UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DYNACRAFT BSC, INC.,
`Petitioner
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`v.
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`MATTEL, INC.,
`Patent Owner.
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`
`Case IPR2018-00040
`Patent 7,487,850
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`Title: CHILDREN'S RIDE-ON VEHICLES HAVING
`IMPROVED SHIFTER ASSEMBLIES
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`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................................... 1
`I.
`SUMMARY OF ARGUMENTS ................................................................................. 1
`II.
`III. STANDARDS FOR INSTITUTION ......................................................................... 5
`IV. BRIEF OVERVIEW OF THE ’850 PATENT ......................................................... 7
`A. Prior Art Children’s Shifters and Their Limitations ........................................ 7
`B. The ’850 Patent Specification ........................................................................ 11
`C. The Prosecution History of the ’850 Patent ................................................... 18
`D. Claim Construction ......................................................................................... 21
`V. PETITIONER’S PRIOR ART ................................................................................... 23
`A. Damon ............................................................................................................ 23
`B. Chi ................................................................................................................... 24
`VI. LEVEL OF ORDINARY SKILL IN THE ART ................................................... 31
`VII. PETITIONER’S ALLEGED GROUNDS OF UNPATENTABILITY ........... 32
`A. One of Skill in the Art Would Not Be Motivated To Combine Damon With
`Chi 32
`B. The Secondary Considerations Favor a Determination of Nonobviousness .. 36
`C. Specific Obviousness Challenges ................................................................... 37
`1. Claim 1 Is Not Obvious ............................................................................... 39
`i. The “Less Than All Movements” Limitation Is Missing in Chi Because
`Both of Chi’s Shift Paths Actuate Underlying Switches ................................ 39
`ii. Chi Does Not Disclose the Claimed Biasing Mechanism ....................... 42
`2. Dependent Claims 2 and 4 Are Not Likely To Be Found Obvious ............ 46
`3. Dependent Claim 6 Is Not Likely To Be Found Obvious ........................... 46
`4. Dependent Claim 7 Is Not Likely To Be Found Obvious ........................... 47
`5. Dependent Claims 10-14 Are Not Likely To Be Found Obvious .............. 52
`VIII. CONCLUSION .............................................................................................................. 52
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`i
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 6
`
`August Tech. Corp. v. Camtek Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011) ............................................................................ 6
`
`Free-Flow Packaging Int’l v Automated Packaging Sys.,
`IPR2016-00350 (PTAB June 27, 2016).......................................................... 2, 33
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ........................................................................................ 6, 33
`
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. Dec. 7, 2016) ................................................................ 2
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2015) .......................................................................... 22
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581 (PTAB Dec. 30, 2013) ....................................................... 6, 8, 9
`
`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 6
`
`Statutes
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`35 U.S.C. § 112 ........................................................................................................ 21
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`35 U.S.C. § 314 .......................................................................................................... 6
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`35 U.S.C. § 316 .......................................................................................................... 6
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`Other Authorities
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`37 C.F.R. § 42.104 ................................................................................................. 5, 6
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`37 C.F.R. § 42.108 ..................................................................................................... 6
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`ii
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`iii
`iii
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`TABLE OF EXHIBITS
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`Exhibit #
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`Exhibit Description
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`U.S. Patent No. 5,644,114 to Neaves
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`U.S. Patent No. 4,736,648 to Perego
`
`U.S. Patent No. 6,921,870 to Lan
`
`U.S. Patent No. 5,173,591 to Perego
`
`Declaration of Dan Damon
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`The Merriam-Webster Dictionary, 1998, pp. 49, 322
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`iv
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`I.
`
`INTRODUCTION
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`Patent Owner Mattel, Inc. (“Mattel”) submits this preliminary response to
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`the Petition by Dynacraft BSC, Inc. (“Petitioner”) requesting inter partes review
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`(“IPR”) and the cancelling of claims 1, 2, 4, 6, 7 and 10-14 (“the challenged
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`claims”) of U.S. Patent No. 7,487,850 (“’850 patent,” attached to Petition as Ex.
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`1001). The Patent Trial and Appeal Board should deny the Petition. When
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`Petitioner’s references and the challenged claims are reviewed in light of the
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`controlling Graham factors, including the secondary considerations of
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`nonobviousness (that Petitioner never raises), it becomes apparent that Petitioner
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`has failed to establish a reasonable likelihood that it will prevail with respect to any
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`of the challenged claims.
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`II.
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`SUMMARY OF ARGUMENTS
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`The Petition should be denied for at least the following reasons:
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`(1) There is no motivation to combine Petitioner’s references. Petitioner
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`and its expert pay little mind to motivation to combine these references, essentially
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`stating that motivation is present because (1) both of its references – published
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`patent applications U.S. 2005/0056474 (“Damon”) and U.S. 2005/0087033 (“Chi”)
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`– generally “disclose battery-powered…toy vehicles for children having a
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`manually or user operated, speed selector switch mechanism,” and (2) “a person
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`skilled in the art…would be looking for features or technology that enhance the
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`1
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`product for children, so would look to Chi for safety features and for enhancing
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`children’s experience.” (Petition at 23-24, citing Ex. 1005 at ¶ 58.) These sorts of
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`conclusory motivations have been found insufficient in previous IPR requests, and
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`they are insufficient here. Free-Flow Packaging Int’l v Automated Packaging Sys.,
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`IPR2016-00350, Paper 7 at 11-12 (PTAB June 27, 2016) (motivation cannot be
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`shown by arguing that the references “pertain to the same problem” and thus one
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`of skill would “look to both references to obtain advantages of the other”); In re
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`Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. Dec. 7, 2016) (conclusory
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`statements alone are insufficient). Neither Petitioner nor its expert ever explain
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`why one of skill would make the combinations it suggests.
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`
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`Moreover, the Petition’s two conclusory “motivations” are also inaccurate.
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`First, while both references relate to battery-powered children’s ride-ons
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`(“BPROs”) generally, they pertain to very different aspects of them – Damon to a
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`secure retaining mechanism for the battery, and Chi to an easily operable and
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`realistic speed/direction shifter. The problem underlying the ’850 patent is very
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`different, and is in fact antithetical to the goal of Chi. While the ’850 patent seeks
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`to make shifting more deliberate and to “hinder a child’s ability to rapidly move
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`[the] shifter handle,” Chi explicitly aims to keep it “easily operated” and
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`“realistic.” (Compare Ex. 1001 at 7:24-28 with Ex. 1004 at Abstract, ¶ 0001-02.)
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`Chi’s design and two shift paths still allow it to still easily be “slammed” almost
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`2
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`immediately from high forward speed to reverse by the child, or vice versa,
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`wearing the various components of the drive train and making the ride-on more
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`dangerous for its occupants. This was the precise situation that the ’850 patent
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`sought to eliminate. Further, one of skill in the art would not “look to Chi for
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`safety features,” as the Petitioner and its expert allege. Chi describes a primarily
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`aesthetic feature to make shifting appear realistic. One of skill would not view it
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`as a safety feature. (Ex. 2005, Damon Decl. at ¶¶ 5-6.)
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`(2) Even if it were combined with Damon, Chi does not disclose the
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`claimed shift paths and biasing mechanism of claim 1, or the rotatable actuator of
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`claim 7 of the ’850 patent. This is not a surprise, given that Chi was not intended
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`to remedy the same safety and durability concerns as the ’850 patent. With respect
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`to claim 1, Petitioner argues that Chi discloses “two non-collinear shift paths.”
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`(Petition at 29-30.) Both of these shift paths, however, actuate one of the
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`underlying switches to change the vehicle’s driving configuration. (Ex. 1004 at
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`Figs. 4, 6, and 8.) In contrast, the ’850 patent requires that “less than all
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`movements” of the shifter actuate the underlying switches. Moreover, the torsion
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`spring of Chi that Petitioner equates to the claimed “biasing mechanism” only
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`assists in slamming the shifter. The torsion spring of Chi does not further inhibit
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`shifting as the biasing mechanism in the ’850 patent does, it is merely a centering
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`3
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`mechanism similar to ones already distinguished during the prosecution of the ’850
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`patent.
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`With respect to claim 7, Chi also clearly fails to teach the “rotatable
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`actuator.” The specification and figures of Chi unmistakably disclose that its flat
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`switch plate (which Petitioner equates to the claimed rotatable, cylindrical
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`actuator) can only move in a straight line forward or backward. (Id. at ¶ 20
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`(“switch plate 6 is able to move forwards and backwards along with gearshift lever
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`2”), ¶ 24 (“forward movement of the shift plate”), ¶ 24 (“rearward movement of
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`the switch plate”), Figs. 4-8.) Petitioner’s assertion that this is the claimed
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`rotational movement of the actuator ignores the clear teachings of Chi.
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`(3) There are also several relevant secondary considerations of
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`nonobviousness, all of which support the nonobviousness of the challenged claims.
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`As with several other BPRO features that Petitioner now claims are obvious, it
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`should first be noted that Petitioner copied Mattel’s existing patented shifter that is
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`practiced by the ’850 patent for its own product. (Ex. 2005, Damon Decl. at ¶ 4.)
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`It was only after Mattel alerted Petitioner of the patent, and ultimately had to file
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`suit to protect its rights, that Petitioner brought its obviousness allegation. By
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`installing this shifter, Petitioner was able to release a product that adequately
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`protected the child, as well as the mechanical and electrical components of the
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`vehicle, from excessive transitions from high speed to reverse – a problem that is
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`4
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`especially present in BPROs with larger, 24-volt batteries like Petitioner’s
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`infringing product. This allowed Petitioner to design and safely release a product
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`that has become a massive commercial success. Finally, as the prior art itself
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`teaches, there was a long-felt need in the art for the rapid shifting problem in
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`children’s BPROs to be solved. Thus, while Petitioner never establishes a prima
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`facie case of obviousness, these objective considerations would effectively rebut
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`one in this case even if it did.
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`For at least these reasons, Mattel submits that Petitioner has failed to
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`establish that it is likely to succeed in its obviousness challenge, and the Board
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`should decline to institute an IPR for any of the challenged claims of the ’850
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`patent.
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`III. STANDARDS FOR INSTITUTION
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`The rules governing petitions for inter partes review require the petitioner to
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`identify certain basic information about its challenge. Importantly, a petition
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`challenging a claim must identify (i) “specific statutory grounds … on which the
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`challenge to the claim is based,” (ii) “[h]ow the challenged claim is to be
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`construed,” and (iii) “[h]ow the construed claim is unpatentable under the statutory
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`grounds.” 37 C.F.R. § 42.104(b)(2)–(4).
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`The Board, in considering whether to institute a trial, determines whether or
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`not a party has met the statutory institution standard; a petition for inter partes
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`review may be granted when “the information presented in the petition … shows
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`that there is a reasonable likelihood that the petitioner would prevail with respect to
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`at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37
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`C.F.R. § 42.108(c). A petitioner bears the burden of showing that this standard has
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`been met. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14,
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`2012) (“The Board …may institute a trial where the petitioner establishes that the
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`standards for instituting the requested trial are met….”). A petitioner also bears the
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`burden of proving unpatentability by a preponderance of the evidence. 35 U.S.C. §
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`316(e).
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`A petitioner making an obviousness challenge must show where each
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`claimed limitation is taught in the prior art. See, e.g., Vizio, Inc. v. Int’l Trade
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`Comm’n, 605 F.3d 1330, 1342–43 (Fed. Cir. 2010); August Tech. Corp. v. Camtek
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`Ltd., 655 F.3d 1278, 1287 (Fed. Cir. 2011); see also 37 C.F.R. § 42.104(b)(4). If a
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`petitioner asserts that a combination of prior art renders a claim unpatentable, it
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`must “set forth sufficient articulated reasoning with rational underpinning to
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`support its proposed obviousness ground.” SAS Inst., Inc. v. ComplementSoft, LLC,
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`IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013) (citing KSR Int’l Co. v.
`
`Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord ActiveVideo Networks, Inc. v.
`
`Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012).
`
`6
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`It is a petitioner’s burden to provide sufficient grounds for institution. Here,
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`Petitioner has failed to meet that burden.
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`IV. BRIEF OVERVIEW OF THE ’850 PATENT
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`A. Prior Art Children’s Shifters and Their Limitations
`As one of the leaders in the BPRO category through its Fisher-Price’s Power
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`Wheels brand, Mattel has long sought to make these products safer for children
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`and more durable against the often violent and destructive ways that children play
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`with them. One safety and durability issue long present in prior art BPROs relates
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`to the speed/direction shifter. BPROs commonly include a shifter that can change
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`the drive mode of the vehicle from forward to reverse. In certain cases, multiple
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`underlying switches are utilized to create a three-position shifter to transition the
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`vehicle from reverse speed (in the rear position), to a low forward speed (in the
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`middle position), to a high forward speed (in the forward position). One of
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`Mattel’s earlier patents, U.S. Patent No. 5,644,114 to Neaves (“Neaves”), shows
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`this configuration:
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`7
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`(Ex. 2001, Neaves at Fig. 1.)
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`When gear actuator 18 is in position C, reverse rocker switch 16 is in the
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`reverse position and speed switch 14 is in the low position. This results in the ride-
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`on operating in reverse at a slow speed. Moving gear actuator 18 to position A
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`results in the reverse switch 16 being toggled to the forward position, while the
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`speed switch 14 remains in the low position, resulting in the low forward speed
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`configuration. Finally, when the gear actuator is pressed to position B, speed
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`switch 14 is toggled to the high speed position (while reverse switch 16 is still in
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`the forward position) and puts the ride-on in high forward speed configuration.
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`(Id. at 3:49-65 and Fig. 1.)
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`8
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`Neaves explains two of the primary, and often contradictory, design
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`considerations that permeate BPROs. First, BPRO advances must be “durable
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`enough to withstand the often times destructive way that a child uses the vehicle.”
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`(Id. at 1:50-59.) Yet, at the same time, BPRO features must be developed against
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`very strict cost constraints, and components must be designed as inexpensively as
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`possible and be easy to assemble. (Id.) The design in Neaves was one iterative
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`step in making BPRO shifter easier to operate, but also presented some notable
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`limitations. One problem was the child’s ability, and even tendency, to bypass the
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`middle low speed by violently “slamming” the shifter almost instantly from reverse
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`speed to high forward speed, and vice versa. This resulted not only in potential
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`safety problems – head snap-back and lurching, for example – but also puts
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`considerable mechanical and electrical stress on the BPRO due to the almost
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`instantaneous changes in speed and direction.
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`One of the references cited during the prosecution of the ’850 patent, U.S.
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`Patent No. 4,736,648 to Perego (“Perego 1988”), mentioned a similar problem in
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`the prior art. Specifically, Perego 1988 states that these vehicles “suffer from the
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`disadvantage that the reverse gear can be engaged by children while the vehicle is
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`at top speed.” (Ex. 2002, Perego 1988 at 1:13-15.) This could result in “damage
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`to the electric motor and also sudden reverse and forward accelerations of the
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`vehicle, which could cause the child to fall out of the vehicle.” (Id. at 2:38-41.)
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`9
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`Perego 1988 attempted to alleviate this problem in 1988 by including two separate
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`levers – one for speed and one for direction – that were mechanically interlinked so
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`as to automatically bring the speed lever to low speed when the reverse lever was
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`activated. (Id. at Abstract, 1:19-37.)
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`High/Low
`Lever
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`Forward/Reverse Lever
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`
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`(Id. at Fig. 1.)
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`
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`In Perego 1988, when reverse was pulled back and engaged (by lever 15
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`activating switch 23), tongue 25 would come into contact with tongue 24, which
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`would in turn pull back lever 14, and in turn switch 22, to simultaneously put the
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`vehicle in low speed. As Perego 1988 notes:
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`10
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`If the driver of the children's vehicle decides to engage reverse gear
`with the vehicle moving at a relatively high speed, it will be seen that,
`by moving the lever 15 from the position shown in FIG. 3 to the
`position shown in FIG. 4, the tongue 25 will act upon the tongue 24,
`thus causing the lever 14 to shift automatically to the low speed
`position (bottom gear). This makes it possible to prevent damage to
`the electric motor and also sudden reverse and forward accelerations
`of the vehicle, which could cause the child to fall out of the vehicle.
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`(Id. at 2:31-37)
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`This mechanism, while a potential solution, was a more expensive and
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`complicated way to address the underlying issue. It required multiple shifters at an
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`added cost, and its use was less intuitive for a child that the three-position shifter
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`of, e.g., Neaves, because multiple shifters had to be actuated in the proper order to
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`achieve the desired forward speed.
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`B. The ’850 Patent Specification
`The ’850 patent, entitled “Children’s Ride-on Vehicles Having Improved
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`Shifter Assemblies,” was filed on April 24, 2006. (Ex. 1001.) As stated in the
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`specification, the ’850 patent aims at providing speed shifting assemblies for a
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`battery-powered children’s ride-on toys that utilize “aggravated” or “divergent”
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`shift paths “which hinder a child’s ability to rapidly move [the] shifter handle
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`between the endmost shift positions[.]” (Id. at 7:25-30.) By effectively breaking
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`up the shift path into multiple required motions, the aggravated shift path “reduces
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`11
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`the child’s ability to place an unnecessary load on [the] drive assembly, and
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`prolongs the life of the children’s ride-on vehicle.” (Id. at 8:34-37.) The
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`aggravated path effectively impedes the child’s ability to “slam” the shifter from
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`one extreme to the other.
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`The specification illustrates the aggravated shift paths as an overall “Z”
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`shaped path, i.e., slot 134:
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`
`
`
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`(Id. at Figs. 10 and 23 (annotations added).)
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`12
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`In light of the inclusion of slot 134, the shifter handle 114 cannot be moved
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`from the uppermost position (high-speed forward) to the lowermost position (low-
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`speed reverse) without the child performing three distinct, separate movements of
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`the handle. In turn, the child driver (or passenger) cannot immediately pull the
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`shifter from one extreme to the other. As shown below with respect to the prior
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`art, this solved a considerable safety and wear issue caused by traditional, more
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`straight-line shifters.
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`The actuator assembly is specifically described as being attached to the shift
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`handle in a way that allows the diagonal shift paths (the portions highlighted green
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`above) to activate a switch, but the horizontal portion in the middle (shown in red
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`above) does not. As the patent specifically explains:
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`When the velocity control assembly 104 shown in FIGS. 10-15 is
`fully assembled, some, but not all, movement of shifter handle 114
`causes rotational movement of actuator 115. For example, if slot 134
`were shaped to permit a user to move shifter handle 114 through a
`shift path defining a plane perpendicular to the axis of rotation R, the
`movement would cause actuator 115 to rotate about the axis of
`rotation R through a distance directly proportional to the distance
`shifter handle 114 is moved. In contrast, moving shifter handle 114
`through a shift path defining a plane that is parallel to the axis of
`rotation R causes shifter handle 114 to pivot within slot 142 about
`pivot axis P without rotating or otherwise moving actuator 115. It
`should be appreciated that moving shifter handle 114 through a shift
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`13
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`

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`path defining a plane that is neither perpendicular nor parallel to the
`axis of rotation R both causes actuator 115 to rotate about the
`rotational axis R, and causes to shifter handle 114 to pivot about the
`pivot axis P.
`
`(Ex. 1001 at 10:31-47.)
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`Figures 11-15 show this arrangement and its sequential steps:
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`Step 1:
`
`Step 2:
`
`First position (high forward speed
`configuration).
`
`
`
`
`
`Second position (low forward speed
`configuration) – pulling handle 114 to
`right side of middle, horizontal portion
`of the shift path 134 causes high speed
`rocker switch 110 to be deactivated by
`rotating actuator 115 and attached cams
`150.
`
`14
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`

`

`Step 3:
`
`Step 4:
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`Fourth position (bottom, low reverse
`speed position) – pulling handle to
`lowest position causes reverse speed
`rocker switch 108 to be activated by
`rotating actuator 115 and attached
`cams 150.
`
`
`
`Third position (still low forward speed
`configuration) – pulling handle to left
`side of middle, horizontal portion of the
`shift path does not change either rocker
`switch (110 or 108), which remain in the
`same configuration shown in Figure 12.
`This is because actuator 115 is not rotated
`further during this movement. Instead,
`handle 114 is free to pivot with respect to
`actuator 130 during this movement about
`pivot pin 136.
`
`
`(Id. at Figs. 11-15 (annotations added).)
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`The specification describes the actuator shown in Figures 11-15 as “a
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`cylindrical or other tubular member that…is freely rotatable about rotational axis
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`15
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`

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`R.” (Id. at 10:26-30.) The ’850 patent describes the clear benefits of the
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`aggravated shift path and rotatable actuator shown in, inter alia, Figs. 11-14:
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`As indicated above, slot 134 in top member 130 functions as a guide
`for shifter handle 114, and may thus be considered a portion of
`actuator assembly 112. As shown in FIGS. 10-14, slot 134 may define
`an “aggravated” shift path that reduces the potential for damage to the
`drive assembly, such as responsive to rapid reconfiguring of the drive
`assembly between a low-speed reverse drive configuration and a high-
`speed forward drive configuration.
`
`(Id. at 11:50-57.)
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`In addition to the aggravated shift path, the ’850 patent also describes a
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`biasing mechanism that further slows the shifting process to help protect the child
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`and vehicle by adding yet another safeguard:
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`As shown in FIG. 15, the actuator assembly 112 associated with the
`illustrative velocity control assembly 104 provides an illustrative,
`non-exclusive example of an actuator assembly that includes a biasing
`mechanism 160. The illustrated biasing mechanism 160 is adapted to
`urge shifter handle 114 towards the second shift position (shown in
`FIG. 12). In FIG. 15, biasing mechanism 160 takes the illustrative,
`non-exclusive form of a torsion spring 162 dimensioned to be coupled
`with actuator 115 by pivot pin 136, and having a first end 162a and a
`second end 162b. First end 162a abuts a stop 164 on actuator 115,
`while second end 162b torsionally abuts an opposing wall 166 within
`the slot cover. The torsion spring thus applies a biasing force B
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`16
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`

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`against opposing wall 166 that urges shifter handle 114 towards the
`second shift position (shown in FIG. 12). As described above, biasing
`mechanism 160 requires a child wanting to move shifter handle 114
`from the second position (shown in FIG. 12) to the third position
`(shown in FIG. 13) to exert sufficient force upon shifter handle 114 to
`overcome the bias imparted on the shifter handle by the biasing
`mechanism. As with the “aggravated” shift path, biasing mechanism
`160 thus increases the time required for a child to move shifter handle
`114 between shift positions corresponding to the low-speed reverse
`drive configuration (shown in FIG. 11) and the high-speed forward
`drive configuration (shown in FIG. 14).
`
`(Id. at 12:1-25 (emphasis added).)
`
`
`
`17
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`

`

`(See also id. at Fig. 15 (annotations added).)
`
`C. The Prosecution History of the ’850 Patent
`The application that became the ’850 patent was filed on April 24, 2006. On
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`June 23, 2008, the Examiner rejected the original claims based on a combination of
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`U.S. Patent No. 6,921,870 to Lan (“Lan”) in view of U.S. Patent No. 5,173,591 to
`
`Perego (“Perego 1992”). According to the Examiner, Lan disclosed non-colinear
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`shift paths and a switch assembly to configure an electric vehicle in different speed
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`configurations. (Ex. 1002 at 84-85.) Lan discloses a shifter in a child’s electric
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`vehicle with a ball joint connection and different possible shift paths, including L-
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`shaped, Z-shaped, H-shaped or U-shaped paths:
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`FIG. 16
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`FIG. 17
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` (Ex. 2003, Lan at 2:35-46 and Figs 2, 16,17.)
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`While Lan did not disclose a biasing mechanism, the Examiner asserted that
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`Perego 1992 disclosed this limitation, and in combination with Lan rendered the
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`claims obvious. The Examiner alleged that “[i]t would have been obvious to one
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`of ordinary skill in the art at the time the invention was made to modify the
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`apparatus of Lan with the biasing mechanism of Perego 1992 in order to provide
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`the advantage of maintaining the vehicle velocity setting in low speed forward,
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`which is obviously the safest.” (Ex. 1002 at 85.) Perego 1992 was a shifter for a
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`child’s vehicle that was made in the mold of an adult vehicle’s manual gear shifter,
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`with a center-biased handle surrounded by a rubber sheath:
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`(Ex. 2004, Perego 1992 at Fig. 1.)
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`19
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`A look at the alleged Perego 1992 biasing mechanism shows it to be a
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`“thrust spring (20),” which was essentially a centering mechanism to help push the
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`shifter to its upright position. According to Perego 1992, “when lever 12 is
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`released, the thrust of the spring 20 returns the device to the central or second
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`position shown in Fig 2[:]”
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`(Id. at Fig. 2 (annotations added).)
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`In response to the Examiner’s rejection based on Lan and Perego 1992, the
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`claims were amended to include a limitation regarding the shifter handle being
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`coupled to an actuator where less than all of the movements of the shifter handle
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`cause movement of the actuator. (Ex. 1002 at 100-13.) It was explained to the
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`Examiner that these limitations were not disclosed by the prior art references –
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`20
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`rather, the movement of the shifter handle always moved the opposite, free end of
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`the handle and thereby always actuated an underlying switch. (Id. at 114-17 (“Lan
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`et al. discloses an operation bar where movement of the handgrip section always
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`cause movement of the free end.”).) The Examiner allowed the claims following
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`these arguments and amendments. (Id. at 124.)
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`D. Claim Construction
`Petitioner’s obviousness challenge includes a proposed construction of the
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`entirety of the clause “biasing mechanism that urges the shifter handle towards a
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`selected one of the shift positions.” (Petition at 10.) Petitioner argues that this is a
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`“means-plus-function” claim element (id.), and that “the ‘biasing mechanism’ must
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`be construed to cover the springs described in the specification and their
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`equivalents pursuant to 35 U.S.C. § 112(f).” (Id. at 12.) However, the claim
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`element is not written in means-plus-function format. Perhaps understanding this
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`reality, Petitioner argues in the alternative that even if the claim is not construed in
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`means-plus-function terms, then the plain and ordinary meaning renders the claims
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`invalid regardless. (Id.) There is no need to construe in its entirety the lengthy
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`limitation that Petitioner raises, much less construe it as a means-plus-function
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`term. The Board need only give these terms their ordinary and customary
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`meaning, starting with the term “biasing mechanism.”
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`21
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`Claim terms are to generally be given their ordinary and customary meaning.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2015). A patent’s
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`specification is ordinarily the best source for determining this ordinary meaning.
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`Id. The ordinary meaning of “mechanism” is “a piece of machinery.” (Ex. 2006,
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`The Miriam Webster Dictionary at 322.) The specification makes clear that this is
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`precisely how the term is being used in the patent because the “biasing
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`mechanism” is merely a mechanical part of the larger actuator assembly.
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`Specifically, the patent states, e.g,: “As shown in FIG. 15, the actuator assembly
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`112…includes a biasing mechanism 160.” (Ex. 1001 at 12:1-5 (emphasis added).)
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`(See also id. at Fig. 15 (annotations added).)
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`22
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`The ordinary meaning of “biasing” is “prejudicing.” (Ex. 2006, The Miriam
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`Webster Dictionary at 49.) The specification shows that the term biasing is being
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`used precisely in line with this ordinary meaning because the “biasing mechanism”
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`is “adapted to urge shifter handle 114,” and that the “child must overcome the bias
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`conferred upon the shifter handle by the biasing mechanism.” (E.g., Ex. 1004 at
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`8:47-50, 12:4-6.) Thus, “biasing” should be construed as “prejudicing or urging.”
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`Taken together, “biasing mechanism” should be given its plain and ordinary
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`meaning, which is “a portion that prejudices or urges.” Similarly, the latter portion
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`of this clause (“that urges the shifter handle towards a selected on of the shift
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`positions”) should also be given its plain and ordinary meaning. The specification
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`provides extensive examples of where these shift positions are and how the biasing
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`mechanism works within the larger shifter assembly. (E.g., Ex. 1001 at 8:47-50;
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`12:4-6; 14:61-15:65.)
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`The Board should reject Petitioner’s argument that this element is a means-
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`plus-function term, and instead simply apply the ordinary meaning of the claim
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`language.
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`V.
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`PETITIONER’S PRIOR ART
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`A. Damon
`Damon is a Mattel reference that relates to an improved battery retainer
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`device for a child’s BPRO. (Ex. 1003 at Abstract.) There is reference in Damon to
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`a “speed switch 110” and “direction switch 112,” but little description beyond a
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`characterization that they are two separate inputs that the child could access on the
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`dashboard of the ride-on vehicle to set the speed and direction of the BPRO. (See
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`id. at ¶ 0039.) The majority of the Damon specification relates to the specific
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`battery retainer to which its claims pertain. This is not surprising given the focus
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`of Damon, and Petitioner relies on it primarily for the background battery-powered
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`ride-on features not disclosed in its other reference.
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`One noteworthy disclosure from Damon