`
`
`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.,
`Patent Owner.
`
`____________________________________________________
`
`Case IPR2021-00338
`Patent 10,589,320 B2
`____________________________________________________
`
`
`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`INTRODUCTION AND SUMMARY OF ARGUMENTS. .......................... 1
`THE ‘320 PATENT. ........................................................................................ 2
`II.
`III. CLAIM CONSTRUCTION. ........................................................................... 4
`IV. KIM DOES NOT DISCLOSE (OR SUGGEST) PETITIONER’S
`“FIG. A” EMBODIMENT .............................................................................. 4
`A. Overview of Kim. ............................................................................................ 4
`B.
`Kim Does Not Diclose (or Suggest) Petitioner’s Figure A Embodiment ....... 6
`V.
`PETITIONER’S FICTIONAL FIG. A IS NOT OBVIOUS. .......................... 9
`A. Kim’s Fig. 11B does Not Support Obviousness of Fictional Fig. A. .............. 9
`B.
`Kim’s Mixing of Control Methods is Different from Mixing Form
`Factors. ........................................................................................................... 16
`Petitioner Misapprehends Kim’s Disclosure for Figure 15A-D. ................... 18
`C.
`D. Kim’s Fig. 5 Shows How a Dual Display Device Would Be
`Fashioned. ...................................................................................................... 24
`The Gap that Would Result from Petitioner’s Fictional Figure A Causes More
`Than Just Potential Harm or Esthetic Problems. ........................................... 28
`Sandwiching Sub-Device 300 as in Petitioner’s Figure A Leads to
`Problems with Displaying Information. ........................................................ 29
`Petitioner’s Proposed Figure A Embodiment Presents Too Many
`Operating Issues That Would Prevent a POSITA From Adoption ............... 30
`VI. CLAIM 1 AND ITS DEPENDENT CLAIMS ARE NOT
`UNPATENTABLE IN VIEW OF KIM. ....................................................... 34
`A. Kim Does Not Disclose or Render Obvious “When Coupled, The
`First Case Functions to Protect the Second Case.” ....................................... 34
`
`E.
`
`F.
`
`G.
`
`IPR2021-00338
`
`PO Response
`
`Page i
`
`
`
`
`
`B.
`
`C.
`
`E.
`
`F.
`
`Kim Does Not Disclose or Render Obvious “a First Magnet is Fully
`Disposed Within the Electronic Device.” ...................................................... 38
`Petitioner Has Not Shown that Kim Discloses (or Suggests) a
`“Switching Device.” ...................................................................................... 42
`D. Kim Does Not Disclose or Render Obvious “the electronic device
`comprises at Least one element selected from the group consisting
`of…recessed areas,…indented shapes,…raised shapes, and
`combinations thereof; configured to correspond to complimentary
`surface elements on the switching device.” ................................................... 43
`Petitioner Fails to Show where Kim Discloses or Renders Obvious
`that the “Portable Switching Device” is “Configured to Activate,
`Deactivate or Send into Hibernation” the Portable Electronic
`Device. ........................................................................................................... 47
`Kim Does Not Disclose (or Render Obvious) That the “Electronic
`Device Plays or Pauses a Remote Device.” ................................................... 50
`G. Kim Does Not Disclose or Render Obvious that the “Lid is Recessed to
`Configure to the Electronic Device” ............................................................. 51
`VII. CLAIM 5 AND ITS DEPENDENT CLAIMS ARE NOT
`UNPATENTABLE IN VIEW OF KIM ........................................................ 54
`VIII. CLAIM 11 IS NOT UNPATENTABLE IN VIEW OF THE
`COMBINED TEACHINGS OF KIM AND KOH. ....................................... 57
`A. A POSITA Would Not Have Been Motivated to Combine Kim and
`Koh. ................................................................................................................ 57
`The Combination of Kim and Koh Does Not Disclose or Render
`Obvious “When Coupled, the First Case Functions to Protect the
`Second Case” ................................................................................................. 59
`Petitioner Fails to Explain How the Combined Koh Portable
`“Switching Device” is “Configured to Activate, Deactivate, or Send
`into Hibernation” the Portable Electronic Device. ........................................ 66
`The Combination of Kim and Koh Does Not Disclose “the
`Electronic Device Pauses or Plays a Remote Device.” ................................. 68
`
`B.
`
`C.
`
`D.
`
`IPR2021-00338
`
`PO Response
`
`Page ii
`
`
`
`
`
`IX. CLAIM 9 IS NOT UNPATENTABLE IN VIEW OF THE
`COMBINED TEACHINGS OF KIM AND LEE ......................................... 70
`A. A POSITA Would Not Have Been Motivated to Combine Kim and Lee. ... 70
`B.
`The Combination of Kim and Lee Does Not Suggest a Magnet “Employed in
`Actuating the Electronic Circuit.” ................................................................. 71
`CLAIM 10 IS NOT UNPATENTABLE IN VIEW OF THE
`COMBINED TEACHINGS OF KIM AND LEE ......................................... 72
`XI. CLAIMS 12 AND 13 ARE NOT UNPATENTABLE IN VIEW OF
`THE COMBINED TEACHINGS OF KIM AND LEE ................................ 72
`XII. CONCLUSION. ............................................................................................. 73
`
`
`X.
`
`
`
`IPR2021-00338
`
`PO Response
`
`Page iii
`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir. 2003) ................... 37
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015)
`
` .............................................................................................................................. 37
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) ........................ 37
`
`Hulu, LLC v. Sound View Innovations, LLC (IPR2018-00582, Paper 34) ................ 2
`
`Johns Manville Corp. v. Knauf Insulation, Inc. (IPR2018-00827, Paper 9) ............. 2
`
`Richardson v. Suzuki Motor Co., 868 F.2d 1226 (Fed. Cir. 1989) .......................... 36
`
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) ....................................................... 37
`
`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628 (Fed. Cir. 1987) .... 36
`
`
`
`
`
`
`
`IPR2021-00338
`
`PO Response
`
`Page iv
`
`
`
`
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`Samsung’s 2020-12-29 Petition in IPR2021-00335
`
`Transcript of deposition of Sayfe Kiaei, Ph.D. in IPRs 2021-
`
`00336, -00337, and -00338 (Aug. 30, 2021)
`
`Transcript of deposition of Sayfe Kiaei, Ph.D. in IPR2021-
`
`00335 (Aug. 30, 2021)
`
`Declaration of Mark N. Horenstein, Ph.D.
`
`Curriculum Vitae of Mark N. Horenstein, Ph.D.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00338
`
`PO Response
`
`Page v
`
`
`
`
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENTS.
`
`The Petition fails to prove that any challenged claim is unpatentable. All
`
`grounds for alleged unpatentability rely on a fictional “Figure A” embodiment,
`
`which is neither taught nor suggested by Kim. Kim’s Figure 15B embodiment is
`
`what a person of ordinary skill in the art (“POSITA”) would recognize as being
`
`described and as a reasonable consumer electronic device. Claim 1 (and its
`
`dependent claims) are not unpatentable in view of Kim, including because Kim
`
`does not disclose or render obvious the multiple elements noted herein.
`
`
`
`As to claim 11, a POSITA would not have a motivation or rationale for
`
`combining Kim and Koh, and in any event, Kim and Koh combined would not
`
`meet the multiple elements noted herein.
`
`As to claims 9-10 and 12-13, a POSITA would not have a motivation or
`
`rationale for combining Kim and Lee, and in any event, Kim and Lee combined
`
`would not meet the multiple elements noted herein.
`
`The lack of articulable or persuasive motivations or reasons to modify the
`
`primary reference Kim, or for the other proposed modifications, is fatal to the
`
`Petition. See, e.g., Johns Manville Corp. v. Knauf Insulation, Inc. (IPR2018-00827,
`
`Paper 9); Hulu, LLC v. Sound View Innovations, LLC (IPR2018-00582, Paper 34).
`
`IPR2021-00338
`
`
`PO Response
`
`Page 1
`
`
`
`
`
`II. THE ‘320 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 co-inventor, Dan Valdez, took portable magnetic switching
`
`in new directions and new levels. The disclosed devices have functions such as
`
`activating, deactivating and hibernating other devices such as tablet computers.
`
`See EX1001, 3:58-641; 21:38-22:18; 4:8-16; 20:14-23; Figs 1A-1B; 2A-2C; 3- 4;
`
`and 5A-5B. See also Fig. 16; EX2004 (Horenstein Declaration), ¶18-23. For
`
`example, switching device 2401 shown in Figs. 24-25 includes magnets 2504 to
`
`activate, deactivate, or hibernate tablet computer 2400. EX1001, 18:6-18.
`
`
`
`
`
`
`
`1 EX1001, 3:58-64 refers to column 3, lines 58-64 of the ‘320 patent.
`IPR2021-00338
`PO Response
`
`
`Page 2
`
`
`
`
`
`
`
`Aspects of embodiments further comprise the case of one such device
`
`protecting the case of another. See, e.g., id., 2:47-48; 10:13-16; 22:17-18; and
`
`Fig. 5A, reproduced below.
`
`
`
`IPR2021-00338
`
`
`PO Response
`
`Page 3
`
`
`
`
`
`III. CLAIM CONSTRUCTION.
`
`Gwee asserts that no express construction beyond applying ordinary
`
`meaning is presently necessary in order for the Board to have sufficient
`
`information to confirm the patentability of the challenged claims. EX2004, ¶28.
`
`Gwee’s present silence on unnecessary issues is not a concession that any
`
`assertions in the Petition are correct, or that claim construction would not be
`
`necessary in further proceedings.
`
`IV. KIM DOES NOT DISCLOSE (OR SUGGEST) PETITIONER’S “FIG.
`
`A” EMBODIMENT
`
`A. Overview of Kim.
`
`All of Petitioner’s alleged grounds for unpatentability rely on Kim, alone or
`
`in combination with Koh or Lee. Pet., 1-2.. However, Petitioner’s Fig. A rendition
`
`(at right) does not actually appear in Kim nor is it
`
`described therein. EX2004, ¶36.
`
`Kim discloses in Figure 15A a mobile terminal in
`
`which a watch-type main device includes first body
`
`100a connected to second body 100b by a hinge 100d,
`
`so that the first and second bodies can be opened or
`
`closed. EX2004, ¶37. Kim’s Figure 15B shows a sub-device 300 that may be
`
`detachably coupled on top of the second body 100b. EX1010, [255]-[261];
`IPR2021-00338
`PO Response
`
`
`Page 4
`
`
`
`
`
`EX2004, ¶37. Petitioner presents an unsupported version in which a sub-device
`
`300 is detachably coupled to the underside of second body 100b, wherein second
`
`body 100b (e.g., the lid) is connected to first body 100a by a hinge. EX2004, ¶37.
`
`As Kim states in his description of Figure 15A, “hinge part 100d for coupling the
`
`sub-device must have a structure allowing coupling and separating.” EX1010,
`
`[258]. A POSITA2 would understand that for the sub-device 300 to be attached
`
`underneath the ‘lid’ second body 100b, 100b would be unhinged and decoupled,
`
`otherwise, the lid would not close, EX2004, ¶37. To a POSITA, Petitioner’s
`
`Figure A is not an accurate representation of Kim’s disclosure. Kim explicitly
`
`shows the embodiment corresponding to its description of Fig. 15B. EX1010,
`
`[260]-[261]; EX2004, ¶37.
`
`
`
`
`
`2 A POSITA for purposes of the ’320 Patent would be someone with either a
`
`bachelor’s degree in electrical engineering, computer science, or mechanical
`
`engineering with some level of post-baccalaureate electronic device or system
`
`design experience, or someone with an equivalent level of experience and training
`
`through other means. EX2004, ¶25.
`
`IPR2021-00338
`
`
`PO Response
`
`Page 5
`
`
`
`
`
`B. Kim Does Not Diclose (or Suggest) Petitioner’s Figure A
`Embodiment
`
`Gwee respectfully disagrees with the Board’s preliminary assessment that
`
`the Figure A embodiment resembles one from Kim. Paper 11, 21. Petitioner’s
`
`Figure A embodiment sandwiches sub-device 300 between the first body 100a and
`
`the second body 100b of the watch-type device. Pet., 21-22. Although Kim does
`
`describe a watch-type device in which sub-device 300 is coupled in an overlapping
`
`manner to the second body, in a state where the first and second bodies are coupled
`
`to one another, that embodiment is not Petitioner’s Figure A. EX2004, ¶47. It is
`
`instead Kim’s Fig. 15B embodiment -- id.; EX1010, [0260]-[0261] -- showing the
`
`sub-device 300 being placed atop the second body, as supported by what Kim
`
`states, “The method of coupling the sub-device in an overlapping manner to the
`
`second body will now be described …”.with the second body in Fig 15B being the
`
`second body or “cover” described in Fig 15A. Indeed, the arrangement shown in
`
`Petitioner’s Figure A, in which sub-device 300 is positioned between the first body
`
`100a and the second body 100b of the watch-type device, would impede the proper
`
`operation of the hinge that couples 100a and 100b. EX2004, ¶47. A POSITA
`
`would have considered, as stated by Kim, that the hinged connection of these two
`
`bodies is meant to permit the second body “to be open or closed.” EX1010, [0261];
`
`EX2004, ¶47. As discussed further below, having sub-device 300 between first
`
`IPR2021-00338
`
`
`PO Response
`
`Page 6
`
`
`
`
`
`body 100a and second body 100b would prevent such closure. To a POSITA, a
`
`watch with a cover that will not close would be unsuitable. EX2004, ¶47.
`
`Moreover, any hypothetical new modification to hinge 100d in Fig. 15A (not
`
`advanced in the Petition), so as to accommodate the added thickness of sub-device
`
`300 with the lid closed, would impede proper closure with sub-device 300 absent,
`
`as noted below. Id.
`
`The actual embodiment taught by Kim for coupling the sub-device 300 to
`
`and atop the second body, with the first and second bodies coupled to one another,
`
`is that shown in Fig. 15B, and it makes much more sense from the standpoint of
`
`the POSITA. EX2004, ¶48. In this arrangement, sub-device 300 is positioned
`
`outside (or top side) of the cover 100b. Id. Thus, the sub-device is positioned such
`
`that the watch-type device can operate as a desired dual-display device. Id., [0256];
`
`EX2004, ¶48. The cover of the watch-type device can still properly open and close
`
`via hinge 100d, even while the sub-device is attached on top. EX2004, ¶48. Such
`
`an arrangement would provide an attractive consumer electronic device in terms of
`
`its size, form factor, and appearance. EX2004, ¶48. Petitioner’s expert Dr. Kiaei
`
`apparently agrees that when designing a wearable device such as a watch-type
`
`device, a POSITA would have considered such things as its size and weight, its
`
`form factor (including its shape), the miniaturization of its electronics, and its
`
`IPR2021-00338
`
`
`PO Response
`
`Page 7
`
`
`
`
`
`overall appearance. EX2002, 13:14-24; 15:11–16:19; 18:13–21:2; 33:18–35:5.3
`
`Accordingly, a POSITA would not understand Kim to be advocating a Figure A
`
`solution that did not allow the cover of the watch-type device to properly close due
`
`to sandwiching sub-device 300. EX2004, ¶48. Such a device would be unattractive
`
`(due to the presence of an ill-fitting, hinged cover), unduly large (because the
`
`hinged cover would stick out above the screen with the cover is opened), and be
`
`ill-suited for its purpose. Id. Instead, a POSITA would have read Kim’s disclosure
`
`concerning Fig. 15, with sub-device 300 being coupled in an overlapping manner
`
`to the second body of the watch-type mobile device, to mean that what is
`
`illustrated in Fig. 15B is sub-device 300 positioned on the outside (or top side) of
`
`the cover when the first and second bodies of the main device are hingedly coupled
`
`to one another. Id. Such a configuration would be much more functional and
`
`practical. Id.
`
`
`
`
`
`3 Through agreement of the parties, the transcript of Dr. Kiaei’s deposition in IPRs
`
`2021-00336,-00337, and -00338 may be used in this proceeding. EX2003 at 5:16-
`
`7:15.
`
`IPR2021-00338
`
`
`PO Response
`
`Page 8
`
`
`
`
`
`V.
`
`PETITIONER’S FICTIONAL FIG. A IS NOT OBVIOUS.
`
`A. Kim’s Fig. 11B does Not Support Obviousness of Fictional Fig. A.
`
`Petitioner alleges that a POSITA “would have recognized that the watch-
`
`type embodiment shown in Figures 15A is similar and closely related to the folder-
`
`type embodiments shown in Figures 11B.” Pet., 23-24. Petitioner even goes so far
`
`as to allege, that “Kim itself suggests the modification.” Id., 25. These assertions
`
`are unfounded and incorrect. EX2004, ¶¶49-67. Before addressing such issues in
`
`detail, some general observations are warranted.
`
`Contrary to Petitioner’s assertion, EX1002, ¶88, a POSITA would not have
`
`recognized that the watch-type embodiment of Figure 15A is similar or “closely
`
`related” to the folder-type embodiment of Figure 11B. EX2004, ¶50. There are
`
`important distinctions between the two that make such an equivalence
`
`inappropriate to a POSITA. Id. For example, unlike the watch-type device of Fig.
`
`15A, in which a single hinge is located on a side of the first body, EX1010, [0256],
`
`Kim’s folder-type device of Fig. 11B has its first and second bodies coupled
`
`together by more than one hinge member. Id., [0212]. Those hinge members are
`
`raised above a face of the second body. See id., Fig. 11A, reproduced below as
`
`Horenstein Figure 7. This arrangement allows for a sub-device 300 replacing either
`
`the first or the second body, id., [0212], or for one coupling to and overlapping the
`
`first body via a coupling member 510. Id., [0217]-[0218]. EX2004, ¶50. Figure
`IPR2021-00338
`PO Response
`Page 9
`
`
`
`
`
`
`11B (Horenstein Fig. 8) shows this latter configuration. EX1010, [0218]; EX2004,
`
`¶50.
`
`
`
`
`
`Petitioner overlooks this important difference between the watch-type
`
`embodiment of Kim’s Fig. 15A and the folder-type embodiment of Fig. 11B.
`
`EX2004, ¶51. The differences in hinge arrangements and positions for these
`
`distinct embodiments mean that the manner in which a sub-device 300 can be
`
`accommodated is also different. Id. In particular, the arrangement of sub-device
`
`300 within the folder-type device shown in Fig 11B is not suitable for use with the
`
`IPR2021-00338
`
`
`PO Response
`
`Page 10
`
`
`
`
`
`watch-type embodiment of Fig. 15B. Id. Whereas the folder-type device of Fig.
`
`11B can accommodate the placement of sub-device 300 between the first and
`
`second bodies, because the hinges connecting the first and second bodies are raised
`
`above a face of the second body 100b, the single, side-mounted hinge 100d of the
`
`watch-type embodiment (highlighted in Horenstein Fig. 9 below) does not permit
`
`such an arrangement. Id. In particular, hinge 100d of the watch-type device would
`
`not accommodate a sub-device 300 between the first and second bodies 100a, 100b
`
`while still allowing the cover 100b to close properly over the first body. Id.
`
`Horenstein Figure 10, shown below, illustrates another fundamental problem
`
`with Petitioner’s Figure A embodiment. While this hinge arrangement is not
`IPR2021-00338
`PO Response
`Page 11
`
`
`
`
`
`
`
`
`consistent with Kim’s Figure 11B, it is consistent with Petitioner’s Figure A,
`
`which Petitioner claims it derived from Kim’s Figure 11B. EX2004, ¶52.
`
`
`
`Petitioner’s Figure A proposes an unmodified version of Kim’s Fig. 15A,
`
`with the hinge 100d located on a side of the first body 100a. Id. It is Petitioner
`
`that has proposed this arrangement, and this arrangement results in the inability for
`
`the cover 100b to properly close. Id. Thus a POSITA would have recognized that it
`
`simply cannot be the arrangement described (or even suggested) by Kim. Id. See
`
`EX1010, ¶¶[260]-[261]. A POSITA would not have adapted Kim’s Fig. 11B
`
`embodiment as shown in Petitioner’s Figure A. EX2004, ¶55.
`
`There are additional distinctions between Kim’s Fig. 11B folder-type device and
`
`Fig. 15A watch-type device. For example, sub-device 300 in the Fig. 11B embodiment
`
`IPR2021-00338
`
`
`PO Response
`
`Page 12
`
`
`
`
`
`has only a thin, one-or-two line display. Fig. EX2004, ¶53. See EX2010, ¶[201],
`
`Considering that the watch-type device would need to be smaller than the folder-type
`
`device in order to be wearable, by the time the Fig. 11B sub-device 300 was downsized
`
`to be potentially compatible with the Fig. 15A watch-type device, its one-or-two line
`
`display would be so small as to be virtually unusable. Id. Petitioner’s expert Dr. Kiaei
`
`agrees that miniaturization of electronics and device size are important considerations
`
`for a watch-type device, see EX2002, 15:18 – 16:13; 20:3-5; 34:4-7, but a POSITA
`
`would not take miniaturization to such an extreme so as to provide a virtually unreadable
`
`display. EX2004, ¶53.
`
`Furthermore, Kim’s Fig. 11E embodiment has a “base” keyboard, whereas Kim’s
`
`watch-type device employs a display on the wrist-worn portion 100a. EX2004, ¶54.
`
`Hence, unlike the Fig. 15A watch-type device, where both first and second bodies 100a
`
`and 100b employ displays, and a wearer may look through the TOLED cover 100b to
`
`see the underlying display on 100a, in the Fig. 11E folder-type device, no such look-
`
`through capacity need be accommodated; hence having a sub-device sandwiched
`
`between the cover and the base does not introduce the information display complications
`
`that would be present in a watch-type device. Id.
`
`The hinge arrangement of the watch-type embodiment is an important
`
`feature of that device. EX2004, ¶57. Having the hinge positioned on the side of
`
`the first body 100a in Fig. 15A allows for the full opening of the watch cover
`IPR2021-00338
`PO Response
`Page 13
`
`
`
`
`
`
`(second body 100b), and it thereby provides a useful, dual-display configuration
`
`for the device while allowing for full access to the display of first body 100a. Id.
`
`In contrast, the hinge arrangement of the folder-type device of Fig. 11 apparently
`
`would not permit such full opening, because Kim only shows the folder-type
`
`device with a partially open cover. Id. EX1010, Figs. 11A-E. While such an
`
`arrangement may be satisfactory for the folder-type device of Kim’s Fig. 11B, due
`
`to its size and expected operation, full opening is desired and appropriate for the
`
`watch-type embodiment, as evidenced by the different type, placement, and
`
`arrangement of the hinge 100d. EX2004, ¶57. These distinctions would have
`
`informed the POSITA that each of these different embodiments required separate
`
`consideration as to form and function. Id.
`
`The reason that the Horenstein Figure 10 illustration above is “not
`
`consistent” with Kim’s Fig. 11B is because Kim teaches that in the watch-type
`
`embodiment, the hinge is located such that the second body can be connected to
`
`one side of the first body. Id., [0256]. EX2004, ¶58. There is nothing in Kim that
`
`would have suggested to a POSITA that the watch-type embodiment should be
`
`modified to change this important configuration requirement, instead relocating the
`
`hinge so that the second body 100b is connected on top of the first body 100a
`
`(which, although not advocated in the Petition, would be needed to accommodate a
`
`sub-device 300 as depicted in Petitioner’s proposed Figure A embodiment). Id.
`IPR2021-00338
`PO Response
`Page 14
`
`
`
`
`
`
`Making such a change would dramatically alter the watch design (e.g., its size,
`
`shape, and appearance),
`
`and so doing would result
`
`in the first and second
`
`bodies not properly
`
`closing, one atop the
`
`other -- and potentially
`
`causing harm to the
`
`leading edge of the cover
`
`that would at times be
`
`slapping closed and
`
`pressed with undue stress (see Horenstein Figure 11) against the main body of the
`
`watch -- when the third body 300 was not present. Id. This arrangement would ruin
`
`the device’s esthetic appearance and would likely allow foreign materials, e.g.,
`
`dust or particles, to intrude within the resultant gap between the cover 100b and the
`
`first body 100a. Id. Such a design would also risk the sub-device 300 being
`
`dislodged when the cover tries to close onto first body 100b (e.g., because first
`
`body 100b would come into contact the bottom of the sub-device 300 as the cover
`
`rotated to its closed position), and/or damage hinge 100d if the wearer tried to
`
`force the cover closed. Id. Since Kim already teaches a watch-type embodiment in
`IPR2021-00338
`PO Response
`Page 15
`
`
`
`
`
`
`which the sub-device 300 is coupled on top of the second body-watch cover (i.e.,
`
`Kim’s Fig. 15B), there is no rationale for a POSITA to depart from Kim’s
`
`teachings and instead adopting Petitioner’s Figure A. EX2004, ¶58.
`
`Petitioner’s reliance upon the Kim Fig. 11B device as somehow suggesting or
`
`providing a motivation to modify the very different Fig. 15A watch type device is also
`
`unpersuasive in view of sub-device 300 of Fig. 11B only having a tiny, one or two line
`
`display, which would be totally unusable if sub-device 300 was sized down to fit the Fig.
`
`15A-D watch type embodiments. See EX2002, 15:18–16:13; 20:3-5; 34:4-7 (Dr. Kiaei
`
`indicating that miniaturization of electronics and device size are important
`
`considerations for a watch-type device).
`
`B. Kim’s Mixing of Control Methods is Different from Mixing Form
`
`Factors.
`
`Generally, Kim describes several examples of so-called mobile terminals
`
`that each allow a sub-device to be attached thereto or detached. Id., [0003]. Among
`
`the different types of mobile terminals are folder-type (Figs. 11A-11E), slide-type
`
`devices (Figs. 12A-12E), swivel folder-type (Figs. 13A-13D), bar-type (Figs. 14A-
`
`14D), and watch-type (Figs. 15A-15D). Id., [0025]-[0029]; [0211]-[0222]
`
`(describing folder-type device); [0223]-[0236] (slide-type); [0238]-[0251] (swivel
`
`folder-type; [0253]-[0254] (bar-type device); and [0255]-[0262] (watch-type).
`
`EX2004, ¶38.
`IPR2021-00338
`
`
`PO Response
`
`Page 16
`
`
`
`
`
`Contrary to Petitioner’s suggestion, these different embodiments of mobile
`
`terminals are not “interrelated.” EX2004, ¶39. While the different mobile
`
`terminals and sub-devices share some common features, see, e.g., EX1010, [0071]-
`
`[0122], given their different form factors, a POSITA would recognize that the
`
`different device types have inherent distinctions, and that the manner in which sub-
`
`devices may be coupled in the context of each device-type is likewise distinct.
`
`EX2004, ¶39. Kim explains that various “control methods” for the different
`
`mobile terminals “may be used singly, or by being combined together,” EX1010,
`
`[0179], but this is not an indication that methods of physically coupling sub-
`
`devices in the context of the different device types are “interrelated.” EX2004, ¶39.
`
`Instead, the comment in Kim is limited to “control methods.” EX1010, [0268];
`
`EX2004, ¶39.
`
`When describing the control methods, Kim discusses only a single one of the
`
`different device-types in each instance. EX2004, ¶40; see, e.g., Figs. 17A-43C and
`
`related discussions. This makes sense, and a POSITA would have recognized that
`
`Kim already explained that the control methods “may be used singly and/or by
`
`being combined together,” EX1010, [0179]; hence there would be no need to
`
`describe each control method in the context of each device type. EX2004, ¶40.
`
`However, a POSITA would not have understood Kim to suggest that physical
`
`IPR2021-00338
`
`
`PO Response
`
`Page 17
`
`
`
`
`
`arrangements of, for example, the folder-type device could or should be employed
`
`with the watch-type device. Id.
`
`C. Petitioner Misapprehends Kim’s Disclosure for Figure 15A-D.
`
`Kim describes the watch-type device with reference to his own Figures 15A-
`
`15D. EX1010, [0255]-[0262]; EX2004, ¶40. The watch-type device has a “first
`
`body 100a to which a band part 100c is connected and [a] second body 100b.” Id.,
`
`[0256]. The second body is referred to as a “cover”, and it is coupled by a hinge to
`
`one side of the first body, allowing the cover to open and close with first body
`
`100a and second body 100b flush against each other. EX2004, ¶40. The removable
`
`hinge also allows the first and second bodies to couple or separate. EX1010,
`
`[0256], [0258]. Both the first body and the second body have display units, and
`
`together the display units of the first body and the second body provide a dual-
`
`display device. Id., [0256].
`
`IPR2021-00338
`
`
`PO Response
`
`Page 18
`
`
`
`
`
`
`
` “Third body (i.e., [a] sub-device) [may be] coupled to one of the first and
`
`second bodies in a state that the first and second bodies are coupled.” Id., [0260].
`
`Indeed, immediately prior to introducing Fig. 15B, Kim states, “The method of
`
`coupling the sub-device in an overlapping manner to the second body will now be
`
`described for the sake of brevity.” Id., [260]. Fig. 15B is said to show “a coupling
`
`member 510 for fixing the sub-device [ ] provided on at least one side of the
`
`second body…and the sub-device may be…pressed to be coupled.” Id., [0261].
`
`IPR2021-00338
`
`
`PO Response
`
`Page 19
`
`
`
`
`
`
`
`From this textual and visual disclosure, a POSITA would understand that
`
`Kim’s Fig. 15B represents the embodiment wherein sub device 300 is coupled atop
`
`second body of the watch-type device in an overlapping manner. EX2004, ¶43.
`
`This is the explicit description of the illustration provided by Kim in Fig. 15B, and
`
`Petitioner is incorrect in asserting that Kim represents “Figure 15B was drawn as it
`
`was for the sake of brevity.” EX1002, ¶58; EX2004, ¶43. In fact, Kim makes no
`
`such statement. The quote from Kim is that, “The method of coupling the sub-
`
`device in an overlapping manner to the second body will now be described for the
`
`sake of brevity.” EX1010, [0260] (emphasis added). It is the description, not the
`
`illustration, that is said to be made for the sake of brevity, and when describing the
`
`IPR2021-00338
`
`
`PO Response
`
`Page 20
`
`
`
`
`
`illustration -- Fig. 15B -- Kim states, “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…pressed to be coupled.” Id., [0261]; EX2004, ¶43. Nothing
`
`in Kim suggests that Figure 15B was made for sake of brevity, and a POSITA
`
`would have understood that “brevity” applies to the discussion of how the
`
`coupling members 510 fix the sub-device to the second body in an overlapping
`
`manner used to describe other device types, or in lieu of couplings to each of the
`
`second body and the first body. EX2004, ¶43. Thus, Kim’s specification would
`
`have been understood by a POSITA to mean what it says, namely that Fig. 15B
`
`shows the coupling of a sub-device 300 to the “second body” (i.e., the cover of the
`
`watch-type device) in an overlapping manner. EX1010, [0256], [0260]-[0261];
`
`EX2004, ¶43. In other words, the specification states that Fig. 15B shows sub-
`
`device 300 overlapping atop second body 100b. EX1010, [0256], [0260]-[0261];
`
`EX2004, ¶43.
`
`Contrary to Petitioner’s assertion, EX1002, ¶58, Kim’s Figure 15B does not
`
`show, nor does Kim describe relative to 15B, the sub-device coupled to first body
`
`100a. EX2004, ¶44. While Kim’s Fig. 15B does not separately label 100b, it is
`
`indisputable that the description states Fig. 15B shows the coupling of a sub-device
`
`300 to the second body, and the second body is the cover 100b. EX1010, [0256],
`
`[0260]-[261]; EX2004, ¶44. Therefore, Petitioner is incorrect in asserting that
`IPR2021-00338
`PO Response
`Page 21
`
`
`
`
`
`
`second body 100b is not shown. EX2004, ¶44. A POSITA would not simply have
`
`ignored the description provided by Kim. Id. Instead, the POSITA would have
`
`concluded that, while not separately labeled, second body 100b of the watch-type
`
`device must be shown in its closed configuration atop first body 100a, and the sub-
`
`device 300 is shown as being coupled to the top side or outside of that second body
`
`in the stated overlapping manner. Id. This is the only way to properly harmonize
`
`the illustration and its description, and it is this recognition that makes sense when
`
`one considers how such a device would feasi