PTAB

IPR2019-00901

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 ’058 patent discloses a toy that transforms from a closed, "rollable first position" to an open second position. The transformation is triggered when a magnetically-releasable latch is activated by an external magnet, which allows a spring-loaded auxiliary component to move and open the toy.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-5 by Wilhelm

  • Prior Art Relied Upon: Wilhelm (Patent 6,592,427).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wilhelm, which discloses a toy grain car and grain loader, teaches every limitation of claims 1-5. Wilhelm’s toy vehicle is a "transformable toy" that changes from an "empty" configuration (first position) to a "full" configuration (second position). An internal, spring-loaded "rotatable load" (the auxiliary component) is held in the first position by a latch. When the car enters the grain loader (the second toy component), magnets in the loader attract a magnet within the car's latch mechanism, releasing the latch and allowing the spring to rotate the load to the second position. Petitioner contended that the grain car moving on its wheels satisfies the "rollable" limitation under the Patent Owner's broad construction of the term.
    • Key Aspects: This ground asserted that a toy vehicle moving on wheels meets the "rollable" limitation, directly challenging the patent's alleged point of novelty over prior art vehicles that used similar magnetic latches.

Ground 2: Obviousness of Claims 1-5 over Tomiyama and 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: Petitioner asserted that Tomiyama discloses all elements of the claims except, potentially, a truly spherical or ball-like "rollable" shape. Tomiyama teaches a "self-destructing" toy tank with a spring-loaded "push-out body" (auxiliary component) held by a latch. When the tank drives over a magnetic "landmine" (second toy component), a magnet in the tank is pulled, releasing the latch and causing the push-out body to pop the tank's turret off. Shannon was argued to supply the "rollable" element, as it discloses a toy that transforms from a spherical ball shape into a rabbit doll when a fastener is released. Shannon explicitly suggests that various fasteners, including magnets, could be used.
    • Motivation to Combine: A POSITA would combine these references to enhance play value. Both references disclose transformable toys designed to surprise and entertain children. A POSITA would combine Tomiyama's known magnetic release mechanism with Shannon's known rollable ball form to create the predictable result of a ball that rolls toward a magnet and springs open. Tomiyama itself suggests its mechanism can be used in other vehicle types, and Shannon suggests various fasteners can be used for its ball, motivating the substitution.
    • Expectation of Success: Petitioner argued there would be a high expectation of success, as the combination involves the simple substitution of a known element (a ball shape from Shannon) for a similar element (a tank shape from Tomiyama) to achieve a predictable and more entertaining result without changing the function of the magnetic latch mechanism.

Ground 3: Anticipation of Claims 1-5 by Tomiyama

  • Prior Art Relied Upon: Tomiyama (Japanese Pat. No. 38-009155).

  • Core Argument for this Ground:

    • Prior Art Mapping: As an alternative to the obviousness ground, Petitioner argued that Tomiyama alone anticipates all claims under the Patent Owner's broad construction of "rollable." The "self-destructing" tank is a "transformable toy" with a body and a "push-out body" (auxiliary component) that moves from a first position to a second position. The tank includes a full locking assembly with a magnetically-responsive member, an elastic element (spring), and a latch/keeper. A second toy component (a magnetic "landmine") engages the tank to generate a magnetic force, releasing the latch. Under a construction where "rollable" includes vehicles that move on wheels or treads, Tomiyama’s tank meets this limitation and anticipates all claims.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-5 based on Aprile (WO 2006/051393) in view of Thompson (Patent 3,687,452). Aprile taught a magnetically-actuated latch for a toy container, and Thompson taught a rollable ball that springs open via a mechanical latch. The motivation was to combine Aprile's magnetic latch with Thompson's entertaining rollable ball form.

4. Key Claim Construction Positions

  • "Rollable First Position": This term was central to Petitioner's arguments.
    • Petitioner argued for two alternative constructions based on the prosecution history and the Patent Owner's litigation positions.
    • Narrow Construction: The term should mean a shape that moves forward by rotating around a point or axis, such as a sphere or ovoid, consistent with the patent's specification. Under this construction, the claims are obvious over Tomiyama (tank with magnetic latch) in view of Shannon (rollable ball).
    • Broad Construction: The Patent Owner allegedly argued in parallel litigation that "rollable" includes vehicles that move on wheels or treads without the main body itself rotating. Petitioner argued that if this broad construction is adopted, then the claims are anticipated by prior art vehicles like the grain car in Wilhelm and the tank in Tomiyama, both of which utilize magnetic release latches.

5. Relief Requested

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