Lewis Roca Prevails on Appeal for Toy Client, Choirock’s Mecard Brand
LOS ANGELES (October 21, 2021) -- Lewis Roca successfully defended firm client, Choirock Contents Company Co., Ltd., on appeal against patent infringement claims by invalidating competitor Spin Master, Ltd.’s patents via inter partes review (IPR). This decision enables Choirock’s highly popular toy brand, Mecard, to continue its popularity in the toy-content market while also likely ends a series of global intellectual property disputes between both companies.
On October 12, 2021, the United States Court of Appeals for the Federal Circuit affirmed the final written decisions of the United States Patent Trial and Appeal Board (PTAB) that invalidated all of the challenged claims of three “Bakugan” patents owned by Spin Master, a Canadian global toy company, in inter partes review petitions filed by Choirock. Spin Master has alleged that Mecard infringed these three patents.
The case originated in 2018, when Spin Master sued U.S. toy company, Mattel, Inc., in the United States, Canada, and Australia, among other jurisdictions, alleging that Mecard toys infringed Spin Master's "Bakugan" patents. Mattel was distributing Mecard toys in those countries through its license obtained from Choirock. But Mecard's entrance into the global market, in particular the U.S. market, has been obstructed by Spin Master's lawsuits.
In March 2019, in response to Spin Master's lawsuits, Choirock filed inter partes review petitions before the PTAB, challenging validity of Spin Master's three U.S. "Bakugan" patents. Spin Master alleged that Mecard infringed these three patents. In September 2020, the PTAB agreed with Choirock and ruled that all of the challenged claims of each "Bakugan" patent are unpatentable in light of the prior art.
In November 2020, Spin Master appealed all three final written decisions from the Board with the Federal Circuit. On appeal, Spin Master argued, among other things, that the Board’s motivation to combine analyses are generic and thus fail to provide a sufficient motivation to combine the prior art references in ways Choirock proposes. Spin Master also criticized the Board’s reliance on Choirock’s evidence, which Spin Master alleged to be conclusory and lacking support from the record.
The Lewis Roca team, led by Siho “Scott” Yoo with assistance from Tom Daly and Kurt Prange, responded by drawing the Court’s attention to specific teachings disclosed in the prior art at issue that provided suggestions to combine the references. Yoo, Daly, and Prange further clarified, through briefing and oral argument, that Choirock’s evidence is properly based on prior art teachings and that the Board’s reliance on such evidence was proper.
Less than a week after the hearing, the Federal Circuit summarily affirmed all three IPR decisions. By confirming that Spin Master's "Bakugan" patents lack patentability because they are nothing more than a combination of previously developed or known toy technologies, these rulings provide a complete victory to Choirock. Accordingly, Choirock hopes that it has successfully cleared away all of the obstacles relating to Spin Master's "Bakugan" patents in its global business for the Mecard toys.
About Choirock Contents Company Co., Ltd.
Choirock Contents Company Co., Ltd. is Korea’s leading content creator and provider. Choirock is highly specialized in planning and development of toys, animations, and licensing business and dedicated to the creation of unique and innovative contents such as Turning Mecard®, Dino Mecard®, Ghost Mecard®, Bbasha Mecard®, Hello Carbot®, Hello Carbot Koong®, Hello Carbot Mini®, SofyRuby®, My Friend Koriri®, Bite Choicar® among many others. Choirock is committed to provide ‘Delight To Play’ for children and families. For more information, visit www.choirockcf.com.
About Lewis Roca
Lewis Roca is an Am Law 200 law firm serving clients globally in complex litigation, intellectual property, business transactions, gaming, government relations, labor and employment, and regulatory counseling. Its offices are located in Albuquerque, Colorado Springs, Denver, Las Vegas, Los Angeles, Phoenix, Reno, Silicon Valley, and Tucson. To learn more about the firm, please visit us at our new website at www.lewisroca.com.