Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: April 17, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`
`v.
`
`MATTEL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00040
`Patent 7,487,850 B2
`_______________
`
`
`
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A WORTH, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: April 17, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`
`v.
`
`MATTEL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00040
`Patent 7,487,850 B2
`_______________
`
`
`
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A WORTH, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`
`I. INTRODUCTION
`
`Dynacraft BSC, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`requesting an inter partes review of claims 1, 2, 4, 6, 7, and 10–14 (“the
`
`Challenged Claims”) of U.S. Patent No. 7,487,850 B2 (Ex. 1001, “the
`
`’850 patent”). Mattel, Inc. (“Patent Owner”) filed a Preliminary Response to
`
`the Petition. Paper 6 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). The Board considers the Petition on behalf of the Director.
`
`37 C.F.R. § 42.4(a).
`
`Upon considering the Petition, Preliminary Response, and the
`
`evidence of record, we determine that Petitioner has shown a reasonable
`
`likelihood that it would prevail with respect to at least one of the challenged
`
`claims.
`
`A.
`
`Related Matters
`
`Petitioner states the following as a related matter:
`
`Mattel, Inc. (“Mattel”) and its alleged wholly-owned
`subsidiary and exclusive licensee, Fisher-Price, Inc., asserted
`the ’850 patent in the United States District Court for the
`District of Delaware in an ongoing case originally captioned
`Fisher-Price, Inc. v. Dynacraft BSC, Inc., Case No. 1:17-cv-
`00051-LPS-CJB. That case has been transferred to the United
`States District Court for the Northern District of California and
`is now captioned Fisher-Price, Inc. v. Dynacraft BSC, Inc.,
`Case No. 3:17-cv-03745-PJH.
`
`Pet. 1. Patent Owner also identifies as a related matter the district court suit
`
`identified by Petitioner. Paper 4, 1.
`
`2
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`
`Additionally, however, Patent Owner identifies as related matters the
`
`following three inter partes reviews, each filed by Petitioner, Dynacraft,
`
`against patents owned by Patent Owner, Mattel:
`
`IPR2018-00038 ((challenging patentability of claims of U.S. Patent
`
`No. 7,222,684, which is directed to battery powered “toy vehicles that may
`
`be ridden by people”);
`
`IPR2018-00039 ((challenging patentability of claims of U.S. Patent
`
`No. 7,950,978, which is a continuation of the application that matured into
`
`the ’684 patent); and
`
`IPR2018-00042 (challenging patentability of claims of U.S. Patent
`
`No. 7,621,543, which is directed to blow-molded wheels for a toy ride-on
`
`vehicle). Paper 4, 1.
`
`B.
`
`Asserted Ground
`
`Petitioner asserts that the Challenged Claims are unpatentable under
`
`35 U.S.C. § 1031 based on Damon2 and Chi3.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2012. Because the
`application for the patent at issue in this proceeding has an effective filing
`date before that date, we refer to the pre-AIA versions of the statute.
`
`2 U.S. Pat. Publ. No. US2005/0056474 A1, published March 17, 2005
`(Ex. 1003, “Damon”).
`
`3 U.S. Pat. Publ. No. US2005/0087033 A1, published April 28, 2005
`(Ex. 1004, “Chi”).
`
`3
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`
`Petitioner also relies on the opinion testimony of Dr. Michael
`
`Sidman4. See Ex. 1005. Dr. Sidman opines that the Challenged Claims
`
`“would have been obvious” based on Damon and Chi. Ex. 1005 ¶ 2.
`
`C.
`
`The ’850 Patent
`
`The ’850 patent relates generally to reduced-scaled vehicles designed
`
`for use by children. Ex. 1001, 1:13–14; see Figure 1. Typically, these
`
`vehicles use battery-powered motors to move the vehicle. Id. at 1:19. These
`
`vehicles also include an actuator foot pedal and a “transmission” lever that
`
`allows the child to select the speed and/or direction of the vehicle.
`
`Id. at 1:21–27. The ’850 patent provides a comprehensive disclosure of the
`
`various systems and components required to provide power from the
`
`batteries to the wheels, and the systems and components required to control
`
`the direction and speed of the reduced-scale vehicle. See, e.g., Ex. 1001,
`
`3:54 (steering assembly 26), 4:30 (battery assembly 60), 5:1 (drive assembly
`
`30), 6:20 (switch assembly 106), 6:35 (velocity control assembly 104), 6:56
`
`(actuator assembly 112). These various assemblies all interact in controlling
`
`the speed and direction of the reduced-scale vehicle.
`
`Ride-on or ride-in electric reduced-scale vehicles, in general, are well-
`
`known. See, e.g., Ex. 1002, 84 (Examiner’s statement in Office Action that
`
`“Applicant admits the prior art of lines 1–19 of claim 1 in the background of
`
`the invention, and Examiner notes that such vehicles are extremely old and
`
`
`4 Dr. Sidman earned Bachelor’s and a Master’s degree in Electrical
`Engineering from Northeastern University, and earned a Ph.D. from
`Stanford University. Ex. 1005, ¶¶ 4, 5; see also Ex. 1006 (Dr. Sidman’s
`CV). Dr. Sidman is a named inventor on eighteen U.S. patents. Ex. 1005
`¶ 6.
`
`4
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`well known in the children's electric vehicle art.”). The disclosed and
`
`claimed invention (see e.g., Ex. 1001, 1:1–2 (“Children's Ride-On Vehicles
`
`Having Improved Shifter Assemblies” (emphasis added)), as well as the
`
`dispute between the parties, focuses on actuator, or shifter, assembly 112.
`
`Figure 10 from the ’850 patent is reproduced below.
`
`Figure 10 from the ’850 patent is an exploded isometric view of a
`velocity control assembly, including actuator assembly 112.
`
`Actuator assembly 112, shown in Figure 10, may have various
`
`
`
`structural configurations, thus allowing shifter handle 114 to be moved along
`
`a wide variety of shift paths. Ex. 1001, 7:4–6. Figures 6–8 each provide
`
`5
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`examples of different possible shift path configurations. Id. at 7:6–8.
`
`Exemplary figure 6 is reproduced below.
`
`Figure 6 is a schematic diagram showing illustrative
`shift positions and shift paths
`
`
`
`In Figure 6, the circles generally indicate examples of shift positions,
`
`and the lines generally indicate examples of shift paths. Id. at 7:8–10. The
`
`dotted or “phantom” lines in Figure 6 indicate that the actuator assembly
`
`may have any number of shift positions and shift paths. Id. at 7:15–18.
`
`As disclosed in the ’850 patent, the shift positions and shift paths
`
`“may be arranged in virtually any conceivable manner, such as to resemble,
`
`or simulate, the shifter mechanisms of a manual or automatic transmission
`
`for a full-scale motorized vehicle.” Id. at 7:18–22. Some shift paths may be
`
`co-linear with other shift paths, while some shift paths may be at divergent
`
`angles from other shift paths. Id. at 7:22–24. Multiple adjoining shift paths
`
`that are not co-linear with each other may be described as “aggravated” or
`
`“divergent” shift paths. Id. at 7:24–26. An “aggravated” or “divergent”
`
`shift path hinders a child's ability to rapidly move shifter handle 114
`
`between shift positions along the aggravated shift path. Id. at 7:26–28. As
`
`explained below, this hindrance is desirable in some instances, and is a basic
`
`issue in the dispute between the parties.
`
`6
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`
`Actuator assembly 112 shown in Figure 9 includes four shift positions
`
`116, 118, 120 and 122, each of which corresponds to a particular drive
`
`configuration. For example, shift position 116 may correspond to a low-
`
`speed reverse drive configuration, shift positions 118 and 120 may each
`
`correspond to a low-speed forward drive configuration, and shift position
`
`122 may correspond to a high-speed forward drive configuration. Ex. 1001,
`
`7:31–52.
`
`Actuator assembly 112 shown in Figure 9 also includes three
`
`adjoining shift paths 124, 126 and 128. Id. at 7:53–54. Because these shift
`
`paths are not co-linear with each other, the overall shift path formed by
`
`adjoining shift paths 124, 126 and 128 may be described as an “aggravated”
`
`shift path, which hinders the child’s ability to rapidly move shifter handle
`
`because the child must change the direction of the forces applied to shifter
`
`handle 114 when moving from one shift position to another. Id. at 7:54–8:8.
`
`The benefit of aggravated shift paths is that they reduce the potential
`
`for damage to the drive assembly when shifting, for example, from a reverse
`
`drive configuration to a high-speed forward drive configuration. Id. at 8:8–
`
`24. Rapidly shifting between these drive configurations while the drive
`
`assembly is operating places substantial loads on the mechanical and/or
`
`electrical components of drive assembly 30. Id. The aggravated shift path is
`
`intended to reduce the loads applied to the various components of the drive
`
`assembly 30 compared to a having a linear shift path. Id. As described by
`
`Patent Owner, “violently ‘slamming’ the shifter almost instantly from
`
`reverse speed to high forward speed, and vice versa” results “not only in
`
`potential safety problems — head snap-back and lurching, for example —
`
`but also puts considerable mechanical and electrical stress on the BPRO
`
`7
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`[battery-powered ride-on] due to the almost instantaneous changes in speed
`
`and direction.” Prelim. Resp. 9.
`
`D.
`
`Representative Claim
`
`The ’850 patent includes 38 claims. The only claims challenged are
`
`claims 1, 2, 4, 6, 7, and 10–14. Among the Challenged Claims, claim 1 is
`
`the sole independent claim, and is reproduced below:
`
`1. A children’s ride-on vehicle, comprising:
`
`a body having at least one seat sized for a child;
`
`a plurality of wheels rotatably coupled to the body,
`wherein the plurality of wheels includes at least one driven wheel
`and at least one steerable wheel;
`
`a steering assembly comprising a steering mechanism
`adapted to receive steering inputs from a child sitting on the at
`least one seat, and a steering linkage adapted to convey the
`steering inputs to the at least one steerable wheel;
`
`a drive assembly, comprising:
`
`a motor assembly including at least one electric motor
`adapted to selectively drive the rotation of the at least one driven
`wheel;
`
`a battery assembly adapted to selectively energize the
`motor assembly, and
`
`a velocity control assembly adapted to selectively
`configure the drive assembly to be in a plurality of drive
`configurations, the velocity control assembly comprising:
`
`a switch assembly including at least one switch, wherein
`the switch assembly is adapted to be selectively configured
`between a plurality of velocity settings, and wherein each
`velocity setting in turn configures the drive assembly to be in a
`predetermined drive configuration;
`
`an actuator assembly adapted to receive user inputs from
`the child sifting on the at least one seat, wherein the actuator
`assembly includes:
`
`8
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`
`a shifter handle adapted to be selectively moved by the
`child between a plurality of shift positions along a plurality of
`shift paths, including between a first shift position and a second
`shift position along a first shift path, and a second shift position
`and a third shift position along a second shift path, wherein the
`first shift path is not co-linear with the second shift path; and
`
`a biasing mechanism that urges the shifter handle towards
`a selected one of the shift positions; and
`
`wherein the actuator assembly includes an actuator
`operatively coupled to the shifter handle, and less than all
`movements of the shifter handle cause movement of the actuator,
`and wherein the actuator configures the switch assembly to be in
`a first velocity setting when the shifter handle is in the first shift
`position, a second velocity setting when the shifter handle is in
`the second shift position, and a third velocity setting when the
`shifter handle is in the third shift position.
`
`Ex. 1001, 17:25–18:6 (emphasis added).
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`In an inter partes review, the Board gives claim terms in an unexpired
`
`patent their broadest reasonable interpretation in light of the specification of
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, a
`
`claim term generally is given its ordinary and customary meaning, as would
`
`be understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). The correct inquiry in giving a claim term its broadest reasonable
`
`interpretation in light of the specification is “an interpretation that
`
`corresponds with what and how the inventor describes his invention in the
`
`specification, i.e., an interpretation that is ‘consistent with the
`
`9
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
`
`2017) (citations omitted). The broadest reasonable interpretation differs
`
`from the “broadest possible interpretation.” Id.
`
`Proper claim construction requires interpretation of the entire claim in
`
`context, not a single element in isolation. Hockerson-Halberstadt, Inc. v.
`
`Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999). While certain terms
`
`may be at the center of the claim construction debate, the context of the
`
`surrounding words of the claim also must be considered in determining the
`
`ordinary and customary meaning of those terms. ACTV, Inc. v. Walt Disney
`
`Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).
`
`Only terms that are in controversy need to be construed expressly, and
`
`then only to the extent necessary to resolve the controversy. See Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`
`controversy, and only to the extent necessary to resolve the controversy’”
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999))).
`
`Petitioner asserts that the Challenged Claims should be given their
`
`plain and ordinary meaning. Pet. 10. Alternatively, if the phrase “biasing
`
`mechanism that urges the shifter handle towards a selected one of the shift
`
`positions,” recited in claim 1 of the ’850 patent, is construed as a means-
`
`plus-function claim element, Petitioner proposes a specific construction for
`
`this term. Id. at 11–12.
`
`Patent Owner also asserts that we should interpret the claims
`
`according to their “ordinary and customary” meaning, and proposes a
`
`specific meaning for the phrase “biasing mechanism.” Prelim. Resp. 21–23.
`
`10
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`It is Patent Owner’s position that the “biasing mechanism” is not written in
`
`means-plus-function format. Id. at 23. Patent Owner provides no reasoned
`
`analysis or persuasive authority for this stated conclusion.
`
`We determine that we need not resolve the differences in the parties’
`
`positions regarding the “biasing mechanism” phrase at this stage. This
`
`determination, however, does not preclude the parties from arguing their
`
`proposed constructions of the claims during trial. Indeed, the parties are
`
`hereby given notice that claim construction, in general, is an issue to be
`
`addressed at trial. Claim construction will be determined at the close of all
`
`the evidence and after any hearing. The parties are expected to assert all
`
`their claim construction arguments and evidence in the Petition, Patent
`
`Owner’s Response, Petitioner’s Reply, or otherwise during trial, as
`
`permitted by our rules.
`
`Because claim terms generally are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure, we consider the level of ordinary skill in the
`
`art as part of claim construction.
`
`B.
`
`Level of Skill in the Art
`
`The level of skill in the art is “a prism or lens” through which we view
`
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001).
`
`Factors pertinent to a determination of the level of ordinary skill in the
`
`art include: (1) educational level of the inventor; (2) type of problems
`
`encountered in the art: (3) prior art solutions to those problems; (4) rapidity
`
`with which innovations are made; (5) sophistication of the technology, and
`
`(6) educational level of workers active in the field. Environmental Designs,
`
`11
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`
`1381–82 (Fed.Cir.1983)). Not all such factors may be present in every case,
`
`and one or more of these or other factors may predominate in a particular
`
`case. Id. Moreover, these factors are not exhaustive but are merely a guide
`
`to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
`
`Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`
`In determining a level of ordinary skill, we also may look to the prior
`
`art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
`
`Additionally, the Supreme Court informs us that “[a] person of ordinary skill
`
`is also a person of ordinary creativity, not an automaton.” KSR Int’l v.
`
`Teleflex Inc., 550 U.S. 398, 421 (2007).
`
`Neither party presents a detailed evidentiary showing of factors
`
`typically considered in determining the level of ordinary skill.
`
`According to Petitioner, the relevant technology is “electric motor
`
`driven, battery-powered, reduced-scale ride-on or toy vehicles.” Pet. 16
`
`((emphasis added) citing Ex. 1005 ¶ 19). Patent Owner takes a different
`
`view. Patent Owner asserts that the relevant technology is “battery-powered
`
`ride-on toy vehicles.” Prelim. Resp. 45 (citing Ex. 1001, 1:6–14).
`
`To the extent Petitioner is asserting that the relevant technology is toy
`
`vehicles in general, which would include, for example, small-scale car
`
`models that are not powered, we disagree. As discussed above, the
`
`’850 patent disclosure describes reduced-scale battery powered vehicles,
`
`with numerous and sophisticated mechanical and electrical assemblies.
`
`Accordingly, for purposes of this decision, the relevant technology is not
`
`limited to “toy vehicles” in general. For purposes of this Decision, the
`
`12
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`relevant technology is limited to motorized ride-on or ride-in reduced scale
`
`vehicles.
`
`Petitioner asserts that a person having ordinary skill in the art would
`
`have had at least (1) a bachelor’s degree in mechanical engineering,
`
`electrical engineering, physics, or related arts and two years of experience
`
`designing electro-mechanical systems or mechanisms; or (2) equivalent
`
`training, education, or work experience in the field of designing and
`
`developing mechatronic systems, such as an advanced degree in engineering
`
`or a related technical field. Pet. 17 (citing Ex. 1005 ¶ 21). Dr. Sidman
`
`mentions the factors he considered (Ex. 1005 ¶ 20), but does not explain
`
`how these factors influenced his opinion on the level of ordinary skill in the
`
`art (id. at ¶ 21).
`
`Patent Owner proposes that we modify slightly Petitioner’s proposed
`
`level of skill to specifically include at least one year of experience designing
`
`mechanical and electrical systems for children’s battery-powered ride-on
`
`vehicles. Prelim. Resp. 32. Patent Owner states, however, that “[n]one of
`
`the arguments made herein require a rejection of Petitioner’s proposed level
`
`of skill.” Id. We find Patent Owner’s proposed modification is merely a
`
`subset of designing electro-mechanical systems or mechanisms.
`
`We have not been directed to any evidence in the record concerning
`
`the educational level of the inventors of the ’850 patent or the educational
`
`level of workers active in the field.
`
`The prior art reflects a knowledge of electrical engineering,
`
`mechanical engineering, physics, and control systems. See, e.g., Ex. 2001–
`
`2004; Ex. 1003; Ex. 1004.
`
`13
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`
`Based on the evidence before us, for purposes of this Decision, we
`
`find a person having ordinary skill in the art would have had a bachelor’s
`
`degree in electrical engineering, mechanical engineering, physics, or an
`
`equivalent degree and three years of experience designing and developing
`
`electro-mechanical systems or mechanisms; or an equivalent balance of
`
`training, education, and work experience.
`
`Again, the parties are hereby given notice that the level of skill, in
`
`general, is an issue to be addressed at trial. It will be determined at the close
`
`of all the evidence and after any hearing. The parties are expected to assert
`
`all their arguments and evidence on this issue in the Petition, Patent Owner’s
`
`Response, Petitioner’s Reply, or otherwise during trial, as permitted by our
`
`rules.
`
`C.
`
`Patentability of Claims 1, 2, 4, 6, 7, and 10–14
`in view of Damon and Chi
`
`Section 103(a) forbids issuance of a patent when “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007).
`
`The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) when available, evidence
`
`such as commercial success, long-felt but unsolved needs, and failure of
`
`others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550
`
`14
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`U.S. at 407 (“While the sequence of these questions might be reordered in
`
`any particular case, the [Graham] factors continue to define the inquiry that
`
`controls.”). The Court in Graham explained that these factual inquiries
`
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`
`question upon which there is likely to be uniformity of thought in every
`
`given factual context.” Graham, 383 U.S. at 18.
`
`The Supreme Court made clear that we apply “an expansive and
`
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`
`Whether a patent claiming the combination of prior art elements would have
`
`been obvious is determined by whether the improvement is more than the
`
`predictable use of prior art elements according to their established functions.
`
`Id. at 417. To reach this conclusion, however, it is not enough to show
`
`merely that the prior art includes separate references covering each separate
`
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
`
`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
`
`that a person of ordinary skill at the time of the invention “would have
`
`selected and combined those prior art elements in the normal course of
`
`research and development to yield the claimed invention.” Id.
`
`Moreover, in determining the differences between the prior art and the
`
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`
`themselves would have been obvious, but whether the claimed invention as a
`
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
`
`Sys. Corp., 755 F. 2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`
`claimed invention must be considered as a whole in deciding the question of
`
`obviousness.”) (citation omitted); see also Stratoflex, Inc. v. Aeroquip Corp.,
`
`713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C.
`
`15
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`§ 103 is not whether the differences themselves would have been obvious.
`
`Consideration of differences, like each of the findings set forth in Graham,
`
`is but an aid in reaching the ultimate determination of whether the claimed
`
`invention as a whole would have been obvious.”) (citation omitted).
`
`“A reference must be considered for everything it teaches by way of
`
`technology and is not limited to the particular invention it is describing and
`
`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
`
`907 (Fed. Cir. 1985).
`
`As a factfinder, we also must be aware “of the distortion caused by
`
`hindsight bias and must be cautious of arguments reliant upon ex post
`
`reasoning.” KSR, 550 U.S. at 421. This does not deny us, however,
`
`“recourse to common sense” or to that which the prior art teaches. Id.
`
`Against this general background, we consider the references, other
`
`evidence, and arguments on which the parties rely.
`
`Petitioner relies on Damon for the disclosure of the vehicle and drive
`
`components recited in claim 1. Pet. 18–19. Petitioner relies on Chi for the
`
`disclosure of a “gearshift mechanism . . . specifically designed to actuate the
`
`speed and direction switches of an electromotive toy vehicle, such as those
`
`disclosed in Damon.” Id. at 19.
`
`Petitioner’s annotated Figure 1 (Pet. 20) from Chi is reproduced
`
`below.
`
`16
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`
`
`
`Figure 1 from Chi, annotated by Petitioner (Pet. 20)
`showing two offset shift paths, one colored red and one colored blue.
`
`As shown in Figure 1 from Chi, gearshift lever 2 is able to move
`
`forwards and backwards “in an S-shaped gear channel 13 jointly defined by
`
`the left cover 11 and right cover 12.” Ex. 1004 ¶ 16. Petitioner’s annotated
`
`Figure 1 has colored one portion of the S-shaped channel red, and colored a
`
`second portion of the S-shaped channel blue. Pet. 20.
`
`Chi discloses, with reference to Figures 6 and 7, the shift path of the
`
`gearshift lever through S-shaped gear channel 13. “[W]hen the gearshift
`
`lever is first maneuvered rightwards and then forwards to reach the D-gear,
`
`the gearshift lever 2 will move forwards about the gearshift lever pivotal
`
`pin 9.” Ex. 1004 ¶ 23 (emphasis added). With reference to Figures 8 and 9,
`
`“when the gearshift lever is maneuvered leftwards and then backwards to
`
`reach the R-gear, the gearshift lever 2 will move backwards about the
`
`gearshift lever pivotal pin 9.” Id. ¶ 24 (emphasis added). Thus, the shift
`
`path in Chi is not co-linear. The lever is first moved left then backward or
`
`17
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`right then forward. To travel through the S-shaped channel, the user must
`
`change the direction of the forces applied to shifter — either left or right.
`
`For purposes of comparison, we reproduce below Patent Owner’s
`
`annotated Figure 23 from the ’850 patent, illustrating slot 134 as
`
`“aggravated shift paths as an overall ‘Z’ shaped path.” i.e., a left/right/left
`
`shift pattern. Prelim. Resp. 12.
`
`Figure 23 from the ’850 patent is a top plan view
`of the velocity control assembly, annotated by Patent Owner
`to highlight a Z-shaped shift path, colored in red and green.
`
`
`
`Petitioner provides a detailed analysis of each clause in independent
`
`claim 1. Pet. 18–23. Petitioner also provides a detailed claim chart,
`
`indicating where in Damon or Chi each element in claim 1 is disclosed.
`
`Id. at 24–53. Petitioner cites to the testimony of Dr. Sidman for evidentiary
`
`support throughout its analysis and claim chart.
`
`As a reason why a person of ordinary skill would have combined the
`
`shifter of Chi with the vehicle in Damon, Petitioner asserts that the shifter of
`
`Chi adds safety and reality to Damon’s car. Id. at 23 (citing Ex. 1004 ¶¶ 1,
`
`2, 4, 25; Ex. 1005 ¶ 58). Chi discloses that “the maneuverability, degree of
`
`18
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`simulation and safety in driving are also key features for an electromotive
`
`toy car.” Ex. 1004 ¶ 2. Dr. Sidman opines that the Challenged Claims
`
`“would have been obvious to one of ordinary skill” based on Damon and
`
`Chi. Ex. 1005 ¶ 2; see also id. at ¶¶ 60–67 (explaining for claim 1 his
`
`detailed analysis leading to the conclusion that claim 1 would have been
`
`obvious).
`
`1. Patent Owner’s Response
`
`Patent Owner raises a number of asserted reasons as to why we should
`
`not institute a trial, including no motivation to combine (see, e.g., Prelim.
`
`Resp. at 2), differences between the claims and cited prior art (see, e.g.,
`
`id. at 3), and objective indicators of nonobviousness (see, e.g., id. at 4–5).
`
`a. Motivation to Combine
`
`As discussed above, Petitioner, Dr. Sidman, and Chi focus on safety
`
`and providing a realistic experience when driving a reduced-scale car as
`
`motivations to combine Damon and Chi. We find that this provides a
`
`persuasive motivation on the record before us to combine the shift assembly
`
`of Chi with the car of Damon.
`
`b. Differences in Structure
`
`Patent Owner asserts that the two shift paths in Chi actuate underlying
`
`switches. Prelim. Resp. 3. According to Patent Owner, this does not meet
`
`the limitation in claim 1 that “less than all movements” of the shifter actuate
`
`the underlying switches. Id.; id. at 39–45; see also Ex. 1001, 17:64–67
`
`(claim 1 reciting “less than all movements of the shifter handle cause
`
`movement of the actuator”). As we described above, Chi discloses a shift
`
`path wherein the lever is first moved left then backward or right then
`
`19
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`forward. Thus, to travel through the S-shaped channel in Chi, the user must
`
`change the direction of the forces applied to shifter — either left or right,
`
`then either backward or forward. Ex. 1004 ¶¶23, 24. These left and right
`
`movements do not actuate any switches. Thus, on the record before us, Chi
`
`discloses the “less than all movements” limitation in claim 1.
`
`Patent Owner also asserts that the torsion spring of Chi that Petitioner
`
`equates to the claimed “biasing mechanism” “only assists in slamming the
`
`shifter.” Prelim. Resp. 3. According to Patent Owner, the torsion spring of
`
`Chi “does not further inhibit shifting as the biasing mechanism in the ’850
`
`patent does, it is merely a centering mechanism.” Id. at 3–4.
`
`Claim 1 recites “a biasing mechanism that urges the shifter handle
`
`towards a selected one of the shift positions.” Ex. 1001, 17:62–63. Claim 1
`
`does not recite that the biasing mechanism “further inhibit shifting,” as
`
`asserted by Patent Owner. Thus, this argued distinction is not a distinction
`
`with respect to claim 1.
`
`(1) Objective Evidence
`
`Regarding objective evidence, Patent Owner argues copying (Prelim.
`
`Resp. 36), commercial success (id. at 36–37), and long-felt need (id. at 37).
`
`For objective indicia evidence to be accorded substantial weight, “a
`
`nexus must exist ‘between the evidence and the merits of the claimed
`
`invention.’” Novartis Ag V. Torrent Pharmaceuticals, No. 2016-1352, slip
`
`op. at 24, Fed. Cir. April 12, 2017) (citing Wyers v. Master Lock Co., 616
`
`F.3d 1231, 1246 (Fed. Cir. 2010). We find there is no persuasive evidence
`
`of a nexus.
`
`20
`
`
`
`IPR2018-00040
`Patent 7,487,850 B2
`
`
`(a) Copying
`
`For copying to be effective in showing non-obviousness, there must
`
`be more than simply a competing version of the product. Iron Grip Barbell
`
`Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (“Not every
`
`competing product that arguably falls within the scope of a patent is
`
`evidence of copying. Otherwise every infringement suit would
`
`automatically confirm the nonobviousness of the patent.”). Evidence of
`
`copying can be particularly persuasive when a competitor had tried and
`
`failed to introduce a competing product until the patented product became
`
`available. Vandenberg v. Dairy Equipment Co., a Div. of DEC Int’l, Inc.,
`
`740 F.2d 1560, 1567 (Fed. Cir. 1984). We have no
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
