Paper No. 1
`
`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
`
`
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,487,850
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page No.
`
`
`TABLE OF AUTHORITIES ................................................................................... iii 
`LIST OF EXHIBITS .................................................................................................. v 
`I.
`INTRODUCTION ........................................................................................... 1 
` 
`  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1 II.
`
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................. 1 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ........................................... 1 
`C.  Lead and Back-Up Counsel and Service Information Under
`37 C.F.R. § 42.8(b)(3), (4).......................................................................... 2 
`  GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ..................... 2 III.
`
`  THE ’850 PATENT ......................................................................................... 2 
`IV.
`A.  Subject Matter of the ’850 Patent ............................................................... 3 
`B.  Prosecution History of the ’850 Patent ....................................................... 7 
`C.  The Challenged Claims ............................................................................ 10 
`D.  How the Challenged Claims Are To Be Construed ................................. 10 
`THE RELEVANT PRIOR ART ................................................................... 12 
`A.  Damon (Ex. 1003) .................................................................................... 13 
`B.  Chi (Ex. 1004) .......................................................................................... 14 
`VI.
`  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 17 
`
`  GROUNDS OF UNPATENTABILITY ........................................................ 17 VII.
`A.  Summary of Grounds ............................................................................... 18 
`B.  Specific Grounds of Unpatentability of the Challenged
`Claims ....................................................................................................... 18 
`1.  Independent Claim 1 Is Unpatentable. ................................................ 18 
`2.  Dependent Claim 2 Is Unpatentable. .................................................. 53 
`3.  Dependent Claim 4 Is Unpatentable. .................................................. 55 
`4.  Dependent Claim 6 Is Unpatentable. .................................................. 57 
`5.  Dependent Claim 7 Is Unpatentable. .................................................. 60 
`
`V.
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` 
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`i
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`TABLE OF CONTENTS
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`Page No.
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`6.  Dependent Claim 10 Is Unpatentable. ................................................ 64 
`7.  Dependent Claim 11 Is Unpatentable. ................................................ 69 
`8.  Dependent Claim 12 Is Unpatentable. ................................................ 73 
`9.  Dependent Claim 13 Is Unpatentable. ................................................ 75 
`10. Dependent Claim 14 Is Unpatentable. ................................................ 78 
`  PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ..................................... 79 VIII.
`
`  CONCLUSION .............................................................................................. 80 
`IX.
`
`
`
`ii
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`

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`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 10
`
`Page No.
`
`Ergo Licensing, LLC v. CareFusion 303, Inc.,
`673 F.3d 1361 (Fed. Cir. 2012) .......................................................................... 11
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 12
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 10
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) (en banc) .......................................................... 11
`
`STATUTES
`
`35 U.S.C. § 102(a) ................................................................................................... 14
`
`35 U.S.C. § 102(b) ................................................................................................... 13
`
`35 U.S.C. § 102(e) ................................................................................................... 15
`
`35 U.S.C. § 103 .......................................................................................................... 1
`
`35 U.S.C. § 103(a) ..................................................................................................... 7
`
`35 U.S.C. § 112(f) .............................................................................................. 11, 12
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.6(e) ..................................................................................................... 2
`
`37 C.F.R. § 42.8(a)(1) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 1
`
`iii
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`TABLE OF AUTHORITIES
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`Page No.
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`37 C.F.R. § 42.8(b)(3) ................................................................................................ 2
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`37 C.F.R. § 42.8(b)(4) ................................................................................................ 2
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`37 C.F.R. § 42.15(a) ................................................................................................. 80
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`37 C.F.R. § 42.100(b) .............................................................................................. 10
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`37 C.F.R. § 42.103 ............................................................................................. 79, 80
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`37 C.F.R. § 42.104(a) ................................................................................................. 2
`
`
`
`iv
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`
`
`LIST OF EXHIBITS
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`Exhibit 1001 - U.S. Patent No. 7,487,850
`
`Exhibit 1002 - File History of U.S. Patent No. 7,487,850
`
`Exhibit 1003 - U.S. Patent Publication No. 2005/0056474 A1 (“Damon”)
`
`Exhibit 1004 - U.S. Patent Publication No. 2005/0087033 A1 (“Chi”)
`
`Exhibit 1005 - Declaration of Dr. Michael D. Sidman (“Sidman Decl.”)
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`Exhibit 1006 - Curriculum Vitae of Dr. Michael D. Sidman
`
`Exhibit 1007 - LinkedIn Profile of Christopher Lucas
`
`v
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`
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`I.
`
`INTRODUCTION
`
`The Patent Trial and Appeal Board should cancel claims 1, 2, 4, 6, 7, and
`
`10-14 (“the challenged claims”) of U.S. Patent No. 7,487,850 (“’850 patent” or
`
`“Exhibit (‘Ex.’) 1001”) because they are unpatentable as obvious under 35 U.S.C.
`
`§ 103. The challenged claims recite a ride-on toy vehicle with a particular drive
`
`assembly.
`
` MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`II.
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Petitioner Dynacraft BSC, Inc. certifies that the real party-in-interest is
`
`Dynacraft BSC, Inc.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`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
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`Fisher-Price, Inc. v. Dynacraft BSC, Inc., Case No. 1:17-cv-00051-LPS-CJB.
`
`That case has been transferred to 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.
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`1
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`C. Lead and Back-Up Counsel and Service Information Under
`37 C.F.R. § 42.8(b)(3), (4)
`
`Lead counsel for Petitioner is Larry L. Saret, Reg. No. 27,674,
`
`llsaret@michaelbest.com. Back-up counsel for Petitioner are Arthur Gollwitzer
`
`III, agollwitzer@michaelbest.com (motion for pro hac vice admission to be filed
`
`after authorization is granted), and Kenneth M. Albridge III, Reg. No. 76,128,
`
`kmalbridge@michaelbest.com.
`
`Counsel’s mailing address is Michael Best & Friedrich LLP, River Point,
`
`444 West Lake Street, Suite 3200, Chicago, Illinois 60606; their telephone is (312)
`
`222-0800; and their facsimile number is (312) 222-0818.
`
`Pursuant to 37 C.F.R. § 42.6(e), counsel for Petitioner consent to electronic
`
`service at the email addresses listed above.
`
` GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`III.
`
`Petitioner certifies that the ’850 patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging claims 1, 2, 4, 6, 7, and 10-14 of the ’850 patent on the grounds
`
`identified here.
`
`IV.
`
` THE ’850 PATENT
`
`The ’850 patent issued from U.S. Patent Application No. 11/410,568, which
`
`was filed on April 24, 2006. Ex. 1001 at [21], [22]. The ’850 patent does not
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`2
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`
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`claim priority to any earlier-filed application; therefore, the earliest priority date to
`
`which the challenged claims are entitled is April 24, 2006.
`
`A.
`
`Subject Matter of the ’850 Patent
`
`The ’850 patent is directed to “children’s ride-on vehicles, and more
`
`particularly to battery-powered children’s ride-on vehicles and drive assemblies for
`
`use with such vehicles.” Ex. 1001 at 1:6-9. These types of vehicles generally
`
`share certain common features that “are extremely old and well known in the
`
`children’s electric vehicle art.” Ex. 1002 at 84; see also Sidman Decl., Ex. 1005 at
`
`¶ 39. As admitted in the ’850 patent’s Background of the Invention:
`
`Children’s ride-on vehicles are reduced-scaled vehicles that are
`designed for use by children. For example, children’s ride-on vehicles
`include a seat adapted to accommodate one or more children and
`steering and drive assemblies that are adapted to be operated by a
`child sitting on the seat. One type of drive assembly that is often used
`in children’s ride-on vehicles includes a battery-powered motor
`assembly that is adapted to drive the rotation of one or more of the
`vehicle’s wheels. Typically, the vehicle will include an actuator, such
`as a foot pedal, push button or other user input device, which enables
`a child to select when power is delivered to the motor assembly. Some
`drive assemblies further include other user input devices, which are
`operated by a child sitting on the vehicle’s seat to select the speed
`and/or direction at which the vehicle travels.
`
`Ex. 1001 at 1:11-27; Ex. 1005 at ¶ 39.
`
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`3
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`The vehicles claimed in the ’850 patent utilize the prior art features
`
`described in the Background of the Invention section quoted above but also
`
`incorporate purportedly “improved shifter assemblies.” Ex. 1001 at [54], [57],
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`17:25-18:12 (claims 1 and 2), 18:18-22 (claim 4), 18:25-35 (claims 6 and 7),
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`18:45-19:7 (claims 10-14); Ex. 1005 at ¶ 40; see also ’850 Patent Prosecution
`
`History, Ex. 1002 at 84 (examiner noting that “Applicant admits the prior art of
`
`lines 1-19 of claim 1 in the background of the invention . . . .”). The claimed
`
`shifter assembly—referred to in the claims as “an actuator assembly”—includes a
`
`shifter handle that can be selectively moved by a child along at least two non-
`
`collinear shift paths and between at least three shift positions. Ex. 1001 at 17:54-
`
`61; Ex. 1005 at ¶ 40. An example of the claimed shifter assembly appears, for
`
`example, in Figure 10 of the ’850 patent reproduced below:
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`4
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`
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`Ex. 1001 at Fig. 10; Ex. 1005 at ¶ 40.
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`As stated in the challenged claims, a “biasing mechanism,” such as a
`
`“torsion spring,” is used to “urge[] the shifter handle towards one of the shift
`
`positions.” Ex. 1001 at 12:6-10, 17:62-63 (claim 1); Ex. 1005 at ¶ 41. In addition,
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`the assembly includes at least one “actuator operatively coupled to the shifter
`
`handle,” wherein “less than all movements of the shifter handle cause movement of
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`the actuator.” Ex. 1001 at 17:64-67 (claim 1); Ex. 1005 at ¶ 41. The actuator is
`
`used to engage a switch assembly, which is adapted to be selectively configured
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`5
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`between velocity settings corresponding to each of the three shift positions. Ex.
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`1001 at 17:41-50, 17:67-18:6 (claim 1); Ex. 1005 at ¶ 41.
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`“Each velocity setting in turn configures the vehicle’s drive assembly to be
`
`in a predetermined drive configuration.” Ex. 1001 at 17:48-50 (claim 1); Ex. 1005
`
`at ¶ 41. For example, the ’850 patent describes using the actuator to configure the
`
`switch assembly “between a low-speed reverse velocity setting (shown in FIG. 17),
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`a low-speed forward velocity setting (shown in in FIGS. 18-19), and a high-speed
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`forward setting (shown in FIG. 20)” and respectively place the drive assembly into
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`“a low-speed reverse drive configuration,” “a low-speed forward drive
`
`configuration,” or “a high-speed forward drive configuration.” Ex. 1001 at 7:34-
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`52, 13:14-19, 13:63-65; Ex. 1005 at ¶ 41.
`
`As stated in the challenged dependent claims, the shifter assembly also may
`
`include a guide assembly to guide movement of the shifter handle. The “shift
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`paths can be oriented to restrict rapid movement” between shift positions, and the
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`actuator can be adapted to be “selectively rotated by the shifter handle about a
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`rotational axis.” Ex. 1001 at 18:18-22, 18:25-35 (claims 4, 6, and 7); Ex. 1005 at ¶
`
`42. The switch assembly may include rocker switches—one for selecting
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`“between a reverse setting and a forward setting” and the other for selecting
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`“between at least a low-speed setting and a high-speed setting.” Ex. 1001 at 18:45-
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`19:7 (claims 10-14); Ex. 1005 at ¶ 42. Further, a drive actuator, such as “an on/off
`
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`6
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`

`
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`switch, a foot pedal, a throttle lever, [or] a rotational handgrip on a steering
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`mechanism that includes a handlebar,” can be used to cause the vehicle’s drive
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`assembly to operate in a given drive configuration. Ex. 1001 at 16:25-28, 18:7-12
`
`(claim 2); Ex. 1005 at ¶ 42.
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`As demonstrated by this Petition, all of the claimed features, including those
`
`of the alleged “improved shifter assembly,” were disclosed in the prior art.
`
`B.
`
`Prosecution History of the ’850 Patent
`
`U.S. Patent Application No. 11/410,568 was filed on April 24, 2006
`
`including thirty-eight claims. Ex. 1002 at 1, 41-52. On June 23, 2008, the
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`examiner rejected claims 1-7, 10-14, 20-28, 31, 32, 37, and 38 as obvious under 35
`
`U.S.C. § 103(a). Id. at 83-90. Specifically, the examiner rejected claims 1, 2, 4-7,
`
`10-14, 20-22, 31, 37, and 38 under 35 U.S.C. § 103(a) over U.S. Patent No.
`
`6,921,870 (“Lan”) in view of U.S. Patent No. 5,173,591 (“Perego”). Id. at 84-87.
`
`The examiner rejected claims 3, 23-28, and 32 as obvious over Lan in view of
`
`Perego and further in view of U.S. Patent No. 6,718,842 (“Bofias”). Id. at 87-88.
`
`Patent Owner filed an amendment and reply mailed September 23, 2008,
`
`amending claims 1, 7, 10, 21, 27, and 28, cancelling claims 6 and 26, and adding
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`new claims 39 and 40. Ex. 1002 at 100-119. Claim 1 was amended to add a
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`limitation reciting that “the actuator assembly includes an actuator operatively
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`coupled to the shifter handle, and less than all movements of the shifter handle
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`
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`7
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`

`
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`cause movement of the actuator.” Id. at 102. Claims 7 and 10 were amended to
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`depend from claim 1 instead of cancelled application claim 6. Id. at 103-04.
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`Claims 21, 27, and 28 were amended in a similar manner, and new claims 39 and
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`40 were added including a similar limitation. Id. at 108-09, 113.
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`Although the prior art showed an actuator operatively coupled to a shifter
`
`handle, Patent Owner argued that none of the cited prior art—i.e., Perego, Lan, and
`
`Bofias—discloses or suggests “an actuator operatively coupled to the shifter
`
`handle where less than all movements of the shifter handle cause movement of the
`
`actuator” as required by amended claims 1 and 21. Ex. 1002 at 117, 118. For
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`example, Patent Owner argued that “Perego discloses a gearshift device where
`
`movement of the control lever always causes movement of the actuating element.”
`
`Id. at 116.
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`8
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`With respect to Lan, Patent Owner argued that “Lan et al. discloses an
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`operation bar [2] where movement of the handgrip (sic) section [21] always cause
`
`movement of the free end [22]”:
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`
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`Ex. 1002 at 115-16. Patent Owner made similar arguments against Bofias, and
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`further argued that new claims 39 and 40 were “allowable for at least the same
`
`reasons as independent claims 1 and 21.” Id. at 117-18.
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`On November 4, 2008, the examiner issued a Notice of Allowance of claims
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`1-5, 7-25, and 27-40. Ex. 1002 at 124-27. The ’850 patent issued on February 10,
`
`2009, with application claims 1-5 corresponding to issued claims 1-5, application
`
`claims 7-25 corresponding to issued claims 6-24, and application claims 27-40
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`9
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`
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`corresponding to claims 25-38. Ex. 1001 at [45], 17:25-22:41; Ex. 1002 at 101-
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`113.
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`C. The Challenged Claims
`
`Petitioner requests cancellation of claims 1, 2, 4, 6, 7, and 10-14 of the ’850
`
`patent. Claim 1 is an independent claim. Claims 2, 4, 6, 7, and 10-14 each depend
`
`directly from claim 1.
`
`D. How the Challenged Claims Are To Be Construed
`
`In an inter partes review, “[a] claim in an unexpired patent that will not
`
`expire before a final written decision is issued shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.
`
`Ct. 2131, 2142 (2016). Claim terms should be given their ordinary and customary
`
`meanings. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005)
`
`(en banc). For purposes of this Petition, the broadest reasonable construction of
`
`the terms of the challenged claims should be their plain and ordinary meaning. See
`
`Ex. 1005 at ¶¶ 32, 33, 36, 37.
`
`Alternatively, 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,
`
`should be construed as a means-plus-function claim element. Generic terms such
`
`as “mechanism,” “element,” or “device,” or other “nonce” terms that reflect
`
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`10
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`
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`nothing more than verbal constructs and do not connote sufficiently definite
`
`structure are tantamount to using the word “means,” and therefore are governed by
`
`section 112(f). Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir.
`
`2015) (en banc) (finding “module” to be a nonce term).
`
`In construing a means-plus-function term, the claimed function must first be
`
`identified. Id. at 1351. Then, it must be determined “what structure, if any,
`
`disclosed in the specification corresponds to the claimed function.” Id. An alleged
`
`corresponding structure “must be clearly linked or associated with the claimed
`
`function.” Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363
`
`(Fed. Cir. 2012). And it cannot merely repeat or paraphrase the means-plus-
`
`function claim language. Id. at 1363-64.
`
`Here, the function of the biasing mechanism recited in the claims is to
`
`“urge[] the shifter handle toward a selected one of the shift positions.” Ex. 1001 at
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`17:61-63. The corresponding structure identified in the specification is a spring
`
`(e.g., torsion spring 162 shown in Figures 10 and 15 and described at column 12,
`
`lines 12-15 of the ’850 patent). Ex. 1005 at ¶ 34. The specification states that
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`“[t]he illustrated biasing mechanism 160 is adapted to urge shifter handle 114
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`towards the second shift position” and that “[i]n FIG. 15, biasing mechanism 160
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`takes the illustrative, non-exclusive form of a torsion spring 162 dimensioned to be
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`coupled with actuator 115 by pivot pin 136, and having a first end 162a and a
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`11
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`second end 162b.” Ex. 1001 at 12:4-10. It also states that “[i]n embodiments that
`
`include a biasing mechanism, any suitable biasing member, or combination of
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`members, may be used, with illustrative examples including springs (such as
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`extension, torsion, leaf, compression, etc.), resilient members, and elastic
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`members.” Id. at 16:14-19. Thus, the “biasing mechanism” must be construed to
`
`cover the springs described in the specification and their equivalents pursuant to 35
`
`U.S.C. § 112(f).
`
`Regardless of which construction (e.g., plain and ordinary meaning or
`
`means-plus-function) is applied, however, the result is the same—the claims are
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`unpatentable. See Ex. 1005 at ¶ 35.
`
`V.
`
` THE RELEVANT PRIOR ART
`
`Each of the challenged claims is unpatentable in view of the following
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`references directed to electric motor driven, battery-powered, reduced-scale ride-on
`
`or toy vehicles: (A) Damon, Ex. 1003; and (B) Chi, Ex. 1004. Each of the
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`references is analogous prior art to the challenged claims because it is at a
`
`minimum either from the same field of endeavor (electric motor driven, battery-
`
`powered, reduced-scale ride-on or toy vehicles) or the reference is reasonably
`
`pertinent to the problem faced by the applicants (developing a shifter assembly
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`with non-collinear shift paths and shift positions corresponding to different drive
`
`configurations). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Two
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`12
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`
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`separate tests define the scope of analogous prior art: (1) whether the art is from
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`the same field of endeavor, regardless of the problem addressed and, (2) if the
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`reference is not within the field of the inventor's endeavor, whether the reference
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`still is reasonably pertinent to the particular problem with which the inventor is
`
`involved.”). Neither of the references was before the Patent Office when the
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`examiner allowed the challenged claims.
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`A. Damon (Ex. 1003)
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`Damon is a U.S. patent application published on March 17, 2005. Ex. 1003
`
`at (43). It is prior art under 35 U.S.C. § 102(b) because the challenged claims are
`
`entitled to a filing date no earlier than April 24, 2006.
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`Damon discloses a reduced-scale ride-on vehicle that resembles a full-sized
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`Jeep® vehicle. Ex. 1003 at [0027], [0029]; Ex. 1005 at ¶ 51. The vehicle of
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`Damon is illustrated in Figures 1 and 2, which are reproduced below:
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`
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`Ex. 1003 at Fig. 1, Fig. 2; Ex. 1005 at ¶ 51.
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`13
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`Damon’s vehicle includes a number of features common to the ’850 patent,
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`such as: a body 12 “with a seat assembly 16 that is sized and configured to
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`accommodate at least one child” (Ex. 1003 at [0027]), a steering assembly 26 that
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`“includes a steering column 40 and a steering mechanism 42” and “enables a child
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`sitting on seat 18 [of seat assembly 16] to steer the vehicle’s steerable wheel
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`assembly 24” (id. at [0031]), a motor assembly 46 including a “battery-powered
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`motor 48 that is adapted to drive the rotation of at least one” of the vehicle’s
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`wheels (id. at [0033]), a battery assembly 60 including a “battery, or cell, 62 that is
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`adapted to provide power to the motor” (id. at [0034]), “a drive actuator 104,
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`through which a user input directing the battery assembly to energize the motor
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`assembly is received” (id. at [0038]), “a speed switch 110, which enables a user to
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`select the relative rotation of the motor assembly’s output 50” (id. at [0039]), and
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`“a direction switch 112, which enables a user to select the relative direction (i.e.,
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`clockwise or counterclockwise) of rotation of output 50 and thereby configure the
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`vehicle to drive in forward and reverse directions” (id. at [0039]). See also Sidman
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`Decl., Ex. 1005 at ¶ 52.
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`B. Chi (Ex. 1004)
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`Chi is a U.S. patent application published on April 28, 2005, and filed on
`
`October 28, 2003. Ex. 1004 at (22), (43). It too is prior art under 35 U.S.C. §
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`14
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`102(a) and under 35 U.S.C. § 102(e) because the challenged claims are entitled to a
`
`filing date no earlier than April 24, 2006.
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`Chi discloses a “gear shift mechanism for an electromotive toy car.” Ex.
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`1004 at (54); Ex. 1005 at ¶ 54. The mechanism of Chi is illustrated, for example,
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`in Figures 1 and 6, which are reproduced below:
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`Ex. 1004 at Fig. 1, Fig. 6; Ex. 1005 at ¶ 54.
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`The mechanism includes, among other things, a “gearshift lever 2” with “a
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`lateral grip 21 and a vertical shaft 22” that “is able to move forwards and
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`backwards . . . in an S-shaped gear channel 13,” and “a U-Shaped torsion spring
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`53” that biases the gearshift lever 2 toward one or more shift positions (“Two ends
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`531 of the torsion spring 53 … tightly clamp … the vertical shaft 22 of the
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`gearshift lever 2, such that the vertical shaft 22 of the gearshift lever 2 is
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`maintained at the center of the opening shield securing plate slot 51 [e.g., “the L-
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`gear” for forward “slow advancement”] by means of the torsion spring 53.”). Ex.
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`1004 at [0016], [0019], [0022], Fig. 1, Fig. 2; Ex. 1005 at ¶ 55. Figure 2 of Chi
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`provides an exploded, top perspective view of these features, with the torsion
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`spring 53 highlighted in yellow:
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`Ex. 1004 at [0006], Fig. 2 (excerpted and annotated); Ex. 1005 at ¶ 55.
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`The Chi mechanism also includes: an “advancing/reversing push button 71”
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`that configures a motor of the electromotive toy car to drive in a forward or reverse
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`direction (Ex. 1004 at [0021], [0024]); a “slow/fast pushbutton 72” that configures
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`the motor in a low or high-speed mode of operation (id. at [0021]-[0024]); a switch
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`plate 6 that “is able to move forwards and backwards along with the gearshift lever
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`2” and includes “claws 63 . . . for pushing the pushbutton 71, 72” (id. at [0020]);
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`and “a pedal throttle” that activates “a power switch for halting, driving slow
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`advancement, fast advancement or slow reversing of the electromotive toy car” (id.
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`at (57), [0001], [0004], [0022]-[0025]). See also Sidman Decl., Ex. 1005 at ¶ 56.
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`VI.
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` LEVEL OF ORDINARY SKILL IN THE ART
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`The relevant art is electric motor driven, battery-powered, reduced-scale
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`ride-on or toy vehicles. Ex. 1005 at ¶ 19; see also, e.g., ’850 Patent, Ex. 1001 at
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`1:6-9 (“The present disclosure relates generally to children’s ride-on vehicles, and
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`more particularly to battery-powered children’s ride-on vehicles and drive
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`assemblies for use with such vehicles.”). A person of ordinary skill in the relevant
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`art as of April 24, 2006, would have had at least (1) a bachelor’s degree in
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`mechanical engineering, electrical engineering, physics, or related arts and two
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`years of experience designing electro-mechanical systems or mechanisms; or (2)
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`equivalent training, education, or work experience in the field of designing and
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`developing mechatronic systems, such as an advanced degree in engineering or a
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`related technical field. Ex. 1005 at ¶ 21.
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` GROUNDS OF UNPATENTABILITY
`VII.
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`Electric ride-on vehicles are well known in the art, as are shift assemblies for
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`placing them in low/high speed and forward/reverse drive configurations. Ex.
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`17
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`1005 at ¶ 57; see also ’850 Patent Prosecution History, Ex. 1002 at 84-88, 114-18.
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`In addition, every feature of the “improved shift assembly” claimed in the ’850
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`patent had already been invented by another (i.e., Chi), as detailed further below.
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`Ex. 1005 at ¶ 57. For the reasons set forth below, the prior art renders the
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`challenged claims obvious and unpatentable.
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`A.
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`Summary of Grounds
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`The prior art described above renders all of the challenged claims
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`unpatentable as follows: claims 1, 2, 4, 6, 7, and 10-14 of the ’850 patent are
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`obvious over Damon in combination with Chi.
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`B.
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`Specific Grounds of Unpatentability of the Challenged Claims
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`The combination of Damon and Chi discloses every element of the
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`challenged claims. Ex. 1005 at ¶ 57. In addition, one of ordinary skill in the art at
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`the time of the alleged invention of the ’850 patent would have had a reason to
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`combine Damon and Chi to provide Damon’s reduced-scale vehicle with Chi’s
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`“realistic” shifting mechanism and a reasonable expectation of success in doing so,
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`as explained below. Id. In short, the combination of Damon and Chi renders each
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`of the challenged claims obvious. Id. at ¶ 59.
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`1.
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`Independent Claim 1 Is Unpatentable.
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`Damon. Damon discloses most of the elements recited in the claims,
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`including a body with a seat sized for a child, a plurality of wheels with at least one
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`being driven and one being steerable, a steering assembly that allows a child to
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`steer the vehicle, and a drive assembly with a drive motor, battery, and velocity
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`control assembly capable of placing the drive motor in a plurality of drive
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`configurations. Ex. 1005 at ¶ 61; see also, e.g., Damon, Ex. 1003 at [0027],
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`[0030]-[0033], [0038], [0039], Figs. 1-3. In Damon, those drive configurations are
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`implemented through “user input devices” (which “also may be referred to as user
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`control devices”), including a speed switch, which enables a user to select the
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`relative rate of rotation (“relative degree of a maximum rate of rotation”) of the
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`drive motor, and a direction switch, which enable a user to select the “direction of
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`rotation of the motor assembly’s output” to “configure the vehicle to drive in
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`forward and reverse directions.” Ex. 1003 at [0038], [0039], Fig. 3; Ex. 1005 at ¶
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`61. Once selected, “a drive actuator,” such as “a foot pedal, a throttle lever, and a
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`rotational handgrip on a steering mechanism,” is actuated, directing the battery to
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`energize the drive motor and causing the vehicle to operate in the selected drive
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`configuration. Ex. 1003 at [0038], Fig. 2; Ex 1005 at ¶ 61.
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`Chi. Chi teaches that “maneuverability, degree of simulation and safety in
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`driving are . . . key features for an electromotive toy vehicle,” Ex. 1004 at [0002],
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`and discloses a gearshift mechanism suitable for a child’s vehicle like that
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`disclosed by Damon. Ex. 1005 at ¶ 62. The gearshift mechanism of Chi is
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`specifically designed to actuate the speed and direction switches of an
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`19
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`electromotive toy vehicle, such as those disclosed in Damon, and it meets all of the
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`velocity control limitations recited in the challenged claims. Id.; see also, e.g.,
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`Chi, Ex. 1004 at (57), [0001]-[0004], [0016], [0020]-[0024], Fig. 1, Fig. 2.
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`The Chi gearshift mechanism includes a T-shaped gearshift lever 2, three
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`shift positions corresponding to three velocity settings (i.e., L-gear, D-gear, and R-
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`gear), and two non-collinear shift paths, as illustrated in red and blue, respectively,
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`below:
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`Ex. 1004 at [0016], Fig. 1 (annotated); Ex. 1005 at ¶ 63. The gearshift lever passes
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`through a lateral slot in an opening shield securing plate, to which a U-shaped
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`torsion spring is affixed. Ex. 1004 at [0019]; Ex. 1005 at ¶ 63. The two ends of
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`the torsion spring clamp the gearshift lever such that a biasing force exerted by the
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`ends maintains the gearshift lever at the center of the lateral slot and urges the
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`gearshift lever toward the center of the L-gear shift position when it is away from
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`that position. See id.
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`The gearshift lever is operatively connected via a pivotal shaft (switch plate
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`affixing shaft 8) to an actuator (switch plate 6) for engaging a rocker slow/fast
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`pushbutton switch 71 and a rocker advancing/reversing pushbutton switch 72) for
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`respectively selecting between high and low speed settings and selecting between
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`forward and reverse drive direction settings. Ex. 1004 at [0016], [0020], [0021];
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`Ex. 1005 at ¶ 64. The actuator is depicted below in red and the rocker pushbutton
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`switches are depicted green:
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`21
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`Ex. 1004 at Fig. 2 (annotated); Ex 1005 at ¶ 64.
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`To move the actuator and change drive configurations, the lever must be
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`“maneuvered leftwards and then backwards” or “rightwards and then forwards”
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`from the center shift position by the user. Ex. 1004 at [0020]-[0024], Figs. 1-3;
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`Ex. 1005 at ¶ 65. Mere leftward and rightward movements of the gearshift lever,
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`from the center shift position, correspon