Spin Master Ltd.

Patent Trials and Appeals Board

Sep 23, 2020

IPR2019-00897 (P.T.A.B. Sep. 23, 2020)

Trials@uspto.gov Paper 46
571-272-7822 Date: September 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CHOIROCK CONTENTS FACTORY CO., LTD.,
Petitioner,
v.
SPIN MASTER LTD.,
Patent Owner.

IPR2019-00897
Patent 8,500,508 B2

Before HYUN J. JUNG, NEIL T. POWELL, and BRENT M. DOUGAL,
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge JUNG.

Concurring Opinion filed by Administrative Patent Judge DOUGAL.

JUNG, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
A. Background and Summary
Choirock Contents Factory Co., Ltd. (“Petitioner” or “Choirock”)
filed a Petition (Paper 1, “Pet.”), requesting institution of an inter partes
review of claims 1–5 of U.S. Patent No. 8,500,508 B2 (Ex. 1001, “the ’508
patent”). Concurrently with the Petition, Petitioner also filed a “Motion for
Joinder to Related Inter Partes Review of U.S. Patent No. 8,500,508
([Mattel, Inc. v. Spin Master Ltd.,] IPR2018-01672) Under 35 U.S.C.
§ 315(c) and 37 C.F.R. § 42.122(b).” Paper 3. Spin Master Ltd. (“Patent
Owner” or “Spin Master”) filed a Preliminary Response (Paper 14) and an
Opposition to Petitioner’s Motion for Joinder to IPR2018-01672 (Paper 7).
Petitioner thereafter filed a Reply to Patent Owner’s Opposition (Paper 8),
and with our authorization (Paper 15), Petitioner further filed a Reply to
Patent Owner’s Preliminary Response (Paper 16). Pursuant to
35 U.S.C. § 314, we instituted an inter partes review of the ’508 patent and
at the same time denied the Motion for Joinder. Paper 17 (“Dec. to Inst.”).
After institution, Patent Owner filed a Response (Paper 30, “PO
Resp.”), to which Petitioner filed a Reply (Paper 33, “Pet. Reply”). Patent
Owner thereafter filed a Sur-reply (Paper 38, “PO Sur-reply”). An oral
hearing in this proceeding was held on June 25, 2020; a transcript of the
hearing is included in the record (Paper 41, “Tr.”).
For the reasons below, Petitioner persuades us by a preponderance of
the evidence that claims 1–5 of the ’508 patent are unpatentable.
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B. Real Parties in Interest
Petitioner indicates that Choirock is the real party in interest. Pet. 1;
Paper 25, 2. Patent Owner indicates that Spin Master is the real party in
interest and notes that Spin Master, Inc. is a subsidiary. Paper 5, 2.
C. Related Matters
The parties indicate that a complaint alleging infringement of the ’508
patent was filed on April 24, 2018 in Spin Master Ltd. v. Mattel, Inc., Case
No. 2:18-cv-3435 (C.D. Cal.). Pet. 1; Paper 5, 2; Paper 25, 2; Ex. 1014
(“Spin Master Ltd.’s Complaint for Patent Infringement”); Ex. 1015 (“Spin
Master Ltd.’s First Amended Complaint for Patent Infringement”).
The parties also indicate that, on September 7, 2018, petitions
requesting inter partes review of the ’508 patent and related U.S. Patent
Nos. 9,868,073 and 9,975,058 were filed in, respectively, IPR2018-01672,
IPR2018-01673, and IPR2018-01674. Pet. 2; Paper 5, 2; Paper 25, 3. We
granted joint motions to terminate those proceedings. Pet. 2; Paper 5, 2;
Paper 25, 3. The present Petition was filed before termination. Paper 4.
D. The ’508 Patent (Ex. 1001)
The ’508 patent issued August 6, 2013, from an application filed
June 23, 2010, which is a continuation of an application filed December 22,
2006, and claims priority to a foreign application filed on February 20, 2006.
Ex. 1001, codes (22), (45), (63), 1:6–11; see also Pet. 12 (noting the same).
The ’508 patent particularly relates to “a toy that transforms by means
of . . . a magnetic force.” Ex. 1001, 1:17–18. Figure 7 of the ’508 patent is
reproduced below.
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Figure 7 is a “perspective view of the toy . . . showing a post-
transformation state.” Ex. 1001, 4:54–55. “Toy 1 . . . transforms from a
rollable, spherical shape (the first shape . . . ) to a fictitious character shape
(a second shape . . . ) . . . by means of the action of a magnetic force.” Id. at
5:12–16; see also id. at Figs. 2–6(b) (showing pre-transformation state). The
exterior of toy 1 forms the first or spherical shape, and toy 1 includes lower
component 2, upper component 3, lateral components 4–7, front
component 8, and back component 9. Id. at 5:20–31. Figure 1 of the ’508
patent is reproduced below.
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Figure 1 is “an exploded perspective view of the toy.” Ex. 1001,
4:38–39. Within toy 1 are locking component 10, magnet 11 at the lower
end of locking component 10, and spring 12 to move locking component 10
upwardly. Id. at 5:33–37, 5:46–50, 7:5–8, Figs. 1, 5(a), 5(b). When no
magnetic force acts on toy 1, locking component 10 is biased upwardly by
spring 12 so that interior locking portion 10c engages exterior locking
portions 5c, 7c and lateral components 5, 7 cannot turn outwardly. Id. at
7:5–13, Fig. 5(a). Lateral components 5, 7 include protrusions 5b, 7b to lock
lateral components 4, 6, and upper component 3 includes convex portion 3c
that engages lateral component 4 to maintain the first or spherical shape. Id.
at 6:7–15, 6:66–7:2, 7:5–13, 8:12–17, Figs. 1, 3.
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When a magnetic force acts on toy 1, locking component 10 moves
downwardly, springs 31, 32 cause lateral components 4–7 to move
outwardly, and spring 30 moves upper component 3 upwardly to transform
toy 1 to the second or fictional character shape. Ex. 1001, 6:15–20, 6:33–36,
6:43–46, 6:55–58, 6:62–65, 7:13–18, 7:29–31, 8:18–37.
E. Illustrative Claim
The ’508 patent has 9 claims, of which Petitioner challenges claims 1–
5. Of those, claim 1, reproduced below with indentations added for
readability, is the only independent claim.
1. A toy comprising
a main body element and
at least one first moveable element associated with said
main body element and moveable with respect thereto from a
first position adjacent said main body element in which the toy
is rollable along a playing surface containing a metal or magnetic
material, to a second position in which at least a portion of said
first moveable element has moved away from said main body
element and the toy is not rollable along the playing surface,
said at least one first moveable element being permanently
biased toward said second position, and being provided with
catch means co-operable with moveable releasable latch means
in said main body element to maintain at least one said first
moveable element in said first position until said latch means is
released,
wherein said releasable latch means is provided with a
magnet, whereby said releasable latch means is moveable out of
engagement with said catch by attraction to said playing surface,
whereby a rolling of the toy along the playing surface ceases
when said latch means is moved out of engagement with said
catch.

Ex. 1001, 15:22–41.
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F. Asserted Prior Art and Proffered Testimonial Evidence
Petitioner identifies the following references as prior art in the
asserted grounds of unpatentability:
Name Reference Exhibit No(s).
Thompson US 3,687,452, issued August 29, 1972 1009
Shannon US 5,310,378, issued May 10, 1994 1007
Saucier US 7,306,504 B2, filed July 12, 2004,
issued December 11, 2007
1010
Tomiyama1 Japanese Examined Utility Model No. JP
38-9155, published May 15, 1963
1005, 1006
Aprile WO 2006/051417 A2, published May 18,
2006
1008
Petitioner argues that each of the above listed references is prior art
under 35 U.S.C. § 102(b) or 102(e). Pet. 21–22. Patent Owner does not
present any argument disputing whether the references are prior art. See
generally PO Resp.; PO Sur-reply.
Petitioner also provides a “Declaration of Dr. Barry Kudrowitz in
Support of Petition for Inter Partes Review” (Ex. 1002) and a “Reply
Declaration of Dr. Barry Kudrowitz in Support of Petition for Inter Partes
Review” (Ex. 1020). Patent Owner provides a “Declaration of Dr. Jason
Janét” (Ex. 2001). Deposition transcripts were filed for Dr. Kudrowitz
(Ex. 2002) and Dr. Janét (Ex. 1021).

1 All references to Tomiyama in this Decision are to the certified translation
filed as Exhibit 1005.
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G. Asserted Grounds
Petitioner asserts that claims 1–5 would have been unpatentable on the
following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–4 § 103(a)2 Tomiyama
1–4 § 103(a) Tomiyama, Thompson
5 § 103(a) Tomiyama, Thompson, Saucier
1–4 § 103(a) Tomiyama, Thompson, Aprile
5 § 103(a) Tomiyama, Thompson, Aprile,
Saucier
1–5 § 103(a) Tomiyama, Shannon
1–5 § 103(a) Tomiyama, Shannon, Aprile
Pet. 12, 23–74.

II. ANALYSIS
A. Legal Standards
In an inter partes review, Petitioner bears the burden of proving
unpatentability of the challenged claims, and the burden of persuasion never
shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in its challenges,
Petitioner must prove unpatentability by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).

2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (2011), took effect on March 16, 2013.
The application from which the ’508 patent issued is a continuation of an
application filed on December 22, 2006, and the ’508 patent claims priority
to a foreign application filed on February 20, 2006. Ex. 1001, codes (30),
(63). Because the first application and the foreign application were filed
before March 16, 2013, the effective date of the relevant amendment, the
pre-AIA versions of §§ 102 and 103 apply.
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The U.S. Supreme Court set forth the framework for applying the
statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17–18 (1966):
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.
As explained by the Supreme Court in KSR International Co. v. Teleflex
Inc.:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis
should be made explicit.
550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)).
“Whether an ordinarily skilled artisan would have been motivated to
modify the teachings of a reference is a question of fact.” WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016). “[W]here a party argues
a skilled artisan would have been motivated to combine references, it must
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show the artisan ‘would have had a reasonable expectation of success from
doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876
F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1068–69 (Fed. Cir. 2012)).
The parties’ disputes are related to the scope and content of the
asserted prior art, the differences between claim 1 and the asserted
references, and Petitioner’s reason for combining those references. After
reviewing the complete record, we conclude that Petitioner has shown by a
preponderance of the evidence that (1) Tomiyama alone, (2) Shannon
combined with Tomiyama, and (3) Shannon combined with Tomiyama and
Aprile disclose, teach, or suggest each limitation of claims 1–5, and that a
person of ordinary skill in the art would have had a reason to modify or
combine these references in the manner asserted by Petitioner with a
reasonable expectation of success.
B. Level of Ordinary Skill in the Art
Petitioner asserts that one of ordinary skill in the art “would have a
bachelor’s degree in mechanical engineering or a related field and at least
three years of experience in toy design.” Pet. 14 (citing Ex. 1002 ¶¶ 26–28).
In our Decision Granting Institution of Inter Partes Review, we
preliminarily adopted Petitioner’s unopposed proposed level of ordinary
skill. Dec. to Inst. 17. Patent Owner states that its declarant applies
Petitioner’s proposed level of ordinary skill in his analysis. PO Resp. 2
(citing Ex. 2001 ¶ 30); see also Tr. 71:15–22 (confirming that, for purposes
of this proceeding, Patent Owner is not disputing Petitioner’s proposed level
of ordinary skill).
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In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(citation and internal quotation marks omitted).
Based on the full record before us, we see no reason to disturb our
preliminary finding regarding the level of ordinary skill in the art. Dec. to
Inst. 17. Accordingly, we maintain and reaffirm that one of ordinary skill in
the art “would have a bachelor’s degree in mechanical engineering or a
related field and at least three years of experience in toy design.” Id.
(quoting Pet. 14). This level of skill in the art is consistent with the
disclosure of the ’508 patent and the prior art of record.
C. Claim Construction
On October 11, 2018, the Office revised its rules to harmonize the
Board’s claim construction standard with that used in federal district court.
Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). This rule change
applies to this proceeding. See Pet. 14–15 n.2 (stating that the “USPTO
replaced the broadest reasonable interpretation standard with the claim
construction standard that is used to construe claims during a civil action in
federal district court”); Paper 4, 1 (according filing date of March 29, 2019
to the Petition); PO Resp. 1 (stating that “[b]ecause this IPR was filed after
November 13, 2018, claims are interpreted under the Phillips standard”).
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Petitioner proposes interpretations for “rollable,” “closed position,”
“open position,” “latch means,” and “catch means.” Pet. 15–20. Petitioner
argues that “latch means” and “catch means” are means-plus-function
limitations and asserts a function and corresponding structure for each. Id.
at 19–20 (Ex. 1001, 3:42–4:16, 8:6–17, Figs. 1, 5a, claim 1; Ex. 1002 ¶¶ 22–
25). Petitioner also contends that its proposed interpretations are appropriate
under either the broadest reasonable interpretation standard or the claim
construction standard used in federal district court. Id. at 15 n.2.
In our Decision instituting review, we preliminarily adopted
Petitioner’s proposed interpretations for “latch means” and “catch means” to
determine whether Petitioner showed a reasonable likelihood that it would
prevail with respect to at least one of the claims challenged in the Petition.
See Dec. to Inst. 18–19. Patent Owner states that it “disagrees with
Choirock’s proposed constructions” but “applies Choirock’s construction in
its arguments.” PO Resp. 1; see also Tr. 71:23–72:3 (Patent Owner’s
counsel agreeing that Patent Owner did not propose any claim
interpretation).
Therefore, based on the full record before us, we maintain and affirm
our preliminary interpretations for “latch means” and “catch means.”
Specifically, we determine that (1) the “function of the latch means is to
cooperate with the catch means to maintain the at least one first movable
element in the first position until the latch means is released” and (2) the
corresponding structure is locking component 10. Pet. 19; Ex. 1001, 3:42–
4:16, 8:6–17, Figs. 1, 5(a); Ex. 1002 ¶¶ 22–23.
We also determine that (1) the “function of the catch means is to
cooperate with the latch means to maintain the at least one first movable
element in the first position until the latch means is released” and (2) the
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corresponding structures are elements 5c, 7c. Pet. 20; Ex. 1001, 3:42–4:16,
8:6–17, Figs. 1, 5(a); Ex. 1002 ¶¶ 24–25.
We also determine that no other claim term requires express
construction to resolve the parties’ disputes. Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only
those claim terms in controversy and only to the extent necessary to resolve
the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in
the context of an inter partes review).
D. Obviousness Based on a Modification of Tomiyama Alone
Petitioner contends that Tomiyama shows that the “combination of
magnetic latches and transformable toys” was known. Pet. 5. Petitioner
specifically contends that claims 1–4 are unpatentable over Tomiyama
without any modifications or, alternatively, modified to be unrollable after
passing over magnet 29 made to resemble a landmine. Pet. 23–46.
Patent Owner responds that Tomiyama alone does not teach or
suggest a toy comprising “at least one first moveable element . . . moveable
. . . to a second position in which . . . the toy is not rollable along the playing
surface,” as recited by claim 1. PO Resp. 3–8. Patent Owner also responds
that it would not have been obvious to modify Tomiyama’s toy to be not
rollable. Id. at 8–11.
For the reasons explained below, based on the full record before us,
Petitioner persuades us by a preponderance of the evidence that claims 1–4
are unpatentable over Tomiyama modified to be made unrollable.
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1. Scope and Content of the Asserted Prior Art
a) Tomiyama (Ex. 1005)
Tomiyama describes a “running toy having a desired shape,” such as
tank-like running toy 1, with “configurational elements being assembled so
as to self-destruct as soon as an activating body linked to an engaging tab is
activated by attraction to a magnet body and the push-out body is pushed
out.” Ex. 1005 ¶¶ 1, 2. Tomiyama’s “utility model is embodied by
attaching a push-out body 2 inside a tank-like running toy 1 via a spring 4 so
as to be able to push out.” Id. ¶ 2. Figure 2 of Tomiyama is reproduced
below.

Figure 2 shows a cross-sectional view of Tomiyama’s toy. Id. ¶¶ 4, 6,
Brief Description. Toy 1 includes push-out body 2, spring 4 that urges push-
out body 2 outwardly, activating body 15 with magnet 16 (shown in
Figures 3 and 5), and engaging tab 6 linked to activating body 15. Id. ¶ 2.
The toy also includes wheel 30. Id. ¶ 3.
Self-destructing base 23 with protrusion 22 is loosely mounted in
toy 1 so that protrusion 22 is near push-out body 2. Id. ¶ 2. Other self-
destructing components 24, 27, 28 are mounted on base 23. Id. Tomiyama
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states that “self-destructing components 24, 27, 28, including self-
destructing base 23 [are] made to resemble the turret and gun of a tank.” Id.
¶ 4.
When toy 1 passes near magnet 29 made to resemble a landmine
(shown in Figure 1), magnet 29 attracts magnet 16 inside toy 1, and the
movement of magnet 16 causes activating body 15 to release engaging tab 6
from push-out body 2 through rotating plate 8, coil spring 14, and cam
plate 20. Id. ¶¶ 3, 4. Spring 4 urges push-out body 2 to strike protrusion 22,
which causes self-destructing base 23 and self-destructing components 24,
27, 28 to resemble a tank hitting a landmine and being destroyed, thereby
resulting in an “interesting effect.” Id. ¶ 4. Tomiyama states that the toy
“can be a tank as shown in the drawings, or any other type of vehicle,” and
“[i]n each case, an interesting self-destructing toy is provided.” Id. ¶ 6.
Both parties’ declarants provide testimony that supports the above
description of Tomiyama and provides additional details. See Ex. 1002
¶¶ 42–46; Ex. 2001 ¶¶ 32–47.
2. Analysis of Claim 1
Petitioner presents together three challenges based on Tomiyama:
(1) Tomiyama alone, (2) Tomiyama modified by Thompson, and (3)
Thompson modified by Tomiyama. See Pet. 23–36. We analyze below
specifically Petitioner’s challenge based on Tomiyama alone.
Petitioner argues that Tomiyama teaches the limitations of claim 1
with citations to the certified translation of Tomiyama and support from its
declarant testimony. Id. at 30–33, 35–43; see also id. at 23–24 (arguing
what Tomiyama teaches).
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a) “A toy comprising . . . ”
Petitioner argues that Tomiyama teaches a toy. Pet. 30 (citing
Ex. 1002 ¶¶ 81–82; Ex. 1005 ¶¶ 1, 4).
To the extent the preamble is limiting, we find that the relied-upon
portions of Tomiyama teach “a running self-destructing toy” and “running
toy 1.” Ex. 1005 ¶¶ 1, 4. We also credit Dr. Kudrowitz’s testimony that
Tomiyama teaches a toy tank because Tomiyama supports the testimony.
Ex. 1002 ¶ 82 (citing Ex. 1005 ¶¶ 1, 4).
Patent Owner does not present any argument that Tomiyama fails to
teach or suggest the preamble of claim 1. See generally PO Resp.; PO Sur-
reply. Based on the full record, because Tomiyama teaches a self-
destructing toy, Petitioner persuades us that Tomiyama teaches the preamble
of claim 1.
b) “a main body element and at least one first moveable element
associated with said main body element and moveable with
respect thereto from a first position adjacent said main body
element in which the toy is rollable along a playing surface
containing a metal or magnetic material, to a second position
in which at least a portion of said first moveable element has
moved away from said main body element and the toy is not
rollable along the playing surface, . . .”
Petitioner argues that Tomiyama teaches the above-quoted recitation.
Pet. 30–33 (arguing Tomiyama teaches the same limitation) (citing Ex. 1002
¶¶ 83–90; Ex. 1005 ¶¶ 1–4, Figs. 1, 2, 4).
We find that a relied-upon portion of Tomiyama teaches “a running
self-destructing toy” with “configurational elements being assembled so as
to self-destruct as soon as an activating body linked to an engaging tab is
activated by attraction to a magnet body and the push-out body is pushed
out.” Ex. 1005 ¶ 1. Tomiyama describes in particular “a push-out body 2
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inside a tank-like running toy 1,” “self-destructing base 23 having a struck
protrusion 22 on the lower end [that] is loosely mounted on the running toy
1,” and “struck protrusion 22 is positioned over the push-out body 2.” Id.
¶ 2. Tomiyama’s Figure 1 shows a toy shaped like a tank, and Figure 2
shows self-destructing base 23 with struck protrusion 22 positioned over
push-out body 2. “[O]ther self-destructing components 24, 27, 28 are
mounted on the self-destructing base 23 so as to easily self-destruct.” Id.
Tomiyama also describes how push-out body 2 operates to eject self-
destructing base 23 and self-destructing components 24, 27, 28 when
running toy 1 passes over magnet 29. See id. ¶¶ 3–4, Figs. 2 (showing other
components within running toy 1 in sectional view), 4 (showing the other
components in perspective view); see also Ex. 2001 ¶¶ 32–47 (Dr. Janét
describing the operation of Tomiyama’s tank). Tomiyama does not indicate
expressly that any other component of running toy 1, such as wheel 30, is
affected. Ex. 1005 ¶ 4.
We credit Dr. Kudrowitz’s testimony regarding the “main body
element,” “at least one first moveable element,” “toy [] rollable along a
playing surface containing a metal or magnetic material,” and “a second
position in which at least a portion of said first moveable element has moved
away from said main body element” because Tomiyama supports it.
Ex. 1002 ¶¶ 84–88 (citing Ex. 1005 ¶¶ 2, 4, Figs. 1, 2, 4).
As summarized below, Patent Owner does not dispute whether
Tomiyama teaches the limitations regarding the “main body element,” “at
least one first moveable element,” “toy [] rollable along a playing surface
containing a metal or magnetic material,” and “a second position in which at
least a portion of said first moveable element has moved away from said
main body element.” See generally PO Resp.; PO Sur-reply.
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Based on the full record, because Tomiyama teaches running toy 1
and self-destructing components 24, 27, 28 that are loosely mounted on
running toy 1 and can be pushed out when running toy 1 passes over
magnet 29, Petitioner persuades us that Tomiyama teaches or suggests “a
main body element and at least one first moveable element associated with
said main body element and moveable with respect thereto from a first
position adjacent said main body element in which the toy is rollable along a
playing surface containing a metal or magnetic material.” Also, because
Tomiyama describes pushing-out or ejecting the self-destructing
components 24, 27, 28 to resemble destruction, Petitioner persuades us that
Tomiyama teaches or suggests “a second position in which at least a portion
of said first moveable element has moved away from said main body
element.”
The parties dispute whether Tomiyama teaches or suggests that “the
toy is not rollable along the playing surface,” as recited by claim 1. See PO
Resp. 3–8; Pet. Reply 3–5; PO Sur-reply 1–4. We summarize and address
those arguments below.
(1) “To a Second Position in Which . . . the Toy is Not Rollable
Along the Playing Surface”
(a) Patent Owner’s Response
Patent Owner responds that “the Tomiyama toy tank with motorized
wheels is rollable in both the mapped first position and the second position.”
PO Resp. 3 (citing Dec. to Inst. 11–12; Ex. 1001, 15:22–29). According to
Patent Owner, “Tomiyama discloses a motorized drive mechanism of the
tank that provides for running of the toy tank on wheels 30” (id. (citing
Ex. 1005 ¶ 3, Fig. 1; Ex. 2001 ¶¶ 34–36)), and “Tomiyama teaches that play
of the tank resembles the effect of the tank passing over a landmine and
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being destroyed” (id. at 4 (citing Ex. 1005 ¶ 4)). See also id. at 3–4
(summarizing Petitioner’s mapping of “main body element,” “at least one
moveable element,” “first position,” and “second position”) (citing Pet. 31,
32), 4–5 (explaining how Tomiyama imitates being “destroyed”) (citing
Ex. 1005 ¶¶ 2, 4, 5; Ex. 2001 ¶ 33).
Patent Owner argues that Petitioner erroneously relies on Tomiyama’s
sentence that “the running toy 1 continues to travel down the road until the
running toy 1 is passing over the magnet 29.” PO Resp. 5 (citing Pet. 33;
Ex. 1005 ¶ 4). Patent Owner contends that the relied-upon sentence, when
read with following sentences, indicates that one of ordinary skill in the art
“would understand that Tomiyama is describing how the toy operates to
strongly push off the turret” and “would not understand that the toy tank is
not rollable after the turret is pushed off.” Id. at 5–6 (citing Ex. 1005 ¶¶ 4,
5; Ex. 2001 ¶¶ 48–58). Patent Owner also contends that “[t]here is no
discussion that the tank itself somehow needs to be reassembled or
reconfigured so that it is rollable for another round of play,” pushing off the
turret “does not mean the tank body is adversely impacted so that it is not
rollable,” and one of ordinary skill in the art “would understand that the tank
is still rollable even when the turret is pushed off, as the turret is a simple
mechanical assembly of parts unaffected by the motorized rolling
mechanism.” Id. at 6–7 (citing Ex. 2001 ¶¶ 55–56); see also id. at 11
(arguing that “Tomiyama does not teach the tank is not rollable after passing
over the ‘landmine’ magnet”).
Patent Owner further contends that “the motorized drive train and
wheels would plainly not be ‘destroyed’” because Tomiyama’s tank is
“quickly reassembled for another round of play,” if not “it would take new
components, reprogramming and extensive repair to make the toy
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operational,” and “[t]here is no teaching in Tomiyama the tank’s motorized
mechanism for imparting the rolling motion via the wheels is affected when
the turret is pushed off the tank.” PO Resp. 7 (citing Ex. 1005 ¶ 5).
Regarding Dr. Kurdrowitz’s testimony, Patent Owner argues that his
“opinion is unhelpful, as it is conclusory without any additional expert
explanation beyond Choirock’s proffered argument” and that claim 1
“requires ‘the toy is not rollable along the playing surface,’” not movement
ceasing. Id. (citing Ex. 1002 ¶ 89).
(b) Petitioner’s Reply
Petitioner replies that Patent Owner’s arguments are based on an
incorrect interpretation of the limitation, and that, without the turret and only
the bottom or “main body element,” the entire “toy” is not rollable. Pet.
Reply 1–2 (citing Pet. 31; PO Resp. 5–7). Petitioner argues that “the term
‘is not rollable’ is met when the toy ceases movement regardless of its
capability of being rolled or not” and Patent Owner’s argument “is irrelevant
because whether the remainder parts of the toy make the toy still capable of
rolling after destruction” is not pertinent to whether the limitation is met.
Id. at 2, 3 (citing PO Resp. 7). Petitioner also argues that Tomiyama
“expressly states that the toy runs until it passes over the magnet” and “[t]he
term ‘until’ as used in Tomiyama means running ‘up to such time as’ the toy
passes over the landmine magnet.” Id. at 2–3.
Petitioner also replies that one of ordinary skill in the art would
understand that Tomiyama’s toy is not rollable in the asserted second
position. Pet. Reply 3. Petitioner contends that “[t]he primary theme of the
toy is to have the effect of self-destruction” and “[t]he stated purpose of
Tomiyama is to have quick reassembly after destruction for another round of
play.” Id. (citing Ex. 1020 ¶ 21; Ex. 1021, 44:23–25, 47:1–11, 48:14–17).
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Petitioner also contends that one of ordinary skill in the art “would
understand that continuing to run only the bottom half of Tomiyama’s toy
after destruction without reassembly would make the toy no longer a self-
destruction toy” and “would not understand that Tomiyama suggests to
continue to run the toy after destruction without reassembly as such play is
not part of Tomiyama’s intended play.” Id. at 4 (citing Ex. 1020 ¶ 22).
According to Petitioner, “[t]he self-destructing components must be
reassembled before the toy is run for another round of play,” and Dr. Janét’s
deposition testimony is contradictory on this point. Pet. Reply 4 (citing
Ex. 1020 ¶ 23; Ex. 1021, 70:22–71:8). Petitioner also argues that one of
ordinary skill in the art “would understand that Tomiyama’s toy is expected
to stop running during the reassembly step in order to have a quick
reassembly,” and that Dr. Janét’s hypothetical examples of playing with
Tomiyama’s toy “are directly contrary to Tomiyama’s express teaching that
the tank toy runs until passing over the landmine magnet.” Id. at 4–5 (citing
Ex. 1020 ¶ 24; Ex. 1021, 69:20–70:5).
(c) Patent Owner’s Sur-Reply
Patent Owner replies that Petitioner’s argument based on the bottom
half not being the toy was not in the Petition. PO Sur-reply 1 (citing
Pet. 30). Patent Owner argues that “the turret being blown off does not
prevent continued rolling of the toy tank,” “there is no teaching or
suggestion that the toy ceases rolling once the turret comes off,” and
Petitioner conflates limitations to argue the toy is not rollable when it ceases
movement. Id. at 1–2 (citing Pet. Reply 5–7). Patent Owner also argues, as
an example, that “a toy that is programmed to cease movement upon an
event occurring (e.g., a sensor is triggered that there is a magnetic force) is
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not the same as a toy that is physically not rollable upon the event
occurring.” Id. at 2.
As for Tomiyama’s use of “until,” Patent Owner replies that
Tomiyama “teach[es] the toy continues to travel down the road and then at
the time the toy passes over the magnet, the turret is pushed off” and that
one of ordinary skill in the art “would not understand Tomiyama to teach the
tank is no longer rollable.” PO Sur-reply 2 (citing PO Resp. 5–7; Ex. 2001
¶¶ 52–53). Patent Owner also asserts that Tomiyama does not support
Petitioner’s argument that “continuing to run the toy after the turret is
pushed off would not make the toy a self-destructing toy” and Tomiyama’s
“toy is a self-destructing toy because the turret is pushed off.” Id. (citing
Pet. Reply 4; Ex. 1005 ¶ 5). Patent Owner further asserts that Petitioner
“does not point to any teaching in Tomiyama” indicating “the turret being
pushed off prevents the toy from continuing to roll” and, for example, “any
mechanical structure or electronics in the Tomiyama toy that would prevent
the toy from continuing to roll.” Id. at 2–3.
Regarding declarant testimony, Patent Owner argues that Dr.
Kudrowitz “bases its arguments on the intended play of the toy,” the
intended play “does not change the structure actually taught in Tomiyama,”
and Petitioner’s position “does not address the actual claim language that the
toy is not rollable.” PO Sur-reply 3 (citing Ex. 1020 ¶¶ 21–22). Patent
Owner contends that Dr. Janét opines that (1) children can play with
Tomiyama’s toy in a variety of ways which can include the toy rolling after
the turret is ejected and (2) the toy is still a self-destructing toy after the
turret is ejected. Id. (citing Ex. 1021, 68:15–22, 69:20–70:5, 72:18–22).
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(d) Tomiyama Does Not Teach Expressly “a Second
Position in which . . . the Toy is not Rollable Along the
Playing Surface”
In our Decision instituting review, based on the record as then
developed, we were not persuaded that Tomiyama alone teaches a toy that is
not rollable in the asserted second position. Dec. to Inst. 21–22 (citing
Ex. 1005 ¶ 4). Having the benefit of both parties’ arguments and evidence
now in the record, we reassess whether Tomiyama teaches or suggests a toy
that “is not rollable” in a “second position” where the first moveable element
has moved away from a main body.
Petitioner points to, at least, push-out body 2 of toy 1 and Tomiyama’s
statement that “the running toy 1 continues to travel down the road until the
running toy 1 is passing over the magnet 29.” Pet. 30–33 (citing Ex. 1002
¶¶ 83–93; Ex. 1005 ¶¶ 1–4, Figs. 1, 2, 4). Petitioner cites paragraph 1 of
Tomiyama, which describes a “self-destructing toy,” and paragraphs 2 and 3,
which describe the components of a particular embodiment, running toy 1.
See Ex. 1005 ¶¶ 1–3. Petitioner also cites paragraph 4 that includes the
sentence that “running toy 1 continues to travel down the road until the
running toy 1 is passing over magnet 29.” Id. ¶ 4. Tomiyama thereafter
describes that “[a]t this time, the magnet 29 attracts the magnet 16” and
starts a series of changes in component positions resulting in an “interesting
effect resembl[ing] the effect of a tank hitting a landmine and being
destroyed.” Id.; see also Ex. 2001 ¶ 52 (Dr. Janét opining that “Tomiyama
is simply explaining the steps of the tank rolling over the simulated magnet
and then the turret being pushed off”). The express components mentioned
are activating body 15; engaging body 5; engaging tab 6; push-out body 2;
spring 4; struck protrusion 22; self-destructing components 24, 27, 28; and
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self-destructing base 23. Ex. 1005 ¶ 4. Tomiyama does not mention in
paragraph 4 other components such as “motorized drive mechanism,”
wheel 30, battery case 31, or electric wire 32, that are described in
paragraph 3. See id. Moreover, paragraph 5 of Tomiyama describes that
“the toy can be quickly reconstructed for another round of play” because
“self-destructing components 24, 27, 28 including the self-destructing base
23 are easily assembled.” Tomiyama does not describe the user restoring
any other component for “another round of play.” See id. ¶ 5.
By describing expressly some components, but not wheel 30, as being
affected when toy 1 rolls over magnet 29, Tomiyama indicates that its
running toy 1 is still rollable in Petitioner’s asserted second position.
Ex. 1005 ¶ 4. Thus, one of ordinary skill in the art would understand that
Tomiyama’s toy 1 is still rollable in Petitioner’s asserted second position.
Ex. 2001 ¶ 53 (“In my opinion, a POSITA would not understand this section
of Tomiyama, i.e., ¶ 04, to explain that the running toy stops rolling on its
wheels after it passes over the ‘landmine’ magnet.”) ¶ 56 (“In my opinion, a
POSITA would easily understand that the tank is still rollable even when the
turret is pushed off, as the turret is a simple mechanical assembly of parts
unaffected by the motorized rolling mechanism.”). Our determination would
be the same even if we were to consider that the “toy” includes the turret and
bottom, as argued in Petitioner’s Reply, because Tomiyama does not
indicate that the bottom is not rollable in the asserted second position. See
Pet. Reply 1–3.
(2) Reason for Modifying Tomiyama to be Not Rollable in the
Second Position
In addition to providing arguments that one of ordinary skill in the art
would have modified Tomiyama in view of Thompson and would have
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modified Thompson in view of Tomiyama (Pet. 23–30), Petitioner argues
that, to any extent that Tomiyama alone does not teach explicitly “a second
position in which the toy is not rollable along the playing surface,” as recited
by claim 1, it would have been obvious to modify Tomiyama’s tank so that it
would no longer be capable of rolling after passing over the toy mine to
“further the theme of the toy—that it has rolled over a landmine and been
destroyed.” Id. at 33 (citing Ex. 1002 ¶¶ 83–90).
(a) Patent Owner’s Response
Patent Owner responds that Petitioner’s assertion that it would be
obvious to modify Tomiyama to be not rollable “is directly contrary to
Tomiyama’s teaching of making the toy (and specifically, the turret) easily
assembled so that ‘the toy can be quickly reconstructed for another round of
play.’” PO Resp. 8–9 (citing Pet. 33; Ex. 1002 ¶¶ 83–90; Ex. 1004 ¶ 5).
According to Patent Owner, “Tomiyama expressly discourages (and
therefore, teaches away from) Choirock’s proposal to push off one or more
of the wheels or cause the wheels to lock up so that the toy is no longer
‘capable of moving’” and Petitioner’s proposed modification “would
adversely affect the ability for the user, who is likely a child, to quickly and
easily reconstruct the toy for another round of play.” Id. at 9 (citing
Ex. 1002 ¶ 89; Ex. 2001 ¶¶ 57–58); see also id. at 11 (arguing that
“Tomiyama expressly discourages any modification to make the tank not
rollable after a single use of play”).
Patent Owner also argues that Petitioner does not explain how
Tomiyama would be modified to push off or lock up a wheel and has not
provided evidence of a reasonable expectation of success. PO Resp. 9.
Patent Owner further argues that Petitioner’s declarant testimony does not
discuss Tomiyama’s mechanical structure, does not explain what steps
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would be needed to push off or lock up a wheel, and “does not address how
the proposed modification would maintain Tomiyama’s stated desire to
quickly and easily reassemble the toy for another round of play.” Id. at 10
(citing Ex. 1002 ¶ 89; Ex. 1005 ¶ 5).
(b) Petitioner’s Reply
Petitioner replies that the “proposed modification is a relatively
simple modification and would not affect the user’s ability to quickly
reassemble the toy.” Pet. Reply 6; see also id. at 5 (summarizing Patent
Owner’s arguments) (citing PO Resp. 9–10). Petitioner contends that
modifying Tomiyama to push off a wheel “is a simple change in light of
Tomiyama’s teachings” and “would not add more complexity to reassembly
because any young child who would be able to replace the turret part would
also be able to replace a wheel without any difficulty.” Id. at 6 (citing
Ex. 1020 ¶¶ 28–29). Petitioner also contends that modifying Tomiyama to
lock up a wheel “does not require a significant redesign,” “can be done in
various ways,” “is not a complex redesign,” can be made “without undue
experimentation,” and “does not add more complexity to reassembly.” Id.
(citing Ex. 1020 ¶ 30).
(c) Patent Owner’s Sur-Reply
Patent Owner replies that Petitioner’s cited opinions from Dr.
Kudrowitz “are vague, have no foundation or basis, and do not identify any
structure that would need to be changed in Tomiyama to prevent the toy
from rolling.” PO Sur-reply 3–4 (citing Ex. 1020 ¶¶ 26–28; Ex. 1021,
73:25–75:13). Patent Owner also argues that the assertions “do not establish
any motivation for why a [person of ordinary skill in the art] would desire to
make these significant changes” and “significantly modifying the reference
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to achieve the claimed invention entails improper hindsight.” Id. at 4 (citing
Ex. 1020 ¶ 29).
(d) The Full Record Supports Petitioner’s Asserted Reason
for Modifying Tomiyama
Petitioner asserts that one of ordinary skill in the art would have made
the proposed modification to “further the theme of the toy—that it has rolled
over a landmine and been destroyed.” Pet. 33 (citing Ex. 1002 ¶¶ 83–90);
see also Ex. 1021 43:25–44:5 (Dr. Janét agreeing that a self-destructing toy
is part of the theme). Dr. Kudrowitz opines that a person of ordinary skill in
the art “would have found it obvious to modify Tomiyama to no longer be
capable of moving after passing over the toy mine.” Ex. 1002 ¶ 89; see also
Ex. 1020 ¶¶ 26–30 (providing similar testimony that the proposed
modification would push off or lock up a wheel). Dr. Janét opines that
pushing off or locking up a wheel is contrary to Tomiyama’s teaching that
“the toy can be quickly reconstructed for another round of play.” Ex. 2001
¶ 55 (citing Ex. 1005 ¶ 5), ¶ 58.
Patent Owner does not dispute that Petitioner’s proposed modification
would have furthered the theme of the toy. See generally PO Resp.; PO Sur-
reply. Regarding the dispute about quick reconstruction and asserted
teaching away, Tomiyama states that “[b]ecause the self-destructing
components 24, 27, 28 including the self-destructing base 23 are easily
assembled, the toy can be quickly reconstructed for another round of play.”
Ex. 1005 ¶ 5. This statement does not criticize, discredit, or otherwise
discourage Petitioner’s proposed modification to make Tomiyama’s tank no
longer capable of rolling after passing over toy mine 29. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). It also does not criticize, discredit, or
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otherwise discourage Petitioner’s specific modification of pushing off or
locking up a wheel. See Ex. 1005 ¶ 5.
Tomiyama does not indicate what number of components or
complexity would make the toy no longer capable of being “quickly
reconstructed for another round of play.” See generally Ex. 1005.
Tomiyama, however, does indicate that pushing off or locking up a wheel
would add to the “interesting effect” of “a tank hitting a landmine and being
destroyed.” Ex. 1002 ¶ 89; Ex. 1005 ¶ 4. One of ordinary skill in the art,
thus, would have understood that pushing off or locking up a wheel is a
benefit that may come at the expense of quick reconstruction, but would
have added to Tomiyama’s “interesting effect” and furthered the theme of
the toy, as argued by Petitioner. See Winner Int’l Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another.”).
Moreover, as discussed above, Tomiyama states that “running toy 1
continues to travel down the road until the running toy 1 is passing over
magnet 29.” Ex. 1005 ¶ 4. Dr. Kudrowitz opines that one of ordinary skill
in the art “would understand that this suggests that movement ceases once
the tank hits the magnet.” Ex. 1002 ¶ 89. We find that, even if Tomiyama
does not teach that toy 1 stops moving after passing over a toy mine,
Tomiyama suggests Petitioner’s proposed modification of making toy 1 no
longer be capable of rolling to result in the expressly described “interesting
effect . . . of a tank hitting a landmine and being destroyed.” Ex. 1005 ¶ 4.
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(e) Reasonable Expectation of Success
Patent Owner argues that Petitioner fails to provide the required
evidence that one of ordinary skill in the art would have had a reasonable
expectation of success in making the proposed modification. PO Resp. 9
Dr. Kudrowitz opines that the proposed modification “would have . . .
been easily accomplished by, for example, having the push-out body also
push off one or more wheels, by causing the wheels to lock up, or the like.”
Ex. 1002 ¶ 89. Dr. Janét testifies that one of ordinary skill in the art “would
readily understand that it would take significant redesign to push off or lock
up a wheel in such a way as to not cause permanent damage and/or
overheating” and “modifying Tomiyama so that a wheel is pushed off or
locked up would prevent quick and easy reassembly and, at the least, require
significant redesign.” Ex. 2001 ¶ 58.
Dr. Janét, however, does not opine that modifying Tomiyama to push
off or lock up a wheel would have been beyond ordinary skill in the art. See
Ex. 2001 ¶ 58; see also Ex. 1021, 75:16–20 (Dr. Janét testifying that seizing
the motor is one way to lock up a wheel), 76:20–77:1 (testifying that seizing
the motor is a known way to lock up a wheel). Patent Owner also does not
argue that the proposed modification would have been beyond ordinary skill
in the art. See generally PO Resp.; PO Sur-reply.
Moreover, Tomiyama itself provides evidence that it is within
ordinary skill in the art to include at least one self-destructing base with one
or more self-destructing components that can be reassembled quickly
enough for another round of play, such as the expressly described base 23
and components 24, 27, 28. Ex. 1005 ¶¶ 4, 5. Tomiyama also teaches that
the running toy can be “any other type of vehicle.” Id. ¶ 6; see also
Ex. 1021, 80:8–22 (Dr. Janét indicating that Tomiyama is not limited to
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tank-shaped toys). Tomiyama, thus, does not necessarily limit the self-
destructing base and components to only the turret shown and described.
These teachings taken together indicate that one of ordinary skill in the art
would have understood that another embodiment of Tomiyama could have a
wheel as the self-destructing base or component and still be quickly
reassembled for another round of play. See Ex. 1005 ¶¶ 4–6. Tomiyama,
thus, indicates pushing off a wheel to make the toy unrollable after passing
over magnet 29 would have been within ordinary skill in the art. See id.
Additionally, the motorized drive mechanism, battery case 31, and
electric wire 32 of Tomiyama indicate that it is within ordinary skill in the
art to electrically motorize the toy. See Ex. 1005 ¶ 3, Figs. 1–3. Tomiyama
also indicates it is within ordinary skill to convert magnetic attraction into
mechanical movement, such as magnet 29 rotating engaging body 5, and to
add a mechanical component turned by the drive mechanism, such as cam
plate 20. See id. ¶¶ 3, 4, Figs. 1–3. Based on the teachings of electrically
moving and stopping a toy and a magnet moving components inside the toy,
Tomiyama indicates that locking up a wheel to make the toy unrollable after
passing over magnet 29 would have been within ordinary skill in the art. See
id.
For the reasons above, based on the full record, Petitioner persuades
us that one of ordinary skill in the art would have had a reasonable
expectation of success in making Petitioner’s proposed modification.
Ex. 1002 ¶ 89; Ex. 1005 ¶¶ 3–6, Figs. 1–3.
c) “said at least one first moveable element being permanently
biased toward said second position, and . . . ”
Petitioner argues that Tomiyama teaches the above-quoted recitation.
Pet. 35–36 (citing Ex. 1002 ¶¶ 94–96; Ex. 1005 ¶¶ 2–4, Figs. 2, 4). In
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particular, Petitioner argues that Tomiyama’s push-out body teaches a first
moveable element permanently biased toward a second position. Id. at 35
(citing Ex. 1002 ¶¶ 94–96).
We find that the relied-upon portion of Tomiyama teaches that “the
utility model is embodied by attaching a push-out body 2 inside a tank-like
running toy 1 via a spring 4 so as to be able to push out.” Ex. 1005 ¶ 2. We
also find that Figures 2 and 4 of Tomiyama show spring 4 biases push-out
body 2 toward the turret of running toy 1. We further credit Dr. Kudrowitz’s
testimony regarding how push-out body 2 teaches the limitation because
Tomiyama supports it. Ex. 1002 ¶¶ 94–95 (citing Ex. 1005 ¶ 2, Figs. 2, 4).
Patent Owner does not present any argument that Tomiyama fails to
teach or suggest the permanent biasing of push-out body 2 toward a second
position. See generally PO Resp.; PO Sur-reply. Because Tomiyama
teaches push-out body 2 being permanently biased toward the turret to eject
it, Petitioner persuades us that Tomiyama teaches “said at least one first
moveable element being permanently biased toward said second position.”
d) “being provided with catch means co-operable with moveable
releasable latch means in said main body element to maintain
at least one said first moveable element in said first position
until said latch means is released, . . . ”
Petitioner argues that Tomiyama teaches the above-quoted recitation.
Pet. 37–39 (citing Ex. 1002 ¶¶ 97–100, Ex. 1005 ¶¶ 2–4, Figs. 2, 4).
Petitioner specifically argues that an edge of push-out body 2 engages with
engaging tab 6 of engaging body 5 to keep push-out body 2 in a first position
until released. Id. at 37–38.
We find that the relied-upon portions of Tomiyama teach “push-out
body 2 is engaged with an engaging tab 6 on an engaging body 5” and, when
magnet 29 attracts magnet 16, “engaging body 5 is rotated, the engaging
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tab 6 is withdrawn from the push-out body 2, and the push-out body 2 is
strongly pushed out by the spring 4.” Ex. 1005 ¶¶ 2, 4. Figure 2 of
Tomiyama shows engaging tab 6 holding push-out body 2 against spring 4
and Figure 4 shows push-out body 2 released from engaging tab 6. We
further credit Dr. Kudrowitz’s testimony how push-out body 2 teaches the
limitation because Tomiyama supports it. Ex. 1002 ¶¶ 97–99 (citing
Ex. 1005 ¶¶ 2, 4, Figs. 2, 4). Dr. Janét also provides similar testimony
regarding the sequence of events leading to ejecting self-destructing
components 24, 27, 28. See Ex. 2001 ¶¶ 32–47.
Patent Owner does not present any argument that Tomiyama fails to
teach or suggest the catch means and latch means. See generally PO Resp.;
PO Sur-reply. Because Tomiyama teaches that push-out body 2 has an edge
that engages with engaging tab 6 to keep push-out body 2 in a first position
against spring 4 and because push-out body 2 and engaging tab 6 are
equivalent structures that perform the functions of catch means and latch
means, Petitioner persuades us that Tomiyama teaches “being provided with
catch means co-operable with moveable releasable latch means in said main
body element to maintain at least one said first moveable element in said
first position until said latch means is released.”
e) “wherein said releasable latch means is provided with a
magnet, whereby said releasable latch means is moveable out
of engagement with said catch by attraction to said playing
surface, . . . ”
Petitioner argues that Tomiyama teaches the above-quoted recitation.
Pet. 40–42 (citing Ex. 1002 ¶¶ 101–107, Ex. 1005 ¶¶ 2–4). In particular,
Petitioner argues that magnet 16 moves activating body 15 that, in turn,
pushes rotating plate 8 to release engaging tab 6 from push-out body 2. Id.
at 40 (citing Ex. 1002 ¶¶ 101–107; Ex. 1005 ¶¶ 2–4).
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As discussed above, we find that the relied-upon portions of
Tomiyama teach magnet 29 attracting magnet 16 causes changes in, at least,
activating body 15 and rotating plate 8 that result in engaging tab 6 releasing
push-out body 2 so that spring 4 can bias push-out body 2 toward self-
destructing base 23 and components 24, 27, 28. Ex. 1005 ¶¶ 2–4. We also
credit Dr. Kudrowitz’s testimony because Tomiyama supports it. Ex. 1002
¶¶ 101–103 (citing Ex. 1005 ¶¶ 2–4). Moreover, Dr. Janét provides similar
testimony regarding the sequence of events leading to ejecting self-
destructing components 24, 27, 28. See Ex. 2001 ¶¶ 32–47.
Patent Owner does not present any argument that Tomiyama fails to
teach or suggest this limitation. See generally PO Resp.; PO Sur-reply.
Because Tomiyama teaches that engaging tab 6 is linked to the movement of
magnet 16 and the movement of magnet 16 causes engaging tab 6 to release
push-out body 2, Petitioner persuades us that Tomiyama teaches “wherein
said releasable latch means is provided with a magnet, whereby said
releasable latch means is moveable out of engagement with said catch by
attraction to said playing surface.”
(1) Reason for Modifying Tomiyama to Have a Magnet
Directly on the Latch Means
Petitioner argues that “[t]o the extent that the claim requires the
magnet to be directly on the ‘latch means,’ placing the magnet directly on
the ‘latch means’ of Tomiyama would have been an obvious modification.”
Pet. 41 (citing Ex. 1002 ¶¶ 101–107). Petitioner also argues that the
proposed modification “would simplify the structure, require fewer moving
parts, and allow for smaller construction.” Id. (citing Ex. 1002 ¶¶ 101–107).
According to Petitioner, “for a magnetically-operated latch, it is most
logical, and common, to position the magnet on the latch so that the magnet
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may directly move the latch disengage it.” Id. (citing Ex. 1002 ¶¶ 101–107).
Petitioner further indicates that the modification is within ordinary skill and
not a technological hurdle. Id. (citing Ex. 1002 ¶¶ 101–107).
Petitioner additionally argues that “having a magnet directly on a
magnetically-operated latch was well-known in the art,” as shown by, at
least, Aprile. Pet. 41 (citing Ex. 1002 ¶¶ 101–107; Ex. 1008, code (57),
3:32–4:32, Figs. 2, 3). Petitioner further presents a proposed combination of
Tomiyama and Aprile. Id. at 42 (citing Ex. 1002 ¶¶ 101–107; Ex. 1005
¶¶ 2–4).
We credit Dr. Kudrowitz’s testimony that one of ordinary skill in the
art would have modified Tomiyama to have a magnet directly on the latch to
“simplify the structure, require fewer moving parts, and allow for smaller
construction” because record evidence supports it. Ex. 1002 ¶ 104;
Ex. 1008, code (57), 3:32–4:32, Figs. 2, 3. We also credit Dr. Kudrowitz’s
testimony that one of ordinary skill in the art would have had a reasonable
expectation of success in modifying Tomiyama in the manner asserted by
Petitioner. Id.
Patent Owner does not present any argument disputing Petitioner’s
proposed modification to place a magnet directly on the asserted latch. See
generally PO Resp.; PO Sur-reply. To the extent that a magnet is required to
be directly on the latch, based on the full record before us, Petitioner
persuades us that one of ordinary skill in the art would have modified
Tomiyama so that “said releasable latch means is provided with a magnet”
with a reasonable expectation of success.
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f) “whereby a rolling of the toy along the playing surface ceases
when said latch means is moved out of engagement with said
catch.”
Petitioner argues that Tomiyama teaches the above-quoted recitation.
Pet. 42–43 (citing Ex. 1002 ¶¶ 83–90, 108–110; Ex. 1005 ¶¶ 4–5).
Petitioner cites to Tomiyama’s statement that “when a magnet 29 resembling
a land mine is placed on a road traveled over by the running toy 1 shown in
FIG. 2, the running toy 1 continues to travel down the road until the running
toy is passing over the magnet 29.” Id. (citing Ex. 1005 ¶ 4)
For the reasons discussed above in Section II.D.2.(b).(1)., Petitioner
does not persuade us that Tomiyama teaches that running toy 1 ceases
rolling after passing over magnet 29. Petitioner, however, persuades us that
one of ordinary skill in the art would have been motivated to modify
Tomiyama’s toy to cease rolling to further the theme of the toy and that
Tomiyama suggests Petitioner’s proposed modification. Ex. 1002 ¶ 89;
Ex. 1005 ¶ 4.
Patent Owner does not provide arguments specifically for this
limitation but does dispute that Tomiyama’s toy is or can be modified to be
not rollable after passing over magnet 29. See PO Resp. 3–11; PO Sur-reply
1–4. For the same reasons above in Section II.D.2.(b).(2)., based on the full
record before us, Petitioner persuades us that Tomiyama teaches or would
have rendered obvious the recitation “whereby a rolling of the toy along the
playing surface ceases when said latch means is moved out of engagement
with said catch.”
3. Analysis of Claim 2
Claim 2 depends from claim 1 and recites “wherein said main body
element, together with said at least one first moveable element, are a first
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shape when said at least one first moveable element is in said first position,
and a second shape when said at least one first moveable element is in said
second position.” Ex. 1001, 15:41–45. Petitioner argues that Tomiyama
teaches the limitations of claim 2 because Tomiyama’s toy has a tank shape
in a first position and a tank without a turret in a second position. Pet. 43
(citing Ex. 1002 ¶¶ 111–113; Ex. 1005 ¶¶ 2–4, Figs. 2, 4).
As discussed above, we find that the relied-upon portions of
Tomiyama teach a tank-like running toy 1 that can pass over magnet 29 to
cause self-destructing base 23 and components 24, 27, 28 to be ejected and
resemble a tank hitting a landmine. Ex. 1005, 2–4, Figs. 2–4. We also
credit Dr. Kudrowitz’s testimony regarding claim 2 because Tomiyama
supports it. Ex. 1002 ¶¶ 111–112 (citing Ex. 1005 ¶¶ 2–4, Figs. 2–4).
Patent Owner does not present any arguments specifically for the
challenged dependent claims. See generally PO Resp.; PO Sur-reply; see
also Tr. 96:15–18 (Patent Owner’s counsel confirming that no arguments
specifically for dependent claims 2–5 were presented). Because we find that
Tomiyama teaches a toy that has a tank shape and can be made to resemble a
destroyed tank, Petitioner persuades us that Tomiyama teaches “wherein
said main body element, together with said at least one first moveable
element, are a first shape when said at least one first moveable element is in
said first position, and a second shape when said at least one first moveable
element is in said second position,” as recited by claim 2.
For the reasons discussed above, Petitioner persuades us that
Tomiyama teaches or suggests each limitation of claim 1, from which
claim 2 depends. Based on the full record before us and our findings from
Tomiyama regarding the limitations of claim 2, Petitioner persuades us by a
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preponderance of the evidence that Tomiyama teaches or suggests each
limitation of dependent claim 2.
4. Analysis of Claim 3
Claim 3 depends from claim 2 and recites “wherein said first shape is
selected from the group consisting of spheres, cubes, tetrahedrons, pyramids,
triangular prisms, egg shapes, parallelepipeds, cylinders, discus shapes,
toruses, teardrops, lozenges, animal shapes, planet shapes, robot shapes,
vehicle shapes, building shapes, tree shapes, sports equipment related
shapes, weapons shapes, character-head shapes, and the like.” Ex. 1001,
15:46–52. Petitioner argues that “Tomiyama has the shape of a vehicle.”
Pet. 43 (quoting Ex. 1005 ¶ 6) (citing Ex. 1002 ¶¶ 114).
We find that the relied-upon portion of Tomiyama teaches that “[t]he
running toy . . . can be a tank as shown in the drawings, or any other type of
vehicle.” Ex. 1005 ¶ 6. We credit Dr. Kudrowitz’s testimony regarding
claim 3 because Tomiyama supports it. Ex. 1002 ¶¶ 114 (quoting from
Ex. 1005 ¶ 6).
Patent Owner does not present any arguments regarding Petitioner’s
challenge of claim 3 based on Tomiyama. See generally PO Resp.; PO Sur-
reply; see also Tr. 96:15–18 (Patent Owner’s counsel confirming that no
arguments specifically for dependent claims 2–5 were presented). Because
we find that Tomiyama teaches a toy that can be any vehicle shape,
Petitioner persuades us that Tomiyama teaches “wherein said first shape is
selected from the group consisting of . . . vehicle shapes,” as recited by
claim 3.
For the reasons discussed above, Petitioner persuades us that
Tomiyama teaches or suggests each limitation of claims 1 and 2, from which
claim 3 depends. Based on the full record before us and our findings from
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Tomiyama regarding the limitations of claim 3, Petitioner persuades us by a
preponderance of the evidence that Tomiyama teaches or suggests each
limitation of dependent claim 3.
5. Analysis of Claim 4
Claim 4 depends from claim 3 and recites “wherein said releasable
latch means is biased to a position in engagement with said catch.”
Ex. 1001, 15:53–55. Petitioner argues that Tomiyama teaches the
limitations of claim 4. Pet. 44–45 (citing Ex. 1002 ¶¶ 115–118; Ex. 1005
¶¶ 3–4, Fig. 4).
In particular, Petitioner contends that “[s]pring 14 biases the rotating
plate 8 such that the latch, which is linked to the rotating plate, and the end
of push-out body 2, which is the catch, are engaged,” “Figure 4 . . .
illustrates that the latch is biased towards engagement with the catch by
spring 14,” and “even though the catch has been released, the latch is
positioned to be in engagement with the catch by spring 14.” Id. at 45
(citing Ex. 1005 ¶¶ 3–4, Fig. 4; Ex. 1002 ¶¶ 115–118).
We find that the relied-upon portions of Tomiyama teach that “14 is a
coil spring” and “rotation around the cam plate 20 causes the rotating plate 8
to push in the engaging body 5, release the engaging tab 6 from the push-out
body 2, and activate the push-out body 2.” Ex. 1005 ¶ 3. Figure 4 of
Tomiyama shows that spring 14 biases an end of rotating plate 8 farthest
from engaging body 5. Tomiyama goes on to describe how, when the
running toy 1 passes over magnet 29, magnet 29 attracts magnet 16 and
rotates activating body 15 which causes rotating plate 8 to move over cam
plate 20, which causes engaging body 5 to withdraw engaging tab 6 from
push-out body 2. Id. ¶ 4. Push-out body 2 is biased to strike struck
protrusion 22 and eject self-destructing components 24, 27, 28. Id.
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Tomiyama, however, does not describe expressly how these
components return to positions so that toy 1 can be played with magnet 29
again. See id. ¶¶ 2–4. Tomiyama simply states that “[b]ecause the self-
destructing components 24, 27, 28 including the self-destructing base 23 are
easily assembled, the toy can be quickly reconstructed for another round of
play.” Id. ¶ 5. Both parties’ declarants agree that Tomiyama teaches that its
toy is quickly reconstructed for another round of play. See Ex. 1020 ¶ 21,
23; Ex. 2001 ¶ 55.
Based on the statement “[b]ecause the self-destructing components
24, 27, 28 including the self-destructing base 23 are easily assembled, the
toy can be quickly reconstructed for another round of play,” Tomiyama
suggests that restoring components 24, 27, 28 and base 23 on toy 1 makes
toy 1 ready for passing over magnet 29 again. Ex. 1005 ¶ 5. In particular,
Tomiyama’s disclosure suggests that restoring base 23 on toy 1 would press
down on push-out body 2 against the biasing of spring 4 and cause push-out
body 2 to rotate around support shaft 3. See id. ¶¶ 2–4, Figs. 2, 4. When
toy 1 is away from magnet 29 and no longer attracting magnet 16,
Tomiyama describes that spring 14 biases rotating plate 8 to rotate around
mounting shaft 10 back to its original position away from cam plate 20. See
id. ¶ 3, Figs. 3–5. The rotation of rotating plate 8 would then cause
activating body 15 to rotate around mounting shaft 17 back to its original
position. See id. ¶ 2, Figs. 4, 5. Tomiyama also indicates pressing down on
push-out body 2 would cause the edge of push-out body 2 to contact rotating
body 5 and rotate rotating body 5 back around support shaft 7 so that
engaging tab 6 engages the edge of push-out body 2. See id. ¶¶ 2–4, Figs. 2–
4; see also Ex. 1021 156:2–8 (Dr. Janét opining that Tomiyama indicates
pressing down on push-out body 2 would result in the push-out body 2 being
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held). The parties’ declarants provide opinions on Tomiyama’s disclosure
that support our findings of how Tomiyama’s toy 1 is made ready for
another round of play. See Ex. 1002 ¶¶ 42–46 (Dr. Kudrowitz’s opinion
regarding Tomiyama’s disclosure); Ex. 2001 ¶¶ 32–47 (Dr. Janét’s opinion
regarding Tomiyama’s disclosure).
The full record does not support Dr. Kudrowitz’s opinion that one of
ordinary skill in the art would have understood that engaging tab 6 “is
biased” towards engaging push-out body 2 because of spring 14. Ex. 1002
¶ 115. Although Tomiyama expressly teaches that spring 14 biases rotating
plate 8, Tomiyama does not expressly teach that Petitioner’s asserted latch,
engaging tab 6, is biased by spring 14 to engage push-out body 4. See
Ex. 1005 ¶¶ 3–4. Tomiyama indicates that spring 14 biases rotating body 8
away from cam plate 20 and restores activating body 15 to its original
position. See id. Tomiyama does not describe expressly that engaging tab 6,
after it releases push-out body 2, is biased to return to its previous position to
latch push-out body 2, even if spring 14 biases rotating plate 8 to rotate
around mounting shaft 10 back to its original position away from cam plate
20. See id.
a) Reason for Modifying Tomiyama to Have a Torsion Spring on
Support Shaft 7
Petitioner alternatively argues that one of ordinary skill in the art
would have “incorporate[d] a torsion spring on support shaft 7 to more
directly bias the latch into engagement with the keeper.” Pet. 45 (citing
Ex. 1002 ¶¶ 115–118). Petitioner contends that the proposed modification
would be a simplification because it would “include a torsion spring like
spring 4 of Tomiyama on support shaft 7 such that it directly biases
engaging body 5 and/or engaging tab 6 toward push-out body 2.” Id. (citing
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Ex. 1002 ¶¶ 115–118). According to Petitioner, “[t]he use of such springs,
and simplifying the magnetically-responsive mechanism in Tomiyama’s toy
tank this way would have been well within the understanding and motivation
of a [person of ordinary skill in the art].” Id. (citing Ex. 1002 ¶¶ 115–118).
We credit Dr. Kudrowitz’s opinion that one of ordinary skill in the art
would have “recognize[ed] the value of keeping the latch engaged (rather
than, for example, allowing it to shake loose as the tank moves on a
surface),” one of ordinary skill in the art would have sought out “various
biasing mechanisms, such as springs, to keep the ‘latch means’ engaged,”
and that the proposed modification would have “simplif[ied] the latch
mechanism while making it more robust and preventing it from, for
example, inadvertently releasing during play.” Ex. 1002 ¶ 117. Regarding
reasonable expectation of success, Dr. Kudrowitz testifies that one of
ordinary skill in the art “would be completely adept at including a spring on
an axel to bias one toy element towards another.” Id.
Record evidence shows that a latch biased by a spring was known.
For example, as discussed below, Aprile teaches using a spring to bias a
magnetically actuated latch into latching position. Ex. 1008, 4:6–12, Figs. 2,
3. The full record, thus, provides evidence that the use and implementation
of spring-biased latches were within ordinary skill, and that one of ordinary
skill in the art would have had a reasonable expectation of success in
modifying Tomiyama’s engaging tab 6 to be biased back to its latching
position by a spring. See, e.g., id.
Patent Owner does not present any arguments regarding Petitioner’s
challenge of claim 4 based on Tomiyama alone or based on Shannon
modified by Tomiyama. See generally PO Resp.; PO Sur-reply; see also Tr.
96:15–18 (Patent Owner’s counsel confirming that no arguments specifically
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for dependent claims 2–5 were presented). Thus, based on the full record,
Petitioner persuades us that one of ordinary skill in the art would have
modified Tomiyama to include a torsion spring, like spring 4, on support
shaft 7 so that engaging body 5 and engaging tab 6 are biased toward push-
out body 2 to prevent inadvertent release during play. Pet. 45; Ex. 1002
¶¶ 115–118; see also Ex. 1021, 162:8–24 (Dr. Janét agreeing that ejecting
the turret before reaching the toy landmine would be undesirable). The full
record also persuades us that one of ordinary skill in the art would have had
a reasonable expectation of success in making Petitioner’s proposed
modification. Ex. 1002 ¶¶ 115–118.
For the reasons discussed above, Petitioner persuades us that
Tomiyama teaches or suggests the limitations of claims 1–3, from which
claim 4 depends. Based on the full record before us and our determinations
regarding Petitioner’s proposed modification of Tomiyama, Petitioner
persuades us by a preponderance of the evidence that (1) Tomiyama teaches
or suggests each limitation of dependent claim 4 and (2) one of ordinary skill
in the art would have had a reason to modify Tomiyama with a reasonable
expectation of success.
6. Objective Indicia of Nonobviousness
The parties do not rely on any evidence of objective indicia of
nonobviousness for any of claims 1–4. See generally Pet.; PO Resp.; PO
Sur-reply.
7. Weighing the Graham Factors
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether
the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat, 876 F.3d at 1361. Above, based on the full record before us, we
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provide our factual findings regarding (1) the level of ordinary skill in the
art, (2) the scope and content of the prior art, (3) any differences between the
claimed subject matter and the prior art, and (4) objective evidence of
nonobviousness.
In particular, we find that (1) Petitioner’s proposed level of ordinary
skill in the art is consistent with the prior art of record, (2) Tomiyama
teaches or suggests all the limitations of claims 1–4, (3) one of ordinary skill
in the art would have modified Tomiyama with a reasonable expectation of
success, and (4) no objective evidence of nonobviousness has been presented
in relation to claims 1–4. Weighing these underlying factual determinations,
a preponderance of the evidence persuades us that claims 1–4 of the ’508
patent are unpatentable over Tomiyama.
E. Obviousness Based on Shannon Modified by Tomiyama
In a “Summary of Argument,” Petitioner contends that the
“combination of magnetic latches and transformable toys” was known.
Pet. 5. Petitioner refers to Tomiyama and Aprile as examples. Id.
Petitioner also argues that Shannon and Thompson teach toys that transform
from a rollable shape to another shape. Id. Petitioner, thus, argues that the
challenged claims represent the application of a known mechanism
(magnetically-releasable latches) to a known type of toy (rollable toys that
open during play) to achieve the expected result of a ball that magnetically
opens when near a magnetic surface. Id. at 6.
Specifically for the challenge of claims 1–5 based on the combination
of Tomiyama and Shannon, Petitioner presents two modifications. See id. at
55–71. In the first proposed modification, Petitioner contends that one of
ordinary skill in the art would have modified Tomiyama in view of Shannon
to be a rollable toy. Id. at 56–58. In another, separate modification,
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Petitioner contends that one of ordinary skill in the art would have modified
Shannon in view of Tomiyama to include a magnetically-released fastener in
Shannon’s toy so it can be rolled towards a magnet to open. Id. at 56–57,
58–61.
Patent Owner responds that (1) Tomiyama does not teach or suggest a
toy comprising “at least one first moveable element . . . moveable . . . to a
second position in which . . . the toy is not rollable along the playing
surface” (PO Resp. 35), (2) it would not have been obvious to modify
Tomiyama to be rollable in the recited second position (id. at 36), and (3) it
would not have been obvious to modify Tomiyama to be a rollable ball (id.
at 36–37). Patent Owner also responds that it would not have been obvious
to modify Shannon to include the magnetically-releasable latch of
Tomiyama. Id. at 37–40. Patent Owner further responds that Petitioner
conflates the obviousness analysis with the analogous art analysis, merely
argues that the modification “could,” not would, be done, and improperly
uses hindsight in the obviousness analysis. Id. at 40–42.
For our analysis below, we only consider Petitioner’s proposed
modification of Shannon in view of Tomiyama to include a magnetically-
released fastener in a toy to be rolled towards a magnet to open. Pet. 56–57,
58–61. We do not reach Petitioner’s modification of Tomiyama by the
teachings of Shannon to be a rollable toy. Id. at 56–58.
For the following reasons, based on the full record before us, we
determine that Petitioner shows by a preponderance of the evidence that
claims 1–5 are unpatentable over Shannon as modified by the teachings of
Tomiyama.
1. Scope and Content of the Asserted Prior Art
We discuss Tomiyama above.
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a) Shannon (Ex. 1007)
Shannon “relates to a transformable toy.” Ex. 1007, 1:6–7. Shannon
states that “[t]he need for toys that intrigue through being transformable as
between two or more configurations is evidenced by U.S. Pat. No.
4,674,990.” Id. at 1:8–10. According to Shannon, the identified patent
describes that (1) “a number of parts are pivotably and movably
interconnected to provide a vehicle formed by folding and a robotic,
humanoid form by being unfolded,” (2) there is a “benefit to children’s
interest obtained through having such configurable toys,” and (3) there are
“advantages of having such toys which can be transformed with ease by a
simple operation and manufactured with low cost.” Id. at 1:12–20.
Shannon’s “improvement over the prior art” relates to “a three
dimensional toy structure which is reversibly transformable between a
playable closed configuration having an exterior surface essentially entirely
curvilinear and an open condition comprised of a playable object defined by
it[]s internal surfaces.” Id. at 2:11–16. The “foldable, transformable toy”
can include “spring elements operable to drive the segments of the toy to
spring open upon release of a fastener holding the segments in a closed
position.” Id. at 2:4–7. “Spring action in the hinges may be employed to
surprise the user and to enhance play as well as education through such
novelty,” and “spring action with supplemental metal hinge elements” can
provide “a quicker and more forceful hinge action.” Id. at 2:42–45, 5:26–28.
“Fasteners are provided to hold the toy in the closed configuration
defining the inanimate image and upon release to allow the appendages to
open relative to the body to define the open configuration and animate
image.” Id. at code (57); see also id. at 2:61–66 (describing that “[f]asteners
may be provided on the body, which allow the appendages thereon to be
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folded together and locked into a position defining the inanimate
configuration of the toy” and “are releasable to permit transformation from
the closed inanimate configuration to the open animate configuration”).
Figures 7 and 9 of Shannon are reproduced below.

Figures 7 and 9 show first and last folding steps of a rabbit-like object
to a ball. Ex. 1007, 3:9–15, 3:39–40, 3:44–46. Rabbit toy 10 includes
appendages with hinges so that the appendages can be folded and urged to
unfold when released from the folded configuration. Id. at 5:3–6, 5:10–24.
In the folded configuration, the hinged appendages conceal interior
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surfaces 44, 46, 50, 52, 58, 62, 64 and display only exterior surfaces 42, 54,
68, 69. Id. at 6:6–30, 6:52–55.
Fastener 32 and fastener 38 latch together and hold toy 10 closed in a
ball-shaped configuration. Ex. 1007, 6:31–33. “Peeling the appendages
apart and separating these fasteners can result in the instant transformation
of the toy from the ball enclosed surface shape of FIG. 9 to the open shape
shown in FIG. 6, the hinges serving to result in an unfolding and opening up
of the appendages.” Id. at 6:37–42. Fasteners 32, 38 may be hook and loop
fasteners or “may be other types of fasteners including magnets, metal or
plastic intermating snaps or traditional fasteners such as hook and eye or
button types.” Id. at 5:59–65.
Both parties’ declarants provide testimony that supports the above
description of Shannon. See Ex. 1002 ¶¶ 53–55; Ex. 2001 ¶ 74.
2. Analysis of Claim 1
a) “A toy comprising . . . ”
Petitioner argues that Shannon teaches a toy. Pet. 61 (citing Ex. 1002
¶ 148; Ex. 1005 ¶¶ 1, 4; Ex. 1007, Abstract, Figs. 1, 1A).
To the extent the preamble is limiting, we find that the Abstract of
Shannon describes that a
toy is transformable into two distinct open and closed conditions
(O, C) through a body and appendages each of a fixed geometric
shape mentioned to collectively present the image of an
identifiable animate object in the open condition (O) and an
image of an inanimate object in the form of a rounded structure
in the closed condition (C) through hinges connecting the body
and the appendages to permit controlled relative movement of
the appendages both for transformation and play in either
configuration.
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Ex. 1007, code (57); see also id. at Figs. 1, 1A. We also credit Dr.
Kudrowitz’s testimony regarding the preamble because Shannon supports it.
Ex. 1002 ¶ 148 (citing Ex. 1007, code (57), Figs. 1, 1A); see also Ex. 2001
¶ 74 (stating that “Shannon discloses a transformable toy movable from an
open configuration to a closed configuration ‘through a body and
appendages’”).
Patent Owner does not present an argument that Shannon fails to
teach or suggest the preamble of claim 1. See generally PO Resp.; PO Sur-
reply. Based on the full record before us, because Shannon teaches a toy
that is transformable, Petitioner persuades us that Shannon teaches the
preamble of claim 1.
b) “a main body element and at least one first moveable element
associated with said main body element and moveable with
respect thereto from a first position adjacent said main body
element in which the toy is rollable along a playing surface
containing a metal or magnetic material, to a second position
in which at least a portion of said first moveable element has
moved away from said main body element and the toy is not
rollable along the playing surface, . . .”
Petitioner argues that Shannon teaches the above-quoted recitation.
Pet. 61–65 (citing Ex. 1002 ¶¶ 149–153; Ex. 1007, 2:12–16, Figs. 1, 6, 8).
We find that the relied-upon portion of Shannon teaches “a three
dimensional toy structure which is reversibly transformable between a
playable closed configuration having an exterior surface essentially entirely
curvilinear and an open condition comprised of a playable object defined by
it[]s internal surfaces.” Ex. 1007, 2:12–16. We also find that Figures 1 and
6 show “an animate rabbit-like object” and Figure 8 shows “a second step of
folding” that shows arms and legs of the rabbit-like object folded onto its
body. Id. at 3:9–11, 3:38–39, 3:42–43.
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We further credit Dr. Kudrowitz’s testimony because Shannon
supports it. Ex. 1002 ¶¶ 149–153 (citing Ex. 1007, 2:12–16, Figs. 1, 1A, 6,
8). In particular, Figures 1 and 1A show a first or closed position in which
the “rabbit-like object” of Shannon is a rollable ball, and a second or open
position in which the object resembles a rabbit doll. Id. ¶ 150 (citing
Ex. 1007, Figs. 1, 1A); see also Ex. 2001 ¶ 74 (stating that “Shannon
discloses a transformable toy movable from an open configuration to a
closed configuration ‘through a body and appendages’”). Figure 6 of
Shannon shows that the “rabbit-like object” of Shannon has a main body,
and Figure 8 shows a partial transformation. Ex. 1002 ¶¶ 151, 152 (citing
Ex. 1007, Figs. 6, 8). Dr. Kudrowitz also opines that “[t]he doll is not
rollable in its open configuration (that is, the ‘second position’)” because
“the doll is no longer a sphere, and has multiple appendages which would
impede any attempt to roll the doll.” Id. ¶ 153.
Patent Owner does not address whether Shannon fails to teach or
suggest any limitations of claim 1 (id. at 36–42 (arguing that it would not be
obvious to modify the references and that Petitioner’s obviousness theories
have deficiencies)). Petitioner replies that it “stated that Shannon’s doll is
not rollable in its open configuration.” Pet. Reply 17 (citing Pet. 57–61, 65).
Patent Owner replies that “Tomiyama does not disclose that it is not rollable
in the second position, nor would it be obvious to modify Tomiyama’s tank
to be not rollable in the second position.” PO Sur-reply 13.
Based on the full record before us, because Shannon teaches a rabbit-
like object that has a main body with appendages, such as head, ears, arms,
and legs attached to the main body, and those appendages are movable away
from the main body to transform the toy from a rollable ball to a rabbit-like
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object or rabbit doll that is not rollable, Petitioner persuades us that Shannon
teaches:
a main body element and at least one first moveable element
associated with said main body element and moveable with
respect thereto from a first position adjacent said main body
element in which the toy is rollable along a playing surface
containing a metal or magnetic material, to a second position in
which at least a portion of said first moveable element has moved
away from said main body element and the toy is not rollable
along the playing surface.
Ex. 1002 ¶¶ 149–153 (emphasis omitted); Ex. 1007, 2:12–16, Figs. 1, 6, 8.
Below in our analysis of Petitioner’s proposed modification of Shannon, we
address further the recitation “playing surface containing a metal or
magnetic material.”
c) “said at least one first moveable element being permanently
biased toward said second position, and . . . ”
Petitioner argues that Shannon teaches “at least one first moveable
element being permanently biased toward said second position.” Pet. 65–66
(citing Ex. 1002 ¶¶ 154–155; Ex. 1007, 2:4–7, 2:42–45, 4:14–15, 5:24–28,
6:37–42, Fig. 25).
We find that the relied-upon portions of Shannon teach (1) “a
foldable, transformable toy including spring elements operable to drive the
segments of the toy to spring open upon release of a fastener holding the
segments in a closed position,” (2) “[s]pring action in the hinges . . .
employed to surprise the user and to enhance play as well as education
through such novelty,” (3) “spring action with supplemental metal hinge
elements, to obtain a quicker and more forceful hinge action,” and
(4) “[p]eeling the appendages apart and separating these fasteners [to] result
in the instant transformation of the toy from the ball enclosed surface shape
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of FIG. 9 to the open shape shown in FIG. 6, the hinges serving to result in
an unfolding and opening up of the appendages.” Ex. 1007, 2:4–7, 2:42–45,
5:26–28, 6:37–42. We also find that Figure 25 shows “a hinge with a
biasing means.” Id. at 4:14–15. We further credit Dr. Kudrowitz’s
testimony because Shannon supports it. Ex. 1002 ¶¶ 154–155 (citing
Ex. 1007, 2:4–8, 2:42–45, 4:14–15, 5:25–28, 6:40–42, Fig. 25).
Patent Owner does not present an argument that Shannon fails to
teach or suggest a moveable element being permanently biased toward a
second position. See generally PO Resp.; PO Sur-reply. Based on the full
record, because Shannon teaches appendages with spring action or spring
action supplemented by hinges to spring open from a ball to an open shape
upon releasing a fastener, Petitioner persuades us that Shannon teaches “said
at least one first moveable element being permanently biased toward said
second position,” as recited by claim 1.
d) “being provided with catch means co-operable with moveable
releasable latch means in said main body element to maintain
at least one said first moveable element in said first position
until said latch means is released, . . . ”
Petitioner argues that Shannon teaches the above-quoted recitation.
Pet. 66–67 (citing Ex. 1002 ¶¶ 156–157; Ex. 1007, 5:59–65, 12:1–3, 12:16–
19).
As discussed above in Section II.C., for “catch means,” we determine
that the corresponding structure for performing the function of
“cooperat[ing] with the latch means to maintain the at least one first
movable element in the first position until the latch means is released” is
structure elements 5c, 7c. Pet. 20; Ex. 1001, 3:42–4:16, 8:6–17, Figs. 1,
5(a); Ex. 1002 ¶¶ 24–25. For “latch means,” we determine that the
corresponding structure for performing the function of “cooperat[ing] with
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the catch means to maintain the at least one first movable element in the first
position until the latch means is released” is locking component 10. Pet. 19;
Ex. 1001, 3:42–4:16, 8:6–17, Figs. 1, 5(a); Ex. 1002 ¶¶ 22–23.
We find that the relied-upon portion of Shannon teaches
fasteners 32 and 38 ma[y] be of the hook and loop variety sold
under the trademark “VELCRO” which engage and latch
together under simple direct pressure, or there may be other types
of fasteners including magnets, metal or plastic intermating
snaps or traditional fasteners such as hook and eye or button
types
Ex. 1007, 5:59–65. See also id. at code (57) (stating that “[f]asteners are
provided to hold the toy in the closed configuration defining the inanimate
image and upon release to allow the appendages to open relative to the body
to define the open configuration and animate image”). Shannon also claims
a “fastener means” and “securement means.” Id. at 11:32–34, 12:1–3,
12:16–19. We further credit Dr. Kudrowitz’s testimony because Shannon
supports it. Ex. 1002 ¶¶ 156–157 (citing Ex. 1007, 2:61–66, 5:59–65, 12:1–
3, 12:16–19); see also Ex. 2001 ¶ 74 (citing Ex. 1007, 2:61–66, 5:59–65,
6:34–42, 7:26–32, 8:17–20).
Patent Owner does not present an argument that Shannon fails to
teach or suggest the required catch means and releasable latch means. See
generally PO Resp.; PO Sur-reply. Based on the full record before us,
because Shannon teaches fasteners 32 on the ears of the rabbit-like object
co-operable with fastener 38 on the body of the object in a closed position
until released and because Shannon teaches alternatives for fasteners 32, 38
that are equivalent structures that perform the functions of catch means and
latch means, Petitioner persuades us that Shannon teaches “being provided
with catch means co-operable with moveable releasable latch means in said
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main body element to maintain at least one said first moveable element in
said first position until said latch means is released.” We address further the
catch means and moveable releasable latch means below in our analysis of
Petitioner’s proposed modification.
e) “wherein said releasable latch means is provided with a
magnet, whereby said releasable latch means is moveable out
of engagement with said catch by attraction to said playing
surface, . . . ”
Petitioner argues that “Shannon teaches that magnets may be used as
fasteners” but not “a magnet on the latch means.” Pet. 67 (citing Ex. 1002
¶¶ 158–159; Ex. 1007, 5:59–65). Petitioner also argues that Tomiyama
teaches a “releasable latch means [that] is provided with a magnet, whereby
said releasable latch means is moveable out of engagement with said catch
by attraction to said playing surface.” Id. at 40–42 (citing Ex. 1002 ¶¶ 101–
107; Ex. 1005 ¶¶ 2–4), 67 (citing Ex. 1002 ¶¶ 158–159).
As discussed above, we find that the relied-upon portion of Shannon
teaches “other types of fasteners including magnets, metal or plastic
intermating snaps or traditional fasteners such as hook and eye or button
types.” Ex. 1007, 5:59–65. We also credit Dr. Kudrowitz’s testimony
because Shannon supports it. Ex. 1002 ¶ 159 (citing Ex. 1007, 5:59–65).
Regarding Tomiyama, we find that the relied-upon portions of
Tomiyama teach “a push-out body 2 [that is] inside a tank-like running toy
1,” “self-destructing base 23 having a struck protrusion 22 on the lower end
[that] is loosely mounted on the running toy 1,” and “struck protrusion 22
[that] is positioned over the push-out body 2.” Ex. 1005 ¶ 2. Tomiyama
also teaches that “other self-destructing components 24, 27, 28 are mounted
on the self-destructing base 23 so as to easily self-destruct.” Id. Tomiyama
further teaches how push-out body 2 operates to eject self-destructing
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base 23 and self-destructing components 24, 27, 28 when running toy 1
passes over magnet 29 on a playing surface and attracts magnet 16 in
running toy 1. See id. ¶¶ 3–4. We credit Dr. Kudrowitz’s testimony that
magnet 29 attracting magnet 16 causes a latch to release from a catch via a
mechanically linked moveable component because Tomiyama supports it.
Ex. 1002 ¶¶ 101–103 (citing Ex. 1005 ¶¶ 2–4); see also Ex. 2001 ¶¶ 32–47
(Dr. Janét describing the operation of Tomiyama’s tank).
Patent Owner does not dispute Petitioner’s assertions regarding what
Shannon and Tomiyama teach or suggest in relation to the above-quoted
limitation. See generally PO Resp.; PO Sur-reply. Patent Owner, instead,
argues that one of ordinary skill in the art would not have combined
Shannon and Tomiyama for the reasons given by Petitioner, Petitioner’s
obviousness arguments have deficiencies, and the ordinary skilled artisan
would not have had a reasonable expectation of success in modifying
Shannon in view of Tomiyama. See PO Resp. 35–42; PO Sur-reply 13–19.
Because Shannon teaches using other types of fasteners with a magnet
and Tomiyama teaches a latch that moves out of engagement with a catch
after magnet 16 is attracted to magnet 29 on the playing surface, Petitioner
persuades us that Shannon and Tomiyama teach or suggest “wherein said
releasable latch means is provided with a magnet, whereby said releasable
latch means is moveable out of engagement with said catch by attraction to
said playing surface.”
Also, because Tomiyama teaches magnet 29 on the playing surface,
Petitioner persuades us that Tomiyama teaches a “playing surface containing
a metal or magnetic material.” Ex. 1001, 15:26–27. Furthermore,
Tomiyama teaches structures that are equivalent to the corresponding
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structures for performing the functions of catch means and latch means.
Ex. 1005 ¶¶ 2–4.
(1) Reason to Modify Shannon with Tomiyama’s Teachings
Petitioner argues that Shannon and Tomiyama are in the same field of
endeavor. Pet. 56 (citing Ex. 1002 ¶¶ 139–147). Petitioner also argues that
both references relate to “spring-loaded toys which open to provide amusing
effect,” “entertain children through the element of a surprise
transformation,” and “open up when the fastener holding it in one shape is
released.” Id. at 57 (citing Ex. 1002 ¶¶ 139–147). Petitioner further argues
that one of ordinary skill in the art “could have easily borrowed” concepts
from either reference and applied those concepts to the other. Id. (citing
Ex. 1002 ¶¶ 139–147).
According to Petitioner, “both Tomiyama and Shannon encourage the
combination of the two references.” Pet. 56 (citing Ex. 1002 ¶¶ 139–147);
see also id. at 61 (arguing that “the references themselves suggest the
combination”) (citing Ex. 1002 ¶¶ 139–147). Petitioner argues that both
Shannon and Tomiyama suggest modifications, such as Shannon describing
a variety of other possible fasteners, including a magnetically-operated latch.
Id. at 56–57 (citing Ex. 1002 ¶¶ 139–147). Petitioner also argues that
“Shannon itself suggests the use of different fasteners and Tomiyama
suggests the applicability of its fastener to differently shaped toys confirms
that the references would have led the skilled artisan to the claimed
invention.” Id. at 61 (citing Ex. 1002 ¶¶ 139–147).
Petitioner, in particular, argues that “starting with Shannon, a skilled
artisan would appreciate that any releasable fastener could be used to
maintain the toy in its ball shape” because Shannon states that “there may be
other types of fasteners including magnets, metal or plastic intermating
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snaps or traditional fasteners such as hook and eye or button types.”
Pet. 58–59 (citing Ex. 1002 ¶¶ 139–147; quoting Ex. 1007, 5:62–65).
Petitioner also argues that one of ordinary skill in the art “considering
alternative fasteners for a spring loaded toy would be aware of Tomiyama
and understand that a magnetically-released fastener is one such fastener that
could be used, if the toy designer wanted the toy to open up upon being
rolled over a magnet.” Id. at 59 (citing Ex. 1002 ¶¶ 139–147); see also id. at
57–58 (arguing that a person of ordinary skill in the art “would recognize
that the core concept of Tomiyama—having a toy move over a magnet and
then be opened up by virtue of a magnetically-opened latch—could be used
in rollable toys, like the ball of the Shannon reference” and “would
recognize that this rolling aspect would add additional excitement to the
toy”).
Petitioner further argues that one of ordinary skill in the art “would
readily have been motivated to combine Tomiyama and Shannon.” Pet. 56
(citing Ex. 1002 ¶¶ 139–147). Specifically, Petitioner argues that one of
ordinary skill in the art would have been motivated to modify Shannon or
Tomiyama “to better meet the need identified explicitly by each of the
references—the need for interesting and easy-to-use transformable toys.” Id.
at 60 (citing Ex. 1002 ¶¶ 139–147). Petitioner also argues that Tomiyama
describes “beneficial play aspects of moving a toy towards a magnet to open
it” and “causing an ‘interesting’ effect for children.” Id. at 59 (citing
Ex. 1002 ¶¶ 139–147; Ex. 1005 ¶¶ 4, 6); see also id. at 57 (arguing that
“Tomiyama addresses an apparent need for toys which are both easily usable
and present this ‘interesting effect’” and that “Shannon discloses a toy
intended to meet a need for toys which are both intriguing, easily used, and
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easily transformable”) (citing Ex. 1002 ¶¶ 139–147; Ex. 1005 ¶¶ 4, 5;
Ex. 1007, 1:8–20, 1:62–64).
Petitioner further contends that combining Shannon’s rollable toy with
Tomiyama’s magnetically-operated release mechanism would result in “a
single, interesting toy set without sacrificing ease of use.” Pet. 60–61 (citing
Ex. 1002 ¶¶ 139–147). Petitioner, thus, contends that “[t]he skilled artisan
would be fully able to, and motivated to, apply this concept (i.e., a toy that
moves over a magnet and opens up) to the rolling of a ball over a magnet to
open it” and that “a magnetic opening would only add to the surprise of the
transformation.” Id. at 59 (citing Ex. 1002 ¶¶ 139–147).
Also, according to Petitioner, the claimed releasable latch means
provided with a magnet “is being used exactly in the manner of the prior art
magnetically-releasable fasteners to achieve the expected result—when a
magnetic force is operated upon the release mechanism, it releases.” Pet. 59
(citing Ex. 1002 ¶¶ 139–147). Petitioner, thus, asserts that the proposed
modification is “an example of a simple substitution of one known element
for another to achieve a predictable result” (id. at 60 (citing Ex. 1002
¶¶ 139–147)) and “is an obvious example of using known toy mechanisms
for their intended, expected purposes” (id. at 61 (citing Ex. 1002 ¶¶ 139–
147)). Petitioner additionally argues that claim 1 “represents nothing more
than the incorporation of a known, basic magnetically-operated release—
being used exactly for its intended and understood purpose—to allow a
rollable toy such as a ball to open up into a different shape upon coming into
proximity to a magnet.” Id. at 60 (citing Ex. 1002 ¶¶ 139–147).
(a) Patent Owner’s Response
Patent Owner responds that Petitioner’s declarant “only provides
conclusory statements as to how Shannon’s toy ball is to be modified to
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include Tomiyama’s magnetic, spring-loaded latching mechanism” and
“does not explain how Shannon’s toy is to be modified to include a latching
mechanism that interacts with an external magnet to release.” PO Resp. 37–
38 (citing Pet. 60; Ex. 1002 ¶ 145). Patent Owner, thus, argues that
Petitioner does not provide any evidence or explanation “how Shannon is to
be modified to include the latching mechanism of Tomiyama, other than
generalized, conclusory statements that it would be obvious to substitute a
magnetically-released fastener in Shannon by gluing on a magnet.” Id. at 38
(citing Pet. 60; Ex. 2001 ¶ 77).
Patent Owner also responds that it would not have been obvious to
modify Shannon to include a magnetically-releasable latch of Tomiyama.
PO Resp. 37 (citing Pet. 59–60, 66). According to Patent Owner, “[t]he
required latching mechanism would require much more than a glued-on
magnet” and “modif[ing] Shannon’s toy ball to include an externally-
released, magnetic latching mechanism, including the latching mechanism
described in Tomiyama” “would not be viable or feasible” because “the
Shannon toy is formed of the thin sheet of polypropylene overmolded with
rubber” and “[s]uch a construction does not easily, if at all, allow for
including a spring-loaded locking component.” PO Resp. 38–39 (citing
Ex. 2001 ¶¶ 77–78); see also id. at 40 (arguing that the proposed
modification of Shannon would “require a substantial redesign”). Patent
Owner further responds that Petitioner does not provide evidence or
explanation “how or why the Tomiyama latching mechanism would be
substituted for the simple magnet or VELCRO fasteners used in Shannon,
other than Shannon teaches that other fasteners could be used.” Id. at 39
(citing Pet. 59–60; Ex. 1002 ¶¶ 127–128).
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Patent Owner further responds that “[m]odifying Shannon’s fasteners
to open via an externally, magnetically-released locking component would
change [Shannon’s] principle of operation” because “[t]he user would no
longer be able to peel the appendages apart to achieve the toy
transformation.” PO Resp. 39 (citing Ex. 2001 ¶ 77). According to Patent
Owner, the proposed modifications “would change [Shannon’s] principle of
operation, turning it from a toy the user manipulates by peeling the
appendages apart to achieve the transforming opening of the toy, to a toy the
user must roll to open.” Id. at 39–40.
(b) Petitioner’s Reply
Petitioner replies that the Petition presents an argument that one of
ordinary skill in the art would have been “motivated to apply a magnetically-
released fastener to Shannon’s toy.” Pet. Reply 17 (citing Pet. 59).
Petitioner also points to Dr. Kudrowitz’s deposition testimony regarding
how one of ordinary skill in the art would have used Tomiyama’s engaging
body 5 in Shannon’s toy. Id. at 18 (citing Ex. 2002, 51:7–17, 52:18–22,
54:3–8).
Regarding Shannon’s thin sheet of polypropylene, Petitioner replies
that the “proposed modification requires only a single magnet-latch fastener,
which can be replaced with Shannon’s fastener,” “Shannon already discloses
that its fasteners can be magnets that necessarily require a certain amount of
space inside of the thin sheet,” and “[b]y changing Shannon’s magnet
fasteners to be activated by an external magnet does not require additional
space inside of Shannon’s skeleton.” Pet. Reply 18–19 (citing PO Resp. 39;
Ex. 1020 ¶¶ 50–54). Petitioner provides an example modification. Id. at
19–20 (citing Ex. 1020 ¶¶ 50, 52–54).
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Regarding the asserted change in the principle of operation, Petitioner
replies that Patent Owner “mischaracterizes Shannon” and “Shannon’s
principle of operation is transformation of the toy, it is not about magnetic
attraction or peeling the appendages apart.” Pet. Reply 20 (citing PO
Resp. 38; Ex. 1007, code (54), 5:24–30, 6:39–40, 6:49, Ex. 1020 ¶ 56;
Ex. 2001 ¶¶ 76–77). Petitioner also argues that “[b]ecause Choirock’s
modified Shannon toy would be rolled to an external magnet to have a
magnetic opening/transformation of the toy, it does not change the principle
operation of Shannon.” Id. (citing Ex. 1020 ¶ 56).
Regarding Dr. Janét’s opinion that peeling apart Shannon’s
appendages provides enjoyment, Petitioner argues that “Shannon explicitly
teaches that the enjoyment comes from the transformation,” “it is undisputed
that the only ‘peeling’ taking place is unlocking of fasteners in Shannon,”
and, “[o]nce a user unlocks the fasteners, the appendages are automatically
unfolded into an open configuration due to the elastic nature of the hinges.”
Pet. Reply 20–21 (citing Ex. 1007, 5:28–32; Ex. 1020 ¶ 57; Ex. 1021,
177:4–7). Petitioner contends that “Dr. Janét fails to explain why manually
unlocking fasteners itself provides enjoyment while using a magnet to
unlock a latch does not, when both methods yield the same result (releasing
the appendages).” Id. at 21. Petitioner also argues that its proposed
modification “does not remove the alleged enjoyment even if manipulation
is part of Shannon’s play” because the “folding step” to transform Shannon
into its closed configuration “is still present,” “requires a user’s
manipulation,” and “provides enjoyment.” Id. (citing Ex. 1021, 178:24–
180:3).
In reply to Patent Owner’s argument about the alleged failure to
explain how the proposed modification would be made with a reasonable
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expectation of success and why it would not be difficult, Petitioner contends
that “the claims at issue do not require miniaturization” and therefore, “the
alleged design difficulty regarding the size of a toy is not relevant to [the]
obviousness inquiry here.” Pet. Reply 24–25 (citing Pet. 8; PO Resp. 20, 29,
37). Petitioner also contends that, as asserted in the Petition, one of ordinary
skill in the art “would have had reasonable expectation of success in
combining the known ‘magnetically-releasable latch’ to the known ‘rollable
transformation toy’ to arrive at the claimed invention.” Id. at 25 (citing
Pet. 5).
(c) Patent Owner’s Sur-Reply
Patent Owner argues that Petitioner improperly changes the mapping
of the claim limitations to the asserted references in reply to Patent Owner’s
argument about the failure to explain the proposed modification. PO Sur-
reply 13–14 (citing Pet. 58–59; PO Resp. 38; Ex. 2002, 53:22–54:8), 15.
According to Patent Owner, Petitioner “proposes different versions of a
spring biased rocker latch” that were not discussed until Petitioner’s Reply,
“not found in the prior art,” and created “out of whole cloth, with no
grounding in the prior art.” Id. at 14–15 (citing Pet. Reply 19). Patent
Owner contends that Dr. Kudrowitz admits that “he asserts that each of the
constituent components of the design—not the mechanism itself or the
combination of these components—was known in the art,” which is also
improper hindsight. Id. at 15.
Patent Owner also replies that Petitioner does not rebut the argument
that the thin sheet construction of Shannon does not easily allow for
modification. PO Sur-reply 15 (citing PO Resp. 39). Patent Owner argues
that Petitioner “acknowledges that its proposed latch would need to be
modified even further” to not interfere with the thin sheet design but does
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not explain how the latch would be scaled or how scaling would impact the
operation of the latch. Id. at 15–16 (citing Ex. 1020 ¶ 53).
Regarding the principle of operation, Patent Owner replies that
Petitioner only addresses one principle of operation and ignores others that
are also changed by the proposed modification. PO Sur-reply 16 (citing PO
Resp. 39–40; Pet. Reply 20–21). Patent Owner argues that modifying
Shannon’s toy to roll onto a magnet changes the peeling apart of the
appendages and that Shannon is designed for very young children to
transform the toy by “tactile manipulation of simple fasteners.” Id. Patent
Owner contends that “adding functionality to create a complicated latch
defeats this and changes the principle of operation.” Id. Patent Owner also
contends that Petitioner is merely piecing together portions of the prior art
but not considering the references as a whole. Id. at 16–17. Patent Owner
further contends that, “[a]lthough the toy is transformed in the proposed
modification, the play of peeling apart the appendages and allowing the very
young child to manipulate the toy to cause the transformation is removed
with the modification.” Id. at 17. Patent Owner asserts that “maintaining
one principle of operation while eradicating others does not motivate the
modification.” Id.
(2) The Full Record Supports Petitioner’s Motivation for
Modifying Shannon
Regarding Petitioner’s asserted motivation to combine Shannon and
Tomiyama to meet a stated need for interesting toys, we find that
Petitioner’s relied-upon portions of Shannon teach that “[t]he need for toys
that intrigue through being transformable as between two or more
configurations is evidenced by U.S. Pat. No. 4,674,990” wherein it describes
that (1) “a number of parts are pivotably and movably interconnected to
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provide a vehicle formed by folding and a robotic, humanoid form by being
unfolded,” (2) “the benefit to children’s interest obtained through having
such configurable toys,” and (3) “the advantages of having such toys which
can be transformed with ease by a simple operation and manufactured with
low cost.” Pet. 57; Ex. 1007, 1:8–20. Petitioner also points to Shannon’s
object of “provid[ing] a reversible, three-dimensional toy that can be easily
and readily transformed through a construction that is readily
manufactured.” Pet. 57; Ex. 1007, 1:62–64.
We also find that a relied-upon portion of Tomiyama teaches that
“self-destructing components 24, 27, 28, including self-destructing base 23,
made to resemble the turret and gun of a tank self-destruct” is an “interesting
effect [that] resembles the effect of a tank hitting a landmine and being
destroyed.” Ex. 1005 ¶ 4. Another relied-upon portion of Tomiyama states
that it provides “an interesting self-destructing toy.” Id. ¶ 6. We further
credit Dr. Kudrowitz’s testimony that both Shannon and Tomiyama teach
“toys which open to amuse” because these references support it. Ex. 1002
¶ 141.
Patent Owner does not dispute that (1) Shannon describes a need for
toys that obtain children’s interest through transformation and (2) Tomiyama
teaches an “interesting effect” or “interesting self-destructing toy.” See
generally PO Resp.; PO Sur-reply. Patent Owner, instead, argues that
Petitioner does not explain how its proposed modification would have been
made, the proposed modification would not have been feasible, and the
proposed modification changes the principle of operation of Shannon. See
PO Resp. 37–40; PO Sur-reply 13–17.
Turning to declarant testimony, Dr. Kudrowitz opines that one of
ordinary skill in the art would have been motivated to modify Shannon with
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the teachings of Tomiyama so that Shannon’s toy included a “magnetically-
released fastener” so that the toy would “open up upon being rolled over a
magnet” to “allow the toy to have an ‘interesting effect in response to rolling
over a magnet.” Ex. 1002 ¶ 145 (citing Ex. 1002 ¶¶ 4, 6; Ex. 1007, 5:62–
65). We find the testimony credible because the cited portions of the
asserted references support it. Dr. Janét’s testimony does not address these
portions of Shannon and Tomiyama. See generally Ex. 2001.
Based on our findings above, Petitioner persuades us that “[t]he
skilled artisan would have been motivated to modify either Tomiyama or
Shannon with the other to better meet the need identified explicitly by each
of the references—the need for interesting and easy-to-use transformable
toys.” Pet. 60. Petitioner, thus, persuades us that one of ordinary skill in the
art would have been motivated to modify Shannon in the manner proposed
by Petitioner to “allow the toy to have an ‘interesting effect in response to
rolling over a magnet.” Ex. 1002 ¶¶ 139, 145.
(3) The Full Record Supports Petitioner’s Asserted Teaching
or Suggestion for Modifying Shannon
Turning to whether the asserted references also teach or suggest
Petitioner’s proposed modification of Shannon in addition to one of ordinary
skill being motivated to make the modification, as discussed above, we find
that Shannon expressly teaches that “there may be other types of fasteners
including magnets, metal or plastic intermating snaps or traditional fasteners
such as hook and eye or button types.” Ex. 1007, 5:59–65. We also find
that a relied-upon portion of Tomiyama teaches a latching mechanism with a
magnet that releases when near another magnet or magnetic material.
Pet. 59 (citing Ex. 1002 ¶¶ 139–147); Ex. 1002 ¶ 145 (citing Ex. 1005 ¶¶ 4,
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6); Ex. 1005 ¶ 4 (describing the operation of running toy 1 when it passes
over magnet 29).
In particular, we find that Tomiyama teaches that “magnet 29 attracts
the magnet 16” to cause activating body 15 and engaging body 5 to be
rotated, engaging tab 6 is thereby withdrawn from push-out body 2, and
spring 4 thereafter causes push-out body 2 to strike struck protrusion 22 to
eject components 24, 27, 28. Ex. 1005 ¶ 4. See also Ex. 2001 ¶¶ 32–47 (Dr.
Janét describing the operation of Tomiyama’s tank). Tomiyama provides
evidence that one of ordinary skill in the art would have known of engaging
tab 6 releasing push-out body 2 after toy 1 passes over magnet 29 to cause
an “interesting effect.” Ex. 1005 ¶¶ 2–4. Tomiyama also teaches that “[t]he
running toy of the present utility model can be a tank as shown . . . , or any
other type of vehicle” and “[i]n each case, an interesting self-destructing toy
is provided.” Id. ¶ 6. We also credit Dr. Kudrowitz’s testimony because the
record supports it. Ex. 1002 ¶¶ 140, 141, 147; see also Ex. 2001 ¶¶ 32–47
(Dr. Janét describing the operation of Tomiyama’s tank).
Because Shannon expressly teaches a fastener including magnets and
because one of ordinary skill in the art would have known of Tomiyama’s
mechanism for providing an “interesting effect” that includes magnets and
can be used in other toys, Petitioner persuades us that “Shannon itself
suggests the use of different fasteners and Tomiyama suggests the
applicability of its fastener to differently shaped toys confirms that the
references would have led the skilled artisan to the claimed invention.”
Pet. 61. Based on our findings above, Petitioner persuades us that “both
Tomiyama and Shannon encourage the combination of the two references”
and “the references themselves suggest the combination.” Id. at 56, 61.
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(4) The Full Record Supports Petitioner’s Other Asserted
Rationales for Modifying Shannon
Turning next to Petitioner’s argument that modifying Shannon with
Tomiyama’s magnetically released mechanism is “an example of a simple
substitution of one known element for another to achieve a predictable
result,” as discussed above based on the full record, Shannon expressly
teaches that “there may be other types of fasteners including magnets, metal
or plastic intermating snaps or traditional fasteners.” Pet. 56–57, 60;
Ex. 1002 ¶¶ 140, 145–147; Ex. 1007, 5:59–65. Patent Owner does not
dispute that Shannon contemplates the use of other types of fasteners that
include a magnet. See PO Resp. 37 (“Fasteners, including VELCRO,
magnets, and snaps, are provided to hold [Shannon’s] toy in the closed
configuration”) (citing Ex. 1007, 2:61–66, 5:59–65). The full record also
provides no reason against the other types of fasteners having at least a
magnet or a magnet with additional mechanical components, such as a
combination of magnets, snaps, and traditional fasteners.
We also find that a relied-upon portion of Tomiyama teaches a
latching mechanism with a magnet that releases when near another magnet
or magnetic material. Ex. 1002 ¶ 145; Ex. 1005 ¶¶ 4, 6; see also Ex. 2001
¶¶ 32–47 (explaining the operation of Tomiyama’s self-destructing tank).
The parties’ declarants agree that Tomiyama teaches a magnetically-
responsive latch or locking mechanism. See Ex. 1002 ¶ 140 (“Tomiyama
teaches that its tank having the magnetically-responsive latch can take on
other shapes.”), ¶ 145 (“A [person of ordinary skill in the art] would, when
considering alternative fasteners, be motivated to combine Tomiyama,
understanding that a magnetically-released fastener is one such fastener that
could be used.”); Ex. 2001 ¶ 75 (“In my opinion, it would not be viable or
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feasible and a [person of ordinary skill in the art] would have no reason to
modify Shannon’s toy to include the locking mechanism of Tomiyama.”).
Thus, based on the full record, we find that Tomiyama teaches a
magnetically-responsive latch.
Because Shannon teaches the use of an alternative fastener including a
magnet and Tomiyama teaches a latching mechanism including a magnet
that releases when near another magnet or magnetic material, Petitioner
persuades us that its proposed modification of Shannon to use the latching
mechanism of Tomiyama would have been a “simple substitution of one
known element for another” to yield a predictable result. Pet. 60; Ex. 1002
¶¶ 140, 145–147; Ex. 1005 ¶¶ 4, 6; Ex. 1007, 5:59–65; see also KSR, 550
U.S. at 416 (stating that “when a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result”).
Regarding Patent Owner’s argument that the modification would not
have been feasible and require substantial redesign because Shannon’s toy
has a “thin sheet of polypropylene” (see PO Resp. 37–40; PO Sur-reply 14,
15–16, 17 n.1), we find that Shannon provides evidence that one of ordinary
skill in the art would have known how to apply a fastener with a magnet to
Shannon’s toy. Shannon expressly teaches the use of other types of
fasteners that include magnets. Ex. 1007, 5:59–65. We also find that
Shannon teaches fasteners 32, 38 on, respectively, ears 29 and body of rabbit
toy 10, not directly on skeleton 12. Id. at 5:51–53, 5:58–59, Fig. 6. We,
thus, find that Shannon would have taught one of ordinary in the art to place
“other types of fasteners including magnets” on ears 29 and the body, not
directly on skeleton 12, as argued by Patent Owner. See id. at 5:51–53,
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5:58–64, Fig. 6. The full record before us provides no reason why placing a
fastener with a magnet on ears 29 and the body would have been beyond
ordinary skill in the art. Moreover, there appears to be sufficient room in the
body to accommodate the larger portion of a fastener. See, e.g., Ex. 1007,
Figs. 5, 6, 8, 10.
Patent Owner’s argument that Petitioner fails to describe its
modification beyond providing conclusory statements (PO Resp. 37–39; PO
Sur-reply 16) does not address sufficiently whether Shannon and Tomiyama
teach or suggest the limitations of the claim and does not address sufficiently
whether one of ordinary skill in the art would have made the combination.
Further, as indicated by Patent Owner’s arguments, Petitioner’s proposed
modification included enough details so that Patent Owner could understand
the modification and provide responsive arguments. See PO Resp. 37–42;
PO Sur-reply 13–19.
Moreover, the references themselves indicate that one of ordinary skill
in the art would have known how to make the proposed modification.
Shannon teaches the use of other types of fasteners on ears 29 and the body
to keep segments of rabbit toy 1 folded until released and allowed to spring
open. Ex. 1007, 2:4–7, 5:51–53, 5:58–59, Fig. 6. Tomiyama teaches a
latching mechanism inside toy 1 that holds push-out body 2 against spring 4
until released to provide an interesting effect. Ex. 1005 ¶¶ 4–6. Taken
together, we find that these references provide evidence that replacing
Shannon’s fastener with a magnetically-released latching mechanism in the
manner asserted by Petitioner is within ordinary skill in the art.
Also, we find that Tomiyama provides evidence that one of ordinary
skill in the art would have known of (1) engaging tab 6 operable to release
another component and (2) magnet 29 able to attract magnet 16 to cause
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mechanical movement of attached components. Ex. 1005 ¶ 4. We also find
that Tomiyama provides evidence that one of ordinary skill in the art would
have been able to apply engaging tab 6 and the interaction of magnets 16, 29
to other toys. Id. ¶ 6. Because Tomiyama teaches a latching mechanism
that includes a magnet that releases when near another magnet or magnetic
material and that can be used in other toys, Petitioner persuades us that the
proposed modification of Shannon would have been “used exactly in the
manner of the prior art magnetically-releasable fasteners to achieve the
expected result—when a magnetic force is operated upon the release
mechanism, it releases.” Pet. 59; Ex. 1002 ¶ 146; Ex. 1005 ¶¶ 4, 6;
Ex. 1007, 5:59–65. In other words, Tomiyama’s technique of using
engaging tab 6 and magnets 16, 29 to provide an “interesting effect” would
also improve Shannon’s toy so that it has the same “interesting effect.”
KSR, 550 U.S. at 417 (stating that “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill;” “when a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious;” and “[i]f a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability”).
Further, based on our findings discussed above regarding Shannon’s
other usable fasteners and Tomiyama’s mechanism for providing an
“interesting effect,” Petitioner persuades us that the proposed modification
“represents nothing more than the incorporation of a known, basic
magnetically-operated release—being used exactly for its intended and
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understood purpose—to allow a rollable toy such as a ball to open up into a
different shape upon coming into proximity to a magnet.” Pet. 60; Ex. 1002
¶ 147; Ex. 1005 ¶¶ 4, 6; Ex. 1007, 5:59–65; see also KSR, 550 U.S. at 417.
Because Tomiyama teaches a mechanism for providing an “interesting
effect” in a toy, Petitioner additionally persuades us that its proposed
modification of Shannon with Tomiyama’s mechanism is an “example of
using known toy mechanisms for their intended, expected purposes.”
Pet. 61; Ex. 1002 ¶ 146; Ex. 1005 ¶¶ 4, 6; Ex. 1007, 5:59–65; see also KSR,
550 U.S. at 417.
(5) Reasonable Expectation of Success
For the reasons above, we determine that one of ordinary skill in the
art would have been motivated to modify Shannon’s toy with a magnetically
released latching mechanism to provide an “interesting effect,” as proposed
by Petitioner. Pet. 60; Ex. 1002 ¶¶ 139, 145. We also determine that the
references themselves teach or suggest Petitioner’s proposed modification.
Pet. 56, 61; Ex. 1002 ¶¶ 140, 141, 147. Further, Petitioner persuades us that
the proposed modification of Shannon with the teachings of Tomiyama is a
“simple substitution of one known element for another,” (Pet. 60; Ex. 1002
¶¶ 140, 145–147), would “use[] exactly in the manner of the prior art
magnetically-releasable fasteners to achieve the expected result,” (Pet. 59;
Ex. 1002 ¶ 146), and “represents nothing more than the incorporation of a
known, basic magnetically-operated release—being used exactly for its
intended and understood purpose—to allow a rollable toy such as a ball to
open up into a different shape upon coming into proximity to a magnet”
(Pet. 60; Ex. 1002 ¶ 147).
Also, as discussed above, Shannon and Tomiyama provide evidence
that one of ordinary skill in the art would have been able to apply a
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magnetically released latching mechanism in Shannon’s toy. See, e.g., Ex.
1005 ¶¶ 4–6; Ex. 1007, 5:59–65. We also credit Dr. Kudrowitz’s testimony
that the proposed modification would have been within the capabilities of
one of ordinary skill in the art because the full record supports it. See
Ex. 1002 ¶ 26 (“A person of ordinary skill in the art of the ’508 patent at the
time of the alleged invention in 2006 would have a bachelor’s degree in
mechanical engineering or a related field and about three years of experience
in toy design.”), ¶ 28 (“In 2006, a person of ordinary skill in the art, as
defined above, would have been able to review and implement the teachings
of the prior art like Tomiyama, Thompson, Saucier, Aprile, and Shannon.”),
¶ 140 (“In my opinion, a [person of ordinary skill in the art ] would have
readily viewed both toys as having elements that may be implemented in the
other easily, simply, and obviously.”), ¶ 145 (“This is particularly the case
because magnets are relatively cheap, are easily implemented (e.g., affixed
using glue) to a toy, are relatively sturdy even during rough play, and have
predictable characteristics which make them easily used by a [person of
ordinary skill in the art ].”),
Although Patent Owner argues that one of ordinary skill in the art
would have not have had a reasonable expectation of success in modifying
Tomiyama in view of Shannon (PO Resp. 37), Patent Owner does not
provide an argument regarding reasonable expectation of success specific to
the challenge based on Shannon modified by the teachings of Tomiyama.
See generally PO Resp.; PO Sur-reply; Ex. 2001. Based on the full record,
Petitioner persuades us that one of ordinary skill in the art would have made
the proposed modification with a reasonable expectation of success.
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(6) Patent Owner’s Other Arguments
(a) Principle of Operation
With support from declarant testimony, the parties dispute what
Shannon’s principle of operation is. See PO Resp. 39–40; Pet. Reply 20–21;
PO Sur-reply 16–17. Dr. Janét opines that “[i]f Shannon were modified to
release by magnetic attraction, the user would no longer be able to peel the
appendages apart to achieve the toy transformation, changing the principle
of operation of how Shannon is manipulated and played with by the user.”
Ex. 2001 ¶ 77. Dr. Kudrowitz opines that “Shannon’s principle of operation
is transformation of the toy, it is not about magnetic attraction or peeling the
appendages apart.” Ex. 1020 ¶ 56 (citing Ex. 1007, code (54), 5:24–30,
6:39–40, 6:49).
We find that the cited portions of Shannon describe a transformable
toy, transformation of the toy, and “dramatic ‘jack-in-the-box’ opening.”
Ex. 1007, code (54), 5:24–30, 6:39–40, 6:49. Because of these findings, we
determine that Dr. Kudrowitz’s testimony is more persuasive because it is
based on evidence from Shannon than Dr. Janét’s testimony. Ex. 1020 ¶ 56;
Ex. 2001 ¶ 77.
Shannon better supports Dr. Kudrowitz’s testimony because Shannon
describes providing a dramatic opening. Ex. 1020 ¶ 56; Ex. 1007, code (54),
5:24–30, 6:39–40, 6:49; Ex. 2001 ¶ 77. Shannon also describes “[f]asteners
are provided to hold the toy in the closed configuration.” See Ex. 1007,
code (57). The embodiment of Shannon that Petitioner proposes to modify
can have “spring action” that is “intended to enhance the transformation.”
Id. at 5:24–32. Shannon’s principle of operation, thus, does not only require
a user to “be able to peel the appendages apart to achieve the toy
transformation,” as Dr. Janét testifies. Ex. 2001 ¶ 77.
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Also, Petitioner proposes modifying Shannon’s fasteners 32, 38 with
Tomiyama’s teachings. Pet. 58–61. The proposed modification would still
be a transformable toy with a “dramatic ‘jack-in-the-box’ opening” because
it would still have appendages that spring open. Ex. 1007, code (54), 5:24–
30, 6:39–40, 6:49. For the reasons above, the full record does not show that
Petitioner’s proposed modification would change the asserted principle of
operation of Shannon.
Moreover, Shannon describes a “need for toys that intrigue through
being transformable,” “the benefit to children’s interest obtained through
having such configurable toys,” and “the advantages of having such toys
which can be transformed with ease by a simple operation.” Ex. 1007, 1:8–
20. Shannon also describes objects related to an improved transformable toy
that “can be easily and readily transformed,” is “transformable . . . by a
simple folding of hinges,” and “spring[s] open upon release of a fastener
holding the segments in a closed position.” Id. at 1:54–2:7.
The proposed modification would meet the “need for toys that intrigue
through being transformable,” obtain “children’s interest” through a
configurable toy, and have the advantage of being “transformed with ease by
a simple operation.” Ex. 1007, 1:8–20. Furthermore, the proposed
modification would meet Shannon’s object of an improved transformable
toy that “can be easily and readily transformed” by the “simple operation” of
rolling towards a magnet, is “transformable . . . by a simple folding of
hinges,” and “spring[s] open upon release of a fastener holding the segments
in a closed position.” Id. at 1:54–2:7. Because the proposed modification
would meet the express needs and objects of Shannon, the full record
indicates to us, for another reason, that the proposed modification does not
change Shannon’s principle of operation.
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(b) Analogous Art
Patent Owner contends that Petitioner “conflates the obviousness
analysis with an analogous art analysis” and “whether a reference is
analogous art is not an indication of obviousness.” PO Resp. 40 (citing
Pet. 56; Ex. 1002 ¶¶ 140–141). Patent Owner, thus, argues that “Tomiyama
and Shannon being in the same alleged field of endeavor as an indication of
obviousness should be disregarded.” Id.
Petitioner replies that Patent Owner “does not dispute that the art
being referenced in the Petition are analogous.” Pet. Reply 22 (citing PO
Resp. 31–32, 40). Petitioner also replies that it “does not assert obviousness
only based on the art being analogous” and “provided motivation to combine
arguments separately.” Id. at 22 (citing Pet. 25–29, 56–61). Patent Owner
replies that Petitioner improperly “based several of its obviousness theories
on whether they were in the same alleged field of endeavor,” “provided no
substantive response to Spin Master’s critique,” and “provides just three,
conclusory sentences” that are “insufficient and should be rejected.” PO
Sur-reply 17–18 (citing PO Resp. 40).
Patent Owner points to a paragraph that begins with Petitioner
asserting that “both Tomiyama and Shannon encourage the combination of
the two references” and includes “[b]oth references suggest the claimed
modifications.” See Pet. 56–57. Petitioner, however, argues in between that
“Tomiyama and Shannon are both in the same field of endeavor” and quotes
from Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1000 (Fed. Cir.
2016) that “[p]rior art is analogous and can be applied in an obviousness
combination if it . . . is from the same field of endeavor, regardless of the
problem addressed.” Id. at 56.
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Petitioner’s argument and quote make clear that Petitioner is merely
asserting that Shannon and Tomiyama are analogous art and one of ordinary
skill in the art would have considered them for combination. See id. We do
not view this argument as a reason for modifying Shannon in view of
Tomiyama, even if it is bracketed by reasons for combining these two
references. Further, to the extent that the statement could be considered as
an asserted reason for modifying Shannon, we do not analyze it as such.
But, we do consider the argument in analyzing whether one of ordinary skill
in the art would have considered that the particular asserted references are
analogous art and support Petitioner’s proposed combination.
Also, we do not view Patent Owner’s argument to be disputing
whether Shannon and Tomiyama are analogous art. To the extent analogous
art is being disputed, we find that Shannon “relates to a transformable toy”
(Ex. 1007, 1:6) and that Tomiyama relates a “self-destructing toy” (Ex. 1005
¶¶ 1, 6). Thus, based on the full record, we find that Shannon and
Tomiyama are in the same field of endeavor and therefore constitute
analogous art. See also Ex. 1002 ¶¶ 140–141 (opining that both Shannon
and Tomiyama similarly describe transformable toys).
(c) “Could be”
Patent Owner also contends that Petitioner repeatedly asserts that
Shannon “could be modified” but “whether a reference could be modified
should be disregarded.” PO Resp. 40 (citing Pet. 51, 61). Patent Owner also
contends that stripping away all the assertions of what could be modified
leaves little substantive argument in the alleged motivation to combine. Id.
at 40–41.
Petitioner replies that it “properly alleges motivation to combine
analysis, separate from the alleged ‘could be’ statements” and “the Board
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may consider ‘could be’ statements in obviousness analysis.” Pet. Reply
22–23 (citing Pet. 25–29, 56–61; PO Resp. 20, 32, 37, 40; PGS Geophysical
AS v. Iancu, 891 F.3d 1354, 1365 (Fed. Cir. 2018)). Patent Owner replies
that Petitioner “is incorrect that ‘could be’ statements may be considered in a
proper obviousness analysis,” the cited case law does not support
Petitioner’s assertion, and the “proper standard is still whether a [person of
ordinary skill in the art] would have been motivated to make the proposed
modifications.” PO Sur-reply 18.
Relevant to the challenge based on Shannon and Tomiyama, Patent
Owner points us to page 61 of the Petition. See PO Resp. 40. That
particular page, however, does not contain any argument that could be
interpreted as “could be modified.” See Pet. 61. In previous assertions
regarding Shannon and Tomiyama, Petitioner argues that one of ordinary
skill in the art “could have easily borrowed one of these simple concepts
from Shannon or Tomiyama and applied it to the other” (id. at 57),
Tomiyama’s toy “could be rolled to the magnet” (id. at 57–58), Tomiyama’s
magnetically operated release “could beneficially be used with other shapes
of movable toys” (id. at 58), “any releasable fastener could be used to
maintain [Shannon’s] toy in its ball shape” (id.), and “a magnetically-
released fastener is one such fastener that could be used” (id. at 59).
Based on our review of Petitioner’s arguments in the entirety, we
determine that Patent Owner views these “could” statements in isolation and
give little consideration to the subsequent arguments. For example, as
discussed above, Petitioner argues that modifying Shannon in view of
Tomiyama “is . . . an example of a simple substitution of one known element
for another to achieve a predictable result.” Pet. 60. This argument by
Petitioner is not a “could be modified” assertion. See id. The argument
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applies the Supreme Court’s analysis that “when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR, 550 U.S. at 416.
Petitioner also argues that the proposed modification “represents
nothing more than the incorporation of a known, basic magnetically-
operated release—being used exactly for its intended and understood
purpose—to allow a rollable toy such as a ball to open up into a different
shape upon coming into proximity to a magnet.” Pet. 60. Instead of being a
“could be modified” argument, the argument echoes that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Petitioner further provides an asserted teaching, suggestion, and motivation
for combining the asserted references. Pet. 60, 61.
For the reasons stated above, based on the full record, we determine
that Petitioner provides more than “could be modified” assertions to support
its obviousness arguments.
(d) Alleged Hindsight
Patent Owner further contends that Petitioner’s assertion that concepts
from Tomiyama and Shannon could be applied to the other “amount to
conjecture without any objective evidence” and “simply us[es] advantages or
features of the claimed invention as reasons for arriving at the claimed
invention.” PO Resp. 41 (citing Pet. 57). Patent Owner contends that there
is no explanation of how modifications would be made and the asserted
modifications have nothing to do with the toy being modified. Id. at 41–42
(citing Ex. 1002 ¶¶ 143, 144, 146). According to Patent Owner, Dr.
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Kudrowitz “is using the claimed invention of the ’508 Patent as a roadmap
for the obviousness analysis.” Id. at 42.
Petitioner replies that it “is using the disclosed advantages or features
in the prior art, not the claimed invention, to arrive at the claimed
invention,” and doing so “is not improper hindsight.” Pet. Reply 23 (citing
Pet. 29–30; PO Resp. 33–35, 41–42). Petitioner also replies that the
“advantage or expected beneficial result that would be produced by
combining prior art does provide a rationale for making that combination” as
held by the Federal Circuit. Id. at 23–24 (citing PO Resp. 34). Petitioner,
thus, argues that it “is not using the ’508 Patent as a roadmap, rather, it is
properly applying the standard recognized by the Federal Circuit.” Id. at 24.
Patent Owner replies that Petitioner improperly uses hindsight and
“begins its obviousness analysis with the claim language itself, and then
simply ignores the components of the prior art that would otherwise render
its proposed combination unworkable.” PO Sur-reply 18–19 (citing PO
Resp. 40–41). Patent Owner argues that “[b]y working backwards from the
claim language to compose its obviousness theory, Choirock has engaged in
clear hindsight, and its arguments must be rejected.” Id. at 19.
Based on the full record before us, we determine that Petitioner is not
improperly using hindsight to arrive at the challenged claims of the ’508
patent. As discussed above, Petitioner persuades us that Shannon and
Tomiyama teach or suggest all the limitations of claim 1. Pet. 55–71. Patent
Owner does not provide any argument that these particular references fail to
teach or suggest the limitations identified by Petitioner. See generally PO
Resp.; PO Sur-reply. In particular, Patent Owner does not dispute that
Shannon teaches or suggests alternatives to the “hook and loop” fastener of
the described embodiment. See generally PO Resp.; PO Sur-reply; see also
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Ex. 2001 ¶ 74 (Dr. Janét opining that “Shannon discloses a few different
types of fasteners 32, 38, including VELCRO, magnets, metal, plastic
intermating snaps, or hook and eye or button types”). Because of
Petitioner’s relied-upon teachings and suggestions from Shannon and
Tomiyama, the full record indicates to us that the references themselves, not
improper use of hindsight, would lead one of ordinary skill in the art to
arrive at the challenged claims. Petitioner provides persuasive reasons that
one of ordinary skill in the art with knowledge of the disclosures of Shannon
and Tomiyama would have had reasons to combine their teachings to render
obvious the challenged claims. See Pet. 55–61.
For the reasons above, based on the full record, we determine that
Petitioner is not improperly using hindsight in its challenge to claims 1–5 as
unpatentable over Shannon modified by Tomiyama.
f) “whereby a rolling of the toy along the playing surface ceases
when said latch means is moved out of engagement with said
catch.”
Petitioner argues that “Shannon’s toy ball will not roll once it has
been opened and the various portions separated.” Pet. 67 (citing Ex. 1002
¶¶ 160–161).
As discussed above, we find that relied-upon portions of Shannon
teach a toy that reversibly transforms from a ball to a rabbit-like object when
a fastener is released. Ex. 1002 ¶¶ 149–153; Ex. 1007, 2:4–7, 2:12–16,
2:42–45, 3:9–11, 3:38–39, 3:42–43, 5:26–28, 6:37–42, Figs. 1, 6. We credit
Dr. Kudrowitz’s testimony that “[t]he toy ball will not roll once it has been
opened” because “when opened, the ball of Shannon is shaped like a doll
that would not readily roll” because Shannon supports it. Ex. 1002 ¶ 161.
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Patent Owner does not present an argument that Shannon fails to
teach or suggest a toy ball that does not roll once it has opened. See
generally PO Resp.; PO Sur-reply. Because Shannon teaches a toy that
transforms from a ball that can roll to a rabbit-like object when a fastener is
released, Petitioner persuades us that Shannon teaches “whereby a rolling of
the toy along the playing surface ceases when said latch means is moved out
of engagement with said catch.”
3. Analysis of Claim 2
Claim 2 depends from claim 1 and recites “wherein said main body
element, together with said at least one first moveable element, are a first
shape when said at least one first moveable element is in said first position,
and a second shape when said at least one first moveable element is in said
second position.” Ex. 1001, 15:41–45.
Petitioner argues that “Shannon has one shape when the moveable
element is in the first position (a ball), and a second shape when the second
element is in the second position, separated from the toy (an animated
character figure, such as a rabbit).” Pet. 68 (citing Ex. 1002 ¶ 162;
Ex. 1007, Figs. 1, 1A). Petitioner also refers to its challenge of claim 2
based on Tomiyama alone or Tomiyama combined with Thompson. Id.
(citing Ex. 1002 ¶ 162).
We find that Figure 1 of Shannon shows a “rabbit-like object” and
Figure 1A shows the rabbit-like object transformed into a ball. See also
Ex. 1007, 3:9–15 (stating that “FIG. 1 is a front elevational view of one toy
of the present invention in an open configuration, depicting an animate
rabbit-like object” and “FIG. 1A is an elevational view of the toy shown in
FIG. 1, in a closed configuration, depicting a curvilinear surfaced object that
is inanimate, the transformation representation being that of a rabbit to a
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ball”). We also credit Dr. Kudrowitz’s testimony regarding claim 2 because
record evidence supports it. Ex. 1002 ¶ 162 (citing Ex. 1007, Figs. 1, 1A);
see also Ex. 2001 ¶ 74 (stating that “Shannon discloses a transformable toy
movable from an open configuration to a closed configuration ‘through a
body and appendages’”).
Patent Owner does not present any arguments for the challenge of
claim 2 based on Petitioner’s proposed modification of Shannon in view of
Tomiyama. See generally PO Resp.; PO Sur-reply; see also Tr. 96:15–18
(Patent Owner’s counsel confirming that no arguments specifically for
dependent claims 2–5 were presented). Because Shannon teaches the main
body and appendages form a ball when in a closed position and a rabbit-like
object when the appendages are away from the main body, Petitioner
persuades us that Shannon teaches or suggests “wherein said main body
element, together with said at least one first moveable element, are a first
shape when said at least one first moveable element is in said first position,
and a second shape when said at least one first moveable element is in said
second position.”
As discussed above, we find that Shannon and Tomiyama teach or
suggest the limitations of claim 1, from which claim 2 depends.
Accordingly, based on the full record before us, we find that Shannon and
Tomiyama teach or suggest all the limitations of claim 2. We also determine
above that one of ordinary skill in the art would have modified Shannon with
the teachings of Tomiyama with a reasonable expectation of success.
4. Analysis of Claim 3
Claim 3 depends from claim 2 and recites “wherein said first shape is
selected from the group consisting of spheres, cubes, tetrahedrons, pyramids,
triangular prisms, egg shapes, parallelepipeds, cylinders, discus shapes,
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toruses, teardrops, lozenges, animal shapes, planet shapes, robot shapes,
vehicle shapes, building shapes, tree shapes, sports equipment related
shapes, weapons shapes, character-head shapes, and the like.” Ex. 1001,
15:46–52.
Petitioner argues that “Shannon has the shape of a sphere.” Pet. 68
(citing Ex. 1002 ¶ 163; Ex. 1007, Fig. 1A). Petitioner also refers to its
challenge of claim 3 based on Tomiyama alone or Tomiyama combined with
Thompson. Id. (citing Ex. 1002 ¶ 163).
We find that Figure 1A of Shannon shows rabbit-like object of
Figure 1 transformed into a ball. See also Ex. 1007, 3:12–15 (stating that
“FIG. 1A is an elevational view of the toy shown in FIG. 1, in a closed
configuration, depicting a curvilinear surfaced object that is inanimate, the
transformation representation being that of a rabbit to a ball”). We also
credit Dr. Kudrowitz’s testimony regarding claim 3 because record evidence
supports it. Ex. 1002 ¶ 163 (citing Ex. 1007, Fig. 1A).
Patent Owner does not present any arguments for the challenge of
claim 3 based on Petitioner’s proposed modification of Shannon in view of
Tomiyama. See generally PO Resp.; PO Sur-reply; see also Tr. 96:15–18
(Patent Owner’s counsel confirming that no arguments specifically for
dependent claims 2–5 were presented). Because Shannon teaches that the
rabbit-like object forms a ball in the closed position, Petitioner persuades us
that Shannon teaches or suggests “wherein said first shape is selected from
the group consisting of spheres . . . and the like.”
As discussed above, we find that Shannon and Tomiyama teach or
suggest the limitations of claims 1 and 2, from which claim 3 depends.
Accordingly, based on the full record before us, we find that Shannon and
Tomiyama teach all the limitations of claim 3. We also determine above
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that one of ordinary skill in the art would have modified Shannon with the
teachings of Tomiyama with a reasonable expectation of success.
5. Analysis of Claim 4
Claim 4 depends from claim 3 and recites “wherein said releasable
latch means is biased to a position in engagement with said catch.”
Ex. 1001, 15:53–55.
Petitioner refers to its challenge of claim 4 based on Tomiyama alone
and Tomiyama combined with Thompson. Pet. 68 (referring to Pet. 44–46)
(citing Ex. 1002 ¶ 164). In the challenge based on Tomiyama alone or
Tomiyama combined with Thompson, Petitioner argues that Tomiyama
teaches the limitations of claim 4. Id. at 44–45 (citing Ex. 1002 ¶¶ 115–118;
Ex. 1005 ¶¶ 3, 4, Fig. 4).
For the reasons discussed above, Petitioner does not persuade us that
Tomiyama expressly describes the limitation of claim 4. Petitioner,
however, persuades us one of ordinary skill in the art would have modified
Tomiyama to include a torsion spring like spring 4 on support shaft 7 so that
engaging body 5 and engaging tab 6 are biased toward push-out body 2 to
prevent inadvertent release during play. Pet. 45; Ex. 1002 ¶¶ 115–118.
Petitioner also persuades us that one of ordinary skill in the art would have
had a reasonable expectation of success in making the proposed
modification. Ex. 1002 ¶¶ 115–118.
For the reasons discussed above, Petitioner persuades us that Shannon
and Tomiyama teach or suggest the limitations of claims 1–3, from which
claim 4 depends. Based on the full record before us and our determinations
regarding Petitioner’s proposed modification of Tomiyama, Petitioner
persuades us by a preponderance of the evidence that (1) Shannon and
Tomiyama teach or suggest each limitation of dependent claim 4 and (2) one
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of ordinary skill in the art would have had a reason to modify Shannon and
Tomiyama with a reasonable expectation of success.
6. Analysis of Claim 5
Claim 5 depends from claim 1 and recites:
further comprising at least one second moveable element, hinged
to said at least one first moveable element and moveable from a
closed position adjacent said at least one first moveable element,
to an open position away from said at least one first moveable
element, said at least one second moveable element being biased
toward said open position, and foldable to said closed position,
said at least one second moveable element being restrained
against movement toward said open position while said catch is
in engagement with said releasable latch means.
Ex. 1001, 15:56–65.
Petitioner argues that Shannon teaches the “at least one second
moveable element” of claim 5 because “the rabbit figure of Shannon has
ears (the ‘second moveable element’) hingedly attached to the head (the ‘first
moveable element’).” Pet. 68–69 (citing Ex. 1002 ¶¶ 165–166; Ex. 1007,
6:1–51, Figs. 10, 10A). Petitioner also argues that “ear surface 64 is
adjacent to the forehead of the rabbit when the figure is in the closed
position in the shape of a ball (Fig. 10A), but away from the forehead of the
rabbit when in the open position.” Id. at 69 (citing Ex. 1002 ¶¶ 165–166;
Ex. 1007, Figs. 5, 10).
Petitioner further argues that Shannon teaches the required biasing of
the asserted second moveable element because “the head, ears, arms, and
legs of the rabbit toy (‘movable element[s]’) rotate away from the body
about the hinges with ‘the hinges serving to result in an unfolding and
opening up of the appendages,’” which can be “metal hinge elements.” Id.
at 69–70 (citing Ex. 1002 ¶¶ 167–170; Ex. 1007, 2:4–8, 2:16–21, 2:42–45,
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5:24–28, 5:33–47, 6:1–55, Figs. 5, 10, 10A). Petitioner further argues that
Shannon teaches the required restraining of the second moveable element
because Shannon discloses the use of one or multiple fasteners to hold the
appendages in the closed position after being folded closed. Id. at 71 (citing
Ex. 1002 ¶ 171; Ex. 1007, 2:61–64, 2:66–3:2). Petitioner additionally
provides arguments that Tomiyama teaches biasing of a second moveable
element and would have rendered obvious the biasing of claim 5. Id. at 70
(citing Ex. 1002 ¶¶ 167–170; Ex. 1005 ¶ 2).
We find that a relied-upon portion of Shannon teaches that “head 60
includes interior facial surfaces 62,” “formed ears 29 typically include
interior forwardly facing surfaces 64 which disappear when those
appendages are folded into the position in FIG. 9 from the position of
FIG. 8,” “the alignment of the fasteners 32 on the forward interior surfaces
of the ears, and fastener 38 on the belt buckle . . . latch together and hold toy
10 in the closed configuration of FIG. 9,” “[r]elease from the inanimate ball-
shaped image of FIG. 9 is initiated by pulling outwardly on the tips of the
two ears which disengages fasteners 32 and 38,” and “[p]eeling the
appendages apart and separating these fasteners can result in the instant
transformation of the toy from the ball enclosed surface shape of FIG. 9 to
the open shape shown in FIG. 6, the hinges serving to result in an unfolding
and opening up of the appendages.” Ex. 1007, 6:26–42; see also id. at 5:3–5
(stating “the skeleton 12 includes ear hinges 18 connecting the ears 13, head
hinge 20 connecting the head 11”), 5:15–19 (stating “[s]uch hinges as
utilized in the present invention define plastic springs tending to restore
displacement of the joined elements such as, for example, the head 11 and
the ears 13 of skeleton 12 through hinges 18”), Fig. 4 (showing the location
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of head hinge 20 between head and body and hinges 18 between head and
ears).
We also find that Figures 10 and 10A show side views of the rabbit-
like object in the open and closed positions, respectively. See id. at 3:47–48
(stating “FIGS. 10 and 10A represent the side views of the object shown in
FIG. 6 and in FIG. 9, respectively”). We further credit Dr. Kudrowitz’s
testimony regarding claim 5 because record evidence supports it. Ex. 1002
¶¶ 165–168 (citing Ex. 1007, 2:4–8, 2:16–21, 2:42–45, 5:25–28, 5:33–47,
6:1–55, Figs. 4, 5–10A). Patent Owner does not present any arguments for
the challenge of claim 5 based on Petitioner’s proposed modification of
Shannon in view of Tomiyama. See generally PO Resp.; PO Sur-reply; see
also Tr. 96:15–18 (Patent Owner’s counsel confirming that no arguments
specifically for dependent claims 2–5 were presented).
Based on the full record before us, because Shannon teaches ears 29
hinged to head 60 and moveable from adjacent to head 60 in a closed
position to away from it in an open position, Petitioner persuades us that
Shannon teaches or suggests “at least one second moveable element, hinged
to said at least one first moveable element and moveable from a closed
position adjacent said at least one first moveable element, to an open
position away from said at least one first moveable element.” Also, because
Shannon teaches that hinges unfold and open appendages like ears 29 and
that separating fasteners 32, 38 results in the opening, Petitioner persuades
us that Shannon teaches or suggests “said at least one second moveable
element being biased toward said open position, and foldable to said closed
position, said at least one second moveable element being restrained against
movement toward said open position while said catch is in engagement with
said releasable latch means.”
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As discussed above, we find that Shannon and Tomiyama teach or
suggest the limitations of claim 1, from which claim 5 depends.
Accordingly, based on the full record before us, we find that Shannon and
Tomiyama teach or suggest all the limitations of claim 5. We also determine
above that one of ordinary skill in the art would have modified Shannon with
the teachings of Tomiyama with a reasonable expectation of success.
7. Objective Indicia of Nonobviousness
The parties do not rely on any objective indicia of nonobviousness for
any of claims 1–5. See generally Pet.; PO Resp.; PO Sur-reply.
8. Weighing the Graham Factors
Based on the full record before us, we find that (1) Petitioner’s
proposed level of ordinary skill in the art is consistent with the prior art of
record, (2) Shannon and Tomiyama teach or suggest all the limitations of
claims 1–5, (3) one of ordinary skill in the art would have modified Shannon
in view of Tomiyama with a reasonable expectation of success, and (4) no
objective evidence of nonobviousness has been presented in relation to
claims 1–5. Weighing these underlying factual determinations, a
preponderance of the evidence persuades us that claims 1–5 of the ’508
patent are unpatentable over Shannon and Tomiyama. Arctic Cat, 876 F.3d
at 1361.
F. Obviousness Based on Shannon, Tomiyama, and Aprile
Petitioner presents a challenge based on Tomiyama, Shannon, and
Aprile. Pet. 71–74. We analyze below specifically the challenge based on
Shannon modified by the teachings of Tomiyama and Aprile.
1. Scope and Content of the Asserted Prior Art
We discuss above Tomiyama and Shannon above.
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a) Aprile (Ex. 1008)
Aprile provides an “extremely simple and inexpensive locking
device.” Ex. 1008, 1:26–27. Figure 3 of Aprile is reproduced below.

Figure 3 shows a cross-sectional view of a container in an opening
condition. Id. at 3:21–23. Container 1 includes bottom part 2, lid 3 hinged
to bottom part 2, and locking device 5. Id. at 3:28–31.
Locking device 5 comprises jamming member 7, shown as a hook, in
bottom part 2 and contrast member 6 in lid 3. Ex. 1008, 3:32–4:3. “[A]rm 8
of the jamming member 7 has a permanent magnet 11” and “helical
extension spring 12 tends to keep the arm 8” so that “jamming member 7 is
engaged with the contrast member 6, thus keeping the lid 3 in the position of
locking and preventing its opening.” Id. at 4:6–12, Figs. 2, 3. Lid 3 is
opened by an external manual-actuation tool which includes second
permanent magnet 13 that magnetically repels permanent magnet 11 to
cause arm 8 to rotate against spring 12 to disengage the hook from jamming
member 7. Id. at 4:16–28, Figs. 2, 3.
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According to Aprile, its locking device is usable for “applications that
involve an extremely low cost, limited overall dimensions, and ease of
installation.” Ex. 1008, 5:3–6. Aprile also provides a “doll with a mobile
part associated to the aforesaid locking device to obtain original and
amusing effects.” Id. at 1:30–33; see also id. at 5:21–6:19 (describing doll
15), Fig. 4.
2. Analysis of Claim 1
Petitioner argues that, to any extent Tomiyama and Shannon do not
teach or suggest a “releasable latch means” that “is provided with a magnet,”
Aprile teaches such a latch and that it would have been obvious to combine
Shannon, Tomiyama, and Aprile. Pet. 71–72 (citing Ex. 1002 ¶¶ 172–179).
In particular, Petitioner argues that Aprile teaches latch 8 with magnet 11,
latch 8 disengages from catch 6 when another magnet either repels or
attracts magnet 11, and the “magnetically-actuated latch” is “useful for . . .
effectuating movement in toys.” Id. at 72–73 (citing Ex. 1002 ¶¶ 172–179;
Ex. 1008, 1:25–33, 3:28–4:32, 5:3–6, 5:11–6:4, 7:5–15, Figs. 2, 3).
For the reasons discussed above, we find that Shannon teaches the
preamble of claim 1. Ex. 1002 ¶ 148; Ex. 1007, code (57). We also find
that Shannon teaches the recited main body element and at least first
moveable element of claim 1. Ex. 1002 ¶¶ 149–155; Ex. 1007, 2:4–7, 2:12–
16, 2:42–45, 3:9–11, 3:38–39, 3:42–43, 5:26–28, 6:37–42, Figs. 1, 6. We
further find that Shannon teaches the use of other fasteners. Ex. 1002
¶¶ 156–157; Ex. 1007, 2: 5:59–65.
As discussed above, for “catch means,” we determine that the
corresponding structure for performing the function of “cooperat[ing] with
the latch means to maintain the at least one first movable element in the first
position until the latch means is released” is structure elements 5c, 7c.
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Pet. 20; Ex. 1001, 3:42–4:16, 8:6–17, Figs. 1, 5(a); Ex. 1002 ¶¶ 24–25. For
“latch means,” we determine that the corresponding structure for performing
the function of “cooperat[ing] with the catch means to maintain the at least
one first movable element in the first position until the latch means is
released” is locking component 10. Pet. 19; Ex. 1001, 3:42–4:16, 8:6–17,
Figs. 1, 5(a); Ex. 1002 ¶¶ 22–23.
Turning to Aprile, we find that the relied-upon portions of Aprile
teach (1) container 1 with locking device 5 and (2) locking device 5
comprises contrast member 6 on lid 3 and jamming member 7 on bottom
part 2 of container 1. Ex. 1008, 3:28–4:1, Figs. 2, 3. Jamming member 7
includes a hook carried by arm 8 rotatable with respect to bottom part 2. Id.
at 4:2–5, Figs. 2, 3.
“[A]rm 8 of the jamming member 7 has a permanent magnet 11” and
“helical extension spring 12 tends to keep the arm 8” so that “jamming
member 7 is engaged with the contrast member 6, thus keeping the lid 3 in
the position of locking and preventing its opening.” Id. at 4:6–12, Figs. 2, 3.
Lid 3 is opened by an external manual-actuation tool which includes second
permanent magnet 13 that magnetically repels permanent magnet 11 to
cause arm 8 to rotate against spring 12 to disengage the hook from jamming
member 7. Id. at 4:16–28, Figs. 2, 3. We further credit Dr. Kudrowitz’s
testimony regarding what Aprile teaches because Aprile supports it.
Ex. 1002 ¶¶ 172–175 (citing Ex. 1008, 1:25–33, 2:19–3:9; 3:27–6:19, 7:5–
15, Figs. 2, 3).
Patent Owner responds that it “does not submit that the proposed
combination fails to teach [a ‘releasable latch means’ that ‘is provided with a
magnet’]” and the “Board need not consider Ground 7,” the ground based on
Shannon, Tomiyama, and Aprile. PO Resp. 42 (citing Pet. 71–72); see also
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Tr. 80:14–82:4 (Patent Owner’s counsel explaining that the Board does not
need to reach certain grounds based on Petitioner’s presentation of
arguments). Dr. Janét also does not provide any opinion regarding Aprile in
this proceeding. Ex. 1021, 39:17–40:1.
Based on the full record before us, because Aprile teaches contrast
member 6 and jamming member 7 that are equivalent structures that perform
the functions of catch means and latch means, Petitioner persuades us that
Aprile teaches a “moveable releasable latch means” that is “provided with a
magnet, whereby said releasable latch means is moveable out of engagement
with said catch by attraction to said playing surface, whereby a rolling of the
toy along the playing surface ceases when said latch means is moved out of
engagement with said catch.” Thus, Petitioner persuades us that Shannon,
Tomiyama, and Aprile teach or suggest all the limitations of claim 1.
a) Petitioner’s Asserted Motivation to Combine Shannon,
Tomiyama, and Aprile
Petitioner also argues that Aprile provides motivation for use in toys,
like the proposed combination of Tomiyama and Shannon. Pet. 73 (citing
Ex. 1002 ¶¶ 172–179). According to Petitioner, “Aprile explicitly states that
its latch is ‘simple and inexpensive,’” “would be ‘usable to advantage in all
those applications that involve an extremely low cost, limited overall
dimensions, and ease of installation,’” and “the actuation causes toy
components to ‘open by “magic.”’” Id. (citing Ex. 1008, 1:27, 5:3–6, 5:21–
24). Petitioner contends that the combination “would be a simplification
resulting in smaller dimensions, lower cost, and easier installation.” Id. at
74 (citing Ex. 1002 ¶¶ 172–179).
We find that the relied-upon portions of Aprile teach providing “an
extremely simple and inexpensive locking device” (Ex. 1008, 1:27), a
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“locking device . . . usable to advantage in all those applications that involve
an extremely low cost, limited overall dimensions, and ease of installation”
(id. at 5:3–6), and “second magnet 13” that can be “incorporated in a doll or
the like” (id. at 5:21–24). Moreover, Aprile provides “a toy, typically in the
form of a doll with a mobile part associated to the aforesaid locking device
to obtain original and amusing effects.” Id. at 1:30–33. We also credit Dr.
Kudrowitz’s testimony regarding why one of ordinary skill in the art would
have combined Shannon, Tomiyama, and Aprile because the record supports
it. Ex. 1002 ¶¶ 176–179 (citing Ex. 1008, 1:27, 1:30–31, 5:3–6, 5:15–24).
Because Aprile teaches a simple, inexpensive, low cost, easily
installed locking device of small dimensions usable in dolls, Petitioner
persuades us that one of ordinary skill in the art would have been motivated
to modify Shannon with, at least, the teachings of Aprile for the reasons
asserted. In particular, the full record persuades us that one of ordinary skill
in the art would have been motivated to modify Shannon’s toy with Aprile’s
magnetically actuated latch because Aprile’s magnetically actuated latch is
(1) simple and inexpensive, (2) easily installed, and (3) has miniature
dimensions. Ex. 1002 ¶ 177. Petitioner also persuades us that one of
ordinary skill in the art would have combined Shannon and Tomiyama with
Aprile to provide a lock that opens by “magic” to create an “interesting
effect.” Ex. 1002 ¶ 178; Ex. 1005 ¶ 4; Ex. 1008, 5:21–24. Patent Owner
does not provide a response specifically directed to Petitioner’s asserted
motivation to combine Tomiyama, Shannon, and Aprile. See generally PO
Resp.; PO Sur-reply; Tr. 80:14–82:4.
For the reasons above, to the extent that the proposed combination of
Shannon and Tomiyama lacks “said releasable latch means is provided with
a magnet,” Petitioner persuades us by a preponderance of the evidence that
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Aprile teaches or suggests such a releaseable latch means and that one of
ordinary skill in the art would have combined Shannon, Tomiyama, and
Aprile in the manner asserted by Petitioner. Ex. 1002 ¶¶ 176–179; Ex. 1008,
1:27, 1:30–31, 5:3–6, 5:15–24.
b) Reasonable Expectation of Success
Petitioner argues that one of ordinary skill in the art “would not face
technical difficulty in applying” Aprile and the proposed modification
would be a trivial exercise of using a simple mechanical device
(Aprile’s magnetic latch with the magnet placed directly on the
latch) as intended (to have the latch disengage when in proximity
to a magnet) to achieve the expected result (the latch moves off
the catch and disengages when in proximity to a magnet).
Pet. 73–74 (citing Ex. 1002 ¶¶ 172–179). Patent Owner does not provide a
response regarding whether one of ordinary skill in the art would have had
any difficulty in applying Aprile to Tomiyama and Shannon. See generally
PO Resp.; PO Sur-reply.
We find that Aprile provides evidence that applying its locking
mechanism to a toy, such as a doll, was within ordinary skill in the art.
Ex. 1008, 1:30–33, 5:21–24. We also credit Petitioner’s declarant testimony
that one of ordinary skill in the art would have been able to implement
Aprile’s teachings to Shannon with “minimal skill or effort” and the
proposed modification
would be a trivial exercise of using a simple mechanical device
(a magnetic latch with the magnet placed directly on the latch) as
intended (to have the latch disengage when in proximity to a
magnet) to achieve the expected result (the latch moves off the
catch and disengages when in proximity to a magnet)
because the record supports it. Ex. 1002 ¶ 179.
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Accordingly, based on the full record before us, Petitioner further
persuades us that one of ordinary skill in the art would have had a reasonable
expectation of success in combining Shannon, Tomiyama, and Aprile in the
manner asserted by Petitioner.
3. Analysis of Dependent Claims 2–5
As discussed above for the challenge of claims 2–5 based on Shannon
modified by Tomiyama, we find that Petitioner’s relied-upon portions of
Shannon teach or suggest the limitations of claims 2, 3, and 5. Ex. 1002
¶¶ 162, 163, 165–170; Ex. 1007, 3:9–15, 3:47–48, 6:26–42, Figs. 1, 1A, 10,
10A. For claim 4, Petitioner persuades us that one of ordinary skill in the art
would have included a torsion spring to prevent inadvertent release during
play. Pet. 45; Ex. 1002 ¶¶ 115–118. Moreover, we find that Aprile teaches
or suggests “wherein said releasable latch means is biased to a position in
engagement with said catch,” as recited by claim 4, because Aprile teaches
spring 12 that keeps jamming member 7 engaged with contrast member 6 to
prevent opening of lid 3. Ex. 1008, 4:6–12, Figs. 2, 3.
Patent Owner does not present any arguments specifically for the
challenged dependent claims. See generally PO Resp.; PO Sur-reply; see
also Tr. 96:15–18 (Patent Owner’s counsel confirming that no arguments
specifically for dependent claims 2–5 were presented). Accordingly, based
on the full record before us, we find that Shannon, Tomiyama, and Aprile
teach or suggest the limitations of dependent claims 2–5. We also determine
above that one of ordinary skill in the art would have modified Shannon with
the teachings of Tomiyama and Aprile with a reasonable expectation of
success.
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4. Objective Indicia of Nonobviousness
The parties do not rely on any objective indicia of nonobviousness for
any of claims 1–5. See generally Pet.; PO Resp.; PO Sur-reply.
5. Weighing the Graham Factors
Based on the full record before us, we find that (1) Petitioner’s
proposed level of ordinary skill in the art is consistent with the prior art of
record; (2) Shannon, Tomiyama, and Aprile teach or suggest all the
limitations of claims 1–5, (3) one of ordinary skill in the art would have
modified Shannon in view of Tomiyama and Aprile with a reasonable
expectation of success, and (4) no objective evidence of nonobviousness has
been presented in relation to claims 1–5. Weighing these underlying factual
determinations, a preponderance of the evidence persuades us that claims 1–
5 of the ’508 patent are unpatentable over Shannon, Tomiyama, and Aprile.
Arctic Cat, 876 F.3d at 1361.
G. Remaining Grounds
Petitioner argues that claims 1–4 are unpatentable over (1) Tomiyama
and Thompson and (2) Tomiyama, Thompson, and Aprile. Pet. 24–30, 51–
54. Petitioner also contends that claim 5 is unpatentable over (1) Tomiyama,
Thompson, and Saucier and (2) Tomiyama, Thompson, Aprile, and Saucier.
Id. at 46–50, 54. As discussed above, Petitioner further argues that
claims 1–5 are unpatentable over Tomiyama modified by the teachings of
Shannon. Id. at 57–58, 60. Patent Owner responds to these challenges, and
the parties provide reply arguments. PO Resp. 11–36; Pet. Reply 7–17; PO
Sur-reply 5–13.
Because we determine above that Shannon modified by the teachings
of Tomiyama would have rendered obvious claims 1–5; Shannon modified
by the teachings of Tomiyama and Aprile would have rendered obvious
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claims 1–5; and Petitioner’s proposed modification of Tomiyama alone
would have rendered obvious claims 1–4, we do not reach Petitioner’s
additional challenges to the same claims based on (1) Tomiyama and
Thompson; (2) Tomiyama, Thompson, and Aprile, (3) Tomiyama,
Thompson, and Saucier; and (4) Tomiyama, Thompson, Aprile, and Saucier.
H. Patent Owner’s Remaining Argument
Patent Owner states that the Federal Circuit “correctly held that
[Administrative Patent Judges (“APJs”)] are unconstitutionally appointed”
but “incorrectly held that it could cure this infirmity by revising statutory
language and purporting to make APJs removable at will.” PO Resp. 43
(citing Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir.
2019)). Patent Owner argues that the “APJs appointed to this proceeding,
therefore, remain unconstitutionally appointed, and only Congress can
implement a correction” and the institution of the present proceeding
“should, therefore, be vacated.” Id. Petitioner replies that the Federal
Circuit has rejected a similar argument and Patent Owner’s “argument
likewise should be rejected.” Pet. Reply 25 (citing PO Resp. 43; Arthrex,
Inc. v. Smith & Nephew, Inc., 953 F.3d 760 (Fed. Cir. 2020)). Patent Owner
does not provide a reply to this argument. See generally PO Sur-reply.
During oral argument, in response to panel questions, Patent Owner’s
counsel indicated that Patent Owner believes the issue has been resolved,
Patent Owner does not maintain the argument, and there is no issue related
to the Appointments Clause that require our resolution. Tr. 96:19–97:7.
We, therefore, do not need to decide the issue.

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III. CONCLUSION3
In summary:

3 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
4 As explained in Section II.G, we do not reach the challenge to claims 1–4
based on Tomiyama and Thompson because the same claims are determined
to be unpatentable over Tomiyama alone, Shannon modified by Tomiyama,
and Shannon modified by Tomiyama and Aprile.
5 As explained in Section II.G, we do not reach the challenge to claim 5
based on Tomiyama, Thompson, and Saucier because the same claim is
determined to be unpatentable over Shannon modified by Tomiyama and
Shannon modified by Tomiyama and Aprile.
6 As explained in Section II.G, we do not reach the challenge to claims 1–4
based on Tomiyama, Thompson, and Saucier because the same claims are
determined to be unpatentable over Tomiyama alone, Shannon modified by
Tomiyama, and Shannon modified by Tomiyama and Aprile.
Claim(s) 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–4 § 103 Tomiyama 1–4
1–4 § 103 Tomiyama,
Thompson4

5 § 103 Tomiyama,
Thompson,
Saucier5

1–4 § 103 Tomiyama,
Thompson,
Aprile6

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5 of U.S. Patent No. 8,500,508 B2 have
been shown, by a preponderance of the evidence, to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

7 As explained in Section II.G, we do not reach the challenge to claim 5
based on Tomiyama, Thompson, and Saucier because the same claim is
determined to be unpatentable over Shannon modified by Tomiyama and
Shannon modified by Tomiyama and Aprile.
5 § 103 Tomiyama,
Thompson, Aprile,
Saucier7

1–5 § 103 Tomiyama,
Shannon
1–5
1–5 § 103 Tomiyama,
Shannon, Aprile
1–5
Overall
Outcome
1–5
Trials@uspto.gov Paper 46
571-272-7822 Date: September 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CHOIROCK CONTENTS FACTORY CO., LTD.,
Petitioner,
v.
SPIN MASTER LTD.,
Patent Owner.

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DOUGAL, Administrative Patent Judge, concurring.

I join with my colleagues in the decision that Tomiyama and the
combination of Shannon as modified by Aprile and Tomiyama teach the
limitations of claims 1–5.
However, I do not agree that the Petition establishes that one of skill
in the art would have modified Shannon based on the teachings of
Tomiyama. In particular, the Petition relies on hindsight in proposing the
modification of Shannon’s fastener, including magnets, to include
Tomiyama’s turret release mechanism. See Pet. 58–61. The function of
Tomiyama’s magnet is different than that of Shannon and is not a fastener,
but is part of a separate release mechanism. Thus, Shannon’s mention of a
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magnet fastener does not equate to a magnetically released fastener. The
Petition does not sufficiently address these differences. Further, the
Petition’s reliance on the “interesting” effect of rolling a ball over a magnet
with a magnetic release mechanism (id. at 59), without more, lacks sufficient
rational underpinnings (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).

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For PETITIONER:

Siho “Scott” Yoo
Hilary L. Preston (pro hac vice)
VINSON & ELKINS L.L.P.
syoo@velaw.com
hpreston@velaw.com
ChoirockIPRService@velaw.com

For PATENT OWNER:

Jennifer C. Bailey
Callie Pendergrass
Megan J. Redmond (pro hac vice)
Clifford T. Brazen
ERISE IP
Jennifer.Bailey@EriseIP.com
Callie.Pendergrass@EriseIP.com
Megan.Redmond@EriseIP.com
Cliff.Brazen@EriseIP.com