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 IPR2018-00042
`Patent 7,621,543
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`Title: BLOW-MOLDED WHEELS HAVING UNDERCUT TREADS,
`METHODS FOR PRODUCING THE SAME, AND CHILDREN’S
`RIDE-ON VEHICLES INCLUDING THE SAME
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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 ............................................................... 4
`IV. BRIEF OVERVIEW OF THE ’543 PATENT ................................................. 5
`A. Prior Art Children’s Ride-On Wheels and Their Limitations .......................... 5
`B. Specification of the ’543 Patent ..................................................................... 15
`C. Prosecution History of the ’543 Patent ........................................................... 22
`D. Claim Construction ......................................................................................... 24
`V.
`PETITIONER’S PRIOR ART ........................................................................ 25
`A. There Is No Motivation To Combine Petitioner’s References, and DeGraaff
`Does Not Add One ................................................................................................ 26
`1. Damon ......................................................................................................... 29
`2. DeGraaff ...................................................................................................... 30
`3. Perego .......................................................................................................... 32
`4. Plastic Blow Molding Handbook ................................................................ 35
`5. Felker ........................................................................................................... 44
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 47
`VII. PETITIONER’S UNPATENTABILITY GROUNDS ARE UNLIKELY TO
`SUCCEED ............................................................................................................... 49
`A. Ground 1: Damon, Perego, DeGraaff and the Handbook Do Not Render the
`Challenged Claims Obvious ................................................................................. 49
`1. DeGraaff Does Not Provide Adequate Motivation to Combine ................. 49
`2. Petitioner’s Combination of Damon, Perego, the Handbook, and DeGraaff
`Still Does Not Disclose All of the Claimed Elements. ...................................... 52
`3. Claims 5-8 and 10 Are Not Obvious Under Ground 1 ............................... 55
`B. Ground 2: Damon, DeGraaff and Felker Do Not Render the Challenged
`Claims Obvious ..................................................................................................... 55
`ii
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`1. DeGraaff Again Does Not Provide Adequate Motivation to Combine ...... 55
`2. Petitioner’s Combination of Damon, DeGraaff and Felker Still Does Not
`Disclose All of the Claimed Elements. .............................................................. 57
`3. Claims 5-8 and 10 Are Not Obvious Under Ground 2 ............................... 57
`VIII. CONCLUSION ........................................................................................... 58
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`iii
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 5
`
`August Tech. Corp. v. Camtek Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011) ............................................................................ 5
`
`Black & Decker, Inc. v. Positec USA, Inc.,
`646 Fed. Appx. 1019 (Fed. Cir. 2016) ................................................................ 56
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 5
`
`Purdue Pharma L.P., v. Epic Pharma, LLC,
`811 F.3d 1345 (Fed. Cir. 2016) (Fed. Cir. Dec. 7, 2016) ................................... 24
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581 (PTAB Dec. 30, 2013) ............................................................... 5
`
`Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc.,
`IPR2015-01671 (PTAB Feb. 11, 2016) ................................................................ 5
`
`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 5
`
`Statutes
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`35 U.S.C. § 314 .......................................................................................................... 4
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`35 U.S.C. § 316 .......................................................................................................... 4
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`Other Authorities
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`37 C.F.R. § 42.104 ................................................................................................. 4, 5
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`37 C.F.R. § 42.108 ..................................................................................................... 4
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`iv
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`TABLE OF AUTHORITIES
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`Exhibit #
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`Exhibit Description
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`2001
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`“A Story About Our Heritage,” available at http://www.fisher-
`price.com/en_US/ourstory/how-it-began/index.html
`
`2002
`
`U.S. Patent No. D636,412 to Misse
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`2003
`
`2004
`
`“Injection, Blow Molding,” Encyclopedia Britannica, 1997, available
`at https://www.slideshare.net/imtiazfiaz/injection-blow-molding
`
`“Manufacturing Processes – Blow Molding Plastics,” available at
`http://www.engineershandbook.com/MfgMethods/blowmolding.htm
`
`2005
`
`U.S. Patent No. 2,619,678 to Crooker
`
`2006
`
`“Types of Molding Processes,” available at
`https://sciencing.com/types-molding-processes-7651143.html
`
`2007
`
`Declaration of Daria DeLizio
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`v
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`I.
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`INTRODUCTION
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`Patent Owner Mattel Inc. (“Mattel”) submits this preliminary response to the
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`Petition by Dynacraft BSC, Inc. (“Petitioner”) requesting inter partes review
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`(“IPR”) and the cancelling of claims 1, 5-8, and 10 (“the challenged claims”) of
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`U.S. Patent No. 7,621,543 (“’543 patent,” attached to Petition as Ex. 1001). The
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`Patent Trial and Appeal Board should deny Petitioner’s obviousness-based
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`Petition. When Petitioner’s references and the challenged claims are reviewed in
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`light of the controlling Graham factors, including secondary considerations of
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`nonobviousness, it becomes apparent that Petitioner has failed to establish a
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`reasonable likelihood that it will prevail with respect to any of the challenged
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`claims.
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`For the reasons set forth below, the Board should deny Petitioner’s request
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`and should not institute an IPR for the challenged claims of the ’543 patent.
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`II.
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`SUMMARY OF ARGUMENTS
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`Dynacraft’s Petition should be denied for at least the following reasons:
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`(1)
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`Petitioner’s first proposed ground of obviousness effectively
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`combines four references. There is, however, no motivation shown for this four-
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`reference combination. The ’543 patent deals with wheels for battery-powered
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`ride-on toys (“BPRO”) for children. Yet, three of the references relate to disparate,
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`unrelated BPRO features – not the wheels – while the fourth relates to a
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`1
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`manufacturing process for a water cooler lid. None of these references discuss
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`BPRO wheels in any substantive way. The wheels generally shown in the figures
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`of these references also all suffer from the precise shortcomings that the ’543
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`patent solved; namely, they had very shallow tread patterns that were mandated by
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`the manufacturing methods available at the time. Moreover, Petitioner’s primary
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`BPRO reference – U.S. Patent No. 5,924,506 to Perego (“Perego”) – was the
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`precise reference over which the challenged claims were allowed during
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`prosecution.
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`There is never a single mention in these references of a problem with the tire
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`tread patterns being too shallow, or why one of skill might want to increase their
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`depth. Instead, these references focus on, e.g., a battery retainer, a steering
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`platform, and a mechanical pedal-based drive system. Nevertheless, Petitioner
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`cherry-picks what it perceives as the most favorable portion of each of the three
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`disclosures – which amounts to little more than the undescribed images of the tires
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`from the patent figures themselves and general statements that BPROs are intended
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`to look like, e.g., Jeeps, construction or military vehicles, race cars, etc. – and
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`combines them with a plastic molding handbook reference that discusses the
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`manufacture of a water cooler lid. But the handbook is not relevant to the ’543
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`patent, and Petitioner’s retained expert has to generate several of pages of
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`theoretical plastic stress and deformation calculations to attempt to shoehorn it into
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`2
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`
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`the challenged claims. In actuality, the manufacturing of a water cooler lid and
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`handle has little to do with the issues that permeate circumferential tire treads, and
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`one of skill in the art would not look to it to solve the problem described in the
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`’543 patent. Moreover, even if one of skill in the art did, he still would not arrive
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`at the challenged claims.
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`(2)
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`Petitioner also proffers an alternative argument that combines its
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`BPRO battery retainer reference with a rubber automobile tire. This argument also
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`should also be rejected. Suffice it to say, the limitations and considerations of hard
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`plastic toy wheels bear little relevance to malleable, rubber automobile tires. That
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`is why not a single BPRO reference that Petitioner raises has undercuts of the sort
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`claimed in the ’543 patent, yet automobile tires have had deep grooves in their
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`tread surfaces for decades. If BPRO manufacturers were as motivated and capable
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`of simply copying automobile tire tread patterns and manufacturing techniques as
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`Petitioner now claims, surely Petitioner would have been able to find at least one
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`prior art BPRO reference that actually did so. Petitioner was not able to do that,
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`and its alternative argument based on automobile tire art that predates the ’543
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`patent by many decades only further undermines its hindsight-based arguments.
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`For at least these reasons, Mattel submits that Dynacraft 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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`3
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`should decline to institute inter partes review for any of the challenged claims of
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`the ’543 patent.
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`III. STANDARDS FOR INSTITUTION
`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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`4
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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
`
`Comm’n, 605 F.3d 1330, 1342–43 (Fed. Cir. 2010); August Tech. Corp. v. Camtek
`
`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.
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`Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012).
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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 ’543 PATENT
`A. Prior Art Children’s Ride-On Wheels and Their Limitations
`As one of the leaders in the BPRO category through its Fisher-Price Power
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`Wheels brand, Mattel has long sought to make these ride-ons safer and more
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`durable for children. One of the limitations of these vehicles is that they most
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`often employ hard plastic wheels that, due to manufacturing limitations, often
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`cannot support tread patterns of any considerable depth. This is shown in the
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`BPROs that predate the ’543 patent, including the references that Petitioner relies
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`5
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`on. For example, Petitioner relies on Mattel’s U.S. Pub. No. 2005/0056474 to
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`Damon (“Damon”), a reference related to a unique battery retainer that included an
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`exemplary Jeep-styled BPRO in its figures. While the reference itself has very
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`little disclosure related to the wheels themselves, the product embodied by that
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`reference shows the shallow tread patterns of that period:
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`Part
`line
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`(Ex. 2001 at 10.)
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`Damon generally shows the same BPRO and tread pattern:
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`(Ex. 1003 at Fig. 1.)
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`6
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`The limitations in these treads originate from the way they are made. For
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`cost and ease of use reasons, these tires are made from hard plastic, as opposed to
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`rubber-like automobile tires. While this presents certain advantages, there are also
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`notable drawbacks. Specifically, these BPRO tires are made from two mirror
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`image halves that are sealed together at middle a part line that runs the outer
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`circumference of the tire. These half-tire sections are made in molds and must be
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`able to be removed from those molds. Just like an ice tray, this is not a problem so
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`long as the walls of the tray that mold the ice cubes do not get narrower as they go
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`from the bottom of the cavity to the top. This is why ice trays get wider from
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`bottom to top – if they went the other way, the ice cube would be locked in the tray
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`after it freezes:
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`7
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`Widening molding
`tray walls
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`Tray top
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`Tray bottom
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`Tray top
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`Tray bottom
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`
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`(Ex. 2002, U.S. Patent No. D636,412 at Figs. 4-5 (annotations added).)
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`Similarly, BPRO wheels with deep tread patterns can lock the wheels into
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`the molds because the tread patterns are formed by the portions of the molds
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`equivalent to the tray walls. Thus, with very limited, shallow exceptions, BPRO
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`wheels had to get wider as they approach the part line from the outer tread
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`portions. Big tread blocks or undulations around the circumference of the wheel
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`were not possible. The BPRO art that Petitioner raises shows exactly this:
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`8
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`Part
`line
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`Sidewall
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`Tread could not
`get higher as it
`went from part
`line to sidewall
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`(Petition at 50 (annotated in Petition); Ex. 1005 at Fig. 1 (annotations added).)
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`The manufacturing method most commonly used for making BPRO wheels
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`is a process called blow molding. With respect to blow-molded wheels, the ’543
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`patent describes the process used to make them as follows:
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`The wheels used on children's ride-on vehicles are often blow-molded from
`a suitable material, such as a plastic. Blow-molded wheels are
`conventionally formed using a mold that has two portions, which typically
`separate in an axial direction. The portions of the mold collectively define a
`cavity that defines, or corresponds to, the shape of the blow-molded wheels,
`including the tread surface. The seam, or part line, between the axially-
`separating mold portions typically defines, or corresponds to, the central
`circumferential portion of the wheel. During the blow-molding process, a
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`9
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`parison of molten plastic is introduced into the mold cavity and a pressurized
`gas, such as air, is used to force the molten plastic against the internal
`surface of the cavity in order to form a hollow wheel having a shape defined
`by the internal surface of the cavity. After a cooling period, the mold
`portions are separated, and the blow-molded wheel is removed.
`
`(Ex. 1001 at 1:24-39.)
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`
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`Blow molding is the technique commonly used for disposable water bottles,
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`and the general process is shown below with the conventional two-portion mold
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`described in the patent specification as prior art:
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`(Ex. 2003 at slide 18 (citing Encyclopedia Britannica, 1997).)
`10
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`This process, while effective in many instances, carries known limitations.
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`Most notably, while changes in mold dimensions were possible on the portion of
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`the molds that made, e.g., the sides of the above bottle (including the screw threads
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`at the very upper portion of the above bottle), the very top and bottom portions of
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`the mold and blow-molded item had to be mostly smooth. The reason for this is
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`simple: indentations that run perpendicular to the direction in which the molds
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`open (i.e., those at the very top surface and bottom surface of the mold) would
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`prevent the molds from being able to be opened. The ’543 patent describes this
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`drawback:
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`Blow-molded articles, including blow-molded wheels, as well as the
`corresponding molds and processes used to produce such articles,
`should be configured to permit removal of the finished article from
`the mold without deforming, tearing, or otherwise damaging the
`finished article. Projections or hollows on the surface of a blow-
`molded article typically correspond to hollows or projections on the
`inner surface of the corresponding mold. …When such projections or
`hollows are oriented generally parallel to the direction of mold
`removal, the projections on the mold or article are simply pulled out
`of the corresponding hollow during mold removal. In contrast, when
`the projections or hollows on a blow-molded article are not oriented
`generally parallel to the direction of mold removal, such as when they
`are oriented generally perpendicular to the direction of mold removal,
`such projections or hollows may be said to overlap corresponding
`portions of the mold with respect to the direction of mold-removal.
`11
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`Blow-molded articles that have projections or hollows that overlap
`corresponding portions of the mold with respect to the direction of
`mold-removal are commonly referred to as being “undercut.”
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`(Ex. 1001 at 1:40-65.)
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`
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`The primary limitation in using blow-molding to form the wheels of a
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`child’s battery-powered ride-on toy is that the most important section of the wheel
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`– the tread, which is the only portion that contacts the pavement or grass – is not
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`located on the “inner surface of the mold” that easily allows for “projections or
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`hollows.” (Id.) To the contrary, the tread runs along the top and bottom portions
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`of the wheel (when one looks at a cross section), and forming any “projections or
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`hollows” to make a tread would be perpendicular to and overlap the mold in the
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`direction in which the mold is opened, thereby restricting the ability to open the
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`mold.
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`
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`This phenomenon can be better understood by examining the image below.
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`If the mold halves below represent the molds used to make a wheel, only the very
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`top and bottom correlate to the portion used to make the tread surface. Any
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`indentations in the tread portion (circled in red) would result in the parison (blue)
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`wrapping around the indentation, cooling and hardening, and then preventing the
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`mold halves from opening back up to release the wheel:
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`12
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`(Ex. 2004.)
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`
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`Due to the residual malleability of the plastics used to form the parison,
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`some small undercuts are permissible in the conventional blow-molding process.
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`This is because very small protrusions would not necessarily lock the molds
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`together, and they could still be removed with enough force without causing
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`unacceptable damage to the wheel. As the ’543 patent explains:
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`Small undercuts may be permissible because blow-molded articles
`tend to shrink slightly during cooling, such that the article may pull
`away from the mold and release the overlap. Further, blow-molded
`articles may permit a small amount of elastic deformation or
`deflection, which may be sufficient to release small undercuts.
`However, undercuts over a certain threshold may effectively lock a
`blow-molded article into its mold. In particular, if an undercut is too
`large, the shrinkage and/or potential elastic deformation of the blow-
`
`13
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`
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`molded article may be insufficient to permit removal of the finished
`article without damage. Conventionally, blow-molded wheels must
`have undercuts of ⅛ inch (3.175 millimeters) or less so that they may
`be removed from the molds used to form the wheels.
`
`( Ex. 1001 at 1:66-2:12.)
`
`
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`The inability to have tread undercuts any larger than 1/8 inch significantly
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`inhibited the ability to make blow-molded wheels with any significant tread
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`pattern. The 1/8 inch limitation is not absolute, however, because the allowable
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`undercut is actually a product of the wheel’s diameter. As the wheel’s diameter
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`increases, the undercut can also get slightly larger because the plastic of the bigger
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`sidewall can flex more as the wheel was removed from the mold. Thus, to
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`accurately describe prior art undercuts: they could not exceed the larger of 1/8 inch
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`(for the most conventionally sized wheels) and 0.1% of the wheel’s diameter.
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`(Petition Ex. 1002, Arendt Declaration at 173-74 (“[T]he degree of permissible
`
`undercut for a tread surface of a blow-molded wheel was a function of the diameter
`
`of the wheel” and could not be “greater than the larger of 1/8 inch and 0.1% of the
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`wheel’s diameter.”).)
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`As explained below, the ’543 patent effectively overcame the technological
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`limitations that previously hindered prior art blow-molded wheels.
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`
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`
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`
`14
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`B. Specification of the ’543 Patent
`The ’543 patent describes both a child’s ride-on vehicle incorporating blow-
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`molded wheels with undercuts beyond what the prior art made possible, as well as
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`the molds used to make those improved blow-molded wheels. While Petitioner
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`places all of its emphasis on the ability of larger undercuts to make the wheels look
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`more realistic, the enlarged undercuts also allow for the wheel to provide the
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`vehicle with additional traction, thereby making the vehicle safer to operate. (Ex.
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`1001 at 14:12-14 (“may enhance the appearance or traction of tread surface 100.”)
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`(emphasis added).) The enlarged undercuts are shown, e.g., in Figures 5 and 7:
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`(Ex. 1001 at Figs. 5 and 7 (annotations added.)
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`15
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`For ease of description, undercuts 108 and 122 (circled above) from Fig. 5
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`are described further below. These undercuts are shown in Figure 6 (which
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`focuses on the top half of the wheel of Figure 5 after it is rotated 90 degrees):
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`Release
`
`Mold
`
`Mold
`
`Release
`
`Mold direction
`of first mold
`section
`
`(Ex. 1001 at Fig. 6 (annotations added).)
`
`
`
`16
`
`Mold direction
`of second mold
`section
`
`
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`

`

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`
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`As can be seen in Figure 6, it would not be possible using conventional
`
`techniques to blow-mold the above tire with an undercut of any considerable depth
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`because undercut regions 108 and 122, and corresponding thresholds 114 and 116,
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`would prevent the molds from being opened in the release direction shown above
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`(towards the left and right of this page). This is a result of the melted plastic filling
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`in those regions would fill in the undercuts (red arrows below), cooling and
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`hardening, and then blocking the mold from being opened:
`
`
`
`(Ex. 1001 at Fig. 6 (annotations added.)
`
`The ’543 patent describes this phenomenon accordingly:
`
`At least one of the first predetermined threshold 114, second
`predetermined threshold 120, third predetermined threshold 128, and
`17
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`fourth predetermined threshold 136, such as the first predetermined
`threshold 114 and/or the fourth predetermined threshold 136, may be
`functionally related to the manufacturing process and mold used to
`fabricate the blow-molded body 92. The first predetermined threshold
`114 corresponds to the situation at which the first radial distance 110
`sufficiently exceeds the second radial distance 112 such that any
`cooling-induced shrinkage of blow-molded body 92, which may occur
`after blowing (i.e., formation of the wheel in the mold), and/or the
`extent to which blow-molded body 92 may be elastically deflected or
`deformed as the mold portions are separated to permit removal of the
`wheel therefrom, either alone or in combination, are insufficient to
`provide removal clearance, or the ability to otherwise remove the
`blow-molded body 92 without damage, between the first region 106
`of the tread surface 100 of blow-molded body 92 and the portion of
`the mold corresponding to the second region 108 of the tread surface
`100 of blow-molded body 92. In particular, when the portion of the
`mold corresponding to the second region 108 of the tread surface 100
`is in the molding position (as will be more fully discussed below) and
`the first radial distance 110 exceeds the second radial distance 112 by
`more than the first predetermined threshold 114, the portion of the
`mold corresponding to the second region 108 of the tread surface 100
`may prevent removal of the finished blow-molded body from its mold
`without damaging the first region 106 of the tread surface 100 of the
`blow-molded body 92.
`
`(Ex. 1001 at 11:9-28.)
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`18
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`
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`To overcome the limitations of the molding process, and allow tread surface
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`to incorporate more substantial undercuts, the ’543 patent describes a new mold.
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`While this mold still included “first and second mold portions…configured to
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`separate in a direction parallel to the axis of the wheel,” it added additional
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`components not present in prior art molds. (Id. at 2:45-51.) Specifically, it added
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`“a first tread-molding portion and at least one second tread-molding portion.” (Id.
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`at 2:52-54.) The first tread-molding portion would mold the portion of the tread
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`adjacent to the sidewall of the wheel, while the second tread-molding portion was
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`movable and would mold the portion of the tread between the undercut and the
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`first mold portion and the part line. (Id. at 2:54-60.) With respect to the second
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`tread-molding portion, the specification explains:
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`The second tread-molding portion may be configured to move
`inwardly and outwardly relative to the first tread-molding portion,
`such as between a molding position and a release position. This
`relative movement of
`the second
`tread-molding portion may
`additionally or alternatively be referred to as movement toward and
`away from the mold cavity and/or movement into and out of the mold
`cavity.
`
`(Id. at 2:61-67.)
`
`These molds are illustrated in, e.g., Figs 8 and 9:
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`19
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`
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`(Ex. 1001 at Figs 8 and 9 (annotations added).)
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`
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`In these molds, actuators 216 can activate movable mold portion 190 such
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`that second tread molding portions 178 (circled red above) move in
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`circumferentially around the perimeter of the outer tread section of the tire to form,
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`e.g., undercut regions 108 or 122:
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`As shown in FIGS. 8-10, at least one of the at least one second tread-
`molding portion 178 may be configured to mold a second region of
`the tread surface of a wheel that is blow-molded or otherwise formed
`within cavity 180, such as wheel 90. For example, second tread-
`molding portion 178 may be configured to mold a second region 108
`of the tread surface 100 that is disposed between the first region 106
`and the part line 102 that is defined by the interface between the first
`20
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`

`

`
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`and second mold portions, as shown in FIGS. 8-10. In some
`embodiments, the second tread-molding portion 178 may be
`configured to mold a plurality of circumferentially spaced-apart tread
`blocks on the second region of the tread surface, such as those shown
`on the illustrative, non-exclusive example of wheel 90 that is
`presented in FIG. 7.
`
`(Id. at 16:25-38.)
`
`
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`The second tread molding portions 178 are also outwardly movable to
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`prevent them from obstructing removal of the plastic wheel from cavity 180, which
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`forms the sidewall of the wheel (sidewall molding portion 184) and outermost
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`portion of the tread that lies between the sidewall and undercut (internal surface
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`182). Tread molding portions 178 can be designed with additional shape and
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`contours to allow for, e.g., the sorts of more complex tread patterns shown in
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`Figure 7. The undercuts in these tread patterns could be considerably deeper than
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`those of the prior art:
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`[A]ny one or more of the first predetermined threshold 114, second
`predetermined threshold 120, third predetermined threshold 128, or
`fourth predetermined threshold 136 may be at least (approximately) 2
`mm (millimeters), 3 mm, 4 mm, 5 mm, 6 mm, 10 mm, 12.7 mm, 25
`mm, or more. Similarly, any one or more of the first predetermined
`threshold 114,
`threshold 120,
`second predetermined
`third
`predetermined threshold 128, or fourth predetermined threshold 136
`
`
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`21
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`
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`may be at least (approximately) 0.1%, 0.5%, 1%, 2%, 5%, or even
`10% or more of a diameter of blow-molded body 92[.]
`
`(Id. at 11:58-12:1.)
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`Petitioner claims that the above technology was “known and disclosed in the
`
`prior art.” (Petition at 6.) A review of the prosecution history and Petitioner’s
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`prior art references, however, demonstrates that not to be the case. These sorts of
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`moving tread molding sections that run the circumference of the wheel were
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`distinct and different from other BPRO wheel molds, or even automobile tire
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`molds, where the tread molding portions were unitary and formed directly into the
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`mold walls.
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`C. Prosecution History of the ’543 Patent
`The application that became the ’543 patent initially faced a restriction
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`requirement, in response to which Mattel chose claims related to a child’s ride-on
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`vehicle incorporating a new blow-molded wheel, and did not elect claims
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`pertaining to related method claims. (Ex. 1002 at 104-05; 118.) Following this
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`election, the Examiner rejected the chosen claims as obvious over Damon and
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`Perego – two of the primary references that Petitioner relies upon here. (Id. at 126-
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`29.) According to the Examiner at the time, Damon disclosed several of the
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`background claim elements related to a battery-powered children’s ride-on
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`vehicle). (Id. (e.g., a body, seat for a child, driven and steerable wheel(s).) While
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`
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`22
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`
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`Damon did not disclose wheels with interior circumferential regions that exceed
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`more external regions by a predetermined threshold (or undercut), the Examiner
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`alleged that Perego disclosed this limitation. (Id.)
`
`In response to the initial rejection, the inventors noted that one of skill in the
`
`art would not be motivated to combine Damon with Perego and that even if one
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`did, not all of the limitations of the claims would have been disclosed. (Id. at 165-
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`70.) The claims were also amended to include a “part line” limitation, as well as
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`further define the undercut threshold as being “greater than the larger of 1/8 inch
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`and .1% of the blow-molded [wheel] body’s diameter.” (Id. at 158-64.) With
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`respect to Perego in particular, it was noted that “Perego is completely silent as to
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`the tread surface of the wheel, let alone the actual size of the undercut of the
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`wheel’s tread surface.” (Id. at 167.) The claim amendments, which appeared
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`throughout the patent specification, were further supported by a declaration from