch mechanism, allowing spring-biased components to deploy and change the toy's form.

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 this combination teaches all limitations of the challenged claims. Tomiyama was asserted to disclose a "self-destructing" tank toy with a main body, a spring-biased "push-out body" (a first moveable element), and a latch mechanism that is released by magnetic force when the toy drives over a magnet on a playing surface. Thompson was asserted to disclose a spring-loaded, rollable ball toy that splits open into a non-rollable shape when its mechanical latch is released. Petitioner contended that Tomiyama teaches the core concept of a toy transforming via a magnetic trigger, while Thompson provides the clear example of a toy that is "rollable" in a first position (a sphere) and "not rollable" in a second position (separated halves).
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSA) would combine these references as both are transformable toys in the same field of endeavor. A POSA reading Tomiyama's suggestion that its mechanism could be applied to other toy shapes would be motivated to use the rollable ball from Thompson to create a more "interesting effect" for children. Combining Tomiyama's magnetic release with Thompson's rollable ball would predictably add a novel play pattern and skill element.
    • Expectation of Success: Petitioner asserted that combining a known magnetic latch with a known transformable rollable toy was a predictable application of prior art elements for their established functions. A POSA would have had a clear expectation of success, as the combination involved applying a known release mechanism to a known type of toy without requiring any undue technical modification.

Ground 2: 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: Petitioner argued that Shannon discloses a toy that transforms from a rollable ball into a non-rollable rabbit doll, with spring-biased appendages that unfold when a fastener is released. Critically, Shannon expressly teaches that various fasteners can be used, "including magnets." Petitioner contended that Shannon provides the rollable, transforming toy, and Tomiyama provides a specific, well-understood implementation of a magnetically-operated latch. The combination of Tomiyama’s specific latch with Shannon’s transforming ball-to-doll toy was argued to render the claims obvious.
    • Motivation to Combine: The motivation was argued to be particularly strong because Shannon’s own disclosure points towards the use of magnets. A POSA seeking to implement Shannon's toy would be directly motivated to look for known magnetic latch mechanisms, such as the one taught by Tomiyama, to achieve the transformation. The combination would be a simple substitution of a specific, known magnetic fastener for the generic fastener suggested by Shannon to produce a more "intriguing, easily used, and easily transformable" toy.
    • Expectation of Success: Petitioner argued that adapting the shape of Tomiyama's vehicle to a rollable sphere like Shannon's is a rudimentary design choice. A POSA would have been fully capable of applying Tomiyama’s latch to Shannon’s toy to achieve the predictable result of a magnetically-activated, transforming ball.

  • Additional Grounds: Petitioner asserted other obviousness grounds that built upon the core combinations by adding references to teach specific limitations.

    • A combination including Saucier (Patent 7,306,504) was asserted to render claim 5 obvious. Saucier was cited for its disclosure of a transforming ball toy with additional, secondarily hinged elements ("revealers" such as feet) to teach the "at least one second moveable element, hinged to said at least one first moveable element" as required by claim 5.
    • A combination including Aprile (WO 2006/051417) was asserted against all claims. Aprile was cited for its explicit teaching of a simple, low-cost magnetic latch where a magnet is placed directly on the latch member itself. Petitioner argued this provided further motivation and a clear path for a POSA to implement the "releasable latch means is provided with a magnet" limitation.

4. Key Claim Construction Positions

  • Petitioner argued for specific constructions of several terms, contending they were critical to the invalidity analysis.
  • "Rollable": Petitioner asserted this term should be construed to mean that the toy as a whole moves forward by rotating around an axis or point, like a ball. Petitioner argued this construction is consistent with the specification's focus on "spherical shapes" and its dictionary meaning. This construction was contrasted with the Patent Owner's allegedly broader litigation position that the term could include vehicles on wheels, where the body does not rotate.
  • "Latch means" and "Catch means": Petitioner contended that these are means-plus-function terms under pre-AIA 35 U.S.C. §112, paragraph 6. The function of the "latch means" was identified as cooperating with the "catch means" to maintain a movable element in a first position until released. The corresponding structure disclosed in the ’508 patent for performing this function was identified as the "locking component 10".

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-5 of Patent 8,500,508 as unpatentable.