PTAB

IPR2019-00900

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 ’073 patent discloses a rollable toy, such as a sphere, that transforms from a closed first shape to an open second shape. The transformation is initiated by a magnetically-actuated latch mechanism that, when triggered by an external magnet, releases spring-loaded components of the toy.

3. Grounds for Unpatentability

Ground 1: 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 upon magnetic actuation. The tank included a spring-biased lever ("push-out body") held by a latch, which was released when the tank moved over a separate, landmine-shaped magnet, causing the tank’s turret to pop off. Petitioner contended this taught the core magnetically-actuated, spring-loaded transformation mechanism. Shannon was alleged to disclose a toy that transforms from a rollable ball into a rabbit figure. The rabbit's appendages were spring-loaded and held in the ball shape by a fastener. Shannon explicitly taught that any suitable fastener could be used, including magnets. Petitioner asserted that combining Tomiyama’s magnetic latch with Shannon’s rollable, transforming ball-shaped toy rendered the claimed invention obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references to enhance the play value and create a surprise transformation, a common goal in toy design. Petitioner argued the references themselves suggested the combination: Tomiyama taught its magnetic latch could be used in toys of any "desired shape," which would include a ball, and Shannon taught its rollable toy could use any known fastener, which would include Tomiyama's magnetic latch. A POSA would have found it a simple matter to substitute Shannon’s generic fastener with Tomiyama’s magnetic one to achieve the predictable result of a ball that springs open when rolled over a magnet.
    • Expectation of Success: A POSA would have had a reasonable expectation of success because the combination involved the straightforward application of a known magnetic release mechanism to a known type of transforming toy for its intended purpose. No special or unexpected modifications were required.

Ground 2: 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: This ground presented an alternative to Tomiyama, arguing that Aprile disclosed a simpler, more direct magnetic latch mechanism for a toy container or doll. Aprile's latch, biased by a spring, held a lid closed until an external magnet was brought into proximity, causing the latch to release and the lid to spring open. Petitioner argued that Aprile taught its latch was particularly useful for applications requiring low cost, small size, and ease of installation. Combining this simple, known magnetic latch with Shannon’s rollable, spring-loaded ball would render all challenged claims obvious. The core logic paralleled the Tomiyama/Shannon combination, but with Aprile providing an even more straightforward and commercially desirable latching mechanism.
    • Motivation to Combine: The motivation was substantially similar to the first ground: to apply a known magnetic latch to a known transforming toy to achieve a predictable result. Petitioner emphasized that Aprile’s teachings on the benefits of its simple, low-cost latch would have strongly motivated a POSA to incorporate it into a mass-market toy like Shannon's transforming ball. The combination was presented as an obvious design choice to create an intriguing, magnetically-activated toy.
    • Expectation of Success: Success was expected because it was a predictable substitution of one known fastener type (Aprile's magnetic latch) for another (Shannon's generic fastener) to achieve the known function of magnetically releasing a spring-loaded mechanism.

  • Additional Grounds: Petitioner asserted additional grounds, including that claims 1-3 and 5-8 are anticipated by Wilhelm (Patent 6,592,427) and that claims 1-3 and 5-8 are anticipated by Tomiyama. These grounds relied on the argument that each reference alone taught every element of the respective claims.

4. Key Claim Construction Positions

  • "Rollable": Petitioner argued this term should be construed to mean "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 repeated emphasis on "spherical shapes" for "shooting-type" games. Petitioner contended that the Patent Owner's broader interpretation—which would include vehicles that move on wheels without the body itself rotating—was inconsistent with the patent's disclosure and would render the claims indefinite. Petitioner addressed the invalidity of the claims under both constructions.
  • "Latch" and "Keeper": Petitioner proposed these terms be construed functionally as "elements which, in combination, engage each other to maintain a movable element in a position." This construction was based on the functional descriptions provided in the specification for the locking component.

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.