`
`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 IPR2021-00338
`
`U.S. Patent No. 10,589,320
`
`Petition for Inter Partes Review of
`
`U.S. Patent No. 10,589,320
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`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 ’320 PATENT ............................................................ 3
`A.
`Disclosure of the ’320 patent ................................................................ 3
`B.
`Prosecution History of the ’320 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 1-8 ....................................18
`1.
`Claim 1 ......................................................................................19
`2.
`Claim 2 ......................................................................................50
`3.
`Claim 3 ......................................................................................50
`4.
`Claim 4 ......................................................................................51
`
`V.
`
`i
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`B.
`
`C.
`
`Claim 5 ......................................................................................51
`5.
`Claim 6 ......................................................................................54
`6.
`Claims 7 and 8 ...........................................................................56
`7.
`Ground 2: Kim and Koh Render Obvious Claim 11 ..........................57
`1.
`Claim 11 ....................................................................................57
`Ground 3: Kim and Lee Render Obvious Claims 9-10 and 12-13 .....66
`1.
`Claim 9 ......................................................................................66
`2.
`Claim 10 ....................................................................................69
`3.
`Claim 12 and 13 ........................................................................70
`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 .................................77
`A.
`Real Parties-in-Interest ........................................................................77
`B.
`Related Matters ....................................................................................77
`C.
`Lead and Backup Counsel ...................................................................78
`D.
`Service Information .............................................................................78
`FEES ..............................................................................................................78
`
`IX.
`
`XI.
`
`ii
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`PETITIONERS’ EXHIBIT LIST
`
`DESCRIPTION
`U.S. Patent No. 10,589,320
`Declaration of Sayfe Kiaei, Ph.D.
`Curriculum Vitae of Sayfe Kiaei, Ph.D.
`File History of U.S. Patent No. 10,589,320
`File History of U.S. Provisional Application No. 61/515,752
`Summary of all applications in the ’320 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)
`File History of U.S. Patent No. 10,259,020
`File History of U.S. Patent No. 10,259,021
`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.
`[RESERVED]
`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
`
`iii
`
`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
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`Exhibit No.
`1028
`1029
`
`1030
`
`DESCRIPTION
`
`[RESERVED]
`Bluetooth Audio/Video Remote Control Profile, rev. 13 (April 16,
`2007)
`“Application Data” with respect to U.S. Patent No. 10,589,320
`retrieved from PTO Public PAIR system
`
`iv
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`INTRODUCTION
`I.
`Petitioners Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (“Samsung” or “Petitioners”) request inter partes review of claims 1-13 of U.S.
`
`Patent No. 10,589,320 (“the ’320 patent”).
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`II.
`Petitioners certify that the ’320 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 1-13 (“challenged claims”) of
`
`the ’320 patent and cancellation of these claims under 35 U.S.C. § 311 as
`
`unpatentable.
`
`Statutory Grounds of Challenge
`B.
`Claims 1-13 should be cancelled as unpatentable on the following grounds:
`
`Ground 1: Claims 1-8 are unpatentable under AIA 35 U.S.C. § 103 as being
`
`1
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`obvious over U.S. Patent Application Publication 2010/0227642 (“Kim”) (EX1010);
`
`Ground 2: Claim 11 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 9-10 and 12-13 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).
`
`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
`
`on September 9, 2010. Koh published on October 21, 2008. Lee published on
`
`November 25, 2010. Thus, each of Kim, Koh, and Lee qualify as prior art at least
`
`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
`
`the right to challenge any priority claims(s) made by PO with respect to the ’320
`
`patent in this proceeding or in the district court litigation.
`
`2
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`under AIA 35 U.S.C. § 102(a)(1).3
`
`According to the “Application Data” information on the Public Patent
`
`Application Information Retrieval system, the ’320 patent was examined under the
`
`provisions of the America Invents Act (“AIA”). EX1030, 1. 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 ’320 patent is subject to pre-AIA law.
`
`IV.
`
`OVERVIEW OF THE ’320 PATENT
`A.
`Disclosure of the ’320 patent
`The ’320 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.
`
`According to the ’320 patent, “[c]leaning lenses has long been an issue for the
`
`users of devices employing them” (id., 1:45-46), and “[c]leaning the view screen of
`
`a portable electronic device can be problematic” because “[c]arrying appropriate
`
`3 The exceptions in AIA 35 U.S.C. § 102(b) are inapplicable to Koh. The exceptions
`
`are also inapplicable to Kim when the challenged claims are properly accorded a
`
`priority date no earlier than November 3, 2011.
`
`3
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`cleaning materials is sometimes a problem” (id., 1:66-2:6). Thus, the ’320 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., 2:10-15.
`
`To remedy the perceived problems in the art, the ’320 patent purports to
`
`disclose several embodiments such as, for example, “a method of cleaning a view
`
`screen of an electronic device” (id., 2:19-24), “a cleaning component for use on an
`
`electronic device view” (id., 2:25-29), and “a switching device for use with a
`
`portable electronic device having a view screen” (id., 4:1-16).
`
`While the bulk of the ’320 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., 11:63-66. 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., 16:31-43. Functionality may also include, “pointing devices,”
`
`“remote functionality,” “flash drive,” “earplugs,” “credit card reader, microphone,
`
`and the like.” Id., 16:49-59.
`
`The ’320 patent further discloses a switching device for use in a portable
`4
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`electronic device having a view screen. Id., 17:55-56. 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., 18:8-10. A side view
`
`of the switching device 2401 is shown below:
`
`5
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`EX1001, FIG. 25.
`
`The ’320 patent further discloses that the switching devices have a functionality of
`
`being able to “active[ate] magnetic switches on devices having such switches.” Id.,
`
`20:15-16.
`
`Prosecution History of the ’320 patent
`B.
`The ’320 patent issued on March 17, 2020, from U.S. Application No.
`
`16/698,223 (“the ’223 application”) filed November 27, 2019. The ’223 application
`
`claims priority to International Application No. PCT/US2012/049562 (“the ’562
`
`PCT application”) filed on August 3, 2012, through seven 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 ’320 patent’s
`
`priority chain.
`
`The originally-filed claims of the ’320 patent included the limitation “the
`
`portable switching device is configured to activate, deactivate or send into
`
`6
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`hibernation the portable electronic device,” which was the basis on which the
`
`examiner had allowed two earlier-filed related patents. EX1004, 40; EX1008, 155-
`
`158; EX1009, 152-153. The ’320 patent issued without any rejections. EX1004,
`
`83-85.
`
`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
`
`’320 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
`
`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
`
`4 See footnote 2.
`
`7
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`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.
`
`Provisional Application No. 61/555,310.6 Indeed, PO appears to concede this point.
`
`5 All bold/italics/color emphases are added unless noted otherwise.
`
`6 See footnote 2. Samsung also reserves all rights to raise arguments under 35 U.S.C.
`
`§112 in the district court litigation.
`
`8
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`EX1007, 7. Notably, in identifying the ’320 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 ’320 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
`
`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:
`
`9
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`EX1010, FIG. 1.
`
`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
`
`10
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`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.
`
`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
`11
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`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
`
`“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.
`
`12
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`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.
`
`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
`
`13
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`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
`
`EX1010, FIGS. 15A, 15B.
`
`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
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`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
`
`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:
`
`9 Here Kim also explains that a “bar type mobile terminal [is] described as an
`
`example for the sake of brevity.” EX1010, ¶273.
`
`15
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`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.
`
`Kim further discloses a user controlling various applications of a personal
`
`computer (e.g., a desktop computer, a notebook computer, etc.) by using the sub-
`
`device 300. Id. ¶342. The sub-device establishes a short-range communication path
`
`between the two devices to control various applications of the personal computer.
`
`16
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`Id., ¶343. The user executes music files or video files of the personal computer
`
`through a touch input via the sub-device 300. Id., ¶344, FIG. 31.
`
`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
`
`’320 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
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioners are
`
`unaware of any “prior claim construction determination” related to the ’320 patent.
`
`See 37 C.F.R. § 42.100(b).
`
`The Board only construes the claims when necessary to resolve the underlying
`
`17
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`controversy in the IPR.10 Toyota Motor Corp. v. Cellport Systems, Inc., IPR2015-
`
`00633, Paper No. 11 at 16 (Aug. 14, 2015) (citing Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, given the close correlation
`
`and substantial identity between the prior art references and the challenged claims,
`
`Petitioners believe that no express constructions of the claims are necessary to assess
`
`whether the prior art reads on the challenged claims.
`
`VIII.
`
`DETAILED EXPLANATION OF GROUNDS
`A.
`Ground 1: Kim Renders Obvious Claims 1-8
`Ground 1 sets forth an obviousness ground based on the combination of Kim’s
`
`watch-type main device incorporating features described with respect to other
`
`embodiments.
`
`10 Petitioners intend to argue in the district court that Applicants acted as their own
`
`lexicographer with respect to the term “portable electronic device” to mean “portable
`
`electronic device having a view screen” or a substantially similar construction. The
`
`challenged claims are unpatentable in view of the grounds presented here regardless
`
`of whether the Board adopts such a construction. Petitioners reserve all rights to
`
`raise additional claim construction arguments in other proceedings. For example,
`
`comparing the claims to the accused products may raise controversies that require
`
`construction.
`
`18
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`1.
`
`Claim 1
`a.
`“A system comprising:”
`To the extent the preamble is limiting, Kim discloses this feature. EX1002,
`
`¶¶79-95. For example, Kim discloses a mobile terminal comprising a main device
`
`and sub-device(s) detachably coupled to the main device. EX1010, ¶181, Claim 1;
`
`EX1002, ¶79. Kim’s Figure 7, reproduced below, illustrates this point by reference
`
`to main device 100 and sub-devices 300a to 300n:
`
`EX1010, FIG. 7.
`
`19
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`As discussed above in Section V.A, Kim teaches the main device having
`
`different form factors, including a folder-type main device or a watch-type main
`
`device. EX1010, ¶¶210-222, 255-262, FIGs. 11A-11E, 15A-15D; EX1002, ¶¶80-
`
`83. Kim discloses an embodiment of the watch-type main device having a first body
`
`100a attached to a band part 100c, and a second body 100b attached to the first body
`
`100a. The two bodies 100a and 100b are connected by hinge 100d so that the second
`
`body 100b can be opened or closed in a folding manner. EX1010, ¶256, FIG. 15A.
`
`EX1010, FIG. 15A.
`
`Kim additionally discloses a sub-device detachably coupling to such a watch-
`
`type main device. Id., ¶¶260-261. Specifically, Kim discloses that “[a] method of
`
`coupling the third body (i.e., the sub-device) … to one of the first and second bodies
`
`20
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`in a state that the first and second bodies are coupled will now be described.” Id.,
`
`¶260, see also id. ¶217 (disclosing with respect to the similar folder-type
`
`embodiment of Figure 11B that a “third body may be … coupled to one of the first
`
`and second bodies in a state that the first and second bodes are coupled.”). However,
`
`“for the sake of brevity,” the discussion that immediately follows with respect to
`
`Figure 15B relates to “coupling the sub-device in an overlapping manner to the
`
`second body.” Id., ¶260.
`
`EX1010, FIG. 15B
`
`21
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`Kim teaches that “a coupling member 510 [annotated brown] for fixing the sub-
`
`device is provided on at least one side of the second body, and the sub-device may
`
`be adjusted to the position where the coupling member is formed, and pressed to be
`
`coupled.” Id., ¶261.
`
`Accordingly, a POSITA would have understood Kim to disclose an
`
`embodiment of the mobile terminal in which a watch-type main device comprises a
`
`first body 100a connected to a second body 100b by a hinge 100d so that the first
`
`and second bodies can be opened or closed in a folding manner, and wherein the
`
`mobile terminal further comprises a sub-device 300 detachably coupled to the
`
`second body 100b. EX1002, ¶¶82-85. Below is a schematic representation of such
`
`a mobile terminal. Id., ¶85. For ease of reference, Petitioners refer to the
`
`embodiment below as “Figure A” throughout this Petition.
`
`22
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`Figure A (based on Kim’s disclosure)
`
`A POSITA would have understood that in the embodiment shown above, a
`
`sub-device 300 detachably couples to the main device’s second body 100b through
`
`coupling members 510 (brown). Kim further discloses that coupling members 510
`
`can be recesses/hooks or magnets. EX1010, ¶¶185, 218; EX1002, ¶¶83-86.
`
`To the extent that PO argues that Kim does not disclose the embodiment
`
`shown in Figure A, such an embodiment would have been obvious to a POSITA in
`
`view of Kim’s disclosure. EX1002, ¶¶87-95. A POSITA would have recognized
`
`that the watch-type embodiment shown in Figures 15A is similar and closely related
`
`23
`
`
`
`to the folder-type embodiments shown in Figures 11B. EX1002, ¶¶88-90.
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`EX1010, FIGS. 11B, 15A.
`
`For example, in both embodiments the main device comprises a first body and a
`
`second body connected to each other by a hinge so that the two bodies can open or
`
`close in a folding manner. EX1002, ¶¶88-89. With respect to both embodiments,
`
`Kim discloses using coupling members 510 (which can be magnets) to detachably
`
`couple the sub-device to the main device. EX1010, ¶¶212, 218, 220, 261; EX1002,
`
`24
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`¶¶88-89. Kim also provides similar disclosures regarding the structure and
`
`functionality the folder-type and watch-type embodiments. EX1002, ¶¶88-89.
`
`A POSITA would have recognized that because of the similarities between
`
`Kim’s folder-type and watch-type embodiments, Kim’s disclosure with respect to
`
`Figure 11B could have been adapted and applied to detachably couple sub-device
`
`300 to the second body 100b of the watch-type embodiment in the manner shown in
`
`Figure A. EX1002, ¶90. Doing so would have been obvious to a POSITA because
`
`Kim itself suggests the modification. More particularly, Kim states that the
`
`embodiments it describes “may be used singly and/or by being combined together.”
`
`EX1010, ¶179. Having reviewed the embodiment disclosed in Kim’s Figure 11B, a
`
`POSITA would have recognized the feasibility and desirability of modifying the
`
`embodiment of Kim’s Figure 15A to detachably couple sub-device 300 to the second
`
`body 100b using coupling members 510. EX1002, ¶¶90-95.
`
`The modification would have further been obvious to a POSITA. EX1002,
`
`¶¶90-95. For example, they would have amounted to use of a known technique
`
`(coupling a sub-device to a folder-type main device having first and second bodies
`
`using coupling members) to improve a similar device (a watch-type main device
`
`having two bodies that connect to each other in a folding manner) to obtain
`
`predictable results (detachably couple the sub-device to the main device’s second
`
`body using coupling members). EX1002, ¶¶93-94.
`25
`
`
`
`IPR2021-00338
`U.S. Patent No. 10,589,320
`
`Thus, at least because Kim’s mobile terminal is made up of a main device and
`
`a sub-device, a POSITA would have understood that the mobile terminal is a
`
`“system.” EX1002, ¶¶79, 95. A POSITA would have further understood that one
`
`particular embodiment of such a system disclosed or suggested by Kim is a system
`
`in which a watch-type main device has first and second bodies connected by a hinge
`
`so that the first and second bodies can be opened or closed in a folding manner, with
`
`a sub-device detachably coupled to one of the two bodies of the main device using
`
`coupling members such as magnets or complementary recesses/hooks. EX1002,
`
`¶¶83-84, 95.
`
`b.
`
`“a portable switching device coupled to a portable
`electronic device; wherein:”
`Kim discloses or suggests this feature. EX1002, ¶¶96-101. For example, Kim
`
`discloses detachably coupling a sub-device 300 to a main device 100. EX10