PTAB

IPR2023-01461

Prime Time Toys LLC v. Spin Master Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Projectile Launching Device
  • Brief Description: The ’255 patent relates to projectile launching devices, such as toy guns, designed to project soft projectiles made from hydrated super absorbent polymers (SAPs). The technology includes a feed chamber for holding the projectiles, a firing mechanism, and in some claims, a safety mechanism at the end of the barrel.

3. Grounds for Unpatentability

Ground 1: Obviousness over Peev and Spitballs - Claims 13, 15-20 are obvious over Peev in view of Spitballs.

  • Prior Art Relied Upon: Peev (Bulgarian Patent No. BG110343) and Spitballs (ThinkGeek Internet Archive Webpage, Nov. 2009).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Peev disclosed all structural elements of the projectile launching device recited in independent claim 13, including a feed chamber, a mechanism for loading projectiles into a firing position, and a firing mechanism to accelerate them down a barrel. However, Peev’s device fired hard plastic projectiles. Petitioner contended that Spitballs, a known toy product, disclosed the claimed projectile limitations: a plurality of soft, spherical projectiles formed from hydrated SAP. For dependent claims, Petitioner asserted Peev taught a removable magazine (claim 15), the use of air pressure (claim 17), a direct force firing mechanism (claim 18), and a device that is a toy in the shape of a gun (claims 19-20). A POSITA could adjust the size of the Spitballs projectiles to meet the diameter limitation of claim 16.
    • Motivation to Combine: The primary motivation asserted was to solve the well-documented problem of injuries caused by the hard plastic ammunition used in airsoft guns like Peev's. Petitioner argued that a person of ordinary skill in the art (POSITA), faced with this safety issue, would look to known, predictable solutions, such as substituting the hard projectiles with a known safer alternative. Spitballs provided a commercially available, soft, SAP-based spherical projectile designed for toy launchers, making it an obvious substitute to create a safer yet still functional toy gun.
    • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because both references related to toy projectile launchers. A POSITA would possess the technical skill to modify Peev's airsoft gun to launch the soft SAP projectiles from Spitballs, for example by adjusting the spring pressure or projectile size for compatibility. This was supported by testimony from the Patent Owner’s expert in a related case, who admitted a POSITA would have the ability to make such a modification.

Ground 2: Obviousness over Peev, Spitballs, and Moorhouse - Claims 1 and 2 are obvious over Peev and Spitballs in view of Moorhouse.

  • Prior Art Relied Upon: Peev (Bulgarian Patent No. BG110343), Spitballs (ThinkGeek Internet Archive Webpage, Nov. 2009), and Moorhouse (Patent 4,834,059).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Peev and Spitballs to address independent claim 1, which, unlike claim 13, additionally required a safety mechanism at the end of the barrel. Petitioner asserted that Moorhouse taught the claimed safety feature: a blocking mechanism disposed at the front end of an air gun’s barrel. This mechanism was designed to prevent foreign objects from being inserted into the barrel while moving out of the way during firing to allow the projectile to exit. Petitioner argued that adding the Moorhouse safety mechanism to the Peev/Spitballs combination would satisfy all limitations of claim 1. Dependent claim 2, which required a removable magazine, was taught by Peev.
    • Motivation to Combine: Petitioner contended that the motivation to combine Peev and Spitballs (to create a safer toy) would naturally extend to incorporating additional known safety features. Since Moorhouse was in the same field of endeavor (air guns) and explicitly taught a safety mechanism to reduce the risk of injury, a POSITA would be motivated to add this feature to the modified Peev device to further enhance its safety, a predictable design improvement.
    • Expectation of Success: A POSITA would have expected success in integrating the mechanical safety feature of Moorhouse into the air gun of Peev, as both were conventional air-powered projectile devices operating on similar principles.

4. Key Claim Construction Positions

  • "super absorbent polymer": Petitioner noted that in a related International Trade Commission case, this term was construed to have its plain and ordinary meaning: a "polymer that can absorb an extremely large amount of liquid relative to its own mass." Spitballs, which can grow up to 200 times their original size, were argued to meet this construction.
  • "the firing mechanism applies a force directly to the soft-projectile": Petitioner adopted the construction from the same related case, where a similar term was given its plain and ordinary meaning. Petitioner argued that Peev’s mechanism, which uses compressed air generated by a spring and piston to fire the projectile, met this limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be improper.
    • Under §314(a) / Fintiv: Petitioner asserted that no parallel district court litigation was pending. While a related ITC case existed, the ’255 patent was not at issue in that proceeding, making the Fintiv factors inapplicable.
    • Under §325(d): Petitioner contended that the core prior art references, Peev and Spitballs, were never presented to or considered by the patent examiner during the original prosecution. Therefore, the petition raised new arguments and art that were not previously before the USPTO.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 13, and 15-20 of the ’255 patent as unpatentable.