Spin Master Ltd.

Patent Trials and Appeals Board

Sep 24, 2020

IPR2019-00900 (P.T.A.B. Sep. 24, 2020)

Trials@uspto.gov Paper 50
Tel: 571-272-7822 Date: September 24, 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.

IPR2019-00900
Patent 9,868,073 B2

Before HYUN J. JUNG, NEIL T. POWELL, and
BRENT M. DOUGAL, Administrative Patent Judges.
POWELL, Administrative Patent Judge.

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

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I. INTRODUCTION
Choirock Contents Factory Co., Ltd. (“Petitioner” or “Choirock”)
filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims
1–20 of U.S. Patent No. 9,868,073 B2 (Ex. 1001, “the ’073 patent”).
Concurrently with the Petition, Petitioner filed a Motion for Joinder to
Related Inter Partes Review of U.S. Patent No. 9,868,073 (Mattel, Inc. v.
Spin Master Ltd., IPR2018-01673) under 35 U.S.C. § 315(c) and 37 C.F.R.
§ 42.122(b). Paper 3. Spin Master Ltd. (“Patent Owner”) filed a
Preliminary Response. Paper 14 (“Prelim. Resp.”). Patent Owner also filed
an Opposition to Petitioner’s Motion for Joinder with IPR2018-01673.
Paper 7. Petitioner thereafter filed a Reply to Patent Owner’s Opposition.
Paper 8. With our authorization, Petitioner further filed a Reply to Patent
Owner’s Preliminary Response. Paper 16 (“Pet. Reply to Prelim. Resp.”);
see also Paper 15 (authorizing reply). Pursuant to 35 U.S.C. § 314, we
instituted an inter partes review of the ’073 patent and at the same time
denied the Motion for Joinder. Paper 17 (“Dec.”).
After institution, Patent Owner filed a Response (Paper 31, “PO
Resp.”), to which Petitioner filed a Reply (Paper 34, “Pet. Reply”). Patent
Owner thereafter filed a Sur-reply (Paper 39, “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 45, “Tr.”).
For the reasons below, Petitioner persuades us by a preponderance of
the evidence that claims 1–20 of the ’073 patent are unpatentable.
II. BACKGROUND
A. Related Matters
According to the parties, complaints alleging infringement of the ’073
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patent were filed on April 24, 2018 in Spin Master Ltd. V. Mattel, Inc., No.
2:18-cv-3435 (C.D. Cal.) and in Spin Master Ltd. v. Alpha Group US LLC,
No. 2:18-cv-01046 (C.D. Cal.). Pet. 1; Paper 5, 2. The parties also indicate
that, on September 7, 2018, a petition requesting inter partes review of the
’073 patent was filed in IPR2018-01673. Pet. 2; Paper 5, 2. On March 19,
2019, inter partes reviews of the ’073 patent and its related patents were
instituted, and on April 29, 2019, joint motions to terminate those
proceedings were granted. The present Petition was filed on March 29,
2019. Paper 4.
B. The Asserted Grounds of Unpatentability
Petitioner asserts that claims 1–20 would have been unpatentable on
the following grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–20 § 103(a)1 Tomiyama2, Shannon3
1–3, 5–8 § 102(b) Tomiyama
1–3, 5, 6, 8 § 102(b) Wilhelm4

1 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 ’073 patent issued is a continuation of an
application filed on December 22, 2006, and the ’073 patent claims priority
to a foreign application filed on February 20, 2006. Ex. 1001, codes (30),
(60). 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.
2 Certified translation of JP 38-9155, Pub. May 15, 1963 (Ex. 1005). Patent
Owner does not dispute the accuracy of the certified translation. See
generally PO Resp.; PO Sur-reply. We treat the translation as accurate.
3 U.S. Patent No. 5,310,378, iss. May 10, 1994 (Ex. 1007).
4 U.S. Patent No. 6,592,427 B1, iss. July 15, 2003 (Ex. 1011).
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Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–20 § 103(a) Aprile5, Shannon
As further support, Petitioner relies on two Declarations of Barry
Kudrowitz, Ph.D. Exs. 1002, 1020. Patent Owner relies on a Declaration of
Jason A. Janét, Ph.D. Ex. 2001.
C. The ’073 Patent
The ’073 patent describes “a toy that transforms by means of . . . a
magnetic force.” Ex. 1001, 1:21–23. Figure 7 of the ’073 patent is
reproduced below.

Figure 7 is a “perspective view of the toy . . . showing a post-
transformation state.” Id. at 4:60–61. “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 5:18–23;

5 WO 2006/051417, pub. May 18, 2006 (Ex. 1008).
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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 5:26–39.
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, when no magnetic force acts on toy 1. Id. at 5:39–43, 5:53–57,
7:14–17, Figs. 1, 5(a), 5(b). Locking component 10 includes portions that
lock lateral components 5, 7, thereby locking components 3, 4, 6, 8, 9 to
maintain the first or spherical shape. Id. at 6:15–23, 7:8–12, 7:14–22,
8:23–28. When a magnetic force acts on toy 1, locking component 10
moves downwardly, thereby causing lateral components 4–7 to move
outwardly and upper component 3 to move upwardly due to springs to
transform toy 1 to the second or fictional character shape. Id. at 6:23–28,
6:42–46, 6:52–54, 6:62–67, 7:22–28, 7:39–41, 8:29–48.
D. Illustrative Claim
Claims 1, 9, and 15 are independent. Each of claims 2–8, 10–14, and
16–20 depends, directly or indirectly from one of independent claims 1, 9,
and 15. Claim 1 is illustrative of the challenged claims and recites:
1. A transformable toy comprising:
a first toy component including:
a toy body;
at least one auxiliary component coupled with the body and
rotatable towards the body to a closed position and
rotatable away from the body to an open position,
wherein in the closed position, the first toy component is rollable;
at least one auxiliary component elastic element,
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wherein the at least one auxiliary component is rotatably
associated with the body via the at least one auxiliary
component elastic element, such that the at least one
auxiliary component elastic element biases the at least one
auxiliary component to the open position away from the
body;
a locking component associated with the toy body and selectively
positionable between a first, locked position wherein the
at least one auxiliary component is retained in the closed
position, and a second, disengaged position wherein the at
least one auxiliary component is released to the open
position, the locking component including a latch and a
keeper engaged with the latch when the locking assembly
is in the first, locked position; and
a first magnetically-responsive member associated with the
locking component; and
a second toy component separate from the first toy component and
including a second magnetically-responsive member,
wherein at least one of the first magnetically-responsive member and
the second magnetically-responsive member is a magnet,
wherein upon the second magnetically-responsive member being
brought into proximity of the first magnetically-responsive
member, the latch of the locking component associated with the
first magnetically responsive member moves to thereby
disengage the latch from the keeper and position the locking
component in the second, disengaged position.
Ex. 1001, 16:2–41.
III. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner asserts that one of ordinary skill in the art “would have (i) a
bachelor’s degree in mechanical engineering or a related field and at least
three years of experience in toy design.” Pet. 12 (citing Ex. 1002 ¶¶ 22–24).
Patent Owner states that its declarant applies Petitioner’s proposed level of
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ordinary skill in his analysis. PO Resp. 1 (citing Ex. 2001 ¶ 31); 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).
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 determine 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.” This
level of skill in the art is consistent with the disclosure of the ’073 patent and
the prior art of record.
B. 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. 13–14 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
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to the Petition); PO Resp. 1 (stating that “[t]his IPR was filed after
November 13, 2018, and the Phillips standard applies”).
According to the applicable standard, claim terms “are generally given
their ordinary and customary meaning” as understood by a person of
ordinary skill in the art in question at the time of the invention. Phillips v.
AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In
determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is
“less significant than the intrinsic record in determining ‘the legally
operative meaning of claim language.’” Phillips, 415 F.3d at 1317. Only
those terms that are in controversy need be construed, and only to the extent
necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid
Techs., Inc. v. America Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999)).
Our analysis below does not require construing any claim term to
resolve the parties’ dispute. Accordingly, we do not expressly construe any
claim term.
C. Alleged Obviousness over Tomiyama and Shannon
1. Overview of Tomiyama
Tomiyama describes a “running toy having a desired shape,” such as
tank-like running toy 1. Ex. 1005 ¶¶ 1, 2. Figure 2 of Tomiyama is
reproduced below.
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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. “Self-
destructing” base 23 with protrusion 22 is loosely mounted in toy 1 so that
protrusion 22 is near push-out body 2. Id. Other “self-destructing”
components 24, 27, 28 are mounted on base 23. Id. The toy also includes
wheel 30. Id. ¶ 3.
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 the effect of a tank hitting a landmine and being
destroyed. Id. ¶ 4. Tomiyama also states that the toy “can be a tank as
shown in the drawings, or any other type of vehicle.” Id. ¶ 6.
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2. Overview of Shannon
Shannon “relates to a transformable toy.” Ex. 1007, 1:6–7. Figures 7
and 9 of Shannon are reproduced below.

Figures 7 and 9 show first and last folding steps. Id. at 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 surfaces 44, 46, 50, 52, 58, 62, 64 and display only exterior
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surfaces 42, 54, 68, 69. Id. at 6:6–30, 6:52–55. Also, fastener 32 and
fastener 38 latch together and hold toy 10 closed in a ball-shaped
configuration. Id. at 6:31–33. 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.
3. Discussion
Petitioner asserts that each of Tomiyama and Shannon teaches many
of the limitations of claims 1–20. Pet. 28–57. Petitioner identifies two
modifications of the references’ teachings that allegedly would have been
obvious.
First, Petitioner asserts that the claims are unpatentable because it
would have been obvious to modify Tomiyama’s toy so that “the toy would
not have to move towards the magnet on wheels or tracks, but rather could
be rolled to the magnet.” Id. at 25. Petitioner elaborates that it would have
been obvious to modify Tomiyama’s toy to have the shape of other well-
known toys, such as the shape of “the spring-loaded ball of Shannon.” Id. at
27. Petitioner asserts that the resulting toy would meet all of the limitations
of the challenged claims. Id. at 28–57.
Second, Petitioner asserts that it would have been obvious to modify
Shannon to use a magnetically-released fastener. Id. at 26. Specifically,
Petitioner asserts that a person of ordinary skill in the art would understand
from Tomiyama that a magnetically-released fastener constitutes an alternate
fastening means for Shannon’s toy. Id. Petitioner asserts that the resulting
toy would meet all of the limitations of the challenged claims. Id. at 28–57.
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Petitioner asserts that a person of ordinary skill in the art would have
had motivation and sufficient skill to perform either modification of the prior
art. Id. at 23–28. Petitioner asserts that the references themselves suggest
the modifications. Id. at 24.
Regarding the proposed modification of Tomiyama, Petitioner argues
that “Tomiyama teaches that its tank . . . can take on other shapes, which
would include a ball.” Id. at 24. Petitioner argues that Tomiyama and
Shannon both teach similar transformable toys “in the same field of
endeavor as the ’073 patent.” Id. at 23–24. Petitioner contends that a person
of ordinary skill in the art would have realized the possibility of using a ball
shape with Tomiyama’s basic concept of a toy travelling toward a magnet
that triggers the toy to open. Id. at 25.
Noting that Tomiyama teaches its toy can have “a desired shape”
(Ex. 1005 ¶ 1), Petitioner argues that Tomiyama indicates the possibility of
beneficially using its release mechanism with other movable toy shapes.
Pet. 25 (citing Ex. 1005 ¶ 1; Ex. 1002 ¶ 69). Petitioner further argues that a
person of ordinary skill in the art would understand that modifying
Tomiyama’s toy to roll toward its magnet would add a valuable “excitement
and skill element.” Id. Petitioner argues that the proposed modification
“represents nothing more than changing the shape of the spring-loaded tank
to that of well-known toys that are rollable, such as the spring-loaded ball of
Shannon.” Id. at 27. Petitioner asserts that a person of ordinary skill in the
art would have been motivated to modify Tomiyama in such a manner “to
better meet the need identified explicitly by each of the references—the need
for interesting and easy-to-use transformable toys.” Id. Petitioner argues
that the combination of the references’ teachings would provide the relative
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user interest from each reference’s toy “in a single, more interesting toy set
without sacrificing ease of use.” Id.
Regarding the proposed modification of Shannon, Petitioner asserts
that the references suggest the modification. Id. at 24. Petitioner elaborates
that “Shannon teaches that a variety of fasteners, which would include
Tomiyama’s magnetically-operated latch, can be used with its transformable
ball.” Id. Petitioner explains that a person of ordinary skill in the art “would
appreciate from Shannon itself that any releasable fastener could be used to
maintain the toy in its ball shape.” Id. at 26. Petitioner also argues that
“[l]ike Tomiyama, Shannon discloses a toy intended to meet a need for toys
which are both intriguing, easily used, and easily transformable.” Id. at 25.
Petitioner argues that Tomiyama discloses an “interesting” effect from
sending a toy toward a magnet to open the toy. Id. at 26 (citing
Ex. 1005 ¶ 4; Ex. 1002 ¶ 71). Petitioner argues that a person of ordinary
skill in the art “would be fully able to, and motivated to, apply this concept
. . . to the spring loaded ball of Shannon.” Id. Petitioner contends that
starting with Shannon, the claimed invention of the ’073 Patent
is obvious because it represents nothing more than the
incorporation of a known 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.
As discussed in detail below in Section III.D.2, Petitioner
demonstrates obviousness of claims 1–20 over Aprile and Shannon. Having
found claims 1–20 unpatentable over Aprile and Shannon, we do not reach
the parties’ disputes regarding Petitioner’s allegations of obviousness over
Tomiyama and Shannon.
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D. Alleged Obviousness of Claims 1–20 over Aprile and Shannon
1. Overview of Aprile
Aprile relates to a certain type of locking device. Ex. 1008, 1:4–9.
Aprile shows a container with a locking device in Figure 2, which is
reproduced below. Id. at 3:15–20.

Figure 2 shows container 1 with locking device 5. Id. at 3:28–36. Container
1 includes bottom part 2 and lid 3 “hinged in 4 to the bottom part 2.” Id. at
3:29–31.
Locking device 5 includes contrast member attached to lid 3. Id. at
3:32–35. Locking device 5 also includes jamming member 7, which
includes arm 8, and “can rotate in 9” inside container 1. Id. at 3:35–4:5.
Jamming member 7 includes permanent magnet 11 pointed toward front
wall 10. Id. at 4:6–7. “[S]pring 12 tends to keep the arm 8 in the position
represented in Figure 2, in which said jamming member 7 is engaged with
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the contrast member 6, thus keeping the lid 3 in the position of locking and
preventing its opening.” Id. at 4:7–12.
Aprile shows locking device 5 in its open state in Figure 3, which is
reproduced below.

Figure 3 shows container 1 with locking device 5 in its open condition and
second permanent magnet 13 facing permanent magnet 11. Id. at 3:21–23,
4:16–23. Aprile discloses opening locking member 5 as follows:
By approaching the pole of the second permanent magnet 13 to
the corresponding pole of the permanent magnet 11 . . . a field of
magnetic repulsion is produced, as a result of which the arm 8
rotates within the container 1 into the position represented in
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Figure 3, against the action of the spring 12, in such a way as to
disengage the jamming member 7 from the contrast member 6.
Id. at 4:19–27. This allows opening lid 3. Id. at 4:27–28.
Aprile also discloses including its locking device 4 in other
applications. For example, in connection with Figure 4 (not shown), Aprile
discloses using its locking device in a doll. Id. at 5:25–6:19.
2. Discussion
a. Introduction
Petitioner argues that it would have been obvious to combine Aprile’s
latch with Shannon’s ball for substantially the same reasons that it would
have been obvious to combine Tomiyama’s latch with Shannon’s ball.
Pet. 75. Petitioner argues that Aprile teaches an “even simpler latch,” and
that a person of ordinary skill in the art would have been motivated to apply
this latch “to a ball like Shannon.” Id. In connection with this, Petitioner
argues “Aprile explicitly teaches that its latch is useful in any application
calling for extremely low cost, small dimensions, and ease of
implementation.” Id. (citing Ex. 1008, 1:26–29, 5:3–10; Ex. 1002 ¶¶ 246–
256). Petitioner argues that all of these features would prove useful with a
ball toy. Id. (citing Ex. 1002 ¶¶ 246–256). Additionally, Petitioner asserts
that Shannon teaches its toy can use different fasteners. Id. (citing Ex. 1007,
5:59–65; Ex. 1002 ¶¶ 246–256). Thus, Petitioner contends, “the references
themselves suggest the combination, which in any event is an obvious
example of using known toy mechanisms for their intended, expected
purposes.” Id. at 76. Petitioner also outlines how it believes the proposed
combination of the references’ teachings would meet all of the limitations of
the challenged claims. Id. at 76–85.
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Petitioner argues multiple ways that it allegedly would have been
obvious to modify the references. One of Petitioner’s arguments is that it
would have been obvious to add Aprile’s magnetically released fastener to
Shannon’s toy. Id. at 75 (arguing obviousness of “using a known fastener
(the magnetic latch of Aprile) exactly as intended (to cause an item to spring
open when a magnet is brought near) to achieve the predicted result (the ball
of Shannon will open magnetically)”). Having reviewed the full record, and
for the reasons discussed in greater detail below, we find that Petitioner’s
arguments and evidence in support of this theory demonstrate obviousness
of claims 1–20 over Aprile and Shannon by a preponderance of the
evidence. Finding claims 1–20 unpatentable based on Petitioner’s argument
that it would have been obvious to modify Shannon’s toy to use Aprile’s
magnetically released fastener, we do not reach Petitioner’s alternate theory
regarding why claims 1–20 would have been obvious over Aprile and
Shannon. Petitioner’s alternate theory is that modifying Aprile’s container
by “rounding the bottom of the toy box to form a round shape would have
been obvious in light of Shannon.” Pet. 77.
Patent Owner argues that it would have been unobvious to modify
Shannon with a magnetically released fastener like that disclosed by Aprile.
PO Resp. 22–45, 63.6 Patent Owner argues that Shannon teaches away from
the proposed modification. Id. at 23–29. Patent Owner asserts that

6 On page 63 of the Response, Patent Owner refers back to and incorporates
by reference the arguments on pages 22–45. Those arguments traverse
Petitioner’s assertion of obviousness over Tomiyama and Shannon, asserting
that it would not have been obvious to modify Shannon to include a
magnetically released fastener.
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“Shannon expressly teaches its desire for the toy to be easily and simply
manipulatable by a very young child and teaches away from any
modification that requires openings or reasoned manipulation.” Id. at 23.
Patent Owner contends that “Shannon discourages any fastener that requires
manipulation of an element drawn or stuffed through an opening.” Id. at 25–
26. Patent Owner argues that “Shannon also teaches away from the
modification because it would present a more complex toy that is not simply
and easily transformed via the child’s manipulation of the toy.” Id. at 26.
Patent Owner elaborates that “[v]ery young children do not have the
reasoned manipulation to place the second toy component of the external
magnet at a first location, move to a second location, and accurately roll the
Shannon toy towards the external magnet at the first location.” Id. at 27.
Patent Owner also argues that the proposed modification would have
created hazards for a child playing with the toy. Id. at 26–29. Specifically,
Patent Owner contends that a child could swallow Aprile’s external magnet,
and that Aprile’s fastener could snag the child’s skin or clothes. Id.
Patent Owner also argues that the proposed modification would
change Shannon’s principle of operation. Id. at 29–32. According to Patent
Owner, “[Petitioner’s] wholesale change of Shannon would change its
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 29–30. Patent Owner argues that “[t]he
difference between using a magnet to trigger a latch to release versus using a
magnet to hold a latch closed was described by the Board as a ‘material
difference.’” Id. at 30 (citing Dec. 23–24, 39).
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Patent Owner argues that the proposed modification of Shannon
“require substantial redesign of the Shannon toy.” Id. at 32. In connection
with this argument, Patent Owner cites and discusses Dr. Janét’s opinions
regarding certain details of multiple possible ways that one could have
modified Shannon’s toy to include a magnetically released latch. Id. at
32–38 (citing Ex. 2001 ¶¶ 86, 88, 90, 92–94, 96, 98, 100, 101). Patent
Owner argues that “the Shannon toy is formed of the thin sheet of
polypropylene overmolded with rubber. Such a construction does not easily
allow for including a spring-loaded locking assembly.” Id. at 33.
Additionally, with respect to one possible implementation of the proposed
modification, Patent Owner argues that “[a]t the very least, a toy designer
would need to undergo undue experimentation with magnets of different
sizes, strength, and cost in combination with a variety of spring options to
develop magnets that could be repeatedly and predictably locked and
unlocked under the operating conditions.” Id. at 34. Regarding a different
possible implementation, Patent Owner argues that “when the magnet is on
the end of the hook, there is the additional problem of a magnet on a hook
that must now be cleared through the keeper/eye. Clearing the end of the
hook itself would be a challenge for a very young child, but clearing the end
of the hook that also carries a magnet would be a greater challenge.
Additionally, the magnet on the end of the hook is exposed and could be
easily torn off.” Id. at 35. Regarding another possible implementation,
Patent Owner argues that it would be undesirable to form Shannon’s rabbit
ears in one piece, asserting that
it would require a much higher degree of tolerance of the
appendages of the rabbit fitting together into the spherical
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configuration. A single component with details of two ears takes
away from the look and feel of the overall Shannon design, with
its multiple appendages the child manipulates and folds.”
Id. at 36.
Patent Owner also argues that Petitioner does not support sufficiently
its assertion that a person of ordinary skill in the art would have been
motivated to modify Shannon in the specific way proposed. Id. at 38–40.
Regarding Petitioner’s position that a person of ordinary skill in the art
would have been motivated by a desire to make Shannon’s toy more
interesting, Patent Owner argues
Simply asserting toys desire interesting effects does not identify
a motivation for changing the principle of operation. Toy
designers commonly desire interesting effects and want to be fun
for play—that is whole point of toy design. (Ex. 2001, ¶ 102).
Therefore, general allegations of motivations to combine
because the toy would be fun to play with does not provide a
motivation to combine for the specific combination [Petitioner]
advances.
Id. at 39.
Regarding Petitioner’s observation that Shannon teaches using
different types of fasteners, Patent Owner argues that
A [person of ordinary skill in the art] would reasonably
understand from Shannon’s short mention of magnetic fasteners
that the hook and loop fasteners 32,38 shown on the rabbit ears
and midsection could be replaced with magnets that are
magnetically attracted together. (Ex. 2001, ¶ 98). [Petitioner]
makes a significant leap in logic, based on hindsight, to transform
Shannon’s toy from a single toy component transformed by
peeling apart the appendages to a two-component toy assembly
transformed by rolling the toy to an external magnet. It is not
sufficient that the modification to Shannon could be made—
there must be a reason why a [person of ordinary skill in the art]
would have been motivated to make the modification.
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Id. at 40. Patent Owner also faults Petitioner for asserting that a person of
ordinary skill in the art would have recognized the possibility that various
things “could be” done. Id. at 44–45.
Additionally, Patent Owner argues that Petitioner engages in improper
hindsight reconstruction. Id. at 40–44. Patent Owner contends that “[t]he
vast majority of the reasons provide for why the combination is obvious are
based on hindsight.” Id. at 41.
Patent Owner also argues that Aprile is not “rollable.” Id. at 57–58.
Patent Owner explains that “Dr. Janét opines the sharp corners and edges of
the container would cause the container to bounce and move forward
unevenly and unpredictably in a discontinuous and rough jostle as the sharp
edges and corners of the container impacted the surface at different angles.”
Id. at 57.
Additionally, Patent Owner argues that “simply rounding the bottom
of [Aprile’s] toy box to form a round shape” would not have made Aprile’s
container “rollable.” Id. at 58. Patent Owner explains that “the hinge on
[Aprile’s] container would prevent the container from ‘as a whole move[]
forward by rotating around an axis or point, like a ball.’” Id.
Patent Owner also argues that “[i]t [w]ould [n]ot [b]e [o]bvious to
[m]odify Aprile’s [c]ontainer to [h]ave [m]ultiple [c]laimed [a]uxiliary
[c]omponents or a [s]econd [f]igure [s]hape [t]hat [i]s a [f]ictitious
[c]haracter.” Id. at 63. Patent Owner argues that “[m]odifying Aprile’s
container to include a plurality of lids (the mapped auxiliary component)
would require a lock for each lid, resulting in a heavier container with more
mechanical structure (additional hinges, additional locks, etc.).” Id. at 64.
Patent Owner argues that “[t]here is even less reason to modify the Aprile
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container to have a second figure shape that is a fictitious character. The
container is just that—a container that holds items.” Id.
Patent Owner also argues that Petitioner did not explain its proposed
combinations of the references’ teachings clearly enough. PO Resp. 56.
Patent Owner explains that
In IPR2018-01673, the Board stated Spin Master’s “substantive
arguments indicate that Patent Owner understands Petitioner’s
proposed combination of the references the same we do.”
(IPR2018-01673, Paper 7 at 36). Simply because Spin Master
was forced to guess and argue against multiple possible
permutations of combinations does not mean Choirock provided
a proper mapping with the necessary particularity. The test for
whether a mapping is sufficiently particular is not whether the
Patent Owner could possibly understand it.
Id. at 56.
In its Reply, Petitioner maintains that it would have been obvious to
add an externally released, magnetic latch to Shannon’s toy. Pet. Reply 10–
21. Addressing Patent Owner’s reliance on Dr. Janét’s testimony alleging
various problems with the proposed modification, Petitioner argues that Dr.
Janét’s “opinions are inconsistent, arbitrary, and unfounded.” Id. at 11.
Petitioner argues that Dr. Janét does not support his position that the
proposed modification would transform Shannon from a toy that does not
require “reasoned manipulation” to a toy that does require “reasoned
manipulation.” Id. at 12–13. Petitioner also faults Dr. Janét’s testimony that
the proposed modification would have changed the appropriate age range for
Shannon’s toy. Id. at 13–15. Petitioner further argues that the proposed
modification would not require unduly difficult manipulation for a child of
the age range identified by Dr. Janét. Id. at 16–17. Regarding the hazards
that Patent Owner alleges would stem from the proposed modification,
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Petitioner asserts that a person of ordinary skill in the art would have
understood how to mitigate any such hazards. Id. at 17–18.
Petitioner also argues that the proposed modification would not
change Shannon’s principle of operation. Id. at 18–21. Petitioner argues
that “[t]he entertainment of [Shannon’s] toy stems from transformation.
Ex. 1007, Title, 6:39–40 (‘instant transformation’); 6:49 (‘dramatic []
opening’); 5:24–30 (‘enhance the transformation’); Ex. 1020, ¶ 69.
Changing the fastener type would not remove the enjoyment of the toy, and
thus, would not change Shannon’s principle of operation.” Pet. Reply 19.
Petitioner also disputes Patent Owner’s assertion that the proposed
modification would require substantial redesign. Id. at 19–20. Petitioner
asserts that “[a]ny particular design choice of determining a proper location,
size, and shape of a magnet to implement that modification or designing the
ear appendages as a single unit, are all within the knowledge of a [person of
ordinary skill in the art].” Id. at 20.
Additionally, Petitioner disputes Patent Owner’s argument that its
obviousness assertions stem from improper hindsight. Id. Petitioner argues
that it derives its obviousness assertions from “the disclosed advantages or
features in the prior art, not the claimed invention.” Id.
Petitioner also addresses Patent Owner’s concern about Petitioner’s
statements that a person of ordinary skill in the art would have known
certain things “could be” done. Id. at 20–21. In particular, Petitioner asserts
that it “properly alleges motivation to combine, separate from the alleged
‘could be’ statements.” Id. at 20.
In its Sur-reply, Patent Owner argues that Petitioner has improperly
deviated from the mapping presented in the Petition. PO Sur-reply 7–10. In
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particular, Patent Owner asserts that Petitioner’s Reply discusses “different
versions of a spring biased rocker latch,” and that “these designs were never
disclosed by [Petitioner] until its Reply.” Id. at 8–9.
Additionally, Patent Owner argues that Petitioner “cannot avoid
Shannon’s teaching of a toy that does not require reasoned manipulation.”
Id. at 10. Patent Owner elaborates that using a rocker latch in Shannon’s toy
would “require[] precise aligning of the latch with the catch to mate the two
components while holding all spring-loaded appendages down.” Id. at 11.
Asserting that a very young child could not manipulate such a toy, Patent
Owner argues the allegedly obvious toy “does not meet several stated goals
in Shannon.” Id.
Regarding Shannon’s principle of operation, Patent Owner faults
Petitioner for “arguing one principle of operation is not unchanged (thus,
presumably indicating obviousness), while ignoring other, changed
principles of operation.” Id. at 12. Patent Owner contends that Petitioner’s
“argument does not fully consider all of Shannon’s teachings and ignores the
desire to peel apart the appendages.” Id. at 13. Regarding the assertion that
the modified toy would preserve the transformation of the toy, Patent Owner
asserts that “simply maintaining one principle of operation while eradicating
others does not motivate the modification.” Id.
Patent Owner also argues that Petitioner “is incorrect that ‘could be’
statements may be considered in a proper obviousness analysis.” Id. Patent
Owner explains that “[t]he proper standard is still whether a [person of
ordinary skill in the art] would have been motivated to make the proposed
modifications.” Id. at 14.
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b. Analysis
Considering the record as a whole, Petitioner’s evidence and
arguments provide rational underpinning for its contentions that claims 1–20
would have been obvious in view of Aprile and Shannon. Weighing the
parties’ evidence and arguments, Petitioner persuades us that a person of
ordinary skill in the art would have had motivation to modify Shannon’s toy
to have a magnetically released latch like Aprile’s. Additionally, Petitioner
persuades us that there would have been a reasonable expectation of success
for such a modification.
Regarding the alleged motivation to combine, Petitioner persuades us
that a person of ordinary skill in the art would have recognized value in
modifying Shannon’s toy to have a magnetically released fastener like
Aprile’s. Dr. Kudrowitz explains why a person of ordinary skill in the art
would have recognized value in such a modification of Shannon’s toy.
Ex. 1002 ¶¶ 25–36; 246–256. For example, Dr. Kudrowitz explains that
it has long been known among toy designers that magnets can be
particularly appropriate for use in toys because magnetic
attraction can operate over distances and through materials and
cause toy components to move by unseen forces. This, too, can
add to the surprise element of a toy, and result in increased play
value. The Aprile reference alludes to this play benefit when it
discusses how a magnet can cause a toy container to open as if
“by magic.” (Ex. 1008, 5:24).
Id. ¶ 30. Noting that Shannon expressly teaches the possibility of using a
variety of fasteners, Dr. Kudrowitz testifies that a person of ordinary skill in
the art “would be aware of and turn to Aprile’s magnetically-released
fastener to allow the toy of Shannon to open up in response to an external
magnet. Such magnetic interaction and springing effect would readily
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provide an effect like ‘magic’ for children.” Id. ¶ 252. On the whole,
Petitioner’s evidence persuades us that a person of ordinary skill in the art
would have had reason, based on teachings in the references themselves, to
modify Shannon’s toy to use Aprile’s magnetically released fastener. In
particular, weighing the parties’ evidence and arguments, Petitioner
persuades us that a person of ordinary skill in the art would have understood
that using Aprile’s magnetically released fastener in Shannon’s toy would
have contributed to the user’s interest level.
Patent Owner does not rebut persuasively Petitioner’s evidence that a
person of ordinary skill in the art would not have recognized the
combination would have contributed to the toy’s value by making it
interesting. Patent Owner argues that
Toy designers commonly desire interesting effects and want to
be fun for play—that is the whole point of toy design. Therefore,
general allegations of motivations to combine because the toy
would be fun to play with does not provide a motivation to
combine for the specific combination [Petitioner] advances.
PO Resp. 39. We do not find this persuasive. Petitioner’s evidence
demonstrates that a person of ordinary skill in the art would have understood
that Aprile’s magnetically released latch, specifically, creates interest by
virtue of releasing as if “by magic.” Given that toy designers desire
interesting effects, the recognition of an interesting effect provided by
Aprile’s latch demonstrates a reason that a person of ordinary skill in the art
would have had for the specific addition of Aprile’s latch to Shannon’s toy.
We do not agree with Patent Owner’s arguments that Petitioner’s
obviousness assertions rest only on improper hindsight and assertions that
the references “could be” combined. Id. at 40–45. Petitioner persuasively
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shows why a person of ordinary skill in the art would have been motivated
to combine the references’ teachings. Specifically, given Shannon’s
teaching of using alternate fasteners and Aprile’s teaching of its fastener
providing the interesting effect of opening as if “by magic,” Petitioner
persuades us that a person of ordinary skill in the art would have been
motivated to provide increased interest in Shannon’s toy with the “magic” of
Aprile’s fastener. Petitioner persuades us that a person of ordinary skill in
the art would have had this motivation based on the teachings of the
references, not hindsight. Patent Owner’s criticism of other arguments and
evidence presented by Petitioner does not diminish Petitioner’s
demonstration of a motivation rooted in the references’ teachings.
Petitioner also persuades us that a person of ordinary skill in the art
would have had a reasonable expectation of success in modifying Shannon’s
toy to use Aprile’s magnetically released fastener. As Petitioner and Dr.
Kudrowitz note, Aprile explains that its magnetically released fastener “is
usable to advantage in all those applications that involve an extremely low
cost, limited overall dimension, and ease of installation.” Ex. 1008, 5:3–6;
Pet. 73–74; Ex. 1002 ¶ 244. Indeed, as Dr. Kudrowitz notes, Aprile
specifically teaches using its magnetically released fastener in dolls. E.g.,
Ex. 1008, 2:23–25; Ex. 1002 ¶ 247. On the whole, we find the evidence
supports Dr. Kudrowitz’s testimony that a person of ordinary skill in the art
applying Aprile’s disclosure of a magnetically released latch for a doll or
other toy to Shannon’s doll would have been within the skill in the art.
Ex. 1002 ¶¶ 247, 252.
We do not agree with Patent Owner’s assertion that the proposed
modification would require “substantial redesign” and would render
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Shannon’s toy unsuitable for its intended purpose. PO Resp. 32–38. Patent
Owner’s arguments rest heavily on Dr. Janét’s testimony, and he bases his
opinions heavily on speculative assertions without objective support. For
example, without citing supporting evidence, Dr. Janét opines that “[i]t
likely would not be sufficient to make the hook a magnetically-responsive
metal, as the magnetic strength would likely be insufficient to effectuate the
magnetic force when the Shannon toy is in the spherical, rolled-up
condition.” Ex. 2001 ¶ 96. From this starting point, Dr. Janét further
hypothesizes that “a toy designer would need to undergo numerous hours of
testing, including testing various permutations of magnets of different sizes,
strength, and cost in combination with a variety of spring options to develop
magnets that could be repeatedly and predictably locked and unlocked under
the proposed operating conditions.” Id. ¶ 97. Dr. Janét’s speculative
testimony does not compare favorably to Dr. Kudrowitz’s opinion, which is
supported by the contemporaneous, documentary evidence of Aprile, which
evinces that it was within the level of skill in the art to apply the
magnetically released fastener to a doll.
We also do not agree with Patent Owner’s assertion that Shannon
teaches away from using a magnetically released fastener like Aprile’s. PO
Resp. 23–29. A reference teaches away “when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333–
34 (Fed. Cir. 2012)); DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read
into a reference a teaching away from a process where no such language
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exists.”). A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not “criticize,
discredit, or otherwise discourage” investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Fulton further explains
[O]ur case law does not require that a particular combination
must be the preferred, or the most desirable, combination
described in the prior art in order to provide motivation for the
current invention. “[T]he question is whether there is something
in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination,” not whether there is
something in the prior art as a whole to suggest that the
combination is the most desirable combination available.
391 F.3d at 1200. Additionally, “obviousness must be determined in light of
all the facts, and there is no rule that a single reference that teaches away
will mandate a finding of nonobviousness. Likewise, a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
As the cornerstone of its teaching away argument, Patent Owner cites
Shannon’s statement that
The foldability and internal spring features of toys embracing the
concepts of the invention make the toy particularly attractive for
younger children unable to manipulate toys having openings
through which elements must be stuffed and drawn or toys which
have varying shapes and require reasoned manipulation as
typical of the prior art. The invention thus contributes to playing
pleasure and education for the very young.
Ex. 1007, 9:67–10:7; PO Resp. 23–24. Patent Owner suggests that this
would discourage a person of ordinary skill in the art from modifying
Shannon’s toy in a way that would require “reasoned manipulation” and
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hinder its use by “the very young.” PO Resp. 23–29. Similarly, Dr. Janét
opines that
Because Shannon says that its toy is attractive for younger
children unable to manipulate toys with openings through which
elements must be stuffed and drawn, then this would naturally
discourage using complicated latching mechanism that require
the careful drawing of a pivoting, spring-loaded hook through an
eye, as proposed by Petitioner.
Ex. 2001 ¶ 89.
Elaborating on its teaching away argument, Patent Owner asserts that
“[t]he modification requires a pivotable, hinged hook that includes a magnet
(or metal) that engages an eye. (Ex. 2002, 54:3-8). A very young child
would not have the reasoned manipulation or manual dexterity to pivot the
hook into engagement with the eye.” PO Resp. 24. In support of this, Patent
Owner cites Dr. Janét’s opinion that “[a] very young child would not be
expected to have the reasoned manipulation (which Shannon says is to be
avoided in its toy design) or manual dexterity to pivot the hook into
engagement with the eye.” Ex. 2001 ¶ 85. Discussing the process of folding
Shannon’s toy and noting that “[b]ecause the child is young, their hand is
small,” Dr. Janét opines that “there is not a lot of room for the child to work
in guiding the eye over the hook.” Id. Patent Owner also argues that
Modifying the Shannon toy to be one where the child peels apart
the appendages to one where the child rolls the Shannon toy to
the Tomiyama magnet presents a more complex toy use. Id.; Ex.
1007, 6:34-42, 7:26-32, 8:17-20. Shannon describes its toy for
the “very young.” (Ex. 1007, 10:6-7; Ex. 2002, 15:20-21 (Dr.
Kudrowitz confirming Shannon is “intended for children”)).
Very young children do not have the reasoned manipulation to
place the second toy component of the external magnet at a first
location, move to a second location, and accurately roll the
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Shannon toy towards the external magnet at the first location.
(Ex. 2001, ¶ 80).
PO Resp. 27.7 In connection with this argument, Patent Owner cites Dr.
Janét’s testimony that
The child would also need advanced dexterity to roll the Shannon
toy towards the external magnet, which is more complex than
simply peeling apart the appendages. As I discuss below,
Shannon discusses the desire for a toy that avoids requiring the
child to have “reasoned manipulation.” (Ex. 1007, 10:1-6). Very
young children do not generally have the reasoned manipulation
to place the external magnet at a first location, move to a second
location, and accurately roll the Shannon toy towards the external
magnet at the first location.
Ex. 2001 ¶ 80.
Dr. Kudrowitz disagrees with Dr. Janét’s opinion that the proposed
modification would be expected to result in a toy requiring “reasoned
manipulation” that would change the appropriate age group for the toy.
Ex. 1020 ¶¶ 51–60. For example, Dr. Kudrowitz disagrees with Dr. Janét’s
opinion that a young child would be expected to lack the reasoned
manipulation to use Shannon’s toy with Aprile’s latch. Id. ¶ 60. Dr.
Kudrowitz also disagrees with Dr. Janét regarding the expectations of a child
rolling Shannon’s toy toward a magnet. Id. ¶ 59. Dr. Kudrowitz explains
that “[i]n my opinion, even a three- or four-year-old child is able to play
with two or more magnets by rolling one toward the other.” Id.

7 Here and elsewhere, we reference Patent Owner’s arguments discussing
Tomiyama because Patent Owner incorporates those arguments by reference
to address Petitioner’s assertions of obviousness over Aprile and Shannon.
PO Resp. 63.
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We find that the record evidence does not support Patent Owner’s
contention that the proposed modification would transform Aprile’s toy from
one that does not require “reasoned manipulation” to one that does require
“reasoned manipulation” and changes the appropriate age range for the toy.
Patent Owner’s argument that the modification would result in a new
requirement for reasoned manipulation rests heavily on Dr. Janét’s
testimony. See PO Resp. 23–29. Dr. Janét does not cite supporting evidence
to show persuasively how “reasoned manipulation” would be understood by
a person of ordinary skill in the art, or why a person of ordinary skill in the
art would have thought the proposed modification would have required
“reasoned manipulation.” See Ex. 2001 ¶¶ 80–89. Dr. Janét’s reasoning
rests on vague assertions. For example, Dr. Janét testifies that “[b]ecause
the child is young, their hand is small.” Id. ¶ 85. Similarly, referring to
Shannon’s Figure 8, Dr. Janét states that “I note that in Fig. 8, the legs are
folded up on either side of the belt buckle” and concludes from this that
“there is not a lot of room for the child to work in guiding the eye over the
hook.” Id. We find vague, unsubstantiated assertions like this of little
persuasive value.
On the whole, we find Dr. Kudrowitz’s testimony about the “reasoned
manipulation” argument more credible than Dr. Janét’s. As an example, Dr.
Janét and Dr. Kudrowitz disagree regarding whether a “very young child”
would have sufficient “reasoned manipulation” to roll Shannon’s toy toward
a magnet. See Ex. 2001 ¶ 80; Ex. 1020 ¶ 59. Dr. Janét testifies that the age
range for Shannon’s toy would extend to 4-year-old children (Ex. 1021,
201:11–17), yet believes that such a child would lack the “reasoned
manipulation” to roll Shannon’s toy toward a magnet (Ex. 2001 ¶ 80). Dr.
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Kudrowitz testifies to the contrary. Ex. 1020 ¶ 59. Although neither
declarant cites supporting evidence for his opinion, we find Dr. Janét’s
testimony that a four-year-old lacks the ability to roll Shannon’s toy toward
a magnet dubious at best.
Thus, as noted above, we do not find that the record supports Patent
Owner’s assertion that the proposed modification of Shannon would create a
new need for “reasoned manipulation” from the user. Thus, to the extent
Shannon may teach away from a toy requiring “reasoned manipulation,” we
find that Shannon does not teach away from modifying its toy to have
Aprile’s latch.
Moreover, the record does not support Patent Owner’s assertion that
Shannon teaches away from a toy that requires reasoned manipulation. In
particular, we find that Shannon does not criticize, discredit, or otherwise
discourage toys that require “reasoned manipulation,” but instead touts an
advantage of its toy, characterizing the toy as “particularly attractive for
younger children, . . . contribut[ing] to playing pleasure and education for
the very young.” Ex. 1007, 9:67–10:7. No evidence of record persuades us
that Shannon’s positive discussion of a toy “particularly attractive” for one
age group discourages pursuit of toys that might be more suitable for
different age groups. Regarding this, Dr. Janét testifies that Shannon’s
discussion of advantages “would naturally discourage” modifications related
to advantages. Ex. 2001 ¶ 89. But this testimony is conclusory and fails to
recognize that “a given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate motivation to
combine.” Medichem, 437 F.3d at 1165.
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Here, to the extent the proposed modification might somewhat
complicate the toy’s use for certain children, Petitioner persuades us that a
person of ordinary skill in the art would have recognized the value of the
proposed modification for making the toy more interesting by allowing it to
spring open as if “by magic.” Thus, as a whole, the record evidence
persuades us that a person of ordinary skill in the art would have been
motivated to modify Shannon’s toy with Aprile’s latch for the purpose of
enhancing at least some children’s interest, notwithstanding Shannon’s
disclosure of advantages for certain children.
Regarding the dispute over whether a person of ordinary skill in the
art would have viewed the proposed modification as hazardous, we find
Petitioner’s position more persuasive. Patent Owner argues that adding
Aprile’s latch to Shannon’s toy would present various hazards, including the
possibility of a user swallowing the external magnet and the possibility of
the fastener harming the user. PO Resp. 26–28. Petitioner argues that a
person of ordinary skill in the art would have been able to address the
potential hazards identified by Patent Owner. Pet. Reply 17–18. Dr. Janét
and Dr. Kudrowitz similarly disagree on this matter. Dr. Janét opines that
the magnet and fastener of Aprile present potential hazards viewed as
problematic by a person of ordinary skill in the art. Ex. 2001 ¶¶ 90–91. Dr.
Kudrowitz testifies that a person of ordinary skill in the art would have
known how to address these potential hazards. Ex. 1020 ¶¶ 61–67. We find
the record evidence supports the position of Petitioner and Dr. Kudrowitz,
not that of Patent Owner and Dr. Janét. For example, Aprile itself discloses
using its fastener, with its external magnet in a toy, evincing that it was
known in the art to implement the fastener and its external magnet in a
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manner viewed as sufficiently safe by those of skill in the art. E.g. Ex. 1008,
5:25–6:26.
Additionally, Petitioner persuades us that the proposed modification
of Shannon would not change its principle of operation. Patent Owner
argues that “Shannon’s toy design desires for the user to manipulate the toy
by ‘peeling’ away the appendages.” PO Resp. 29. Consistent with this, Dr.
Janét testifies that “Shannon is a ‘manipulation’ type of toy, where the
enjoyment for the child is the peeling apart the various appendages to obtain
the surprise transformation. Shannon even says ‘[h]inges interconnecting
the body and appendages facilitate movement for manipulation between
configurations.’” Ex. 2001 ¶ 79 (quoting Ex. 1007, 2:34–36). Petitioner
counters that “Shannon is a transformation toy. The entertainment of the toy
stems from transformation.” Pet. Reply 19. Consistent with this, Dr.
Kudrowitz testifies that Shannon’s “principle of operation is transformation
of the toy, it is not about magnetic attraction or peeling the appendages
apart.” Ex. 1020 ¶ 69. In support of this, Dr. Kudrowitz cites a number of
portions of Shannon mentioning or alluding to “transformation.” Id.
The evidence supports the position of Petitioner and Dr. Kudrowitz,
not that of Patent Owner and Dr. Janét. In particular, comparing the portions
of Shannon cited by the declarants, we agree with Dr. Kudrowitz that
Shannon’s disclosure emphasizes transformation of the toy, not
manipulation. For example, contrary to Dr. Janét’s opinion that the toy is a
“‘manipulation’ type of toy” (Ex. 2001 ¶ 79), Shannon’s title
“Transformable Toy” conveys that the focus of the toy is transformation, not
manipulation. Ex. 1007, code [54]. Similarly, Shannon’s Abstract
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summarizes the toy as “transformable” without any mention of
“manipulation.” Id. at code [57].
Additionally, we find unavailing Patent Owner’s argument that “[t]he
difference between using a magnet to trigger a latch to release versus using a
magnet to hold a latch closed was described by the Board as a ‘material
difference.’” PO Resp. 30. Patent Owner contends that
It would be inconsistent and very improper for the Board to find
the difference between using a magnet to release a latch versus
hold a latch closed as material for one analysis (the § 325(d)
analysis) while finding such a difference as not material or
changing the principle of operation for the unpatentability
analysis applying Tomiyama’s latching mechanism (or the new
hood and eye latching mechanism) to Shannon.
Id. at 30–31. As noted by Patent Owner, our discussion of a “material
difference” in a prior case related to applying 35 U.S.C. § 325(d) and its
provision that “the Director may take into account whether, and reject the
petition or request because, the same or substantially the same prior art or
arguments previously were presented to the Office.” IPR2018-01673, Paper
7, 21–24, 39 (“1673 Inst. Dec.” or “the 1673 Institution Decision”). In
particular, because we noted that in the examination process, “Patent Owner
emphasized Hopkins’ use of a magnetically retained latch, as opposed to a
magnetically released latch” (1673 Inst. Dec. 24), we identified Tomiyama’s
disclosure of magnetically released latch as a “material difference” (id. at
23). Thus, the difference was identified as material because it related to a
feature Patent Owner alleged as missing from the prior art previously
presented to the Office. Contrary to Patent Owner’s suggestion, our prior
discussion of a “material difference” says nothing of Shannon’s principle of
operation.
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Additionally, Petitioner’s showing of obviousness is not undermined
by Patent Owner’s arguments that (1) Aprile does not teach a “transformable
toy” (PO Resp. 56–57); (2) Aprile’s container is not “rollable” (id. at 57–
58); (3) the Aprile container modified to include rounded corners is also not
“rollable” (id. at 58–63); and (4) “[i]t [w]ould [n]ot [b]e [o]bvious to
[m]odify Aprile’s [c]ontainer to [h]ave [m]ultiple [c]laimed [a]uxiliary
[c]omponents or a [s]econd [f]igure [s]hape [t]hat [i]s a [f]ictitious
[c]haracter” (id. at 63–65). Petitioner relies on Shannon as teaching these
features. Petitioner asserts that Shannon teaches a “transformable toy.”
Pet. 28, 76. Petitioner also argues that Shannon teaches “wherein in the
closed position, the first toy component is rollable.” Id. at 33–34, 76.
Additionally, Petitioner asserts that “Shannon discloses ‘a plurality of
auxiliary components coupled with the body and rotatable towards the body
to a closed position and rotatable away from the body to an open position.’”
Id. at 53, 81. Petitioner also asserts that “Shannon discloses ‘wherein in the
open position, the toy body and the plurality of auxiliary components of the
first toy component present a second figure shape that is a fictitious
character including a head, a body, and one or more appendages.’” Id. at
53, 82. We are persuaded by Petitioner’s undisputed assertions that Shannon
teaches all of these features. Thus, after Petitioner’s proposed modification,
Shannon’s toy would have a magnetically released latch in a “transformable
toy” that is “rollable” and has the “plurality of auxiliary components,” as
well as a “second figure shape that is a fictitious character.” Petitioner
persuades us that it would have been obvious to modify Shannon’s toy to
have Aprile’s magnetically released fastener and the resulting toy would
have met all the limitations of the challenged claims, rendering it moot
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whether features other than the magnetically released fastener are taught by
Aprile or would have been obvious to add to Aprile.
Additionally, we do not agree with Patent Owner’s argument that
Petitioner did not explain sufficiently the combinations of the cited
references that allegedly would have been obvious. PO Resp. 56. Patent
Owner not only “could possibly understand” Petitioner’s contentions (id.),
Patent Owner did in fact understand the modifications of the prior art
references that Petitioner alleged would have been obvious. Patent Owner
understood that Petitioner argued it would have been obvious in view of the
references to modify Shannon’s toy with a magnetically released latch like
Aprile’s. See Pet. 75 (“This is an example of using a known fastener (the
magnetic latch of Aprile) exactly as intended (to cause an item to spring
open when a magnet is brought near) to achieve the predicted result (the ball
of Shannon will open magnetically).”); Dec. 32 (“Petitioner has
demonstrated at least a reasonable likelihood of establishing that it would
have been obvious in view of Aprile to modify Shannon’s ball toy to use a
magnetically released latch, and that doing so would have produced the
invention recited in claim 1.”); PO Resp. 63 (“[Patent Owner] discussed the
non-obviousness of modifying Shannon to include an externally-releasable,
magnetic locking component in Section V(B)(1) for Ground 1, and such
arguments and evidence are incorporated for this Ground 3.”). Patent
Owner also understood Petitioner’s alternate argument that it allegedly
would have been obvious in view of the references to modify Aprile’s
container by rounding its bottom. Pet. 77 (“simply rounding the bottom of
[Aprile’s] toy box to form a round shape would have been obvious in light
of Shannon.”); PO Resp. 60 (“Changing [Aprile’s] box-shaped container
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from a box to being rollable by rounding the bottom (Pet 77) would require
substantial redesign.”).
c. Summary Regarding Petitioner’s Allegation of
Obviousness over Aprile and Shannon
Having reviewed the full record, we determine that Petitioner has
demonstrated obviousness of claims 1–20 over Aprile and Shannon. For the
reasons discussed above, Petitioner persuades us that it would have been
obvious to modify Shannon’s toy to use Aprile’s magnetically released
fastener. Additionally, Petitioner persuades us that the resulting apparatus
would meet all of the limitations of claims 1–20.
E. Remaining Grounds
Petitioner argues that claims 1–3 and 5–8 are anticipated by
Tomiyama. Pet. 73. Petitioner also asserts that claims 1–3, 5, 6, and 8 are
anticipated by Wilhelm. Id. at 57–72. Because we determine above that
Petitioner has demonstrated claims 1–20 would have been obvious over
Aprile and Shannon, we do not reach Petitioner’s assertion of anticipation by
Tomiyama or its assertion of anticipation by Wilhelm. See SAS Inst. Inc. v.
Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a
final written decision addressing all of the claims it has challenged”); Boston
Sci. Scimed, Inc. v. Cook Grp. Inc., Nos. 2019-1594, -1604, -1605, 2020 WL
2071962, at *4 (Fed. Cir. Apr. 30, 2020) (non-precedential) (recognizing
that the “Board need not address issues that are not necessary to the
resolution of the proceeding” and, thus, agreeing that the Board has
“discretion to decline to decide additional instituted grounds once the
petitioner has prevailed on all its challenged claims”).
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F. 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. 65
(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.
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 requires our resolution. Tr. 96:19–97:7.
We, therefore, do not need to decide the issue.
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IV. CONCLUSION8
In summary:

8 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).
9 As explained in Section III.C.2, we do not reach the challenge to claims 1–
20 based on Tomiyama and Shannon because the same claims are
determined to be unpatentable over Aprile and Shannon.
10 As explained in Section III.E, we do not reach the challenge to claims 1–3
and 5–8 based on Tomiyama because the same claims are determined to be
unpatentable over Aprile and Shannon.
11 As explained in Section III.E, we do not reach the challenge to claims 1–3,
5, 6, and 8 based on Wilhelm because the same claims are determined to be
unpatentable over Aprile and Shannon.
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–20 § 103(a) Tomiyama,
Shannon9

1–3, 5–8 § 102(b) Tomiyama10
1–3, 5, 6,
8
§ 102(b) Wilhelm11
1–20 § 103(a) Aprile, Shannon 1–20
Overall
Outcome
1–20
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–20 of U.S. Patent No. 9,868,073 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.

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PETITIONER:
Siho “Scott” Yoo
Hilary L Preston
syoo@velaw.com
hpreston@velaw.com

PATENT OWNER:

Jennifer Bailey
Callie Pendergrass
Megan J. Redmond
jennifer.bailey@eriseip.com
callie.pendergrass@eriseip.com
Megan.Redmond@EriseIP.com