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14 February 2023PatentsStaff Writer

Beanie Babies maker secures Federal Circuit victory

TY Inc wins challenge to rival’s computer monitor wipe | PTAB originally sided with TY Inc but patent holder claimed the board had misapplied Kennametal v Ingersoll Cutting Tool in its reasoning.

The US Court of Appeals for the Federal Circuit has sided with Ty Inc, the maker of Beanie Babies toys, in a patent challenge against competitor Softbelly’s.

Yesterday, 13 February, the Federal Circuit concluded that the Patent Trial and Appeal Board (PTAB) and correctly determined that all challenged claims of Softbelly’s patent were unpatentable.

The patent at issue, US number 6,195,831, covered a plush toy used as a computer monitor wipe called Screen Babies. The patent has now expired.

Ty Inc had petitioned for an inter partes review (IPR) of claims 15 and 16 of the ‘831 patent and, during the IPR, a dispute emerged over the inner chamber element of the plush toy.

While Softbelly argued that the inner-chamber element required an inner chamber formed in part by optical-grade fabric and in part by non-optical-grade fabric, Ty argued that nothing in claim 15 required nonoptical-grade fabric to form any part of the inner chamber.

PTAB, while siding with Ty Inc and finding the patent claims unpatentable, acknowledged this claim-construction dispute but declined to resolve it.

In its final written decision, the board found that a prior-art reference (Ogawa) disclosed the inner-chamber element even under Softbelly’s construction. Ogawa was “silent” on whether it disclosed the composition of the inner-chamber.

However, the PTAB cited Federal Circuit precedent in Kennametal v Ingersoll Cutting Tool for the proposition that a reference “can anticipate a claim even if it does not expressly spell out all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would at once envisage the claimed arrangement or combination” and conceded that Ogawa disclosed the inner-chamber element.

Softbelly’s appealed against the decision, arguing that the PTAB had misapplied Kennametal. But it acknowledged that for it to “succeed in disturbing the board’s unpatentability determination, we must also agree with Softbelly’s construction”, said the Federal Circuit.

Circuit Judge Sharon Prost, on behalf of the court, said: “Because we reject that construction, we affirm without reaching any other issues.”

The court disagreed with Softbelly’s construction, adding that nothing in the claim “requires that a strip of nonoptical-grade fabric form part of an inner chamber specifically”.

“We have considered Softbelly’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm,” concluded Prost.

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