Two Moms and a Toy, LLC v. International Playthings, LLC

Filing 202

ORDER denying 48 Motion for Summary Judgment filed by defendant International Playthings, LLC. By Judge Philip A. Brimmer on 3/29/12.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 10-cv-02271-PAB-BNB
TWO MOMS AND A TOY, LLC, a Colorado limited liability company,
Plaintiff,
v.
INTERNATIONAL PLAYTHINGS, LLC, a Delaware limited liability company,
GOLOS WEISMAN DESIGN, LTD., an Israel partnership, and
YOOKIDOO, LTD., an Israel partnership,
Defendants.

ORDER

Plaintiff Two Moms and a Toy, LLC initiated this action on September 16, 2010,
alleging, inter alia, infringement of United States Patent No. 6,782,567 (“’567 Patent” or
the “patent”). The ’567 patent has been assigned to plaintiff. Defendant International
Playthings, LLC (“IPT”) filed a counterclaim against plaintiff which included an allegation
that the ’567 Patent is invalid. This matter is before the Court on IPT’s motion [Docket
No. 48] seeking summary judgment on its invalidity claim.
I. BACKGROUND
The following facts are not in dispute: The inventors began working on the
invention described in the ’567 Patent in January 2002, and the patent application was
filed on November 3, 2003. The patent is dated August 31, 2004. The ’567 Patent’s
Abstract describes the invention as a “fountain water toy generally for use in a bathtub
or pool” which “generally comprises an at least partially submersible pump that is fluidly

coupled with a fountain amusement assembly.” ’567 Patent (Abstract); see Docket No.
48-1 at 2. “The assembly includes one or more spouts through which water is
streamed,” and “[i]nterchangeable character heads or other fanciful representations are
provided to place over the spouts such that when in operation water streams from the
character heads.” Id.
On January 3, 1980, patent application 2,023,435 was published in the United
Kingdom (“UK ’435 Application”). The UK ’435 Application describes a “toy boat which
has a motor-driven pump which enables water to be sucked in and expelled through
spray jets in imitation of a fire tug.” Docket No. 48-3 at 2. “The intake to the pump is
arranged in the bottom of the boat to be substantially vertical and this provides for
greater stability of the boat when pumping water.” Id.1 The toy boat consists of an
upper part and a lower part, within which other aspects of the boat are contained, and
the upper part can “be removably fastened to the lower part.” Docket No. 48-3 at 4, ll.
54-57; see id. at 3, Fig 1. (showing “lower part 1” and “upper part 2”).
On May 15, 2011, Michael Varda, the President of IPT, and a colleague
purchased a product called the Emergency Fire Patrol with Water Jet (“Water Jet Toy”)

1

The application contains three claims:
1. A toy boat, having a motor driven pump, which draws in water through
an intake orifice location below the waterline and feeds it to spray jets
located on the deck, which spray the water substantially upwards,
characterised in that the intake orifice for the pump is located in the bottom
of the boat and is substantially vertically located.
2. A toy boat according to Claim 1, characterised in that additional ballast
is provided in the interior of the boat.
3. A toy boat constructed as herein described with reference to the
accompanying drawings.
Docket No. 48-3 at 4.
2

on eBay and received the toy on May 19, 2011. The packaging it arrived in indicated
that a Chinese company, Lucky Clover Toys, manufactured the Water Jet Toy and that
it was imported into the United States by an Illinois company called Justen Products.2 A
company by the name of Justen Products, Inc. was incorporated in Illinois on November
14, 1996 and dissolved a couple of years later.
IPT asserts three main arguments in support of its motion for summary
judgment, namely, that (1) the Water Jet Toy, which it contends was sold in the U.S. at
least a year prior to issuance of the ’567 Patent, anticipates Claim 1 of the patent, (2)
the UK ’435 Application anticipates Claim 1 of the patent, and (3) the combination of
these references with other prior art references renders Claims 13 and 17 of the patent
obvious.
II. STANDARD OF REVIEW
Summary judgment is warranted under Federal Rule of Civil Procedure 56 when
the “movant shows that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248-50 (1986); Concrete Works, Inc. v. City &
County of Denver, 36 F.3d 1513, 1517 (10th Cir. 1994); see also Ross v. The Board of
Regents of the University of New Mexico, 599 F.3d 1114, 1116 (10th Cir. 2010). A
disputed fact is “material” if under the relevant substantive law it is essential to proper
disposition of the claim. Wright v. Abbott Labs., Inc., 259 F.3d 1226, 1231-32 (10th Cir.
2001). Only disputes over material facts can create a genuine issue for trial and
2

The toy appears to have been distributed by a company called St. Evans, Inc.
See Docket No. 48-5 at 5.
3

preclude summary judgment. Faustin v. City & County of Denver, 423 F.3d 1192, 1198
(10th Cir. 2005). An issue is “genuine” if the evidence is such that it might lead a
reasonable jury to return a verdict for the nonmoving party. Allen v. Muskogee, 119
F.3d 837, 839 (10th Cir. 1997). When reviewing a motion for summary judgment, a
court must view the evidence in the light most favorable to the non-moving party. Id.;
see McBeth v. Himes, 598 F.3d 708, 715 (10th Cir. 2010). Furthermore, to establish its
invalidity claim on the basis of anticipation or obviousness, IPT must present “clear and
convincing evidence.” See Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d
784, 796 (Fed. Cir. 2010) (“To show that a patent claim is invalid as anticipated, the
accused infringer must show by clear and convincing evidence that a single prior art
reference discloses each and every element of a claimed invention.”); PharmaStem
Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007) (“[T]he burden
falls on the patent challenger to show by clear and convincing evidence that a person of
ordinary skill in the art would have had reason to attempt to make the composition or
device, or carry out the claimed process, and would have had a reasonable expectation
of success in doing so.”).
III. DISCUSSION
A. Water Jet Toy
IPT argues that the Water Jet Toy “contains each and every feature of [C]laim 1”
of the ’567 Patent, see Docket No. 48 at 14, and, therefore, invalidates the patent under
the doctrine of anticipation.3 See Scripps Clinic & Research Found. Inc. v. Genentech,
3

Claim 1 of the ’567 Patent provides as follows: “A water toy comprising: an at
least partially submersible battery-powered fluid pump; a themed amusement
4

Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) (“Invalidity for anticipation requires that all of
the elements and limitations of the claim are found within a single prior art reference.”),
overruled on other grounds by Abbott Lab. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir.
2009). To be considered potentially invalidating prior art, the invention must have been
“patented or described in a printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the date of the application for
patent in the United States.” 35 U.S.C. § 102(b).4 IPT contends that the Water Jet Toy
“was in public use, offered for sale and/or sold in the U.S. more than 1 year prior to the
November 3, 2003 filing date of the ’567 Patent” and “was known or used by others in
the U.S. prior to January 2002.” Docket No. 48 at 5, ¶¶ 5-6.
As an initial matter, a May 2011 purchase on eBay of a Water Jet Toy clearly
does not establish knowledge, sale, or use in this country during the relevant time
period. See Intertech Resources Inc. v. Vital Signs, Inc., 1997 WL 359966, at *4 (N.D.
Ill. June 13, 1997) (denying summary judgment where defendant failed to provide
evidence that the alleged prior art product “was in use or on sale” before the critical
date); cf. Volterra Semiconductor Corp. v. Primarion, Inc., 796 F. Supp. 2d 1025, 1075
(N.D. Cal. 2011) (concluding that, because there was no evidence that a dissertation

assembly, the amusement assembly including (1) at least one spout out of which water
streams when the toy is in operation; and (2) at least one character removably mounted
over the at least one spout, wherein water appears to stream from the character when
the toy is in operation; and a fluid conduit connecting the fluid pump and the
amusement assembly.” ’567 Patent col. 10 ll. 44-54.
4

See 35 U.S.C. § 102(a) (providing that a “person shall be entitled to a patent
unless . . . the invention was known or used by others in this country, or patented or
described in a printed publication in this or a foreign country, before the invention
thereof by the applicant for patent[.]”).
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was “publicly available” prior to the critical date, it did not constitute prior art under
§ 102(b)); Sparton Corp. v. United States, 89 Fed. Cl. 196, 210-11 (Fed. Cl. 2009)
(“Establishing that a public use is prior art under § 102(b) requires a showing, by clear &
convincing evidence, that the use was “‘in this country.’”) (quoting 35 U.S.C. § 102(b)).
IPT further points out that the toy appears to have been imported by a company called
Justen Products and that a company called Justen Products, Inc. was incorporated in
Illinois for a short time in the 1990s. IPT, however, provides no evidence that Justen
Products, Inc. is the same company or, assuming it is, that it ever sold the Water Jet
Toy in the United States during that time period. See Docket No. 77-5 (Varda 2nd
Decl.) at 4, ¶ 7 (stating that the president of Justen Products and a related company
“confirmed that his companies imported and sold many toy products while they were in
business, but . . . was unable to specifically recall the Water Jet Boat Toy . . . .”).
Consequently, IPT has not provided a sufficient factual basis to conclude that the Water
Jet Toy constitutes prior art. Its motion will therefore be denied to that extent.
B. UK Patent Application
IPT also contends that the UK ’435 Application anticipates the patent because it
“discloses the exact combination of features and components in [C]laim 1 of the ’567
Patent.” Docket No. 48 at 13. Claim 1 of the ’567 Patent describes, among other
things, “at least one character removably mounted over the at least one spout, wherein
water appears to stream from the character when the toy is in operation.” ’567 Patent
col. 10 ll. 49-52. As IPT points out, see Docket No. 48 at 11, the patent defines
“character” to mean “any representation of an animate or inanimate object or a portion

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thereof that is in some manner set apart from its surroundings.” ’567 Patent col. 3 l. 66
- col. 4 l. 2. IPT contends that a component of the invention described in the UK ’435
Application, which is marked as number 6 in Figure 1, constitutes a “[r]emovable
character.” Docket No. 48 at 14. The UK ’435 Application describes that part as
consisting of “spray nozzles” that are in some undefined way attached to or part of
“upper part 2.” Docket No. 48-3 at 4, ll. 60-61 (“. . . to the spray nozzles 6 on the deck
formed by the upper part 2.”). Although “part 2” can be “removably fastened” to the
“lower part 1,” id. ll. 56-57, there is no indication that the “spray nozzles” are, even
under IPT’s proposed construction of the relevant claim language, see, e.g., Docket No.
77 at 7, “removably mounted over [a] spout.”5 ’567 Patent col. 10 ll. 50-51 (emphasis
added).

Moreover, it is not clear how “spray nozzles” are “set apart from [their]

surroundings” in the way characters are described in the ’567 Patent.6 Rather, they
appear to be a component part of the depicted “fire tug,” namely, the smoke stacks.7
IPT does not explain why these differences do not undercut the anticipation
analysis. In fact, IPT fails to acknowledge any differences. Yet, “unless a reference

5

IPT relabels the numbered parts in Figure 1 of the UK ’435 Patent. Contrary to
IPT’s characterization, the part labeled with a number 5 is not described as a spout, but
rather as a “hose.” See Docket No. 48-3 at 4, l. 60.
6

The patent explains that, although “set apart,” a character in the preferred
embodiment will be “associated” with the toy’s water features.” ’567 Patent col. 4 ll. 4-5.
“For example, the head of an elephant, wherein water spouts out of its trunk, would be
a character in a jungle themed activity center, and in a tea party themed activity center,
a teapot, wherein water flows from its spout when the toy is operating, may also be a
character.” ’567 Patent col. 4 ll. 5-9.
7

With that said, plaintiff conceded that a water gun found on the Water Jet Toy
was a “character” despite it appearing to be a component of the boat. The Court,
however, need not resolve at this stage of the proceedings what is meant by “set apart.”
7

discloses within the four corners of the document not only all of the limitations claimed
but also all of the limitations arranged or combined in the same way as recited in the
claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008). On the state of this record, the Court finds that IPT has failed to
show by “clear and convincing evidence” that the UK ’435 Application anticipates Claim
1 of the ’567 Patent as a matter of law. See Krippelz v. Ford Motor Co., 667 F.3d 1261,
1265 (Fed. Cir. 2012) (“To show that a patent claim is invalid as anticipated, the
accused infringer must show by clear and convincing evidence that a single prior art
reference discloses each and every element of a claimed invention.”) (citing Silicon
Graphics, 607 F.3d at 796).
C. Combination of Prior Art References
Finally, IPT argues that Claims 13 and 17 are rendered obvious by a
combination of the Water Jet Toy, the UK ’435 Application, and other prior art.8 IPT
8

Claim 13 of the patent reads as follows: “A water toy comprising: a
battery-operated pump; a themed faceplate assembly separate from the pump, the
faceplate assembly including (1) a faceplate, (2) one or more fluid passages terminating
in an outlet, wherein the portion of the faceplate assembly immediately surrounding the
outlet is configured to resemble a character, (3) one or more connectors adapted to
removably secure the face plate assembly to a generally vertical surface; and tubing
fluidly connecting the faceplate assembly and the pump.” ’567 Patent col. 11 ll. 24-35.
Claim 17 claims a “water toy comprising: an at least partially submersible
battery-operated pump, the pump including one or more suction cups adapted to
removably secure the pump to a surface; a faceplate assembly, the faceplate assembly
including (1) a faceplate, (2) at least one spout out of which water streams when the toy
is in operation; (3) at least one character removably mounted over the at least one
spout, wherein water appears to stream from the character when the toy is in operation;
and (4) one or more suction cups adapted to removably secure the faceplate assembly
to a generally vertical surface; and tubing fluidly coupling the faceplate assembly and
the pump.” ’567 Patent col. 12 ll. 8-23.
8

made this argument before discovery had been completed in this action. Now that
discovery has closed, IPT has filed a supplemental motion for summary judgment
[Docket No. 167] in which it has reasserted this argument with additional evidence
regarding prior art references. See Docket No. 167 at 5, Statement of Undisputed
Material Facts ¶ 15 (“The [’]809 Patent, the [’]170 Application, the [’]505 Application, the
UK [’]435 Application and the Water Jet Boat Toy invalidate Claims 1, 13 and 17 as
obvious together and in combination with other water toy art.”) (citations omitted); id. at
11. Because IPT has supplemented this basis for its summary judgment request on a
complete evidentiary record, the Court will resolve the issue when it takes up the
supplemental motion. Cf. Mettler-Toledo, Inc. v. B-Tek Scales, LLC, --- F.3d ----, 2012
WL 386355, at *4 (Fed. Cir. Feb. 8, 2012) (“What is disclosed by a prior art reference is
a question of fact.”).9 The Court will therefore deny this aspect of IPT’s motion for
summary judgment as well.
IV. CONCLUSION
For the foregoing reasons, it is
ORDERED that the motion for summary judgment [Docket No. 48] filed by
defendant International Playthings, LLC is DENIED.

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At that time, to the extent claim construction must be conducted, the Court will
refer to the claim construction arguments found in the parties’ briefing on the present
motion.
9

DATED March 29, 2012.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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