PTAB

IPR2021-00316

Spin Master Inc v. Interactive Play Devices LLC

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Interactive Play Devices That Adapt Based on User Interaction
  • Brief Description: The ’072 patent describes an interactive play device, such as a doll or car, that personalizes its functionality based on a history of past interactions with a user. The device uses a microprocessor, memory, and various sensors to learn from user inputs, establish "knowledge information" about the user, and adapt its behavior by transitioning between different operating states over time.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mizokawa and Fong - Claims 11, 13, and 15-35 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, teaches nearly all limitations of the challenged claims. Mizokawa’s robot interacts with a user, gains knowledge from past interactions to develop a "pseudo-personality," and operates in a plurality of states (e.g., emotion expression states, behavior pattern states) based on this learned information. It uses input mechanisms (camera, microphone, tactile sensors) and stores user data in memory to establish user characteristics like preferences. Petitioner asserted that Fong, which describes interactive toys, supplies the remaining limitations. Specifically, Fong teaches using a microprocessor with non-transitory computer-readable medium (ROM) to control a toy's operation and enclosing all electronic components within a physical housing, which Mizokawa does not explicitly detail.
    • Motivation to Combine: A POSITA would combine Mizokawa’s adaptive robot logic with Fong’s well-known implementation of a microprocessor and housing. This combination was argued to be a predictable step to create a safe, durable, and commercially viable product. Providing a housing is essential for safety and to prevent damage to internal components, while using a microprocessor to execute software instructions was a standard and commonplace method for controlling interactive toys at the time.
    • Expectation of Success: Petitioner contended there was a high expectation of success, as combining known control systems and housings with an interactive toy concept was a routine and predictable design choice for a POSITA.

Ground 2: Obviousness over Mizokawa, Fong, and Furukawa - Claim 12 is obvious over Mizokawa in view of Fong in further view of Furukawa.

  • Prior Art Relied Upon: Mizokawa (Patent 6,249,780), Fong (Patent 6,309,275), and Furukawa (U.K. Application Publication No. 2,145,935).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the combination of Mizokawa and Fong from Ground 1 to address dependent claim 12, which adds the limitation of "visual communications provided by light emitting means." Petitioner argued that Mizokawa, while teaching various user interactions, lacks a specific mechanism for visual feedback regarding the status of user commands. Furukawa, which describes an interactive toy robot, explicitly teaches using an LED to communicate visually with a user. For example, Furukawa’s LED blinks to indicate the toy is ready for input and turns on continuously to confirm a voice command has been registered.
    • Motivation to Combine: A POSITA would have been motivated to add the LED from Furukawa to the Mizokawa/Fong combination to solve a known problem: the lack of user feedback, which could lead to user frustration. Providing visual feedback via an LED was an identified, predictable solution to improve the usability and functionality of an interactive robot by clearly communicating its operational state to the user.
    • Expectation of Success: Since using LEDs for visual feedback in electronic toys was a well-known, simple, and widely used technique prior to the ’072 patent, a POSITA would have had a reasonable expectation of success in incorporating this feature into Mizokawa’s robot.

4. Key Claim Construction Positions

  • "knowledge information": Petitioner adopted the district court's construction of this term as "data learned, retained, or understood," arguing that Mizokawa's disclosure of establishing and storing user characteristics (preferences, personality, etc.) based on past interactions meets this definition.
  • "wherein said housing is in the form of...": Petitioner argued that limitations reciting the specific form of the housing (e.g., a doll, animal, vehicle) are purely ornamental, have no mechanical function, and should be given no patentable weight in a utility patent.
  • "light emitting means" (Claim 12): This means-plus-function term was construed by Petitioner as having the function of "emitting light" and the corresponding structure of a "light emitting diode (LED) and equivalents thereof," based on the patent owner's proposed construction in related litigation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued extensively that discretionary denial under Fintiv would be inappropriate. The core arguments were that the parallel district court litigation was at a very early stage, with no trial date set and multiple claim construction hearings still pending, meaning significant overlap and inefficiency would be avoided. Petitioner further noted that minimal resources had been invested in the invalidity analysis in the court proceeding. To ensure the Board would be the sole tribunal to rule on these specific grounds, Petitioner stipulated that if the IPR was instituted, it would not pursue the same unpatentability grounds in the district court action. Finally, Petitioner asserted that the strength of its invalidity case weighed strongly in favor of institution.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 11-13 and 15-35 of Patent 9,868,072 as unpatentable under 35 U.S.C. §103.