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
`
`PETITIONERS’ ORAL HEARING DEMONSTRATIVES
`
`
`
`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
`
`PETITIONERS’ ORAL HEARING DEMONSTRATIVES
`
`
`
`1
`
`Petitioners’ Presentation
`
`DEMONSTATIVE EXHIBIT –NOT EVIDENCE
`
`IPR2021-00338 (US 10,589,320)
`IPR2021-00337 (US 10,562,077)
`IPR2021-00336 (US 10,259,021)
`IPR2021-00335 (US 10,259,020)
`Hearing Date: April 12, 2022
`
`Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc.
`
`GUI Global Products, Ltd.
`
`v.
`
`Before the Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`
`
`2
`
`7.Kim+Jiang(’020and’021Ground4)
`6.Kim+Lee(Ground3)
`5.Kim+Koh(Ground2)
`
`b)’021,’077,and’320Ground1
`a)
`
`’020Ground1
`
`4.Kim(Ground1)
`3.OverviewofKim
`2.OverviewofChallengedPatents
`1.OverviewofInstitutedGrounds
`
`OVERVIEW
`
`
`
`3
`
`IPR2021-00338, Petition, Paper No. 3 at 1-2; Petitioners' Reply, Paper No. 18 at 26
`IPR2021-00337, Petition, Paper No. 3 at 1-2; Petitioners' Reply, Paper No. 18 at 26
`IPR2021-00336, Petition, Paper No. 3 at 1-2; Petitioners' Reply, Paper No. 18 at 26
`IPR2021-00335, Petition, Paper No. 3 at 1-2; Petitioners' Reply, Paper No. 17 at 26
`
`10, and 12-13
`’320 patent: claims 2-4, 6-8,
`
`10, and 12-13
`’077 patent: claims 2-4, 6-8,
`11-15
`’021 patent: claims 2-6, 8, and
`
`11-15
`’020 patent: claims 2-6, 8, and
`No Unique PO Argument
`
`Ground 3: claims 9-10 obvious over Kim in view of Lee
`Ground 2: claim 11 obvious over Kim in view of Koh
`Ground 1: claims 1-8 obvious over Kim
`
`Ground 4: claim 18 obvious over Kim in view of Jiang
`Ground 3: claims 16 and 17 obvious over Kim in view of Lee
`Ground 2: claim 10 obvious over Kim in view of Koh
`Ground 1: claims 1-9, 11-15, and 19 obvious over Kim
`
`Challenged Claims
`
`IPR2021-00338
`US 10,589,320
`
`IPR2021-00337
`US 10,562,077
`IPR2021-00336
`US 10,259,021
`
`IPR2021-00335
`US 10,259,020
`Patent IPR
`
`INSTITUTED GROUNDS
`
`
`
`4
`
`The Challenged Patents
`
`
`
`5
`
`IPR2021-00335, -00336, -00337, -00338, Ex. 1001at 1
`
`have secondary applications”
`Directed to a “cleaning component” that “may
`
`Priority Date: November 3, 2011 (e.g., IRP2021-00335, Petition, Paper No. 3 at 7-9;
`
`POPR, Paper No. 10 at 28-29)
`
`All four patents share the same specification
`
`GUI PATENTS
`
`
`
`6
`
`IPR2021-00335, Petition, Paper No. 3 at 4-5
`
`GUI PATENTS
`
`
`
`7
`
`IPR2021-00336, '021 patent, Ex. 1001at 21:38-22:7
`
`IPR2021-00335, '020 patent, Ex. 1001at 21:28-22:2
`
`’021 Patent
`
`’020 Patent
`
`GUI PATENTS
`
`
`
`8
`
`IPR2021-00338, '320 patent, Ex. 1001at 21:38-22:19
`
`IPR2021-00337, '077 patent, Ex. 1001at 21:38-22:19
`
`IPR2021-00336, '021 patent, Ex. 1001at 21:38-22:21
`
`’320 Patent
`
`’077 Patent
`
`’021 Patent
`
`GUI PATENTS
`
`
`
`9
`
`6
`
`Overview of Kim
`
`TUNoCLMCIN®
`
`
`
`10
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at Figs. 11B, 12B, 14A, 13B, and 15A; see also, Petition, Paper No. 3 at 12
`
`Watch
`
`Swivel
`
`Bar
`
`Slide
`
`Folder
`
`RELATED EMBODIMENTS DISCLOSED BY KIM
`
`
`
`11
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at ¶ 179
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at ¶¶ 69-70; see also, Petition, Paper No. 3 at 9
`
`e.g., IPR2021-00335, Kiaei Declaration, Ex. 1002 at ¶ 48
`
`KIM DISCLOSES MULTIPLE MAIN & SUB-DEVICE CONFIGURATIONS
`
`THAT CAN BE COMBINED
`
`
`
`12
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at Fig. 1; see also, Petition, Paper No. 3 at 10
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at ¶ 187;see also, Petition, Paper No. 3 at 12
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at ¶ 182; see also, Petition, Paper No. 3 at 12, 26, 44, 69
`
`KIM’S MAIN AND SUB-DEVICE(S) CAN INCLUDE ALL THE SAME
`
`COMPONENTS
`
`
`
`13
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at Fig. 7; see also, Petition, Paper No. 3 at 11
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at ¶ 181; see also, Petition, Paper No. 3 at 11, 18, 25, 56, 62, 64, 65
`
`KIM’S MAIN DEVICE CAN COUPLE TO MULTIPLE SUB-DEVICES
`
`
`
`14
`
`Ground 1 –Obvious in view of Kim
`
`
`
`15
`
`KIM TEACHES FIGURE A
`
`
`
`VAdNODIdSAHOVALWD
`
`
`
`16
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 22
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 22
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at ¶ 260
`
`KIM TEACHES FIGURE A
`
`
`
`17
`
`IPR2021-00337, Institution Decision, Paper No. 11 at 22;
`e.g., IPR2021-00336, Institution Decision, Paper No. 11 at 21; see also, IPR2021-00335, Institution Decision, Paper No. 11 at 21-22;
`
`e.g., IPR2021-00338, Institution Decision, Paper No. 11 at 24
`
`Board agreed in Institution Decision that Kim describes Figure A
`
`KIM TEACHES FIGURE A
`
`
`
`18
`
`e.g., IPR2021-00336, Horenstein Transcript, Ex. 1031 at 61:10-62:1
`
`hinge
`PO’s expert agrees POSITA could have used “common sense” to choose best
`
`POSITA WOULD HAVE CHOSEN APPROPRIATE HINGE
`
`
`
`19
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at ¶ 258
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 4
`
`PO incorrect that hinge of watch-type embodiment must separate
`
`KIM DOES NOT IMPOSE LIMITATIONS ON ITS HINGE AS PO CONTENDS
`
`
`
`20
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at Figs. 11B, 15A
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 8-9
`
`PO incorrect that Kim limits the hinge location
`
`KIM DOES NOT IMPOSE LIMITATIONS ON ITS HINGE AS PO CONTENDS
`
`
`
`21
`
`e.g., IPR2021-00336, Horenstein Transcript, Ex. 1031 at 81:16-82:7
`
`PO’s expert contradicts PO
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 10
`
`PO argues Kim’s watch-type embodiment disclosed with a single hinge
`
`FIGURE 15 EMBODIMENT NOT SHOWN WITH SINGLE HINGE MEMBER
`
`
`
`22
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at ¶ 257
`
`embodiments
`would have been motivated to combine Kim’s
`
`e.g., IPR2021-00336, Petitioner’s Reply, Paper No. 18 at 10-11
`
`methods
`of embodiments before moving on to control
`•Next 88 paragraphs describe physical aspects
`
`•Regardless, Dr. Kiaei explains why POSITA
`
`“control methods”
`
`•Second sentence of ¶ 179 not limited to
`
`PO incorrect that Kim contemplates combining only control methods
`
`KIM TEACHES COMBINING EMBODIMENTS
`
`
`
`23
`
`e.g., IPR2021-00335, Kiaei Declaration, Ex. 1002 at ¶¶ 89-97
`
`•Can couple sub-device to first or second body.
`•Can replace first or second body with sub-device;
`•Nearly identical description of coupling members;
`•Same reference numbers;
`•Bodies connected by a hinge;
`•First body 100a and second body 100b;
`Dr. Kiaei detailed 8 pages of similarities:
`
`KIM’S FOLDER AND WATCH TYPE DEVICES ARE SIMILAR
`
`
`
`24
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 12
`
`PO admits hinge depicted in Fig. 11B accommodates sub-device
`
`KIM’S FOLDER TYPE EMBODIMENT OBVIOUS TO COMBINE WITH WATCH-
`
`TYPE EMBODIMENT
`
`
`
`25
`
`e.g., IPR2021-00336, Horenstein Transcript, Ex. 1031 at 79:8-80:6
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 15-16
`
`could open to 180º:
`Dr. Horenstien admitted hinge in Fig. 11B
`
`open
`not combinable because it cannot fully
`PO further claims folder-type embodiment
`
`KIM’S FOLDER TYPE EMBODIMENT OBVIOUS TO COMBINE WITH WATCH-
`
`TYPE EMBODIMENT
`
`
`
`26
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at ¶ 256
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 15-16
`
`for watch-type:
`Kim allows, but does not require a dual display
`
`configuration” of watch-type
`not combinable due to “dual display
`PO further claims folder-type embodiment
`
`KIM’S FOLDER TYPE EMBODIMENT OBVIOUS TO COMBINE WITH WATCH-
`
`TYPE EMBODIMENT
`
`
`
`27
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 29
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 27
`
`that Fig. 5 is informative
`PO further inconsistent because it contends hinge in Fig. 11B not combinable, but
`
`KIM’S FOLDER TYPE EMBODIMENT OBVIOUS TO COMBINE WITH WATCH-
`
`TYPE EMBODIMENT
`
`
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at Fig. 11B
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 8
`
`28
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at Fig. 5
`
`Fig. 5’s hinge similar to Fig. 11B’s hinge
`
`KIM’S FOLDER TYPE EMBODIMENT OBVIOUS TO COMBINE WITH WATCH-
`
`TYPE EMBODIMENT
`
`
`
`29
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at Figs. 11B
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at Figs. 15C, 15D
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 29
`
`PO contradicted by Kim that 1-2 line display unsuitable for watch-type device
`
`1-2 LINE DISPLAY NO OBSTACLE TO COMBINING FOLDER AND WATCH-TYPE
`
`
`
`30
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 31
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 61
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 28
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 15
`
`Many of PO’s arguments are premised on notion that Kim requires a TOLED
`
`KIM DOES NOT REQUIRE TOLED
`
`
`
`31
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at ¶ 257
`
`e.g., IPR2021-00336, Horenstein Transcript, Ex. 1031 at 65:3-16
`
`Answer:
`
`Question:
`
`PO’s expert agrees –TOLED optional
`
`KIM DOES NOT REQUIRE TOLED
`
`
`
`32
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 12, 18
`
`698-99(Fed. Cir. 2018)(citations omitted)
`Elbrus Int’l Ltd. v. Samsung Elecs. Co.,738 F.App’x 694,
`
`unworkable circuit is “basically irrelevant.”
`combining Sukegawa and Lu could lead to an
`invention.’” Therefore, Elbrus’s argument that
`prior art references to achieve the claimed
`been motivated to combine the teachings of the
`rather whether ‘a skilled artisan would have
`into the structure of the primary reference,’ but
`secondary reference may be bodily incorporated
`obviousness is not whether the features of a
`obvious.” That is so because “ ‘[t]he test for
`Lu] be physically combinable to render [a claim]
`However, “it is not necessary that [Sukegawa and
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 12, 15, 17
`
`2018)
`NuVasive, Inc., v. Iancu, 752 F.App’x 985, 988 (Fed. Cir.
`
`substantial evidence.
`Kossmann, Branch, and Koros is supported by
`artisan would have been motivated to combine
`Accordingly, the Board’s finding that a skilled
`Koros is mere speculation and conclusory.
`inoperability of the combination of Branch and
`NuVasive’s expert testimony regarding the
`to the retractor assembly taught in Branch.
`support the fixation element in Koros could add
`artisan would have recognized the stability and
`retractor. We agree with the Board that a skilled
`Koros physically incorporateinto Branch’s
`explain exactly how the fixation elements of
`Our case law does not require that the Board
`
`Speculation of inoperability does not defeat motivation to combine:
`
`PO’S “OPERATING ISSUES” ARGUMENTS LEGALLY FLAWED
`
`
`
`33
`
`e.g., IPR2021-00336, Horenstein Declaration, Ex. 2004 at ¶ 24
`
`1321, 1343 (Fed. Cir. 2020)
`Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 12, 15
`
`not defeat a finding of obviousness.
`creativity to carry out the combination does
`automaton,” so the fact that it would take some
`is also a person of ordinary creativity, not an
`As an initial matter, “[a] person of ordinary skill
`
`•Does not explain why his alleged problems require beyond ordinary creativity to solve
`•Speculates as to easily solvable problems; or
`Despite understanding that a POSITA has ordinary creativity, PO’s expert:
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 12
`
`PO’S “OPERATING ISSUES” ARGUMENTS LEGALLY FLAWED
`
`
`
`34
`
`e.g., IPR2021-00336, Patent Owner’s Response, Paper No. 15 at 36
`
`Paper No. 15 at 35
`e.g., IPR2021-00336, Patent Owner’s Response,
`
`Paper No. 15 at 47
`e.g., IPR2021-00336, Patent Owner’s Response,
`
`hingee.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 12
`
`•Decoupling sub-device from end proximal to
`•Calibrating strength of hinge
`
`sub-device
`
`•Calibrating coupling forces between main &
`
`Ordinary Solutions:
`
`Alleged issues
`
`PO’S “OPERATING ISSUES” SOLVABLE THROUGH ORDINARY CREATIVITY
`
`
`
`35
`
`e.g., IPR2021-00336, Patent Owner’s Response, Paper No. 15 at 49
`
`e.g., IPR2021-00336, Patent Owner’s Response, Paper No. 15 at 67
`
`e.g., IPR2021-00336, Patent Owner’s Response, Paper No. 15 at 56
`
`hingee.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 12
`
`•Decoupling sub-device from end proximal to
`•Calibrating strength of hinge
`
`sub-device
`
`•Calibrating coupling forces between main &
`
`Ordinary Solutions:
`
`Alleged issues
`
`PO’S “OPERATING ISSUES” SOLVABLE THROUGH ORDINARY CREATIVITY
`
`
`
`36
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 22
`
`e.g., IPR2021-00336, Kiaei Declaration, Ex. 1002 at 162
`
`Kim’s main device protects the sub-device from dislodging or damage
`
`KIM’S MAIN DEVICE PROTECTS ITS SUB-DEVICE
`
`
`
`37
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at Fig. 15B
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 14;
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 14;
`
`KIM’S MAGNETS ARE “FULLY DISPOSED”
`
`
`
`38
`
`e.g., IPR2021-00336, Kiaei Declaration, Ex. 1002 at ¶ 123
`
`IT WOULD HAVE BEEN OBVIOUS TO “FULLY DISPOSE” FIG. A MAGNETS
`
`
`
`39
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 14
`
`In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
`
`desirable combination available.
`that the combination is the most
`something in the prior art as a whole to suggest
`making the combination,” not whether there is
`thedesirability,and thus the obviousness, of
`something in the prior art as a whole to suggest
`invention.“[T]he question is whether there is
`to provide motivation for the current
`combination described in the prior art in order
`be the preferred, or the most desirable,
`not require that a particular combination must
`This argument fails because our case law does
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 34
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 43
`
`Fully disposing magnets need not be “preferred”
`
`IT WOULD HAVE BEEN OBVIOUS TO “FULLY DISPOSE” FIG. A MAGNETS
`
`
`
`40
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 15
`
`Ex. 1002 at ¶¶ 125-127
`See also, e.g., IPR2021-00336, Kiaei Declaration,
`
`alleged problems
`devices without
`magnets in similar
`fully dispose
`
`•Other POSITAs
`
`problems;
`evidence of alleged
`
`•PO provides no
`
`PO SPECULATES OBSTACLES TO “FULLY DISPOSING” MAGNETS
`
`
`
`41
`
`Birger, Ex. 1018 at Fig. 11
`e.g., IPR2021-00336, Kiaei Declaration, Ex. 1002 at ¶¶ 133-34;
`
`mechanical attachments to provide a more secure coupling between main and sub-device
`POSITA would have looked to Birger for known technique of combining magnetic and
`
`OBVIOUS TO USE BOTH MAGNETIC AND MECHANICAL COUPLING
`
`
`
`42
`
`Koh, Ex. 1012 at Fig. 4
`e.g., IPR2021-00336, Kiaei Declaration, Ex. 1002 at ¶¶ 136-39;
`
`mechanical attachments to provide a more secure coupling between main and sub-device
`POSITA would have looked to Koh for known technique of combining magnetic and
`
`OBVIOUS TO USE BOTH MAGNETIC AND MECHANICAL COUPLING
`
`
`
`43
`
`Kim, Ex. 1010 at Fig. 11E
`e.g., IPR2021-00336, Kiaei Declaration, Ex. 1002 at ¶ 140;
`
`Kim:
`mechanical attachments to provide a more secure coupling between main and sub-device in
`POSITA would have recognized use of known technique of combining magnetic and
`
`OBVIOUS TO USE BOTH MAGNETIC AND MECHANICAL COUPLING
`
`
`
`44
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 17
`
`PO again speculates as to problems and assumes POSITA unable to address
`
`OBVIOUS TO USE BOTH MAGNETIC AND MECHANICAL COUPLING
`
`
`
`45
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 47
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 48-49
`
`LID OF KIM’S MAIN DEVICE RECESSED TO CONFIGURE TO SUB-DEVICE
`
`
`
`46
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at Fig. 10A
`
`e.g., IPR2021-00336, Kiaei Declaration, Ex. 1002 at ¶¶ 184-85
`
`OBVIOUS TO RECESS LID OF MAIN DEVICE
`
`
`
`47
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 51
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 50
`
`OBVIOUS TO SECURE FIG. A LID CLOSED WITH MAGNET
`
`
`
`48
`
`IPR2021-00338, '320 patent, Ex. 1001at 21:38-22:19
`
`e.g., IPR2021-00338, Petitioners' Reply, Paper No. 18 at 20-21
`
`coupled or separated
`electronic device and switching device
`•Plain language of claim 1 contemplates
`•PO did not propound claim construction
`plain language
`PO’s remaining arguments contrary to claim 1
`
`e.g., IPR2021-00338, Petitioner, Paper No. 3 at 54
`
`•PO does not contest this
`secured closed
`coupled to main device when the “lid” is
`& ’320 patents) does not require sub-device be
`Claim 9 (’020 & ’021 patents) and claim 5 (’077
`
`OBVIOUS TO SECURE FIG. A LID CLOSED WITH MAGNET
`
`
`
`49
`
`ARGUMENTS UNIQUE TO IPR2021-00335
`
`FOR THE ’020 PATENT
`
`
`
`50
`
`IPR2021-00335, '020 patent, Ex. 1001at 21:28-22:2
`
`IPR2021-00335, Petition, Paper No. 3 at 41-43
`
`•Sub-device = switching device
`•Main device = electronic device
`(switching device):
`(electronic device) protect the first case
`Requires, when coupled, the second case
`
`’020 PATENT MAPPING TO KIM
`
`
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at Fig. 27; see also, Petition, Paper No. 3 at 16, 36, 41
`
`51
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at ¶¶ 316-317; see also, Petition, Paper No. 3 at 16, 36, 41
`
`KIM’S SUB-DEVICE ACTIVATES & DEACTIVATES MAIN DEVICE
`
`
`
`52
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at Fig. 42;see also, Petition, Paper No. 3 at 16, 36, 41
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at ¶¶ 416-417;see also, Petition, Paper No. 3 at 16, 36, 41
`
`KIM’S SUB-DEVICE CONTROLS MAIN DEVICE’S POWER
`
`
`
`53
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at Fig. 24; see also, Petition, Paper No. 3 at 35, 41
`
`e.g., IPR2021-00335, Kim, Ex. 1010 at ¶ 300; see also, Petition, Paper No. 3 at 35, 41
`
`KIM’S SUB-DEVICE ACTIVATES & DEACTIVATES MAIN DEVICE
`
`
`
`54
`
`IPR2021-00335, Petitioners' Reply, Paper No. 17 at 18
`
`IPR2021-00335, Patent Owner Response, Paper No. 15 at 49
`
`PO’s unsupported attorney argument does not address grounds in petition
`
`KIM’S SUB-DEVICE ACTIVATES & DEACTIVATES MAIN DEVICE
`
`
`
`55
`
`IPR2021-00335, Horenstein Declaration, Ex. 2004 at ¶ 39
`
`own expert:
`And is contradicted by its
`
`IPR2021-00335, Patent Owner Response, Paper No. 15 at 50
`
`applicable to watch-type:
`control method not
`attorney argument that
`PO advances unsupported
`
`KIM’S SUB-DEVICE ACTIVATES & DEACTIVATES MAIN DEVICE
`
`
`
`56
`
`FOR THE ’021, ’077, AND ’320 PATENTS
`
`IPR2021-00336, -00337, AND -00338
`
`ARGUMENTS UNIQUE TO
`
`
`
`
`
`8EE00-GNV‘LEEO0-“9EE00-1707d
`
`
`
`OLANOINASLNAWNDYUV
`
`
`
`SLNAILVdOTE.GNV‘ZZ0.‘170.JHLYOS
`
`
`
`
`
`
`
`57
`
`IPR2021-00336, '021 patent, Ex. 1001at 21:38-22:7
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 43-44
`
`•Sub-device = electronic device
`•Main device = switching device
`(electronic device) :
`(switching device) protect the second case
`Requires, when coupled, the first case
`
`’021, ’077, & ’320 PATENT MAPPING TO KIM
`
`
`
`58
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at Fig. 17A
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 40
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at ¶ 270; see also, Kiaei Declaration, Ex. 1002 at ¶ 60.
`
`KIM’S MAIN DEVICE ACTIVATES & DEACTIVATES SUB-DEVICE
`
`
`
`59
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 41-42
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 41
`
`See also, e.g., IPR2021-00336, Petition, Paper No. 3 at 42
`
`components
`device can have same
`
`•Kim teaches main and sub-
`
`main device
`activating and deactivating
`
`•Kim teaches sub device
`activate or deactivate sub-device
`Obvious to modify main device to
`
`17A, obvious to do so
`If sub-device not activated in Fig.
`
`OBVIOUS TO MODIFY KIM’S MAIN DEVICE TO ACTIVATE & DEACTIVATE SUB-
`
`DEVICE
`
`
`
`60
`
`e.g., IPR2021-00336, Horenstein Declaration , Ex. 2004 at ¶ 40
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 50-51
`
`own expert:
`And is again contradicted by its
`
`type:
`method not applicable to watch-
`attorney argument that control
`PO again advances unsupported
`
`KIM’S MAIN DEVICE ACTIVATES & DEACTIVATES SUB-DEVICE
`
`
`
`61
`
`Ground 2 –Obvious in view of Kim & Koh
`
`
`
`62
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 59
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 58
`
`KOH
`
`
`
`63
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 58
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 60-61
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 57-58
`
`Koh combined for teaching of detachably coupling headset to watch-type device
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 62
`
`MOTIVATION TO COMBINE KIM + KOH
`
`
`
`64
`
`IPR2021-00335, Petitioner, Paper No. 3 at 60
`
`e.g., IPR2021-00336, Petitioner, Paper No. 3 at 61-62
`
`Kim-Koh combination would retain functionality taught by Kim
`
`PO MISUNDERSTANDS KIM-KOH COMBINATION
`
`
`
`65
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 62
`
`F.3d 1334, 1351 (Fed. Cir. 2020)
`Gen. Elec. Co. v. Raytheon Techs. Corp., 983
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 21-22
`
`motivation”).
`described in the prior art in order to provide
`preferred, or the most desirable, combination
`particular combination” need not “be the
`1200 (Fed. Cir. 2004)(holding that “a
`teach away.”);In re Fulton, 391 F.3d 1195,
`suitable option from which the prior art did not
`motivation be the best option, only that it be a
`(“Our precedent ... does not require that the
`
`e.g., IPR2021-00336, Patent Owner Response, Paper No. 15 at 61-62
`
`PO ADMITS MOTIVATION TO COMBINE KIM AND KOH
`
`
`
`66
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 60-61
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 22
`
`The “complementary surface elements” limitation is met by grooves/protrusions
`
`PO MISUNDERSTANDS KIM-KOH COMBINATION
`
`
`
`67
`
`e.g., IPR2021-00336, Ex. 1012 at ¶ 47
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 23
`
`decoupling headset which would pre-empt PO’s speculative operativity issues
`In addition to ordinary creativity of POSITA (see ground 1), Koh further teaches
`
`PO ADVANCES SIMILAR LEGALLY AND FACTUALLY DEFICIENT
`
`OPERATIVITY ISSUES FOR KIM-KOH COMBINATION
`
`
`
`68
`
`FOR THE ’077 AND ’320 PATENTS
`
`IPR2021-00337, AND -00338
`ARGUMENTS UNIQUE TO
`
`
`
`OLANOINASLNAWNDYUV
`
`
`
`8€£00-GNV‘LEE00-1707d!
`
`
`
`SILNALWdOCE.GNVZZ0.JHLYOS
`
`
`
`69
`
`IPR2021-00338, '320 patent, Ex. 1001at 21:38-22:19
`
`IPR2021-00337, '077 patent, Ex. 1001at 21:38-22:19
`
`’320 Patent
`
`’077 Patent
`
`’077 AND ’320 PATENTS RECITE PLAYING/PAUSING “REMOTE DEVICE”
`
`
`
`70
`
`e.g., IPR2021-00338, Petition, Paper No. 3 at 62-63
`
`KIM + KOH COMBINATION PLAYS/PAUSES A “REMOTE DEVICE”
`
`
`
`71
`
`Ground 3 –Obvious in view of Kim & Lee
`
`
`
`72
`
`e.g., IPR2021-00336, Lee, Ex. 1013 at ¶ 119
`
`e.g., IPR2021-00336, Lee, Ex. 1013 at Fig. 3; see also, Kiaei Declaration, Ex. 1002 at ¶ 237
`
`e.g., IPR2021-00336, Lee, Ex. 1013 at ¶ 79
`
`sensing unit implemented using a Hall sensor e.g., IPR2021-00336, Petition, Paper No. 3 at 65
`
`Lee discloses similar mobile terminal with two bodies in a folding form factor and a
`
`LEE
`
`
`
`73
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 66
`
`e.g., IPR2021-00336, Kiaei Declaration, Ex. 1002 at ¶ 241
`
`to detect coupling status
`
`Kim-Lee combination uses Hall sensor
`
`look to similar art for additional details
`POSITA would have been motivated to
`
`but does not provide details
`
`Kim teaches detecting coupling status
`
`KIM –LEE COMBINATION
`
`
`
`74
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at 1
`
`e.g., IPR2021-00336, Lee, Ex. 1013 at 1
`
`e.g., IPR2021-00336, Petitioners' Reply, Paper No. 18 at 24-25
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 68-69
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 68
`
`e.g., IPR2021-00336, Kiaei Declaration, Ex. 1002 at ¶ 242
`
`LEE SIMILAR TO KIM SO POSITA WOULD HAVE LOOKED TO COMBINE
`
`
`
`75
`
`Ground 4 –Obvious in view of Kim & Jiang
`
`IPR2021-00335 and -00336
`
`
`
`76
`
`e.g., IPR2021-00336, Jiang, Ex. 1014 at 2:3-21
`
`e.g., IPR2021-00336, Jiang, Ex. 1014 at 1
`
`Jiang discloses laser light source for IrDA and benefits thereof
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 69-70
`
`JIANG
`
`
`
`77
`
`e.g., IPR2021-00336, Petition, Paper No. 3 at 70; see also, Jiang, Ex. 1014 at 2:3-21
`
`e.g., IPR2021-00336, Kim, Ex. 1010 at ¶ 81
`
`reduce power consumption
`communication speed and
`VCSEL to increase
`motivated to use Jiang’s
`POSITA would have been
`
`Kim discloses using IrDA
`
`POSITA WOULD HAVE COMBINED KIM AND JIANG
`
`
`
`78
`
`Id. at 1328–29
`
`measurements.
`capable of monitoring TPMs viaconductance
`Rather, HPC contended that Kauffman's sensor alone is
`sensor into Kauffman's system was actually unnecessary.
`In reply, HPC argued that integrating Iwaguchi's TPM
`
`(Fed. Cir. 2019)
`Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1328
`
`Honor.”
`J.A. 649. HPC's counsel answered, “That's right, Your
`a broader teaching is what you presented in the petition?”
`member asked: “So just swapping the sensor rather than
`into Kauffman.” J.A. 648-49. Following up, a Board
`idea of taking [Iwaguchi's] sensor and incorporating it
`combination presented “in the original petition” was “the
`Counsel for HPC confirmed that the obviousness
`
`grounds in their Reply
`Here, Petitioners do no introduce new
`
`obviousness ground
`
`•Reply introduced single-reference
`
`combination
`
`•Petition based on 2-reference obviousness
`address
`ground on reply that the Board declined to
`In Henny Penny, Petitioner introduced new
`
`PO’S RELIANCE ON HENNY PENNYINAPPOSITE
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`Date: April 5, 20222
`
`Respectfully submitted,
`
`/Ali R. Sharifahmadian/
`Ali R. Sharifahmadian, Lead Counsel
`Reg. No. 48,202
`
`1
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of PETITIONERS’ ORAL
`
`HEARING DEMONSTRATIVES was served on April 5, 2022, by filing this
`
`document through the PTAB E2E system as well as by delivery a copy via email to
`
`attorneys of record for Patent Owner at the following addresses:
`
`jedmonds@ip-lit.com
`tarek.fahmi@ascendalaw.com
`sschlather@ip-lit.com)
`
`The parties have agreed to electronic service in this proceeding.
`
`Dated: April 5, 2022
`
`/Ali R. Sharifahmadian/
`Ali R. Sharifahmadian
`
`
`
`2
`
`
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