PTAB

IPR2021-00318

Spin Master Inc v. Interactive Play Devices LLC

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1. Case Identification

2. Patent Overview

  • Title: Interactive Play Device
  • Brief Description: The ’108 patent describes interactive play devices, such as dolls or cars, that can be personalized. The device's functionality adapts based on past interactions with a user, allowing its operation to vary over time and differ from identical devices used by other players.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mizokawa and Fong - Claims 1-3, 5, 6, 8-10, 14, and 15 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 teaches an autonomous pet robot that adapts its behavior and develops a "pseudo-personality" by interacting with a user. The robot recognizes user states (e.g., emotions, evaluations) via various sensors, stores this data as "user information," analyzes it to derive "knowledge information" (e.g., user preferences, robot's personality traits), and controls its behavior based on this derived knowledge. While Mizokawa described these functions conceptually through processing units, Petitioner contended it does not explicitly disclose a microprocessor with ROM and RAM. Fong was alleged to supply this missing element, as it teaches an interactive toy controlled by a standard microcontroller unit (MCU) with sufficient ROM and RAM to store software and implement interactive action sequences.
    • Motivation to Combine: A POSITA would have been motivated to implement Mizokawa's advanced adaptive behavior system using the well-known, predictable, and commonplace microprocessor architecture taught by Fong. Petitioner asserted that using a microprocessor with memory was a standard way to control the complex processing steps required by Mizokawa's interactive robot.
    • Expectation of Success: Given that using microprocessors with ROM and RAM to control interactive toys was a routine and well-understood practice, a POSITA would have had a reasonable expectation of success in combining Fong's control system with Mizokawa's adaptive robot concept to achieve a predictable result.

Ground 2: Obviousness over Mizokawa, Fong, and Pagani - Claims 15 and 16 are 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 Patent Application No. 2,263,573).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination of Mizokawa and Fong from Ground 1 to address the "means for generating visual communications" recited in claim 15. Petitioner argued that while Mizokawa discloses a visual output device or display for expressing the robot's pseudo-emotions (e.g., laughing or angry expressions), it does not specify the type of display technology used. Pagani was introduced to teach an animated face display device for a toy that uses a Liquid Crystal Display (LCD) to provide animated facial movements, such as for a doll or robot face. This combination allegedly renders claim 15 obvious and further meets the specific "Liquid Crystal Display" limitation of claim 16.
    • Motivation to Combine: A POSITA seeking to implement the visual output described in Mizokawa would have been motivated to use a simple, low-cost, and effective technology for animating facial expressions. Pagani's teaching of using an LCD for this purpose in a similar context (doll or robot faces) would have provided a clear reason for its incorporation into the Mizokawa/Fong system.
    • Expectation of Success: Using an LCD to animate facial features on a toy was a known and straightforward technique. Therefore, a POSITA would have reasonably expected to successfully implement Mizokawa's visual output device using the LCD taught by Pagani.

4. Key Claim Construction Positions

  • Means-Plus-Function Limitations: Petitioner adopted several constructions from a co-pending district court litigation for the means-plus-function terms in independent claim 1. These included construing "means for analyzing user's responses" as a "CPU/microprocessor programmed to refer to knowledge information...and execute a specific act or transition to an operating state."
  • Additional "Means" Limitations: For claims 6 and 15, which had not yet been construed in court, Petitioner proposed constructions based on the Patent Owner's own proposed constructions in the related litigation. This included construing "means for generating verbal communications" (claim 15) to require "speech-generation circuitry, speaker, a speech-generation chip, and equivalents thereof."
  • Ornamental Limitation: Petitioner argued that the limitation in dependent claim 3, which recites that the housing is in the form of a doll, animal, or other character, is purely ornamental and should be afforded no patentable weight.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued extensively that discretionary denial under Fintiv would be inappropriate. The core arguments were:
    • The parallel district court litigation was in a very early stage, with no trial date set and significant work, including Markman hearings and expert discovery, yet to be completed.
    • The Petitioner in this IPR, Spin Master Inc., is not a party to the litigation; rather, a related but separate foreign entity (Spin Master, Ltd.) was sued.
    • Petitioner provided a stipulation that, if the IPR is instituted, it would not pursue the same invalidity grounds in the district court, mitigating concerns of duplicative efforts.
    • The patentability challenges presented in the petition were asserted to be strong, weighing in favor of institution to serve the public interest.

6. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-3, 5, 6, 8-10, and 14-16 of the ’108 patent as unpatentable under 35 U.S.C. §103.