Trials@uspto.gov
`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.
`
`IPR2023-01461
`Patent 8,596,255 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, NEIL T. POWELL, and BRENT M. DOUGAL,
`Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`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.
`
`IPR2023-01461
`Patent 8,596,255 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, NEIL T. POWELL, and BRENT M. DOUGAL,
`Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2023-01461
`Patent 8,596,255 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Prime Time Toys LLC, Prime Time Toys Ltd., and Easebon Services
`
`Ltd. (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`
`institution of an inter partes review of claims 1, 2, 13, and 15–20 of U.S.
`
`Patent No. 8,596,255 B2 (Ex. 1001, “the ’255 patent”). Spin Master, Inc.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” Upon
`
`consideration of the Petition in view of the Preliminary Response and for the
`
`reasons explained below, we determine that Petitioner has not shown a
`
`reasonable likelihood of prevailing with respect to at least one of the
`
`challenged claims.
`
`Thus, we do not institute an inter partes review of claims 1, 2, 13, and
`
`15–20 of the ’255 patent.
`
`B. Real Parties in Interest
`
`Petitioner identifies Prime Time Toys LLC, Prime Time Toys Ltd.,
`
`and Easebon Services Ltd. as real parties in interest. Pet. 8. Patent Owner
`
`identifies Spin Master, Inc. and Hasbro, Inc. as real parties in interest.
`
`Paper 6, 2.
`
`C. Related Matters
`
`The ’255 patent issued from a continuation-in-part of an application
`
`that is now U.S. Patent No. 8,371,282 (Ex. 1025, “the ’282 patent”).
`
`Ex. 1001, code (63); see also Pet. 3 (noting the ’282 patent). U.S. Patent
`
`No. 8,640,683 (“the ’683 patent”) issued from a divisional of the application
`
`that is now the ’282 patent. See Pet. 9 (identifying the ’683 patent).
`
`2
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`IPR2023-01461
`Patent 8,596,255 B2
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`The parties identify that the ’282 and ’683 patents are subject to an
`
`action in the United States International Trade Commission: In the Matter
`
`of Certain Soft Projectile Launching Devices, Components Thereof,
`
`Ammunition, and Products Containing Same, Investigation No. 337-TA-
`
`1325 (ITC) (“ITC proceeding”). Pet. 9; Paper 6, 2. The parties also identify
`
`that the ’282 and ’683 patents have also been involved in district court
`
`litigation and inter partes reviews, most of which are no longer pending.
`
`Pet. 9–10; Paper 6, 2–3.
`
`The ’282 patent is challenged in IPR2023-01348, and the ’683 patent
`
`is challenged in IPR2023-01339. Pet. 9–10; Paper 6, 2–3.
`
`D. The ’255 Patent (Ex. 1001)
`
`The ’255 patent issued on December 3, 2013 from an application filed
`
`on December 20, 2010 that is a continuation-in-part of an application filed
`
`on May 10, 2010. Ex. 1001, codes (22), (45), (63), 1:7–10.
`
`The ’255 patent describes that using a super absorbent polymer
`
`(“SAP”) as ammunition in projectile launching devices to provide
`
`advantages compared to projectiles that were previously known, such as
`
`paint balls, plastics (e.g., as found in “airsoft” guns), and foams (e.g., as
`
`found in NERF® guns). Ex. 1001, 1:23–2:3, 3:18–28, 3:59–62, 4:62–5:34.
`
`For example, certain SAP projectiles have beneficial characteristics, in part
`
`because SAPs break down at different pressures based on their composition.
`
`Id. at 5:12–13. Hydrated SAP projectiles can be made to have sufficient
`
`cross-linking density such that they are projected from a projectile launching
`
`device without breaking apart. Id. at 3:26–28, 5:2–5. At the same time,
`
`because hydrated SAP projectiles rupture when subjected to excessive
`
`pressure, such as when impacting a target after being launched from a
`
`projectile launcher, the force at impact is spread over a much wider surface
`
`3
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`IPR2023-01461
`Patent 8,596,255 B2
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`area, thus reducing the likelihood of injury when the target is a person. Id. at
`
`3:59–62, 5:8–11.
`
`E. Illustrative Claim
`
`The ’255 patent includes 20 claims, of which Petitioner challenges
`
`claims 1, 2, 13, and 15–20. Of the challenged claims, claims 1 and 13 are
`
`independent and reproduced below is claim 1.
`
`A device for projecting a soft-projectile made from
`1.
`a super absorbent polymer, the device comprising:
`a feed chamber including a plurality of soft-projectiles
`having the same shape, each soft-projectile being formed from a
`hydrated super absorbent polymer, wherein the device is adapted
`to load a soft-projectile from the feed chamber to a firing
`position;
`a firing mechanism operatively arranged to accelerate the
`soft-projectile made from a super absorbent polymer, from the
`firing position, down a barrel; and
`a safety mechanism obstructing an end of the barrel and
`designed to prevent access to the interior of the barrel but allow
`a soft-projectile accelerated by the firing mechanism to exit the
`barrel.
`
`Ex. 1001, 18:22–35.
`
`Independent claim 13 recites the same preamble and includes the
`
`same feed chamber and firing mechanism limitations but does not recite the
`
`safety mechanism limitation. Compare Ex. 1001, 18:22–35, with id. at
`
`19:7–16; see also Pet. 1 (stating that “Independent Claim 13 includes the
`
`same limitations as Claim 1, except Claim 13 does not require the safety
`
`mechanism”).
`
`4
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`IPR2023-01461
`Patent 8,596,255 B2
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`F. Asserted Prior Art and Proffered Testimonial Evidence
`
`Petitioner identifies the following references as prior art in the
`
`asserted grounds of unpatentability:
`
`Reference
`Name
`Moorhouse US 4,834,059, issued May 30, 1989
`Peev
`BG 110343, published July 31, 2009
`Spitballs
`ThinkGeek Spitballs Internet Archive Webpage,
`Nov. 30, 2009
`
`Exhibit
`1006
`10031
`10022
`
`Petitioner contends that Peev and Spitballs are prior art under § 102(a) and
`
`that Moorhouse is prior art under § 102(b).3 Pet. 12, 16. Petitioner also
`
`provides a Declaration of Mr. Joel Delman (Ex. 1016) and Dr. Maureen E.
`
`Reitman, Sc.D., F.S.P.E., P.E. (Ex. 1017).
`
`G. Asserted Grounds
`
`Petitioner asserts that claims 1, 2, 13, and 15–20 are unpatentable on
`
`the following grounds:
`
`Claim(s) Challenged
`
`13, 15–20
`1, 2
`
`Pet. 16.
`
`35
`U.S.C.
`§
`103(a)
`103(a)
`
`Reference(s)/Basis
`
`Peev, Spitballs
`Peev, Spitballs, Moorhouse
`
`
`1 Includes an English language translation. Ex. 1003, 22–41.
`2 Exhibit 1002 includes a declaration from the Records Request Processor at
`the Internet Archive (Ex. 1002, 1–2), as well as multiple copies of the
`Spitballs webpage and related category pages (id. at 5–28).
`3 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’255 patent issued from an application filed before that
`date, our citations to 35 U.S.C. §§ 102 and 103 in this Decision are to their
`pre-AIA versions. See also Pet. 12 (noting that “[t]he earliest date of
`invention claimed [in the ITC proceeding] was February 21, 2010”).
`
`5
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`IPR2023-01461
`Patent 8,596,255 B2
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`A. Legal Standards
`
`II. ANALYSIS
`
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). At this preliminary stage, we determine whether the information
`
`presented in the Petition shows a reasonable likelihood that Petitioner would
`
`prevail in establishing that at least one of the challenged claims would have
`
`been anticipated or obvious over the prior art. See 35 U.S.C. § 314(a).
`
`A claim is unpatentable as obvious under 35 U.S.C. 103(a) if “the
`
`differences between the subject matter sought to be patented and the prior art
`
`are such that the subject matter as a whole would have been obvious at the
`
`time the invention was made to a person having ordinary skill in the art to
`
`which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of
`
`obviousness based on underlying factual determinations, including: (1) the
`
`scope and content of the prior art; (2) any differences between the prior art
`
`and the claims; (3) the level of skill in the art; and (4) when in evidence,
`
`objective indicia of obviousness or nonobviousness. See Graham v. John
`
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`We apply these principles to the Petition’s challenges.
`
`B. Level of Ordinary Skill in the Art
`
`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. Id. at 13, 17. 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
`
`6
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`Patent 8,596,255 B2
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`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)).
`
`Petitioner does not expressly present a position as to the level of skill
`
`in the art. Pet. 21–23. Rather, Petitioner identifies three positions laid out in
`
`the ITC proceeding. Id. (citing Ex. 1015 (Order No. 28: Construing Certain
`
`Terms of the Asserted Claims (Markman Claim Construction)), 7–8).
`
`Petitioner states that “[t]he three definitions are similar,” and the
`
`Administrative Law Judge (“ALJ”) in the ITC proceeding determined that:
`
`“Any differences among the definitions will have little, if any, effect on the
`
`claim construction analysis. Thus, all of the proposals are appropriate . . . .”
`
`Id. at 22–23 (citing Ex. 1015, 8).
`
`Patent Owner does not address the level of skill in the art. See
`
`generally Prelim. Resp.
`
`We agree that the three definitions are similar. We further do not see
`
`either party advocating for any particular definition, or that any distinction
`
`between the definitions is material to institution. As such, we do not repeat
`
`all three definitions and accept Patent Owner’s definition as most closely
`
`fitting the legal requirements:
`
`a bachelor’s degree in mechanical engineering, industrial design,
`or equivalent, with at least one year of relevant experience
`designing projectile launching systems but would also be a
`member of a team, which would include a 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
`
`equivalent work experience may substitute for educational
`experience, and vice versa
`
`7
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`
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`IPR2023-01461
`Patent 8,596,255 B2
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`Pet. 21–22 (quoting Ex. 1015, 7–8); see also Ex. 1016 ¶ 55 (stating that
`
`“Patent Owner’s and Petitioner’s definitions of the [person of ordinary skill
`
`in the art] are similar, and my opinions in this Declaration would not change
`
`if I used Patent Owner’s definition of the [person of ordinary skill in the art]
`
`rather than Petitioner’s definition”).
`
`C. Claim Construction
`
`In an inter partes review, the claims are 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),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`
`37 C.F.R. § 42.100(b) (2023); see Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312–13 (Fed. Cir. 2005) (en banc).
`
`Petitioner identifies that the ALJ in the ITC proceeding construed two
`
`terms consistent with the plain and ordinary meaning. Pet. 23. The ALJ
`
`construed “super absorbent polymer,” recited by claim 1 of the ’282 patent
`
`and claim 1 of the ’683 patent, to mean “polymer that can absorb an
`
`extremely large amount of liquid relative to its own mass.” Id. (citing
`
`Ex. 1015, 14). Claims 1, 2, and 13 of the ’255 patent also recite “super
`
`absorbent polymer.” Ex. 1001, 18:23, 18:26, 18:30, 18:37, 19:8, 19:11,
`
`19:15.
`
`The ALJ also construed “a firing mechanism that directly applies a
`
`force to the ammunition” to mean exactly what it says. Pet. 23 (citing
`
`Ex. 1015, 23). Claim 18 of the ’255 patent similarly recites “the firing
`
`mechanism applies a force directly to the soft-projectile.” Ex. 1001, 20:10–
`
`11.
`
`8
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`IPR2023-01461
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`Neither Petitioner nor Patent Owner advocate for the construction of
`
`any particular claim term. Pet. 23; see generally Prelim. Resp.
`
`We determine that no terms require express construction to determine
`
`whether Petitioner would prevail in establishing that at least one of the
`
`challenged claims would have been anticipated or obvious over the prior art.
`
`See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
`
`(“The Board is required to construe ‘only those terms . . . that are in
`
`controversy, and only to the extent necessary to resolve the controversy.’”
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999))).
`
`D. Asserted Obviousness Based on Peev and Spitballs
`
`Petitioner argues that the combination of Peev and Spitballs would
`
`have rendered obvious claims 13 and 15–20. Pet. 34–48. Patent Owner
`
`responds that Petitioner provides insufficient reason to combine Peev and
`
`Spitballs. Prelim. Resp. 1, 7–20.
`
`For the reasons below, we determine that Petitioner has not
`
`established a reasonable likelihood of succeeding in showing that claims 13
`
`and 15–20 are unpatentable over the combination of Peev and Spitballs.
`
`1. Independent Claim 13
`
`a) Individual Elements
`
`Petitioner argues that “Peev teaches a device for projecting a plurality
`
`of projectiles having the same shape, namely, spherical” and the recited
`
`“feed chamber.” Pet. 40–41 (citing Ex. 1003, 23, 31–32, 39; Ex. 1016 ¶ 82).
`
`Petitioner also provides a marked-up version of Peev’s Figure 2, reproduced
`
`below, for support. Id. at 41.
`
`9
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`IPR2023-01461
`Patent 8,596,255 B2
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`
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`Peev’s Figure 2, as marked-up by Petitioner shows a cross-section of
`
`an electric airsoft gun, with labels added highlighting a spring, piston, air
`
`compression chamber, feed chamber, smaller diameter tube, and polymer
`
`ball. Pet. 41; Ex. 1003, 29.
`
`Petitioner also argues that “Spitballs discloses a plurality of soft
`
`spherical projectiles.” Pet. 41 (citing Ex. 1002, 21). Petitioner contends that
`
`images in Spitballs show dehydrated and hydrated SAP spheres that “are a
`
`plurality of small, clear beads having a substantially spherical shape” and
`
`that are “soft-projectiles.” Id. at 41 (citing Ex. 1002, 18, 21; Ex. 1016 ¶ 83),
`
`42 (citing Ex. 1002, 21; Ex. 1016 ¶ 84). Petitioner reproduces the below
`
`picture from Spitballs. Id. at 42.
`
`10
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`IPR2023-01461
`Patent 8,596,255 B2
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`
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`The above picture from Spitballs shows the product packaging with
`
`the balls in a small state in the packaging and the balls presumably in a
`
`larger state outside of the packaging. The packaging also states “Fun to
`
`Throw!,” “Grows 200x Their Size!,” and “They Slip, Slide, Bounce &
`
`Explode!”
`
`Patent Owner does not contest any of the teachings of Peev or
`
`Spitballs. See generally Prelim. Resp.
`
`b) Reason 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. 34–40. 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 34 (quoting Ex. 1005, 3). Petitioner
`
`11
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`Patent 8,596,255 B2
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`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 35–36 (quoting
`
`Ex. 1020, 3). Petitioner also discusses yet another news article cited by
`
`Patent Owner’s declarant in the ITC proceeding that indicates injury to the
`
`eye can occur at 130 fps. Id. at 35 (quoting 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. 36–37 (citing Ex. 1004 (transcripts from
`
`Evidentiary Hearings from the ITC proceeding), 441:14–442:18).4, 5
`
`Petitioner also presents cross-examination testimony of Patent Owner’s
`
`declarant that making a projectile softer can decrease the chance of injury.
`
`Id. at 37 (citing Ex. 1004, 439:25–440:9).
`
`Petitioner argues that “Spitballs were softer projectiles . . . that could
`
`be used in place of the hard spherical plastic ammunition.” Pet. 37 (citing
`
`Ex. 1002, 21; Ex. 1016 ¶ 76). Petitioner also argues that Patent Owner’s
`
`declarant in the ITC proceeding admitted Spitballs would have been
`
`understood to teach that “Spitballs break apart when they hit a target.” Id. at
`
`37–38 (citing Ex. 1004, 387:3–15, 400:13–15). Petitioner further argues that
`
`
`4 Petitioner repeatedly cites the transcripts of the Evidentiary Hearings from
`the ITC proceeding (Ex. 1004). See, e.g., Pet. 35–39. Those citations
`provide a more fully developed record in the present case than in the typical
`inter partes review, as the underlying issues presented herein are
`substantively the same as in the ITC proceeding and those issues have been
`considered in reaching the Initial Determination (Ex. 2007).
`5 We cite to the exhibit page numbers at the bottom right corner of each
`page.
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`12
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`“SAPs had a significant advantage in that SAPs were known to be easily
`
`adjustable” and that Patent Owner’s declarant in the ITC proceeding
`
`admitted it was “known how to make a SAP projectile (like Spit Balls) that
`
`is spherical and soft, and would fit inside a airsoft gun as of 2010.” Id. at
`
`38 (citing Ex. 1004, 437:21–438:12; Ex. 1016 ¶ 77; Ex. 1017 ¶¶ 36–39, 46–
`
`48). Petitioner additionally argues that “replacing hard plastic projectiles in
`
`an airsoft gun with soft SAP projectiles” and “modify airsoft guns to launch
`
`soft SAP projectiles in place of hard plastic spheres” were within ordinary
`
`skill in the art, as admitted by Patent Owner’s declarant. Id. at 38–39 (citing
`
`Ex. 1004, 440:15–23; Ex. 1016 ¶ 78).
`
`Petitioner, thus, contends that one of ordinary skill in the art
`
`(1) knew about the injury problem caused by airsoft guns (such
`as Peev), (2) knew one solution was to make the ammunition
`softer, (3) knew that there was prior art soft SAP ammunition
`available (Spit Balls) and few other alternatives, and (4) had the
`technical skill to combine this soft ammunition with Peev.
`
`Pet. 39; see also id. at 34 (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, 550 U.S.
`
`at 421), 38 (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”).
`
`According to Petitioner, one of ordinary skill in the art “would also
`
`have been motivated to combine Peev with Spitballs,” and “Peev and
`
`Spitballs are in the same field of endeavor, namely, launchers and
`
`ammunition use for fun.” Pet. 39–40 (citing Ex. 1016 ¶ 80); see also id. at
`
`13
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`42–43 (arguing that one of ordinary skill in the art “would have been
`
`motivated to use the plurality of soft projectiles having the same spherical
`
`shape (Spitballs) in place of the plurality of hard projectiles of Peev having
`
`the same spherical shape”) (citing Ex. 1016 ¶ 85; Ex. 1017 ¶ 49).
`
`Petitioner further argues that one 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).
`
`Pet. 40 (citing Ex. 1016 ¶ 81).
`
`c) Preliminary Response
`
`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. 7, 8–9 (citing Ex. 1004, 364:22–365:4, 366:20–25;
`
`Ex. 1005, 3, 23, 26; Ex. 1016 ¶ 75). Patent Owner argues that one of
`
`ordinary skill in the art “would not have been concerned with reducing the
`
`injury risk associated with being shot by the hard plastic ammunition,” as
`
`indicated by both parties’ testimony in the ITC proceeding. Id. at 9 (citing
`
`Ex. 1004, 229:15–17, 231:11–232:15, 439:10–15).
`
`Patent Owner also argues that “[i]n an effort to mimic real firearms,
`
`many airsoft guns are specifically designed to fire hard ammunition at high
`
`speeds” and that “is a feature, not a bug, because ‘[t]he intent is to be like a
`
`real gun.’” Prelim. Resp. 10 (citing Ex. 1004, 366:23–367:15). In Patent
`
`Owner’s view, “if the design goal was to create a projectile launcher without
`
`injury risk, a skilled artisan would not have started with an airsoft gun like
`
`14
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`Peev’s,” as determined in the ITC proceeding. Id. (citing Ex. 2007 (Initial
`
`Determination from the ITC proceeding), 71).6
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`Patent Owner also responds that Petitioner fails to establish that SAP
`
`ammunition would have reduced injury risk associated with Peev’s airsoft
`
`gun. Prelim. Resp. 10–11 (citing Pet. 4, 40, 48). Patent Owner argues that
`
`“the Petition identifies injuries such as ‘penetration of skin and bone’ that do
`
`not apply universally to all airsoft guns” because such injuries occur at or
`
`above 300–400 fps. Id. at 11 (citing Pet. 35–36). Patent Owner also argues
`
`that both sides’ declarants agreed that “some airsoft guns have much lower
`
`velocities.” Id. (citing Ex. 1004, 213:21–214:10, 372:7–8).
`
`If Peev’s airsoft gun is viewed as a toy, Patent Owner argues that “it
`
`would fall into the low-powered category of such devices” that have
`
`“muzzle velocity ‘that’s half, or less than half, of the velocity that breaks the
`
`skin.’” Prelim. Resp. 12 (citing Ex. 1004, 368:7–14, 370:2–7; Ex. 2007, 73
`
`n.34). Patent Owner, therefore, argues that “Peev’s airsoft gun—to the
`
`extent it is a ‘toy,’ as Petitioner would have it—lacks a skin-breakage
`
`problem.” Id. (citing Ex. 1004, 369:18–370:1; Ex. 2007, 72–73).
`
`Patent Owner argues that Petitioner knew that the “skin-breakage”
`
`issue undermines its reason to combine and mischaracterized the testimony
`
`of Patent Owner’s declarant to support its position. Prelim. Resp. 12–13
`
`(citing Pet. 36–37). According to Patent Owner, the cited testimony “is
`
`limited to the context of a report by Petitioner’s Mr. Delman showing
`
`injuries associated with muzzle velocities in the 350 fps range” and “gave no
`
`indication of whether bruises or welts would occur under 350 fps.” Id. at 13
`
`
`6 Like Patent Owner, we cite to the exhibit page number at the very bottom
`center of each page.
`
`15
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`IPR2023-01461
`Patent 8,596,255 B2
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`(citing Ex. 1004, 368:7–16, 532:24–533:13). Patent Owner also argues that
`
`its declarant in the ITC proceeding “could not say that bruising or welts are
`
`impossible,” “had not seen any evidence one way or the other,” and “did not
`
`address those types of injuries.” Id. at 14 (citing Pet. 36–37; Ex. 1004,
`
`441:14–16).
`
`Patent Owner further argue that “statements that minor injuries like
`
`bruising and welts might possibly occur at ‘a muzzle velocity below 350 feet
`
`per second,’ (Pet. 36–37), do not mean these types of injuries would occur at
`
`the drastically lower velocity (e.g., 160 fps) of a youth-focused airsoft gun,”
`
`and “[n]o evidence to that effect exists on this record, not even in Mr.
`
`Delman’s declaration.” Prelim. Resp. 14 (citing Ex. 1016 ¶¶ 75–81;
`
`Ex. 2007, 74).
`
`Regarding Petitioner’s asserted “damage to the human eye,” Patent
`
`Owner argues that “[t]he record is devoid of any evidence that soft SAP
`
`ammunition would prevent eye injuries.” Prelim. Resp. 14 (citing Ex. 1016
`
`¶¶ 75–81). Patent Owner also argues that Petitioner’s declarant “admitted
`
`that the answer to preventing eye injuries with airsoft guns—regardless of
`
`ammunition type—is protective eyewear.” Id. at 14–15 (citing Ex. 1004,
`
`214:14–23, 216:20–218:8; Ex. 2007, 72).
`
`According to Patent Owner’s summary, Petitioner’s deficiencies are
`
`that “using soft SAP ammunition would ‘destroy the basic purpose of [a
`
`high-powered, adult] airsoft gun,’” there is “no evidence that a youth-
`
`focused (or ‘toy’) airsoft gun would cause skin breakage or even lesser body
`
`injuries to someone who is shot,” and there is “no evidence that SAP
`
`ammunition would prevent eye injuries to someone who is shot,” as
`
`determined in the ITC proceeding. Prelim. Resp. 15–16 (citing Ex. 2007,
`
`74–76, 77).
`
`16
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`
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`IPR2023-01461
`Patent 8,596,255 B2
`
`Patent Owner further responds that SAP ammunition was not an
`
`identified solution. Prelim. Resp. 7–8, 16 (citing Pet. 37–38), 18.
`
`According to Patent Owner, “Petitioner lacks record evidence that soft
`
`polymer spheres like those described in Spitballs were used in the prior art
`
`as ammunition for any type of projectile launcher that even remotely
`
`resembles Peev’s electric airsoft gun” and there is no support that “‘soft
`
`plastics, such as SAPs’ were known ammunition options.” Id. at 16–17
`
`(citing Pet. 38). Patent Owner argues that supporting testimony “merely
`
`parrots back the same conclusory sentence from the Petition without
`
`corroboration” and only states that one of ordinary skill in the art “‘could
`
`have considered,’ (EX1016 ¶ 77), SAPs as an ammunition option for an
`
`airsoft gun.” Id. at 17.
`
`Patent Owner also argues that Spitballs “instructs users to ‘throw,’
`
`‘chuck,’ . . . ‘fl[i]ng,’” and “blow[] the Spit Balls polymer products through
`
`a tube,” but Sptiballs “does not teach or suggest using the Spit Balls polymer
`
`products as ammunition for a gun-like launcher analogous to Peev’s airsoft
`
`gun.” Prelim. Resp. 17–18 (citing Ex. 1002, 15, 18) (second alteration in
`
`original). According to Patent Owner, “Petitioner does not argue
`
`otherwise.” Id. at 18.
`
`Turning to alternative motivation theories, Patent Owner responds that
`
`merely arguing that references are in the same field of endeavor is
`
`insufficient to explain why the references would have been combined.
`
`Prelim. Resp. 18–19 (citing Pet. 39–40). Patent Owner also argues that
`
`Spitballs and Peev are not in the same field of endeavor, as determined in the
`
`ITC proceeding. Id. at 19 (citing Ex. 1002, 15; Ex. 1003, 26; Ex. 2007, 71).
`
`Patent Owner further argues that Petitioner’s “one-sentence” argument that
`
`the proposed combination represents a simple substitution of known
`
`17
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`IPR2023-01461
`Patent 8,596,255 B2
`
`elements presents insufficient evidence that “ammunition for an airsoft gun
`
`was an ‘established function’ of a polymer product like the one in Spitballs.”
`
`Id. at 20 (citing Pet. 40).
`
`d) Petitioner Fails to Show a Reasonable Likelihood of
`Prevailing
`
`We agree with Patent Owner that insufficient evidence supports
`
`Petitioner’s reason to combine Peev and Spitballs. Prelim. Resp. 20.
`
`Though there is a risk of injury while using airsoft guns, Petitioner has not
`
`established that one of ordinary skill in the art would consider this risk a
`
`problem with airsoft guns, as opposed to an accepted function. Id. at 8–10.
`
`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. Petitioner’s declarant, like
`
`Peev, is also concerned with making toy guns more like a real gun.
`
`Apart from toy guns, Mr. Delman testified that he “own[s]
`
`approximately 30 airguns” which “utilize BBs, pellets, and airsoft
`
`ammunition.” Ex. 1016 ¶ 19. Mr. Delman’s cross-examination testimony
`
`(noted by “A.”) from the ITC proceeding is reproduced below, where he
`
`testified 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
`
`18
`
`
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`IPR2023-01461
`Patent 8,596,255 B2
`
`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 also agree with Patent Owner that Petitioner has not established
`
`that the combination of Peev and Spitballs decreases the risk of injury.
`
`Prelim. Resp. 10–16. 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
`
`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. 40 (“air
`
`guns, such as Peev’s toy gun”)) 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. 11). Petitioner does not establish the typical muzzle velocity
`
`19
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`IPR2023-01461
`Patent 8,596,255 B2
`
`of “toy” airsoft guns, such as Peev. See Pet. 24–26 (summarizing Peev), 34–
`
`38 (describing injuries associated with airsoft guns). Petitioner does not
`
`establish the risk of injury that is present in Peev or in airsoft guns similar to
`
`Peev. See id. at 24–26, 34–38.
`
`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. 35–36 (citing Ex. 1004, 433:18–16; Ex. 1019, 9;
`
`Ex. 1020, 3). Below that muzzle velocity, Petitioner points to Patent
`
`Owner’s declarant who testified that there is merely a chance of injury. Id.
`
`at 36–37 (quoting Ex. 1004, 441:14–442:18). Petitioner does not assert that
`
`the airsoft gun of Peev has a particular muzzle velocity. See Pet. 34–38;
`
`Ex. 1016 ¶¶ 56–62, 75–81. 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. See Pet. 34–40; Ex. 1016 ¶¶ 56–62, 75–81. For example,
`
`if “toy” airsoft guns similar to Peev have muzzle velocities around 160 fps,
`
`th
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