`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`Patent Owner’s Preliminary Response Petition for Inter Partes Review of
`
`U.S. Patent No. 10,259,021
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 6
`
`OVERVIEW OF THE ’021 PATENT .......................................................... 22
`
`Overview of the Presently Relevant Disclosure of the ’021 Patent ............. 22
`
`
`
`
`I.
`
`II.
`
`A.
`
`III. OVERVIEW OF KIM .................................................................................. 29
`
`A.
`
`Overview of the Presently Relevant Disclosure of Kim, ............................. 29
`
`IV.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 43
`
`V.
`
`CLAIM CONSTRUCTION ......................................................................... 43
`
`VI.
`
`SAMSUNG HAS FAILED TO PROVE UNPATENTABILITY OVER
`
`KIM .............................................................................................................. 44
`
`A. 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” .......................................... 44
`
`B. Kim does not disclose or render obvious “a first magnet is fully
`
`disposed within the electronic device” .............................................. 61
`
`C. Kim does not disclose or render obvious that “the electronic device
`
`comprises at least one element selected from the group consisting of
`
`beveled edges, ridges, recessed areas, grooves, slots, indented shapes,
`
`
`
`ii
`
`
`
`bumps, raised shapes, and combinations thereof; configured to
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`
`
`correspond to complimentary surface elements on the switching
`
`device” ............................................................................................... 64
`
`D. Kim does not disclose or render obvious that “the portable switching
`
`device is configured to activate, deactivate or send into hibernation
`
`the portable electronic device.” ......................................................... 66
`
`E.
`
`Kim does not disclose or render obvious “when coupled, the first
`
`case functions to protect the second case.” ........................................ 68
`
`VII. SAMSUNG’S ‘021 PETITION PROVIDES NO EXPLANATION FOR
`
`RECONCILING ITS SIMULTANEOUSLY FILED ‘020 PETITION ...... 69
`
`VIII. THE FINTIV DISCRETIONARY FACTORS ARE UNNECESSARY
`
`TO CONSULT DUE TO THE PETITION’S LACK OF MERIT .............. 70
`
`IX.
`
`THE BOARD SHOULD TERMINATE THIS IPR BECAUSE IT
`
`FAILS UNDER THE APPOINTMENTS AND DUE PROCESS
`
`CLAUSES. ................................................................................................... 70
`
`X.
`
`CONCLUSION ............................................................................................ 73
`
`CERTIFICATE OF COMPLIANCE ....................................................................... 75
`
`CERTIFICATE OF SERVICE ................................................................................ 76
`
`
`
`
`
`
`
`iii
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020) ........ 69
`
`Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) ................. 70
`
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) ............................... 70
`
`Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019),
`
`cert denied, 141 S.Ct. 132 (2020) ....................................................................... 71
`
`Doolin Sec. Sav. Bank, F.S.B. v. FDIC, 53 F.3d 1395 (4th Cir. 1995) ................... 71
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375
`
`(Fed. Cir. 2015) ................................................................................................... 69
`
`Edmond v. United States, 520 U.S. 651 (1997) ....................................................... 70
`
`Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334 (Fed. Cir. 2020) ............. 69
`
`Impax Labs., Inc. v. Aventis Pharms., Inc., 468 F.3d 1366 (Fed. Cir. 2006) .......... 50
`
`In re Gleave, 560 F. 3d 1331 (Fed. Cir. 2009) ........................................................ 50
`
`In re Longi, 759 F.2d 887 (Fed. Cir. 1985) ............................................................... 5
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ...................... 69
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ......................... 42
`
`Tumey v. Ohio, 273 U.S. 510 (1927) ....................................................................... 71
`
`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018) .................................. 69
`
`
`
`iv
`
`
`
`
`Statutes
`Statutes
`
`IPR2021-00336
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`US. Patent No. 10,259,021
`
`
`35 U.S.C. § 314(a) ................................................................................................... 69
`35 U.S.C. § 314(a) ................................................................................................... 69
`
`5 U.S.C. § 556 .......................................................................................................... 70
`5 U.S.C. § 556 .......................................................................................................... 70
`
`5 U.S.C. § 7521(a) ................................................................................................... 71
`5 U.S.C. § 7521(a) ................................................................................................... 71
`
`
`
`
`
`v
`
`
`
` III
`I.
`
`INTRODUCTION
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`The Petition by Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc. (“Samsung” or “Petitioner”) fails to establish a reasonable likelihood of
`
`rendering obvious claim 1 of challenged U.S. Patent No. 10,259,021 (the “‘021
`
`patent”), and thus the Petition fails to establish a reasonable likelihood of success1 on
`
`any challenged grounds.2 The Petition challenges claim 1 (and thus all other claims,
`
`
`1 See In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985).
`
`2 Each of challenged claims 2-19 depend from claim 1. Ground 1 seeks cancellation
`
`of claim 1 and various dependent claims based upon the disclosure of Kim. Ground
`
`2 seeks cancellation of claim 10 based upon the same cited disclosure of Kim plus
`
`added disclosure from another reference to meet the additional limitations of claim
`
`10. Ground 2 seeks cancellation of claims 16 and 17 based upon the same cited
`
`disclosure of Kim plus added disclosure from another reference to meet the
`
`additional limitations of claims 16 and 17. Ground 4 seeks cancellation of claim 18
`
`based upon the same cited disclosure of Kim plus added disclosure from another
`
`reference to meet the additional limitations of claim 18. As noted above, because
`
`the Petition lacks a reasonable likelihood of success for proving obviousness of
`
`claim 1, it is sufficient for purposes of this Preliminary Response to address the
`
`
`
`
`
`6
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`which each depend from claim 1) based upon U.S. Published Patent Application No.
`
`2010/0227642 to Kim (“Kim”) allegedly rendering it obvious. Because the Petition lacks
`
`a reasonable likelihood of success for establishing obviousness of claim 1, it is sufficient
`
`for purposes of this Preliminary Response to address only Samsung’s challenge to claim
`
`1, and further to address only some of the most glaring shortcomings in Samsung’s claim
`
`1 arguments.
`
`The crux of Samsung’s argument is a fictional watch embodiment, based on
`
`hindsight from the ‘021 patent, which Samsung alleges would have been an obvious
`
`modification of Kim’s FIG. 15A watch embodiment in view of Kim’s FIG. 11B phone
`
`embodiment. The actual embodiment disclosed by Kim is at left, and Samsung’s
`
`fictional FIG. A embodiment is at right:
`
`
`challenge to claim 1 only. Gwee’s silence at this preliminary stage on unnecessary
`
`issues raised by Grounds 1-4 is not a concession that any assertions in the Petition
`
`are correct. Gwee reserves the right to address issues as they become relevant or
`
`otherwise appropriate to address in the future.
`
`
`
`7
`
`
`
` III
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`
`
`There are numerous problems with the additions and modifications that must be made to
`
`Kim’s disclosed embodiments to arrive at Samsung’s fictional FIG. A embodiment. The
`
`end result is that a person of ordinary skill in the art at the time of the invention of
`
`the ’021 patent (“POSITA”) would not have reason or motivation to make these
`
`revisions; hence, Samsung fails to demonstrate that claim 1 is obvious in view of Kim.
`
`First, Kim itself rejects the modifications proposed by Samsung. Stripped of any
`
`rhetoric, Samsung’s obviousness argument proposes the
`
`addition of a “sub-device” 300 to the hinged flip-top
`
`portion of the watch embodiment shown in Kim’s FIG.
`
`15A. But Kim already teaches a watch embodiment that
`
`includes a sub-device 300 and shows same in FIG. 15B
`
`(reproduced at
`
`left). Not surprisingly,
`
`the actual
`
`
`
`8
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`embodiment taught by Kim bears no relation to the fictional FIG. A embodiment
`
`proposed by Samsung. Instead of a sub-device 300 coupled to the hinged flip-top shown
`
`in Kim’s FIG. 15A, Kim teaches a sub-device 300 coupled to the wrist-worn portion of
`
`the watch embodiment with the hinged flip-top shown in FIG. 15A completely removed.
`
`This makes sense. With sub-device 300 in place, there is no need for the display on the
`
`hinged flip-top and that hinged flip-top could never be closed with the sub-device 300 in
`
`place.
`
`Kim even makes the point that the hinged flip-top can be separated from the wrist-
`
`worn portion of the watch embodiment, Ex. 1010 at [0259], presumably for this very
`
`reason. Indeed, Kim actually requires that the hinge structure “must” allow such
`
`“separating,” Ex. 1010, [0258], and it is not only the FIG. 15B embodiment that
`
`demonstrates why. In FIGs. 15C and 15D, Kim illustrates further arrangements in which
`
`the flip-top is removed from the wrist-worn portion of the watch embodiment to
`
`accommodate other kinds of sub-devices. In particular, FIG. 15C shows a slidable sub-
`
`device fitting over the display on the wrist-worn portion and FIG. 15D shows a sub-
`
`device that can be fitted into grooves at the edges thereof. Id. at [0262]. Retaining the
`
`hinged flip-top portion of the watch embodiment in either configuration would impede
`
`(if not prevent) use of the sub-devices shown in Figures 15C and 15D, and the same is
`
`true for the configuration shown in FIG. 15B.
`
`
`
`9
`
`
`
` III
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`
`
`Samsung’s arguments ignore these realities and instead propose a modification that is
`
`nowhere contemplated by Kim.
`
`Second, even if a POSITA might hypothetically modify Kim’s FIG. 15A watch
`
`type main device in view of the FIG. 11B bar (i.e., mobile phone) type main device
`
`(which is not the case here), Kim lacks the disclosure, enablement, and any motivation
`
`for a POSITA to do so. First, the watch embodiment sub-device 100a/100b that Samsung
`
`seeks to insert into the folding watch embodiment is not disclosed or suggested by FIG.
`
`11B, or by anything else in Kim, and it would frustrate and contravene the purpose of the
`
`folding watch embodiment at FIG. 15A by preventing the watch from folding shut as
`
`intended. A side view of Samsung’s fictional FIG. A is depicted in the following
`
`diagram:
`
`
`
`10
`
`
`
` III
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`
`
`As can be seen, top 100b would not close onto main device base 100a and would not
`
`protect fictionally inserted sub-device 300. In fact, closing 100b on top of 100a would
`
`either dislodge Samsung’s asserted magnetic coupling of sub-device 300 and risk its
`
`damage from dropping or force apart the hinged closure mechanism 100d, potentially
`
`damaging it or rendering it inoperative.
`
`This dislodging of sub-device 300 from a pinching of the hinge is incompatible
`
`with, and indeed contradicts, Kim’s requirement that the magnets “fix the sub-devices
`
`such that the sub-devices are not moved, shattered or released after being coupled at
`
`accurate positions.” Ex. 1010, [0185]. Moreover, Kim has no disclosure of any means
`
`of securing the cover 100b of the watch type embodiment to the base 100a, and with a
`
`sub-device 300 magnetically coupled to the inside to the cover, it would be increasingly
`
`difficult and also not suggested by Kim to secure the sub-device 300 to base 100a while
`
`also being magnetically coupled to the inside of cover 100b.
`
`Third, Kim’s Fig. 15A watch-type embodiment teaches placing cover 100b with
`
`
`
`11
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`display 251 in an overlaid position relative to main body 100a with display 151, when
`
`the watch is closed. Ex. 1010, Fig. 15A. The purpose of this is to look through TOLED
`
`screen 251 to see underlying LCD screen 151, when the watch is closed. If hinge 100
`
`was enlarged to provide a gap for sub-device 300 to fit between cover 100b and main
`
`body 100a, then, when sub-device 300 was not present in the gap, display 251 of cover
`
`100b would be situated at an angle verses display 151 of main body 100a, when the watch
`
`is closed. For a TOLED screen 251 to work properly relative to overlaying screen 151,
`
`it would need to adjacently overlap screen 151 without such a significant gap or angle.
`
`A TOLED display 251 with a significant gap or angle with respect to display 151 would
`
`not properly align the displays, for example, with respect to aligning touch areas, graphics
`
`and text on TOLED display 251 with overlaid columns, rows, graphics or text on display
`
`151. This gap would also be a problem because the alignment of the elements on the two
`
`displays would vary depending on the angle of the viewer. Thus a POSITA would not
`
`be motivated to make such a modification in direct contravention of the main TOLED
`
`feature of the overlaid displays. This problem is exemplified by the following:
`
`
`
`12
`
`
`
` III
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`
`
`Fourth, Kim teaches that top 100b in FIG. 15A is a “sub-device.” Kim has no
`
`teaching, enablement or reasonable expectation of success for having, using or
`
`controlling three displays, or for having, using or controlling two sub-devices
`
`simultaneously, as would be required by Samsung’s fictional FIG. A embodiment.
`
`Fifth, even if a POSITA might, using hindsight, arguably be able to further modify
`
`Kim’s disclosure to produce to a fictional Samsung FIG. A embodiment that might be
`
`able to close, the information displayed on the fictionally inserted sub-device 300 would
`
`be backward when fictionally inserted sub-device 300 was sandwiched on top of base
`
`main device 100a and one was looking down at fictionally inserted sub-device 300 atop
`
`base main device 100a, as exemplified by the following diagram:
`
`
`
`13
`
`
`
` III
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`
`
`Display 251 in FIG. 15A is a TOLED display, i.e., it is transparent. A wearer is expected
`
`to be able to look through display 251 when it is closed to view display 151 of the watch.
`
`But having sub-device 300 inserted therebetween would prevent such viewing. Further,
`
`as depicted above, the information displayed on sub-device 300 would not only be visible
`
`(and blocking that displayed on display 151 below it), it would be upside down and
`
`backwards. It is hard to imagine why a POSITA would be motivated to produce such an
`
`unusable device.
`
`Sixth, Samsung’s fictional embodiment is highly problematic, and, in fact, a
`
`POSITA would not have had a reasonable expectation of making, much less be
`
`motivated to make, Samsung’s fictional modifications, including because (a) Kim has no
`
`teaching of a watch type embodiment with both a cover 100b and an additional sub-
`
`device 300, (b) Kim has no teaching of putting a sub-device 300 on the face of a TOLED
`
`screen of a folder type or watch type main device (wherein the purpose of the TOLED
`
`
`
`14
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`display top of the folding main device structure is to look through the top 100b to see the
`
`LED screen of base 100a, and wherein the addition of a sub-device 300 would obscure
`
`and block the benefits to be obtained from having the TOLED display), and (c) because
`
`the watch embodiment would not shut as noted above. There is also no teaching in Kim
`
`and no reasonable expectation of success for the control function operating with multiple
`
`sub-devices.
`
`On this issue, the teachings of FIG. 5, which Samsung purports to rely upon, weigh
`
`heavily against the desirability or motivation for Samsung’s fictional modification.
`
`Relative to FIG. 5, Kim describes a method of controlling information displayed on
`
`a different display unit than the second display unit 156 (or LCD) in case of a touch
`
`to the first TOLED display unit 155 externally exposed in an overlapped
`
`configuration. Ex. 1010, [0163]. With the folder type embodiment of FIG. 5, the
`
`desired configuration is to look through the TOLED lid and use the touch screen TOLED
`
`display of the lid in conjunction with the LCD display of the base unit of the main device.
`
`To the extent any teachings from non-watch type devices might inform modifications to
`
`the watch type device, FIG. 5 would be the most pertinent, and the operation of the FIG.
`
`5 embodiment, like the FIG. 15A embodiment that Samsung proposes to modify, would
`
`be frustrated by Samsung’s proposed sandwiching of a sub-device 300 between the
`
`folded halves of the main device 100a/b.
`
`Samsung’s uses unsound logic for modifying the FIG. 15A watch embodiment
`
`
`
`15
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`based upon the FIG. 11B because the FIG. 15A watch embodiment is allegedly so similar
`
`to the FIG. 5 folder type embodiment. As noted above, to the extent that the FIG. 5 folder
`
`type embodiment would motivate a POSITA to do anything with respect to the FIG. 15A
`
`watch embodiment, the motivation would be to use only the TOLED lid 100b of the main
`
`device in conjunction with the LCD base 100a of the main device to make use of the
`
`capabilities achievable from looking through the TOLED lid display to see the
`
`underlying LCD base display.
`
`Seventh, Samsung’s reliance upon the FIG. 11B device as somehow suggesting or
`
`providing a motivation to modify the very different FIG. 15A watch type device is
`
`unpersuasive. For example, the sub-device 300 of FIG. 11B only has a tiny, one or two
`
`line display:
`
`Such a “small display (e.g., one-line display, two-line display)”, also depicted at FIG. 9D:
`
`
`
`16
`
`
`
`
`
` III
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`
`
`and in other figures as well, is “coupled at one side of the touchpad to display simple
`
`information (e.g., a control state, a current state, a connection state with the main device),”
`
`Ex. 1010, [0201], and would be totally unusable if sub-device 300 was sized down to fit
`
`the FIG. 15A-D watch type embodiments.
`
`
`
`Furthermore, in the FIG. 11 embodiments, underlying the flip-top is a keyboard,
`
`not another display as in the watch-type embodiments. Hence, there is no need to look
`
`through the flip-top and so the inclusion of a sub-device does not introduce the information
`
`display complications discussed above with respect to a watch-type embodiment.
`
`Eighth, if a POSITA was to gain any possible guidance from Kim even in the
`
`general direction of invention recited in claim 1 of the ‘021 patent, the relevant teachings
`
`would come from FIG. 15B, and if the bar type embodiments are even relevant to such
`
`an exercise (which they are not), the relevant teaching would come from FIG. 5. The
`
`teachings from FIGs. 15B and 5 illustrate the lack of motivation to combine and lack of
`
`reasonable expectation of success.
`
`
`
`17
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`Samsung’s challenge to claim 1 also suffers from other flawed reasoning that fails
`
` III
`
`to establish a reasonable likelihood of success on any challenged grounds.
`
`First, Samsung fails to specify any disclosure in Kim of the watch-shaped main
`
`device 100a/100b in FIG. 15A (relied upon by Samsung to be the “switching device” of
`
`claim 1) being configured to activate, deactivate or hibernate a sub-device 300 imported
`
`by Samsung from FIG. 15B (and relied upon by Samsung to be the “electronic device”
`
`of claim 1). On this issue, Samsung relies upon alleged activation of a display 251 of
`
`sub-device 300 when this alleged sub-device is fictionally coupled to the watch type main
`
`device 100a/100b of FIG. 15A.3
`
`Second, for its hindsight reconstruction, Samsung argues, unpersuasively, that
`
`it would be obvious to “fully dispose” magnets on the surface of a Kim sub-device into
`
`the sub-device. Kim teaches that magnets are “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. Ex. 1010, [0203].
`
`This is illustrated in FIG. 10A. Consistent with magnets being surface mounted as
`
`
`3 Samsung also relies upon the sub-device turning on or off the main device, but here
`
`Samsung is arguing, contrary to claim 1, that its asserted electronic device is
`
`activating or deactivating its asserted switching device. This is backwards for ‘021
`
`claim 1 and does not meet the claim limitations.
`
`
`
`18
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`described and depicted in the figures, Kim also refers to such a magnet as an
`
`“auxiliary member.” Ex. 1010, [0185].
`
`Samsung’s reasons that a POSITA would be motivated to modify Kim’s disclosed
`
`devices to fully dispose magnets therein are insufficient and unpersuasive. In fact, a
`
`POSITA would be motivated to keep the magnets attached to the surface where Kim
`
`places them.
`
`First, the surface mounted magnets of Kim provide needed spacing between the
`
`display screen of the main device and the display screen of the overlaid sub-device. This
`
`avoids the overlaid displays from scratching or impacting/damaging each other,
`
`especially when foreign debris such as sand or dust gets lodged between the display
`
`screens. Such scratching is especially problematic with the requirement of claim 1
`
`that first case protect the second case for a view screen against a view screen.
`
`Further, with portable electronic devices that routinely take abuse through
`
`ordinary use and mishaps such as accidental dropping, one would want Kim’s
`
`embedded magnets to be strong enough to keep a sub-device 300 magnetically
`
`coupled during a mishap. Because Kim’s magnets would have such strong
`
`attraction forces, when sub-device 300 is placed on cover 100b as shown by
`
`Samsung’s fictitious FIG. A, there would be a powerful snapping together effect
`
`between sub-device 300 and cover 100b as sub-device 300 comes closer to 100b
`
`and the magnetic attraction force between the embedded magnets becomes
`
`
`
`19
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`exponentially stronger. This snapping would be undesirable because the two
`
`screens would potentially crack or become damaged. Kim minimizes this problem
`
`by locating magnets 510 on the exterior of the sub-device 300 and main device 100
`
`as shown in FIG. 10A. This is illustrated by the following:
`
`
`
`A POSITA would not want Kim’s delicate display screens feeling the direct impact
`
`of snapping together embedded magnets to securely and magnetically couple to
`
`display screens together — rather a POSITA would want the exterior magnets to
`
`receive the impact, as Kim designed. Further, with the embedded magnets as
`
`Samsung suggests, two delicate view screens would slam into each other further
`
`resulting a first case that would not protect a second case as required by Claim 1.
`
`
`
`20
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`Second, the modification would require embedding significantly larger
`
` III
`
`magnets within the already small and thin sub-device 300, which has little enough
`
`room for a display already.
`
`Third, Samsung fails to point to the complementary structures required by claim
`
`1. Rather, Samsung points only to a “hook (not shown)” and a presumed sort of
`
`receptacle for such a hook, also not shown. Further, for its hindsight re-
`
`construction, Samsung must use both magnets and hooks to secure sub-device 300
`
`to top main device 100b. However, Kim does not teach using hooks for its watch
`
`type embodiment; Kim teaches hooks and magnets as alternative means to secure
`
`a sub-device to a main device. There would be no motivation for a POSITA to use
`
`both hooks and magnets, especially to secure the small, lightweight sub-device 300
`
`that Samsung fictionally seeks to attach to the top of the watch type main device
`
`100b. As noted below, if hooks were to secure fictionally attached sub-device 300
`
`to cover 100b of the FIG. 15A watch embodiment, then the magnetic coupling
`
`required by claim 1 would not be met because a POSITA would have no reason to
`
`use both magnets and hooks, which are presented as alternate means for securing
`
`the devices.
`
`Fundamentally, Samsung’s analysis uses hindsight to try to re-engineer a
`
`fictional, non-enabled, non-functional new watch type device system at odds with
`
`
`
`21
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`the teachings of Kim for the sole purpose of matching Kim with the elements of
`
`claim 1, without any analysis or persuasive reasoning that Kim renders claim 1
`
`obvious as a whole.
`
`Samsung’s Petition and the hindsight theories espoused therein have numerous
`
`other fatal flaws that add to the lack of reasonable likelihood of success for proving
`
`obviousness of claim 1 or any other claims, but it is sufficient for purposes of this
`
`Preliminary Response to address the limited issues addressed herein, since no more is
`
`needed at this time to show a lack of reasonable likelihood of success sufficient to justify
`
`denying institution.
`
`II.
`
`OVERVIEW OF THE ’021 PATENT
`
`A.
`
`Overview of the Presently Relevant Disclosure of the ’021
`
`Patent
`
`The president and primary force behind GUI Global Products, Ltd., D/B/A
`
`Gwee (“Gwee”) is businessman and prolific inventor Walter (“Tad”) Mayfield. Mr.
`
`Mayfield and his ‘021 co-inventor, Dan Valdez, took portable magnetic switching
`
`in new directions and to new levels, as evidenced by the exemplary portable4
`
`
`4 The ‘021 claims are directed to systems comprising portable switching devices and
`
`portable electronic devices, and the ‘021 specification describes, inter alia, systems
`
`
`
`
`
`22
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`magnetic switching devices in FIGs. 1-26 of the ‘021 patent. In certain preferred
`
`embodiments such switching devices may be cleaning devices, but they need not
`
`be cleaning devices. Ex. 1001/Abstract (“The cleaning devices may have secondary
`
`applications such as … activating or deactivating a device having a magnetic switch
`
`… They may also be manufactured without a cleaning component for use with the
`
`secondary applications.”); Ex. 1001/21:34-365 (“Where such a secondary use has
`
`been disclosed, then such devices, with or without the cleaning material are also
`
`within the scope of the application.”). The disclosed switching devices have
`
`functions such as activating, deactivating and hibernating electronic devices such
`
`as cell phones, smartphones, tablet computers and laptop computers. For example,
`
`the magnetic switching device 2401 in FIGs. 24 and 25,
`
`
`comprising portable switching devices and portable electronic devices. Whether
`
`“portable” is expressly stated, references herein to switching devices and electronic
`
`devices are to portable ones.
`
`5 Ex. 1001/21:34-36 refers to column 21, lines 34-36 of the ‘021 patent.
`
`
`
`23
`
`
`
` III
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`,
`
`comprising magnets 2504 activates, deactivates or hibernates tablet computer 2400.
`
`Ex. 1001/18:5-9. Another example is the doll-shaped switching device in FIG. 26,
`
`which is depicted as a switching device for a version of the iPad. Ex. 1001/5:53-55.
`
`
`
`Aspects of disclosed embodiments comprise a switching device selectively
`
`coupled to the front of the portable electronic device. Ex. 1001/18:7-11 (“switching
`
`device (2401) is selectively coupled to the front of the portable electronic device
`
`2402 outside of the view screen 2403.”).
`
`Aspects of disclosed embodiments comprise a switching device having a
`
`magnet element to activate or deactivate a magnetic switch. Ex. 1001/3:1-3. See,
`
`e.g., a round switching device 100 comprising magnet 102 (Figs 1A and 1B); a
`
`square switching device 200 comprising magnet 202 in FIGs. 2A-2C; a switching
`
`
`
`24
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`device 303 comprising a magnetic substrate (FIG. 3); a switching device 402 with a
`
`magnet (FIG. 4); a switching device 503/503a with magnets 506 (FIGs. 5A, 5B).
`
`Aspects of disclosed embodiments further comprise a case for an electronic
`
`device having a magnetic switch, and in the area of the case over the magnetic
`
`switch, a recessed area functions to facilitate a switching device having a magnet
`
`moving past the switch in order to activate or deactivate the switch. Ex. 1001/3:15-
`
`20. Examples of depicted recesses include indention 302 in FIG. 3:
`
`
`
`Ex. 1001/8:58-64, and recess 904 in FIG. 9.
`
`,
`
`
`
`25
`
`
`
` III
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
`
`
`
`21/011:40-51. Aspects of disclosed embodiments further comprise switching
`
`devices with beveled edges. Ex. 1001/18:63-67. Aspects of disclosed embodiments
`
`further comprise switching devices that may be received into a groove, slot, or other
`
`indented geometrical shape to lower the profile of the switching device to facilitate
`
`closing a cover or prevent snagging a cleaning component. Ex. 1001/8:51-55; 19:9-
`
`16.
`
`Aspects of disclosed embodiments further comprise a switching device
`
`including at least one ferromagnetic or ferrimagnetic material within, wherein the
`
`ferromagnetic or ferrimagnetic material may function to actuate a power switch or
`
`sensor that is capable of being actuated using a magnet. Ex. 1001/8:29-34; 3:54-60.
`
`Aspects of disclosed embodiments further comprise a switching device that
`
`activates or deactivates an electronic device by employing a magnet, the switching
`
`device having a body surrounding the magnet and at least one surface non-abrasive
`
`to the electronic device. Ex. 1001/4:4-11.
`
`Aspects of disclosed embodiments further comprise methods of conserving
`
`
`
`26
`
`
`
`IPR2021-00336
`U.S. Patent No. 10,259,021
`
` III
`power when using a portable electronic device having a view screen and a switch
`
`that can activated or de-activated by introducing a magnetic field to the switch,
`
`wherein the switching device has at least one magnet and at least one surface that
`
`is non-abrasive to the surface of the view screen, wherein the method includes using
`
`the switching device to turn the portable electronic device off when the portable
`
`electronic device is not in actual use and then on when the portable electronic device
`
`is needed. Ex. 1001/4:12-24.
`
`Aspects of disclosed embodiments further comprise a switching device
`
`putting a tablet into hibernation mode with a single touch to the switching device
`
`as compared to the multiple touches required to do the same thing using the touch
`
`pad of the tablet. Ex. 1001/20:18-23.
`
`Aspects of disclosed embodiments further comprise a case for an electronic
`
`device having a magnetic switch, and in the area of the case over the magnetic
`
`switch, a reces
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
