Toy manufacturers battle over transforming patent. CHOIROCK v. SPIN MASTER

Toy manufacturers battle over transforming patent. CHOIROCK v. SPIN MASTER

After a patent is granted it is not immune from attack. Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.  The inventor and the patent examiner do their best to consider all the relevant prior during the patent application process, but sometimes relevant prior art is overlooked.  If a member of the public discovers a piece of prior art which anticipates a patent which has been granted they may request an inter partes review of the patent.  An inter partes review can result in invalidation of some or all of the claims of a patent.

The burden of proof in an inter partes review is on the person that initiated the review.  An inter partes review will be initiated if the petitioner demonstrates a reasonable likelihood of prevailing in showing anticipation or obviousness.  If inter partes review is granted, the petitioner must prove by a preponderance of the evidence that the claims of the challenged patent are unpatentable.  The Patent Trial and Appeal Board decides whether the petitioner has met this burden.

If the Board’s decision is appealed by either the petitioner or the respondent, the decision of the Board will be reviewed to see if it supported by substantial evidence.  The Court of Appeals for the Federal Circuit hears appeals from the Board and will not substitute its own opinion if the Board’s decision is supported by substantial evidence.  This is common practice in courts, the original court scrutinizes the facts and applies the law.  Appellate courts review the record to see if the evidence is sufficient to support the factual findings and the law was applied correctly, but the facts of the case are not scrutinized again.

CHOIROCK CONTENTS FACTORY CO.v. SPIN MASTER, LTD. 2019-1335 (C.A.F.C. 2020) illustrates a case where the Boards factual findings were found to be supported by substantial evidence.

The respondent in this case owns U.S. Patent No. 7,306,504 which is directed to a transformable toy adapted to open
and close to reveal and conceal a figurine.  In 2016, the petitioner requested inter partes review of all the claims of the ’504 patent, alleging several grounds of unpatentability. The first is an English translation of Japanese Patent Publication No. S60–128693 to Maruyama (“Maruyama ’693”). Maruyama ’693 discloses what it refers to as a “shape-changing toy.” The toy consists of a figure, such as a figurine of an animal or a robot, which can be hidden when the toy is in the closed position.  The second prior art reference is U.S. Design Patent No. 287,258 to Maruyama (“Maruyama ’258”). Maruyama ’258 also discloses figures illustrating a toy robot that can be reconfigured into a ball.The third prior art reference is U.S. Patent No. 4,516,948 to Obara. The Obara patent discloses a toy robot that can be reconfigured into a tractor trailer truck.

Inter partes review was granted and the Patent Trial and Appeal Board found that the Maruyama ’693 anticipated
claims 5 and 6 of the ’504 patent.  The Board held that the petitioner failed to demonstrate that the remaining claims of the ‘504 patent were anticipated by the prior art.  The petitioner appealed the Boards decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit found no reason to disturb the Board’s findings.   With respect to the Maruyama ’258 and Obara prior art the Federal circuit noted that the petitioner had pointed to several features that would have anticipated the ‘504 patent.  In its decision the Board detailed how those features were different from the ‘504 patent.  The Federal Circuit concluded that  substantial evidence supported the Board’s finding that the petitioner did not prove anticipation.

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