Trials@uspto.gov
`571-272-7822
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`Paper 11
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`Entered: July 2, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00338
`Patent 10,589,320 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571-272-7822
`
`Paper 11
`
`
`
`
`Entered: July 2, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00338
`Patent 10,589,320 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2021-00338
`Patent 10,589,320 B1
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`I. INTRODUCTION
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively “Petitioner”) filed a Petition for inter partes review of
`claims 1–13 of U.S. Patent No. 10,589,320 B1 (Ex. 1001, “the ’320 patent”).
`Paper 3 (“Pet.”). GUI Global Products, Ltd., d/b/a Gwee (“Patent Owner”)
`filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Institution of an
`inter partes review is authorized by statute when “the information presented
`in the petition . . . and any response . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration
`of the Petition, the Preliminary Response, and the evidence of record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing with respect to the unpatentability of at least one claim of the ’320
`patent. Accordingly, for the reasons that follow, we institute an inter partes
`review of claims 1–13 of the ’320 patent.
`
`A. Related Matters
`The parties indicate this Petition is related to GUI Global Prods, Ltd.
`d/b/a Gwee v. Samsung Elecs. Co., No. 4:20-cv-02624 (E.D. Tex.) and GUI
`Global Prods, Ltd. d/b/a Gwee v. Apple, Inc., No. 4:20-cv-02652 (S.D.
`Tex.). Pet. 76–77; Paper 5, 2.1
`
`B. The ’320 Patent
`The Specification of the ’320 patent describes how an apparatus may
`be used for cleaning view screens of electrical devices. See Ex. 1001, 2:19–
`
`
`1 Although not referred to by the parties, the ’320 patent is also the subject
`of a petition filed by Apple, Inc. in IPR2021-00473.
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`24. The ’320 patent aims to provide appropriate cleaning materials where
`the cleaning component can be carried on an electronic device case. Id. at
`1:56–2:15.
`In one embodiment, a cleaning component for cleaning a view screen
`of an electronic device is coupled to a first case of the electronic device
`using magnetic attractive force. Id. at 5:64–6:2, Fig. 1B. Figure 1B is
`illustrative and is reproduced below.
`
`
`Figure 1B, above, shows a side view of a cleaning component. Ex. 1001,
`6:29–30. Cleaning component 100 includes ferromagnetic or ferrimagnetic
`substrate 102 covered by cleaning material 101, such as a fabric or a cloth.
`Id. at 6:20–49.
`In another embodiment, a second case receives the cleaning
`component and also “functions to protect the primary case.” Ex. 1001, 6:2–
`7. Figure 3 is illustrative and is reproduced below.
`
`
`Figure 3, above, shows a computer case configured to receive a cleaning
`component. Ex. 1001, 4:45–46. Laptop 300 has rectangular indentation 302
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`3
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`dimensioned for receiving cleaning component 303 which has a magnet. Id.
`at 8:62–9:2.
`Figure 5A is also illustrative and is reproduced below.
`
`
`Figure 5A, above, shows “a lateral type phone case configured to receive a
`cleaning component.” Ex. 1001, 4:49–50. Case 500 includes body 504
`“which functions to hold a smart phone” and a lid having tip 501, side 502,
`hinge 507, and cleaning component 503. Id. at 10:13–18.
`
`A cleaning component may be secured and adhered to a case utilizing
`“dimensional stability to increase the security with which the clean
`components are adhered to the case.” Ex. 1001, 11:44–49; Fig. 9. Figure 9
`is illustrative and is reproduced below.
`
`
`Figure 9, above, shows a cleaning component “employing a structural
`feature to enhance adhesion.” Ex. 1001, 4:60–61. Device 901 has raised
`section 902 which is configured to fit within recess 904 of cleaning
`component 903. Id. at 11:49–51.
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`In another embodiment, the cleaning component has a magnetic
`element that activates or deactivates a magnetic switch. Ex. 1001, 3:6–8.
`The ’320 patent describes “activating or deactivating a device having a
`magnetic switch” as a “secondary application[]” and that “cleaning devices”
`“may also be manufactured without a cleaning component for use with the
`secondary application.” Id., code (57). Thus, a device “may or may not
`include cleaning capabilities but will include a rare earth magnet or
`magnets” for “additional functionality.” Id. at 16:41–45. Figure 24 is
`illustrative and is reproduced below.
`
`
`Figure 24, above, shows a tablet computer having a switching device. Ex.
`1001, 5:53–54. Tablet computer 2400 has switching device 2401 that “is
`selectively coupled to the front of the portable electronic device 2402
`outside of the view screen 2403.” Id. at 18:6–10. A “magnetic switch is
`normally disposed with the portable electronic device but is shown [in
`Figure 24] for illustration purposes (2404).” Id. at 18:10–12. The ’320
`patent describes that the switching component “may be picked up” and
`switching device “is either applied directly to the magnetic switch or applied
`to either side of the switch and then slid past it to activate or deactivate the
`portable electronic device.” Id. at 18:13–18.
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`Figure 25, reproduced below, shows a side view of the switching
`
`device in Figure 24. Ex. 1001, 5:55–56, 18:19–20.
`
`
`Figure 25, above, shows switching device 2401 having bottom surface 2501,
`top surface 2502, and ferromagnetic or ferrimagnetic substrate 2504
`disposed therebetween. Ex. 1001, 18:19–21, 23–25. Tab 2503 “on the top
`surface” facilitates manipulation of switching device 2401. Id. at 18:22–23.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–13 of the ’320 patent. Claim 1 is an
`independent claim, and claims 2–13 depend, directly or indirectly, from
`claim 1. Claim 1 is reproduced below, with bracketed letters added to the
`limitations for reference purposes.
`1. A system comprising:
`[a] a portable switching device coupled to a portable
`electronic device;
`wherein:
`[b] the switching device and the electronic device are
`configured to selectively couple to each other employing
`magnetic force;
`[c] the switching device comprises a first case;
`[d] the electronic device comprises a second case and an
`electronic circuit that is responsive to the switching
`device;
`[e] a first magnet is fully disposed within the electronic
`device;
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`[f] the electronic device comprises at least one element
`selected from the group consisting of beveled edges,
`ridges, recessed areas, grooves, slots, indented shapes,
`bumps, raised shapes, and combinations thereof;
`configured to correspond to complementary2 surface
`elements on the switching device;
`[g] wherein the second case is decoupled from the first
`case by overcoming magnetic force the portable
`switching device is configured to activate, deactivate, or
`send into hibernation the portable electronic device;
`[h] the electronic device plays or pauses a remote device;
`[i] the switching device includes a lid and hinge attaching
`the lid to the switching device;
`[j] the lid is recessed to configure to the electronic
`device; and
`[k] when coupled, the first case functions to protect the
`second case.
`Ex. 1001, 21:38–22:18.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–13 are unpatentable based on the
`following grounds (Pet. 1–2):
`
`Claim(s)
`Challenged
`
`1–8
`
`35 U.S.C §
`103(a)3
`
`Reference(s)/Basis
`Kim4
`
`
`2 Correction provided in July 21, 2020 Certification of Correction.
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’320 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of 35 U.S.C. § 103.
`4 U.S. Pat. Appl. Pub. No. US 2010/0227642 A1, published September 9,
`2010 (Ex. 1010, “Kim”).
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`Claim(s)
`Challenged
`
`11
`9, 10, 12, 13
`
`
`
`
`35 U.S.C §
`103(a)
`103(a)
`
`Reference(s)/Basis
`Kim, Koh5,
`Kim, Lee6
`
`II. DISCUSSION
`A. Level of Ordinary Skill in the Art
`Relying on the testimony of Dr. Sayfe Kiaei, Petitioner proposes that
`a person of ordinary skill in the art at the time of the ’320 patent “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,” and a person of skill could have obtained similar knowledge and
`experience through other means. Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent
`Owner states that this assessment “is largely acceptable for purposes of the
`Board making in initial institution decision.” Prelim. Resp. 33.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). The level of ordinary skill in the art is also reflected by
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001). To the extent necessary, and for purposes of this Decision, we
`
`
`5 Korean Pat. Pub. No. 10-2008-0093178, published October 21, 2008 (Ex.
`1012, “Koh”).
`6 U.S. Pat. Appl. Pub. No. US 2010/0298032 A1, published Nov. 25, 2010
`(Ex. 1013, “Lee”).
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`adopt the assessment offered by Petitioner as it is consistent with the ’320
`patent and the asserted prior art.7
`
`Claim Construction
`B.
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). Under the
`principles set forth by our reviewing court, the “words of a claim ‘are
`generally given their ordinary and customary meaning,’” as would be
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
`(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996)). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
`According to Petitioner, “given the close correlation and substantial
`identity between the prior art references and the challenged claims,
`Petitioner[] believe[s] that no express constructions of the claims are
`necessary.” Pet. 18. Patent Owner agrees, stating that “no express
`constructions of the claim terms are necessary” at this stage of the
`proceeding. Prelim. Resp. 33–34.
`
`
`7 The parties are encouraged to address the impact, if any, of differences in
`the level of qualifications on the obviousness analysis in any subsequent
`briefing.
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`9
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`For purposes of this Decision, we need not expressly construe any
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`Principles of Law
`C.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness8. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`D. Asserted Obviousness of Claims 1–8 over Kim
`Petitioner contends that claims 1–8 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Kim. Pet. 18–57. In support, Petitioner also relies
`upon the Dr. Sayfe Kiaei Declaration. Ex. 1002. Patent Owner argues that
`Kim does not teach all the limitations of claim 1. Prelim. Resp. 34–68.
`
`8 No evidence of objective indicia of nonobviousness is presented in Patent
`Owner’s Preliminary Response. See generally Prelim. Resp.
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`We begin our discussion with a brief summary of Kim, and then
`address the evidence and arguments presented.
`
`1. Kim
`Kim describes a mobile terminal that allows a sub-device to be
`attached or detached from it. Ex. 1010 ¶ 3. Coupling and separation of a
`main device and a sub-device of the mobile terminal allow controlling an
`operation and a state of the mobile terminal. Id. ¶ 9. The mobile terminal
`includes a sub-device having an input/output unit and is attached to or
`detached from the mobile terminal, a controller configured to receive a user
`input via a certain communication path from the sub-device when the sub-
`device is separated, and control elements and applications of the mobile
`terminal according to the user input. Id. ¶ 10. Figure 1 is illustrative and is
`reproduced below.
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`Figure 1, above, shows a schematic diagram of a mobile terminal. Ex. 1010
`¶ 14. Mobile terminal 100 includes wireless communication unit 110,
`audio/video (A/V) input unit 120, user input unit 130, sensing unit 140,
`output unit 150, memory 160, interface unit 170, controller 180, and power
`supply 190. Id. ¶ 72. “More or less components may alternatively be
`implemented.” Id. ¶ 71. A/V input unit 120 may provide audio or video
`signal input via camera 121 to mobile terminal 100. Id. ¶ 84. Sensing unit
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`140 may detect an open/close status or the state of mobile terminal 100. Id.
`¶ 88. Output 150 may include display 151. Id. ¶ 95. Display 151 may have
`a transparent organic light-emitting diode (TOLED) display. Id. ¶¶ 97–98.
`“Embodiments may be used singly and/or by being combined together.” Id.
`¶ 179.
`Figure 7 is illustrative and is reproduced below.
`
`
`Figure 7, above, shows a mobile terminal including a main device and a sub-
`device. Ex. 1010 ¶ 21. Main device 100 can be detachably attached to one
`or more sub-devices 300a–300n. Id. ¶ 181. Main device 100 may include
`coupling unit 210 for mechanically coupling sub-devices 300a–300n,
`coupling detection unit 220 that detects whether or not sub-devices 300a–
`300n are coupled, and connection unit 230 that allows signals or data to be
`transmitted or received between main device 100 and sub-devices 300a–
`300n. Id. ¶ 182. “Each of the sub-devices 300 may be configured to include
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`all the same elements as those of the main device.” Id. ¶ 187. “[W]hen the
`sub-device 300 is coupled to the main device 100, the main device 100 may
`automatically change its operation mode or an operation mode of the sub-
`device.” Id. ¶ 195. Sub-device 300 may include frame 303 (shown in
`Figure 9b). Id. ¶ 199. The structures for coupling sub-device 300 are in
`accordance to the types of main device 100, which include “bar type, slide
`type, folder type, swing type, swivel type, watch time, and the like.” Id.
`¶ 210. A “magnet may be respectively attached to one side of the main
`device 100 and one side of the sub-device 300, to easily couple or separate
`(i.e., couple or de-couple) the main device 100 and the sub-device.” Id.
`¶ 203. Main device 100 may have a recess corresponding to the shape and
`size of sub-device 300, in which a magnet may be installed. Id.
`Figure 11B is illustrative and is reproduced below.
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`Figure 11B, above, shows a structure for coupling or separating a sub-device
`to a folder type main device. Ex. 1010 ¶ 25. A sub-device may be coupled
`to a main device via press-fitting coupling member 510 to position within a
`recess or hook formed in the main device. Id. ¶ 218. Alternatively, a
`magnet may be provided in the main device such that third body 300 has a
`member that can be attached to the magnet, may be coupled while allowing
`“the first body 100a and the second body 100b may be folded or unfolded
`regardless of the coupling or separating of the sub-device.” Id. “Here, the
`third body may be overlapped to be coupled to one of the first and second
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`bodies in a state that the first and second bodies are coupled,” but “the
`method of coupling the third body to the first body in an overlapping
`manner” are only “described for the brevity.” Id. ¶ 217.
`Figure 15A is illustrative and is reproduced below.
`
`
`Figure 15A, above, shows a structure for coupling or separating a sub-device
`to a watch-type main device. Ex. 1010 ¶ 29. Here, first body 100a is
`connected to second body 100b by hinge 100d. Id. ¶ 256.
`Figure 15B is illustrative and is reproduced below.
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`Figure 15B, above, also shows a structure for coupling or separating a sub-
`device to a watch-type main device. Ex. 1010 ¶ 29. Here, coupling member
`510 also fixes a sub-device to a main device. Id. ¶ 261.
`
`2. Analysis
`a. Claim 1
`The Petition asserts that Kim teaches all the limitations of claim 1.
`
`See Pet. 12–44. Below we consider the claim 1 limitations in turn.
`i. Preamble
`Petitioner asserts that, to the extent that the preamble is limiting, Kim
`
`discloses a system, which includes a main device and sub-devices
`detachably coupled to the main device. Pet. 19–26 (citing e.g., Ex. 1002
`¶¶ 79–95; Ex. 1010 ¶ 181). Petitioner asserts that Kim teaches the main
`device can have different form factors, including a folder-type main device
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`or a watch-type main device. Id. at 20 (citing Ex. 1010, Figs. 15A, 15B).
`Petitioner contends that Kim additionally discloses a sub-device detachably
`coupled to the watch-type main device. Id. at 20–21 (citing Ex. 1010
`¶¶ 217, 260–261). Patent Owner presents no arguments specifically related
`to the preamble. See generally Prelim. Resp. We have reviewed the
`evidence and argument and on this record we determine that Petitioner has
`presented sufficient evidence that Kim teaches a “system.”9
`ii. Limitations 1[a], 1[b]
`Petitioner asserts that Kim teaches mobile terminals, such as mobile
`
`phones, smart phones, or portable multimedia players, as well as the sub-
`device, are portable. Pet. 26–27. Petitioner relies on a configuration of
`Kim’s embodiment, that is referred to as “Figure A,” reproduced below.
`
`
`9 We need not determine whether the preamble of claim 1 is limiting because
`Petitioner has shown that Kim teaches the preamble. See Nidec, 868 F.3d at
`1017.
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`In Figure A, reproduced above, Petitioner maps main device 100 to the
`“portable switching device” of claim 1, and sub-device 300 is mapped to the
`“portable switching device” of the claim.10 Pet. 23, 27. Petitioner argues
`that Kim teaches that “when the sub-device 300 is coupled to the main
`device 100, the main device 100 may automatically change its operation
`mode or an operation mode of the sub-device,” and a person of ordinary skill
`in the art would have recognized that the main device is a “portable
`
`
`10 Patent Owner argues that Petitioner fails to provide an explanation for
`applying Kim differently in IPR2021-00335 involving U.S. Patent No.
`10,259,020 B2 (“the ’020 patent”). Prelim. Resp. 68. The argument is
`unpersuasive as the ’020 patent claims and the ’320 patent claims are not the
`same.
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`switching device.” Id. at 27 (citing Ex. 1010 ¶¶ 195, 270; Ex. 1002 ¶¶ 100–
`101).
`
`Petitioner also asserts that Kim teaches that the main device
`(“switching device”) and sub-device (“electronic device”) detachably couple
`by way of coupling members 510, which can be magnets, as support for the
`disclosure of limitation 1[b]. Pet. 27–28 (citing Ex. 1002 ¶¶ 102–109; Ex.
`1010 ¶ 203).
`
`At this juncture, we determine that Petitioner has provided sufficient
`evidence that Kim teaches limitations 1[a] and 1[b].
`
`Patent Owner makes several arguments challenging Petitioner’s
`assertions, and many center on Petitioner’s reliance on Figure A. Prelim.
`Resp. 2–12, 34–49. Patent Owner contends that Figure A is a fictional
`watch embodiment that is constructed using hindsight. Id. at 34.
`Additionally, and more specifically, Patent Owner asserts the following
`issues, which we refer to as “the Issues” below, namely: 1) Kim itself
`rejects the proposed modifications; 2) Kim lacks the disclosure, enablement,
`and motivation for the modifications in view of operational issues with
`closure; 3) problems with screen function would dissuade a person of
`ordinary skill from modifying Figure 15A of Kim; 4) there is no teaching,
`enablement or reasonable expectation of success for three displays; 5) even
`if there was motivation to make the modification, the sub-device would not
`be in the correct orientation; 6) Petitioner’s embodiment is highly
`problematic with respect to the screen and one of ordinary skill in the art
`would not have been motivated to make this modification based on Figure
`11B in view of Kim’s Figure 5; 7) Petitioner’s reliance on Kim’s Figure 11B
`is unpersuasive; and 8) if one of skill in the art were going to combine
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`teachings of Kim it would be with regard to Figures 5 and 15B. Id. at 2–12,
`34–49. We will address these issues below.
`
`Petitioner asserts that Kim discloses an embodiment of a watch-type
`main device with two bodies connected by a hinge that can be opened or
`closed in a folding manner, as shown in Figure 15A, reproduced below.
`
`
`Figure 15A, above, depicts the structure of an embodiment of Kim for a
`watch-type main device. Ex. 1010 ¶ 29. Petitioner contends that Kim
`discloses a method of coupling a third body, that is, a sub-device, to first and
`second bodies. Pet. 20–21 (citing Ex. 1010 ¶¶ 260–261). Petitioner argues
`that Figure 15B, reproduced below, relates to “coupling the sub-device in an
`overlapping manner to the second body.” Id. at 21 (citing Ex. 1010 ¶ 260).
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`Figure 15A, above, depicts the structure of an embodiment of Kim for a
`watch-type main device. Ex. 1010 ¶ 29. Petitioner refers to Kim’s
`disclosure that “a coupling member 510 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.” Pet. 21 (citing Ex. 1010 ¶ 261). Dr. Kiaei testifies that in view of
`these Kim disclosures, a person of ordinary skill would have understood that
`Kim discloses a watch-type main device comprising a first body and a
`second body (100a, 100b) connected to each other by a hinge 100d and
`further discloses detachably coupling a third body (i.e., sub-device) in an
`overlapping manner to either the first body 100a or the second body 100b of
`such a main device using coupling members 510, as explained, for example,
`with respect to Figure 15B. Ex. 1002 ¶ 83.
`
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`IPR2021-00338
`Patent 10,589,320 B1
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`Many of Patent Owner’s arguments are directed to the alleged failure
`
`of Petitioner to provide sufficient motivation for why one of ordinary skill in
`the art would have viewed Kim’s disclosures to support the Figure A
`embodiment, and Patent Owner asserts that Kim’s teachings instead would
`direct one of skill away from the configuration shown in Figure A. See
`Prelim. Resp. 2–12, 34–49. It appears, however, that Patent Owner’s
`arguments are directed to Petitioner’s assertions in the alternative related to
`modification of Kim’s Figure 15A watch embodiment in view of its Figure
`11B phone embodiment (Prelim. Resp. 2, 32), which we discuss further
`below, but initially we discuss Petitioner’s primary support in Kim for the
`Figure A embodiment (Pet. 20–23).
`
`Kim discloses that “FIGS. 15a to 15d illustrate the structure and
`method for coupling or separating the sub-device to a watch type main
`device according to an embodiment of the present invention.” Ex. 1010
`¶ 255. As to Figure 15A, Kim states that:
`As shown in FIG. 15a, the watch type mobile
`terminal includes the first body 100a to which a
`band part 100c is connected and the second body
`100b including a display unit and coupled to the
`first body []. The second body may be configured to
`be connected by a hinge 100d to one side of the first
`body so as to be open or closed.
`Ex. 1010 ¶ 256. Kim then states:
`A method of coupling the third body (i.e., the sub-
`device) is coupled to one of the first and second
`bodies in a state that the first and second bodies are
`coupled will now be described. The method of
`coupling the sub-device in an over lapping manner
`to the second body will now be described for the
`sake of brevity.
`
`23
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`IPR2021-00338
`Patent 10,589,320 B1
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`As shown in FIG. 15b, a coupling member 510 for
`fixing the sub-device is provided on at least one side
`of the second body of the main device, and the sub-
`device may be adjusted to the position where the
`coupling member is formed, and pressed to be
`coupled.
`Ex. 1010 ¶¶ 260–261 (emphasis added).
`
`We find that Kim’s above description supports an intent to modify
`Figure 15A by the addition of a sub-device in the manner shown in Figure
`15B, and the sub-device can be added to the second body 100b—and this is
`consistent with Petitioner’s assertions as manifested in the depiction of
`Figure A above. Ex. 1010 ¶¶ 255–261.
`
`Patent Owner argues that Petitioner’s interpretation of paragraph 260
`of Kim is flawed, but does not explain why this is so, short of a statement
`that Petitioner’s “flawed interpretation of paragraph 260 is not enabled and
`lacks any reason to combine or reasonable expectation of success.” Prelim.
`Resp. 36, n.5. However, as discussed above, the rationale for the
`combination depicted in Figure A is adequately discussed in Kim, and, thus,
`Patent Owner’s arguments that Kim itself rejects the proposed modifications
`or that there is no motivation to make the combination are not supported by
`the evidence of record (Issue 1). See Prelim. Resp. 35–37.
`
`Petitioner also relies, in the alternative, on the disclosure of a folder-
`type embodiment as shown in Figure 11B of Kim and asserts that a person
`of ordinary skill in the art would have recognized that Kim’s Figure 11B
`could be adapted and applied to Figure 15A to detachably couple sub-device
`300 to the second body 100b of the watch-type embodiment as shown in
`Figure A. Pet. 24–25 (citing Ex. 1002 ¶¶ 87–95; Ex. 1010 ¶¶ 179, 212, 218,
`220, 261). Regarding this alternative, Patent Owner argues that Kim lacks
`
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`IPR2021-00338
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`the disclosure, enablement, and motivation for one of ordinary skill to
`implement due to operational issues (Issues 2–6) associated with the
`combinations. Prelim Resp. 37–43. For instance, Patent Owner argues that
`the modifications reflected in Figure A would result in closure, shock, gap,
`and orientation problems in the modified devices. Id. Patent Owner also
`asserts that there is no teaching, enablement, or reasonable expectation of
`success for controlling the three screens of Figure A. Id. at 41.
`
`As an initial matter, we have determined above that Petitioner’s
`reliance on the embodiment of Figure A of Kim is sufficient to teach the
`claims limitations. We additionally note, however, that we do not find
`persuasive Patent Owner’s arguments related to alleged problems with
`Figures 11B/15A combinations because Patent Owner argues specific issues
`related to the proposed details of its construction of the device, but Patent
`Owner does not explain the basis for the details it proposes that may be
`problematic. And, as is often said, the devil is in the details. Patent Owner’s
`arguments additionally presume that one of ordinary skill in the art would
`not have had the capability to address design details to successfully construct
`the embodiment shown in Figure A. See In re Antor Media Corp., 689 F.3d
`1282, 1288 (Fed. Cir. 2012) (A prior art reference is presumptively
`enabling.). Here, Patent Owner relies only on attorney argument and
`provides no expert testimony to support its contentions.
`
`As an example of Patent Owner’s arguments on the details of the
`ways to allegedly construct the device resulting in operational problems, we
`refer to Issue 6. Prelim. Resp. 43–44. Patent Owner argues that Figure A is
`“highly problematic” and one of ordinary skill in the art would not make the
`modification to Figure 15A based upon Figure 11b in view of Kim’s Figure
`
`25
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`IPR2021-00338
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`5. Id. Patent Owner asserts that, as per Figure 511, the desired configuration
`is to look through a transparent TOLED cover and use the touch screen
`TOLED display of the cover in conjunction with the LCD display of the
`base unit 100a of the main device. Id. at 43. Patent Owner contends that
`Petitioner’s logic for modifying Figure 15A based upon Figure 11B, which
`is similar to Figure 5, is unsound because “the motivation would be to use
`only the TOLED cover 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 cover display to see the underlying LCD
`base display.” Id. at 44. Patent Owner also makes several assertions
`directed to Kim’s lack of disclosure for the use of a TOLED screen. Id. at
`43.
`We do not find Patent Owner’s arguments on this issue related to the
`
`Figures 11B/15A combination to be persuasive because Patent Owner
`presumes that a TOLED screen has to be present in a certain configuration,
`that is, that it is externally exposed based on Figure 5—but Patent Owner
`does not explain why this variation would be required in Figure 11B.
`Further, as Dr. Kiaei testifies, Kim discloses that its displays may be non-
`transparent or transparent, but, in any event, Kim does not require that the
`sub-device screen be transparent. See Ex. 1002 ¶ 147 (citing Ex. 1010
`¶¶ 97–98, 226).
`
`Patent Owner further argues that Petitioner’s reliance on Kim’s Figure
`11B is unpersuasive because the sub-device display of one- or two-lines
`
`
`11 Patent Owner contends that Petitioner relies on Figure 5 of Kim in its
`assertions, but we do not discern any reliance on Figure 5 in the Petition,
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