`
`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 IPR2018-00042
`Patent 7,621,543
`
`
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,621,543
`
`

`

`
`
`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).......................................................................... 1 
`  GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ..................... 2 III.
`
`  THE ’543 PATENT ......................................................................................... 2 
`IV.
`A.  Subject Matter of the ’543 Patent ............................................................... 2 
`B.  Prosecution History of the ’543 Patent ....................................................... 7 
`C.  The Challenged Claims .............................................................................. 8 
`D.  How the Challenged Claims Are To Be Construed ................................... 9 
`THE RELEVANT PRIOR ART ................................................................... 14 
`A.  Damon (Ex. 1003) .................................................................................... 14 
`B.  Perego (Ex. 1004) ..................................................................................... 16 
`C.  DeGraaf (Ex. 1005) .................................................................................. 18 
`D.  Plastic Blow Molding Handbook (Ex. 1006) ........................................... 19 
`E.  Felker (Ex. 1007) ...................................................................................... 22 
`VI.
`  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 24 
`
`  GROUNDS OF UNPATENTABILITY ........................................................ 24 VII.
`A.  Summary of Grounds ............................................................................... 25 
`B.  Specific Grounds of Unpatentability of the Challenged
`Claims ....................................................................................................... 26 
`1.  Ground 1: Claims 1, 5-8 and 10 Are Obvious Over the
`Combination of Damon, Perego, and the Plastic Blow
`Molding Handbook.............................................................................. 26 
`
`V.
`
` 
`
`i
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`

`

`
`
`TABLE OF CONTENTS
`
`Page No.
`
`a.  Independent Claim 1 Is Unpatentable. ........................................... 26 
`b.  Dependent Claim 5 Is Unpatentable. ............................................. 44 
`c.  Dependent Claim 6 Is Unpatentable. ............................................. 46 
`d.  Dependent Claim 7 Is Unpatentable. ............................................. 48 
`e.  Dependent Claim 8 Is Unpatentable. ............................................. 49 
`f.  Dependent Claim 10 Is Unpatentable. ........................................... 51 
`2.  Ground 2: Claims 1, 5-8, and 10 are Obvious Over the
`Combination of Damon and Felker. .................................................... 53 
`a.  Independent Claim 1 Is Unpatentable. ........................................... 53 
`b.  Dependent Claim 5 Is Unpatentable. ............................................. 67 
`c.  Dependent Claim 6 Is Unpatentable. ............................................. 70 
`d.  Dependent Claim 7 Is Unpatentable. ............................................. 72 
`e.  Dependent Claim 8 Is Unpatentable. ............................................. 73 
`f.  Dependent Claim 10 Is Unpatentable. ........................................... 74 
`  PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ..................................... 75 VIII.
`
`  CONCLUSION .............................................................................................. 76 
`IX.
`
`ii
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`

`

`
`
`TABLE OF AUTHORITIES
`
`Page No.
`
`
`
`CASES
`
`Abbvie Inc. v. Matilda & Terence Kennedy Inst. of Rheumatology
`Trust, 764 F.3d 1366 (Fed. Cir. 2014) ................................................................ 27
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 9
`
`In re Baxter Travenol Labs.,
`952 F.2d 388 (Fed. Cir. 1991) ............................................................................ 27
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 14
`
`L&P Property Management Co. v. National Products, Inc.,
`
`IPR2016-00475, Paper 27 (PTAB July 19, 2017) .................................. 11, 13, 54
`
`Lemelson v. Gen. Mills, Inc.,
`968 F.2d 1202 (Fed. Cir. 1992) .......................................................................... 13
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) .......................................................................... 13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 9
`
`Purdue Pharma L.P. v. Epic Pharma, LLC,
`811 F.3d 1345 (Fed. Cir. 2016) .......................................................... 9, 10, 13, 54
`
`SmithKline Beecham Corp. v. Apotex Corp.,
`439 F.3d 1312 (Fed. Cir. 2006) ............................................................................ 9
`
`STATUTES
`
`35 U.S.C. § 102(b) ............................................................................................passim
`
`35 U.S.C. § 103 .......................................................................................................... 1
`
`35 U.S.C. § 103(a) ..................................................................................................... 7
`
`iii
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`

`

`
`
`TABLE OF AUTHORITIES
`
`Page No.
`
`
`
`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
`
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 1
`
`37 C.F.R. § 42.15(a) ................................................................................................. 75
`
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`
`37 C.F.R. § 42.103 ................................................................................................... 75
`
`37 C.F.R. § 42.104(a) ................................................................................................. 2
`
`iv
`
`

`

`
`
`LIST OF EXHIBITS
`
`Exhibit 1001 - U.S. Patent No. 7,621,543
`
`Exhibit 1002 - File History of U.S. Patent No. 7,621,543
`
`Exhibit 1003 - U.S. Patent Publication No. 2005/0056474 (“Damon”)
`
`Exhibit 1004 - U.S. Patent No. 5,924,506 (“Perego”)
`
`Exhibit 1005 - U.S. Patent No. 4,513,981 (“DeGraaff”)
`
`Exhibit 1006 - Plastic Blow Molding Handbook (Norman Lee ed., 1990)
`(excerpted)
`
`Exhibit 1007 - U.S. Patent No. 3,910,332 (“Felker”)
`
`Exhibit 1008 - Declaration of Robert A. Malloy, Ph.D. (“Malloy Decl.”)
`
`Exhibit 1009 - Curriculum Vitae of Robert A. Malloy, Ph.D.
`
`Exhibit 1010 - D.L. Peters, Blow Molding Highly Irregular Shaped Parts With
`Moving Mold Sections, in ANTEC 82: 40th Annual Technical
`Conference & Exhibition of the Society of Plastics Engineers, at
`711 (May 10-13, 1982)
`
`Exhibit 1011 - Concise Encyclopedia of Plastics (Donald V. Rosato et al. eds.,
`2000) (excerpted)
`
`Exhibit 1012 - Raymond Roarke & Warren Young, Formulas for Stress and Strain
`(5th ed. 1975) (excerpted)
`
`Exhibit 1013 - Marlex EHM 6007 Data Sheet (Jan. 2005)
`
`Exhibit 1014 - Webster’s 3rd New International Dictionary (2002) (excerpted)
`
`Exhibit 1015 - File History of U.S. Patent No. 8,348,385
`
`Exhibit 1016 - LinkedIn Profile of Christopher Lucas
`
`Exhibit 1017 - LinkedIn Profile of James Carducci
`
`v
`
`

`

`
`
`
`I.
`
`INTRODUCTION
`
`The Patent Trial and Appeal Board should cancel claims 1, 5-8, and 10 (“the
`
`challenged claims”) of U.S. Patent No. 7,621,543 (“’543 patent” or “Exhibit
`
`(‘Ex.’) 1001”) because they are unpatentable as obvious under 35 U.S.C. § 103.
`
`The challenged claims recite a ride-on vehicle including a blow-molded wheel.
`
` 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 ’543 patent in the United States
`
`District Court for the District of Delaware in an ongoing case originally captioned
`
`Fisher-Price, Inc. v. Dynacraft BSC, Inc., Case No. 1:17-cv-00051-LPS-CJB.
`
`That case has been transferred to 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.
`
`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
`
`
`
`1
`
`

`

`
`
`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 ’543 patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging claims 1, 5-8, and 10 of the ’543 patent on the grounds identified here.
`
`IV.
`
` THE ’543 PATENT
`
`The ’543 patent issued from U.S. Patent Application No. 11/509,421, filed
`
`on August 23, 2006. Ex. 1001 at [21], [22]. The ’543 patent does not claim
`
`priority to any earlier-filed application; therefore the earliest priority date to which
`
`the challenged claims are entitled is August 23, 2006.
`
`A.
`
`Subject Matter of the ’543 Patent
`
`The ’543 patent relates to “children’s ride-on vehicles, and more particularly
`
`to blow molded wheels for children’s ride-on vehicles and methods for producing
`
`
`
`2
`
`

`

`
`
`the same.” Ex. 1001 at 1:8-11. The basic features of such vehicles are well known
`
`in the art, as acknowledged in the ’543 patent’s Background of the Invention:
`
`Children's ride-on vehicles are reduced-scale vehicles that are
`designed and sized for use by children. For example, children's ride-
`on vehicles include a seat adapted to accommodate one or more
`children as well as steering and drive assemblies that are adapted to be
`operated by a child sitting on the seat. The drive assembly is adapted
`to drive the rotation of one or more of the vehicle's wheels and may
`include a battery-powered motor assembly or a manually powered
`drive assembly, such as a pedal-powered drive assembly.
`
`The wheels on children’s ride-on vehicles are often blow-
`molded from a suitable material, such as plastic.
`
`Id. at 1:15-25; Ex. 1008 at ¶ 31.
`
`The general process for creating blow-molded wheels also was well known,
`
`as further explained in the ’543 patent:
`
`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 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
`3
`
`
`
`

`

`
`
`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 1:26-39; Ex. 1008 at ¶ 32; see also Malloy Decl., Ex. 1008 at ¶¶ 15-18.
`
`Many blow-molded parts have relatively simple geometries that are easily
`
`removed from the mold sections that form the plastic part. Ex. 1008 at ¶ 19. Such
`
`items have no features that prevent relative movement in the direction of part
`
`removal from the mold cavity sections. Id. More complicated blow molded part
`
`geometries, however, may have features that prevent the solidified blow molded
`
`part from moving in the direction of ejection. Id. Such features are often
`
`described as “undercuts.” Id. Relatively “deep” undercut geometries may (i)
`
`prevent the solidified part from being ejected or removed from the open mold
`
`sections, or (ii) prevent the solidified part from being ejected or removed from the
`
`open mold sections without significant damage to the blow molded part. Id. at ¶
`
`20. In such cases, blow molds having additional moving mold sections (such as
`
`slides or moving cores) must be used to facilitate part removal. Id.
`
`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 at ¶ 33. The ’543 patent uses the term
`4
`
`
`
`

`

`
`
`“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; Ex. 1008 at ¶ 33; see also ’543
`
`Patent Prosecution History, Ex. 1002 at 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”).
`
`The claimed wheels require a blow-molded body with a tread surface, two
`
`sidewalls, and a part line. Ex. 1001 at 21:7-17; Ex. 1008 at ¶ 34. The tread surface
`
`and part line extend circumferentially around the body of the wheel and between
`
`the sidewalls, and the tread surface has at least two defined regions. Ex. 1001 at
`
`21:15-21; Ex. 1008 at ¶ 34. The first region is between the first sidewall and the
`
`part line, while the second region is between the first region and the part line. Ex.
`
`1001 at 21:18-23; Ex. 1008 at ¶ 34. The radial distance to the first region is greater
`
`than the radial distance to the second region by the larger of 1/8 inch and 0.1% of
`
`the wheel body’s diameter. Ex. 1001 at 21:23-28; Ex. 1008 at ¶ 34. The same
`
`tread surface configuration can be replicated on the other side of the part line. Ex.
`
`1001 at 21:56-22:3; Ex. 1008 at ¶ 34.
`
`
`
`5
`
`

`

`
`
`In other words, the ’543 patent claims a conventional ride-on vehicle with
`
`blow-molded wheels, where the wheels’ tread surface have at least a 1/8 inch
`
`undercut, or an undercut that equals at least 0.1% of the wheel body’s diameter,
`
`whichever is larger. Ex. 1008 at ¶ 35. To produce these undercuts and to ensure
`
`that the wheel does not become locked into the mold or damaged during the part
`
`removal process, the ’543 patent describes a blow-mold process that incorporates
`
`movable mold portions configured to move inwardly and outwardly between a
`
`molding position and release position, as illustrated below:
`
`
`
`
`
`Ex. 1001 at 2:26-39, 16:16-38, 17:14-25, Fig. 8, Fig. 9; Ex. 1008 at ¶ 35.
`
`As demonstrated by this Petition and the supporting evidence, the features of
`
`the claimed technology were known and disclosed in the prior art.
`
`
`
`6
`
`

`

`
`
`B.
`
`Prosecution History of the ’543 Patent
`
`U.S. Patent Application No. 11/509,421 was filed on August 23, 2006,
`
`including thirty-eight claims. Ex. 1002 at 1, 48-58. On December 16, 2008, the
`
`examiner issued a restriction requirement, directing Patent Owner to elect between
`
`three groups of claims: (i) claims 1-10, drawn to a ride-on vehicle; (ii) claims 11-
`
`26, drawn to a method of blow-molding a wheel; and (iii) claims 27-38, drawn to a
`
`blow-molded wheel. Id. at 102-08, 118. The examiner required election because,
`
`among other things, the blow-molded wheel of claims 27-38 (which also was
`
`recited in claims 1-10 with the exception of one limitation) “can be made through a
`
`different process than the blow molding process described in [claims 11-26], such
`
`as the method of extrusion and piecing together of separate rubber parts.” Id. at
`
`104-05. In response, Patent Owner elected the first group, claims 1-10, “without
`
`traverse.” Id. at 112-19. Patent Owner also submitted new claims 39-44. Id.
`
`On March 26, 2009, the examiner rejected claims 1-10 as obvious under 35
`
`U.S.C. § 103(a) over Damon in view of Perego. Ex. 1002 at 126-29. Patent
`
`Owner responded on June 16, 2009, and claim 1 was amended to add a limitation
`
`that the radial distance to the first region be greater than the radial distance to the
`
`second region “by the larger of 1/8 inch and 0.1% of the wheel body’s diameter.”
`
`Id. at 157-50. Patent Owner then argued that the examiner’s rejections should be
`
`withdrawn, asserting that (i) Damon and Perego fail to disclose each and every
`
`
`
`7
`
`

`

`
`
`limitation of amended claim 1; and (ii) one of ordinary skill in the art would not
`
`have been motivated to modify the proposed combination of Damon and Perego to
`
`arrive at the subject matter of amended claim 1. Id. at 166-70.
`
`In support, Patent Owner submitted an inventor declaration signed by Albert
`
`Arendt, who testified that “[t]he illustrated wheel [of Perego] does not have a tread
`
`surface with an undercut that is equal to, much less greater than, 0.1% of the
`
`wheel’s diameter” and that “the illustrated undercut of the tread surface would not
`
`have been greater than 1/8 inch.” Ex. 1002 at 171-76. Mr. Arendt further opined
`
`that wheels having such undercuts were not an “available design choice” and could
`
`not be produced using known blow-molding processes. Id. at 174-75. The
`
`dimensions of the undercut appear in each of the challenged claims.
`
`On August 11, 2009, the examiner issued a Notice of Allowance of claims 1-
`
`10 and 39-48. Ex. 1002 at 180-83. The ’543 patent issued on November 24, 2009,
`
`with application claims 1-10 corresponding to issued claims 1-10 and application
`
`claims 39-48 corresponding to issued claims 11-20. Ex. 1001 at [45], 21:5-24:57;
`
`Ex. 1002 at 158-64.
`
`C. The Challenged Claims
`
`Petitioner requests cancellation of claims 1, 5-8, and 10 of the ’543 patent.
`
`Claim 1 is an independent claim. Claims 5, 8, and 10 each depend directly from
`
`claim 1. Claim 6 depends from claim 5, and claim 7 depends from claim 6.
`
`
`
`8
`
`

`

`
`
`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. 1008 at ¶ 21.
`
`Applying that interpretation, the term “blow-molded,” which appears in each
`
`of the challenged claims, should be construed as a product-by-process limitation
`
`without patentable weight. “A product-by-process claim is one in which the
`
`product is defined at least in part in terms of the method or process by which it is
`
`made.” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed.
`
`Cir. 2006) (quotation omitted). Properly identifying such limitations is important
`
`because “[i]n determining validity of a product-by-process claim, the focus is on
`
`the product and not the process of making it.” Purdue Pharma L.P. v. Epic
`
`Pharma, LLC, 811 F.3d 1345, 1354 (Fed. Cir. 2016) (quotation omitted). “That is
`
`
`
`9
`
`

`

`
`
`because of the . . . long-standing rule that an old product is not patentable even if it
`
`is made by a new process.” Id.
`
`The wheel and wheel body of the challenged claims are described by the
`
`process by which they are made—namely, blow molding, but that process should
`
`not distinguish the wheel and wheel body from such articles made by other
`
`processes. A “blow molded” article is commonly defined as “a product produced
`
`by blow molding.” Blow Molded, Webster’s 3rd New International Dictionary
`
`(2002), Ex. 1014 at 239. And “blow molding” generally refers to “a process of
`
`forming hollow wares (as of plastic) by use of internal pressure (as of compressed
`
`air) to press the material against the inside of a mold.” Blow Molding, Webster’s
`
`3rd New International Dictionary (2002), Ex. 1014 at 239.
`
`The Patent Owner conceded that “blow-molded” wheels are old. For
`
`example, in the Background of the Invention, the ’543 patent states:
`
`The wheels used on children’s ride-on vehicles are often blow-molded
`from a suitable material such as plastic. . . . During the blow-molding
`process, a parison of molten plastic is introduced into the mold cavity
`and 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 (emphasis added).
`
`
`
`10
`
`

`

`
`
`Moreover, the ’543 patent states that wheels having the features of the
`
`challenged claims also may be “formed by another suitable process, such as an
`
`injection molding process.” Ex. 1001 at 19:41-47. “Therefore, while wheels 90
`
`have been described herein as being blow-molded wheels, they may alternatively
`
`be formed by other processes without departing from the scope of the present
`
`disclosure.” Id. at 19:47-50; see also ’543 Patent, Ex. 1001 at 14:58-60 (“it is
`
`within the scope of the present disclosure that wheels 90 according to the present
`
`disclosure may be manufactured in any suitable mold and/or molding process”). In
`
`other words, the ’543 patent concedes that the term “blow molded” is not material
`
`to the challenged claims.
`
`
`
`The Board considered a similar situation in L&P Property Management Co.
`
`v. National Products, Inc., IPR2016-00475, Paper 27 (PTAB July 19, 2017). In
`
`that case, the patent owner claimed various “molded” parts and characterized the
`
`term as structural, arguing that “a molded part is structurally different than a
`
`corresponding non-molded part.” Id. at 12-13. The Board rejected this argument,
`
`noting, among other things, that the “[s]pecification describes ‘molding’ in terms
`
`of processes, rather than particular structures that result from a process.” Id. at 13.
`
`This case presents an even stronger basis for treating the term “blow-molded” as a
`
`process limitation without patentable significance given that the specification of
`
`
`
`11
`
`

`

`
`
`the ’543 patent expressly states that the claimed wheels can be made from
`
`alternative processes. See Ex. 1001 at 14:58-60, 19:47-50.
`
`
`
`In addition, during prosecution of the ’543 patent, Patent Owner elected
`
`application claims 1-10 (which correspond to issued claims 1-10) without traverse
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`in response to a restriction requirement. Ex. 1002 at 112-19. The examiner
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`explained that the then-present claims recited patentably distinct inventions, in part
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`because the blow-molded wheel of application claims 27-38 (which were sub-
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`combination claims directed to the blow-molded wheel of the elected claims, with
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`a 5mm undercut) “can be made through a different process than the blow molding
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`process described in [claims 11-26], such as the method of extrusion and piecing
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`together of separate rubber parts.” Ex. 1002 at 104-05. Thus, Patent Owner
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`effectively conceded during prosecution of the ’543 patent that the term “blow-
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`molded” was not entitled to patentable weight.
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`Patent Owner also acquiesced to the term “blow-molded” being treated as a
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`process limitation during prosecution of a related application. The related
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`application recited a “blow-molded wheel” and “blow-molded body” having
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`features almost identical to those recited in claim 1 of the ’543 patent, and Patent
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`Owner attempted to distinguish the prior art by arguing that the prior art was
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`formed by injection molding. Ex. 1015 at 164, 190. Consistent with the reasoning
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`in the restriction requirement issued during prosecution of the ’543 patent,
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`12
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`however, the same examiner noted in a final rejection “that in an apparatus, it does
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`not matter what process was used to make such a wheel as long as the same
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`product is produced.” Id. at 190. In response, though professing to disagree with
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`the rejection, Patent Owner cancelled the claim at issue and amended the
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`corresponding dependent claims to depend from a claim that the examiner had
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`otherwise found allowable. Id. at 206.
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`Having “acquiesce[d] to a rejection and to an agreed alternative,” both with
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`respect to the restriction requirement during prosecution of the ’543 patent and the
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`final office action during prosecution of its related application, Patent Owner
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`cannot now “shift [its] stance 180° to argue for a second bite at the abandoned
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`apple.” Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1207-08 (Fed. Cir. 1992); see
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`also Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003)
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`(“The prosecution history of a related patent can be relevant if, for example, it
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`addresses a limitation in common with the patent in suit.”). “Other players in the
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`marketplace are entitled to rely on the record made in the Patent Office in
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`determining the meaning and scope of the patent.” Lemelson, 968 F.2d at 1208.
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`
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`Accordingly, the term “blow-molded” should not be given patentable
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`weight. See Purdue Pharma L.P., 811 F.3d at 1354; L&P Prop. Mgmt. Co.,
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`IPR2016-00475, Paper 27 at 16. But even if it is, the challenged claims are still
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`unpatentable, as demonstrated below.
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`
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`13
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`V.
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` THE RELEVANT PRIOR ART
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`Each of the challenged claims is unpatentable in view of the following
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`references directed to ride-on vehicles or the design and manufacture of molded
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`parts and components: (A) Damon; (B) Perego; (C) DeGraaff; (D) the Plastic Blow
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`Mold Handbook; and (E) Felker. Each reference is analogous prior art to the
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`challenged claims because it is at a minimum either from the same field of
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`endeavor or the reference is reasonably pertinent to the problem faced by the patent
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`applicants. See Ex. 1008 at ¶¶ 42, 46, 48, 49, 55; see also In re Bigio, 381 F.3d
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`1320, 1325 (Fed. Cir. 2004) (“Two separate tests define the scope of analogous
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`prior art: (1) whether the art is from the same field of endeavor, regardless of the
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`problem addressed and, (2) if the reference is not within the field of the inventor's
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`endeavor, whether the reference still is reasonably pertinent to the particular
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`problem with which the inventor is involved.”).
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`Damon, Perego, and DeGraaff were before the Patent Office when the
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`examiner allowed the challenged claims, but the Plastic Blow Mold Handbook and
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`Felker were not.
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`A. Damon (Ex. 1003)
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`Damon is a patent application published on March 17, 2005. Ex. 1003 at
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`(43). It is prior art under 35 U.S.C. § 102(b) because the challenged claims are
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`entitled to a filing date no earlier than August 23, 2006.
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`
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`14
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`Damon discloses a children’s ride-on vehicle in the form of a reduced scale
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`Jeep® vehicle. Ex. 1003 at [0027], [0029]; Ex. 1008 at ¶ 42. Figures 1 and 2 of
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`Damon illustrate examples of the vehicle and are reproduced below:
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`
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`
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`Ex. 1003 at Fig. 1, Fig. 2; Ex. 1008 at ¶ 42.
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`The vehicle includes, among other things, a body 12 “with a seat assembly
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`16 that is sized and configured to accommodate at least one child” (Ex. 1003 at
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`[0027]), a steering assembly 26 that “includes a steering column 40 and a steering
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`mechanism 42” and “enables a child sitting on seat 18 [of seat assembly 16] to
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`steer” the vehicle (id. at [0031]), a motor assembly 46 including a “battery-
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`powered motor 48 that is adapted to drive the rotation of at least one” of the
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`vehicle’s wheels (id. at [0033]), a battery assembly 60 including a “battery, or cell,
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`62 that is adapted to provide power to the motor” (id. at [0034]), “a drive actuator
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`104, through which a user input directing the battery assembly to energize the
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`motor assembly is received” (id. at [0038]), “a speed switch 110, which enables a
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`
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`15
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`
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`user to select the relative rotation of the motor assembly’s output 50” (id. at
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`[0039]), and “a direction switch 112, which enables a user to select the relative
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`direction (i.e., clockwise or counterclockwise) of rotation of output 50 and thereby
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`configure the vehicle to drive in forward and reverse directions” (id. at [0039]).
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`See also Malloy Decl., Ex. 1008 at ¶ 43.
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`The body 12 “typically is formed from molded plastic” and “includes a
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`plurality of wheels 22” having a tread surface, as shown below:
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`Ex. 1003 at [0028], [0030], Fig. 1 (excerpted); Ex. 1008 at ¶ 44.
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`B.
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`Perego (Ex. 1004)
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`
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`Perego is a patent issued on July 20, 1999. Ex. 1004 at [45]. It is prior art
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`under 35 U.S.C. § 102(b) because the challenged claims are entitled to a filing date
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`no earlier than August 23, 2006.
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`
`
`16
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`
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`Perego discloses “a motorized wheel assembly suitable for use in a toy
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`vehicle, for example an electric toy car, in which the child can sit.” Ex. 1004 at
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`1:5-7; Ex. 1008 at ¶ 46. The wheel assembly comprises “a wheel 13 (for example
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`in moulded plastic)” having undercut treads, as illustrated in Figure 2 of Perego,
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`which is reproduced below:
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`
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`Ex. 1004 at 1:56-58, Fig. 2 (annotations added); Ex. 1008 at ¶ 46; see also ’543
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`Patent Prosecution History, Ex. 1002 at 175 (inventor declaration admitting “the
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`[Perego] illustrated wheel was likely produced by a blow-molding process” and
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`shows an “undercut”).
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`17
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`C. DeGraaf (Ex. 1005)
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`DeGraaf is a patent issued on April 30, 1985. Ex. 1005 at [45]. It is prior
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`art under 35 U.S.C. § 102(b) because the challenged claims are entitled to a filing
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`date no earlier than August 23, 2006.
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`DeGraaf discloses a “ride-on toy vehicle with front wheel drive and
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`outboard front whe