Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: April 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`v.
`MATTEL, INC.,
`Patent Owner.
`
`Case IPR2018-00042
`Patent 7,621,543 B2
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A. WORTH, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Dynacraft BSC, Inc. (“Petitioner”) filed a petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1, 5–8, and 10 (the “challenged
`claims”) of U.S. Patent No. 7,621,543 B2 (Ex. 1001, “the ’543 patent”).
`35 U.S.C. § 311. Mattel, Inc. (“Patent Owner”) timely filed a Preliminary
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: April 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`v.
`MATTEL, INC.,
`Patent Owner.
`
`Case IPR2018-00042
`Patent 7,621,543 B2
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A. WORTH, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Dynacraft BSC, Inc. (“Petitioner”) filed a petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1, 5–8, and 10 (the “challenged
`claims”) of U.S. Patent No. 7,621,543 B2 (Ex. 1001, “the ’543 patent”).
`35 U.S.C. § 311. Mattel, Inc. (“Patent Owner”) timely filed a Preliminary
`
`
`
`IPR2018-00042
`Patent 7,621,543 B2
`Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition filed
`under section 311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`37 C.F.R. § 42.108. Based on our review of the record, we conclude that
`Petitioner is not reasonably likely to prevail with respect to at least one of
`the challenged claims.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 24–75):
`
`References
`U.S. Patent Publication No. 2005/0056474
`A1 (Ex. 1003, “Damon”), U.S. Patent No.
`5,924,506 (Ex. 1004, “Perego”), and
`PLASTIC BLOW MOLDING HANDBOOK
`(Norman Lee ed., 1990) (excerpted)
`(Ex. 1006, “Handbook”)
`
`Damon and U.S. Patent No. 3,910,332
`(Ex. 1007, “Felker”)
`
`Claims
`challenged
`Basis
`§ 103 1, 5–8, and 10
`
`§ 103 1, 5–8, and 10
`
`Generally, Patent Owner contends that the Petition should be denied
`in its entirety. For the reasons described below, we decline to institute an
`inter partes review of any challenged claim.
`B. RELATED PROCEEDINGS
`The parties identified as a related proceeding the co-pending district
`court proceeding of Fisher-Price, Inc. v. Dynacraft BSC, Inc., 4:17-cv-3745-
`PJH (N.D. Cal.). Pet. 1; Paper 4, 1. Patent Owner further identified three
`
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`IPR2018-00042
`Patent 7,621,543 B2
`petitions filed in IPR2018-00038, -00039, and -00040 as matters that may
`affect this proceeding. Paper 4, 1.
`C. THE ’543 PATENT
`The ’543 patent is directed to “children’s ride-on vehicles, and more
`particularly to blow-molded wheels for children’s ride-on vehicles.”
`Ex. 1001, 1:8–10. The vehicles claimed in the ’543 patent utilize the same
`prior art features described in the Background of the Invention—a body
`having a seat sized for a child, a plurality of blow-molded wheels, and
`steering and drive assemblies—but also incorporate “blow-molded wheels
`having undercut treads.” Ex. 1001 at (54), 21:5–35, 21:56–22:3, 22:6–11;
`Ex. 1008 ¶ 33. The ’543 patent uses the term “undercut treads” to describe a
`blow–molded wheel having a radial distance to a first portion of the wheel’s
`tread surface that is greater than the radial distance to a second portion of the
`wheel’s tread surface, with the difference in the radial distances constituting
`an “undercut” or “predetermined threshold.” Ex. 1001 at (54), 1:40–2:26,
`21:5–35, 21:56–22:3, 22:6–11; see also Ex. 1002, 172–73 (“The term
`‘undercut’ . . . may be described as a ‘predetermined threshold’ of the
`difference of the radial distance to a first portion of a blow-molded wheel’s
`tread surface and the radial distance to a second portion of the wheel’s tread
`surface”).
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`IPR2018-00042
`Patent 7,621,543 B2
`Figure 6, which we
`reproduce at right, is a
`partial sectional view of
`an exemplary blow-
`molded wheel according
`to claim 1. The claimed
`vehicle includes wheels
`having a blow-molded
`body with a tread surface,
`two sidewalls, and a part line. Ex. 1001 at 21:7–17. Tread surface 100 and
`part line 102 extend circumferentially around body 92 of wheel 90 and
`between sidewalls 96, 98, and tread surface 100 has first region 106 and
`second region 108. Id. at 9:39–57. First region 106 is between first
`sidewall 96 and part line 102, while second region 108 is between first
`region 106 and part line 102. Id. at 9:57–66. Radial distance 110 to first
`region 106 is greater than radial distance 112 to second region 108 by the
`larger of 1/8 inch and 0.1% of the wheel body’s diameter. Id. at 9:67–10:4,
`17:61–67.
`Claim 1, which is the only independent claim among the challenged
`claims, recites:
`1. A children's ride-on vehicle, comprising:
`a body having at least one seat sized for a child;
`a plurality of wheels rotatably coupled to the body, wherein the
`plurality of wheels includes at least one driven wheel and at
`least one steerable wheel, wherein at least one of the plurality
`of wheels is a blow-molded wheel that comprises:
`a blow-molded body having a diameter, a tread surface, first
`and second sidewalls, a part line, and an axis, wherein the
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`IPR2018-00042
`Patent 7,621,543 B2
`body is configured to rotate about the axis, wherein the
`tread surface and the part line extend circumferentially
`around the body and between the first and second
`sidewalls;
`a first region of the tread surface, wherein the first region is
`disposed between the first sidewall and the part line of the
`blow-molded body; and
`a second region of the tread surface, wherein the second
`region is disposed between the first region and the part
`line,
`wherein a first radial distance from the axis to the first region
`exceeds a second radial distance from the axis to the
`second region by at least a first predetermined threshold,
`wherein the first predetermined threshold is greater than the
`larger of 1/8 inch and 0.1% of the diameter;
`a steering assembly comprising a steering mechanism adapted to
`receive steering inputs from a child sitting on the at least one
`seat, and a steering linkage adapted to convey the steering
`inputs to the at least one steerable wheel; and
`a drive assembly adapted to selectively drive the rotation of the
`at least one driven wheel.
`Id. at 21:5–35 (with line breaks added for clarity).
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`“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,
`2144–46 (2016) (affirming that USPTO has statutory authority to construe
`claims according to Rule 42.100(b)). When applying that standard, we
`interpret the claim language as it would be understood by one of ordinary
`
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`IPR2018-00042
`Patent 7,621,543 B2
`skill in the art in light of the specification. In re Suitco Surface, Inc., 603
`F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
`meaning that the term would have to a person of ordinary skill in the art in
`question’”) (internal citation omitted). Only terms which are in controversy
`need to be construed, and then only to the extent necessary to resolve the
`controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999).
`Petitioner and Patent Owner argue whether the wheels of the claimed
`ride-on vehicle must be “blow-molded.” Pet. 9–13; Prelim. Resp. 24–25.
`Because we determine that Petitioner has failed to adequately establish that
`an ordinarily skilled artisan would have combined the teachings of Damon
`with either the Handbook or Felker, we conclude that we need not resolve
`this claim interpretation dispute.
`B. LEGAL STANDARDS
`Petitioner challenges the patentability of claims 1, 5–8, and 10 on the
`grounds that the claims are obvious in light of various references including:
`Damon, Perego, the Handbook, and Felker. The Supreme Court in KSR
`International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the
`framework for determining obviousness as set forth in Graham v. John
`Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual
`inquiries set forth in Graham that we apply in determining whether a claim
`is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a)
`as follows: (1) determining the scope and content of the prior art,
`(2) ascertaining the differences between the prior art and the claims at issue,
`
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`IPR2018-00042
`Patent 7,621,543 B2
`(3) resolving the level of ordinary skill in the pertinent art, and
`(4) considering objective evidence indicating obviousness or
`nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we
`address each challenge below.
`C. CLAIMS 1, 5–8, AND 10:
`OBVIOUSNESS IN VIEW OF DAMON, PEREGO, AND THE HANDBOOK
`Petitioner argues that the combination of Damon, Perego, and the
`Handbook renders claims 1, 5–8, and 10 unpatentable as obvious. Pet. 26–
`53. Petitioner relies upon each of Damon and Perego as describing the
`general configuration of a children’s ride-on vehicle including the body,
`plurality of wheels, steering assembly, and drive assembly. Id. at 32–44.
`Petitioner contends that Perego illustrates a wheel having the claimed first
`and second regions of the tread surface that define first and second radial
`distances but for the recited limitation that a “first predetermined threshold is
`greater than the larger of 1/8 inch and 0.1% of the diameter” (the
`“dimensional limitation”). Id. at 38–40. Petitioner relies on the Handbook’s
`illustration of a blow-molded cooler lid with an undercut handle as
`describing the recited dimensional limitation. Id. at 40–41.
`Petitioner argues that an ordinarily skilled artisan would have reason
`to combine the teachings of the Handbook to arrive at the claimed
`dimensional limitation because DeGraaff mentions that “manufacturers [of
`ride-on toy vehicles] strive to simulate the appearance of adult vehicles.” Id.
`at 30 (quoting Ex. 1005, 1:8–11). Petitioner also relies upon testimony by
`Robert A. Malloy, Ph.D. that essentially tracks the Petition and cites the
`same sentence from DeGraaff. Id. (citing Ex. 1008 ¶ 66). Petitioner also
`relies upon the ’543 patent itself, which indicates that “blow-molded wheels
`. . . are often intended to resemble rubber tires.” Id. (quoting Ex. 1001,
`
`7
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`IPR2018-00042
`Patent 7,621,543 B2
`2:21–26). Lastly, Petitioner relies upon a general statement in Damon that
`children’s ride-on vehicles “may be shaped to generally resemble . . .
`corresponding full-sized, or adult-sized, vehicles.” Id. at 30–31 (quoting
`Ex. 1003 ¶ 29).
`Patent Owner argues that Petitioner’s reliance upon DeGraaff and
`Dr. Malloy’s testimony fails to provide any motivation to modify any aspect
`of the design of Perego’s wheels such that they meet the claimed
`dimensional limitation. Prelim. Resp. 49–51. We agree. Patent Owner
`correctly points out that DeGraaff is virtually devoid of any discussion of its
`wheel design, and the portion relied upon by Petitioner relates to the overall
`appearance of a child’s ride-on vehicle, not the design of treads on its
`wheels. Ex. 1005, 1:8–11; see also generally, id. (failing to discuss any
`aspect of shape of wheel 22). See Cheese Sys. Inc. v. Tetra Pak Cheese and
`Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013) (“Obviousness
`cannot be based on the hindsight combination of components selectively
`culled from the prior art to fit the parameters of the patented invention.”
`(internal quotation marks and citation omitted)). As explained in KSR, “a
`patent composed of several elements is not proved obvious merely by
`demonstrating that each of its elements was, independently, known in the
`prior art.” KSR, 550 U.S. at 418. Additionally, Petitioner’s reliance on the
`disclosure of the ’543 patent itself that “blow-molded wheels . . . are often
`intended to resemble rubber tires” is unpersuasive. Even if we consider the
`passage quoted to be describing a background knowledge of an ordinarily
`skilled artisan, the passage relates only generally to a desire to mimic the
`shape of real tires in a child’s ride-on vehicle without mentioning any aspect
`of the dimensional limitation. Petitioner’s extension of general statements
`
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`IPR2018-00042
`Patent 7,621,543 B2
`about mimicking the shape of real vehicles in a child’s ride-on vehicle into a
`motive to design wheels having the specific dimensional limitation amounts
`to impermissible hindsight reconstruction of claim 1.
`Patent Owner also contends that the Handbook fails to describe the
`dimensional limitation because the undercut handle of the cooler lid shown
`in the Handbook does not “extend circumferentially around the body” as
`recited in claim 1. Prelim. Resp. 54. Because of this failing, Patent Owner
`argues that the combination of Damon, Perego, and the Handbook fails to
`describe the dimensional limitation. We agree for the reasons expressed by
`Patent Owner.
`For the foregoing reasons, we determine that Petitioner has failed to
`demonstrate a reasonable likelihood of establishing that the combination of
`Damon, Perego, and the Handbook renders claim 1 or its dependent claims
`5–8 and 10 unpatentable as obvious. Accordingly, we do not institute inter
`partes review on this challenge to claims 1, 5–8, and 10.
`D. CLAIMS 1, 5–8, AND 10:
`OBVIOUSNESS IN VIEW DAMON AND FELKER
`Petitioner argues that the combination of Damon and Felker renders
`claims 1, 5–8, and 10 unpatentable as obvious. Pet. 53–75. Petitioner relies
`upon each of Damon as describing the general configuration of a children’s
`ride-on vehicle including the body, plurality of wheels, steering assembly,
`and drive assembly. Id. at 56–67. Petitioner contends that Felker illustrates
`a wheel having a blow-molded body with the claimed first and second
`regions of the tread surface that define first and second radial distances. Id.
`at 58–65. Petitioner also contends that Felker describes the dimensional
`limitation. Id. at 62–65.
`
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`IPR2018-00042
`Patent 7,621,543 B2
`Petitioner relies on essentially the same argument and evidence,
`primarily DeGraaff, to support its contention that an ordinarily skilled
`artisan would have been motivated to combine Felker with Damon as used
`to argue that the Handbook would have been combined with Damon and
`Perego. Compare id. at 54–55, with id. at 30–31 (differing only in citation to
`Ex. 1008 ¶ 78 rather than ¶ 66).1
`Patent Owner argues that DeGraaff fails to provide adequate rationale
`for altering Damon’s wheels for reasons paralleling its argument relating to
`Petitioner’s challenge based on Damon, Perego, and the Handbook. Prelim.
`Resp. 55–56. For the reasons expressed in Part II.C above regarding the
`inadequacy of the proffered rationale for modifying Perego, we find
`Petitioner’s proffered rationale for modifying Damon to be equally
`unpersuasive.
`For the foregoing reasons, we determine that Petitioner has failed to
`demonstrate a reasonable likelihood of establishing that the combination of
`Damon and Felker renders claim 1 or its dependent claims 5–8 and 10
`unpatentable as obvious. Accordingly, we do not institute inter partes
`review on this challenge to claims 1, 5–8, and 10.
`III. CONCLUSION
`For the reasons expressed above, we determine that Petitioner has
`failed to demonstrate a reasonable likelihood of showing that the challenged
`claims are unpatentable on all alleged grounds of unpatentability. This
`
`
`1 Paragraph 78 of Dr. Malloy’s testimony cites the same passages of
`DeGraaff, the ’543 patent, and Damon as those relied upon in paragraph 66.
`Compare Ex. 1008 ¶ 78, with id. ¶ 66.
`
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`IPR2018-00042
`Patent 7,621,543 B2
`Decision does not reflect a final determination on the patentability of any
`claim.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that the Petition is denied.
`
`11
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`
`
`IPR2018-00042
`Patent 7,621,543 B2
`PETITIONER:
`Larry L. Saret
`Kenneth M. Albridge III
`MICHAEL BEST & FRIEDRICH LLP
`llsaret@michaelbest.com
`kmalbridge@michaelbest.com
`
`PATENT OWNER:
`John Hutchins
`ANDREWS KURTH KENYON LLP
`jhutchins@kenyon.com
`
`12
`
`
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