PTAB

IPR2021-00314

Spin Master Inc v. Interactive Play Devices LLC

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1. Case Identification

2. Patent Overview

  • Title: Interactive Toy Vehicle with Adaptive Behavior
  • Brief Description: The ’111 patent describes interactive play devices, such as a toy vehicle, that personalize their functionality based on a history of past interactions with a user. The device learns from user responses to systematically adapt its operations, creating a personalized experience that varies from one identical device to another.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mizokawa, Kamiya, and Fong - Claims 1-2, 4-6, 8-10, 12-13, 16, and 19-21 are obvious over Mizokawa in view of Kamiya and Fong.

  • Prior Art Relied Upon: Mizokawa (Patent 6,249,780), Kamiya (Patent 6,175,772), and Fong (Patent 6,309,275).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the primary reference, Mizokawa, discloses nearly all limitations of the independent claims. Mizokawa teaches an autonomous pet robot that functions as a “vehicle” (with a driving motor and steering) and develops a “pseudo-personality” by learning from user interactions. It uses various sensors for input, stores user data (e.g., preferences, emotional responses), analyzes this data to update its personality, and modifies its behavior and emotional states (e.g., joy, anger) based on this learned knowledge.
    • To the extent Mizokawa’s robot lacks an explicit vehicle-like appearance, Kamiya was cited for teaching a similar interactive robot in the ornamental form of a toy vehicle. Kamiya also discloses displaying a “surprised” emotional state, which Petitioner argued renders claim 5 obvious.
    • Fong was cited for supplying the conventional hardware to implement Mizokawa’s system. Fong teaches an interactive toy controlled by a microprocessor and memory (RAM/ROM), which provides the structure for Mizokawa’s "processing units" and "memory." Fong also discloses using a simple touch switch (for Mizokawa’s tactile sensor) and infrared communication modules for wireless communication between toys (for the "communication means" of claim 20).
    • Motivation to Combine: A POSITA would combine Mizokawa’s adaptive robot with Kamiya’s vehicle housing as a predictable product line extension to appeal to a broader consumer market. A POSITA would implement Mizokawa’s processing logic using Fong’s well-known microprocessor and memory architecture, as this was a commonplace and routine design choice for interactive toys. Substituting Fong’s specific touch switch for Mizokawa’s generic tactile sensor or using Fong’s infrared technology for Mizokawa’s undefined "communication means" were described as simple, predictable substitutions of known, interchangeable components.
    • Expectation of Success: Petitioner argued that a POSITA would have a high expectation of success. Combining Mizokawa’s functional core with Kamiya’s ornamental housing would not alter the underlying operation. Implementing Mizokawa’s system on Fong’s standard hardware was a routine integration of known electronic components that would yield predictable results.

4. Key Claim Construction Positions

  • Means-Plus-Function Terms: Petitioner adopted several constructions for means-plus-function terms from the Patent Owner’s own proposals in a related district court litigation. These included construing “means for analyzing” and “control means” (claim 1) as a “microprocessor programmed with one or more code segments” performing the recited function.
  • “input control means”: Petitioner argued this term is not a means-plus-function limitation. It contended that the claim itself recites sufficient structure to perform the function (e.g., “a switch, a sound activated sensor, a voice activated module...”), thus overcoming the means-plus-function presumption. Therefore, the term should be given its plain and ordinary meaning.
  • “knowledge information”: Petitioner applied the district court’s prior construction from a related patent, defining the term as “data learned, retained, or understood.”

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate because the parallel district court litigation was in a very early stage. Key factors cited included:
    • No trial date had been set, and multiple Markman hearings were still pending, making a final written decision (FWD) from the Board likely to issue before a district court trial.
    • Petitioner stipulated that, if the inter partes review (IPR) was instituted, it would not pursue the same invalidity grounds in the district court, thus avoiding duplicative efforts.
    • The petition presented a strong case for unpatentability on the merits, which weighs in favor of institution to serve the public interest in correcting erroneously issued patents.

6. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-2, 4-6, 8-10, 12-13, 16, and 19-21 of the ’111 patent as unpatentable.