Spin Master Inc v. Interactive Play Devices LLC

1. Case Identification

• Case #: IPR2021-00313
• Patent #: 7,491,108
• Filed: December 18, 2020
• Petitioner(s): Spin Master Inc.
• Patent Owner(s): Interactive Play Devices LLC
• Challenged Claims: 18, 20-23, 27-33, 35, 36, 39, 40, 44, 47-50, 54-56, 58, and 60

2. Patent Overview

• Title: Interactive Play Device
• Brief Description: The ’108 patent describes interactive play devices, such as dolls or cars, that personalize their functionality based on past interactions with a player. The device learns from user responses to adapt its operations, allowing it to vary its behavior over time and differ from identical devices that have had different user interactions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mizokawa and Fong - Claims 18, 20-23, 27-28, 30-33, 35, 36, 39, 40, 44, 47-50, 54-56, and 58 are obvious over Mizokawa in view of Fong.

• Prior Art Relied Upon: Mizokawa (Patent 6,249,780) and Fong (Patent 6,309,275).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mizokawa, which discloses an autonomous pet robot that behaves adaptively to a user, teaches nearly all limitations of the challenged independent claims. Mizokawa’s robot develops a "pseudo-personality" and "pseudo-emotions" by processing user inputs from various sensors (auditory, visual, touch), storing this data in a "user information memory," and using it to generate behavioral outputs. Petitioner asserted that Fong, which describes interactive toys, supplies the few remaining elements. Specifically, Fong was cited to teach an explicit housing for the device's components and the use of a microprocessor with computer-readable medium (ROM/RAM) encoded with a software program to control the toy's operation.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Mizokawa's adaptive robot system with Fong's conventional toy construction to create a commercially viable product. Providing a housing as taught by Fong would be a necessary and predictable step to protect the internal electronics and provide a realistic appearance, while using a microprocessor and software was a standard method for implementing the control logic for such interactive devices.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involved implementing Mizokawa’s known control logic on the commonplace and predictable hardware arrangement taught by Fong.

Ground 2: Obviousness over Mizokawa, Fong, and Pagani - Claim 29 is obvious over Mizokawa in view of Fong in further view of Pagani.

• Prior Art Relied Upon: Mizokawa (Patent 6,249,780), Fong (Patent 6,309,275), and Pagani (UK Application # 2,263,573).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claim 29, which depends from claim 28 and adds that the "visual communication" is implemented using a Liquid Crystal Display (LCD), CRT, or light emitting means. While the primary combination of Mizokawa and Fong teaches a device with visual output, Mizokawa does not specify the type of display used. Pagani was introduced because it explicitly teaches an animated face display device for a doll or robot that uses an LCD to provide facial movements.
  • Motivation to Combine: A POSITA looking to implement the visual display in Mizokawa's robot would have been motivated to use an LCD as taught by Pagani. Pagani described this as a "simple but effective face animation device that can be readily manufactured at low cost," providing a known, simple, and inexpensive way to achieve the desired animated facial expressions.

Ground 3: Obviousness over Mizokawa, Fong, and Hampton - Claim 60 is obvious over Mizokawa in view of Fong in further view of Hampton.

• Prior Art Relied Upon: Mizokawa (Patent 6,249,780), Fong (Patent 6,309,275), and Hampton (Patent 6,149,490).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claim 60, which requires a program segment that transforms the device from an initial state to a "desired state" based on derived knowledge. Petitioner argued that while Mizokawa teaches transitioning between various emotional states (e.g., angry, sad, joyful), it does not expressly disclose one state as being more "desired" than another. Hampton was added to teach this concept, as it describes a toy that transitions from an initial "sick" state to a "happy" (desired) state where it is more responsive to the user, based on the user feeding and playing with it.
  • Motivation to Combine: A POSITA would be motivated to incorporate Hampton's concept of transitioning to a more desirable, fully responsive state into Mizokawa's adaptive robot. This modification would predictably enhance the toy’s life-like qualities and entertainment value, encouraging user interaction to achieve the "happy" state and thereby increasing user satisfaction.

4. Key Claim Construction Positions

• "knowledge information": Petitioner adopted the district court’s construction of this term as "data learned, retained, or understood." This construction is central to mapping prior art disclosures of storing and processing user interaction data to the claims.
• "housing is in the form of...": Petitioner argued that claim limitations reciting the ornamental form of the housing (e.g., "a doll, animal, action figure") are purely ornamental, have no mechanical function, and should be given no patentable weight in a utility patent application.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The core arguments were that the parallel district court litigation was in a very early stage with no trial date set, meaning a final written decision in the IPR would likely issue well before any trial. Petitioner further argued that the parties had not invested significant time or resources in the invalidity analysis in court, that Petitioner itself was not a party to the litigation, and that Petitioner would stipulate not to pursue the same invalidity grounds in court if the IPR were instituted. Finally, Petitioner asserted that the strength of its invalidity challenges weighed heavily in favor of institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 18, 20-23, 27-33, 35, 36, 39, 40, 44, 47-50, 54-56, 58, and 60 of the ’108 patent as unpatentable.