Spin Master Ltd.

Patent Trials and Appeals Board

Jun 22, 2020

IPR2019-00897 (P.T.A.B. Jun. 22, 2020)

Trials@uspto.gov Paper 40
571-272-7822 Date: June 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)1

Before HYUN J. JUNG, NEIL T. POWELL, and BRENT M. DOUGAL,
Administrative Patent Judges.
JUNG, Administrative Patent Judge.
DECISION
Denying Patent Owner’s Request for Rehearing of Decision
Granting Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

1 We exercise our discretion to issue one Decision to be entered in each of
the above-identified proceedings. The parties are not authorized to use a
multiple-case caption.
IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

2
I. INTRODUCTION
Choirock Contents Factory Co., Ltd. (“Petitioner” or “Choirock”)
filed a Petition (Paper 1, “Pet.”2) requesting institution of an inter partes
review (“IPR”) of claims 1–5 of U.S. Patent No. 8,500,508 B2 (Ex. 1001,
“the ’508 patent”). Concurrently with the Petition, Petitioner also filed a
Motion for Joinder to Related Inter Partes Review of U.S. Patent No.
8,500,508 ([Mattel, Inc. v. Spin Master Ltd.,] Case No. IPR2018-01672)
Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) (Paper 3, “Mot.”)
moving to join a previous petition filed by Mattel, Inc. (“the prior petitioner”
or “Mattel”).3
Spin Master Ltd. (“Patent Owner” or “Spin Master”) filed a
Preliminary Response. Paper 14 (“Prelim. Resp.”). Patent Owner also filed
an Opposition to Petitioner’s Motion for Joinder. Paper 7 (“Opp.”).
Petitioner thereafter filed a Reply to Patent Owner’s Opposition. Paper 8
(“Reply to Opp.”). 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).

2 For convenience, we cite to papers in IPR2019-00897, unless otherwise
noted. For each of the papers discussed herein, similar papers were filed in
IPR2019-00900 and IPR2019-00901.
3 In IPR2019-00900, Petitioner requested institution of an IPR of claims 1–
20 of U.S. Patent No. 9,868,073 B2 (“the ’073 patent”) (IPR2019-00900,
Paper 1), and moved to join a previous petition in IPR2018-01673
(IPR2019-00900, Paper 3). Further, in IPR2019-00901, Petitioner requested
institution of an IPR of claims 1–5 of U.S. Patent No. 9,975,058 B2 (“the
’058 patent”) (IPR2019-00901, Paper 1), and moved to join a previous
petition in IPR2018-01674 (IPR2019-00901, Paper 3).
IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

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On September 26, 2019, we issued a Decision Granting Institution of
Inter Partes Review. Paper 17 (“Decision” or “Dec.”). In the Decision, we:
(1) instituted an IPR of the ’508 patent; and (2) denied Petitioner’s Motion
for Joinder because the proceeding which Petitioner sought to join (i.e.,
IPR2018-01672) had been terminated and was no longer pending before the
Board.4 Id. at 2.
Patent Owner requests rehearing of our Decision. Paper 22
(“Rehearing Request” or “Reh. Req.”). For the reasons set forth below,
Patent Owner’s Rehearing Request is denied.
II. ANALYSIS
A. Legal Standard
The applicable requirements for a request for rehearing are set forth in
37 C.F.R. § 42.71(d), which provides:
A party dissatisfied with a decision may file a single request for
rehearing, without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. The request must specifically
identify all matters the party believed the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.
37 C.F.R. § 42.71(d).
We review our Decision under an abuse of discretion standard. 37
C.F.R. § 42.71(c). An abuse of discretion may arise if based on an
erroneous interpretation of law, if a factual finding is not supported by

4 In IPR2019-00900, we instituted an IPR of the ’073 patent, and denied
Petitioner’s motion for joinder because IPR2018-01673 had been terminated.
IPR2019-00900, Paper 17, 2. Further, in IPR2019-00901, we instituted an
IPR of the ’058 patent, and denied Petitioner’s motion for joinder because
IPR2018-01674 had been terminated. IPR2019-00901, Paper 17, 2.
IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

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substantial evidence, or if the decision represents an unreasonable judgment
in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d
1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340
(Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
B. The Decision Granting Institution
In the Decision, we declined Patent Owner’s request to exercise our
discretion under 35 U.S.C. § 314(a) to deny institution. Decision 15. More
specifically, in analyzing the factors identified in General Plastic Industries
Co. Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept.
6, 2017) (precedential) (“General Plastic”), we concluded that, on balance,
the factors weighed in favor of declining to exercise our discretion under
§ 314(a) to deny institution. Decision 12–15.
C. Patent Owner’s Arguments on Rehearing
In its Rehearing Request, Patent Owner argues:
In analyzing Factor 1, the Board recognized “any relationship
between those petitioners” is considered when weighing the
General Plastic factors. (Paper 17 at 12) (citing Valve Corp. v.
Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9
(PTAB Apr. 2, 2019)). The Board also recognized “the fact that
Choirock and Mattel admittedly have a relationship is relevant to
the analysis of General Plastic factor 1.” (Paper 17 at 13). The
Board then noted there is no rule or case law that prevents an RPI
or privy from filing its own petition. Id. The Board concluded
it is not convinced an indemnitee should be prevented from
challenging the claims where the challenged claims could be
asserted in the future against other indemnitees. Id. The Board
rationalized Spin Master would be in the same position following
institution of Choirock’s petition as it would have been had it not
settled with Mattel. Id.
These statements from the Board do not amount to a proper
analysis of General Plastic factor 1. First, that there is no rule
IPR2019-00897 (Patent 8,500,508 B2)
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IPR2019-00901 (Patent 9,975,058 B2)

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or case law preventing an RPI or privy from filing its own IPR is
not an actual analysis of whether Choirock should be prevented
from filing an IPR given its RPI and privy relationship with
Mattel. Factor 1 asks the Board to assess the nature of the
relationship between Choirock and Mattel—an analysis the
Board expressly and incorrectly overlooked.
Moreover, since the Board’s decision, at least one other decision
has found a relationship similar to that between Choirock and
Mattel favors denial under factor 1 of General Plastic. Paypal,
Inc. v. Ioengine, LLC, IPR2019-00884, Paper 22 at 10–11 (PTAB
Oct. 3, 2019). In Paypal the Board found a “significant
relationship” between a first petitioner filing a first IPR and a
second petition[er] filing a second IPR challenging the same
patent weighed against institution. Id. at 11. The relationship
between the two petitioners in Paypal involved very similar facts
to the present case. In Paypal, the petitioners had an
indemnitor/indemnitee relationship and one petitioner supplied
product to the other petitioner[.]
. . .
The relationship between Mattel and Choirock is the same
significant relationship as between the first and second
petitioners in Paypal. Here, Choirock is the admitted indemnitor
of Mattel, Mattel is the “master toy licensee” of Choirock’s
Turning Mecard toy franchise, and the Turning Mecard products
were the accused products in the Spin Master v. Mattel litigation.
(Paper 16 at 3; Paper 7 at 6-8; Ex. 2004). Given these very
similar facts, however, the Board in the present case came to a
wholly different conclusion than the Board in Paypal. At the
very least, various panels of the Board appear to have
inconsistent results, which warrants a rehearing.
Reh. Req. 1–3 (emphasis added).
We disagree. Contrary to Patent Owner’s argument, we did assess the
nature of the relationship between Petitioner and the prior petitioner (i.e.,
Mattel) in the Decision. More specifically, we acknowledged that, under
Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9
IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

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(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship
(i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the
prior petitioner), and that relationship is relevant to the analysis of General
Plastic factor 1. Decision 13. However, as also noted in the Decision,
General Plastic does not mandate any particular weighing of the factors or
that the Board deny institution when any specific factors weigh in favor of a
patent owner. Id. at 14–15. Instead, General Plastic explicitly states that
“there may be circumstances where multiple petitions . . . against the same
claims of a patent should be permitted, and that such a determination is
dependent on the facts at issue in the case.” General Plastic at 18. As
indicated in the Decision:
[I]n addition to the factors addressed above, Choirock’s Petition
was filed on March 29, 2019, and a joint motion to terminate
IPR2018-01672 was filed on April 16, 2019, which was granted
on April 29, 2019. The sequence of events leading to the
termination of IPR2018-01672 indicates that Patent Owner
knew of Choirock’s instant Petition and, thus, should have filed
updated mandatory notices in that proceeding to make the
Board aware that there was a petition related to IPR2018-
01672, so that the Board could have better determined if
termination as to all parties in IPR2018-01672 was
appropriate. Patent Owner also filed its mandatory notices in
this case the day before the parties in IPR2018-01672 filed a joint
motion to terminate.
Thus, based on the facts of this proceeding and IPR2018-
01672, we are not convinced that Choirock is engaged in
abusive, strategic serial petitioning, the situation meant to be
addressed by General Plastic. On balance, the factors weigh in
favor of declining to exercise our discretion under § 314(a) to
deny institution. Further, the facts of this proceeding and
IPR2018-01672 do not persuade us that Patent Owner has been
prejudiced.
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IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

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Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or
privy relationship between Petitioner and the prior petitioner, we considered
the aforementioned facts of this proceeding, and concluded that General
Plastic factor 1 did not weigh in favor of exercising our discretion to deny
institution. Id. at 13, 15.
With respect to Paypal, Inc. v. Ioengine, LLC, IPR2019-00884, Paper
22 at 10–11 (PTAB Oct. 3, 2019), Paypal is not a precedential decision, and
thus, is not binding on this panel. Further, we note that Paypal is
distinguishable from the present proceeding. Specifically, in Paypal, the
first IPR proceeding was still ongoing when the Board was determining
whether to institute the second IPR proceeding, and the second petitioner
had not filed a motion to join the first IPR proceeding. Paypal at 6. Further,
regarding Paypal, the panel found that there was a significant overlap
between the challenged claims in the first IPR proceeding and the challenged
claims in the second IPR proceeding, with the vast majority of challenged
claims in the second IPR proceeding being addressed in the first IPR
proceeding. Id. at 11. Thus, in Paypal, the panel concluded that General
Plastic factor 1 weighed in favor of exercising discretion to deny institution,
in part, based on the conclusion that there would be no discerned harm to the
second petitioner if the panel did not institute on the non-overlapping claims.
Id. at 12. However, in the Decision, we expressly indicated that Petitioner
would be harmed if we did not institute, because Petitioner could no longer
join the previous IPR proceeding based on its termination. Decision 13
(“Considering the factors of this proceeding and [the previous proceeding],
we are not convinced that Choirock should be denied an opportunity at the
Office to challenge the claims[.]”). Although not identified in General
IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

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Plastic, the Board has considered “potential prejudice to [a] subsequent
petitioner if institution is denied” when determining whether to exercise our
discretion to deny institution under § 314(a). Shanghai Lunion Information
Technologies, Ltd. v. Telefonaktiebolaget LM Ericsson, IPR2018-00995,
Paper 12 at 16 (PTAB Nov. 13, 2018).
Patent Owner additionally argues:
Regarding factors 2 and 4, the Board stated that because the
Choirock petition is based on the identical prior art combination,
Choirock did not withhold prior art or potential grounds from an
earlier petition. Respectfully, the Board misapprehends the
factors 2 and 4 analyses when the petitions have different
petitioners. While Choirock and Mattel have a significant
relationship as discussed above, that they are different Petitioners
still changes the analysis. The correct question addressed by
factor 2 is whether Choirock knew of the prior art used in the
second petition when the first petition was filed. Spin Master’s
briefing established that Choirock did know of the prior art
because Choirock had used the art in contested proceedings
against Spin Master in other jurisdictions. (Paper 7 at 8–9).
Whether Choirock withheld prior art or potential grounds is not
the correct analysis when the petitioners are different, as in the
present case.
Regarding factor 4, the Board does not provide any analysis of
why Choirock delayed so long in filing its petition. Instead, the
Board simply concludes the timing of the Choirock petition
weighs in Choirock’s favor because Choirock filed its present
Petition and motion for joinder two weeks after the Institution
Decision of Mattel’s IPR. (Paper 17 at 13). But the timeliness of
Choirock’s joinder motion has no connection to its delay in filing
its Petition based on prior art that was in its possession years ago.
Moreover, the Board overlooked that the RPI/privy
relationship between Choirock and Mattel should also factor
into the timing. If the purpose of the General Plastic factors is
to analyze whether a petitioner is engaging in abusive, strategic
serial petitioning (Paper 17 at 15), then the very close
IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

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relationship here should also determine whether Choirock was
justified in delaying filing of its petition.
Reh. Req. 4–5 (emphasis added).
We do not agree that we misapprehended General Plastic factors 2
and 4. As we indicated in the Decision, the underlying factor behind
General Plastic factors 2 and 4 is to assess and weigh whether a petitioner
should have or could have raised new challenges earlier. Decision 13–14;
see also General Plastic at 18. However, in this case, the subsequent
petition by Petitioner raised the exact same challenges in this proceeding as
in the prior proceeding. Decision 13. Thus, as indicated in the Decision, the
applicability of General Plastic factors 2 and 4 is marginal or non-existent.
Id. at 13–14.
Patent Owner further argues:
The Board’s analysis regarding factor 5 is similarly deficient.
When an RPI/privy is filing a second petition, the Board is
obligated to analyze the second petitioner’s explanation for the
elapsed time between filings. The RPI/privy relationship
cannot be overlooked, as the Board has done here. Especially
when Choirock admits it was only filing to represent its interests.
(Paper 8 at 4; Paper 3 at 2). But Choirock’s interests are the same
as Mattel’s interests because of the RPI/privy relationship. See,
generally, Applications in Internet Time v. RPX Corp., 897 F.3d
1336, 1350 (Fed. Cir. 2018) (“AIT”) (“This notion applies with
equal force in the IPR context—a patent owner dragged into an
IPR by a petitioner, who necessarily has an interest in canceling
the patent owner’s claims, should not be forced to defend against
later judicial or administrative attacks on the same or related
grounds by a party that is so closely related to the original
petitioner as to qualify as a real party in interest.”). Moreover,
as the Board correctly noted with respect to factor 2, Choirock
filed a substantially identical Petition as Mattel against the same
claims and based on identical prior art combinations used by
Mattel. (Paper 17 at 13). The preparation of such a Petition
IPR2019-00897 (Patent 8,500,508 B2)
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IPR2019-00901 (Patent 9,975,058 B2)

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would have required little time or effort on the part of Choirock,
and it could and should have been filed shortly after Mattel filed
its own. Choirock’s rationale that it filed its petition so late to
represent its own interests does not justify its delay given the RPI
and privy relationship.
Reh. Req. 6 (emphasis added).
We disagree. Similar to General Plastic factors 2 and 4, the
underlying rationale behind General Plastic factor 5 is to assess and weigh
whether a petitioner should have or could have raised new challenges earlier.
General Plastic at 18. As described in the Decision, Petitioner filed a
petition that was substantially identical to the previous petition along with a
motion for joinder in an attempt to join an already-instituted prior IPR
proceeding that, at the time of filing the subsequent petition, was not
terminated. Decision 14. Thus, these facts make clear that General Plastic
factor 5 has little relevance since Petitioner’s subsequent challenge to the
claims is not a new challenge.
Patent Owner additionally argues:
Spin Master presented a second argument, independent from the
General Plastic analysis, that the present IPR should be denied
because Choirock is an RPI/privy of Mattel and filed a
substantially identical petition to Mattel:
The present paper presents a separate and distinct
basis for denial of institution than application of the
General Plastic factors. Whether a petitioner should
be permitted to obtain institution of an IPR
substantially the same as a prior-filed IPR—to
which the party was an RPI or privy—is a
fundamental basis for denial of institution, as
discussed in detail below. Because Choirock was
an RPI and privy with Mattel for the Mattel IPR,
Choirock should be prohibited from obtaining
institution of a second IPR. For purposes of a clear
IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

11
record, Spin Master brings a second basis for denial
of institution under either or both of §§ 314(a) and
325(d) due to Choirock being an RPI and privy with
Mattel for the Mattel IPR. As such, the arguments
and evidence presented in this paper should be fully
considered by the Board.
(Paper 14 at 2). The Board overlooked this argument. In the
Institution Decision, the Board only provided an analysis
applying the General Plastic factors but failed to consider
whether or not an RPI/privy should be permitted to file a
substantially identical IPR Petition. (Paper 17 at 10-16).
Reh. Req. 7–8 (emphasis added).
We do not agree that we overlooked this argument. Instead, in the
Decision, we rejected this argument and refused to adopt a per se rule that an
RPI or privy of a previous petitioner is automatically barred from filing a
substantially identical petition. Decision 13 (“Patent Owner does not point
us to any rule or case law that prevents an RPI or privy of a previous
petitioner, who is not barred under § 315(b), from filing its own petition or
that prevents an RPI or privy from joining a proceeding.”).
After considering Patent Owner’s arguments for rehearing, we
determine Patent Owner has not carried its burden of showing that we
misapprehended or overlooked any matter or that the Decision granting
institution of inter partes review was an abuse of discretion.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s Request for Rehearing (Paper 22) is
denied.
IPR2019-00897 (Patent 8,500,508 B2)
IPR2019-00900 (Patent 9,868,073 B2)
IPR2019-00901 (Patent 9,975,058 B2)

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FOR PETITIONER:
Lithaw “Howard” Lim
Hilary L. Preston (pro hac vice)
Siho “Scott” Yoo (pro hac vice)
VINSON & ELKINS L.L.P.
hlim@velaw.com
hpreston@velaw.com
syoo@velaw.com
ChoirockIPRService@velaw.com
FOR PATENT OWNER:
Jennifer C. Bailey
Callie Pendergrass
Megan J. Redmond (pro hac vice)
Clifford T. Brazen
ERISE IP
Jennifer.Bailey@EriseIP.com
Callie.Pendergrass@EriseIP.com
Megan.Redmond@EriseIP.com
Cliff.Brazen@EriseIP.com