Spin Master Inc v. Interactive Play Devices LLC

1. Case Identification

• Case #: IPR2021-00317
• Patent #: 10,661,190
• Filed: January 5, 2021
• Petitioner(s): Spin Master Inc.
• Patent Owner(s): Interactive Play Devices LLC
• Challenged Claims: 1-16

2. Patent Overview

• Title: Interactive Play Device
• Brief Description: The ’190 patent describes interactive play devices, such as a doll or car, that personalize their functionality based on past interactions with a user. The device learns from user responses to adapt its operational state over time, creating a unique experience for each player.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mizokawa and Barton - Claims 1-3, 5-8, and 10-16 are obvious over Mizokawa in view of Barton.

• Prior Art Relied Upon: Mizokawa (Patent 6,249,780) and Barton (Patent 5,964,640).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mizokawa discloses the core inventive concept: an interactive, mobile pet robot that behaves adaptively based on user interactions. Mizokawa’s robot develops a "pseudo-personality" and "pseudo-emotions" by processing inputs from touch, auditory, and visual sensors, storing user characteristic data (e.g., preferences, emotional patterns) in memory, and using that data to transform its operational state and behavior. Petitioner contended that Barton, which describes a remotely-controlled toy vehicle, supplies the conventional hardware elements to implement Mizokawa’s system. Barton teaches a mobile toy with a housing, motors, wheels, a microcontroller (processor), and computer memory (RAM/ROM) encoded with program segments to control the toy's operation.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Mizokawa’s adaptive behavior system with Barton’s well-known toy hardware to create a commercially viable and functional product. A POSITA would have been motivated to enclose Mizokawa's electronics in a housing for protection and aesthetics, and to use a standard microcontroller and memory as taught by Barton to implement the processing steps described by Mizokawa.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as combining known software concepts for adaptive behavior with standard electronic toy hardware was a routine and predictable integration at the time.

Ground 2: Obviousness over Mizokawa, Barton, and Dratman - Claim 4 is obvious over Mizokawa in view of Barton and in further view of Dratman.

• Prior Art Relied Upon: Mizokawa (Patent 6,249,780), Barton (Patent 5,964,640), and Dratman (WO 98/50872).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Mizokawa and Barton from Ground 1. Petitioner argued that claim 4, which recites an input control mechanism that causes the microprocessor to erase user interaction data from memory, is taught by Dratman. Dratman discloses an interactive toy with a "New Program" button that, when pressed, clears the toy's memory of previously stored user commands.
  • Motivation to Combine: A POSITA would be motivated to add Dratman's memory-clearing button to the Mizokawa/Barton device to provide a reset function. This would be an expected and desirable feature, allowing a user to start a fresh experience with the toy or to add replay value.
  • Expectation of Success: Implementing a reset button using well-known electromechanical switches and memory management techniques would have been a straightforward task with a high expectation of success.

Ground 3: Obviousness over Mizokawa, Barton, and Yavetz - Claims 7-9 are obvious over Mizokawa in view of Barton and in further view of Yavetz.

• Prior Art Relied Upon: Mizokawa (Patent 6,249,780), Barton (Patent 5,964,640), and Yavetz (Patent 4,938,483).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also builds on the Mizokawa/Barton combination. Petitioner asserted that claims 7-9, which add limitations for one or more lights that indicate a current operating state using different colors, are rendered obvious by Yavetz. Yavetz describes an interactive toy tank that uses yellow and red LEDs to visually indicate its operating state (i.e., its level of damage).
  • Motivation to Combine: A POSITA would be motivated to incorporate the colored LEDs from Yavetz into the base toy to provide users with a clear and immediate visual indication of the toy's current internal state (e.g., its "pseudo-emotion"). This would improve user understanding of the toy's behavior, particularly when the toy engages in a random act not based on direct user interaction.
  • Expectation of success: Using colored LEDs to convey device status was a common and well-understood technique in electronic toys, ensuring a predictable outcome and a high expectation of success for the combination.

4. Key Claim Construction Positions

• Petitioner applied the construction for "knowledge information" adopted by the district court in a related case involving a related patent. The term, which is recited in all challenged claims, was construed as "data learned, retained, or understood."

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. § 314(a) based on the Fintiv factors. Petitioner contended that the co-pending district court litigation was in a very early stage, as no trial date had been set and substantive discovery and claim construction were incomplete. Petitioner also stipulated that if the IPR is instituted, it will not pursue the same unpatentability grounds in the district court action, thereby avoiding duplicative efforts. Furthermore, Petitioner argued that the strength of its invalidity challenges weighed heavily in favor of institution.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-16 of the ’190 patent as unpatentable.