UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`
`Petitioners
`
`v.
`
`GUI Global Products, Ltd., D/B/A Gwee,
`
`Patent Owner
`
`Case IPR2021-00336
`
`U.S. Patent No. 10,259,021
`
`Petition for Inter Partes Review of
`
`U.S. Patent No. 10,259,021
`
`

`

`IPR2021-00336
`U.S. Patent No. 10,259,021
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`Table of Contents
`
`I.
`II.
`III.
`
`INTRODUCTION ........................................................................................... 1
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) ................................ 1
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ................................................................................ 1
`A.
`Claims for Which Review is Requested ................................................ 1
`B.
`Statutory Grounds of Challenge ............................................................ 1
`IV. OVERVIEW OF THE ’021 PATENT ............................................................ 3
`A.
`Disclosure of the ’021 Patent ................................................................ 3
`B.
`Prosecution History of the ’021 Patent ................................................. 6
`C.
`The Challenged Claims Are Not Entitled To An Effective
`Filing Date Before November 3, 2011 .................................................. 7
`OVERVIEW OF THE PRIMARY PRIOR ART REFERENCE .................... 9
`A.
`Overview of Kim ................................................................................... 9
`LEVEL OF ORDINARY SKILL IN THE ART ...........................................17
`VI.
`VII. CLAIM CONSTRUCTION ..........................................................................17
`VIII. DETAILED EXPLANATION OF GROUNDS ............................................18
`A.
`Ground 1: Kim Renders Obvious Claims 1-9, 11-15, and 19 ............18
`1.
`Claim 1 ......................................................................................18
`2.
`Claim 2 ......................................................................................44
`3.
`Claim 3 ......................................................................................45
`4.
`Claim 4 ......................................................................................46
`
`V.
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`i
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`IPR2021-00336
`U.S. Patent No. 10,259,021
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`B.
`
`C.
`
`Claim 5 ......................................................................................46
`5.
`Claim 6 ......................................................................................47
`6.
`Claim 7 ......................................................................................48
`7.
`Claim 8 ......................................................................................49
`8.
`Claim 9 ......................................................................................50
`9.
`10. Claim 11 ....................................................................................53
`11. Claims 12, 13, 14, and 15 .........................................................54
`12. Claim 19 ....................................................................................56
`Ground 2: Kim and Koh Render Obvious Claim 10 ..........................56
`1.
`Claim 10 ....................................................................................56
`Ground 3: Kim and Lee Render Obvious Claims 16 & 17.................65
`1.
`Claim 16 ....................................................................................65
`2.
`Claim 17 ....................................................................................67
`Ground 4: Kim and Jiang Render Obvious Claim 18 ........................69
`1.
`Claim 18 ....................................................................................69
`THE DISCRETIONARY FACTORS FAVOR INSTITUTING TRIAL .....71
`A.
`35 U.S.C. § 314(a) ...............................................................................71
`B.
`35 U.S.C. § 325(d)...............................................................................76
`X. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 .................................76
`A.
`Real Parties-in-Interest ........................................................................76
`B.
`Related Matters ....................................................................................76
`C.
`Lead and Backup Counsel ...................................................................77
`D.
`Service Information .............................................................................78
`
`IX.
`
`D.
`
`ii
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`

`

`XI.
`
`XI.
`
`FEES ..............................................................................................................78
`
`FEES .............................................................................................................. 78
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`IPR2021-00336
`U.S. Patent No. 10,259,021
`US. Patent No. 10,259,021
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`IPR2021-00336
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`iii
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`iii
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`
`1025
`
`1026
`
`1027
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
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`PETITIONERS’ EXHIBIT LIST
`
`DESCRIPTION
`U.S. Patent No. 10,259,021
`Declaration of Sayfe Kiaei, Ph.D.
`Curriculum Vitae of Sayfe Kiaei, Ph.D.
`File History of U.S. Patent No. 10,259,021
`File History of U.S. Provisional Application No. 61/515,752
`Summary of all applications in the ’021 patent’s priority chain
`Excerpt of GUI Global Products, Ltd., D/B/A Gwee v. Samsung
`Elecs. Co., Ltd., et al., Case No. 4:20-cv-2624 (S.D. Tex.), Gwee’s
`P.R. 3-1 and 3-2 Disclosures (Nov. 6, 2020)
`[RESERVED]
`[RESERVED]
`U.S. Patent Application Publication 2010/0227642 to Kim et al.
`[RESERVED]
`Korean Patent Publication 10-2008-0093178 to Koh et al.
`U.S. Patent Application Publication 2010/0298032 to Lee et al.
`U.S. Patent No. 5,946,121 to Jiang et al.
`U.S. Patent Application Publication 2008/0166005 to Terlizzi
`U.S. Patent Application Publication 2006/0152576 to Kiessling
`U.S. Patent Application Publication 2003/0164895 to Viinikanoja
`International Publication WO 2010/142290 to Birger
`U.S. Patent No. 6,809,774 to Yamazaki
`U.S. Patent No. 7,251,197 to Yoshida et al.
`U.S. Patent Application Publication 2011/0211297 to Griffin et al.
`U.S. Patent Application Publication 2006/0071746 to Lylyharju
`A Dictionary of Chemistry, 5th ed. (2004)
`Order granting [39] Motion to Consolidate Cases in GUI Global
`Products, Ltd., D/B/A Gwee v. Samsung Elecs. Co., Ltd., et al.,
`Case No. 4:20-cv-2624 (S.D. Tex.)
`Docket listing in GUI Global Products, Ltd., D/B/A Gwee v.
`Samsung Elecs. Co., Ltd., et al., Case No. 4:20-cv-2624 (S.D. Tex.)
`Joint Motion for Scheduling Order in GUI Global Products, Ltd.,
`D/B/A Gwee v. Samsung Elecs. Co., Ltd., et al., Case No. 4:20-cv-
`2624 (S.D. Tex.)
`Letter from Jin-Suk Park to John Edmonds, dated December 29,
`2020
`
`iv
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`

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`IPR2021-00336
`U.S. Patent No. 10,259,021
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`INTRODUCTION
`I.
`Petitioners Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (“Samsung” or “Petitioners”) request inter partes review of claims 1-19 of U.S.
`
`Patent No. 10,259,021 (“the ’021 patent”).
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`II.
`Petitioners certify that the ’021 patent is available for inter partes review
`
`(“IPR”) and Petitioners are not barred or estopped from requesting IPR to challenge
`
`the claims on the grounds herein. Petitioners file this Petition within one year of
`
`service of Patent Owner’s (“PO”) complaint against Petitioners in district court. See
`
`GUI Global Products, Ltd., D/B/A Gwee v. Samsung Elecs. Co., Ltd., et al., Case
`
`No. 4:20-cv-2624 (S.D. Tex.) (Samsung Electronics America, Inc. served
`
`7/29/2020).
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A.
`Claims for Which Review is Requested
`Samsung respectfully requests review of claims 1-19 (“challenged claims”) of
`
`the ’021 patent and cancellation of these claims under 35 U.S.C. § 311 as
`
`unpatentable.
`
`Statutory Grounds of Challenge
`B.
`Claims 1-19 should be cancelled as unpatentable on the following grounds:
`
`Ground 1: Claims 1-9, 11-15 and 19 are unpatentable under AIA 35 U.S.C.
`
`1
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`§ 103 as being obvious over U.S. Patent Application Publication 2010/0227642
`
`(“Kim”) (EX1010);
`
`Ground 2: Claim 10 is unpatentable under AIA 35 U.S.C. § 103 as being
`
`obvious over Kim in view of Korean Patent Publication 10-2008-0093178 (“Koh”)
`
`(EX1012)1;
`
`Ground 3: Claims 16 and 17 are unpatentable under AIA 35 U.S.C. § 103 as
`
`being obvious over Kim in view of U.S. Patent Application Publication
`
`2010/0298032 (“Lee”) (EX1013); and
`
`Ground 4: Claim 18 is unpatentable under AIA 35 U.S.C. § 103 as being
`
`obvious over Kim in view of U.S. Patent 5,946,121 (“Jiang”) (EX1014).
`
`As further explained below in Section IV.C, the challenged claims are not
`
`entitled to an effective filing date earlier than November 3, 2011.2 Kim published
`
`1 EX1012 is a compilation comprising the English-language translation of Koh
`
`(EX1012, 1-15), and its Korean language version (id., 16-30), and an affidavit
`
`required by 37 C.F.R. § 42.63(b) (in the form of a declaration as permitted by 37
`
`C.F.R. § 42.2) (id., 31).
`
`2 While for purposes of this proceeding Samsung asserts that the challenged claims
`
`are not entitled to a priority date earlier than November 3, 2011, Samsung reserves
`
`2
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`IPR2021-00336
`U.S. Patent No. 10,259,021
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`on September 9, 2010. Koh published on October 21, 2008. Lee published on
`
`November 25, 2010. Jiang issued on August 31, 1999. Thus, each of Kim, Koh,
`
`Lee, and Jiang qualify as prior art at least under AIA 35 U.S.C. § 102(a)(1).3
`
`The ’021 patent appears to have been examined under the provisions of the
`
`America Invents Act (“AIA”). EX1004, 82. All of the references relied on in this
`
`petition would remain prior art under § 102, and the challenged claims would still
`
`be unpatentable under § 103, even if the Board determines that the ’021 patent is
`
`subject to pre-AIA law.
`
`IV.
`
`OVERVIEW OF THE ’021 PATENT
`A.
`Disclosure of the ’021 Patent
`The ’021 patent is generally directed to a cleaning component for cleaning a
`
`lens or view screen of an electronic device that “is configured to selectively couple
`
`to the at least one case or some other substrate using a magnetic attractive force.”
`
`EX1001, Abstract.
`
`the right to challenge any priority claims(s) made by PO with respect to the ’021
`
`patent in this proceeding or in the district court litigation.
`
`3 The exceptions in AIA 35 U.S.C. § 102(b) are inapplicable to Koh, and Jiang. The
`
`exceptions are also inapplicable to Kim when the challenged claims are properly
`
`accorded a priority date no earlier than November 3, 2011.
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`3
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`U.S. Patent No. 10,259,021
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`According to the ’021 patent, “[c]leaning lenses has long been an issue for the
`
`users of devices employing them” (id., 1:38-39), and “[c]leaning the view screen of
`
`a portable electronic device can be problematic” because “[c]arrying appropriate
`
`cleaning materials is sometimes a problem” (id., 1:59-66). Thus, the ’021 patent
`
`states “it would be desirable … to incorporate into [the portable electronic device]
`
`the cleaning apparatus” and that “it would also be desirable … to provide a cleaning
`
`component that can be carried on an electronic device case.” Id., 2:3-8.
`
`To remedy the perceived problems in the art, the ’021 patent purports to
`
`disclose several embodiments such as, for example, “a method of cleaning a view
`
`screen of an electronic device” (id., 2:12-18), “a cleaning component for use on an
`
`electronic device view” (id., 2:19-23), and “a switching device for use with a
`
`portable electronic device having a view screen” (id., 3:64-4:11).
`
`While the bulk of the ’021 patent describes methods of cleaning and aspects
`
`of a cleaning device, it mentions that “[i]n addition to their cleaning functionality,
`
`the cleaning components of the application have a functionality of being able to
`
`activ[ate] magnetic switches on devices having such switches.” Id., 11:59-62. In
`
`one embodiment, the cleaning device may also have “additional functionality such
`
`as a remote control, laser pointer or the like” and, paradoxically, the cleaning device
`
`“may or may not include cleaning capabilities but will include a rare earth magnet
`
`or magnets.” Id., 16:30-47. Functionality may also include, “pointing devices,”
`
`4
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`U.S. Patent No. 10,259,021
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`“remote functionality,” “flash drive,” “earplugs,” “credit card reader, microphone,
`
`and the like.” Id., 16:48-58.
`
`The ’021 patent further discloses a switching device for use in a portable
`
`electronic device having a view screen. Id., 17:54-55. This embodiment is shown
`
`below:
`
`EX1001, FIG. 24.
`
`The “switching device (2401) is selectively coupled to the front of the portable
`
`electronic device 2402 outside of the view screen 2403.” Id., 18:7-11. A side view
`
`of the switching device 2401 is shown below:
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`5
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`U.S. Patent No. 10,259,021
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`EX1001, FIG. 25.
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`The ’021 patent further discloses that the switching devices have a functionality of
`
`being able to “active[ate] magnetic switches on devices having such switches.” Id.,
`
`20:14-16.
`
`Prosecution History of the ’021 Patent
`B.
`The ’021 patent issued on April 16, 2019, from U.S. Application No.
`
`15/852,000 (“the ’000 application”) filed December 22, 2017. The ’000 application
`
`claims priority to International Application No. PCT/US2012/049562 (“the ’562
`
`PCT application”) filed on August 3, 2012, through two intervening continuation
`
`applications. The ’562 PCT application in turn claims priority to nine U.S.
`
`provisional patent applications filed between August 5, 2011 and June 18, 2012.
`
`Exhibit 1006 summarizes the relationship of all the applications in the ’021 patent’s
`
`priority chain.
`
`During prosecution of the ’021 patent, the Office rejected all of the originally
`
`filed claims. Claim 1—the only independent claim—was rejected under AIA 35
`
`6
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`U.S. Patent No. 10,259,021
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`U.S.C. § 102(a)(1) as anticipated by U.S. Patent Application Publication
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`2011/0192857A1 to Rothbaum et al. EX1004, 82-83. After an Applicant-initiated
`
`telephonic interview, the Office issued a Notice of Allowance with an Examiner’s
`
`Amendment to add “the portable switching device is configured to activate,
`
`deactivate or send into hibernation the portable electronic device” to independent
`
`claim 1. Id., 152.
`
`C.
`
`The Challenged Claims Are Not Entitled To An Effective
`Filing Date Before November 3, 2011
`For purposes of this proceeding, Samsung asserts that the challenged claims
`
`are not entitled to a priority date earlier than November 3, 2011.4
`
`The Board can consider the challenged claims’ priority date. See SAP Am.,
`
`Inc. v. Lakshmi Arunachalam, IPR2014-00414, Paper 24 at 22 (Aug. 17, 2015). The
`
`’021 patent can claim priority to an earlier application only if the earlier application,
`
`inter alia, provides an adequate written description for the claims. 35 U.S.C. §120;
`
`Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333, 1334-35 (Fed. Cir. 2010).
`
`“[T]he hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly
`
`& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “Entitlement to a filing date
`
`does not extend to subject matter which is not disclosed, but would be obvious over
`
`4 See footnote 2.
`
`7
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`U.S. Patent No. 10,259,021
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`what is expressly disclosed. It extends only to that which is disclosed…. a prior
`
`application itself must describe an invention, and do so in sufficient detail that one
`
`skilled in the art can clearly conclude that the inventor invented the claimed
`
`invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d
`
`1565, 1571-72 (Fed. Cir. 1997).
`
`U.S. Provisional Application No. 61/515,752 (“the ’752 provisional
`
`application”)—which was filed on August 5, 2011—fails to provide adequate
`
`written description of at least the following limitations of claim 1: “a portable
`
`switching device”5; “the switching device and the electronic device are configured
`
`to selectively couple to each other employing magnetic force”; and “the portable
`
`switching device is configured to activate, deactivate or send into hibernation the
`
`portable electronic device.” EX1001, claim 1; see generally EX1005. In fact, the
`
`’752 provisional application is completely silent about “switching devices” in any
`
`form. EX1002, ¶38.
`
`Because the ’752 provisional application does not provide adequate written
`
`description of at least the above claim limitations, the challenged claims are entitled
`
`to a priority date no earlier than November 3, 2011—the filing date of U.S.
`
`5 All bold/italics/color emphases are added unless noted otherwise.
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`8
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`U.S. Patent No. 10,259,021
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`Provisional Application No. 61/555,310.6 Indeed, PO appears to concede this point.
`
`EX1007, 7. Notably, in identifying the ’021 patent’s priority chain in the district
`
`court litigation, PO made no mention of the ’752 provisional application. Id.
`
`V.
`
`OVERVIEW OF THE PRIMARY PRIOR ART REFERENCE
`A.
`Overview of Kim
`Kim discloses devices to enable a user to activate and deactivate an electronic
`
`device with a separate switching device—and does so using the same features
`
`claimed in the ’021 patent. EX1002, ¶39. More particularly, Kim’s disclosure is
`
`directed to mobile terminals, such as mobile phones, smart phones, personal digital
`
`assistants, portable multimedia players (PMP) and/or navigators. EX1010, ¶¶69-70.
`
`Kim describes the structure and functionality of the mobile terminal with
`
`respect to a number of interrelated embodiments. Kim teaches that the disclosed
`
`embodiments “may be used singly and/or by being combined together.” EX1010,
`
`¶179; EX1002, ¶¶41, 48. Kim initially discusses various features that are common
`
`to the mobile terminals. For example, Kim states that “FIG. 1 is a block diagram of
`
`a mobile terminal” including “a wireless communication unit 110, an audio/video
`
`(A/V) input unit 120, a user input unit 130, a sensing unit 140, an output unit 150, a
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`6 See footnote 2. Samsung also reserves all rights to raise arguments under 35 U.S.C.
`
`§112 in the district court litigation.
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`9
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`U.S. Patent No. 10,259,021
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`memory 160, an interface unit 170, a controller 180 and a power supply 190.”
`
`EX1010, ¶72. Kim discloses the mobile terminal including “more or less”
`
`components than shown in Figure 1. Id., ¶71. Figure 1 is reproduced below:
`
`EX1010, FIG. 1.
`
`10
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`U.S. Patent No. 10,259,021
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`Kim provides detailed descriptions of each of these “units,” for example, describing
`
`the A/V unit 120 as including a camera and the sensing unit 140 as detecting an
`
`open/close status of the mobile terminal 100. See id., ¶¶73-119 (describing the
`
`various units and modules in the mobile terminal).
`
`Kim teaches the mobile terminal including “a main device (first device) 100
`
`and one or more sub-devices (second devices) 300a to 300n that can be detachably
`
`attached to the main device.” EX1010, ¶181. Figure 7 illustrates this concept:
`
`EX1010, FIG. 7.
`
`11
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`IPR2021-00336
`U.S. Patent No. 10,259,021
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`Kim discloses the main device 100 including all the elements of the mobile
`
`terminal as described with respect to Figure 1, and additionally including a coupling
`
`unit, coupling detection unit, and a connection unit. Id., ¶182. Kim also discloses
`
`configuring the sub-devices 300 “to include all the same elements as those of the
`
`main device.” Id., ¶187. Thus, Kim discloses the main device and the sub-devices
`
`each including suitable combinations of components, hardware and/or functionality
`
`as disclosed, for example, in Kim’s various embodiments (including Figure 1).
`
`EX1002, ¶¶42-48.
`
`Kim describes at least five types of main devices that structurally combine
`
`with at least one sub-device. For example, the main device can be a folder-type (e.g.,
`
`Figures 11A-11E), slide-type (e.g., Figures 12A-12E), swivel-type (e.g., Figures
`
`13A-13D), a bar-type (e.g., Figures 14A-14D), and/or a watch-type (e.g., Figures
`
`15A-15D). Id., ¶210. In one embodiment, the folder-type main device is comprised
`
`of a first body 100a connected to a second body 100b such that they “may be folded
`
`or unfolded” and the sub-device 300 overlaps and couples to the first body 100a of
`
`the main device using coupling member 510.7
`
`Id., ¶¶217-218, FIG. 11B. Kim
`
`7 Although Figure 11B and the accompanying discussion describe the sub-device
`
`300 coupling to the first body 100a of the main device, Kim states that this is merely
`
`12
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`further explains that the main device “may be folded or unfolded regardless of the
`
`coupling or separating of the sub-device.” Id., ¶218.
`
`EX1010, FIG. 11B.
`
`“for … brevity” and that the sub-device “may be overlapped to be coupled to [either]
`
`one of the first and second bodies” of the main device. Id., ¶217.
`
`13
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`U.S. Patent No. 10,259,021
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`Kim explains that the coupling members 510 (brown), can be complementary
`
`recesses and hooks, or magnets. Id., ¶¶218, 220.
`
`Kim includes similar disclosures with respect to the watch-type embodiment
`
`of the main device. For example, Kim’s Figure 15A discloses a watch-type main
`
`device having a first body 100a and second body 100b that are connected and can
`
`be opened or closed in a manner similar to the embodiment shown in Figure 11B
`
`(EX1010, ¶256), and further discloses a sub-device 300 overlapping and coupling to
`
`either the first body or the second body as shown, for example, in Figure 15B (id.,
`
`¶260).8
`
`8 Although Figure 15B shows the sub-device coupled to the body 100a and does not
`
`show the body 100b, Kim explains this is merely for the sake of brevity. See
`
`EX1010, ¶260 (“The method of coupling the sub-device in an overlapping manner
`
`to the second body will now be described for the sake of brevity.”).
`
`14
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`EX1010, FIGS. 15A, 15B.
`
`Kim also discloses various functionality of the main device and the sub-device
`
`dependent on their coupling state. Id., ¶¶267-268. In particular, Kim discloses that
`
`the main device and sub-device operate differently when coupled and uncoupled
`
`from each other. Id., ¶¶270, 274 (“The controller 180 differently controls the
`
`operations (e.g., display) of the main device 100 and the sub-device 300 according
`
`to an engaged state.”). For example, Kim explains that “when the main device 100
`
`and the sub-device 300 are engaged …, the controller 180 displays a menu display
`
`method or menu items that can be conveniently manipulated … upon detection of
`
`15
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`IPR2021-00336
`U.S. Patent No. 10,259,021
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`it.” Id., ¶275. As illustrated in Figure 17A, for example,9 a screen is activated to
`
`display a specific menu when the sub-device is inserted and interacts with the main
`
`device:
`
`EX1010, FIG. 17A.
`
`Kim also explains that coupling and decoupling the sub-device from the main device
`
`turns the power to the display of the main device on and off. EX1010, ¶¶299-302,
`
`FIG. 24. Kim additionally discloses the sub-device turning the main device on or
`
`off through user interaction with the sub-device. Id., ¶¶316-319, 417-418, FIGs. 27,
`
`42.
`
`9 Here Kim also explains that a “bar type mobile terminal [is] described as an
`
`example for the sake of brevity.” EX1010, ¶273.
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`16
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`U.S. Patent No. 10,259,021
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`LEVEL OF ORDINARY SKILL IN THE ART
`VI.
`A person of ordinary skill in the art at the time of the alleged invention of the
`
`’021 patent (“POSITA”), which for purposes of this proceeding is no earlier than
`
`November 3, 2011, would have had a bachelor’s degree in electrical engineering,
`
`computer science, or a similar field and one year of experience in consumer
`
`electronics product design. The POSITA could have also obtained similar
`
`knowledge and experience through other means. EX1002, ¶¶21-22.
`
`CLAIM CONSTRUCTION
`VII.
`The claims should be construed “in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in the art
`
`and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see also
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioners are
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`unaware of any “prior claim construction determination” related to the ’021 patent.
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`See 37 C.F.R. § 42.100(b).
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`The Board only construes the claims when necessary to resolve the underlying
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`controversy in the IPR.10 Toyota Motor Corp. v. Cellport Systems, Inc., IPR2015-
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`10 Petitioners intend to argue in the district court that Applicants acted as their own
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`lexicographer with respect to the term “portable electronic device” to mean “portable
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`17
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`00633, Paper No. 11 at 16 (Aug. 14, 2015) (citing Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, given the close correlation
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`and substantial identity between the prior art references and the challenged claims,
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`Petitioners believe that no express constructions of the claims are necessary to assess
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`whether the prior art reads on the challenged claims.
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`VIII.
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`DETAILED EXPLANATION OF GROUNDS
`A.
`Ground 1: Kim Renders Obvious Claims 1-9, 11-15, and 19
`Ground 1 sets forth an obviousness ground based on the combination of Kim’s
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`watch-type main device incorporating features described with respect to other
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`embodiments.
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`1.
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`Claim 1
`a.
`“A system comprising:”
`To the extent the preamble is limiting, Kim discloses this feature. EX1002,
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`electronic device having a view screen” or a substantially similar construction. The
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`challenged claims are unpatentable in view of the grounds presented here regardless
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`of whether the Board adopts such a construction. Petitioners reserve all rights to
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`raise additional claim construction arguments in other proceedings. For example,
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`comparing the claims to the accused products may raise controversies that require
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`construction.
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`18
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`U.S. Patent No. 10,259,021
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`¶¶81-97. For example, Kim discloses a mobile terminal comprising a main device
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`and sub-device(s) detachably coupled to the main device. EX1010, ¶181, Claim 1;
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`EX1002, ¶81. Kim’s Figure 7, reproduced below, illustrates this point by reference
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`to main device 100 and sub-devices 300a to 300n:
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`EX1010, FIG. 7.
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`As discussed above in Section V.A, Kim teaches the main device having
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`different form factors, including a folder-type main device or a watch-type main
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`device. EX1010, ¶¶210-222, 255-262, FIGs. 11A-11E, 15A-15D; EX1002, ¶¶82-
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`85. Kim discloses an embodiment of the watch-type main device having a first body
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`100a attached to a band part 100c, and a second body 100b attached to the first body
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`19
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`100a. The two bodies 100a and 100b are connected by hinge 100d so that the second
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`body 100b can be opened or closed in a folding manner. EX1010, ¶256, FIG. 15A.
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`EX1010, FIG. 15A.
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`Kim additionally discloses a sub-device detachably coupling to such a watch-
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`type main device. Id., ¶¶260-261. Specifically, Kim discloses that “[a] method of
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`coupling the third body (i.e., the sub-device) … to one of the first and second bodies
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`in a state that the first and second bodies are coupled will now be described.” Id.,
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`¶260, see also id. ¶217 (disclosing with respect to the similar folder-type
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`embodiment of Figure 11B that a “third body may be … coupled to one of the first
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`and second bodies in a state that the first and second bodes are coupled.”). However,
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`“for the sake of brevity,” the discussion that immediately follows with respect to
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`20
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`U.S. Patent No. 10,259,021
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`Figure 15B relates to “coupling the sub-device in an overlapping manner to the
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`second body.” Id., ¶260.
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`EX1010, FIG. 15B
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`Kim teaches that “a coupling member 510 [annotated brown] for fixing the sub-
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`device is provided on at least one side of the second body, and the sub-device may
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`be adjusted to the position where the coupling member is formed, and pressed to be
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`coupled.” Id., ¶261.
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`Accordingly, a POSITA would have understood Kim to disclose an
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`embodiment of the mobile terminal in which a watch-type main device comprises a
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`first body 100a connected to a second body 100b by a hinge 100d so that the first
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`21
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`U.S. Patent No. 10,259,021
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`and second bodies can be opened or closed in a folding manner, and wherein the
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`mobile terminal further comprises a sub-device 300 detachably coupled to the
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`second body 100b. EX1002, ¶¶81-84. Below is a schematic representation of such
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`a mobile terminal. Id., ¶87. For ease of reference, Petitioners refer to the
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`embodiment below as “Figure A” throughout this Petition.
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`Figure A (based on Kim’s disclosure)
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`A POSITA would have understood that in the embodiment shown above, a
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`sub-device 300 detachably couples to the main device’s second body 100b through
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`coupling members 510 (brown). Kim further discloses that coupling members 510
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`22
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`can be recesses/hooks or magnets. EX1010, ¶¶185, 218; EX1002, ¶¶85-88.
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`To the extent that PO argues that Kim does not disclose the embodiment
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`shown in Figure A, such an embodiment would have been obvious to a POSITA in
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`view of Kim’s disclosure. EX1002, ¶¶89-97. A POSITA would have recognized
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`that the watch-type embodiment shown in Figures 15A is similar and closely related
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`to the folder-type embodiments shown in Figures 11B. EX1002, ¶¶90-92.
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`EX1010, FIGS. 11B, 15A.
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`For example, in both embodiments the main device comprises a first body and a
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`second body connected to each other by a hinge so that the two bodies can open or
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`23
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`IPR2021-00336
`U.S. Patent No. 10,259,021
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`close in a folding manner. EX1002, ¶¶90-91. With respect to both embodiments,
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`Kim discloses using coupling members 510 (which can be magnets) to detachably
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`couple the sub-device to the main device. EX1010, ¶¶212, 218, 220, 261; EX1002,
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`¶¶90-91. Kim also provides similar disclosures regarding the structure and
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`functionality the folder-type and watch-type embodiments. EX1002, ¶¶90-91.
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`A POSITA would have recognized that because of the similarities between
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`Kim’s folder-type and watch-type embodiments, Kim’s disclosure with respect to
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`Figure 11B could have been adapted and applied to detachably couple sub-device
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`300 to the second body 100b of the watch-type embodiment in the manner shown in
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`Figure A. EX1002, ¶92. Doing so would have been obvious to a POSITA because
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`Kim itself suggests the modification. More particularly, Kim states that the
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`embodiments it describes “may be used singly and/or by being combined together.”
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`EX1010, ¶179. Having reviewed the embodiment disclosed in Kim’s Figure 11B, a
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`POSITA would have recognized the feasibility and desirability of modifying the
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`embodiment of Kim’s Figure 15A to detachably couple sub-device 300 to the second
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`body 100b using coupling members 510. EX1002, ¶¶92-97.
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`The modification would have further been obvious to a POSITA. EX1002,
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`¶¶95-97. For example, they would have amounted to use of a known technique
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`(coupling a sub-device to a folder-type main device having first and second bodies
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`using coupling members) to improve a similar device (a watch-type main device
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`24
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`having two bodies that connect to each other in a folding manner) to obtain
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`predictable results (detachably couple the sub-device to the main device’s second
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`body using coupling members). EX1002, ¶¶95-96.
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`Thus, at least because Kim’s mobile terminal is made up of a main device and
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`a sub-device, a POSITA would have understood that the mobile terminal is a
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`“system.” EX1002, ¶¶81, 97. A POSITA would have further understood that one
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`particular embodiment of such a system disclosed or suggested by Kim is a system
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`in which a watch-type main device has first and second bodies connected by a hinge
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`so that the first and second bodies can be opened or closed in a folding manner, with
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`a sub-device detachably coupled to one of the two bodies of the main device using
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`coupling members such as magnets or complementary recesses/hooks. EX1002