Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Date: February 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PRIME TIME TOYS LLC, PRIME TIME TOYS LTD., and
`EASEBON SERVICES LTD,
`Petitioner,
`v.
`SPIN MASTER, INC.,
`Patent Owner.
`
`IPR2023-01348
`Patent 8,371,282 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, NEIL T. POWELL, and BRENT M. DOUGAL,
`Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Date: February 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PRIME TIME TOYS LLC, PRIME TIME TOYS LTD., and
`EASEBON SERVICES LTD,
`Petitioner,
`v.
`SPIN MASTER, INC.,
`Patent Owner.
`
`IPR2023-01348
`Patent 8,371,282 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, NEIL T. POWELL, and BRENT M. DOUGAL,
`Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2023-01348
`Patent 8,371,282 B2
`
`INTRODUCTION
`
`I.
`A. BACKGROUND
`Prime Time Toys LLC, Prime Time Toys Ltd., and Easebon Services
`Ltd. (collectively, “Petitioner”) filed a Petition for inter partes review of
`claims 1–15, 17, and 19–21 of U.S. Patent No. 8,371,282 B2 (Ex. 1001,
`“the ’282 patent”). Paper 2 (“Pet.”). Spin Master, Inc. (“Patent Owner”)
`filed a Preliminary Response.1 Paper 6 (“Prelim. Resp.”). With Board
`authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`Response (Paper 7 (“Reply to Prelim. Resp.”)), and Patent Owner filed a
`Preliminary Sur-reply (Paper 8 (“Prelim. Sur-reply”)).
`After the Petition was filed, Patent Owner disclaimed independent
`claim 1 and dependent claim 4 of the ’282 patent. Prelim. Resp. 26;
`Ex. 2013. Accordingly, we need not reach Petitioner’s challenges to
`claims 1 and 4. E.g., 37 C.F.R. § 42.107(e). Thus, the remaining challenged
`claims are claims 2, 3, 5–15, 17, and 19–21.
`An inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . 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). Having considered
`the arguments and the associated evidence, we determine that Petitioner has
`not shown a reasonable likelihood that it will prevail in establishing the
`
`
`1 In Patent Owner’s Mandatory Notices, it is averred that “Hasbro, Inc. and
`Spin Master, Inc. are the real parties-in-interest.” Paper 4, 2. It is also
`explained that “Spin Master and Hasbro agree that Hasbro will actively
`control the defense of the ’282 Patent in this proceeding. Accordingly,
`Hasbro will submit all filings, make all arguments, and take all discovery.”
`Id.
`
`2
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`IPR2023-01348
`Patent 8,371,282 B2
`unpatentability of any of the challenged claims. Accordingly, we do not
`institute an inter partes review.
`RELATED PROCEEDINGS
`B.
`The ’282 patent is involved in an ITC matter: In the Matter of Certain
`Soft Projectile Launching Devices, Components Thereof, Ammunition, and
`Products Containing Same, Investigation No. 337-TA-1325 (“ITC
`proceeding”). Pet. 7; Paper 4, 2; Prelim. Resp. 2–7. The ’282 patent was
`also involved in Gel Blaster, Inc. v. Hasbro, Inc., Case No. 1:22-cv-00828
`(W.D. Tex.), which was dismissed with prejudice. Pet. 8; Paper 4, 2; Prelim.
`Resp. 8. The ’282 patent was also the subject of IPR2023-00301 and
`IPR2023-00772; both of which were resolved by settlement. Id. The parties
`also note that the ’282 patent is related to certain other U.S. patents that were
`challenged in IPR2023-00302 (terminated), IPR2023-00772 (terminated),
`and IPR2023-01461 (pending). Pet. 8; Paper 4, 2–3.
`THE ’282 PATENT
`C.
`The ’282 patent “relates to soft-projectile launching devices, such as
`projectile toys.” Ex. 1001, 1:5–6. More specifically, the ’282 patent
`“discloses and teaches projectile launching devices, such as toys, amateur
`guns and weaponry that use projectiles formed from a super absorbent
`polymer (SAP).” Id. at 3:45–48. The ’282 patent explains that SAPs can
`absorb large quantities of liquid, such as water, and swell. Id. at 3:41–42,
`3:65–4:6. According to the ’282 patent, hydrated SAP projectiles provide
`several benefits over other types of projectiles. Id. at 3:49–61. For example,
`“[t]he ability of SAP projectiles to maintain their shape allows them to be
`projected with a reasonable force and velocity” (id. at 3:54–56), whereas
`
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`Patent 8,371,282 B2
`light, foam-based projectiles “rapidly slow after initial firing and easily
`curve off line” (id. at 1:54–55).
`The ’282 patent discloses an exemplary combination of a projectile
`launching device and SAP projectiles in connection with Figure 1, which is
`reproduced below.
`
`
`
`“[Figure] 1 illustrates a cross section of one embodiment of a projectile
`launching toy designed for use with a plurality of projectiles made from a
`super absorbent polymer.” Id. at 3:17–19.
`Specifically, Figure 1 shows projection device 10 with
`soft-projectile 16 made of a super-absorbent polymer. Id. at 4:60–64. In the
`embodiment of Figure 1, projection device 10 has “the general form of a
`gun.” Id. at 4:64–65.
`Projection device 10 includes barrel 15 and soft-projectile holder 14.
`Id. at 5:50–56. Soft-projectile holder 14 is retained inside barrel 15.
`
`4
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`IPR2023-01348
`Patent 8,371,282 B2
`Id. at 5:54–55. Soft-projectile holder 14 carries soft-projectile 16.
`Id. at 5:65–66.
`Projection device 10 also includes plunger cylinder 19 and plunger 12.
`Id. at 5:38–39. Spring 18 is connected to plunger 12. Id. at 5:37–39.
`Spring 18 retains soft-projectile holder 14 in barrel 15. Id. at 5:54–59.
`A user starts the firing process by drawing handle 11 back, thereby
`pulling plunger 12 from plunger cylinder 19’s aft end 17. Id. at 5:36–39.
`This readies projection device 10 for firing:
`As the spring 18 is stretched, air is sucked into an air
`compression chamber 31 located between plunger seal 24 and air
`seal 22. Air seal 22 abuts against a stop (not shown) just behind
`the firing position 30 to prevent air seal 22 from following the
`plunger 12 past a certain point as it is drawn back.
`Id. at 5:40–45. To fire projection device 10, the user lets go of handle 12:
`When the user releases the handle 12, the spring 18 quickly pulls
`the plunger 12 back inside the plunger cylinder 19. This creates
`a rapid increase in air pressure in the air compression chamber
`31 between plunger seal 24 and air seal 22. Consequently, air
`seal 22 is propelled rapidly through barrel 15 towards the distal
`end of barrel 15 and simultaneously accelerates the holder for a
`soft-projectile 14 and the soft-projectile 16.
`Id. at 5:45–52.
`ILLUSTRATIVE CLAIMS
`D.
`Independent claim 1 recites “[a]mmunition configured for use with a
`projectile launcher.” Ex. 1001, 9:29–30. Each of the challenged claims
`adds limitations to claim 1’s limitations. For example, each of claims 2, 3,
`and 5–7 depends, directly or indirectly from claim 1. Id. at 9:29–30, 9:34,
`9:36, 9:41, 9:43, 9:46. Claim 8 recites “[a] projectile launcher including the
`ammunition of claim 1.” Id. at 9:50–51. Each of claims 9–15, 17, and 19–
`
`5
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`Patent 8,371,282 B2
`21 depends from claim 8. Id. at 10:3, 10:5, 10:7, 10:9, 10:11, 10:15, 10:18,
`10:23, 10:31, 10:38, 10:46. Claims 1 and 8 are reproduced below.
`1.
`Ammunition configured for use with a projectile launcher
`comprising: a plurality of soft-projectiles having the same shape,
`each soft projectile being formed from hydrated super absorbent
`polymer.
`Ex. 1001, 9:29–34.
`8.
`A projectile launcher including the ammunition of claim 1
`disposed within a feed chamber of the projectile launcher, and
`wherein the projectile launcher is adapted to load a soft-projectile
`from the feed chamber to a firing position.
`Ex. 1001, 9:50–10:2.
`
`E. ASSERTED GROUND OF UNPATENTABILITY
`Claims 2, 3, 5–15, 17, and 19–21 are challenged by on the following
`ground:2
`Claims
`Challenged
`2, 3, 5–15, 17,
`19–21
`
`35 U.S.C.
`§3
`103(a)
`
`References
`
`Spitball4, Peev5
`
`
`2 The Petition also challenged claims 1 and 4 as allegedly anticipated and
`obvious, but Patent Owner’s disclaimer of claims 1 and 4 obviated these
`challenges. Pet. 15; Prelim. Resp. 26; Ex. 2013.
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the application for the ’282 patent was filed before this date,
`the pre-AIA version of § 103 applies. See Ex. 1001, code (22).
`4 Publication Declaration of Nathanial E. Frank-White and
`ThinkGeek Spitballs Internet Archive Webpage (Ex. 1002, “Spitballs”).
`5 Peev et al., Bulgarian Patent Application Publication No. 110343,
`published July 31, 2009 (Ex. 1003, “Peev”).
`
`6
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`Patent 8,371,282 B2
`In support of its challenges, Petitioner also relies on the Declarations
`of Joel Delman (Ex. 1016) and Mauren T.F. Reitman, Ph.D. (Ex. 1017).
`II. ANALYSIS
`LEVEL OF ORDINARY SKILL IN THE ART
`A.
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention (POSA). Graham v. John Deere Co., 383 U.S. 1, 13, 17 (1966).
`In assessing the level of ordinary skill in the art, various factors may be
`considered, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
`955, 962–63 (Fed. Cir. 1986)).
`In this proceeding, neither Petitioner nor Patent Owner expressly
`specifies the level of ordinary skill in the art that we should apply. The
`Petition notes that, in the ITC proceeding, Petitioner proposed that an
`ordinarily skilled artisan for the ’282 patent would be “(i) an individual with
`a Bachelor's degree in Industrial Design or Mechanical Engineering or (ii) a
`toy designer with at least five years' experience designing toys (including
`launchers), with both of (i) and (ii) having access to a chemist
`knowledgeable regarding super absorbent polymers.” Pet. 19 (citing
`Ex. 1015, 8). The Petition also notes that, in the ITC proceeding, Patent
`Owner proposed that an ordinarily skilled artisan for the ’282 patent would
`have
`
`a bachelor’s degree in mechanical engineering, industrial design,
`or equivalent, with at least one year of relevant experience
`
`7
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`IPR2023-01348
`Patent 8,371,282 B2
`designing projectile launching systems but would also be a
`member of a team, which would include an person with a
`bachelor’s in materials science, chemistry, or equivalent (e.g.,
`chemical engineering), or has at least one year experience
`working with materials for use in consumer products.
`Id. (citing Ex. 1015, 7–8). The Petition further notes that, in the ITC
`proceeding, Patent Owner also stated that “equivalent work experience may
`substitute for educational experience, and vice versa.” Id. Additionally, the
`Petition notes that another definition of the level of ordinary skill in the art
`was advanced by the Commission Investigative Staff in the ITC proceeding.
`Id. at 19–20 (citing Ex. 1015, 8). The Preliminary Response does not
`expressly discuss the level of ordinary skill in the art. See generally Prelim.
`Resp.
`
`Characterizing the definitions of the level of ordinary skill in the art
`that were proposed in the ITC proceeding as “similar” and noting the ITC
`ALJ’s determination that “all of the proposals are appropriate,” Petitioner
`does not argue for the application of any particular level of skill in the art in
`this proceeding. Pet. 20 (citing Ex. 1015, 8). We too find the definitions
`advanced in the ITC proceeding similar. Indeed, any differences between
`the definitions do not rise to a level that would affect our analysis of whether
`the Petition and associated evidence are sufficiently persuasive for purposes
`of institution.
`In our view, the foregoing level of ordinary skill in the art proposed
`by Patent Owner in the ITC proceeding best fits the legal requirements.
`Accordingly, we adopt and apply that level of ordinary skill in the art in our
`analysis of the merits.
`
`8
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`IPR2023-01348
`Patent 8,371,282 B2
`CLAIM INTERPRETATION
`B.
`We apply the same claim construction standard used in district courts,
`namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that
`standard, claim terms generally are given their ordinary and customary
`meaning as would have been understood by a person of ordinary skill in the
`art at the time of the invention and in the context of the entire patent
`disclosure. Phillips, 415 F.3d at 1312–13.
`With respect to claim construction, the Petition notes the constructions
`of certain claim terms adopted by the ALJ in the ITC proceeding.
`Pet. 20–21 (citing Ex. 1015, 12, 14, 19, 23). The Petition does not propose a
`construction of any claim language for this proceeding. Id. Nor does the
`Preliminary Response propose a construction of any claim language for this
`proceeding. See generally, Prelim. Resp.
`The parties’ arguments and evidence do not raise any issues that
`necessitate an express claim construction in order to determine whether
`Petitioner has demonstrated a reasonable likelihood of establishing
`unpatentability of at least one of the challenged claims. Accordingly, we
`need not and do not expressly construe any claim language. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (holding that only claim terms in controversy need to be
`construed, and only to the extent necessary to resolve the controversy (citing
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999))).
`
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`IPR2023-01348
`Patent 8,371,282 B2
`C. ALLEGED OBVIOUSNESS OVER SPITBALLS AND PEEV
`1.
`Overview of Spitballs
`Spitballs is a reproduction of webpages from the thinkgeek.com
`website as archived by the Internet Archive. Ex. 1002. Spitballs discusses
`and shows a product called “Spitballs,” explaining that “Spitballs start out as
`tiny balls and expand 200 times when stuck in water.” Id. at 21. On page 5,
`Spitballs includes an image of the product, which is reproduced below.
`Ex. 1002, 5.
`
`
`The image on page 5 of Spitballs shows numerous small pellets inside a
`package, along with a few larger balls, which apparently are the product
`after it has swollen by absorbing liquid. Id. The product package says
`“Grows 200x Their Size!” Id. The product package also says “They Slip,
`Slide, Bounce & Explode!” and “Fun to Throw!” Id.
`
`10
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`IPR2023-01348
`Patent 8,371,282 B2
`2.
`Overview of Peev
`Peev is a Bulgarian Patent Application titled “Electric Airsoft Rifle,”
`Application No. 110343, published on July 31, 2009.6 Ex. 1003, 22, codes
`(21, 41), 23. Peev discloses an electric airsoft gun “used for military
`simulations or training.” Id. at code (57).
`An object of Peev is to “ensure that the operation and handling of the
`electric airsoft gun is as close as possible to the operation and handling of
`the real firearm.” Id. at 27. Peev describes electric airsoft guns as similar to
`real firearms, except they use compressed air to fire “polymer balls with a
`diameter of 6 mm,” “instead of cartridges.” Id. at 23. Peev explains that
`electric airsoft guns include a barrel and a magazine. Id. To compress the
`air for launching balls, Peev discloses a mechanism with a piston and
`cylinder, a spring behind the piston, a reduction gear below the cylinder, and
`a sector gear in contact with a gear rack on the piston’s outer surface. Id.
`Peev shows such a configuration in Figures 1 and 2, which are reproduced
`below.
`
`
`6 An English-language translation is included with Peev. Ex. 1003, 22–41.
`We cite to the English-language translation, using the page numbers at the
`bottom of each page.
`
`11
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`IPR2023-01348
`Patent 8,371,282 B2
`
`
`
`
`Each of Figures 1 and 2 is “a longitudinal section of a portion of an electric
`airsoft gun.” Id. at 29. Figures 1 and 2 show the airsoft gun in different
`operational states. Id.
`The airsoft gun in Figures 1 and 2 includes, among other components,
`sector wheel 5, trigger 11, switching lever 14, chamber 20, barrel 21, ball 22,
`magazine 23, electric motor 30, connecting plate 44, nozzle 45, spring 46,
`piston 47, and cylinder 48. Id. at 31–32. The firing process begins with
`actuation of trigger 11. Id. at 31. When fire mode switching lever 14 is not
`in its “SAFE” position and a user presses trigger 11, electric motor 30 is
`activated. Id. at 31. Sector wheel 5 retracts piston 47 and tightens spring 46.
`
`12
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`Id. Nozzle 45 retracts through connecting plate 44. Id. This permits ball 22
`to enter chamber 20 of barrel 21. Id. at 31–32. Nozzle 45 pushes ball 22
`into barrel 21. Id. at 32. After ball 22 enters barrel 21, firing occurs as
`follows:
`At the moment when the last tooth of the sector wheel 5 wears
`the last tooth of the piston 47, the latter, under the pressure of the
`spring 46, accelerates forward and compresses the air in the
`cylinder 48, inserting it through the nozzle into the barrel 21 and
`firing the ball 22.
`
`Id.
`
`3.
`
`Analysis
`Overview
`a)
`In support of its position that the challenged claims would have been
`obvious over Peev and Spitballs, Petitioner cites Peev to address the
`challenged claims’ recitations regarding a projectile launcher and cites
`Spitballs to address the challenged claims’ recitations regarding
`soft-projectiles made of super absorbent polymer. Pet. 33–39, 41–56. In
`support of its position that it would have been obvious to combine the
`references’ disclosures, Petitioner argues as follow:
`A [person of ordinary skill in the art] would have recognized
`combining air guns, such as Peev’s toy gun with Spitballs’
`hydrated SAP projectiles, is a simple substitution of one known
`element (spherical hydrated SAP soft-projectiles) for another
`known element (Peev’s spherical hard bullets) to obtain
`predictable results (a safer air gun that preserves the fun of the
`gun).
`Id. at 39. Petitioner further argues that Peev and Spitballs “combine to teach
`all of the elements of the Challenged Claims.” Id.
`Patent Owner counters that Petitioner’s arguments include
`“fundamental errors [that] preclude a finding that Petitioner is reasonably
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`IPR2023-01348
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`likely to prevail in this proceeding based on the Peev-Spitballs
`combination.” Prelim. Resp. 27. In particular, Patent Owner argues that
`Petitioner does not provide “any legally valid and factually credible
`motivation to combine Peev and Spitballs.” Id. at 26.
`We turn now to a detailed discussion of the dispute regarding whether
`Petitioner shows sufficiently that a person of ordinary skill in the art would
`have been motivated to combine the disclosures of Peev and Spitballs.
`b) Motivation to Combine
`Petitioner argues that it would have been obvious to combine Peev
`and Spitballs because of the risk of injury with hard plastic ammunition used
`in airsoft guns such as Peev. Pet. 33–39. For example, Petitioner cites a
`news article as stating that hard plastic rounds in airsoft guns can “crack the
`skin” and “cause minor bleeding.” Id. at 33 (quoting Ex. 1005, 3).
`Petitioner discusses another news article cited by Patent Owner’s declarant
`in the ITC proceeding that stated the risk of injury is understood to be
`largely based on the muzzle velocity and that at below 350 feet per second
`(“fps”) the risk “is generally considered capable of only limited harm.”
`Id. at 34–35 (quoting Ex. 1020, 3). However, Petitioner also presents
`evidence that injury to the eye can occur at 130 fps. Id. at 34 (citing
`Ex. 1019, 9).
`Petitioner presents cross-examination testimony of Patent Owner’s
`declarant, from the ITC proceeding, that injury can occur at a muzzle
`velocity below 350 fps. Pet. 35–36 (citing Ex. 1004, 533:14–534:18).7
`
`
`7 The record in the present case is more fully developed than in the typical
`inter partes review, as the issues presented herein are largely repeated from
`
`
`14
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`Petitioner also presents cross-examination testimony of Patent Owner’s
`declarant that making a projectile softer can decrease the chance of injury.
`Id. at 36 (citing Ex. 1004, 531:25–532:9). Petitioner’s declarant testifies that
`“Spitballs were softer projectiles.” Ex. 1016 ¶ 77. Petitioner further argues
`that Patent Owner’s own declarant admitted it would have been within the
`level of ordinary skill in the art to exchange SAP projectiles for hard plastic
`projectiles in an airsoft gun. Pet. 37 (citing Ex. 1004, 529:21–530:12).
`Petitioner argues that one of ordinary skill in the art
`(1) knew about the injury problem, (2) knew one solution was to
`make the ammunition softer, (3) knew about soft spherical SAP
`ammunition (Spit Balls) and a few other alternatives, and (4) had
`the technical skill to combine this ammunition with Peev.
`Id. at 3; see also id. at 33 (quoting “[w]hen there is a design need or
`market pressure to solve a problem and there are a finite number of
`identified, predictable solutions, a person of ordinary skill has good
`reason to pursue the known options within his or her technical
`grasp” from KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)),
`37 (arguing “[t]here was a finite number of ammunition options that a
`[person of ordinary skill in the art] could have considered that would
`have a reasonable expectation of success, including rubber, cork,
`foam, and soft plastics, such as SAPs”). As noted above, Petitioner
`concludes that:
`A [person of ordinary skill in the art] would have recognized
`combining air guns, such as Peev’s toy gun with Spitballs’
`hydrated SAP projectiles, is a simple substitution of one known
`element (spherical hydrated SAP soft-projectiles) for another
`
`
`the ITC proceeding. See e.g., Ex. 1004 (transcript of the hearing in the ITC
`proceeding).
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`known element (Peev’s spherical hard bullets) to obtain
`predictable results (a safer air gun that preserves the fun of the
`gun).
`Id. at 39 (citing Ex. 1016 ¶ 82).
`Patent Owner responds that the injury risk is not a design problem
`with airsoft guns, but rather that airsoft guns are designed to replicate real
`guns. Prelim. Resp. 28. Patent Owner quotes evidence, proffered by
`Petitioner, as stating “[airsoft guns] look and behave exactly [l]ike real guns
`so that it feels like you’re firing a real gun.” Id. (quoting Ex. 1005, 3). Peev
`similarly states that airsoft guns “represent a copy of real firearms” and that
`“[t]he task of the invention [of Peev] is to create an electric airsoft [that is] . .
`. as close as possible to the way of functioning and manipulation of the real
`firearm.” Ex. 1003, 23, 26 (both quoted at Prelim. Resp. 28).
`We agree with Patent Owner. Though there is a risk of injury while
`using airsoft guns, Petitioner has not established that one of skill in the art
`would consider this risk a problem with airsoft guns, as opposed to an
`accepted function. Prelim. Resp. 27–30. Petitioner’s own declarant, Mr.
`Delman, testified that he regularly modifies “toy projectile launchers,
`including for example Nerf blasters” to make them more powerful to
`“improve the firing qualities – power and accuracy” for use by his sons.
`Ex. 1016 ¶ 20. Thus, Petitioner’s declarant, like Peev, is also concerned
`with making toy guns more like a real gun. See id.
`Apart from toy guns, Mr. Delman testified that he “own[s]
`approximately 30 airguns” which “utilize BBs, pellets, and airsoft
`ammunition.” Id. ¶ 19. Mr. Delman’s cross-examination testimony (noted
`by “A.”) from the ITC proceeding is reproduced below, where he testified
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`that the risk of injury from airguns, with regard to his children, is not
`something that he is concerned with:
`Q. . . . you were playing with these airguns with your sons as they
`were growing up, correct?
`A. Yes.
`. . .
`Q. Well, but you were worried about your sons’ safety, right?
`A. To be honest, I wasn’t worried about it, no. I’ve never been
`worried about it, because, to me, one of the benefits of learning
`to target shoot and handle airguns is the discipline of safety and
`handling them properly and knowing not to aim them at each
`other, et cetera, not to do dangerous things with them or to use
`them in dangerous ways.
`So I was always very comfortable with my boys playing with
`these toys because I have taught them to play with them in a safe
`manner.
`Ex. 1004, 231:8–25. Mr. Delman further testified that even though his sons
`shot at each other with airguns, he trusted that they would use them safely
`and was not concerned about their safety, or the risk of injury.
`Id. at 232:1–15.
`We further agree with Patent Owner that Petitioner has not established
`that the combination of Peev and Spitballs decreases the risk of injury.
`Prelim. Resp. 30–36. First, though Petitioner cites the risk of eye injury as
`one of the dangers, Petitioner’s declarant testifies that he “believe[s] that
`most any projectile launched at somebody else can pose a risk of an eye
`injury.” Ex. 1004, 216:22–23. He further testifies that certain of the
`accused products in the ITC proceeding, that are guns that launch SAP
`ammunition, pose the risk of eye injury or include warnings about the risk of
`eye injury. Id. at 216:16–218:8. Thus, contrary to Petitioner’s position, the
`
`17
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`IPR2023-01348
`Patent 8,371,282 B2
`record establishes that risk of eye injury is still present with the use of SAP
`ammunition in a projectile launcher.
`Secondly, it is not clear what other risk of injury is present in the
`airsoft gun of Peev. Petitioner calls Peev’s airsoft gun a toy (Pet. 39) and on
`cross-examination Petitioner’s declarant testified that Peev operates similar
`to another “toy” airsoft gun with a muzzle velocity of 160 fps (Ex. 1004,
`213:21–214:10; see also Prelim. Resp. 31). Petitioner does not establish the
`typical muzzle velocity of “toy” airsoft guns, such as Peev. Petitioner does
`not establish the risk of injury that is present in Peev or in airsoft guns
`similar to Peev.
`As previously discussed, the record evidence shows that the risk of
`injury to the skin is understood to occur in airguns with a muzzle velocity
`above 350 fps. Pet. 34. Below that muzzle velocity, Petitioner points to
`Patent Owner’s declarant who testified that there is merely a chance of
`injury. Id. at 35–36. Petitioner does not assert that the airsoft gun of Peev
`has a particular muzzle velocity. Petitioner does not present evidence as to
`the difference in injury risk that using a SAP projectile would make in
`Peev’s “toy” airsoft gun. For example, if “toy” airsoft guns similar to Peev
`have muzzle velocities around 160 fps, the evidence shows that the risk of
`injury is low. It is unclear what further difference moving to a softer
`ammunition would make as there is no evidence cited in the Petition on this
`point. Similarly, there is no evidence cited in the Petition that a SAP
`projectile shot from Peev’s airsoft gun at a muzzle velocity of 350 fps would
`not cause injury or would appreciably decrease the chance of injury.
`For all of these reasons, and after our review of Petitioner’s assertions
`and the supporting evidence, we determine that Petitioner has not supported
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`18
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`IPR2023-01348
`Patent 8,371,282 B2
`sufficiently its assertion that it would have been obvious to combine Peev
`and Spitballs. Thus, Petitioner does not show sufficiently that any of
`challenged claims 2, 3, 5–15, 17, and 19–21 would have been obvious over
`the combination of Peev and Spitballs, as alleged. Accordingly, Petitioner
`fails to demonstrate a reasonable likelihood of establishing unpatentability of
`any of the challenged claims.
`III. CONCLUSION
`Because we determine that the information presented in the record
`does not establish there is a reasonable likelihood that Petitioner would
`prevail with respect to at least one challenged claim of the’282 patent, we do
`not institute an inter partes review.
`IV. ORDER
`For the reasons given, it is:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
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`19
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`
`IPR2023-01348
`Patent 8,371,282 B2
`PETITIONER:
`Kenneth George
`Brian Comack
`AMSTER, ROTHSTEIN, & EBENSTEIN LLP
`kgeorge@arelaw.com
`bcomack@arelaw.com
`
`PATENT OWNER:
`Kenneth Darby
`Linhong Zhang
`Ethan Rubin
`Fish & Richardson P.C.
`kdarby@fr.com
`lwzhang@fr.com
`ejr@fr.com
`
`Jennifer Bailey
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`
`
`
`
`20
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`
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