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

Filing 270

ORDER. Defendant's Supplemental Motion for Summary Judgment on its Counterclaim for Invalidity of U.S. Patent No. 6,782,567 167 is GRANTED in part and DENIED in part. Plaintiff's Motion for Leave to File Sur-Reply to Defendant's Rep ly in Support of Defendants Supplemental Motion for Summary Judgment on its Counterclaim for Invalidity of U.S. Patent No. 6,782,567 215 is GRANTED. Judgment shall enter in favor of defendant International Playthings, LLC and against plaintiff Two Moms and a Toy, LLC on defendant's counterclaim that the United States Patent No. 6,782,567 is invalid as obvious pursuant to 35 U.S.C. § 103. The Trial Preparation Conference scheduled for December 7, 2012 and the trial set for February 4, 2013 are VACATED. Within 14 days of the entry of judgment, defendant may have its costs by filing a bill of costs with the Clerk of the Court. By Judge Philip A. Brimmer on 10/24/12.(pabsec)

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 REGARDING CLAIM CONSTRUCTION

This matter is before the Court on the Supplemental Motion for Summary
Judgment [Docket No. 167] filed by defendant International Playthings, LLC (“IPT”).
Plaintiff Two Moms and a Toy, LLC (“Two Moms”) brought suit against defendants IPT,
Golos Weisman Design, Ltd. (“GWD”), and Yookidoo, Ltd. (“Yookidoo”), charging that
two toys sold by defendants infringe U.S. Patent No. 6,782,567 (the “’567 patent”).1
IPT’s motion argues that Claims 1, 13, and 17 of the ’567 patent are invalid because
they are obvious and anticipated in light of the prior art.
Before addressing the invalidity issues, the Court will determine the meaning of
certain disputed terms in the contested claims. See Freedman Seating Co. v. Am.
Seating Co., 420 F.3d 1350, 1356-57 (Fed. Cir. 2005) (“Patent infringement is a two

1

The ’567 patent was applied for by and issued to inventors Linda Austin and
Anne Argent, who assigned the patent to Two Moms. Docket No. 119 at 5-6, ¶¶ 10.

step inquiry. First, the court must construe the asserted claim[s] . . . Second, the court
must determine whether the accused product or process contains each limitation of the
properly construed claims.”) (internal citations omitted). Claim construction is a
question of law for the court. See, e.g., Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1454 (Fed. Cir. 1998) (en banc).
I. BACKGROUND
The ’567 patent abstract states, in part, as follows:
A fountain water toy generally for use in a bathtub or pool is described.
The toy generally comprises an at least partially submersible pump that is
fluidly coupled with a fountain amusement assembly. The assembly
includes one or more spouts through which water is streamed.
Interchangeable character heads or other fanciful representations are
provided to place over the spouts such that when in operation water
streams from the character heads.
U.S. Patent No. 6,782,567 (abstract) (filed November 3, 2003).
Claim 1 describes:
1. A water toy comprising:
an at least partially submersible battery-powered fluid pump;
a themed amusement 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.
Claim 13 describes:
13. 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
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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 describes:
17. 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.
Plaintiff contends that the following phrases require construction by the Court:
“water toy,” “faceplate,” “faceplate assembly,” and “at least one character removably
mounted over the at least one spout.”
IPT additionally asks the Court to construe the following claim language:
“character” and “wherein the portion of the faceplate assembly immediately surrounding
the outlet is configured to resemble a character.”
II. LEGAL STANDARDS FOR PATENT CLAIM CONSTRUCTION
In construing patent claims, courts are guided by the precedent of the Federal
Circuit. See SunTiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327, 1333
(Fed. Cir. 1999). As that court explained, “there is no magic formula or catechism for
conducting claim construction.” Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir.
3

2005) (en banc). Even so, the Phillips decision outlined several key sources and
doctrines that should be consulted and applied, all the while making clear that “[t]he
sequence of steps used by the judge in consulting various sources is not important;
what matters is for the court to attach the appropriate weight to be assigned to those
sources in light of the statutes and policies that inform patent law.” Id.
Courts begin with the “bedrock principle” that “the claims of the patent define the
invention to which the patentee is entitled the right to exclude.” Id. at 1312 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
Cir. 2004)). The words of the claims “are generally given their ordinary and customary
meaning,” id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)), which is the “meaning that the term would have to a person of ordinary skill
in the art in question at the time of the invention.” Id. at 1313; see CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“Generally speaking, [courts]
indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary
meaning.”).
When the claim language “involves little more than the application of the widely
accepted meaning of commonly understood words,” construction is relatively
straightforward and the “ordinary meaning . . . may be readily apparent even to lay
judges.” Phillips, 415 F.3d at 1314. However, when the claim terms have a particular
meaning in the field, courts “look[] to those sources available to the public that show
what a person of skill in the art would have understood disputed claim language to
mean.” Id. (quoting Innova, 381 F.3d at 1116). These sources include the “words of

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the claims themselves, the remainder of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific principles, the meaning of technical
terms, and the state of the art.” Id.
Importantly, claim terms are not read in a vacuum. Id. at 1313. The context in
which a term is used, both in the asserted claim as well as in other claims of the patent,
can be valuable and instructive. Id. at 1314. In addition, the patent specification – the
text and figures of the patent that precede the claims – “is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.” Id. at 1315 (quoting Vitronics, 90 F.3d at 1582).
However, the “claim requirement presupposes that a patent applicant defines his
invention in the claims, not the specification.” Johnson & Johnston Assocs., Inc. v. R.E.
Serv. Co., Inc., 285 F.3d 1046, 1052 (Fed. Cir. 2002); see PSC Computer Prods., Inc.
v. Foxconn Int’l, Inc., 355 F.3d 1353, 1359 (Fed. Cir. 2004) (“the claims of a patent limit
the invention, and specifications cannot be utilized to expand the patent monopoly”)
(citation omitted).
Courts also consider the patent’s prosecution history – the official record of the
patent application and subsequent process before the U.S. Patent and Trademark
Office (“PTO”). Phillips, 415 F.3d at 1317. That history “provides evidence of how the
PTO and the inventor understood the patent.” Id. However, “because the prosecution
history represents an ongoing negotiation between the PTO and the applicant, . . . it
often lacks the clarity of the specification and thus is less useful for claim construction
purposes.” Id.

5

Courts may consult extrinsic evidence such as “expert and inventor testimony,
dictionaries, and learned treatises.” Id. However, this evidence is “less significant than
the intrinsic record,” i.e., the specification and prosecution history, id. (quoting C.R.
Bard, Inc. v. U.S. Surgical Corp., 388 F3d 858, 862 (Fed. Cir. 2004)), and courts must
be wary not to use extrinsic evidence to override the meaning of the claim terms
demonstrated by the intrinsic evidence. Id. at 1318-19. “[E]xtrinsic evidence may be
useful to the court, but it is unlikely to result in a reliable interpretation of patent claim
scope unless considered in the context of the intrinsic evidence.” Id. at 1319.
In sum, a court’s basic role is to construe the claim terms as they would be
viewed by “the ordinary artisan after reading the entire patent.” Id. at 1321. This is
crucial in order to respect the public notice function of patents:
The patent system is based on the proposition that claims cover only the
invented subject matter. As the Supreme Court has stated, “[i]t seems to
us that nothing can be more just and fair, both to the patentee and the
public, than that the former should understand, and correctly describe, just
what he has invented, and for what he claims a patent.”
Id. at 1321 (quoting Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876)). With these
principles in mind, the Court turns to the claim construction issues presented in this
case.
III. ANALYSIS
A. Water Toy
The bodies of Claims 1, 13, and 17 do not use the term “water toy.” Rather, the
term is found in the preamble to those claims.
Plaintiff proposes the following construction for “water toy”: “a toy which is played

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with by a user who is physically located in a body of water such as a pool or bath tub.”
Docket No. 191 at 4. In addition, IPT contends that the use of “water toy” in the
preamble is not a narrowing limitation because it does not describe the essential
structure of the claimed invention. Docket No. 209 at 5. As a general rule, the
preamble does not limit a patent claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299
F.3d 1336, 1346 (Fed. Cir. 2002). Typically, a preamble is not regarded as a limitation
to a claim “when the claim body describes a structurally complete invention such that
deletion of the preamble phrase does not affect the structure or steps of the claimed
invention.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir.
2010). Nonetheless, the preamble may be limiting “if it recites essential structure or
steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation
omitted).
IPT also claims that the narrow construction proposed by plaintiff contradicts
embodiments found in the specification. Docket No. 209 at 4 (citing ’567 patent col. 8 ll.
58-62 (“in other variations of the water toy, the pump can be positioned outside of the
water, such as on the edge of a tub or pool, wherein another fluid flow conduit extends
from the pump to the pool of water to suck water therefrom.”)).
The Court finds that the preamble “water toy” is not a limitation for Claims 1, 13,
and 17 of the ’567 patent. First, the reference to “water toy” in the preamble of these
claims is not essential to understanding the limitations or terms in the body of the
claims. Catalina Mktg., 289 F.3d at 808. Second, the body of Claims 1, 13, and 17
describes a structurally complete invention that is not affected by the deletion of the
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preamble. Biolitec, 618 F.3d at 1359. Third, even if the term “water toy” was read as
part of the body of these claims, there is no support for the limitation of the user being
physically located in a body of water with the invention. Finally, there is no evidence
that the preamble “water toy” was used in order to distinguish this invention from the
prior art. Id.2 Therefore, the Court rejects plaintiff’s proposed construction and
determines that there is no need to construe the term “water toy” in the preamble of
Claims 1, 13, and 17.
B. Faceplate
The word “faceplate” appears in Claims 13 and 17 on multiple occasions, both
as an adjective modifying the word “assembly” and as a noun. Plaintiff asks the Court
to construe “faceplate” as “a generally vertically disposed faceplate.” Docket No. 66 at
10. In support of this construction, plaintiff claims that the patent uses the term in
connection with embodiments where the faceplate is “removably secured to a generally
vertical surface.” Id. The defendant opposes this construction, arguing that dictionaries
typically define the term faceplate to mean “a protective plate for a machine or device.”
Docket No. 77 at 9 (citation omitted). IPT contends that there is nothing in the
specification of the ’567 patent which suggests that the term “faceplate” should be
accorded any meaning other than its ordinary dictionary meaning. Id. Furthermore, IPT
asserts that narrowing the term “faceplate” to include “generally vertically disposed” will
make the limitations in Claims 13 and 17 redundant. Id. at 10.
2

For example, the specification of the ’567 patent lists U.S. Patent No.
5,385,472 (the “’472 patent”) as prior art. ’567 patent col. 1 ll. 24-25. The ’472 patent
describes an “educational water toy designed for mounting on a vertical surface, such
as a bathtub wall.” ’472 patent (abstract) (filed July 26, 1993) [Docket No. 48-7 at 8].
8

Although there is a presumption that a claim term carries its ordinary and
customary meaning, a patentee may choose to be her own lexicographer and use
terms in a manner other than their ordinary meaning. Vitronics, 90 F.3d at 1582. The
specification acts as a dictionary when it expressly defines the terms used in the claims
or when it defines terms by implication. Id.
The Court rejects plaintiff’s proposed construction, which attempts to import a
limitation divorced from any reasonable meaning of the word “faceplate.” The fact that
the described embodiments contain faceplates secured to “a generally vertical surface”
means that a faceplate, once secured, is positioned vertically, not that the word
“faceplate” as used in the claim language makes a faceplate inherently or necessarily
positioned vertically. The common meaning of faceplate does not connote a vertical
positioning.
The defendant proposes that the word “faceplate” be defined as “a generally flat,
plate-like object to facilitate the positioning and placement of ‘spouts’ and/or ‘water
outlets.’” Docket No. 209 at 5. However, such a definition would appear to contradict
the use of the word “faceplate” in Claim 13, wherein the faceplate, as part of the
“faceplate assembly,” is “configured to resemble a character.” As a result, the faceplate
would not be “generally flat” or “plate-like” as defendant suggests. However, the Court
believes that the remainder of the defendant’s proposed definition is generally accurate
and thus will construe the term “faceplate” to mean “an object to facilitate the
positioning or placement of ‘fluid passages,’ ‘tubing,’ ‘spouts,’ and/or ‘water outlets.’”
C. Faceplate Assembly
Plaintiff proposes the following construction for “faceplate assembly,” a term
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which is found in Claims 13 and 17: “a generally vertically disposed faceplate
assembly.” Docket No. 66 at 9. In support of its construction, plaintiff argues that the
embodiments and figures described in the ’567 patent refer to the faceplate assembly
in connection with vertical surfaces and are shown as such in the figures describing the
patent. See, e.g., ’567 patent col. 4 ll. 45-47 (the “faceplate assembly is typically
adapted to attach to a vertical surface”); id. col. 6 ll. 64-67 (the faceplate assembly is “to
be attached to a generally vertical surface comprised of a smooth nonporous material,
such as the sides of a bathtub”).
The Court will not adopt plaintiff’s proposed construction. As is obvious from the
component parts of the “faceplate assembly” as (differently) described in Claims 13 and
17, the “faceplate assembly” consists of more than a vertical positioning. Instead, it
consists of a faceplate; fluid passages, tubing, outlets, and/or spouts; a character or
something resembling a character positioned over a water outlet or spout; and
connectors or suction cups to secure the faceplate assembly to a generally vertical
surface. Given that Claims 13 and 17 contain a description of the components of the
“faceplate assembly” and given that those descriptions of the components differ as
between Claims 13 and 17, the Court finds no need to construe this term since the
construction is obvious from each claim.
D. At Least One Character Removably Mounted Over the at Least One
Spout
Plaintiff proposes the following construction of the term “at least one character
removably mounted over the at least one spout,” which is found in Claims 1 and 17: “a
character designed to be secured by the toy in its mounted position over the spout while
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water streams from the character but also designed to be removable from the toy and
its mounted position over the spout by a user playing with the toy.”3 Docket No. 191 at
6. In support of its construction, plaintiff argues that this construction gives meaning to
the words “removably” and “mounted.” Id. Plaintiff contends that construing this phrase
to mean “designed to be secured by the toy in its mounted position over the spout while
water streams from the character” is consistent with the specification which describes a
“conical mount . . . adapted to securely hold a removable character . . . thereon while
water flows through the mount and the associated character to form a water feature.”
’567 patent col. 5 ll. 52-54.
IPT proposes the following alternative construction: “[a]t least one character
mounted above, surrounding or covering a water outlet/spout in such a way as to be
capable of being removed without damaging the surrounding structure.” Docket No.
209 at 4. IPT contends that the term “removably mounted” should be given its ordinary
meaning of “mounted so as to be capable of being removed.” Docket No. 77 at 7. In
support, IPT claims that the written claim description contrasts placement of characters
which are “removable” with characters that are “integrally molded” with the activity
center. ’567 patent col. 3 ll. 19-22.
The Court agrees with plaintiff that the term “mounted” is generally described in
3

Plaintiff provided two earlier constructions of this phrase. See, e.g., Docket No.
66 at 10 (“at least one character removably mounted over the at least one spout
wherein said character is intended to be removable from its mounting over the
spout by a user of the toy”) (emphasis in original); Docket No. 98 at 4 (“at least one
character removably mounted over the at least one spout wherein said character is
‘designed’ to be removable from its mounting over the spout by a user of the
toy”) (emphasis in original). The Court will focus on the proposed construction found in
plaintiff’s response to the supplemental motion for summary judgment [Docket No. 191].
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the specification as “securely hold[ing] a removable character.” ’567 patent col. 5 ll. 5253; id. col. 6 ll. 1-2 (“removable character is snapably received within the annular valley
of the mount and is securely held in place”). However, plaintiff’s proposed limitation of
“while water streams from the character” is unsupported and would render Claims 1 and
17 redundant.4 Therefore, the Court will construe “mounted” to mean “securely held,”
but the Court rejects plaintiff’s proposed construction of “while water streams from the
character.”
Next, plaintiff proposes that the term “removably” be construed to mean
“designed to be removable from the toy and its mounted position over the spout by a
user playing with the toy.” Docket No. 191 at 6. Plaintiff claims that the limitation of “a
user playing with the toy” is consistent with the specifications teaching that “a user
interacts with the toy.” ’567 patent col. 5 ll. 21-25. IPT argues that the root word
“remove” carries the meaning of “taking away from a position without damaging the
surrounding structure” and does not limit removal to the user of the toy. Docket No. 77
at 7-8.
The Court agrees with IPT that the phrase “removably mounted over the at least
one spout” does not limit the identity of “who” can remove a character. The reference
to a caregiver in the specification, see ’567 patent col. 7 ll. 32-34 (“[b]y being able to
change the characters on a periodic basis a caregiver can help ensure the water toy
4

If the Court accepted plaintiff’s construction, Claims 1 and 17 would define, in
pertinent part: “a character designed to be secured by the toy in its mounted position
over the spout while water streams from the character but also designed to be
removable from the toy and its mounted position over the spout by a user playing with
the toy, wherein water appears to stream from the character when the toy is in
operation” (emphasis added).
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remains interesting to a child”), is inapposite because Claims 1 and 17 do not identify or
otherwise mention the user of the toy and only describe the structure of the claimed
invention. To the extent plaintiff seeks to add a limitation to Claims 1 and 17 based on
the aforementioned specification language, the Court finds this improper. See Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (courts are not to
import limitations from the specification into the claims). Therefore, the Court rejects
plaintiff’s proposed construction that the removal of a character must be by a “user
playing with the toy.”
With respect to the term “removably,” the specification uses several terms when
it discusses the attachment of removable characters. See ’567 patent col. 7 ll. 23-25
(“[i]n the preferred embodiments, the characters are interchangeable from one conical
mount to another”); id. col. 7 ll. 32-34 (“[b]y being able to change the characters on a
periodic basis”); id. (abstract) (“Interchangeable characters heads or other fanciful
representations”). Based on these descriptions, the Court will construe “removably” to
mean “interchangeable with another character.”
Next, plaintiff proposed that the term “over” should be construed to mean “above,
below and to the side of the spout and all positions in between.” Docket No. 98 at 5.
IPT submits that the word “over” should be construed as “above” or otherwise accorded
its ordinary meaning given that there is no indication that it has been given a technical
definition. Docket No. 77 at 8.
In support of its definition, plaintiff relies on two characters – the waterwheel and
the reservoir – that are found “below” an outlet and to the side of the spout or outlet.
’567 patent col. 5 ll. 42-47 (“In another variation as shown in Fig. 1, a reservoir . . .
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having an outlet hole . . . located underneath the reservoir and directly above the
waterwheel is provided. The reservoir can be integrally molded with the faceplate or it
can be separately molded and subsequently attached to the front face thereof.”).
The Court finds plaintiff’s argument unconvincing. Plaintiff’s reliance on the
location of the “waterwheel” and the “reservoir” is unavailing because those characters
are not removable characters. As the specification states, “removable characters
associated with the water toy have depressions formed into their backsides that
substantially correspond to the conical mounts.” ’567 patent col. 5 ll. 62-65. The
waterwheel and the reservoir are “integrally molded” with the faceplate and do not
otherwise have “depressions formed into their backsides” nor are they attached on
mounts. ’567 patent col. 5 ll. 34-36 (the waterwheel is received on to “a post ”); id. col.
5 ll. 44-47 (“[t]he reservoir can be integrally molded with the faceplate or it can be
separately molded and subsequently attached to the front face thereof”).
In addition, the specification teaches that the faceplate includes mounts for
“attaching the one or more characters to the faceplate.” ’567 patent col. 5 ll. 24-25; id.
(abstract) (“characters heads or other fanciful representations are provided to place
over the spouts”). In the specification, the mounts have a passage “extending down the
center of the mount from the rear face and out the front face at a water outlet (or
spout).” ’567 patent col. 5 ll. 28-30. In addition, the mounts have an “annular valley”
which extends from a large diameter close to the front surface of the faceplate
extending to a small diameter, id. col. 5 ll. 56-59, in which the “depression in the
removable character is snapably received within the annular valley of the mount and is
securely held in place by the annular ridge of the mount.” ’567 patent col. 5 l. 67 - col. 6
14

l. 3; id. col. 2 ll. 26-29 (“The character is removably mountable over the spout such that
water appears to stream from the character when the toy is in operation”). Because the
spouts are holes at the end of mounts and mounts help to securely hold characters
through the annular valley, the Court finds that the term “over” in this instance should be
accorded its ordinary meaning. CCS Fitness, 288 F.3d at 1366 (“Generally speaking,
[courts] indulge a ‘heavy presumption’ that a claim term carries its ordinary and
customary meaning.”).
Based on the aforementioned reasons, the Court construes the phrase “at least
one character removably mounted over the at least one spout” to mean “at least one
character that is securely held over at least one spout and which is interchangeable
with another character.”
E. Character
IPT proposes the following construction for “character,” a word found in Claims 1,
13, and 17: “any representation of an animate or inanimate object or a portion thereof
that is in some manner set apart from its surroundings.” Docket No. 48 at 11. Plaintiff
argues that this term does not require construction because it is defined in the patent.
Docket No. 98 at 7. The Court agrees with plaintiff. Because the patent provides a
specific definition for the term “character,” see ’567 patent col. 3 l. 66 - col. 4 l. 2 (“any
representation of an animate or inanimate object or a portion thereof that is in some
manner set apart from its surroundings”), the Court finds no reason to construe this
term. Vitronics, 90 F.3d at 1582 (“although words in a claim are generally given their
ordinary and customary meaning, a patentee may choose to be his own lexicographer

15

and use terms in a manner other than their ordinary meaning”).
F. Wherein the Portion of the Faceplate Assembly Immediately
Surrounding the Outlet is Configured to Resemble a Character
IPT proposes the following construction of the term “wherein the portion of the
faceplate assembly immediately surrounding the outlet is configured to resemble a
character,” which is found in Claim 13: “the part of the faceplate assembly enclosing the
spout looks like a character and the character may be removable or ‘integrally molded’
with the assembly.” Docket No. 77 at 10. Plaintiff argues that the Court need not
construe this phrase outside of the construction of “faceplate assembly.” Docket No. 98
at 7.
With respect to the word “spout” used in this phrase, IPT states that the
specification teaches the terms “spout” and “outlet” are interchangeable. Docket No. 77
at 11. Plaintiff claims that “outlet” and “spout” are not synonymous. Generally, the
presumption is that the same terms appearing in different portions of the claims should
be given the same meaning unless it is clear from the specification and prosecution
history that the terms have different meanings at different portions of the claim. Fin
Control Sys. PTY, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001). Here,
however, “spout” and “outlet” do not have the same meaning. Although “spout” and
“water outlet” are sometimes used in conjunction with one another in the specification,
see, e.g., ’567 patent col. 4 ll. 47-51 (“water from a pool in which the pump is positioned
is pumped through the tubing to the faceplate and out of the faceplate assembly
through one or more water outlets (or spouts) of the water features”); id. col. 3 ll. 53-55
(“when the water outlets or spouts are vertically level with the pump outlet and an
16

output of 125 gallons per hour when the spouts are up to about two feet above the
pump outlet”), the term “water outlet” is sometimes used by itself, see, e.g., id. col. 5 ll.
55-57 (“the conical mount . . . extending from a small diameter end 215 at an
associated water outlet 170”); col. 7 ll. 41-42 (“different types of nozzles can be
attached proximate the ends of the water outlets 170”), and is not used in Claims 1, 13,
and 17. Moreover, the specification uses the terms “water outlet,” “pump outlet,” “outlet
hole,” and “outlet” to define different functions. See, e.g., id. col. 5 ll. 42-45 (“a reservoir
having an outlet hole located underneath the reservoir”); id. col. 5 ll. 47-49 (“when a
user manually fills the reservoir with water, water flows from the outlet hole to impact
the vanes”); col. 6 ll. 13-15 (“the water exiting the outlet does not contact or flow
through the character directly”).
Because the term “spout” and “outlet” are not used interchangeably, the use of
the term “outlet” in Claim 13 and “spout” in Claims 1 and 17 indicates that these terms
were intended to have different meanings. An “outlet,” as described in the specification,
defines a passage through which water exits. By contrast, Claims 1 and 17 describe a
“spout” as something “out of which water streams when the toy is in operation.” ’567
col. 10 ll. 48-49 (emphasis added); id. col. 12 ll. 14-15. The use of the term “streams”
describes that water exits a “spout” at a terminal point of the water feature. An outlet
does not necessarily share this characteristic.
Based on the foregoing, the Court construes “wherein the portion of the
faceplate assembly immediately surrounding the outlet is configured to resemble a
character” to mean “where a portion of the faceplate directly above or around the outlet
is configured to resemble a removable character or one integrally molded.”
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G. Conclusion
In sum, the Court will construe the requested phrases as follows:
Faceplate: an object to facilitate the positioning or placement of fluid passages,
tubing, spouts, and/or water outlets.
At least one character removably mounted over the at least one spout: at least
one character that is securely held over at least one spout and which is interchangeable
with another character.
Wherein the portion of the faceplate assembly immediately surrounding the
outlet is configured to resemble a character: where a portion of the faceplate directly
above or around the outlet is configured to resemble a removable character or one
integrally molded.
IV. INVALIDITY
IPT seeks an order from the Court that: (1) Claim 1 of the ’567 patent is invalid
as anticipated under 35 U.S.C. § 102; and (2) Claims 1, 13, and 17 of the ’567 patent
are invalid as obvious under 35 U.S.C. § 103. The Court addresses these arguments in
turn.
A. Anticipation
IPT argues that Claim 1 of the ’567 patent is anticipated by three pieces of prior
art: (1) United States Patent No. 5,918,809 (the “’809 patent”) [Docket No. 167-1]; (2)
China Patent Application CN2351170Y (the “’170 application”) [Docket No. 167-2];5 and
5

Two Moms does not dispute that the ’170 application and the ’550 application
are “printed publications” as that term is defined in 35 U.S.C. §§ 102(a), (b). See SRI
Int’l Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194-95 (Fed. Cir. 2008)
(determination of whether prior art is a “printed publication” involves a case-by-case
18

(3) China Patent Application CN2528505Y (the “’505 application”) [Docket No. 167-3].6
A patent issued by the PTO is presumed valid. 35 U.S.C. § 282. However, a
patent may be found invalid as a matter of law if it is anticipated. 35 U.S.C. § 102.7 A
patent is anticipated if a single prior art reference discloses, expressly or inherently,
every limitation of the claim such that a person of ordinary skill in the art could practice
the invention without experimentation. 35 U.S.C. § 102(b); see also Advanced Display
Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). The anticipating
reference must describe the patented features “with sufficient clarity and detail” such
that a person of ordinary skill in the field would recognize the existence of the patent

inquiry into the facts and circumstances surrounding the reference’s disclosure to
persons of skill in the art); see also In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981)
(finding an Australian patent application was open to the public because it was “properly
classified, indexed, or abstracted”).
6

For invalidity, the relevant prior art “must have existed as of the date of
invention, presumed to be the filing date of the application until an earlier date is
proved.” Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449
(Fed. Cir. 1986). IPT claims that November 3, 2003, the filing date for the ’567 patent,
is the appropriate date of invention. Docket No. 167 at 5-6. Two Moms disputes this
date, but does not otherwise provide an alternative date or evidence of an alternative
date. See Docket No. 191 at 1. Because Two Moms does not provide corroborating
evidence of a different invention date, the Court finds that there is no material dispute of
fact and will apply an invention date of November 3, 2003 for the ’567 patent. Bausch,
796 F.2d at 449; Procter & Gamble v. Teva Pharms. U.S.A., Inc., 566 F.3d 989, 999
(Fed. Cir. 2009) (it is well established that when a party seeks to prove conception via
the oral testimony of a putative inventor, the party must proffer evidence corroborating
that testimony).
7

35 U.S.C. § 102 states, in relevant parts, that: “[a] person shall be entitled to a
patent unless . . . (a) 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 application for patent, or (b) the invention was 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.
19

features in the reference. Crown Operations Int’l v. Solutia, Inc., 289 F.3d 1367, 1375
(Fed. Cir. 2002). “[A]ll of the elements and limitations of the claim must be shown in a
single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Moreover, there must be no difference
between the claimed invention and the prior art reference, as viewed by a person of
ordinary skill in the field of the invention. In re Omeprazole Patent Litig., 483 F.3d 1364
(Fed. Cir. 2007). Although anticipation relies on factual determinations, the Court may
properly grant summary judgment based on anticipation if the underlying factual
inquiries present no genuine factual issues. Beckson Marine, Inc. v. NFM, Inc., 292
F.3d 718, 723 (Fed. Cir. 2002).
For the purposes of this case, the parties agree that the level of skill in the art
necessary to construe these patents is low. IPT submits that a person of ordinary skill
in the art is one who has “experience in designing toys, having at least a rudimentary
knowledge of mechanical and battery-powered components used for the design of
toys.” Docket No. 48 at 15. Because Two Moms does not object to this definition, the
Court will adopt IPT’s proposed definition for purposes of this motion.
As discussed above, Claim 1 of the ’567 patent discloses four elements: (1) an
at least partially submersible battery-powered fluid pump; (2) a themed amusement
assembly, the amusement assembly including at least one spout out of which water
streams when the toy is in operation; (3) at least one character that is securely held
over at least one spout and which is interchangeable with another character, wherein
water appears to stream from the character when the toy is in operation; and (4) a fluid
conduit connecting the fluid pump and the amusement assembly. ’567 patent col. 10
20

ll. 45-54. To prevail on its counterclaim of anticipation, IPT must establish by clear and
convincing evidence that either the ’809 patent, the ’170 application, or the ’505
application discloses each of the four elements contained in Claim 1 of the ’567 patent
as arranged in that Claim. See Crown Packaging Tech. Inc. v. Ball Metal Bev.
Container Corp., 635 F.3d 1373, 1383 (Fed. Cir. 2011).
1. The ’809 Patent
IPT contends that the ’809 patent discloses every limitation contained in Claim 1
of the ’567 patent. Docket No. 167 at 9. The ’809 patent discloses “an apparatus for
producing fountain displays which include moving variable-play fountain sprays and
comprises one or more nozzles with dual entry or multi-entry ports which are mounted
on one or more moveable floats and are connectable to a source of pressurized liquid
through a control apparatus which includes an alternating valve and valve system for
producing oscillating, stationary and intermittent nozzle dispersal streams.” ’809 patent
(abstract) (filed October 27, 1997) [Docket No. 167-1].
Relying on its expert witness, Ronald Milner, IPT claims that the pump disclosed
in the ’809 patent is a battery-powered pump as disclosed in the ’567 patent. See
Docket No. 167-4 at 30 (“it is well known to make a pump for toys battery powered”);
Docket No. 167-11 at 4, ¶ 8. The Court disagrees.
The ’809 patent does not indicate how the pump is powered. The specification
for the ’809 patent states that its preferred use is for fountain displays in locations such
as “lobbies and malls to outdoor water shows at theme parks.” ’809 patent col. 14 ll.
36-38. Given such contemplated use, it is unlikely the pump is battery-operated.

21

Rather, the Court finds that the pump for the ’809 patent likely uses AC power from an
external source. Thus, the ’809 patent does not disclose “an at least partially
submersible battery-powered fluid pump,” as described in Claim 1 of the ’567 patent.
IPT argues that the “tubular sleeves” or “figures” that are “fitted” to the “exit
apertures” in the ’809 patent anticipate the “character removably mounted over the at
least one spout” limitation in Claim 1 of the ’567 patent. Docket No. 167 at 9; ’809
patent col. 8 ll. 63-64 (“a plurality of open-ended flexible tubular sleeves 88 are fitted to
the exit apertures”). As noted above, the ’567 patent defines characters as “any
representation of an animate or inanimate object or a portion thereof that is in some
manner set apart from its surroundings.” ’567 patent col. 3 l. 66 - col. 4 l. 2. Claim 1
states that the invention includes “at least one character removably mounted over the at
least one spout.” ’567 patent col. 10 ll. 49-51. The displays disclosed in the ’809 patent
are not disclosed as being “removably mounted” or, as construed by the Court,
“securely held” and “interchangeable with another character” over an “exit aperture”;
rather, they are mounted or fitted on top of the “tubular sleeves” in some undisclosed
manner. While the nature of the invention with its different variations of fountain
displays suggests that the tubular sleeves are removable, the ’809 patent does not
describe this feature at all and thus fails to describe the “removably mounted” limitation
in the ’567 patent “with sufficient clarity and detail” that a person of ordinary skill in the
field would recognize the existence of the patent feature in the reference. Crown
Operations, 289 F.3d at 1375. As such, the ’809 patent does not describe a “character
removably mounted” over at least one “spout.”
Because the ’809 patent does not describe “an at least partially submersible
22

battery-powered fluid pump,” and “at least one character that is securely held over at
least one spout and which is interchangeable with another character,” the Court finds
that the ’809 patent does not disclose every element contained in Claim 1 of the ’567
patent. Neither side argues that summary judgment on this prior art reference is
precluded by a genuine dispute of material fact, nor does the Court perceive one.
Accordingly, IPT has failed to show by clear and convincing evidence that the ’809
patent anticipates Claim 1 of the ’567 patent. 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.”) (citation omitted).
2. The ’170 Application
The ’170 application describes “a combined water scenery toy, which uses water
as its medium and belongs to children toys. The utility model is composed of a micro
water pump, a water path connecting plate which is provided with a connecting hole, a
water cover, a plurality of connecting pieces, a water receiving disk which is provided
with a water storage pond and a base seat.” ’170 application (abstract) (published
December 1, 1999) [Docket No. 167-2].
Relying on Mr. Milner’s expert report, IPT argues that the ’170 application
describes and teaches every element in Claim 1 of the ’567 patent. Docket No. 167-11
at 6, ¶ 13. However, the ’170 patent does not disclose a “partially submersible
battery-powered fluid pump.” ’567 patent col. 10 ll. 45-46. The specification of the ’170
application describes a “water pump with an electric motor,” but does not describe
whether this pump is submersible and also does not disclose whether the source of the
23

electricity is a battery. Docket No. 167-2 at 5.
Mr. Milner’s expert report makes the conclusory statement that the electric motor
is “certainly battery powered since it is a children’s toy.” Docket No. 167-4 at 26. In his
supplemental expert report, Mr. Milner acknowledges that the ’170 application is used
primarily for “table top use” and is not used in a pool or other body of water. Docket No.
209-1 at 10, ¶ 21. Nevertheless, Mr. Milner argues that the “submersible”
battery-powered pump disclosed in the ’567 patent is a “minor” difference because
having an external pump is a “trivial modification.” Id. ¶ 23. As noted in the notice of
allowance for the ’567 patent, one distinguishing feature of the ’567 patent from United
States Patent No. 4,951,329 (the “’329 patent”) is the fact that the ’567 patent is “either
free stand[ing] in a tub/pool or the battery-powered pump is submerged in the water.”
Docket No. 191-9 at 2. Thus, Mr. Milner’s assertion that this distinction is “trivial” is
unpersuasive.
Anticipation “requires the presence in a single prior art disclosure of all elements
of a claimed invention arranged as in the claim.” Finisar Corp. v. DirecTV Group, Inc.,
523 F.3d 1323, 1334-35 (Fed. Cir. 2008) (emphasis in original; citation omitted).
Because the pump disclosed in the ’170 application is not submersible as described in
the ’567 patent, the ’170 application does not disclose every element contained in the
’567 patent. Docket No. 209-1 at 10, at ¶¶ 23-24. Neither side identifies any factual
dispute as to the ’170 application. Accordingly, the Court finds that IPT does not
provide clear and convincing evidence that the ’170 application anticipates Claim 1 of
the ’567 patent. Karsten Mfg. Corp., 242 F.3d at 1383.

24

3. The ’505 Application
IPT argues that the ’505 application anticipates every element disclosed in Claim
1 of the ’567 patent. Docket No. 167 at 10. The ’505 application describes “a water
spraying toy; which, at the bottom of its casing is provided with an inlet and at the top is
provided with a nozzle, wherein the said inlet is connected with the said nozzle with the
flowing water cavity provided inside the said casing; the inside of the said flowing water
cavity located at the inlet is provided with moving water blades which can be immersed
into water and the inside of said casing is also provided with a motor driving the said
moving water blades to rotate, with batteries supplying power for the said motor and a
power switch.” ’505 application (abstract) (published January 1, 2003) [Docket No.
167-3 at 2].
Plaintiff argues that the ’505 application fails to disclose at least three limitations
of the ’567 patent. First, plaintiff claims that the ’505 application does not disclose a
“character,” which is defined in the ’567 patent as “any representation of an animate or
inanimate object or a portion thereof.” Docket No. 191 at 9. Plaintiff states that the
nozzles of the ’505 application are not representations of anything and therefore do not
anticipate the “character” feature in Claim 1 of the ’567 patent. Id. Defendant relies on
Mr. Milner’s declaration, wherein Mr. Milner argues that the ’505 application discloses
“geometrical shapes, akin to the embodiments described in the ’567 patent as ‘a
scholastic shape theme with characters representing various shapes.’” Docket No.
209-1 at 13-14, ¶ 31 (citing ’567 patent col. 4 ll. 24-25). The Court disagrees.
Based on the figures and the specification of the ’505 application, the five
nozzles disclosed therein are all circular and only the exit holes (or outlets) on top of the
25

nozzles represent different configurations. Docket No. 167-3 at 11 (Fig. 6). These
nozzles are not representations of animate or inanimate objects, much less a
“scholastic shape theme with characters representing various shapes.” ’567 patent col.
4 ll. 24-25. As such, the Court agrees with plaintiff that the ’505 application does not
disclose a “character” as defined in Claim 1 of the ’567 patent.
Plaintiff next argues that the ’505 application does not disclose “at least one
character removably mounted over the at least one spout.” ’567 patent col. 10 ll. 49-51.
Plaintiff reads the ’505 application to describe the invention’s nozzles as not being
removable. As construed by the Court, “removably” means “interchangeable with
another character.” In the ’505 application, one embodiment contains a disk with a
variety of nozzles that can be rotated over the water source, thus causing different
spray patterns. See Docket No. 167-3 at 7. Although plaintiff may be correct that the
disk does not appear to be removable, the different nozzles are interchangeable and
therefore meet the definition of being “removable” (although, as indicated above, a
“character” is not disclosed in the ’505 application).
Finally, plaintiff argues that the ’505 application does not disclose a “themed
amusement assembly.” Docket No. 191 at 10. The plaintiff cites to those portions of
the patent that identify examples of themes, such as a jungle theme (with characters of
African animals), an aquatic theme (with characters of sea creatures), a dinosaur
theme, and a circus theme. Id. Defendant does not rebut this distinction, see Docket
No. 209 at 9, although Mr. Milner argues that the spray patterns created by the
invention described in the ’505 application is a “themed characteristic” that “can be
considered a theme.” Docket No. 209-1 at 13-14. However, the theme in the ’567
26

patent is created by the faceplate assembly, not the water flowing from it. Thus,
because the ’505 application does not disclose a “themed amusement assembly” or a
“character” and because neither side identifies a genuine issue of material fact as to
these issues, the Court finds that IPT does not provide clear and convincing evidence
that the ’505 application anticipates Claim 1 of the ’567 patent. Karsten Mfg. Corp., 242
F.3d at 1383.
IPT has not shown through clear and convincing evidence that the ’809 patent,
the ’170 application, or the ’505 application anticipate Claim 1 of the ’567 patent.
Accordingly, the Court finds that IPT is not entitled to summary judgment on its
counterclaim for anticipation.
B. Obviousness
IPT argues that Claims 1, 13, and 17 of the ’567 patent are invalid as obvious
under 35 U.S.C. § 103. Docket No. 167 at 11. Specifically, IPT argues that it would
have been obvious to a person of ordinary skill in the art to combine the United
Kingdom Patent Application 2,023,435 (the “’435 application”) [Docket No. 48-3], United
States Patent No. 4,021,150 (the “’150 patent”) [Docket No. 191-11], the ’809 patent,
the ’170 application, the ’505 application, United States Patent No. D282,563 (the “’563
patent”) [Docket No. 191-3], United States Patent No. 5,337,956 (the “’956 patent”)
[Docket No. 191-4], United States Patent No. 4,951,329 (the “’329 patent”) [Docket No.
191-10], and United States Patent No. 4,591,094 (the “’094 patent”) [Docket No. 191-5]
to create the elements contained in Claims 1, 13, and 17 of the ’567 patent.8 Docket
8

Under § 103, the relevant content for an obviousness analysis is what was in
the prior art “at the time the invention was made.” 35 U.S.C. § 103(a). All the
27

No. 167 at 11; Docket No. 167-4 at 34-39.
Under 35 U.S.C. § 103(a), a patent is invalid “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.” To avoid being
obvious, a patent must be “more than the predictable use of prior art elements
according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007). To determine obviousness, “the invention must be considered as a whole
and the claims must be considered in their entirety.” Kahn v. Gen. Motors Corp., 135
F.3d 1472, 1479-80 (Fed. Cir. 1998).
Although the ultimate determination of obviousness under § 103 is a question of
law, it is based on several underlying factual findings, including (1) the level of ordinary
skill in the art; (2) the scope and content of the prior art; (3) the differences between the
claimed invention and the prior art; and (4) the evidence of secondary factors such as
commercial success, long-felt need, and failure of others. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966); Retractable Techs., Inc. v. Becton, 653 F.3d 1296, 1310
(Fed. Cir. 2011). Where “the content of the prior art, the scope of the patent claim, and
the level of ordinary skill in the art are not in material dispute, and the obviousness of
the claim is apparent in light of these factors, summary judgment is appropriate.” KSR,
550 U.S. at 427.
Because patents are presumed valid, 35 U.S.C. § 282, a moving party seeking to

aforementioned prior art predates the November 3, 2003 invention date of the ’567
patent.
28

invalidate a patent at summary judgment must submit clear and convincing evidence of
facts underlying the issue of invalidity from which no reasonable juror could conclude
otherwise. Microsoft Corp. v. i4i Ltd. P’ship, 131 S.Ct. 2238, 2246 (2011).
1. Level of Ordinary Skill in the Art
The “issue of obviousness is determined entirely with reference to a hypothetical
‘person having ordinary skill in the art.’” Standard Oil Co. v. Am. Cyanamid Co., 774
F.2d 448, 454 (Fed. Cir. 1985). Thus, it is only that hypothetical person who is
presumed to be aware of all the pertinent prior art and the actual inventor’s skill is
irrelevant to the inquiry. Id. A person of ordinary skill in the art is also presumed to be
one who thinks along the line of conventional wisdom in the art and is not one who
undertakes to innovate, whether by patient, and often expensive, systematic research
or by extraordinary insights. Id.
As noted above, a person of ordinary skill in the art for purposes of this case is
one who would have experience in designing toys, having at least a rudimentary
knowledge of mechanical and battery-powered components used for the design of toys.
Thus, for IPT to prevail on its motion, it must show that, because of a teaching,
suggestion, or motivation in the prior art, a person with a rudimentary knowledge of
mechanical and battery-powered components used in toys would have combined or
modified the prior art in the manner identified in Claims 1, 13, and 17 of the ’567 patent.
KSR, 550 U.S. at 418-19.
2. Scope of the Prior Art
The term prior art refers to “knowledge that is available, including what would

29

be obvious from it, at a given time, to a person of ordinary skill in an art.”
Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984). In
order to determine the scope of the prior art, the Court must first determine two things:
(1) what was the purpose sought to be accomplished by the inventors of the ’567
patent; and (2) what constitutes analogous art in light of this purpose.
The ’567 patent notes that there are many bath and pool toys on the market, but
not many of them spray streams of water. ’567 patent col. 1 ll. 16-19. The problem
with the existing spray bath and pool toys, according to the ’567 patent, is the means by
which the water flows through the toys. Id. at ll. 20-28. Ones using water from a faucet
waste water and cause potential safety concerns in bathtubs by filling the tubs too high
for particular infants. Id. at ll. 28-33. Ones using gravity require a parent or child to lift
water to a water reserve from which the water flows to the toy and thereby may detract
from the enjoyment of the toy. Id. at ll. 33-37. Similarly, toys relying upon a manual
pump require the users to exert the effort necessary to operate the pump, which may
detract from the users’ enjoyment. Id. at ll. 37-41. The ’567 patent notes that, while
“AC-powered” pumps could provide the necessary water flow to a fountain toy, such
electrical current would pose a danger of injury to any user. The ’567 patent provides
the solution to this problem through the use of a battery-operated pump that is at least
partially submersible and which operates at a power level that does not pose a safety
risk to the user. Id. at ll. 65-66; col. 8 ll. 3-17. The ’567 patent states that “no bathtub
toys are known that utilize DC-powered pumps.” Id. col. 1 ll. 56-57. Based on this
purpose, the Court next determines what prior art would be analogous.

30

To qualify as analogous art, the reference must (1) be from the same field of
endeavor; or (2) must be reasonably pertinent to the particular problem with which the
inventor is involved. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011). To determine whether a reference is in an inventor’s field of
endeavor, courts consult “the structure and function of the claimed invention as
perceived by one of ordinary skill in the art” with “reference to explanations of the
invention’s subject matter in the patent application.” In re Bigio, 381 F.3d 1320, 132526 (Fed. Cir. 2004). Additionally, a reference is reasonably pertinent if it, as a result of
its subject matter, “logically would have commended itself to an inventor’s attention in
considering his problem.” Innovention, 637 F.3d at 1321. If a reference has the same
purpose as the claimed invention, an inventor may well have been motivated to
consider the reference when making his invention. In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). However, if prior art is directed towards a different purpose, an inventor
would accordingly have had less motivation or occasion to consider it. Id.
In this case, there is no dispute that the ’809 patent, the ’505 application, the
’435 application, the ’150 patent, and the ’329 patent qualify as analogous art. See
Docket No. 215-1 at 7-13. However, Two Moms argues that the ’170 application, the
’563 patent, the ’956 patent, and the ’094 patent are not analogous because these were
not reasonably pertinent to the problem addressed by the inventors of the ’567 patent.

31

Id. at 8. The Court agrees with Two Moms that the ’563 patent,9 the ’956 patent,10 and
the ’094 patent11 are not analogous, but disagrees with respect to the ’170 application.
See Innovention, 637 F.3d at 1321 (finding a reference analogous if it logically would
have commended itself to an inventor’s attention in considering his problem).
The ’170 application describes its function as a “combined water scenery toy,
which uses water as its medium and belongs to children toys.“ Docket No. 167-2 at 2
(abstract). The ’567 patent describes its “[f]ield of the [i]nvention” as relating to “water
toys, and more particularly, a water toy incorporating a pump-activated fountain.” ’567
patent col. 1 ll. 6-7. As such, the inventions perform essentially the same function:
spraying water in a manner that is entertaining for children by utilizing electric water
pumps.
The ’170 application defines its structure as including a “micro water pump,”
“connecting pieces,” and a “water path connecting plate which is provided with a
connecting hole.” Docket No. 167-2 at 4. The ’567 patent describes its structures as
including, among other things, “an at least partially submersible pump that is fluidly

9

The ’563 patent does not identify a purpose and, from the face of the patent, its
intended use is unclear. Moreover, it is also unclear why a person of ordinary skill in
the art would have considered this patent in reference to the invention disclosed in the
’567 patent.
10

The ’956 patent is not pertinent to the problem faced by the inventors of the
’567 patent because it is directed towards a different purpose, namely, attaching toys to
drinking faucets. The ’956 patent also does not address the problems associated with
rising water levels in a bathtub or pool.
11

Although the ’094 describes a closed-circuit fountain apparatus that can be
used in a pool or shallow pond, ’904 patent col. 3 ll. 15-18, it does not describe an
electric power source, which is a key feature of the ’567 patent.
32

coupled with a fountain amusement assembly” and “characters heads or other fanciful
representations.” ’567 patent (abstract). As such, both references rely on similar
structures: electric water pumps, pieces or characters, and a device to carry water from
the pump to an outlet. Because the ’170 application and the ’567 patent have similar
functions and structures, the Court finds that the ’170 application belongs to the same
field of endeavor as the ’567 patent. See, e.g., In re Paulsen, 30 F.3d 1475, 1481-82
(Fed. Cir. 1994) (finding that hinges, latches, and springs for piano lids, furniture
cabinets, and audio cassette holders were relevant prior art for patentee’s hinge and
latch mechanism for connecting laptop computer’s screen to rest of computer).
Additionally, the ’170 application qualifies as analogous art because it is
reasonably pertinent to the problem the inventors of the ’567 patent addressed.
Although Two Moms argues that the ’170 application is not analogous because it
describes a table top feature, Docket No. 215-1 at 7, the Court finds that Two Moms
unduly limits the relevant universe of “water toys.” See KSR, 550 U.S. at 420 (“The
second error of the Court of Appeals lay in its assumption that a person of ordinary skill
attempting to solve a problem will be led only to those elements of prior art designed to
solve the same problem.”). The ’170 application describes a “water scenery toy” and
states that the invention “belongs to children toys.” Docket No. 167-2 at 2. A person of
ordinary skill attempting to create a water fountain that uses a battery-powered pump
and includes a dynamic water display would look to the teachings of the ’170
application for guidance. Accordingly, the Court finds that the ’170 application qualifies
as analogous prior art. See Docket No. 167-2 at 4 (“The present utility model aims at
providing a combined water scenery toy, such as fountain toys”).
33

In sum, the Court finds that the analogous prior art for purposes of an
obviousness determination includes the ’435 application, the ’150 patent, the ’809
patent, the ’170 application, the ’505 application, and the ’329 patent.
3. Differences Between the Prior Art and the Claims at Issue
Two Moms argues that all of the elements disclosed in the ’567 patent were not
independently known in the prior art before November 3, 2003. Specifically, Two Moms
argues that the prior art does not disclose all of the elements contained in Claims 1, 13,
and 17 of the ’567 patent. Docket No. 191 at 12.
a. Claim 1 of the ’567 Patent
As noted above, Claim 1 of the ’567 patent discloses four elements: (1) an at
least partially submersible battery-powered fluid pump; (2) a themed amusement
assembly, the assembly including at least one spout out of which water streams when
the toy is in operation; (3) at least one character that is securely held over at least one
spout and which is interchangeable with another character, wherein water appears to
stream from the character when the toy is in operation; and (4) a fluid conduit
connecting the fluid pump and the assembly. ’567 patent col. 10 ll. 45-54.
Two Moms argues that the Court should not reconsider the submersible pump
referred to in the first element because, during the prosecution of the ’567 patent, the
PTO considered United States Patent No. 4,607,400 (the “’400 patent”), which
discloses a battery-driven submersible pump. Docket No. 215-1 at 12. Although the
bilge pump described in the ’400 patent is a “simple-battery driven submersible bilge
pump,” ’400 patent col. 2 ll. 5-7, the battery that powers the bilge pump in the ’400
patent is not submersible. Instead, “[a]n insulated wire 42 is attached to the
34

[submersible bilge] pump and is carried outside of the tub to be attached to the portable
battery located there.” ’400 patent col. 2 ll. 49-51. As such, the ’400 patent does not
disclose the same “submersible battery-powered fluid pump” found in Claim 1 of the
’567 patent. By contrast, both battery-powered motors described in the ’505 application
and the ’150 patent are submersible. See Docket No. 167-3 at 3 (’505 application
Claim 1: “inside of the said flowing water cavity . . . immersed into water . . . with a
motor driving the said moving water blades to rotate, with batteries supplying power”);
’150 patent (Fig. 9); id. col. 5 ll. 13-16 (“an aquatic toy-model using [battery operated
pump], which is one of the applications of this invention taking advantage of a feature of
the pump that it can be operated submerged in fluid.”).12 Thus, although the ’567
patent states that “no bathtub toys are known that utilize DC-powered pumps,” ’567
patent col. 1 ll. 56-57, there were at least two water toys that did use DC-powered
pumps in the prior art at the time of the issuance of the ’567 patent, which the PTO did
not consider.
With respect to the second and third elements of Claim 1 of the ’567 patent,
consisting generally of the themed amusement assembly and an interchangeable
character, the ’170 application describes that the “connecting pieces,” through which
water flows, may have “various shapes” such as “bird, fish, conch, bamboo, [and a]
human body.” Docket No. 167-2 at 5. Although the ’170 application does not describe
how the “connecting pieces” are attached to the “connecting hole,” the Court finds that it

12

See also ’435 application col. 2 ll. 85-88 (“A toy boat, having a motor driven
pump, which draws in water through an intake orifice located below the waterline and
feeds it to spray jets located on the deck”).
35

would have been obvious to a person of ordinary skill in the art to create the snapable
mounts disclosed in the ’567 patent based on this prior art. See KSR, 550 U.S. at 416
(“The combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”). Based on the foregoing,
the Court finds that the ’170 application discloses the second and third elements as
those are described in Claim 1 of the ’567 patent.
The ’435 application and the ’170 application also disclose the fourth element: “a
fluid conduit connecting the fluid pump and the assembly.” See ’435 application col. 1
ll. 57-60 (“In the lower part 1 there is provided a suction pump 3 which draws in the
water through the intake orifice 4 which is directed roughly vertically downwards, and
feeds the water, via a hose 5, to the spray nozzles 6 on the deck”).
Given this evidence, the Court finds that a combination of the ’150 patent, the
’505 application, the ’435 application, and the ’170 application disclose the four
elements described in Claim 1 of the ’567 patent and that a person of ordinary skill in
the art attempting to create a fountain toy that safely uses a battery-powered pump
would have read the elements of the ’170 application, the ’505 application, the ’435
application, and the ’150 patent in the same way they are disclosed in the ’567 patent.
b. Claim 13 of the ’567 Patent
Claim 13 of the ’567 patent discloses four elements: (1) a battery-operated
pump; (2) a themed faceplate assembly separate from the pump, the faceplate
assembly including a faceplate, one or more fluid passages terminating in an outlet,
where a portion of the faceplate directly above or around the outlet is configured to
resemble a removable character or one integrally molded, (3) one or more connectors
36

adapted to reasonably secure the faceplate assembly to a generally vertical surface;
and (4) tubing fluidly connecting the faceplate assembly and the pump. ’567 Patent col.
14 ll. 25-35. As discussed above, the first and fourth elements are disclosed in the prior
art. Thus, the discussion will focus on the second and third elements.
Two Moms argues that the second and third elements of Claim 13, unlike the
second and third elements of Claim 1, disclose a generally vertically disposed themed
assembly that is removably secured to a vertical surface such as a bathtub wall.
Docket No. 191 at 12. Two Moms claims that none of the prior art discloses elements
“secured to a vertical surface.” Id. Given the Court’s claim construction, Two Moms is
correct that one difference between Claim 1 and Claim 13 is that the “themed
assembly” is vertical in Claim 13, while it is of unspecified orientation in Claim 1.
However, the Court finds that the orientation of a themed assembly is insufficient to
render the element nonobvious. It would have been obvious to a person of skill in the
art that it is possible to change the orientation of a themed assembly from a horizontal
position to a vertical position. See KSR, 550 U.S. at 417 (noting that to avoid being
obvious, a patent must be “more than the predictable use of prior art elements
according to their established functions.”); Wyers v. Master Lock Co., 616 F.3d 1231,
1243 (Fed. Cir. 2010) (finding the difference between a vertical hitch arrangement and
a horizontal hitch arrangement insufficient to render a claim nonobvious). Here, shifting
the assembly from a horizontal to a vertical position “simply arranges old elements with
each performing the same function it had been known to perform” and this yields
nothing more than one would expect from such an arrangement. KSR, 550 U.S. at 417;
see id. at 421 (noting that, most inventions that are obvious were also obvious to try
37

and a combination is only obvious to try if “a person of ordinary skill has a good reason
to pursue the known options”).
In addition, the second and third elements are obvious because the use of
“suction cups” to attach toys to horizontal surfaces had been disclosed in the ’150
patent, id. col. 5 ll. 18-19, and the vertical movement of water through the use of a
submersible battery-powered pump was disclosed in the ’505 application. Docket No.
167-3 at 3. It would have been obvious to a person of ordinary skill in the art to
combine the teachings of the suction cup with the vertical movement of water to
arrange a vertical assembly.
Given this evidence, the Court finds that a combination of the ’505 application,
the ’150 patent, and the ’170 application discloses the four elements described in Claim
13 of the ’567 patent. See In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000).
c. Claim 17 of the ’567 Patent
Claim 17 of the ’567 patent discloses five elements: (1) 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; (2) a faceplate assembly, the
faceplate assembly including a faceplate, at least one spout out of which water streams
when the toy is in operation; (3) at least one character that is securely held over at least
one spout and which is interchangeable with another character, wherein water appears
to stream from the character when the toy is in operation; (4) one or more suction cups
adapted to removably secure the faceplate assembly to a generally vertical surface;
and (5) tubing fluidly coupling the faceplate assembly and the pump. ’567 patent col.
12 ll. 9-23. Claim 17 is a combination of elements from Claim 1 and Claim 13 and
38

otherwise does not disclose new elements. Given that the Court has found that the
prior art contains the elements described in Claims 1 and 13, it follows that the
elements in Claim 17 are also found in the prior art.
Based on the foregoing, the Court finds that all of the elements contained in
Claims 1, 13, and 17 of the ’567 patent were independently known in the prior art
before November 3, 2003. However, this does not end the inquiry. The mere fact that
prior art references could be combined to reach the patented design does not render
the resultant combination obvious absent a reason to combine the references in such a
manner. In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990). Obviousness requires the
additional showing that a person of ordinary skill, at the time of the invention, would
have selected and combined the prior art elements in the normal course of research
and development to yield the claimed invention. KSR, 550 U.S. at 421.
4. Motivation to Combine
Identifying a motivation to combine references serves to prevent hindsight bias.
See McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir. 2001) (“To
prevent hindsight invalidation of patent claims, the law requires some ‘teaching,
suggestion or reason’ to combine cited references.”) (citation omitted). The Federal
Circuit previously held that the reason, suggestion, or motivation to combine could be
found explicitly or implicitly: “1) in the prior art references themselves; 2) in the
knowledge of those of ordinary skill in the art that certain references, or disclosures in
those references, are of special interest or importance in the field; or 3) from the nature
of the problem to be solved.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,

39

1329 (Fed. Cir. 2009). KSR expanded the sources of information for a properly flexible
obviousness inquiry to include market forces; design incentives; the “interrelated
teachings of multiple patents”; “any need or problem known in the field of endeavor at
the time of invention and addressed by the patent”; and the background knowledge,
creativity, and common sense of the person of ordinary skill. 550 U.S. at 418-21. In
KSR, the Supreme Court eschewed rigid rules that denied factfinders recourse to
common sense and logic. Id. at 421; Wyers, 616 F.3d at 1240 (“Thus, in appropriate
cases, the ultimate inference as to the existence of a motivation to combine references
may boil down to a question of ‘common sense,’ appropriate for resolution on summary
judgment”). Thus, the Court must decide, without the benefit of hindsight, if it would
have been obvious to a person of ordinary skill to combine the elements from the prior
art in the way the inventors of the ’567 patent did.
The Court finds that, based on the interrelated teachings of the prior art, one with
ordinary skill in the art would have been motivated to combine the elements in the prior
art in the manner that the inventors of the ’567 patent did. As recognized in the ’567
patent and as suggested by common sense, there is market demand for children’s
water toys. The prior art also teaches that children are entertained by toys that spray
water, see ’170 application, Docket No. 167-2 at 4 (water scenery toy); ’435 application,
Docket No. 48-3 at 2 (toy boat with spray jets); ’505 application, Docket No. 167-3
(water spraying toy), and toys that emit water from representations of plants or animals.
See ’170 application, Docket No. 167-2 at 5 (“bird, fish, conch, elephant, bamboo”).
Based on this demand, a person of ordinary skill in the art would have been motivated

40

to create a children’s water toy combining these elements. See KSR, 550 U.S. at 417
(“When a work is available in one field of endeavor, design incentives and other market
forces can prompt variations of it, either in the same field or a different one”); Wyers,
616 F.3d at 1243 (noting an inventor’s motivation can be based on expected success).
Specifically in relation to the purpose of the invention discussed in the ’567
patent, ’567 patent col. 1 ll. 56-57, the Court finds that it would have been obvious to a
skilled person in the art to use a water pump similar to the one disclosed in the ’150
patent and the ’505 application. In addition, it would have been obvious to a person
skilled in the art to use DC battery power as an alternative to AC power because the
prior art teaches that the low voltage used in many DC batteries is appropriate for
submersible motors in children’s water toys. See ’150 patent col. 5 ll. 13-16 (aquatic
toy “taking advantage of a feature of the pump that it can be operated submerged in
fluid”). Moreover, it would have been obvious to a person of ordinary skill in the art to
combine the teachings of the submersible battery operated pump disclosed in the ’150
patent, col. 5 ll. 25-28 (“in Fig. 1, fluid will be sucked in through the admission port 4a
and, via the discharge port 3a, will be discharged from the jet nozzle”), with the
streaming features of the ’505 application, Docket No. 167-3 at 5 (“the water is sucked
automatically from the inlet and sprayed from the nozzles to produce various water
spraying effects”), to create a constant upward stream of water and avoid the need for
manual refilling. Similarly, it would have been obvious to a person of ordinary skill in
the art to combine the streaming features of the ’505 application with the
interchangeable pieces disclosed in the ’170 application to maintain the interest of small
children. Docket No. 167-2 at 5 (“the present utility model has many combination
41

changes, helping develop children’s intelligence”). In the typical case, the more
elements that would need to be combined argues against the existence of a motive to
combine all of them; however, here there is a finite number of solutions to these
straightforward issues. “When 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. If this leads to the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense.” KSR, 550 U.S. at 421.
Based on the foregoing, the Court finds that IPT has established a prima facie
case of obviousness because it would have been obvious to a person of ordinary skill,
motivated to create a children’s water toy that sprayed water and was safe and
appropriate for use in a bathtub, to combine the elements in the prior art in the manner
performed by the inventors of the ’567 patent. See Transocean Offshore Deepwater
Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1305 (Fed. Cir. 2010).
Next, the Court will consider objective indicia of nonobviousness. Id. (noting that, once
a defendant has made a prima facie case of obviousness, the Court must determine
whether plaintiff’s secondary objective evidence of nonobviousness – commercial
success, long felt but unsolved needs, failure of others – is sufficient to overcome
defendant’s prima facie showing).
5. Secondary Considerations of Nonobviousness
Before a court can make a finding of obviousness, and thereby hold a patent
invalid, a court must determine whether there are any “secondary considerations” that

42

support a finding of nonobviousness. KSR, 550 U.S. at 405. This is because
secondary considerations “may often establish that an invention appearing to have
been obvious in light of the prior art was not.” Crocs, Inc. v. ITC, 598 F.3d 1294, 1310
(Fed. Cir. 2010) (citation omitted). Further, secondary considerations “can be the most
probative evidence of non-obviousness in the record, and enables the . . . court to avert
the trap of hindsight.” Id. Secondary considerations relevant to an obviousness
determination include: commercial success; skepticism in the field; copying by others;
meeting a long felt, but unsolved need; and failure by others. See, e.g., KSR, 550 U.S.
at 405 (commercial success and long felt need); Akamai Techs., Inc. v. Cable &
Wireless Internet Servs., Inc., 344 F.3d 1186, 1196 (Fed. Cir. 2003) (copying);
Transocean, 617 F.3d at 1304 (affirming non-obviousness based on commercial
success, copying by others).
Two Moms argues that it has provided sufficient evidence of commercial success
and copying to rebut a prima facie case of obviousness. Docket No. 191 at 15. To
show objective evidence of commercial success, Two Moms relies on the marketability
of the Yookidoo toys and the sales figures these toys generated. Id. In addition, Two
Moms asserts that the “play value” of the Yookidoo toys establishes a nexus between
the elements contained in the ’567 patent and the commercial success of the Yookidoo
toys. Id. at 16. In response, IPT argues, first, that Two Moms does not show a nexus
between the commercial success of the Yookidoo toys and the ’567 patent, Docket No.
209 at 11; and, second, that Two Moms does not provide evidence of copying on the
part of IPT. Id. at 12.

43

a. Commercial Success
Plaintiff argues that the commercial success of the accused Yookidoo toys is
based on children’s ability to remove and replace “the tumblers and boats (characters)
from their mounted position over the fountain spouts.” Docket No. 191 at 17. In
support of this argument, plaintiff provides links to videos of children playing with the
Yookidoo toys, Docket No. 191 at 16 n. 1-4, as well as customer reviews from the
internet discussing how much children enjoy the Yookidoo toys. Docket No. 191-14.
Based on this evidence, plaintiff claims that it has established a nexus between the
commercial success of the accused Yookidoo toys and the ’567 patent. Plaintiff asserts
that the Yookidoo toys utilize every element contained in Claim 1 of the ’567 patent
including “at least one character removably mounted over the at least one spout,” ’567
patent col. 10 ll. 49-51, “an at least partially submersible battery-powered fluid pump,”
id. col. 10 ll. 45-46, and “a fluid conduit connecting the fluid pump and the amusement
assembly.” Id. col. 10 ll. 53-54; Docket No. 215-1 at 13.
In order to show secondary evidence of nonobviousness, a patentee must
establish a nexus between commercial success of the accused products and the
patented invention. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); In re GPAC,
Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (“For objective [evidence of secondary
considerations] to be accorded substantial weight, its proponent must establish a nexus
between the evidence and the merits of the claimed invention”). To establish a nexus,
plaintiff here must present proof that the sales of the Yookidoo products were a “direct
result of the unique characteristics of the [’567 patent] – as opposed to other economic

44

and commercial factors unrelated to the quality of the patented subject matter.” In re
Huang, 100 F.3d at 140; In re Huai-Hung Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art, no nexus exists”); see also
Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (holding that a
claimed invention is obvious when the patent holder “failed to show that such
commercial success . . . was due to anything disclosed in the patent in suit which was
not readily available in the prior art”). Where commercial success results from
something other than what is novel in the claim, there is no nexus to the merits of the
claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir.
2011) (“If commercial success is due to an element in the prior art, no nexus exists.”);
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (“[I]f the feature
that creates the commercial success was known in the prior art, the success is not
pertinent.”).
The Court finds that Two Moms has not established a nexus between the
commercial success of the Yookidoo toys and the ’567 patent. Two Moms’ argument
relies on the fact that the Yookidoo toys utilize one element in Claim 1 of the ’567
patent, namely, a character removably mounted over a spout. Docket No. 191 at 18.
During claim construction, the Court rejected Two Moms’ proposed construction of the
term “at least one character removably mounted over the at least one spout” as
including a character “removable by a user playing with the toy.” Instead, the Court
construed the term as “at least one character that is securely held over at least one
spout and which is interchangeable with another character.” As noted above, without

45

the limitation of a character “removable by a user playing with the toy,” Claim 1 of the
’567 patent is not novel and does not reveal a new feature distinguishable from the prior
art because the ’170 application discloses interchangeable “pieces” or “characters” over
a spout. See Ormco, 463 F.3d at 1313 (finding that, if the feature that creates the
commercial success was known in the prior art, the commercial success is not
pertinent). Because the removably mounted character element was previously
disclosed in the prior art, Claim 1 of the ’567 patent cannot establish a nexus with the
Yookidoo toys. See Tokai, 632 F.3d at 1369; Ormco, 463 F.3d at 1312. Similarly, Two
Moms cannot establish a nexus between the commercial success of the Yookidoo toys
and the other elements in Claim 1 of the ’567 patent because all the other elements are
also disclosed in combinations of the ’150 patent, the ’170 application, and the ’505
application. See In re Huai-Hung Kao, 639 F.3d at 1070 (finding that, to establish
commercial success, plaintiff must show that “the embodying product resulted from the
merits of the claimed invention as opposed to the prior art”); J.T. Eaton & Co., Inc. v.
Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (finding commercial
success where “the commercial success of its product derives from the claimed
invention and is attributable to something disclosed in the patent that was not readily
available in the prior art”).
Two Moms also fails to provide sufficient evidence that the Yookidoo toys were a
commercial success. To show commercial success, Two Moms relies on the Yookidoo
toys’ first place finish at an International Toy Fair. See Docket No. 66-4. Plaintiff
presents deposition testimony from Michael Varda, president of IPT, testifying that the

46

Yookidoo toys had a large number of sales, Docket No. 183 at 6 (Varda Dep. 57:2558:11), and it also provides evidence that, for the three years IPT sold the Yookidoo
toys, its profit margins increased and it generated $2 million in additional revenue.
Docket No. 191-12 at 19.
Generally, to establish commercial success, a plaintiff must provide evidence
that the sales of the product represent a “substantial quantity in th[e] market.” In re
Huang, 100 F.3d at 140. A plaintiff can also establish commercial success by
presenting evidence of market share, growth in the market share, or that the accused
products replaced earlier products sold by others. Kansas Jack, Inc. v. Kuhn, 719 F.2d
1144, 1150-51 (Fed. Cir. 1983).
The Court finds that the testimony of Mr. Varda as well as IPT’s $2 million in
additional revenue is insufficient to show that the Yookidoo toys were a commercial
success. Although the Yookidoo toys were profitable, Two Moms’ evidence does not
establish that the sales of the Yookidoo toys were of a substantial quantity in the
market. Two Moms also fails to provide evidence of IPT’s market share, explain
whether IPT’s market share grew as a result of selling the Yookidoo toys, or show that
the Yookidoo toys replaced other toys in the market. In re Applied Materials Inc., 692
F.3d 1289, 1300 (Fed. Cir. 2012) (“the number of units sold without evidence of the
market share is only weak evidence of commercial success”) (citation omitted); In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[I]nformation solely on
numbers of units sold is insufficient to establish commercial success.”). Moreover, Two
Moms’ evidence that the Yookidoo toys won an international competition does not

47

present evidence of an increase in market share. Cf. Pfizer, Inc. v. Teva Pharms. USA,
Inc., --- F. Supp. 2d ----, 2012 WL 2951367, at *20 (D. Del. July 19, 2012) (finding that
plaintiffs’ evidence was sufficient to demonstrate commercial success because they
showed that accused product “share[d] the market with many competing products as
well as with low-cost generic gabapentin alternatives, yet maintain[ed] considerable net
sales and market shares”).
Accordingly, the limited evidence provided by Two Moms is insufficient to
overcome IPT’s prima facie showing of obviousness both because it fails to establish a
nexus between the ’567 patent and the Yookidoo toys and because it fails to show that
the Yookidoo toys were a commercial success. Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1372 (Fed. Cir. 2007) (“Although secondary considerations must be taken into
account, they do not necessarily control the obviousness conclusion.”); see also Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985) (holding on
summary judgment that, even though commercial success could be deduced, it
deserved no weight because a nexus was not established), overruled on other grounds
by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (en
banc); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(affirming the district court’s finding of obviousness although the “district court explicitly
stated in its opinion that Leapfrog had provided substantial evidence of commercial
success, praise, and long-felt need, but that, given the strength of the prima facie
obviousness showing, the evidence on secondary considerations was inadequate to
overcome a final conclusion that claim 25 would have been obvious”).

48

b. Copying
Two Moms also argues that it can establish nonobviousness by showing that IPT
copied the elements of the ’567 patent. Docket No. 191 at 17. In support, Two Moms
claims that IPT became aware of the ’567 patent and “liked the concept so much that
they decided to copy not just one of the embodiments of the ’567 patent but both
embodiments, which are also ‘wall mounted’ and ‘floating.’” Id. Two Moms contends
that “it is extremely hard to believe that a company would invest the thousands of
dollars in molds and other equipment it takes to develop not just one but both accused
products without first conducting a patent search.” Docket No. 66 at 26. It asserts that
the chances of developing “both a wall mounted and floating embodiment without
knowledge of the ’567 Patent seems highly unlikely and is submitted to not be a
coincidence.” Id. The Court disagrees.
Not every competing product that arguably falls within the scope of a patent is
evidence of copying; otherwise, every infringement suit would automatically confirm the
nonobviouness of the patent. Wyers, 616 F.3d at 1246. In order for plaintiff to
establish copying, it must present evidence of efforts to “replicat[e] a specific product.”
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). Efforts
to replicate may be demonstrated through internal company documents, direct
evidence such as disassembling a patented prototype, photographing its features, and
using the photograph as a blueprint to build a replica, or access to the patented product
combined with substantial similarity to the patented product. Id.; Wyers, 616 F.3d at
1246.

49

Two Moms has introduced no such evidence here. Two Moms’ arguments in
this instance are mere conjecture and speculation and, as such, are insufficient to raise
a triable issue of fact. See TechSearch, LLC v. Intel Corp., 286 F.3d 1360, 1372 (Fed.
Cir. 2002) (“unsupported or conclusory averments are insufficient to avoid summary
judgment where the moving party has met its initial burden”) (citing Celotex Corp. v.
Catrett, 477 U.S. 317, 322-23 (1986)). Moreover, Two Moms acknowledges that it
cannot introduce evidence of copying because “much of the evidence of commercial
success of the invention is in . . . [Yookidoo’s possession], an Israel partnership, that
has not been served yet.” Docket No. 66 at 25.13 Accordingly, Two Moms fails to
establish that IPT engaged in copying. See Iron Grip Barbell Co., Inc., 392 F.3d at
1325.
In sum, Two Moms’ evidence of secondary considerations of nonobviousness is
insufficient to overcome IPT’s strong prima facie case of obviousness. DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1371
(Fed. Cir. 2006) (“The presence of certain secondary considerations of nonobviousness
are insufficient as a matter of law to overcome our conclusion that the evidence only
supports a legal conclusion that claim 1 would have been obvious”) (emphasis in
original). Where, as here, the content of the prior art, the scope of the patent claim,
and the level of ordinary skill in the art are not in material dispute, and the obviousness
of the claim is apparent in light of these factors, summary judgment is appropriate.

13

Two Moms’ argument with respect to the “patent pending” mark on the
Yookidoo products, Docket No. 191 at 17; Docket No. 183 at 10 (Varda dep. 144:1725), is similarly unavailing because IPT is not a manufacturer of the toys.
50

KSR, 550 U.S. at 427. Because no genuine issue of material fact exists, the Court
finds that IPT has met its burden of demonstrating that the ’567 patent is invalid as
obvious. The Court therefore will grant IPT’s motion for summary judgment.
V. CONCLUSION
For the foregoing reasons, it is
ORDERED that Plaintiff’s Motion for Leave to File Sur-Reply to Defendant’s
Reply in Support of Defendant’s Supplemental Motion for Summary Judgment on its
Counterclaim for Invalidity of U.S. Patent No. 6,782,567 [Docket No. 215] is GRANTED.
It is further
ORDERED that Defendant’s Supplement Motion for Summary Judgment on its
Counterclaim for Invalidity of U.S. Patent No. 6,782,567 [Docket No. 167] is GRANTED
in part and DENIED in part. It is further
ORDERED that judgment shall enter in favor of defendant International
Playthings, LLC and against plaintiff Two Moms and a Toy, LLC on defendant’s
counterclaim that the United States Patent No. 6,782,567 is invalid as obvious pursuant
to 35 U.S.C. § 103. It is further
ORDERED that the Trial Preparation Conference Scheduled for December 7,
2012 and the trial set for February 4, 2013 are hereby VACATED. It is further
ORDERED that this case shall be CLOSED. It is further
ORDERED that, within 14 days of the entry of judgment, defendant may have its
costs by filing a bill of costs with the Clerk of the Court.

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DATED October 24, 2012.
BY THE COURT:

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

52