Trials@uspto.gov
`571-272-7822
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`Paper 11
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`Entered: July 2, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00335
`Patent 10,259,020 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571-272-7822
`
`Paper 11
`
`
`
`
`Entered: July 2, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00335
`Patent 10,259,020 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2021-00335
`Patent 10,259,020 B2
`
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`I. INTRODUCTION
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively “Petitioner”) filed a Petition for inter partes review of
`claims 1–19 of U.S. Patent No. 10,259,020 B2 (Ex. 1001, “the ’020 patent”).
`Paper 3 (“Pet.”). GUI Global Products, Ltd., D/B/A Gwee (“Patent Owner”)
`filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Institution of an
`inter partes review is authorized by statute when “the information presented
`in the petition . . . and any response . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration
`of the Petition, the Preliminary Response, and the evidence of record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing with respect to the unpatentability of at least one claim of the ’020
`patent. Accordingly, for the reasons that follow, we institute an inter partes
`review of claims 1–19 of the ’020 patent.
`
`A. Related Matters
`The parties indicate that related district court litigations are GUI
`Global Prods., Ltd. d/b/a Gwee v. Samsung Elecs. Co. No. 4:20-cv-02624
`(S.D. Tex.) and GUI Global Prods., Ltd. d/b/a Gwee v. Apple, Inc., No.
`4:20-cv-02652 (S.D. Tex.). Pet. 77; Paper 9. The parties also indicate that
`the ’020 patent is the subject of a petition filed by Apple, Inc. in
`IPR2021-00470. Paper 9.1
`
`
`1 Petitioner inadvertently refers to the listed “IPR” cases as “IPR2020” rather
`than “IPR2021.” Paper 9, 3.
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`B. The ’020 patent
`The Specification of the ’020 patent describes how an apparatus may
`be used for cleaning view screens of electrical devices. Ex. 1001, 1:32–34.
`The ’020 patent aims to address the lack of convenient cleaning materials
`faced by users portable electronic devices. Id. at 1:52–2:6.
`In one embodiment, a cleaning component for cleaning a view screen
`of an electronic device is coupled to a first case of the electronic device
`using magnetic attractive force. Id. at 2:10–16, Fig. 1B.
`Figure 1B is illustrative and is reproduced below.
`
`
`Figure 1B shows a side view of a cleaning component. Id. at 4:27–28.
`Cleaning component 100 includes ferromagnetic or ferrimagnetic substrate
`102 covered by cleaning material 101, such as a fabric or a cloth. Id. at
`6:19–39.
`In another embodiment, a second case receives the cleaning
`component and also “functions to protect an electronic device’s primary
`case.” Id. at 39–53; Fig. 3.
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`Figure 3 is illustrative and is reproduced below.
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`Figure 3 shows a computer case configured to receive a cleaning
`
`component. Id. at 4:35–36. Laptop 300 has rectangular indentation 302
`dimensioned for receiving cleaning component 303 which has a magnet. Id.
`at 8:51–58.
`Figure 5A is also illustrative and is reproduced below.
`
`
`Figure 5A shows “a lateral type phone case configured to receive a
`cleaning component.” Id. at 4:39–40. Case 500 includes body 504 “which
`functions to hold a smart phone” and a lid having tip 501, side 502, hinge
`507, and cleaning component 503. Id. at 10:2–7.
`
`The cleaning component is secured and adhered to a case via
`“dimensional stability to increase the security with which the cleaning
`components are adhered to the case.” Id. at 11:34–39; Fig. 9.
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`Figure 9 is illustrative and is reproduced below.
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`Figure 9 shows a cleaning component “employing a structural feature
`
`to enhance adhesion.” Id. at 4:56–57. Device 901 has raised section 902
`that is configured to fit within recess 904 of cleaning component 903. Id. at
`11:39–41.
`Still in another embodiment, the cleaning component has a magnetic
`element that activates or deactivates a magnetic switch. Id. at 2:65–67. The
`’020 patent describes “activating or deactivating a device having a magnetic
`switch” as a “secondary application[]” and that “cleaning devices” “may
`also be manufactured without a cleaning component for use with the
`secondary application.” Id. at code (57); see also id. at 11:53–56 (explaining
`that the cleaning component may be able to activate magnetic switches on
`devices having switches). Thus, a device “may or may not include cleaning
`capabilities but will include a rare earth magnet or magnets” for “additional
`functionality.” Id. at 16:31–35.
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`Figure 24 is illustrative and is reproduced below.
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`Figure 24 shows a tablet computer having a switching device. Id. at
`
`5:43–44. Tablet computer 2400 has switching device 2401 that “is
`selectively coupled to the front of the portable electronic device 2402
`outside of the view screen 2403.” Id. at 17:63–67. A “magnetic switch is
`normally disposed with the portable electronic device but is shown [in
`Figure 24] for illustration purposes (2404).” Id. at 17:67–18:2. The ’020
`patent describes that the switching component “may be picked up” and the
`switching device “is either applied directly to the magnetic switch or applied
`to either side of the switch and then slid past it to activate or deactivate the
`portable electronic device.” Id. at 18:3–8.
`
`Figure 25, reproduced below, shows a side view of the switching
`device in Figure 24. Id. at 5:45–46, 18:9–10.
`
`
`Figure 25 shows switching device 2401 having bottom surface 2501,
`
`top surface 2502, and ferromagnetic or ferrimagnetic substrate 2504
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`disposed therebetween. Id. at 18:9–11, 13–15. Tab 2503 “on the top
`surface” facilitates manipulation of switching device 2401. Id. at 18:12–13.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–19 of the ’020 patent. Claim 1 is an
`independent claim, and claims 2–19 depend therefrom. Claim 1 is
`reproduced below.
`1. A system comprising:
`a portable switching device coupled to a portable electronic
`device;
`wherein:
`the switching device and the electronic device are
`configured
`to selectively couple
`to each other
`employing magnetic force from a first magnet disposed
`within the switching device;
`the switching device comprises a first case;
`the electronic device comprises a second case and an
`electronic circuit that is responsive to the switching
`device;
`the electronic device comprises at least one element
`selected from the group consisting of beveled edges,
`ridges, recessed areas, grooves, slots, indented shapes,
`bumps, raised shapes, and combinations thereof;
`configured to correspond to complimentary surface
`elements on the switching device;
`the portable switching device is configured to activate,
`deactivate or send into hibernation the portable
`electronic device; and
`when coupled, the first case functions to protect the first
`case.
`Ex. 1001, 21:28–22:2.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–19 are unpatentable based on the
`following grounds (Pet. 1–2):
`
`Claim(s) Challenged
`1–9, 11–15, 19
`10
`16, 17
`18
`
`
`
`35 U.S.C §
`103(a)2
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Kim3
`Kim, Koh4
`Kim, Lee5
`Kim, Jiang6
`
`II. DISCUSSION
`A. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). The claim
`construction standard includes construing claims in accordance with the
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Here, Petitioner
`alleges that the ’020 patent has a November 3, 2011 effective filing date.
`Pet. 7–9. At this juncture of the proceeding, Patent Owner does not contest
`Petitioner’s assertions as to the November 3, 2011 effective filing date.
`Prelim. Resp. 28–29. Because the November 3, 2011 effective filing date is
`before the effective date of the applicable AIA amendments, we refer to the
`pre-AIA versions of 35 U.S.C. §§ 102 and 103.
`3 U.S. Pat. Appl. Pub. No. US 2010/0227642 A1, published Sept. 9, 2010
`(Ex. 1010, “Kim”).
`4 Korean Pat. Pub. No. 10-2008-0093178, published Oct. 21, 2008 (Ex.
`1012, 16–30, “Koh”). Petitioner provides a certified English-language
`translation of Koh (Ex. 1012, 1–15). Any reference to Koh hereinafter will
`be to the English-language translation.
`5 U.S. Pat. Appl. Pub. No. US 2010/0298032 A1, published Nov. 25, 2010
`(Ex. 1013, “Lee”).
`6 U.S. Pat. No. US 5,946,121, issued Aug. 31, 1999 (Ex. 1014, “Jiang”).
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`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`According to Petitioner, “given the close correlation and substantial
`identity between the prior art references and the challenged claims,
`Petitioner[] believe[s] that no express constructions of the claims are
`necessary.” Pet. 18. Patent Owner agrees, stating that “no express
`constructions of the claim terms are necessary” at this stage of the
`proceeding. Prelim. Resp. 42.
`For purposes of this Decision, we need not expressly construe any
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`Principles of Law
`B.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art;7 and (4) when in evidence, objective
`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`Asserted Obviousness of Claims 1–9, 11–15, and 19 over Kim
`C.
`Petitioner contends claims 1–9, 11–15, and 19 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Kim. Pet. 18–56. In support of its
`showing, Petitioner relies upon the declaration of Dr. Sayfe Kiaei. Id.
`(citing Ex. 1002).
`
`1. Kim
`Kim describes a mobile terminal that allows a sub-device to be
`attached thereto or detached therefrom. Ex. 1010 ¶ 3. Coupling and
`separation of a main device and a sub-device of the mobile terminal allow
`controlling an operation and a state of the mobile terminal. Id. ¶ 9. The
`mobile terminal includes a sub-device having an input/output unit and is
`attached to or detached from the mobile terminal, a controller configured to
`receive a user input via a certain communication path from the sub-device
`
`
`7 Relying on the testimony of Dr. Sayfe Kiaei, Petitioner offers an
`assessment as to the level of ordinary skill in the art and the general
`knowledge of a person of ordinary skill at the time of the ’020 patent.
`Pet. 16–17 (citing Ex. 1002 ¶¶ 21–22). For example, Dr. Kiaei states that a
`person having ordinary skill in the art “would have had at least a bachelor’s
`degree in electrical engineering, computer science, or a similar field and one
`year of experience in consumer electronics product design” and that “[m]ore
`education can supplement practical experience and vice versa.” Ex. 1002
`¶ 22. Patent Owner does not propose an alternative assessment. Prelim.
`Resp. 42. To the extent necessary, and for purposes of this Decision, we
`accept the assessment offered by Petitioner as it is consistent with the ’020
`patent and the asserted prior art.
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`when the sub-device is separated, and control elements and applications of
`the mobile terminal according to the user input. Id. ¶ 10.
`Figure 1 is illustrative and is reproduced below.
`
`
`Figure 1 shows a schematic diagram of a mobile terminal. Id. ¶ 14.
`Mobile terminal 100 includes wireless communication unit 110, audio/video
`(A/V) input unit 120, user input unit 130, sensing unit 140, output unit 150,
`memory 160, interface unit 170, controller 180, and power supply 190. Id.
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`¶ 72. “More or less components may alternatively be implemented.” Id.
`¶ 71. A/V input unit 120 may provide audio or video signal input via
`camera 121 to mobile terminal 100. Id. ¶ 84. Sensing unit 140 may detect
`an open/close status or the state of mobile terminal 100. Id. ¶ 88. Output
`150 may include display 151. Id. ¶ 95. Display 151 may have a transparent
`organic light-emitting diode (TOLED) display. Id. ¶¶ 97–98.
`“Embodiments may be used singly and/or by being combined together.” Id.
`¶ 179.
`Figure 7 is illustrative and is reproduced below.
`
`
`Figure 7 shows a mobile terminal including a main device and a sub-
`device. Id. ¶ 21. Main device 100 can be detachably attached to one or
`more sub-devices 300a–300n. Id. ¶ 181. Main device 100 may include
`coupling unit 210 for mechanically coupling sub-devices 300a–300n,
`coupling detection unit 220 that detects whether or not sub-devices 300a–
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`300n are coupled, and connection unit 230 that allows signals or data to be
`transmitted or received between main device 100 and sub-devices 300a–
`300n. Id. ¶ 182. “Each of the sub-devices 300 may be configured to include
`all the same elements as those of the main device.” Id. ¶ 187. “[W]hen the
`sub-device 300 is coupled to the main device 100, the main device 100 may
`automatically change its operation mode or an operation mode of the sub-
`device.” Id. ¶ 195. Sub-device 300 may include frame 303 (shown in
`Figure 9b). Id. ¶ 199. The structures for coupling sub-device 300 are in
`accordance to the types of main device 100 which include “bar type, slide
`type, folder type, Swing type, Swivel type, watch time, and the like.” Id.
`¶ 210. A “magnet may be respectively attached to one side of the main
`device 100 and one side of the sub-device 300, to easily couple or separate
`(i.e., couple or de-couple) the main device 100 and the sub-device.” Id.
`¶ 203. Main device 100 may have a recess corresponding to the shape and
`size of sub-device 300, in which a magnet may be installed. Id.
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`Figure 11B is illustrative and is reproduced below.
`
`
`Figure 11B shows a structure for coupling or separating a sub-device
`to a folder type main device. Id. ¶ 25. A sub-device may be coupled to a
`main device via press-fitting coupling member 510 to position within a
`recess or hook formed in the main device. Id. ¶ 218. Alternatively, a
`magnet may be provided in the main device such that third body 300 has a
`member that can be attached to the magnet, may be coupled while allowing
`“the first body 100a and the second body 100b may be folded or unfolded
`regardless of the coupling or separating of the sub-device.” Id. “Here, the
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`third body may be overlapped to be coupled to one of the first and second
`bodies in a state that the first and second bodies are coupled,” but “the
`method of coupling the third body to the first body in an overlapping
`manner” are only “described for the brevity.” Id. ¶ 217.
`Figure 15A is illustrative and is reproduced below.
`
`
`Figure 15A shows a structure for coupling or separating a sub-device
`to a watch-type main device. Id. ¶ 29. Here, first body 100a is connected to
`second body 100b by hinge 100d. Id. ¶ 256.
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`Figure 15b is illustrative and is reproduced below.
`
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`Figure 15B also shows a structure for coupling or separating a sub-
`device to a watch-type main device. Id. ¶ 29. Here, coupling member 510
`also fixes a sub-device to a main device. Id. ¶ 261.
`
`2. Discussion
`Claim 1 recites “[a] system comprising.” Petitioner contends that the
`“system” of Kim that primarily describes the elements of claim 1 is based on
`a figure modified by the Petitioner based on Kim’s disclosure. Pet. 18–25.
`In particular, Petitioner contends that Kim describes a mobile terminal
`comprising a main device and sub-devices detachably coupled to the main
`device. Id. at 18 (citing Ex. 1010 ¶ 181, Fig. 7, Claim 1; Ex. 1002 ¶ 81).
`Petitioner further contends that the main device can include a folder-type
`main device or a watch-type main device. Id. at 19 (citing Ex. 1010 ¶¶ 210–
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`222, 255–262, Figs. 11A–11E, 15A–15D; Ex. 1002 ¶¶ 82–85). Petitioner
`asserts that for the watch-type main device, Figure 15A (seen above) shows
`first body 100a attached to band 100c, and second body 100b attached to the
`first body 100a by hinge 100d. Id. at 19–20 (citing Ex. 1010 ¶ 256, Fig.
`15A). Petitioner further asserts that Kim describes a third body (sub-device)
`detachably coupling to one of the first and second bodies. Id. at 20 (citing
`Ex. 1010 ¶¶ 217, 260–261).
`Petitioner argues that Kim describes, however, that “for the sake of
`brevity,” the discussion with respect to Figure 15B relates to “coupling the
`sub-device in an overlapping manner to the second body.” Id. at 20 (citing
`Ex. 1010 ¶ 260). Petitioner contends that, putting it all together, a person
`having ordinary skill in the art (“POSITA”) would have understood Kim to
`disclose an embodiment of the mobile terminal in which a watch-type main
`device comprises first body 100a connected to second body 100b by hinge
`100d and a sub-device 300 detachably coupled to the second body 100b. Id.
`at 21–22 (citing Ex. 1002 ¶¶ 82–85).
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`Below is Petitioner’s reproduced “Figure A” showing the
`embodiment.
`
`
`“Figure A” is a representation reproduced in the Petition of an
`embodiment described in Kim. Id. at 22. Petitioner argues that a POSITA
`would have understood that in the above embodiment, sub-device 300
`detachably couples to second body 100b through coupling members 510
`(shown in brown) and that members 510 can be recesses/hooks or magnets.
`Id. at 22–23 (citing Ex. 1010 ¶¶ 185, 218; Ex. 1002 ¶¶ 86–88).
`Petitioner alternatively contends that to the extent that Patent Owner
`argues that Kim does not disclose the above embodiment, such an
`embodiment would have been obvious to a POSITA in view of Kim’s
`folder-type embodiments (Figure 11B) which are similar and closely related
`to the watch-type embodiment (Figure 15A). Id. at 23 (citing Ex. 1010,
`Figs. 11B, 15A; Ex. 1002 ¶¶ 89–97). Petitioner explains how in both
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`embodiments (folder-type and watch-type) the main device comprises a first
`body and a second body connected to each other by a hinge so that the two
`bodies can open or close in a folding manner, and that with respect to both
`embodiments, Kim also describes using coupling members 510 (such as
`magnets) to detachably couple the sub-device to the main device. Id. at 23–
`24 (citing Ex. 1002 ¶¶ 90–91; Ex. 1010 ¶¶ 212, 218, 220, 261). Petitioner
`contends that a “POSITA would have recognized that because of the
`similarities between Kim’s folder-type and watch-type embodiments, Kim’s
`disclosure with respect to Figure 11B could have been adapted and applied
`to detachably couple sub-device 300 to the second body 100b of the watch-
`type embodiment in the manner shown in Figure A.” Id. at 24 (citing Ex.
`1002 ¶ 92). Petitioner further contends that doing so is suggested by Kim
`itself because Kim states that the embodiments “may be used singly and/or
`by being combined together.” Id. (citing Ex. 1010 ¶ 179). Petitioner argues
`that a POSITA having reviewed Kim’s Figure 11B embodiment would have
`recognized the feasibility and desirability of modifying the embodiment of
`Kim’s Figure 15 to detachably couple sub-device 300 to the second body
`100b using coupling members 510. Id. (citing Ex. 1002 ¶¶ 92–97).
`Petitioner further provides reasons for making the modification. Id. at 24–25
`(citing Ex. 1002 ¶¶ 94–96).
`Claim 1 further recites “a portable switching device coupled to a
`portable electronic device.” Petitioner contends that in the modified watch-
`type embodiment (Petitioner’s Figure A), both the watch-type main device
`100 and the associated sub-device are portable. Id. at 26 (citing Ex. 1002
`¶ 99). Petitioner further contends that the main device is a “portable
`electronic device” and that the sub-device is a “switching device” as
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`claimed. Id.8 Petitioner argues that Kim describes that the electronic device
`(main device) may detect whether the sub-device is coupled and when so
`coupled the sub-device automatically changes (“switches”) its operation
`mode or an operation mode of the main device. Id. at 27- 28 (citing Ex.
`1010 ¶¶ 195, 270; Ex. 1002 ¶¶ 104–105).
`Claim 1 recites “the switching device and the electronic device are
`configured to selectively couple to each other employing magnetic force.”
`Petitioner contends that Kim’s sub-device (“switching device”) and the main
`device (“electronic device”) detachably couple by way of coupling members
`510 which can be magnets. Id. at 28 (citing Ex. 1010 ¶ 203; Ex. 1002
`¶¶ 106–120). Petitioner further contends that a POSITA would have
`recognized that Kim discloses that coupling members 510 are magnets or
`complementary recesses/hooks, or that it would have been obvious to use
`magnets as coupling members 510 in the embodiment shown in Figure A
`instead of or in addition to recesses/hooks. Id. at 28–30 (citing Ex. 1010
`¶¶ 203, 218, 220, 233, 261; Ex. 1002 ¶¶ 106–111).
`Patent Owner argues that “Kim does not disclose or render obvious ‘a
`portable switching device coupled to a portable electronic device; wherein:
`the switching device and the electronic device are configured to selectively
`couple to each other employing magnetic force.’” Prelim. Resp. 43–60.
`Patent Owner’s arguments focus on Petitioner’s allegedly “fictional watch
`embodiment, constructed by” Petitioner that Petitioner “alleges would have
`
`
`8 Patent Owner argues that Petitioner fails to provide an explanation for
`applying Kim differently in IPR2021-00336 involving U.S. Patent No.
`10,259,021 B2 (“the ’021 patent”). Prelim. Resp. 66–67. The argument is
`unpersuasive as the ’021 patent claims and the ’020 patent claims are not the
`same.
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`been an obvious modification of Kim’s FIG. 15A watch embodiment in
`view of Kim’s FIG. 11B phone embodiment.” Id. at 43. In other words,
`Patent Owner focuses on Petitioner’s alternative showing as to how Kim
`meets the claim phrase. Nevertheless, Patent Owner does not directly
`address the disclosure in Kim that describes what is shown in Petitioner’s
`Figure A.
`As explained in the Petition, Kim describes an embodiment that a
`POSITA would have understood to resemble Petitioner’s Figure A. Pet. 19–
`21. In particular, Petitioner asserts that for the watch-type main device,
`Figure 15A shows first body 100a attached to band 100c, and second body
`100b attached to the first body 100a by hinge 100d. Id. at 19–20 (citing Ex.
`1010 ¶ 256, Fig. 15A). Petitioner further asserts that Kim describes a third
`body (sub-device) detachably coupling to one of the first and second bodies.
`Id. at 20–21 (citing Ex. 1010 ¶¶ 217, 260–261). Kim describes a watch-type
`mobile terminal that includes first body 100a and second body 100b. Ex.
`1010 ¶ 257, Fig. 15a. In one watch-type embodiment, Kim describes that a
`third body (sub-device) “is coupled to one of the first and second bodies in a
`state [where] the first and second bodies are coupled,” and more particularly,
`where “the sub-device [is] in an overlapping manner to the second body.”
`Id. ¶ 260. Based on the current record before us, Petitioner’s “Figure A” is a
`reasonable rendering of what Kim describes with respect to a watch-type
`device with two bodies and a sub-device overlapping the second body.
`Patent Owner argues that Petitioner’s “interpretation of poorly worded
`paragraph 260 of Kim is flawed and at odds with the FIGs. 15B–D that
`paragraph 260 introduces” and that the “flawed interpretation of paragraph
`260 is not enabled and lacks any reason to combine or reasonable
`expectation of success.” Prelim. Resp. 45 n.5. We disagree with the
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`contention that Petitioner has misinterpreted Kim. Moreover, to the extent
`that Patent Owner is arguing that Kim is not enabled, Patent Owner provides
`no analysis or evidence to support such an assertion. Thus, at this juncture
`of the proceeding, Patent Owner’s argument that Kim does not disclose the
`disputed claim phrase does not undermine Petitioner’s persuasive showing.
`For the sake of completeness, we address Patent Owner’s arguments
`regarding Petitioner’s alternative showing of how Kim teaches the disputed
`claim limitation. Prelim. Resp. 43–60. First, Patent Owner makes several
`arguments that Kim “rejects the modifications proposed by” because the
`figures in Kim show the “hinged flip-top” removed. Id. at 44–46. Patent
`Owner’s arguments are unavailing. In its alternative showing of how Kim
`teaches the disputed phrase, Petitioner relies on the teachings from other
`embodiments in combination with the watch-type embodiments. See, e.g.,
`Pet. 23–25.
`Next, Patent Owner argues that a POSITA would not have made the
`proposed modification because doing so would prevent the watch “from
`folding shut as intended.” Prelim. Resp. 46–47. Patent Owner alleges that a
`side view of the device of Petitioner’s Figure A would appear as depicted
`below.
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`Patent Owner’s production of a side view of Figure A is reproduced
`above. Patent Owner argues that placement of the sub-device 300 would
`prevent the top 100b from closing onto the bottom 100a and would damage
`sub-device 300 if the top was closed. Id. at 47. Patent Owner’s arguments
`are mere attorney arguments that are not supported by evidence of record.
`See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
`(argument of counsel cannot take the place of evidence lacking in the
`record). Moreover, the side view reproduced above shows the hinge located
`totally outside the intersection of elements 100a and 100b. This rendering is
`not consistent with either Petitioner’s Figure A or Kim Figure 11B.
`Moreover, we are not swayed by Patent Owner’s contention that including
`“a gap between the top and bottom watch portions,” would have caused
`problems, because again such assertions are based on attorney argument.
`Prelim. Resp. 47–49. Patent Owner fails to direct us to any evidence that a
`person having ordinary skill in the art would have included such a gap as
`Patent Owner asserts. At this juncture, we are persuaded by Petitioner’s
`contentions (see, e.g., Pet. 42) that in Kim’s folder type embodiments the
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`device may be folded or unfolded regardless of the coupling or separating of
`the sub-device. Ex. 1010 ¶ 218; Ex. 1002 ¶¶ 52, 154.
`Next, Patent Owner argues that Petitioner’s proposed modification
`(Figure A), or Patent Owner’s hypothetical modification of that proposal,
`results in an unreadable or distorted display “when the watch is closed.”
`Prelim. Resp. 49–52. As pointed out in the Petition (see, e.g., Pet. 15, 39–
`40), Kim describes that “[t]he controller 180 differently controls the
`operations (e.g., display) of the main device 100 and the sub-device 300
`according to an engaged state (vertical or horizontal).” Ex. 1010 ¶ 274; see
`also Ex. 1002 ¶¶ 60, 113. Thus, at this stage of the proceeding, in view of
`Kim’s disclosures, we do not find that Patent Owner’s arguments undermine
`Petitioner’s showing.
`Patent Owner argues that a “POSITA would not have had a
`reasonable expectation of making, much less be motivated to make
`Samsung’s fictional modifications.” Prelim. Resp. 52. The arguments are
`based on Kim allegedly not teaching (1) a watch type embodiment with both
`a cover 100b and a sub-device 300; (2) the addition of a sub-device that
`would not obscure or block the display; and (2) a watch embodiment with a
`sub-device where the watch would properly shut. Id. at 52–55. We have
`considered these arguments, but at this juncture of the proceeding we are not
`persuaded by these unsupported attorney arguments for similar reasons
`already provided.
`Patent Owner further argues that Petitioner’s “reliance upon FIG. 11B
`device as somehow suggesting or providing a motivation to modify the very
`different FIG. 15A watch type device is unpersuasive.” Id. at 55–56. In
`particular, Patent Owner argues that sub-device 300 of Fig. 11B has a one or
`two line display and that such a small display “would be totally unusable if
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`sub-device 300 was sized down to fit the FIG. 15A-D watch type
`embodiments.” Id. at 56. Patent Owner’s arguments are with respect to
`“FIG. 9D” and the description with respect to Figure 9D that describes an
`alternative embodiment where a small display is used. Ex. 1010 ¶ 201.
`Patent Owner does not explain why a POSITA would understand that the
`same small display is used with the embodiment shown in Figure 11B, for
`example. The coupled sub-device 300 depiction of Figure 11B appears to be
`a full display, not a one or two line display as Patent Owner argues. Nor do
`we find availing Patent Owner’s argument that in the Figure 11
`embodiments, the underlying flip-top is a keyboard and not another display
`as in the watch-type embodiment. Prelim. Resp. 56. With respect to the
`embodiment of Figure 11B, Kim describes that “the second body 100b may
`not necessarily include the keypad, and it may include a display unit, a touch
`screen or a touch pad.” Ex. 1010 ¶ 212.
`Patent Owner argues that if a POSITA were to combine teachings, it
`would be with respect to Figure 15B and Figure 5. Prelim. Resp. 56. Patent
`Owner, however, fails to explain, with supporting evidence, why that is so.
`Such an argument does not detract from Petitioner’s showing that a POSITA
`would have “recognized that the watch-type embodiment shown in Figures
`15A is similar and closely related to the folder-type embodiments shown in
`Figures 11B.” Pet. 23 (citing Ex. 1002 ¶¶ 90–92). Patent Owner also argues
`that Petitioner’s assertion that “[e]mbodiments may be used singly and/or by
`being combined together” is a conclusory and unsupported interpretation of
`Kim that is entitled to little or no weight. Prelim. Resp. 57 (citing Ex. 1010
`¶ 179). We disagree. In particular, we do not agree that Kim’s described
`interchange
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