Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 10
`Entered: August 21, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE WALT DISNEY COMPANY,
`DISNEY INTERACTIVE STUDIOS, INC.,
`DISNEY CONSUMER PRODUCTS AND INTERACTIVE MEDIA, INC.,
`and DISNEY STORES USA, LLC,
`Petitioner,
`
`v.
`
`INTERACTIVE TOYBOX, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00609
`Patent 6,471,565 B2
`____________
`
`Before LAURA A. PETER, Deputy Under Secretary of Commerce for
`Intellectual Property and Deputy Director of the United States Patent and
`Trademark Office, JAMES A. WORTH, and MATTHEW S. MEYERS,
`Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 10
`Entered: August 21, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE WALT DISNEY COMPANY,
`DISNEY INTERACTIVE STUDIOS, INC.,
`DISNEY CONSUMER PRODUCTS AND INTERACTIVE MEDIA, INC.,
`and DISNEY STORES USA, LLC,
`Petitioner,
`
`v.
`
`INTERACTIVE TOYBOX, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00609
`Patent 6,471,565 B2
`____________
`
`Before LAURA A. PETER, Deputy Under Secretary of Commerce for
`Intellectual Property and Deputy Director of the United States Patent and
`Trademark Office, JAMES A. WORTH, and MATTHEW S. MEYERS,
`Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-00609
`Patent 6,471,565 B2
`
`
`I.
`
`INTRODUCTION
`Background
`A.
`The Walt Disney Company, Disney Interactive Studios, Inc., Disney
`Consumer Products and Interactive Media, Inc., and Disney Stores USA,
`LLC (collectively, “Petitioner”) filed a Petition to institute an inter partes
`review of claims 1–5 of U.S. Patent No. 6,471,565 B2 (Ex. 1001, “the ’565
`Patent”). Paper 1 (“Pet.”). Interactive Toybox, LLC (“Patent Owner”) filed
`a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have authority
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`be instituted unless the information presented in the Petition shows “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); see also
`37 C.F.R. § 42.4(a). Upon consideration of the Petition and Preliminary
`Response, it is our determination that the information presented does not
`show a reasonable likelihood that Petitioner would prevail with respect to
`any claim challenged in the Petition, based at least in part that the scope and
`meaning of the claims cannot be determined without speculation. See 35
`U.S.C. § 314(a).
`
`Related Proceedings
`B.
`Petitioner identifies itself as the real parties in interest for this
`proceeding. Pet. 59. Patent Owner identifies itself and its parent, Bada-
`Tech LLC as the real parties in interest for this proceeding. Paper 7, 1.
`Petitioner and Patent Owner state that the ’565 Patent is involved in:
`1) Interactive Toybox, LLC v. The Walt Disney Company, Disney
`Interactive Studios, Inc., and Disney Consumer Products and
`Interactive Media, Inc., Case No. 2:18-cv-09136 (C.D. Cal.). Pet.
`59; Prelim. Resp. 2; Paper 7, 2.
`
`2
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`IPR2019-00609
`Patent 6,471,565 B2
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`
`2) Interactive Toybox, LLC v. Disney Stores USA, LLC, et al., Case
`No. 1:18-cv-00819-RP (W.D. Tex.), which was stayed on January
`14, 2019. Pet. 59; Paper 7, 2.
`Petitioner further states that the ’565 Patent was asserted in Interactive
`Toybox, LLC v. Activision Blizzard, Inc., Case No. 1:16-cv-01305-SS (W.D.
`Tex.), which has since been terminated. Pet. 59.
`Petitioner and Patent Owner also state that that a European
`counterpart to the ’565 Patent was issued on June 16, 2004 as European
`Patent No. 1 152 809 (Ex. 1004, “EP ’809”), and was involved in an
`opposition before the European Patent Office (Ex. 1005, “Opposition
`Proceeding”). Pet. 3–4; Prelim. Resp. 1.
`C.
`The ’565 Patent
`The ’565 Patent is related generally to a “toy capable of interacting
`with accessories which are associated with it and are actuated by a child.”
`Ex. 1001, 1:11–14. Figure 1 of the ’565 Patent is reproduced below:
`
`
`Figure 1 “is a schematic representation of the implementation of the
`principle applied to representing a baby.” Id. at 2:38–39.
`
`3
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`IPR2019-00609
`Patent 6,471,565 B2
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`
`As shown above, Figure 1 shows baby doll toy 10 comprises central
`processing unit 1 and two couplers, i.e., closed loops 12 and 17, that interact,
`and “especially exchange data,” with inductive labels 8 positioned within
`accessories 14, 15, and 16. Id. at 2:42–62, 3:53–54.
`Figure 2 of the ’565 Patent is reproduced below:
`
`
`Figure 2 “is a schematic representation of the interaction between the
`central processing unit and the accessories.” Id. at 2:40–41.
`As shown above, Figure 2 depicts inductive coupler 3, “in the form of
`a coil or of a loop through which a current of defined frequency flows.” Id.
`at 3:45–47. The ’565 Patent describes that inductive coupler 3 “is intended
`to interact with passive or active inductive labels (8), that is to say those
`which are autonomous or not containing any energy source proper.” Id. at
`3:53–55.
`
`4
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`IPR2019-00609
`Patent 6,471,565 B2
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`
`Illustrative Claims
`D.
`Petitioner challenges claims 1–5 of the ’565 Patent. Claim 1, the only
`independent claim, is reproduced below:
`1. A toy comprising a toy proper and a plurality of accessories,
`comprising:
`at least one processing unit comprising at least one of a
`microprocessor and a microcontroller incorporated into the toy
`proper;
`an autonomous electrical supply for supplying said at least
`one processing unit with electrical energy;
`an assembly of at least one of a sensor and an actuator
`connected to interfaces integrated into said at least one
`processing unit for carrying out at least one type of function;
`at least one inductive coupler connected to said at least one
`processing unit; and
`wherein each of the plurality of accessories comprises at
`least one inductive label for interacting electromagnetically with
`said inductive coupler so that a current of defined frequency
`flows through said at least one inductive coupler connected to
`said at least one processing unit and said at least one inductive
`coupler exchanges with said at least one inductive label binary
`data corresponding to at least one of a phase and an amplitude
`state of the frequency modulation.
`
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges claims 1–5 on the following grounds.
`Reference(s)
`Basis
`Challenged Claim(s)
`White1
`§ 102(b)
`1–4
`White and Gilboa2
`§ 103(a)
`5
`White and Koo3
`§ 103(a)
`1–5
`
`
`1 WO 97/23060 A1, published June 26, 1997 (Ex. 1008, “White”).
`2 U.S. Patent No. 4,814,595, issued Mar. 21, 1989 (Ex. 1011, “Gilboa”).
`3 U.S. Patent No. 5,345,231, issued Sept. 6, 1994 (Ex. 1012, “Koo”).
`
`5
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`IPR2019-00609
`Patent 6,471,565 B2
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`To support its Petition, Petitioner proffers a Declaration of Dr. Sayfe
`Kiaei. Ex. 1002.
`
`II. ANALYSIS
`In an inter partes review proceeding for a petition filed on or after
`November 13, 2018, a patent claim shall be construed using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). This rule adopts
`the same claim construction standard used by Article III federal courts,
`which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc), and its progeny. Under that standard, the words of a claim are
`generally given their “ordinary and customary meaning,” which is the
`meaning the term would have to a person of ordinary skill at the time of the
`invention, in the context of the entire patent including the specification. See
`Phillips, 415 F.3d at 1312–13. “[W]here a party believes that a specific term
`has meaning other than its plain meaning, the party should provide a
`statement identifying a proposed construction of the particular term and
`where the disclosure supports that meaning.” Office Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`In light of the parties’ arguments and evidence, we find that it is
`necessary to construe only the term below for our determination of whether
`to institute review of the challenged claims. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)) (noting that “we need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’”).
`Independent Claim 1 recites:
`
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`IPR2019-00609
`Patent 6,471,565 B2
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`
`wherein each of the plurality of accessories comprises at least
`one inductive label for interacting electromagnetically with said
`inductive coupler so that a current of defined frequency flows
`through said at least one inductive coupler connected to said at
`least one processing unit and said at least one inductive coupler
`exchanges with said at least one inductive label binary data
`corresponding to at least one of a phase and an amplitude state
`of the frequency modulation.
`Ex. 1001, 6:9–17.
`Petitioner asserts that “the claim requirement that the binary data must
`correspond to ‘at least one of a phase and an amplitude state of the
`frequency modulation’” is ambiguous because there is “no clear antecedent
`for ‘the frequency modulation.’” Pet. 12. For purposes of its Petition,
`Petitioner asserts that “a POSITA would recognize that use of the phrase
`‘the frequency modulation’ is an antecedent reference to the carrier wave
`mentioned earlier in the claim, i.e., the ‘current of defined frequency.’” Id.
`(citing Ex. 1002 ¶¶ 91–93).
`In response, Patent Owner argues that the limitation in question is not
`ambiguous. In support, Patent Owner asserts that “the EPO held that the
`French translation of claim 1 is not directed to frequency modulation, but
`rather to modulation of phase or amplitude of a signal ‘of specific
`frequency’ or ‘of fixed frequency.’” Prelim. Resp. 6–8 (citing Ex. 1005, 5–
`7).
`
`On the current record, we are unable to ascertain the meaning of the
`phrase:
`wherein each of the plurality of accessories comprises at least
`one inductive label for interacting electromagnetically with said
`inductive coupler so that a current of defined frequency flows
`through said at least one inductive coupler connected to said at
`least one processing unit and said at least one inductive coupler
`
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`IPR2019-00609
`Patent 6,471,565 B2
`
`
`exchanges with said at least one inductive label binary data
`corresponding to at least one of a phase and an amplitude state
`of the frequency modulation.
`(Ex. 1001, 6:9–17), as recited by independent claim 1. The limitation at
`issue recites “the frequency modulation.” This suggests that the antecedent
`basis for “the frequency modulation” is provided at some point earlier within
`independent claim 1. See MPEP § 2173.05(e). Claim 1, however, neither
`provides antecedent basis for “the frequency modulation” nor recites any
`other aspects of “frequency modulation.” See Energizer Holdings, Inc. v.
`ITC, 435 F.3d 1366, 1370–71 (Fed. Cir. 2006) (holding that a lack of
`antecedent basis can render a claim indefinite if the claim language would
`not have a “reasonably ascertainable meaning” to a person of ordinary skill
`in the art).
`Petitioner asserts that “a current of defined frequency” provides the
`requisite antecedent basis for “the frequency modulation.” Pet. 12. We are
`not persuaded, however, that a person of ordinary skill in the art readily
`would have understood “the frequency modulation” to refer to “a current of
`defined frequency” recited earlier in independent claim 1. In making this
`determination, we first look to the ’565 Patent’s Specification, and note that
`there are only two instances where the term “the frequency modulation” is
`referenced in the ’565 Patent. See, e.g., Ex. 1001, Abs., 2:20. However, we
`find nothing at these portions of the Specification, or in the surrounding
`context, that would suggest that one of ordinary skill in the art would have
`readily understood “the frequency modulation” to refer to “a current of
`defined frequency,” as Petitioner suggests. The ’565 Patent’s prosecution
`history provides no additional guidance. See generally Ex. 1003.
`
`8
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`IPR2019-00609
`Patent 6,471,565 B2
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`
`We next turn to the testimony of Petitioner’s expert declarant Dr.
`Kiaei. See generally Pet. 12–13 (citing Ex. 1002 ¶¶ 89–93). Dr. Kiaei
`explains:
`[t]he phrase “the frequency modulation” used at the end of Claim
`1 could be confusing because “frequency modulation” is not
`mentioned in the claim at all. And one of ordinary skill in the art
`would generally recognize “frequency modulation” as a
`technique for modulating a carrier wave, not as a reference to the
`carrier wave itself.
`Ex. 1002 ¶ 91. Dr. Kiaei further explains that
`[o]ne of skill in the art would also recognize that utilizing a
`frequency modulation technique is not consistent with also
`altering the amplitude because amplitude modulation requires
`that the frequency of a carrier wave be held constant. Thus,
`“frequency modulation” in this claim is a reference to the carrier
`wave, or “current of defined frequency,” mentioned earlier in the
`claim.
`Id. Dr. Kiaei’s testimony, however, fails to persuade us that one of ordinary
`skill in the art would have readily understood “a current of defined
`frequency” to provide the requisite antecedent basis for “the frequency
`modulation.” Here, Dr. Kiaei testifies on the one hand that “one of ordinary
`skill in the art would generally recognize ‘frequency modulation’ as a
`technique for modulating a carrier wave, not as a reference to the carrier
`wave itself” (id. (emphasis added)), but then, summarily concludes in the
`same paragraph that “‘frequency modulation’ in this claim is a reference to
`the carrier wave, or ‘current of defined frequency’” (id. (emphasis added)).
`Dr. Kiaei’s reasoning is internally contradictory and we determine that he
`has not provided adequate support for his conclusion.
`Patent Owner’s reliance on the EPO decision also fails to provide
`more clarity. See Prelim. Resp. 6–9 (quoting Ex. 1005, 5–7). Here, relying
`
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`IPR2019-00609
`Patent 6,471,565 B2
`
`on the EPO decision, Patent Owner asserts that “the EPO held that the
`French translation of claim 1 is not directed to frequency modulation, but
`rather to modulation of phase or amplitude of a signal ‘of specific
`frequency’ or ‘of fixed frequency.’” Prelim. Resp. 8 (citing Ex. 1005, 5–7).
`In making their determination, the EPO attributed any potential ambiguity to
`an “abuse of language [that] arises simply from a synecdoche, which
`designates a signal by its primary characteristic, frequency.” Ex. 1005, 6.
`However, it is unclear on this record how a “frequency modulation” can
`refer back to a “defined” frequency or a “current of defined frequency,” as a
`matter of antecedent basis. A frequency cannot both be modulated and fixed
`at the same time. See, e.g., Ex. 1002 ¶¶ 42–48. Such a reading would
`simply read “modulation,” as it appears in the phrase “the frequency
`modulation” limitation, out of the claim. See Texas Instr. Inc. v. U.S. Int’l
`Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (holding that claim
`language cannot be mere surplusage and an express limitation cannot be read
`out of the claim).
`In this context, we decline to speculate as to the intended meaning of
`“the frequency modulation.” If the scope and meaning of the claims cannot
`be determined without speculation, the differences between the challenged
`claims and the prior art cannot be ascertained. See W. Digital Corp. v. SPEX
`Techs., Inc., Case IPR2018-00082, slip op. at 38–39 (PTAB Apr. 18, 2019)
`(Paper 40); BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-
`00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re
`Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art
`grounds of unpatentability must fall, pro forma, because they are based on
`speculative assumption as to the meaning of the claims”); see also In re
`
`10
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`IPR2019-00609
`Patent 6,471,565 B2
`
`Aoyama, 656 F.3d 1293, 1296 (Fed. Cir. 2011) (holding that the “first step”
`in any application of the prior art is a proper interpretation of the claim at
`issue).
`In view of the above, the information presented in the Petition,
`therefore, does not demonstrate a reasonable likelihood that Petitioner would
`prevail in showing claims 1–5 unpatentable on any of the asserted grounds.
`III. CONCLUSION
`For the reasons above, we determine that the Petition does not show a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one of challenged claims 1–5 of the ’565 Patent.
`IV. ORDER
`For the reasons above, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
`denied, and no inter partes review is instituted for claims 1–5 of U.S. Patent
`No. 6,471,565 B2.
`
`
`
`
`
`
`
`11
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`IPR2019-00609
`Patent 6,471,565 B2
`
`PETITIONER
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`
`PATENT OWNER
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`12
`
`
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