Case: 19-1335 Document: 69 Page: 1 Filed: 02/21/2020
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CHOIROCK CONTENTS FACTORY CO., LTD.,
`Appellant
`
`v.
`
`ALDRIC SAUCIER, SPIN MASTER, LTD.,
`Appellees
`______________________
`
`2019-1335
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2017-
`00030.
`
`______________________
`
`Decided: February 21, 2020
`______________________
`
`HILARY L. PRESTON, Vinson & Elkins LLP, New York,
`NY, argued for appellant. Also represented by SIHO YOO,
`San Francisco, CA.
`
` JENNIFER C. BAILEY, Erise IP, P.A., Overland Park, KS,
`argued for appellees. Also represented by MEGAN JOANNA
`REDMOND.
` ______________________
`
`Before DYK, BRYSON, and TARANTO, Circuit Judges.
`
`

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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`Opinion for the court filed by Circuit Judge BRYSON.
`Opinion dissenting in part filed by Circuit Judge DYK.
`BRYSON, Circuit Judge.
`Choirock Contents Factory Co., Ltd., appeals from the
`final written decision of the Patent Trial and Appeals
`Board in an inter partes review proceeding. The Board held
`that Choirock did not prove that claims 1–4 and 7–14 of
`U.S. Patent No. 7,306,504 (“the ’504 patent”) are unpatent-
`able. We affirm.
`
`I
`A
`The ’504 patent, which is owned by appellee Spin Mas-
`ter, Ltd., is directed to a transformable toy adapted to open
`and close to reveal and conceal a figurine. ’504 patent, col.
`2, ll. 44–46. Figure 1 illustrates the toy 10 in an open po-
`sition according to one embodiment:
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`The ’504 patent calls the figurine 13 a “display mem-
`ber,” alluding to the fact that the figurine is on display
`when the toy is in the open position. Id. at col. 3, ll. 21–30.
`Figure 4 illustrates the embodiment of Figure 1 in
`which the toy 10 is in a closed position and the figurine or
`“display member” is hidden:
`
`As depicted in Figures 1 and 4 and described in the
`specification, the display member is connected to the inside
`surfaces of at least one of the two hemispherical pieces 12
`and 14 that form the outer shell of the toy, which is seen
`when the toy is in the closed position. Id. at col. 3, ll. 15–
`17. Pieces 12 and 14 are movably connected to the opposite
`ends of a coupler or hinge 20. Id. at col. 2, ll. 47–59. The
`’504 patent refers to pieces 12 and 14 as “movable mem-
`bers.” Id. at col. 2:47–51.
`Pieces 12 and 14 are not the only parts of the toy that
`can move. The display member itself (figurine 13) is made
`up of constituent parts, several of which can move inde-
`pendently of any movement by the movable members 12
`and 14. The ’504 patent explains:
`In this embodiment, the display member 13 is a fig-
`ure or figurine and includes a first revealer 16
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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`formed as a head of the figure, a body 18 positioned
`adjacent to the first revealer 16, a pair of second
`revealers 24 in the form of arms movably connected
`to opposing sides of the body 18, a coupler 20 con-
`nected between the first and second movable mem-
`bers, a support 22 positioned adjacent to the
`coupler and a third revealer 26 positioned adjacent
`to the support 22 and movably connected to the sec-
`ond movable member.
`Id. at col. 3, ll. 21–30. Figure 3 illustrates how some of the
`constituent pieces of the display member, referred to as the
`“revealers,” can been moved:
`
`In Figure 3, the head, or first revealer 16, has rotated
`around, so that the image of the face is in the “concealed
`position.” Id. at col. 3, line 57, through col. 4, line 6. The
`arms, or second revealers 24, have been retracted down-
`ward from their extended position shown in Figure 1. Id.
`at col. 4, ll. 18–24. Finally, the third revealer 26, which
`constitutes the feet of the figurine, has been moved up to a
`concealed position. Id. at col. 4, ll. 40–59.
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`
`Claims 1–4 and 7–14 of the ’504 patent are at issue in
`this appeal. They are directed to transformable toys with
`certain characteristics. Independent claim 1, which is il-
`lustrative, reads in full as follows:
`1. A toy comprising:
`a first movable member;
`a second movable member positioned adjacent to
`said first movable member, said second movable
`member being hingedly connected to said first mov-
`able member, wherein the first movable member
`and the second movable member are moved away
`from each other to an open position or towards each
`other to a closed position;
`a display member connected to a surface of at least
`one of the first and second movable members,
`wherein the display member is revealed when the
`first and second movable members are in the open
`position, wherein said display member includes a
`plurality of revealers rotatably connected to at
`least one of the first and second movable members.
`The other challenged claims recite similar variations of
`transformable toys.
`
`B
`Spin Master is a Canadian-based toy and entertain-
`ment company. In 2007, it launched Bakugan, a popular
`series of transforming robot toys that were sold throughout
`the world. Complaint at 3, Spin Master Ltd. v. Mattel, Inc.,
`No. 2:18-cv-3435 (C.D. Cal. Apr. 24, 2018). The Bakugan
`line of toys was launched in conjunction with an animated
`television series. Id.
`In 2015, Spin Master sent a letter to SonoKong Co.,
`Ltd., alleging that the manufacture and sale of the “Turn-
`ing Mecard” line of transforming toys infringed several of
`Spin Master’s patents, including the ’504 patent at issue in
`
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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`this appeal. SonoKong is a Korean-based company that
`distributes Turning Mecard toys in Korea and elsewhere.
`Choirock manufactures the Turning Mecard toys—model
`cars that transform into animal or humanoid figurines—
`among other lines of toys.
`In 2018, Spin Master sued Mattel, Inc., for selling
`Turning Mecard toys in the United States. Pursuant to a
`license agreement with Choirock, Mattel distributed and
`sold Turning Mecard products in the United States be-
`tween March 2018 and May 2019.
`In the 2018 lawsuit, Spin Master accused Mattel of try-
`ing to capitalize on Spin Master’s success and alleged that
`the Turning Mecard toys infringed several of Spin Master’s
`transformable toy patents. Amended Complaint at 4, 35–
`38, Spin Master Ltd. v. Mattel, Inc., No. 2:18-cv-3435 (C.D.
`Cal. May 22, 2018). The ’504 patent was not one of the
`patents asserted against Mattel in the complaint.
`C
`In 2016, Choirock petitioned for inter partes review of
`all the claims of the ’504 patent, alleging several grounds
`of unpatentability. Three of the prior art references that
`Choirock relied on in its petition are relevant to the present
`appeal. The first is an English translation of Japanese Pa-
`tent Publication No. S60–128693
`to Maruyama
`(“Maruyama ’693”). Maruyama ’693 discloses what it re-
`fers to as a “shape-changing toy.” The toy consists of a fig-
`ure, such as a figurine of an animal or a robot, which can
`be hidden when the toy is in the closed position, as illus-
`trated by Figures 1 and 2 from the Japanese patent publi-
`cation:
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`The second prior art reference is U.S. Design Patent
`No. 287,258 to Maruyama (“Maruyama ’258”). Maruyama
`’258 also discloses figures illustrating a toy robot that can
`be reconfigured into a ball. Although Maruyama ’258 is a
`different prior art reference from Maruyama ’693, the toy
`robot depicted in Figure 1 of Maruyama ’693 looks similar
`to the toy robot in Figure 7 of Maruyama ’258, and the
`closed view of the toy depicted in Figure 2 of Maruyama
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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`’693 looks generally similar to the closed view of the toy in
`Figure 13 of Maruyama ’258. The third prior art reference
`is U.S. Patent No. 4,516,948 to Obara. The Obara patent
`discloses a toy robot that can be reconfigured into a tractor-
`trailer truck.
`The Board found that Maruyama ’693 anticipated
`claims 5 and 6 of the ’504 patent. It therefore held claims
`5 and 6 to be unpatentable. However, the Board found that
`Choirock had not proved by a preponderance of the evi-
`dence that the remaining claims of the ’504 patent were
`unpatentable on any challenged ground. Choirock ap-
`pealed.
`
`II
`Appellees Spin Master and inventor Aldric Saucier
`(collectively, “Spin Master”) first challenge Choirock’s
`standing to appeal the Board’s final written decision. Be-
`cause Spin Master’s standing challenge implicates our ju-
`risdiction, we begin with the standing issue.
`A
`Spin Master contends that Choirock lacks standing to
`appeal from the Board’s decision because Choirock has not
`suffered an injury attributable to the ’504 patent. In par-
`ticular, Spin Master contends that there is no evidence that
`Spin Master is likely to assert the ’504 patent against
`Choirock’s Turning Mecard line of toys, because Spin Mas-
`ter has not done so in the past. Spin Master also contends
`that there is no evidence that Choirock is selling the Turn-
`ing Mecard toys in the United States. For those reasons,
`Spin Master asserts that any purported injury to Choirock
`is conjectural or hypothetical at best and is not sufficiently
`concrete to give Choirock Article III standing to contest the
`validity of the ’504 patent in this court.
`We have jurisdiction to review decisions of the Board
`under 28 U.S.C. § 1295(a)(4)(A). But as an Article III court,
`we are empowered to adjudicate only cases and
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`controversies “appropriately resolved through the judicial
`process.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 560
`(1992); E.I. DuPont de Nemours & Co. v. Synvina C.V., 904
`F.3d 996, 1004 (Fed. Cir. 2018). To establish a case or con-
`troversy, an appellant must meet “the irreducible constitu-
`tional minimum of standing,” Lujan, 504 U.S. at 560. That
`standing requirement must be satisfied before this court
`may review an agency’s decision, even when standing is not
`a prerequisite for obtaining an adjudication of rights before
`the administrative agency whose decision is subject to our
`review. See Synvina, 904 F.3d at 1004; Consumer Watch-
`dog v. Wis. Alumni Research Found., 753 F.3d 1258, 1261
`(Fed. Cir. 2014).
`In order to have standing to prosecute a claim in this
`court, an appellant must have “(1) suffered an injury in
`fact, (2) that is fairly traceable to the challenged conduct of
`the defendant, and (3) that is likely to be redressed by a
`favorable judicial decision.” Spokeo, Inc. v. Robins, 136 S.
`Ct. 1540, 1547 (2016). “That said, where Congress has ac-
`corded a procedural right to a litigant, such as the right to
`appeal an administrative decision, certain requirements of
`standing—namely immediacy and redressability, as well
`as prudential aspects that are not part of Article III—may
`be relaxed.” Consumer Watchdog, 753 F.3d at 1261 (citing
`Massachusetts v. E.P.A., 549 U.S. 497, 517–18 (2007)).
`Nonetheless, a “party invoking federal jurisdiction must
`have ‘a personal stake in the outcome’” in order to meet the
`injury-in-fact requirement. Consumer Watchdog, 753 F.3d
`at 1261 (quoting City of Los Angeles v. Lyons, 461 U.S. 95,
`101 (1983)).
`We reject Spin Master’s contention that Choirock lacks
`Article III standing to prosecute this appeal. Although
`Spin Master contends that there is no evidence that
`Choirock has suffered any injury in fact, the record indi-
`cates otherwise. In its 2015 letter to SonoKong, Spin Mas-
`ter stated that “activities including making, using, offering
`for sale and selling the [Turning] Mecard line of
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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`transforming toys in the United States, Europe and China
`constitute an infringement of several patents,” including
`the ’504 patent at issue in this case. Choirock has provided
`evidence establishing that it has concrete plans to begin
`selling that product line in the United States by early 2020.
`These facts demonstrate that Choirock, a competitor of
`patent owner Spin Master, has engaged in or likely will en-
`gage in activity that would give rise to a possible infringe-
`ment suit. See Synvina, 904 F.3d at 1005; JTEKT Corp. v.
`GKN Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir. 2018).
`Moreover, Spin Master has refused to grant Choirock a cov-
`enant not to sue on the ’504 patent, further confirming that
`Choirock’s risk of liability is not conjectural or hypothet-
`ical. Synvina, 904 F.3d at 1005. Choirock has thus satis-
`fied the injury-in-fact requirement. There is no dispute
`that the risk of infringement liability is attributable to
`Spin Master’s ’504 patent, and it is clear that the risk of
`liability could be redressed by our review. We therefore
`conclude that Choirock has Article III standing to prose-
`cute this appeal.
`
`B
`On the merits, the Board first found that Choirock did
`not satisfy its burden to show that Maruyama ’693 antici-
`pates claims 1–4 of the ’504 patent. In particular, the
`Board rejected Choirock’s argument that Maruyama ’693
`discloses a display member that “includes a plurality of re-
`vealers rotatably connected to at least one of the first and
`second movable members,” as required by claims 1–4 of the
`’504 patent. The Board’s finding on that issue is supported
`by substantial evidence.
`Maruyama ’693 identifies the body section of the robot
`as the first structural element. That element includes the
`upper section of the robot’s body (1a) and the robot’s head
`(1b). The second structural element consists of the upper
`arm sections of the robot (2a), the thigh sections of the legs
`(2b), and the rear surface section of the shouldering
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`component (2c), which is not depicted in Figure 1. The pa-
`tent explains that structural elements 2a, 2b, and 2c are
`connected to structural element 1. The third structural el-
`ement, which is rotatably connected to the second struc-
`tural element, consists of the lower arm sections of the
`robot (3a), the lower thigh sections of the legs (3b), the front
`surface of the shouldering components (3c), and the side
`sections (3d).
`In its petition and reply, Choirock argued that the body
`section of the robot in Maruyama ’693—structural element
`1—corresponds to the “first movable member” claimed in
`the ’504 patent, and that the leg portions 3a correspond to
`the claimed “second movable member.” However, Choirock
`also identified structural element 1 in Maruyama ’693 as
`the “display member” claimed
`in the
`’504 patent.
`Choirock’s petition also appears to take the position that
`the robot’s body section (1a), head section (1b), upper arm
`sections (2a), thigh sections (2b), rear surface of the shoul-
`dering component (2c), lower arm sections (3a), lower thigh
`sections (3b), front surface of the shouldering component
`(3c), and side sections (3d) all correspond to the claimed
`“plurality of revealers.”
`At his deposition, Choirock’s expert confirmed that the
`feature in Maruyama ’693 allegedly corresponding to the
`claimed “display member” is the robot’s torso. The expert
`circled that feature and labeled it “A” on Figure 1 from
`Maruyama ’693, as shown in the following exhibit from the
`expert’s deposition:
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`Exhibit 2003 at Figure 1, Choirock Contents Factory Co.,
`Ltd. v. Spin Master, Ltd., No. IPR2017-00030 (P.T.A.B.
`Sep. 22, 2017) (highlighting added).
`The Board found that Choirock failed to show that any
`of the features from Maruyama ’693 that Choirock charac-
`terized as “revealers,” other than the robot’s head, form a
`part of the feature Choirock identified as the “display mem-
`ber.” The Board therefore found that Choirock failed to
`show that the “display member includes a plurality of re-
`vealers,” as required by claims 1–4.
`Choirock argues that the Board improperly focused on
`whether the robot arms in Maruyama ’693 “form any part
`of structural element 1.” According to Choirock, the claim
`limitation reciting that the “display member includes a plu-
`rality of revealers” claim limitation does not require that
`“revealers” form a part of the “display member.” Choirock
`contends that the display member of Maruyama ’693
`should be deemed to “include” a plurality of revealers, be-
`cause the arms are connected to the display member, i.e.,
`the robot body The Board properly concluded that the
`
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`“includes” requirement in claim 1 is not satisfied by a show-
`ing that the arms of the Maruyama ’693 robot are con-
`nected to, but are not a part of the display member, i.e.,
`structural element 1, or the robot body.
`The ’504 specification and the challenged claims are
`unambiguous in requiring that the revealers be a part of
`the display member. The specification describes the entire
`figurine 13 depicted in Figure 1 as the display member. It
`then goes on to explain that the figurine 13 includes several
`constituent parts, such as the head 16 and arms 24, which
`constitute “revealers.” ’504 patent, col. 3, ll. 21–30.
`Choirock has not argued that entire robot figurine in
`Maruyama ’693 (i.e., the head, body, arms, etc.) constitutes
`the display member. Instead, Choirock has argued, both
`before the Board and in this court, that a single constituent
`part of the overall figure—structural element 1—is the dis-
`play member. Structural element 1 does not include the
`robot arms in Maruyama ’693 (or any other alleged reveal-
`ers other than the robot’s head), so the Board appropriately
`found that Choirock failed to prove that Maruyama ’693
`discloses the “said display member includes a plurality of
`revealers” claim limitation.
`Thus, even if the arms of the robot in Maruyama ’693
`are assumed to be rotatably connected to structural ele-
`ment 1, claims 1–4 require that the revealers be “included”
`in the display member, not simply “connected to” the dis-
`play member. Choirock failed to show that was the case for
`the toy that is disclosed in Maruyama ’693. Based on the
`evidence and argument presented to the Board, we see no
`reason to disturb the Board’s findings on that issue.
`C
`Choirock next contends that the Board erred by finding
`that Choirock failed to prove that Maruyama ’693 disclosed
`the following limitation from claims 7 and 8: “wherein the
`revealing means reveals at least one image when the first
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`and second movable members are in the open position.” We
`sustain the Board’s finding, which is supported by substan-
`tial evidence.
`In its petition, Choirock addressed this limitation by
`cross-referencing its argument regarding a limitation of
`claim 5 that it referred to as claim 5d. Choirock’s claim 5d
`argument consisted of a short discussion and another
`cross-reference to what Choirock referred to as claim 1c.
`The Board denied institution of claims 7 and 8 because it
`found that none of those portions of the petition even men-
`tioned the claimed requirement of an “image,” let alone ex-
`plained how that requirement was met.
`The Board later modified its decision in light of SAS
`Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), to include all
`the challenged claims and all the grounds presented in the
`petition. Choirock used that occasion to attempt to explain
`how it had addressed the disputed limitation.
`Choirock said that its mapping of claim 5d indicated
`that surfaces of the robot in Maruyama ’693 are revealed
`when the arms are moved. Choirock further argued that
`while it had not expressly stated that the Maruyama ro-
`bot’s arms include images, it is clear from other, unrefer-
`enced portions of the petition that those components
`include images. In particular, Choirock referred to its ar-
`gument relating to claim 2, that “upper and lower sections
`2a, 3a have the image of shoulders and arms; and legs 3b
`have the image of legs and feet.”
`In its final written decision, the Board found that
`Choirock had not adequately addressed the disputed limi-
`tation. The Board stated that “[i]n general, contrary to Pe-
`titioner’s suggestion, we do not glean from a mere
`suggestion of robot body parts constituting ‘revealers’ that
`they also constitute or include an image or images.” The
`Board also rejected Choirock’s incorporation of its claim 2
`argument because the petition did not cross-reference the
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`claim 2 argument, even though it cross-referenced other
`portions of the petition.
`The Board then ruled that even accepting Choirock’s
`argument that its presentation as to claim 2 should be
`deemed applicable to claims 7 and 8, the petition still failed
`to demonstrate that Maruyama ’693 anticipated those
`claims. The Board construed the “revealing means” limi-
`tation of claims 7 and 8 to require that the revealer “at
`some point be moved to expose to viewing a portion thereof
`that previously was not exposed,” a construction that
`Choirock does not challenge on appeal. The Board further
`noted that Choirock’s discussion of claim 2 addressed the
`limitation providing that “the revealers each include at
`least one surface having an image formed thereon.”
`Choirock argued that the upper and lower arms in
`Maruyama ’693 “have the image of shoulders and arms”
`and the legs “have the image of legs and feet.” The Board
`found that the argument as to that claim was directed to
`whether those components “have” images, but failed to ad-
`dress the limitation of claims 7 and 8 requiring that the
`revealers move to expose previously unexposed images.
`We see no reason to disturb the Board’s findings. Set-
`ting aside the flaws in the manner in which Choirock pre-
`sented its arguments to the Board, substantial evidence
`supports the Board’s finding that Choirock did not prove
`anticipation. As the Board found, even accepting that the
`arms contain images, as Choirock asserts, Choirock did not
`demonstrate that the surface that is exposed when the
`components are moved contains an image that was previ-
`ously unexposed.
`Finally, we reject Choirock’s argument that the Board
`was required to find claim 7 to be anticipated because it
`found that claim 6 was anticipated. As the Board noted,
`different claims have different requirements, and those dif-
`ferences matter. For example, claim 6 requires that the
`revealers include at least one surface having an image
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`formed thereon, not that the surface having that image
`must be revealed when the first and second movable mem-
`bers are in the open position, as required by claim 7.
`D
`Choirock next argues that the Board erred by finding
`that Choirock failed to prove that Maruyama ’258, in view
`of Obara, rendered claims 1–4 and 7–8 invalid for obvious-
`ness.
`1. With respect to claims 1–4, Choirock again focuses
`on the limitation that “said display member includes a plu-
`rality of revealers.” In particular, Choirock contends that
`the Board erroneously found that Choirock did not clearly
`identify where Maruyama ’258 teaches that limitation. We
`disagree.
`In addressing a different limitation, Choirock provided
`the following annotated illustration in its petition:
`
`Appellant’s Br. at 58. Choirock added the annotations on
`the right to Figure 7 of Maruyama ’258, including the
`words “display members.” In its reply, Choirock argued to
`the Board that it was clear from the side-by-side
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`comparison that Choirock was identifying the entire figu-
`rine in Maruyama ’258 as the display member. The Board
`rejected that argument.
`First, the Board noted that the annotation in question
`referred to plural “display members.” That, along with the
`placement of the arrow, as the Board noted, would seem to
`indicate that Choirock was contending that the two arms,
`not the overall figurine, were the display members.1
`Second, as he had with Maruyama ’693, Choirock’s ex-
`pert circled the front of the Maruyama ’258 robot’s torso
`and labeled it “A” when he was asked to identify the display
`member in Figure 7 of Maruyama ’258:
`
`Exhibit 2002 at Figure 7, Choirock Contents Factory Co.,
`Ltd. v. Spin Master, Ltd., No. IPR2017-00030 (P.T.A.B.
`
`1 Choirock contends that because the petition sepa-
`rately identifies the robot arms as revealers, not display
`members, the Board’s statement was unfounded. We disa-
`gree. The patent clearly refers to a “display member” that
`is made up of constituent parts, some of which are reveal-
`ers. It was therefore not improper for the Board to inter-
`pret the petition as arguing that the arms were both
`revealers and display members.
`
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`Case: 19-1335 Document: 69 Page: 18 Filed: 02/21/2020
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`18
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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`Sep. 22, 2017) (highlighting added). As the Board noted,
`the expert’s testimony undercuts Choirock’s contention
`that the petition
`identified the entire
`figurine
`in
`Maruyama ’258 as the display member.2
`In light of those representations, there is no force to
`Choirock’s contention that the Board erred in finding that
`Choirock failed to clearly identify where Maruyama ’258
`taught the “display member” limitation.3 Accordingly, we
`reject Choirock’s obviousness argument as to claims 1–4.
`2. With respect to the issue of obviousness as to claims
`7 and 8, Choirock focuses on the following limitation:
`“wherein the revealing means reveals at least one image
`when the first and second movable members are in the
`open position.”
`The Board found that Choirock failed to provide suffi-
`cient evidence or reasoning that the head of the toy robot
`in Maruyama ’258 moved or could be made to move to ex-
`pose the image of a face that was not previously exposed.
`Choirock contends the Board’s finding should be reversed
`
`
`2 Choirock also contends that the Board erred in re-
`lying on testimony regarding the Maruyama ’693 reference
`as opposed to the Maruyama ’258 reference. In the portion
`of the Board’s opinion to which Choirock refers, the Board
`merely summarized the patent owner’s arguments. The
`Board did not base its analysis on testimony relating to the
`Maruyama ’693 reference.
`3 Choirock’s statement earlier in its petition that
`Maruyama ’258 reveals a display member “in the same
`manner as the ’504 patent” does not add the needed clarity.
`In addition to being directed to a separate claim element,
`that statement does not explain what portions of the toy
`constitute the display member; instead, it addresses how
`the toy is opened from a closed position to reveal a display
`member.
`
`

`

`Case: 19-1335 Document: 69 Page: 19 Filed: 02/21/2020
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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`19
`
`because the Board ignored portions of the petition contend-
`ing that it would have been obvious to modify Maruyama
`’258 in light of Obara to make the robot’s head rotatable so
`as to expose the face if it was not previously exposed.
`The problem with Choirock’s argument is that the por-
`tions of the petition Choirock relies on are directed to claim
`1 of the ’504 patent, not claim 7. Choirock has not rebutted
`the Board’s finding that the petition did not argue that it
`would have been obvious to modify Maruyama ’258 to meet
`the requirements of claim 7.
`In its petition, Choirock asserted generally that claims
`1–11 and 13–14 were unpatentable as obvious in view of
`Maruyama ’258 and further in view of Obara. In order to
`show that certain limitations in those claims were met,
`Choirock argued that it would have been obvious to substi-
`tute movable or rotatable toy parts taught in Obara to the
`extent that the Board found Maruyama ’258 disclosed fixed
`toy parts and thus did not satisfy those limitations. For
`example, in arguing that claim 9 was obvious, Choirock
`said that “it would have been obvious . . . to modify
`Maruyama ‘258 to include a movably attached head as
`taught in Obara[.]”
`Despite specifically arguing that the Board should sub-
`stitute the movable toy parts of Obara for those in
`Maruyama ’258 to establish the obviousness of other
`claims, Choirock never suggested in its petition that the
`movable parts of Obara should be substituted to satisfy the
`disputed limitation in claims 7 and 8. Although Choirock
`contended in its reply brief to the Board that “it would have
`been obvious . . . to add rotatability to the head, arms[,] and
`feet” of the figurine in Maruyama ’258 in light of Obara,
`the Board reasonably rejected Choirock’s contention as a
`new argument that was not presented in Choirock’s peti-
`tion. In its briefs to this court, Choirock has not challenged
`the Board’s ruling on that issue, and it has not relied on
`arguments made in its reply brief to the Board. We
`
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`Case: 19-1335 Document: 69 Page: 20 Filed: 02/21/2020
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`20
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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`therefore sustain the Board’s finding that Choirock failed
`to prove that Maruyama ’258 disclosed the disputed limi-
`tation in claims 7 and 8.
`
`E
`Finally, Choirock contends that the Board erroneously
`found that Choirock failed to show that Maruyama ’258
`and Obara teach or suggest “a coupler positioned between
`the first and second movable members, said first movable
`member being movably connected to one end of the coupler
`and said second movable member being movably connected
`to an opposite end of the coupler,” as required by claim 9
`and its dependent claims.
`Choirock’s argument in its petition regarding that lim-
`itation consisted of two sentences and an accompanying an-
`notated figure:
`As shown below, Maruyama ‘258 Figure 2
`shows a coupler between the first and second mov-
`able members. The coupler movably connects the
`first and second movable members so that they
`may move into open and closed positions in the
`same manner as the ‘504 patent.
`
`That brief statement, along with the pair of figures,
`was repeated verbatim in Choirock’s expert declaration
`
`

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`Case: 19-1335 Document: 69 Page: 21 Filed: 02/21/2020
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`CHOIROCK CONTENTS FACTORY CO. v. SPIN MASTER, LTD.
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`21
`
`without further elaboration. The Board found that
`Choirock’s conclusory assertion did not persuasively ad-
`dress the specific language of the claim.
`As the Board found, simply asserting that the coupler
`between the two movable members in Maruyama ’258
`“movably connects the first and second movable members
`so that they may move into open and closed positions in the
`same manner” as in the ’504 patent was not sufficient to
`satisfy Choirock’s burden to show that Maruyama ’258
`taught the limitation requiring that the second movable
`member be “movably connected to an opposite end of the
`coupler.”
`In discussing the disputed limitation, Choirock did not
`address, either in its petition or its reply, whether the al-
`leged second movable member was on the “opposite end of
`the coupler.” Nor did Choirock address how the two com-
`ponents shown in Maruyama ’258 as extending between
`the first and second movable members constitute a single
`“c