FigureFun LLC

Patent Trials and Appeals Board

Sep 16, 2020

IPR2018-00754 (P.T.A.B. Sep. 16, 2020)

Trials@uspto.gov Paper No. 31
571-272-7822 Date: September 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

LEGO SYSTEMS, INC. and
WARNER BROS. HOME ENTERTAINMENT INC.,
Petitioner,
v.
FIGUREFUN LLC,
Patent Owner.

IPR2018-00754
Patent 7,001,276 B2

Before HYUN J. JUNG, GEORGE R. HOSKINS, and
KEVIN W. CHERRY, Administrative Patent Judges.

JUNG, Administrative Patent Judge.
DECISION
Denying Patent Owner’s Request on Rehearing of Final Written Decision
37 C.F.R. § 42.71(d)

IPR2018-00754
Patent 7,001,276 B2
2
I. INTRODUCTION
A. Background
LEGO Systems, Inc. and Warner Bros. Home Entertainment Inc.
(collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting inter
partes review of claim 9 of U.S. Patent No. 7,001,276 B2 (Ex. 1001, “the
’276 patent”). Petitioner challenged claim 9 under 35 U.S.C. § 103(a) as
unpatentable over various references and combinations of references,
including White1 and Lee.2 Pet. 14.
After we issued a Decision to Institute an inter partes review of the
challenged claim (Paper 8, 24 (“Dec. to Inst.”)), FigureFun LLC (“Patent
Owner”) filed a Patent Owner Response (Paper 12, “PO Resp.”), to which
Petitioner replied (Paper 17, “Pet. Reply”). Patent Owner also filed a Sur-
Reply (Paper 18, “PO Sur-reply”). Oral argument was conducted on June
24, 2019. See Paper 26.
We entered our Final Written Decision on September 26, 2019, in
which we determined that Petitioner had shown by a preponderance of the
evidence that claim 9 of the ’276 patent was unpatentable over White and
Lee. Paper 29, 44 (“Final Dec.”). Patent Owner timely filed a Request for
Rehearing in which it seeks modification of the Final Written Decision to
determine claim 9 is not unpatentable in view of White and Lee and “does
not request rehearing with respect to any other grounds.” Paper 30, 1
(“Request” or “Req. Reh’g”).
For the reasons that follow, Patent Owner’s Request is denied with
respect to modifying our Final Written Decision.

1 U.S. Patent No. 6,650,870 B2, issued November 18, 2003. Ex. 1006.
2 U.S. Patent No. 6,460,851 B1, issued October 8, 2002. Ex. 1004.
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Patent 7,001,276 B2
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B. Standard for Reconsideration
The party filing a request for rehearing of a final written decision has
the burden of showing a decision should be modified, and the request for
rehearing must specifically identify all matters the party believes the Board
misapprehended or overlooked and the place where each matter was
previously addressed in its papers. 37 C.F.R. § 42.71(d); see also Req.
Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden
of establishing that we misapprehended or overlooked the matters that it
requests that we review.

II. ANALYSIS
A. Whether the combination of White and Lee discloses “an upward-facing
recess such that the token with built-in IC chip is fitted into the recess”
Claim 9 recites three limitations that concern a token:
an information reader, which reads game data from the token
with built-in IC chip . . . wherein the information reader
comprises an upward-facing recess such that the token with built-
in IC chip is fitted into the recess . . . and wherein an action figure
is attached to the token with built-in IC chip in a detachable
manner.
Ex. 1001, 28:10–24. Patent Owner argues our Final Written Decision
“misapprehended the scope of the claims and overlooked the teachings of
the prior art when it decided ‘White as modified by Lee teaches or suggests
an “information reader compris[ing] an upward-facing recess such that the
token with built-in IC chip is fitted into the recess.”’” Req. Reh’g 2 (citing
Final Dec. 37); see also id. n.1 (arguing that the matter was raised at PO
Resp. 49).
More specifically, Patent Owner cites to Figures 3A and 3B of the
’276 patent to show that a token fits into a recess and asserts that “the claims
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Patent 7,001,276 B2
4
require (and the embodiment of Figure 3 describes) a token, not a figure, is
fitted into a recess.” Req. Reh’g 2–3. Patent Owner argues “White merely
teaches that the base of a figure (not a tag associated with the figure) is fitted
into a recess” and nowhere teaches a tag fitting into a recess. Id. at 5–6.
Patent Owner has not shown that we misapprehended the scope of
claim 9, or overlooked the teachings of White. Petitioner argued that White
teaches the wherein clause that requires a recess into which a token is fitted.
Pet. 69 (“recessed portion 3 trapezoidal in shape to receive a corresponding
trapezoidal base 4a of a piece”). In our Final Written Decision, we found
that the combination of White and Lee teaches or suggests “base 4a with
detachable tag 5 received in recessed portion 3.” Final Dec. 37. Because
White’s tag 5 is part of the base 4a, and because base 4a fits into White’s
recess 3, we determined that tag 5 modified in the manner asserted by
Petitioner meets the language of claim 9 regarding a recess into which a
token is fitted. See id.
To the extent that Patent Owner is arguing this combination of White
and Lee does not meet the claim language because base portion 32 of
figure 33 in Figures 3A and 3B of the ’276 patent does not fit into the recess,
Patent Owner does not identify where this argument was previously made.
See id. at 2–6.
Even if the argument were made, we would still determine that
Petitioner shows unpatentability by a preponderance of the evidence. The
claim language does not exclude a base fitting into the recess along with a
token. Ex. 1001, 28:10–24. We would find that White’s tag 5 by being
shown as part of base 4a does fit into recess 3. Ex. 1006, 3:59–64, Fig. 1. In
other words, White discloses both a base and a tag (which becomes a token
when combined with Lee) fit into its recess 3, which is within the scope of
IPR2018-00754
Patent 7,001,276 B2
5
the claim language. Patent Owner further argues that Lee fails to remedy
this perceived shortcoming in White (Req. Reh’g 6–7 (citing PO Resp. 50)),
but we do not need to address this argument, because we discern no
shortcoming in White.
B. Construction of the term “token”
Patent Owner argues that our Final Written Decision “does not adopt
any explicit construction for ‘token,’ [and] does not fully resolve the parties’
dispute concerning the scope of the claimed ‘token.’” Req. Reh’g 7.
Specifically, Patent Owner argues, “[a]s discussed in Patent Owner’s papers,
the ’276 patent describes a token as an ‘item required to begin play of a
game.’” Id. at 8–9 (citing PO Resp. 21–22; PO Sur-reply 3–4); see also id.
at 8 n.2 (citing PO Resp. 21–24; PO Sur-reply 3–6), n.3 (citing PO
Resp. 12–13). According to Patent Owner, the Specification of the ’276
patent “define[s] the disclosed and claimed ‘token’ as an ‘item required to
begin play.’” Id. at 11.
The full record did not indicate to us that the asserted definition of
“token” would have resolved the parties’ dispute. See Final Dec. 11–12.
Petitioner argued that the term “token” should be construed as “a game
piece.” Pet. 13. Patent Owner responded that the “term ‘token’ refers to ‘a
disk-like shaped item required to begin play of a game’” and the
Specification “defines a token as ‘a substance that enables the player to play
the game with the gaming machine by inserting the substance into the
gaming machine according to this invention.’” PO Resp. 21–22 (citing
Ex. 1001, 2:18–21, 6:62–65, 7:18–21). Patent Owner also argued that
“token” requires a disk-like shape. Id. at 22–23 (citing Ex. 1001, 6:66–7:1,
7:47–48, 8:33–36, 13:47–48; Ex. 2001 ¶¶ 22–33).
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Patent 7,001,276 B2
6
Petitioner replied that Patent Owner’s “construction is incorrect as to
both the shape of the item and the functional limitation,” and that the shape
limitation is “preferable,” but not required. Pet. Reply 7. Petitioner further
argued “the statement of ‘required to begin play of a game’ provides no
structure whatsoever,” and argues “that an express interpretation of ‘token’
or any other term is not required.” Id. at 11–12. Patent Owner replied that it
“is construing the term according to its definition and usage in the patent”
and the “correct construction for ‘token’ must account for the specification’s
explanation that a token is used to begin game play.” PO Sur-reply 3–4
(citing Ex. 1001, 6:62–66).
In our Final Written Decision, we explained that the Specification
does not support Patent Owner’s proposed interpretation of the term “token”
as being disk-shaped, and determined that “we need only determine that the
term ‘token’ does not include an ‘action figure.’” Final Dec. 11–12.
The full record indicated to us that, even if we adopted Patent
Owner’s proposed interpretation of “token” as an “item required to begin
play of a game,” Petitioner had still shown by a preponderance of the
evidence that claim 9 is unpatentable over White and Lee. As described in
our Final Written Decision, we found that “the teachings of White related to
tag 5 in base portion 4a of character 4 used in the toy of Figure 1 support
Petitioner’s argument that character 4 teaches a ‘game piece with built-in IC
chip.’” Final Dec. 32. We understood that “Petitioner is proposing to
modify White so that tag 5 is detachable and results in a ‘token with built-in
IC chip,’” so that “the modified White character 4 would have base 4a with
detachable tag 5 received in recessed portion 3.” Id. at 37 (citing Pet. 65–66;
Dec. to Inst. 23; Pet. Reply 24); see also id. at 41–42 (determining that
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Patent 7,001,276 B2
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Petitioner shows by a preponderance of the evidence that one of ordinary
skill in the art would have combined White and Lee).
We found that White teaches, inter alia, that “[t]ag 5 . . . ‘when
activated, transmits information contained in its memory,’” “[i]n use,
character 4 is placed in recess portion 3 so that tag 5 is adjacent reader 6,”
and tag 5 contains information about character 4. Final Dec. 18 (citing
Ex. 1006, 3:59–64, 4:1, 4:3–9, 4:13–16, 4:27–32, Figs. 1, 2), 31 (citing
Ex. 1006, 1:7–9, 3:39–40, 4:1–5), 32 (citing Ex. 1006, 4:6–9, 4:15–19), 36
(citing Ex. 1006, 4:15–19, 4:29–32), 37 (citing Ex. 1006, 3:59–64), 38–39
(citing Ex. 1006, 4:15–19, 6:20–41).
We also found that one of ordinary skill in the art would have
understood that White’s teachings extended to games and were not limited to
toys as argued by Patent Owner. See id. at 31–32, 33 (citing Ex. 1002 ¶ 138;
Ex. 1006, 3:35–36, 6:59–61). We further found that White teaches or
suggests a game in which tag 5 contains information about character 4
usable in the game. See id. at 33–34 (citing Ex. 1006, 4:15–19). White,
thus, teaches or suggests that, by placing base 4a of character 4 in recess
portion 3, tag 5 is placed adjacent reader 6 and activates tag 5 to transmit
information about character 4 to play a game. Ex. 1006, 3:59–64, 4:1,
4:3–5, 4:13–16.
Petitioner’s proposed combination of White and Lee would, therefore,
have an “item required to begin play of a game.” Based on the full record,
even if we interpreted “token” to be an “item required to begin play of a
game,” as proposed by Patent Owner, our findings from White indicate that
White’s tag 5 teaches or suggests an “item required to begin play of a
game.” See PO Resp. 21–23; PO Sur-reply 3–4. Petitioner’s proposed
combination of White and Lee would also teach or suggest “a substance that
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Patent 7,001,276 B2
8
enables the player to play the game with the gaming machine by inserting
the substance into the gaming machine,” Patent Owner’s asserted definition
of “token” from the Specification. See PO Resp. 21–23; PO Sur-reply 3–4.
C. Whether the combination of White and Lee discloses
a “token with a built-in IC chip”
Patent Owner argues that, as previously addressed in its briefs, neither
White nor Lee discloses a “token” under any reasonable construction of the
term. Req. Reh’g 11–12 (citing PO Resp. 18–20, 46–48; PO Sur-reply 8–9).
Patent Owner first argues that “the Decision provides no explanation for
why the Board contends how the claimed ‘token with built-in IC chip’ is
satisfied by making White’s tag detachable from its corresponding figure.”
Id. at 13 (citing Final Dec. 35, 37, 40).
Petitioner argued that the term “token” should be construed as “a
game piece” (Pet. 13) and that “the statement of ‘required to begin play of a
game’ provides no structure whatsoever” (Pet. Reply 11). We found that
“the teachings of White related to tag 5 in base portion 4a of character 4
used in the toy of Figure 1 support Petitioner’s argument that character 4
teaches a ‘game piece with built-in IC chip’” (Final Dec. 31–32 (citing
Ex. 1006, 1:5–9, 3:35–36, 3:39–40, 4:1–5, 6:59–61)) and understood that
“Petitioner is proposing to modify White so that tag 5 is detachable and
results in a ‘token with built-in IC chip’” so that “the modified White
character 4 would have base 4a with detachable tag 5 received in recessed
portion 3” (id. at 37 (citing Pet. 65–66; Dec. to Inst. 23; Pet. Reply 24;
Ex. 1006, 3:59–64)).
We also determined “that Petitioner’s relied-upon portions of Lee
would have suggested to one of ordinary skill in the art that tag 5 of White
could be attached to character 4 in the same manner that transducer 64 of
IPR2018-00754
Patent 7,001,276 B2
9
Lee is attached to its wrestling figure.” Final Dec. 35; see also id. at 34
(citing Ex. 1004, 6:31–36, 6:44–51, Fig. 2). We concluded that “the
modified White character 4 would have base 4a with detachable tag 5
received in recessed portion 3,” thus, teaching or suggesting the recited
“information reader [that] compris[es] an upward-facing recess such that the
token with built-in IC chip is fitted into the recess.” Id. at 37.
We also found that “Lee . . . supports Petitioner’s declarant testimony
that one of ordinary skill in the art would have modified White so that its tag
5 is detachable in the same manner as Lee so that ‘various action figures can
be used with the token.’” Final Dec. 42 (citing Ex. 1002 ¶ 150). Petitioner,
thus, showed by a preponderance of the evidence that Lee teaches or
suggests a method of attaching a component to a figure that one of ordinary
skill in the art would have applied to White’s tag 5 for the reason asserted by
Petitioner.
Patent Owner also argues that neither White nor Lee disclose the
“token with built-in IC chip,” because neither Lee’s transducer, nor White’s
tag are “required to begin game play.” Req. Reh’g 13–14 (citing PO
Resp. 30–31, 47; PO Sur-reply 8). As discussed above and in our Final
Written Decision, Petitioner shows by a preponderance of the evidence that
claim 9 is unpatentable over White and Lee, even under Patent Owner’s
proposed interpretation of “token.” Final Dec. 31–43.

III. CONCLUSION
For the above reasons, we deny Patent Owner’s request to modify our
Final Written Decision with respect to the challenge of claim 9 based on
White and Lee.

IPR2018-00754
Patent 7,001,276 B2
10
Outcome of Decision on Rehearing:
Claims
35
U.S.C.
§
Reference(s)/Basis Denied Granted
9 103(a) White, Lee 9
Overall
Outcome
9

Final Outcome of Final Written Decision after Rehearing:
Claims
35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
9 103(a) Levy 9
9 103(a) Levy, Lee 9
9 103(a) Mawle 9
9 103(a) Mawle, Lee 9
9 103(a) White, Lee 9
Overall
Outcome
9

IV. ORDER
Accordingly, it is ORDERED that Patent Owner’s Request for
Rehearing is denied.

IPR2018-00754
Patent 7,001,276 B2
11
For PETITIONER LEGO Systems, Inc.:
David Fehrman
Rose Lee
MORRISON & FOERSTER LLP
dfehrman@mofo.com
roselee@mofo.com
27219-276-IPR@mofo.com

For PETITIONER Warner Bros. Home Entertainment Inc.:

Wayne Smith
Lavanya Rau
WARNER BROS. ENTERTAINMENT INC.
wayne.smith@warnerbros.com
lavanya.rau@warnerbros.com

For PATENT OWNER:

Jonathan Szarzynski
SZARZYNSKI PLLC
jon@patentdallas.com

Matthew Juren
Barry Bumgardner
NELSON BUMGARDNER ALBRITTON P.C.
matthew@nbafirm.com
barry@nbafirm.com