Spin Master Ltd.

Patent Trials and Appeals Board

Sep 23, 2020

IPR2019-00901 (P.T.A.B. Sep. 23, 2020)

Trials@uspto.gov Paper 50
Tel: 571-272-7822 Entered: 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.

IPR2019-00901
Patent 9,975,058 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”) filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claims 1–5 of U.S.
Patent No. 9,975,058 B2 (Ex. 1001, “the ’058 patent”). Concurrently with
the Petition, Petitioner also filed a “Motion for Joinder to Related Inter
Partes Review of U.S. Patent No. 9,975,058 ([Mattel, Inc. v. Spin Master
Ltd.,] IPR2018-01674) 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 to IPR2018-01674. 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 ’058 patent and
at the same time denied the Motion for Joinder. Paper 17 (“Dec. to Inst.”).
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 1–5 of the ’058 patent are unpatentable.
II. BACKGROUND
A. Related Matters
According to the parties, a complaint alleging infringement of the
’058 patent was filed on April 24, 2018 in Spin Master Ltd. v. Mattel, Inc.,
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No. 2:18-cv-3435 (C.D. Cal.); and 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 ’058 patent was filed in IPR2018-01674. Pet. 2; Paper 5, 2. On
March 19, 2019, inter partes review of the ’058 patent was instituted, and on
April 29, 2019, a joint motion to terminate that proceeding was granted. The
present Petition was filed on March 29, 2019. Paper 4.
B. The Asserted Grounds of Unpatentability
Petitioner asserts that claims 1–5 would have been unpatentable on the
following grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–5 § 102(b)1 Wilhelm2
1–5 § 103(a) Tomiyama3
1–5 § 103(a) Tomiyama and Shannon4
1–5 § 103(a) Aprile5 and Thompson6
As further support, Petitioner relies on two Declarations of Barry

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 ’058 patent issued is a continuation of an
application filed on December 22, 2006, and the ’058 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 U.S. Patent No. 6,592,427 B1, iss. July 15, 2003 (Ex. 1011).
3 JP 38-9155, Pub. May 15, 1963 (Ex. 1005).
4 U.S. Patent No. 5,310,378, iss. May 10, 1994 (Ex. 1007).
5 WO 2006/051417 A2, pub. May 18, 2006 (Ex. 1008).
6 U.S. Patent No. 3,687,452, iss. Aug. 29, 1972 (Ex. 1009).
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Kudrowitz, Ph.D. Exs. 1002, 1019. Patent Owner relies on a Declaration of
Jason A. Janét, Ph.D. Ex. 2001.
C. The ’058 Patent
The ’058 patent discloses a toy that can transform from a rollable
shape to another shape. Ex. 1001, code (57). The ’058 patent discloses that
toys were known to use magnetic force to produce game effects. Id. at 1:27–
40. As one example, the ’058 patent notes a proposed toy doll with a
magnet used to automatically open a door of a toy house frame via magnetic
force. Id. at 1:30–40. The ’058 patent indicates a desire to improve on
known toys “to dramatically increase the commercial value of the toy and
impart fresh wonderment and intellectual excitement to its players by means
of making the magnetic-force-expansion-style toy rollable.” Id. at 2:3–7.
The ’058 patent shows one embodiment of its toy in Figure 4, which
is reproduced below.

Figure 4 shows toy 1 in “a rollable, spherical shape.” Id. at 5:20–21. From
this shape, toy 1 can change “to a fictitious character shape” shown in
Figure 7, which is reproduced below.
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Figure 7 shows toy 1 after it has changed from the state shown in Figure 4 to
a fictitious character state. Id. at 4:52–53, 4:62–63, 5:19–24. The
mechanism involved in the transformation is better shown in Figure 1, which
is reproduced below.
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Figure 1 shows an exploded view of toy 1. Id. at 4:46–47.
Toy 1 has an exterior structure, “which forms an overall spherical
shape.” Id. at 5:27–30. The exterior structure includes lower component 2,
upper component 3, and lateral components 4–7. Id. at 5:30–35.
Inside the exterior structure, toy 1 has an interior structure. Id. at
5:27–30. The interior structure includes front component 8, back
component 9, locking component 10, magnet 11, spring 12, and support
components 13, 14. Id. at 5:35–47.
Front component 8 and back component 9 “are assigned to the upper
section of lower component 2.” Id. at 7:45–47. Screw 40 holds together
front component 8 and back component 9. Id. at 7:45–50.
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Locking component 10 is “assigned to the interval between front
component 8 and back component 9.” Id. at 5:40–42. Additionally,
“[l]ocking component 10, magnet 11 and spring 12 of the interior structure
are assigned to the interior space of through-hole 2a in such a way that they
can move in the interval between the central location and near-surface
location of toy 1 in a rectilinear fashion.” Id. at 5:54–61. Locking
component 10, which has “a roughly T-shape,” includes left-and-right
extending portion 10a, tapered tubular portion 10b, and interior locking
portions 10c. Id. at 7:61–67. Tapered tubular portion 10b has magnet 11
fixed on its bottom end. Id. at 8:1–2. Spring 12 urges locking component
10 up. Id. at 8:7–12.
Upper component 3 connects to back component 9 in a manner
allowing upper component 3 to turn. Id. at 6:8–10. Spring 30 biases upper
component 3 to turn upwardly. Id. at 6:10–15.
Lateral components 4 and 5 “are connected to support component 13
through turning axis 21,” and lateral components 6 and 7 “are connected to
support component 14 through turning axis 22.” Id. at 6:41–42, 6:51–52.
Springs 31, 32 bias lateral components 4, 6 to turn outwardly. Id. at 6:43–
47; 6:53–57.
“[P]rotrusions 5b and 7b are respectively furnished on the upper side
of the two left and right lateral components 5 and 7.” Id. at 6:58–60. When
spring 31 turns lateral component 4 outward, engagement between lateral
component 4 and protrusion 5b rotates lateral component 5 outwardly with
lateral component 4. Id. at 6:64–7:1. Likewise, engagement of protrusion
7b with lateral component 6 ensures that lateral component 7 moves outward
when lateral component 6 does. Id. at 7:1–8.
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Additionally, “U-shaped exterior locking portions 5c and 7c, which
are respectively locked by the two left and right interior locking portions 10c
and 10c of locking component 10 of the interior structure, are furnished on
the inner side of the two left and right lateral components 5 and 7.” Id. at
7:9–14. Absent an external magnetic force acting on toy 1, with locking
portions 5c and 7c locked onto interior locking portions 10c, lateral
components 4–7 do not rotate outwardly. Id. at 7:15–23.
When a magnetic substance is near magnet 11, a magnetic force draws
locking component 10 against spring 12 toward the exterior of toy 1. Id. at
8:31–39. As a result, “the locked state of the left and right interior locking
portions 10c and 10c of locking component 10 of the interior structure and
exterior locking portions 5c and 7c of the exterior structure is thereby
released.” Id. at 8:39–42. With interior locking components 10c and
interior locking components 5c, 7c released from one another, springs 30,
31, and 32 unfold toy 1 into the open position shown in Figure 7. Id. at
8:43–53. Subsequently, toy 1 can be returned to its spherical shape by
rotating upper component 3 down, as well as rotating lateral components 4–
7 inward, locking exterior locking components 5c, 7c and exterior locking
components 10c. Id. at 8:54–64. This holds toy 1 in its spherical shape until
reapplication of a magnetic force. Id. at 8:64–67.
D. Illustrative Claim
Claim 1 is independent. Each of claims 2–5 depends, directly or
indirectly, from independent claim 1. Claim 1 is reproduced below:
1. A transformable toy comprising:
a first toy component including:
a body;
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at least one auxiliary component that is movable relative to the
body between a rollable first position and a second
position; and
a locking assembly including:
a first magnetically-responsive member,
an elastic element,
a latch, and
a keeper,
wherein the elastic element urges the locking assembly towards
a locking position in which the latch and the keeper are
engaged with one another and at least indirectly retain the
at least one auxiliary component in the first position; and
a second toy component having a second magnetically-responsive
member, wherein the second toy component is engageable with
the body of the first toy component to bring the first
magnetically-responsive member of the locking assembly and
the second magnetically-responsive member sufficiently near
one another to generate a magnetic force,
wherein upon generating the magnetic force, the first magnetically-
responsive member responds to bring the locking assembly to a
release position in which the latch and the keeper permit
movement of the at least one auxiliary component from the first
position to the second position,
wherein at least one of the first magnetically-responsive member and
the second magnetically-responsive member is a magnet.
Ex. 1001, 16:7–39.
III. ANALYSIS
A. 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. 13 (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 ’508 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)).
The Petition proposes constructions for certain claim language.
Pet. 14–19. Patent Owner states that it “disagrees with [Petitioner’s]
constructions. [Petitioner’s] constructions undercut its unpatentability
arguments, and [Petitioner] fails to apply its constructions for some of its
arguments.” PO Resp. 1. In the section of its Response devoted to claim
construction, Patent Owner does not provide any further explanation of why
it disagrees with Petitioner’s claim constructions. See id.
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When we instituted this inter partes review, we did not find that the
parties’ patentability disputes necessitated construing expressly any claim
terms. Dec. to Inst. 10. Subsequently, the parties have disputed whether
certain portions of the asserted prior art references teach “[a] transformable
toy,” as recited in the preamble of claim 1 of the ’058 patent. See Pet. 64–
65; PO Resp. 55–56; Pet. Reply 21–22; Sur-reply 12–13. This dispute
warrants a claim-construction discussion regarding the preamble of claim 1.
To help us consider the claim-construction issues related to claim 1’s
preamble, we authorized each party to file a brief addressing whether the
preamble of claim 1 is limiting. Paper 42. Pursuant to this authorization,
Patent Owner filed a “Brief Regarding the Limiting Effect of the Preamble
of Claim 1.” Paper 43 (“PO Pr. Br.”). Petitioner filed a “Post-Hearing Brief
Regarding Non-Limiting Preamble of Claim 1.” Paper 44 (“Pet. Pr. Br.”).
As a general rule, preamble language is not treated as limiting. Allen
Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
Nonetheless, the preamble may be construed as limiting “if it recites
essential structure or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). For example, “when
limitations in the body of the claim rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of
the claimed invention.” Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d
1021, 1024 (Fed. Cir. 2015) (quoting Eaton Corp. v. Rockwell Int’l Corp.,
323 F.3d 1332, 1339 (Fed. Cir. 2003)). A preamble is not regarded as
limiting, however, “when the claim body describes a structurally complete
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invention such that deletion of the preamble phrase does not affect the
structure or steps of the claimed invention.” Catalina, 289 F.3d at 809. If
the preamble “is reasonably susceptible to being construed to be merely
duplicative of the limitations in the body of the claim (and was not clearly
added to overcome a [prior art] rejection), we do not construe it to be a
separate limitation.” Symantec Corp. v. Computer Assocs. Int’l, Inc., 522
F.3d 1279, 1288–89 (Fed. Cir. 2008). The preamble has no separate limiting
effect if, for example, “the preamble merely gives a descriptive name to the
set of limitations in the body of the claim that completely set forth the
invention.” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434
(Fed. Cir. 2000).
Petitioner argues that the preamble of claim 1 is not limiting. Pet. Pr.
Br. 3. Petitioner asserts that the body of claim 1 entirely recites the
invention. Id. at 3. Petitioner notes that the body of claim 1 does not recite
“transformable toy,” such that the preamble does not provide antecedent
basis for any term in the claim’s body. Id. at 3–4. Petitioner contends that
the preamble’s recitation of “transformable toy” does not “impose any
structural requirement on the claimed invention beyond what is required by
the body of claim 1.” Id. Petitioner also argues that Patent Owner did not
rely on the preamble’s recitation of “a transformable toy” to garner
allowance of claim 1. Id. at 4–5. Rather, Petitioner argues, Patent Owner
admitted during prosecution that the prior art taught “a transformable toy.”
Id.
Patent Owner argues that “transformable toy is limiting based on
bedrock principles of claim construction and the Federal Circuit’s
guidance.” PO Pr. Br. 1. Patent Owner emphasizes that we need to construe
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claim 1 in light of the Specification. Id. at 2. Patent Owner contends that
“[r]eading the limitations of claim 1 without the context of the preamble
untethers the claim from the invention described throughout the
specification.” Id. Patent Owner argues that “[i]n total, some form of the
word ‘transform’ is found 54 times throughout the specification and, as
explained throughout the remainder of this brief, it is repeatedly used to
describe the toy’s change from the first position to the second position.”
Id. at 3 n.1. Patent Owner argues that discussion of a toy that “transforms”
pervades the Specification, including the Title, the Abstract, the Summary,
the description of all of the Figures, the detailed discussion of exemplary
embodiments, and the broadening language at the end of the Specification.
Id. at 3–5. Patent Owner contends that “[r]eading the claims in light of the
specification, and given the extensive disclosure describing the movement of
the claimed toy from a first to second position specifically as a
transformation, it is clear the preamble ‘is essential to understanding
limitations or terms in the claim body.” Id. at 5. Patent Owner also argues
that the preamble’s recitation of “a transformable toy”
was listed among the reasons the claim was allowed. In the
Reasons for Allowance, the Examiner found: “the prior art does
not teach a transformable toy having a closed or first position, in
which the toy is rollable, such that the toy may proceed in
simultaneous translational and rotational movement, being
shaped for substantially continuous contact with a support
surface, and having a magnetic locking assembly configured to
respond to the proximity of a magnetic second toy component to
release the locking component, to transform the toy to an open
or second position, by movement of biased auxiliary
components.”
Id. at 1–2 (quoting Ex. 1004, 1103).
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With respect to claim 1 of the ’058 patent, we do not find the record
evidence provides a basis for deviating from the general rule that the
preamble is not limiting. The record evidence does not demonstrate that the
preamble is “necessary to give life, meaning, and vitality” to claim 1. No
limitation in the body of claim 1 relies on or derives antecedent basis from
the preamble. See Ex. 1001, 16:6–39. Rather, the body of claim 1 recites a
structurally complete invention. The body of claim 1 provides a structurally
complete description of an apparatus that includes “a first toy component”
with a number of subcomponents and “a second toy component.” See id.
The claim body explains how the recited components engage and interact
with one another. See id. Patent Owner does not identify anything
necessary to identify a structurally complete invention that is missing from
the body of claim 1. See generally PO Pr. Br.
As noted above, Patent Owner argues that we must treat the preamble
as limiting because the Specification of the ’058 patent demonstrates clearly
that the claimed invention focuses on a “transformable toy.” Id. at 3. But
we do not find Patent Owner has identified any distinction between the
apparatus described in the body of claim 1 and “a transformable toy.” We
do not find that the preamble’s recitation of a “toy” defines any structure
beyond what is described in the claim body, which recites “a first toy
component” and “a second toy component.” See Ex. 1001, 16:7–8, 24. Nor
do we find that the preamble’s description of the “toy” as “transformable”
defines anything beyond what the claim body recites. As noted above,
Patent Owner argues that the Specification contains “extensive disclosure
describing the movement of the claimed toy from a first to second position
specifically as a transformation.” PO Pr. Br. 5. The claim body defines a
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toy capable of such a “transformation.” The claim body recites “at least one
auxiliary component that is movable relative to the body between a rollable
first position and a second position.” Ex. 1001, 16:10–12. Consistent with
Patent Owner’s assertions regarding the meaning of “transformation,” we
find that the claim body defines a toy that is transformable, such that the
preamble merely provides a descriptive name for the limitations recited in
the body of the claim.
Additionally, we do not agree with Patent Owner’s suggestion that the
prosecution history compels treating the preamble as limiting. See PO Pr.
Br. 1. Patent Owner’s citation of the Notice of Allowance does not persuade
us that Patent Owner relied on the language of the preamble specifically to
patentably distinguish the claims from the prior art. Id. As Petitioner
argues, Patent Owner admitted during prosecution that the prior art taught “a
transformable toy.” Ex. 1004, 506, 533 (“Shannon discloses a transformable
toy movable from an open position to a closed condition ‘through a body
and appendages.’”); Pet. Pr. Br. 4–5. Consistent with this, we do not find
that the Examiner indicated the preamble’s recitation of “a transformable
toy” patentably distinguished claim 1 from the prior art cited during
prosecution. The Examiner’s explanation of the reasons for allowance refers
to limitations in the body of claim 1 extensively. Ex. 1004, 1103. Given
this and the admission by the Applicant during prosecution that “a
transformable toy” was taught by the prior art, we do not find that this
language of the preamble was relied on by the Applicant or cited by the
Examiner as patentably distinguishing over the prior art. Thus, we
determine that the preamble of claim 1 is not limiting.
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In the event that our interpretation that the preamble is not limiting is
over-ruled, we alternatively determine that the language “a transformable
toy” means “a toy that changes from a first shape to a second shape.” Dr.
Kudrowitz testifies that he believes this is the meaning of “a transformable
toy.” Ex. 1002 ¶ 12 (citing Ex. 1001, Abstract; 2:55–3:6, 3:46–50, 8:17–53,
9:42–48, 13:14–29, 14:4–56). He elaborates that that “[t]his definition is
specifically supported by the ’058 Patent specification: ‘the exterior
structure thereby transforms from the first shape to the second shape by
means of the transformation means.’” Id. (citing Ex. 1001, 2:33–35). We
find Dr. Kudrowitz’s testimony persuasive, as we find Dr. Kudrowitz’s
interpretation of “a transformable toy” consistent with its plain meaning and
the portions of the Specification he cites. Patent Owner does not argue a
different meaning of the claim language “a transformable toy.” See
generally PO Resp.; Sur-reply; PO Pr. Br.
Aside from the foregoing analysis regarding the preamble of claim 1,
we find that resolving the parties’ patentability dispute does not necessitate
construing expressly any claim language.
C. Alleged Obviousness over Aprile and Thompson
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.
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Figure 2 shows container 1 with locking device 5. Id. at 3:28–4:1.
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 6 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
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.
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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
Figure 3, against the action of the spring 12, in such a way as to
disengage the jamming member 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. Overview of Thompson
Thompson relates to a “ball for use in ball games.” Ex. 1009, 1:4–8.
Figure 1 of Thompson is reproduced below.
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Figure 1 shows a ball adapted to separate into two halves. Id. at 1:62–
63. Ball 10 includes upper half 11, lower half 12, and sensitive area 14. Id.
at 2:4–8. A latch mechanism inside an otherwise hollow ball 10 holds upper
and lower halves 11, 12 together. See id. at 2:32–50, 3:15–22, Fig. 2.
Hitting sensitive area 14 causes the latch mechanism to release, and a spring
forces upper and lower halves 11, 12 to separate. Id. at 2:50–58.
Thompson states that “[i]t will of course be clear that a great variety
of games could be devised for use with such a toy providing great pleasure
for children and adults alike.” Id. at 2:25–28. Thompson also states that its
ball can be used for “playing any game desired in which the object of the
game is separation of the two balls [sic] or to avoid the separation of the two
halves of the ball.” Id. at 3:24–28.
3. Discussion
Petitioner presents multiple, alternative explanations regarding how it
allegedly would have been obvious over Aprile and Thompson to modify
one or more of the disclosures of Aprile and Thompson in a manner that
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would have resulted in the invention recited in claims 1–5. Pet. 60–77. One
of Petitioner’s arguments is that it would have been obvious to modify
Aprile’s container embodiment to have a rollable ball shape like Thompson
discloses, and that would have produced an apparatus meeting the
limitations of claims 1–5. Id. at 62–77. 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 1–5 over Aprile and Thompson by a preponderance of
the evidence. Finding claims 1–5 unpatentable based on Petitioner’s
argument that it would have been obvious to modify Aprile’s container
embodiment to have a rollable ball shape, we do not reach Petitioner’s other
theories regarding why claims 1–5 would have been obvious over Aprile and
Thompson.
Addressing claim 1’s “transformable toy,” Petitioner argues that
Aprile’s disclosure of “small containers” teaches the claimed “transformable
toy,” citing Aprile and Dr. Kudrowitz’s testimony. Id. at 64. Dr. Kudrowitz
explains that “Aprile discloses ‘small containers’ useful in toys which may
have an open and closed position.” Ex. 1002 ¶ 158.
Regarding claim 1’s recitation of “at least one auxiliary component
that is movable relative to the body between a rollable first position and a
second position,” Petitioner argues that the limitation would have been
obvious over Aprile and Thompson. Id. at 66–68. As noted above,
Petitioner contends that it would have been obvious to modify Aprile’s
container to be rollable. Id. at 62–64, 66–68. Petitioner asserts that
“Thompson states that its ball is ‘well suited to play a great variety of
games.’” Id. at 63. Petitioner asserts that this “provides an express
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motivation to apply the ball shape of Thompson to Aprile.” Id. at 63–64.
Thus, Petitioner argues a person of ordinary skill in the art would have been
motivated to modify Aprile’s disclosed embodiments to be rollable “for at
least improving the functionality and play configurations of Aprile.” Id. at
63. Petitioner argues that the proposed modification produces no more than
predictable results by combining prior art elements according to known
techniques and methods. Id. at 64–65. Petitioner also argues that modifying
Aprile’s container embodiment to have a rollable ball shape would have
resulted in an apparatus meeting claims 1–5. Pet. 64–77.
The parties’ arguments give rise to multiple disputes. With respect to
claim 1’s preamble, the parties dispute (1) whether the preamble is limiting,
and (2) whether Aprile’s discussion of containers teaches a transformable
toy. Pet. Pr. Br. 1–5; PO Pr. Br. 1–5; Pet. 64; PO Resp. 55–56; Reply 21–
22; Sur-reply 12–13. Additionally, the parties dispute whether it would have
been obvious to modify Aprile’s container to have a rollable ball shape.
Pet. 60–68; PO Resp. 59–63; Reply 22–24; Sur-reply 13–17. We turn now
to detailed discussions of these disputes raised by the parties.
a. Dispute Regarding Claim 1’s Preamble
For the reasons discussed above in Section III.B, we determine that
claim 1’s preamble is not limiting. Therefore, Petitioner need not show that
“a transformable toy,” as recited in the preamble, was taught by, or would
have been obvious over Aprile and Thompson.
Additionally, in the event that our interpretation that claim 1’s
preamble is not limiting is over-ruled, we consider the parties’ dispute
regarding whether Aprile’s discussion of containers teaches “a transformable
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toy.” As discussed above, Petitioner asserts that Aprile’s discussion of small
containers teaches “a transformable toy,” as recited in claim 1. Pet. 64.
Patent Owner disputes this. PO Resp. 55. Patent Owner argues that
“[t]he container embodiment is not a toy—it is a container to hold items,
such as foodstuffs, or a suitcase, box, or bag.” Id. Patent Owner also argues
that opening Aprile’s container does not transform it, asserting that “[t]he
general shape of the container is the same regardless of the lid being closed
or open.” Id.
Petitioner replies that Patent Owner’s argument is wrong. Pet.
Reply 21–22. Petitioner argues that “Aprile discloses a locking device for a
toy,” elaborating that “[e]ven the part of Aprile that [Patent Owner] relies on
expressly teaches that ‘[t]he locking device . . . , for example in form of a
casket . . . , that constitute components of toys . . . .’” Id. Petitioner adds
that “Aprile is still a toy that transforms its shape in the same manner as the
embodiment in the ’058 Patent, e.g., both having an auxiliary component
being rotate away from the body of the toy via hinge to transform.” Id.
In response, Patent Owner maintains that Aprile’s container is not
“transformable.” Sur-reply 12–13. Patent Owner argues that merely
moving components via a hinge does not constitute transformation. Id. at
12. Instead, Patent Owner asserts that “what makes the toy ‘transformable’
is the change from one shape to another, not just the movement of
components on a hinge.” Id.
In the event that our interpretation that claim 1’s preamble is not
limiting is over-ruled, we alternatively determine that Petitioner’s arguments
and evidence persuade us that Aprile’s discussion of the container
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embodiment teaches a toy that changes from a first shape to a second shape.
Petitioner cites, among other disclosures, Aprile’s explanation that
The locking device according to the invention can moreover be
conveniently applied to small containers, for example in the form
of a casket (such as precisely the one represented by way of
example in the drawings), that constitute components of toys that
are designed to accompany packages of foodstuffs and the like
for promotional purposes.
Ex. 1008, 5:15–21; Pet. Reply 22. In view of this, Dr. Kudrowitz testifies
that a person of ordinary skill in the art would understand that Aprile teaches
a container that is a toy. Ex. 1019 ¶ 81. As noted above, Patent Owner
argues that “[t]he container embodiment is not a toy—it is a container to
hold items, such as foodstuffs, or a suitcase, box, or bag.” PO Resp. 55. We
find persuasive Dr. Kudrowitz’s testimony that a person of ordinary skill in
the art would understand Aprile as teaching a toy container. We do not find
persuasive Patent Owner’s suggestion that a container cannot be a toy
merely because it is intended “to hold items.”
Additionally, Petitioner persuades us that Aprile’s container changes
from a first shape to a second shape. In particular, Petitioner persuades us
that, just as the ’058 patent teaches a toy that transforms by an auxiliary
component rotating away from a toy body, Aprile’s container transforms by
an auxiliary component (the lid) rotating away from the body (the bottom)
via a hinge. Pet. Reply 22. The exemplary toy disclosed by the ’058 patent
opens from a generally spherical to a second shape. Ex. 1001, 2:36–49,
9:15–19, 14:18–23. Disclosing a “character shape” (id. at 9:14) as an
example of the second shape (id. at 9:14), the ’058 patent explains that “the
second shape of the toy is not particularly limited; a variety of shapes can be
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employed.” We find that, like the toy disclosed in the ’058 patent, Aprile’s
container has a first shape when closed, and opens to a second shape.
Compare Ex. 1008, Figs. 1 and 2 (showing the closed shape) with id. Fig. 3
(showing the open shape). Patent Owner does not provide persuasive
support for its assertion that the open shape and the closed shape of Aprile’s
container are the same. See PO Resp. 55.
Thus, we determine that Petitioner has demonstrated the recitation of
“a transformable toy” in claim 1’s preamble does not patentably distinguish
the claim over Aprile and Thompson for two reasons. First, as explained
above in Section III.B, we determine that the preamble of claim 1 is not
limiting. Second, to the extent we are incorrect in that determination,
Petitioner persuades us that Aprile’s discussion of containers teaches a
transformable toy.
b. Dispute Regarding Whether It Would Have Been
Obvious to Modify Aprile’s Container to Have a
Rollable Ball Shape
Patent Owner disputes Petitioner’s contention that it would have been
obvious to modify Aprile’s container to have a ball shape. Id. at 59–63.
Patent Owner asserts that Aprile teaches away from such a modification,
which would require substantial redesign and would change Aprile’s
principle of operation. Id. at 59–60. Patent Owner asserts that Aprile’s
“container is to hold items that would be placed in boxes, caskets, bags,
suitcases, and the like.” Id. at 61. Making the container rollable would
interfere with its storage function, Patent Owner argues. Id. at 59–63.
Patent Owner argues that Aprile teaches away from a rollable container
because rolling could jostle and/or damage the container’s contents. Id. at
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61. Additionally, Patent Owner argues that a rollable container springing
open in response to an external magnet “will cause the container to move,
possibly spilling the ‘foodstuffs’ contents.” Id. “Such a design is
undesirable, and there would be no reason to turn a container holding
foodstuffs into a ball.” Id.
Patent Owner also suggests that a person of ordinary skill in the art
would not have been motivated to modify Aprile’s container into a ball for
the reasons identified by Petitioner. Id. at 62–63. Patent Owner notes
Aprile does not teach using its container in a game. Id. at 62. Patent Owner
also argues that the hinge on Aprile’s container would cause unpredictable
movement, rendering game play with the container “undesirable because the
user would be unable to accurately move the container towards the magnet.”
Id. Additionally, Patent Owner argues that Petitioner’s “obviousness theory
does not account for the inviolability of Aprile’s container being negated by
redesigning it to be ‘a rollable ball that may open during play’ and to
‘creat[ing] a rollable toy which releases a latch and transforms (opens) in
response to magnetic interaction.’” Id. at 63.
In response, Petitioner maintains that the “rollable first position”
recited in claim 1 is not patentably distinct from the teachings of Aprile and
Thompson. Pet. Reply 22–24. Petitioner asserts that unpredictable
movement of Aprile’s container does not preclude it “from rotating around
an axis or point.” Pet. Reply 22. Petitioner argues that “[n]either
[Petitioner’s] construction of ‘rollable’ nor the claims require a toy to have
only continuous and straight-forward rolling movement.” Id. Additionally,
regarding Aprile’s external hinge, Petitioner contends that it would be easy
to make the hinge internal, noting that “Aprile already discloses an
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embodiment in which a hinge is placed inside of this doll.” Id. at 23.
Petitioner asserts that a person of ordinary skill in the art would “would have
been motivated to modify the Aprile container to move the hinge to the
inside of the container such that the modified Aprile toy would roll like a
ball.” Id.
Additionally, Petitioner argues that, contrary to Patent Owner’s
arguments, making Aprile’s container a ball would neither have required a
substantial redesign nor changed the principle of operation. Id. at 23–24.
Petitioner argues that making Aprile’s container ball-shaped would have
required “only a simple design change—rounding the outer surface of the
toy container and/or placing the hinge inside of the container—which would
not change the principle of operation, rather, it would enhance the intended
purpose of the toy.” Id. at 23.
Petitioner also argues that “[m]erely being a toy container does not
prevent a [person of ordinary skill in the art] from modifying it to be a
rollable toy.” Id. Petitioner argues that a person of ordinary skill in the art
would not have expected Aprile’s toy container to remain static. Id. at 23.
Instead, “[a] child is expected to shake, throw, or roll the toy container when
playing with it,” Petitioner argues. Id. Petitioner also argues that a person
of ordinary skill in the art would have expected the container to store
“something appropriate for a child to play with.” Id.
Petitioner also maintains that, contrary to Patent Owner’s argument,
Thompson’s disclosure that its ball is “well-suited to play a variety of
games” would have motivated a person of ordinary skill in the art to apply
Thompson’s ball shape to Aprile. Id. at 24. Petitioner asserts that Patent
Owner’s criticism of the motivation to combine “wrongfully assumes that
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Aprile’s container is not used for any game.” Id. Petitioner also argues that
the proposed modification of Aprile’s container does not compromise its
inviolability. Id.
In response, Patent Owner argues that, even with the modifications
proposed by Petitioner, Aprile’s container would not be “rollable.” Sur-
reply 13–15. According to Patent Owner, it “defies physics” to suggest a
container moving unpredictably could “move[] forward by rotating around
an axis or point, like a ball.” Id. at 13. “By definition, ‘unpredictable
movement’ would move the toy off of the axis of rotation,” Patent Owner
argues. Id.
Patent Owner also argues that Petitioner has not supported adequately
its assertion that it would have been obvious to modify Aprile’s container
with an internal hinge. Id. at 14. Patent Owner argues that “the sole basis
[Petitioner] contends a [person of ordinary skill in the art] would have to
modify the container of Aprile does not actually exist.” Id. Noting that
Petitioner cites Figures 4 and 5 of Aprile as showing an internal hinge,
Patent Owner contends that Figures 4 and 5 “do not depict a container at
all, and therefore do not disclose a hinge.” Id.
Patent Owner also maintains that the proposed modification of
Aprile’s container would require substantial redesign. Patent Owner
explains that proposed changes would require different manufacturing, as
“the simple assembly required for a box-shaped container could not be
employed for the modifications proposed by [Petitioner].” Id. at 15–16.
Patent Owner also argues that Petitioner conflates Aprile’s container
embodiment, discussed in connection with Figures 1–3, with its doll
embodiment, discussed in connection with Figures 4 and 5. Id. at 16.
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Asserting that “Aprile does not disclose that the container shown in Figs. 1-3
can take the form of the doll shown in Figs. 4 and 5,” Patent Owner contends
that Aprile’s Figures 4 and 5 “cannot support [Petitioner’s] arguments.” Id.
Considering the record as a whole, Petitioner’s evidence and
arguments provide rational underpinning for its contentions that claims 1–5
would have been obvious in view of Aprile and Thompson. Weighing the
parties’ evidence and arguments, Petitioner persuades us that a person of
ordinary skill in the art would have had motivation to modify Aprile’s
container to have a ball shape. Additionally, Petitioner persuades us that
there would have been a reasonable expectation of success for such a
modification, which would have involved combining prior art elements
according to known techniques and methods, producing no more than
predictable results.
Regarding the alleged motivation to combine, Petitioner persuades us
that a person of ordinary skill in the art would have recognized value in
modifying Aprile’s container to have a ball shape. Dr. Kudrowitz explains
why a person of ordinary skill in the art would have recognized value in
such a modification of Aprile’s container. Ex. 1002 ¶¶ 150–156. For
example, Dr. Kudrowitz explains that modifying Aprile’s container to have a
ball shape would have yielded “predictable results” of “making Aprile’s
openable toy container . . . more entertaining by making the toy rollable, as
balls are.” Id. ¶ 154. We find Dr. Kudrowitz’s testimony credible and
supported by the other evidence of record, including Thompson’s disclosure
that its ball is “well suited to play a great variety of games.” Ex. 1009, 2:18,
3:24–30.
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The record evidence persuades us that a person of ordinary skill in the
art would have recognized an entertainment value in modifying Aprile’s
container to have a ball shape. As noted above, Patent Owner argues that
the external hinge of Aprile’s container would cause unpredictable forward
movement, detracting from the entertainment value of rolling the container
toward a magnet. PO Resp. 62. The record does not support this contention
for multiple reasons.
First, Petitioner advances evidence that a person of ordinary skill in the
art would have recognized the value of modifying Aprile’s container into a
ball shape for use in “a great variety of games” (see Ex. 1009, 2:18, 3:24–
30), not just rolling the container toward a magnet. Thus, even if an external
hinge would have complicated rolling the container toward a magnet, that
does not undermine Petitioner’s evidence that a person of ordinary skill in
the art would have recognized value in modifying Aprile’s container to have
a ball shape.
Second, there is no apparent reason that a person of ordinary skill in
the art, having recognized value in a ball shape like Thompson’s, would
think a ball shape has an external hinge. Thompson’s ball has a smooth
exterior surface. See Ex. 1009, Figs. 1, 2. Thus, from the Petition’s
assertion that a person of ordinary skill in the art would have had reason to
modify Aprile’s container to have a ball shape like Thompson’s (Pet. 62–64,
66–68), it follows that a person of ordinary skill in the art would have been
motivated to modify Aprile’s container to have a smooth exterior surface.
For this reason, we find unpersuasive Patent Owner’s argument that the
modified version of Aprile’s container would not roll well due to an external
hinge.
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Regarding how Aprile’s container could have been modified to omit an
external hinge, we first note that “[a] person of ordinary skill in the art is
also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 421 (2007). Additionally, we find persuasive
Dr. Kudrowitz’s testimony that Aprile discloses, explicitly or implicitly, an
internal hinge in connection with the embodiment of Figures 4 and 5.
Ex. 1019 ¶ 77. On the whole, Petitioner persuades us that a person of
ordinary skill in the art “would have been motivated to modify the Aprile
container to move the hinge to the inside of the container such that the
modified Aprile toy would roll like a ball.” Pet. Reply. 23.
We do not agree with Patent Owner’s argument that Aprile’s “Figs. 4
and 5 do not depict a container at all, and therefore do not disclose a
hinge.” Sur-reply 14. The record does not include persuasive evidence that
only a container can have a hinge. Indeed, the ’058 patent teaches “[i]n a
most preferred form of the present invention at least one second moveable
element is hinged to said at least one first moveable element,” without
suggesting that this embodiment is a container. Ex. 1001, 4:15–19
(emphasis added).
Petitioner also persuades us that a person of ordinary skill in the art
would have had a reasonable expectation of success in modifying Aprile’s
container to have a ball shape. As noted above, Petitioner argues that the
proposed modification combines prior art elements in accordance with a
known technique and known methods, improving a similar system in the
same way and yielding predictable results (Pet. 62–63), whereas Patent
Owner argues that making Aprile’s container ball-shaped would “require
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substantial redesign” (PO Resp. 59–60). We find Petitioner’s arguments and
evidence more persuasive.
Petitioner persuades us that the proposed modification combines prior
art elements, specifically Aprile’s toy container and Thompson’s ball.
Pet. 63. Patent Owner does not dispute this contention. See generally PO
Resp.; Sur-reply.
Petitioner also persuades us that the proposed modification combines
these prior art elements according to known methods. Noting that both
Aprile and Thompson disclose hollow toys that open with an externally
triggered latch, Dr. Kudrowitz testifies that it was a known method to
“caus[e] the container of Aprile to roll as a ball and open in response to a
magnetic force.” Ex. 1002 ¶¶ 154–155. Dr. Kudrowitz elaborates that it
would not take any special skill to round the exterior of Aprile’s container.
Id. ¶ 155. Patent Owner argues that “Dr. Kudrowitz provides no explanation
of the purported known methods and techniques.” PO Resp. 60. We
disagree. To the contrary, Dr. Kudrowitz’s testimony explains that it was
known to round the exterior of a hollow toy with a latching mechanism,
thereby making the toy rollable. Ex. 1002 ¶¶ 154–155. Thompson’s
disclosure of a hollow ball with a latch mechanism supports this testimony.
See e.g., Ex. 1009, 2:4–62; Figs. 1–3.
Petitioner also persuades us that modifying the exterior of Aprile’s
container to be ball shaped would have yielded the predictable result of
adding a rolling function for the toy. Pet. 63. For multiple reasons, Patent
Owner’s argument that an external hinge would have caused the container to
roll in an unpredictable manner does not undermine Petitioner’s assertion
that making Aprile’s container ball-shaped would have yielded predictable
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results. First, Patent Owner’s argument does not address Petitioner’s
proposed modification of applying Thompson’s ball shape (which does not
have an external hinge) to give Aprile’s container a ball shape, which would
not have had an external hinge. Second, even if Petitioner had proposed it
would have been obvious to make Aprile’s container round with an external
hinge, the proposed modification would have yielded the predictable result
of allowing the container to roll in an unpredictable manner.
Additionally, for multiple reasons, we find unavailing Patent Owner’s
argument that “‘unpredictable movement’ would move the toy off of the axis
of rotation.” Sur-reply 13. First, Patent Owner bases its arguments that
Aprile’s container would have “unpredictable movement” on its assertions
that Aprile’s container has corners and an external hinge. PO Resp. 57–59;
Sur-reply 14 n.3. As discussed above, the record evidence persuades us that
it would have been obvious and within the level of skill in the art to modify
Aprile’s container to have a ball shape without external corners or an
external hinge, eliminating the alleged source of “unpredictable movement.”
Second, contrary to Patent Owner’s suggestion, “[Petitioner’s] own
construction for ‘rollable’” does not exclude the toy moving “off of the axis
of rotation.” See Sur-reply 13. As Patent Owner notes, “[Petitioner’s]
construction requires that the toy ‘as a whole move[] forward by rotating
around an axis or point, like a ball.’” Id. (emphasis added). Thus,
Petitioner’s construction does not require rotating around an axis, negating
Patent Owner’s contention that movement “off of the axis of rotation” would
conflict with Petitioner’s construction of “rollable.” Rather, a toy that
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rotates around a point, but not an axis, meets Petitioner’s construction of
“rollable.”7
Additionally, we do not agree with Patent Owner’s arguments that the
proposed modification of Aprile’s container would “require substantial
redesign.” PO Resp. 59–60. Patent Owner reasons that the proposed
modification would “require substantial redesign” because “[t]he entire form
of the container would need to be changed, which necessarily changes the
manufacture of the container,” citing Dr. Janét’s testimony. Id. at 60 (citing
Ex. 2001 ¶ 115). Dr. Janét explains that “the Aprile container with its
illustrated shape would likely be formed from planar sheets of material
coupled together to form the cube-shaped bottom half,” whereas “if the
‘container’ is now ball shaped, then a different manufacturing system must
be employed.” Ex. 2001 ¶ 115. Dr. Janét also testifies that “[i]n my
opinion, turning Aprile’s box into a ball is not a modification of Aprile’s
container but rather a wholesale change in the structure of the container.”
Id. Citing supporting testimony from Dr. Kudrowitz, Petitioner counters that
the “proposed modification would require only a simple design change—
rounding the outer surface of the toy container and/or placing the inside of
the container.” Pet. Reply 24 (citing Ex. 1019 ¶¶ 83–87).
Between the parties’ positions, we are persuaded by Petitioner’s
arguments and Dr. Kudrowitz’s testimony that starting with Aprile’s
container, which already has a round top, and rounding the rest of the

7 Patent Owner does not dispute Petitioner’s construction of “rollable.” See
generally PO Resp.; Sur-reply. Patent Owner only argues, unpersuasively,
that Aprile’s container would not meet Petitioner’s own construction of
“rollable.” E.g., Sur-reply 13.
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exterior surfaces constitutes a straightforward modification that does not
require a “substantial redesign.” Dr. Janét attributes great significance to the
alleged manufacturing changes needed to modify the bottom of Aprile’s
container from flat-sided to rounded. Ex. 2001 ¶ 115. In doing so, Dr. Janét
fails to acknowledge that the manufacturing of Aprile’s container already
involves making the top rounded. See Ex. 1008, Figs 1–3; Ex. 1002 ¶¶ 153,
155, 160, 161. We do not find that modifying the manufacturing to make
other portions of the container rounded requires a “substantial redesign.”
Weighing the parties’ arguments and evidence, we also find that the
proposed modification would not change Aprile’s principle of operation. As
discussed above, Patent Owner argues that the proposed modification would
change Aprile’s principle of operation by reducing the stability of the
container, making it more difficult to open with an external magnet, and
increasing the likelihood of disturbing the container’s contents. PO Resp.
59–63. Petitioner counters that it would have been expected that a child’s
toy would not be stationary. Pet. Reply 23.
Consistent with Petitioner’s position, we do not find that Aprile’s
principle of operation is limited to a stationary container. As Patent Owner
recognizes (see PO Resp. 63), Aprile explains that “[t]he purpose of the
present invention is to provide an extremely simple and inexpensive locking
device, as well as one without any external access that might jeopardize its
inviolability.” Ex. 1008, 1:26–29. In view of this, contrary to Patent
Owner’s arguments, we find that Aprile’s principle of operation relates to
the construction and function of the locking device, not to keeping its
container stationary. As Patent Owner also recognizes (see PO Resp. 63),
Aprile also discloses that “[t]he locking device according to the invention
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may be applied, in a particularly advantageous way, to containers, for
example in the form of caskets or boxes, as well as bags, suitcases and the
like.” Ex. 1008, 2:19–22. This disclosure clearly includes containers that
are not stationary, e.g., “bags, suitcases, and the like.” Aprile also discloses
that
[t]he locking device according to the invention can moreover be
conveniently applied to small containers, for example in the form
of a casket (such as precisely the one represented by way of
example in the drawings), that constitute components of toys that
are designed to accompany packages of foodstuffs and the like
for promotional packages.
Id. at 5:15–21. Dr. Kudrowitz testifies that
a [person of ordinary skill in the art] would recognize Aprile’s
casket disclosure is likely a reference to Halloween toys (perhaps
containing Dracula, a mummy, or Halloween candy) that would
pop out of a casket. It is also my opinion that it would not be for
a casket that would contain an actual corpse. Thus, it is my
opinion that in light of such disclosures, a [person of ordinary
skill in the art] would understand that anything that goes into the
Aprile container would be something appropriate for a child to
play with, and not something that would create concern of
spilling. Because the container is still a toy, a POSITA would
recognize that the container is still a toy and is not expected to be
in a static condition at all times. In addition, a POSITA would
expect a child to shake, or even throw and roll the toy container
when playing with it.
Ex. 1019 ¶ 81.
We find this testimony a logical, persuasive explanation of how a
person of ordinary skill in the art would understand Aprile’s discussion of a
“small container” in the form of a “casket . . . constitut[ing] components of
toys.” In view of this, we find unpersuasive Patent Owner’s concerns that a
person of ordinary skill in the art would have concerns that rolling Aprile’s
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container “would jumble, mix up, and perhaps break the items within the
container.” PO Resp. 61. On the whole, we do not find that modifying
Aprile’s container to have a rollable ball shape would change Aprile’s
principle of operation.
Additionally, we do not agree with Patent Owner’s suggestion that
modifying Aprile’s container to have a rollable ball shape would not negate
the inviolability of Aprile’s container. PO Resp. 63. Patent Owner argues
that making “a rollable ball that may open during play” and “creat[ing] a
rollable toy which releases a latch and transforms (opens) in response to
magnetic interaction” negate the inviolability Aprile seeks. Id. In response,
Petitioner argues that
Thompson’s ball game also does not interfere with the alleged
“inviolability[”] of Aprile because Thompson does not
contemplate that its ball opens at any time during play. Only
when the sensitive area of the ball is hit, it is designed to be
separated into two pieces. [Petitioner’s] modification of Aprile
thereby preserves the alleged inviolability.
Pet. Reply 24.
We agree that modifying Aprile’s container to have a rollable ball
shape preserves the inviolability described by Aprile. Aprile expresses the
concern that “the part for introduction of the key of conventional locks is
obviously accessible from outside and hence directly exposed to risks of
forcing of the locking device aimed at fraudulent opening thereof.”
Ex. 1008, 1:20–24. Aprile addresses this by “provid[ing] an extremely
simple and inexpensive locking device, as well as one without any external
access that might jeopardize its inviolability.” Id. at 1:26–29. Aprile
elaborates that “[t]he absence of components directly accessible from
outside the container to which the locking device is applied moreover
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ensures an effective inviolability against any attempt to force the lock.” Id.
at 5:6–10. Thus, the “inviolability” Aprile describes does not mean that its
latch won’t open, but that the latch thwarts attempts to force the latch open,
due to the latch having no components “directly accessible from outside the
container.” Patent Owner does not provide persuasive evidence or reasoning
that the proposed modification of Aprile’s container changes Aprile’s latch
or otherwise facilitates or involves someone forcing the latch open.
c. Summary Regarding Alleged Obviousness over
Aprile and Thompson
Having reviewed the full record, we determine that Petitioner has
demonstrated obviousness of claims 1–5 over Aprile and Thompson. For
the reasons discussed above, Petitioner persuades us that it would have been
obvious to modify Aprile’s container to have a rollable ball shape.
Additionally, Petitioner persuades us that the resulting apparatus would meet
all of the limitations of claims 1–5.
D. Remaining Grounds
Petitioner argues that claims 1–5 are anticipated by Wilhelm. Pet. 21–
34. Petitioner also asserts that claims 1–5 are anticipated by Tomiyama. Id.
at 34–46. Additionally, Petitioner asserts that claims 1–5 would have been
obvious over Tomiyama and Shannon. Id. at 47–60. Because we determine
above that Petitioner has demonstrated claims 1–5 would have been obvious
over Aprile and Shannon, we do not reach Petitioner’s additional challenges
to the same claims based on (1) Wilhelm, (2) Tomiyama, and (3) Tomiyama
and Shannon.
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E. 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. 64
(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 require 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.D, we do not reach the challenge to claims 1–5
based on Wilhelm because the same claims are determined to be
unpatentable over Aprile and Thompson.
10 As explained in Section III.D, we do not reach the challenge to claims 1–5
based on Tomiyama because the same claims are determined to be
unpatentable over Aprile and Thompson.
11 As explained in Section III.D, we do not reach the challenge to claims 1–5
based on Tomiyama and Shannon because the same claims are determined to
be unpatentable over Aprile and Thompson.
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–5 § 102(b) Wilhelm9
1–5 § 103(a) Tomiyama10
1–5 § 103(a) Tomiyama,
Shannon11

1–5 § 103(a) Aprile, Thompson 1–5
Overall
Outcome
1–5
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5 of U.S. Patent No. 9,975,058 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:
Howard Lithaw Lim
VINSON & ELKINS L.L.P.
hlim@velaw.com

PATENT OWNER:

Jennifer Bailey
Callie Pendergrass
ERISE IP, P.A.
Jennifer.bailey@eriseip.com
Callie.pendergrass@eriseip.com