IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Mayfield et al.
`U.S. Patent No.:
`10,259,020 Attorney Docket No.: 50095-0028IP1
`Issue Date:
`April 16, 2019
`
`Appl. Serial No.: 15/851,952
`
`Filing Date:
`December 22, 2017
`
`Title:
`APPARATUS FOR CLEANING VIEW SCREENS AND LENSES
`AND METHOD FOR THE USE THEREOF
`
`
`
`
`SUPPLEMENTAL DECLARATION OF DR. JEREMY COOPERSTOCK
`
`APPLE 1089
`Apple v. GUI
`IPR2021-00470
`
`1
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 4
`
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 5
`
`
`
`
`
`I.
`
`II.
`
`III. TECHNICAL DISCUSSION ......................................................................... 5
`
`A. In multiple ways, Bohbot renders obvious a “switching device”
`“configured to activate, deactivate or send into hibernation the portable
`electronic device” and “an electronic circuit [of the electronic device]
`that is responsive to the switching device” (elements 1[a], 1[d], and 1[f]).
`.................................................................................................................... 6
`
`1.
`
`2.
`
`Bohbot’s headset acts as a switching device to activate and
`deactivate discharging of power from the primary module’s power
`storage device. ................................................................................ 7
`Bohbot’s headset acts as a switching device to activate and
`deactivate data transfer to, and storage at, the primary module’s
`data storage unit. ............................................................................. 9
`Bohbot’s headset acts as a switching device to activate and
`deactivate the primary module’s microphone circuitry. ............... 10
`Bohbot’s headset acts as a switching device to activate and
`deactivate the primary module. ..................................................... 11
`B. A POSITA would have modified Bohbot’s FIG. 3 based on FIG. 2. ...... 12
`
`3.
`
`4.
`
`C. Bohbot-Gundlach renders obvious “the electronic device comprises...
`recessed areas... configured to correspond to complimentary surface
`elements on the switching device” and “when coupled, the second case
`[of the electronic device] functions to protect the first case [of the
`switching device]” (elements 1[e] and 1[g]). ........................................... 13
`
`D. Bohbot-Gundlach-Diebel renders obvious the “switching device is
`configured to activate, deactivate or send into hibernation the portable
`electronic device” (element 1[f]). ............................................................ 16
`
`E. Bohbot-Gundlach and Bohbot-Gundlach-Diebel renders obvious claim 6.
`.................................................................................................................. 20
`
`F. Bohbot-Gundlach and Bohbot-Gundlach-Diebel renders obvious claim 7.
`.................................................................................................................. 23
`
`G. Bohbot-Gundlach-Li and Bohbot-Gundlach-Diebel-Li render obvious
`claims 4 and 18. ....................................................................................... 24
`
`2
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`H. Bohbot-Gundlach-Stevinson and Bohbot-Gundlach-Diebel-Stevinson
`render obvious claims 8 and 9. ................................................................ 25
`
`I. Bohbot-Gundlach-Stevinson-Iio and Bohbot-Gundlach-Diebel-
`Stevinson-Iio render obvious claim 17. ................................................... 27
`
`IV. CONCLUSION ............................................................................................. 30
`
`
`
`
`3
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`I, Jeremy Cooperstock, of Montreal, Canada, declare that:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Fish & Richardson, P.C., on behalf of Apple
`
`Inc. (“Petitioner”), as an independent expert consultant in this inter partes review
`
`(“IPR”) proceeding before the United States Patent and Trademark Office
`
`(“PTO”).
`
`2.
`
`I understand that this declaration will be submitted in support of
`
`Petitioner’s Reply to Patent Owner’s Response to the Petition for inter partes
`
`review of the ’020 Patent (U.S. Patent No. 10,259,020). This declaration
`
`supplements, and is intended to be read in conjunction with, my declaration in
`
`support of Apple’s Petition (APPLE-1003, “my First Declaration”). In my First
`
`Declaration, I address many topics, including (but not limited to) my background
`
`and qualifications, the level of skill in art, an overview of the ’020 Patent, claim
`
`construction, certain legal standards explained to me by Apple’s counsel, and a
`
`detailed analysis of the prior art against the ’020 Patent’s claims. The opinions and
`
`explanations expressed in my First Declaration apply equally here.
`
`3.
`
`In writing this Supplemental Declaration, I have considered the
`
`following: my own knowledge and experience, including my teaching and work
`
`experience in the above fields; and my experience of working with others involved
`
`in those fields.
`
`4
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`4.
`
`I have no financial interest in either party or in the outcome of this
`
`proceeding. I am being compensated for my work as an expert on an hourly basis,
`
`for all tasks involved. My compensation is not dependent on the outcome of these
`
`proceedings or on the content of my opinions.
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`5.
`
`Based on my knowledge and experience in the field and my review of
`
`the ’020 patent and its file history, I believe that a POSITA would have had at least
`
`a Bachelor’s degree in an academic area emphasizing electrical engineering,
`
`mechanical engineering, or a similar discipline, and at least two years of
`
`experience in the field working with electronic devices. Superior education could
`
`compensate for a deficiency in work experience, and vice-versa. I understand that
`
`Patent Owner and its expert, Dr. Toliyat, propose that the POSITA would have
`
`post-baccalaureate electronic device or system design experience. I agree.
`
`III. TECHNICAL DISCUSSION
`
`6.
`
`The analysis and opinions expressed in my First Declaration fully
`
`explain why each and every feature of the ’020 Patent’s Challenged Claims is
`
`provided in the prior art. I understand that Patent Owner and Dr. Toliyat have
`
`considered my opinions and offered their own, some of which are inconsistent with
`
`my view. I will address some of those points below. The fact that I have not
`
`5
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`addressed all of Patent Owner and Dr. Toliyat’s opinions should not be interpreted
`
`
`
`as agreement with them.
`
`7.
`
`The Patent Owner’s Response (POR) fails to address, much less rebut,
`
`positions advanced in my previous testimony. Indeed, rather than squarely
`
`confronting the substantial evidence of unpatentability offered through my first
`
`declaration, the POR mischaracterizes my positions and the prior art. Further, in
`
`advancing these arguments, GUI now relies upon Dr. Toliyat who provides no
`
`corroborating evidence or factual analysis in support of his conclusions.
`
`8.
`
`As I previously explained with reference to the applied prior art and
`
`corroborating references, the Challenged Claims would have been obvious to a
`
`POSITA. Below, I provide further testimony in response to GUI’s arguments.
`
`A.
`
`In multiple ways, Bohbot renders obvious a “switching device”
`“configured to activate, deactivate or send into hibernation the
`portable electronic device” and “an electronic circuit [of the
`electronic device] that is responsive to the switching device”
`(elements 1[a], 1[d], and 1[f]).
`
`9.
`
`As explained in my First Declaration, the claimed “‘switching device’
`
`encompasses a device that, when detected to be in close proximity to a portable
`
`electronic device, causes that portable electronic device to switch from one state to
`
`another” (APPLE-1003, ¶42), which GUI does not dispute (see POR, 16). I
`
`provided three independent, alternative mappings demonstrating the obviousness
`
`of these claim elements. Each of GUI’s three attempted rebuttals fail.
`
`6
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`1.
`
`Bohbot’s headset acts as a switching device to activate and
`deactivate discharging of power from the primary module’s
`power storage device.
`
`10. GUI’s argument that Bohbot allegedly discloses “passive transmission
`
`of power” (POR, 1) was previously rejected by the Board. Decision, 15. The
`
`POR’s attempt to remedy and resuscitate that previously rejected argument fails.
`
`In more detail, GUI argues that Bohbot’s primary module does not switch between
`
`an activated/operative state and a deactivated/inoperative state because “the
`
`charging voltage is always available at the blade contacts for charging the
`
`detachable headset when it come[s] into contact with the primary module.” POR,
`
`24, 18.
`
`11. However, nothing in Bohbot suggests that the charging voltage is
`
`always available at the blade contacts, and neither GUI nor its expert provide
`
`support for this assumption. GUI’s explanations regarding DC current flow and
`
`GUI’s analogy to a wall socket ignore that Bohbot’s primary module is a portable
`
`charger that provides power from a power storage device. Indeed, it was well
`
`known to a POSITA that a portable charger such as Bohbot’s primary module
`
`includes a battery connected to circuitry (e.g., DC-DC converter, discharge circuit,
`
`or controller) that controls output of a charging voltage to the contacts. APPLE-
`
`1030, [0235], FIG. 34; APPLE-1114, [0028], FIG. 1; APPLE-1115, [0013]-[0021],
`
`FIG. 1; APPLE-1116, [0043], FIG. 7; APPLE-1117, [0036]-[0038], FIG. 4.
`
`7
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`12. Further, GUI is wrong that “electron flow is not a characteristic of any
`
`change of state of any primary module circuitry.” Id. Whether and in what
`
`direction electrons flow indicates the state of a power storage device, e.g.,: (1) a
`
`charging state where electrical energy flows into the power storage device; (2) a
`
`storage state where electrical energy is maintained in the power storage device; or
`
`(3) a discharging state where electrical energy flows out of the power storage
`
`device. APPLE-1118.
`
`13. The power storage device is activated in the discharging state because
`
`it is providing electrical energy and deactivated in the storage state because no
`
`electrical energy is being transferred. Id. As I explained in my First Declaration,
`
`Bohbot suggests that the power storage device switches between states—from a
`
`storage (deactivated) state to a discharging (activated) state when the headset is
`
`connected to the primary module and from a discharging (activated) state to a
`
`storage (deactivated) state when the headset is disconnected from the primary
`
`module. APPLE-1003, ¶¶43, 70-71. Indeed, GUI admits that “if Bohbot’s headset
`
`was not magnetically coupled to the primary module, then there would be no
`
`charging and no power consumption from a charging process not occurring.” POR,
`
`59. However, as clear from Bohbot, if Bohbot’s headset is connected to the
`
`primary module, there would be charging and power consumption from the
`
`8
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`charging process, since “the headset recharges automatically as soon as it is
`
`
`
`attached to the support.” APPLE-1004, 7:2-3.
`
`2.
`
`Bohbot’s headset acts as a switching device to activate and
`deactivate data transfer to, and storage at, the primary
`module’s data storage unit.
`
`14. GUI’s argument that Bohbot allegedly discloses “passive acceptance
`
`of data” (POR, 2, 19) was also previously rejected by the Board, and GUI’s
`
`attempted resuscitation of this argument also fails. Decision, 15. More
`
`specifically, GUI’s argument that “data is first requested by the primary module
`
`and then sent in response by the headset” (POR, 19-20) is not supported by
`
`Bohbot.
`
`15. Even if GUI’s characterization of Bohbot were correct (which I do not
`
`agree), GUI ignores that Bohbot’s primary module’s data storage unit receives and
`
`stores data only when the headset is connected and sending data to the primary
`
`module. APPLE-1004, 7:16-27, 11:20-25. Accordingly, Bohbot suggests that the
`
`primary module’s data storage unit switches between states—from not receiving
`
`data (deactivated/inoperative) to receiving data (activated/operative) when the
`
`headset is connected and starts sending data to the primary module, and from
`
`receiving data (activated/operative) to not receiving data (deactivated/inoperative)
`
`9
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`when the headset is disconnected from, or otherwise stops sending data to, the
`
`
`
`primary module.1 APPLE-1003, ¶¶44, 72.
`
`3.
`
`Bohbot’s headset acts as a switching device to activate and
`deactivate the primary module’s microphone circuitry.
`
`16. As in its preliminary response, GUI again argues that “neither Apple
`
`nor Bohbot provide any details for the relied upon ‘means to detect,’ including
`
`what it consists of, what it specifically does, or whether it resides on detachable
`
`headset 20 or primary module 18.” POPR, 36; POR, 3, 20-21. As the Board
`
`previously noted, this argument does not address “the fact that the prior art
`
`describes a miniature device that detects a microphone, which is sufficient to
`
`describe that device as a switching device.” Decision, 15.
`
`17. GUI acknowledges that Bohbot discloses that the “means to detect the
`
`presence of the detachable headset 20 on the primary module 18” “make it
`
`possible, depending on the operating mode of the miniature device, to activate
`
`either of the microphones 25 and 26.” POR, 20 (citing APPLE-1004, 10:21-25
`
`(emphasis added)). Further, GUI does not dispute that Bohbot activates and
`
`
`1 Notably, GUI does not dispute that “receiving data” is an “operative state” and
`
`“not receiving data” is an “inoperative state” of the data storage unit. See POR,
`
`24-25.
`
`
`
`10
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`deactivates the primary module’s microphone. GUI alleges, however, that “the
`
`
`
`alternating microphone functionality... is due to an undisclosed operating mode.”
`
`POR, 21. Here, GUI mischaracterizes Bohbot.
`
`18. Bohbot actually discloses two operating modes: “telephone call in
`
`progress” and “no telephone call in progress.” APPLE-1004, 11:1-6. During a
`
`“telephone call in progress,” the alternating microphone functionality is due to
`
`“headset detached” and “headset not detached.” Id. Specifically, the primary
`
`module’s microphone is turned off when “telephone call [is] in progress and
`
`headset [is] detached” and is turned on when “telephone call [is] in progress and
`
`headset [is] not detached.” Thus, during a “telephone call in progress,” the
`
`primary module’s microphone circuitry switches between states—from off
`
`(deactivated/inoperative) to on (activated/operative) when the headset is connected
`
`and from on (activated/operative) to off (deactivated/inoperative) when the headset
`
`is disconnected from the primary module. APPLE-1003, ¶¶45-48, 73-74.
`
`4.
`
`Bohbot’s headset acts as a switching device to activate and
`deactivate the primary module.
`
`19. GUI argues that a POSITA would not understand that state transitions
`
`of the power storage device, the data storage unit, and the microphone circuitry,
`
`constitute activating/deactivating the primary module, without more information
`
`about how the primary module operates. POR, 24-26.
`
`11
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`20. As I previously explained in my First Declaration, the primary
`
`module’s power storage device, data storage unit, and microphone circuitry are all
`
`activated when the headset is connected to the primary module and are all
`
`deactivated when the headset is disconnected from the primary module. APPLE-
`
`1003, ¶¶43-48, 72-74.
`
`21.
`
`Indeed, GUI admits that “Bohbot already has functionality for the
`
`primary module not receiving data, the primary module not providing power, and
`
`the primary module not having its microphone on when Bohbot’s headset is not
`
`magnetically coupled to the primary module.” POR, 59. A POSITA would have
`
`found it obvious that activating all of the primary module’s components constitutes
`
`activating the primary module, and that deactivating all of the primary module’s
`
`components constitutes deactivating the primary module.
`
`B. A POSITA would have modified Bohbot’s FIG. 3 based on FIG. 2.
`
`22. GUI recycles its failed argument that a POSITA would not have
`
`combined the teachings of Bohbot’s FIGS. 2 and 3. POPR, 36-37; POR, 3. This
`
`argument was previously rejected by the Board, and GUI does not make any
`
`attempt in the POR to address, much less dispute, the specific reasons to combine
`
`Bohbot’s FIGS. 2 and 3 that I discussed in my First Declaration (APPLE-1003,
`
`¶50), which the Board found sufficient. Decision, 19.
`
`12
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`C. Bohbot-Gundlach renders obvious “the electronic device
`comprises... recessed areas... configured to correspond to
`complimentary surface elements on the switching device” and
`“when coupled, the second case [of the electronic device] functions
`to protect the first case [of the switching device]” (elements 1[e]
`and 1[g]).
`
`23. GUI does not dispute that Bohbot-Gundlach discloses elements 1[e]
`
`and 1[g], but rather argues that the rationale to combine Gundlach and Bohbot that
`
`I had discussed in my First Declaration “is vague because it does not specify which
`
`Gundlach ‘contoured recess’ is being referenced.” POR, 13. As I had discussed in
`
`my First Declaration, Bohbot-Gundlach incorporates Gundlach’s general teaching
`
`of a contoured recess for retaining a headset, not any of Gundlach’s particular
`
`embodiments. APPLE-1003, ¶¶33-36.
`
`24. GUI points to Gundlach’s embodiment where “the entire container is
`
`intended to fit into an expansion slot” and alleges that a “POSITA would
`
`understand the desire for Gundlach to deeply embed its earpieces in their
`
`container.” POR, 13 (emphasis added). Yet, Gundlach makes clear that the
`
`expansion-slot feature is an optional feature. See APPLE-1005, [0056]-[0057]
`
`(“The portable cradle... may fit inside a standard expansion slot.”) Indeed,
`
`Gundlach does not mention the expansion slot feature in connection with the
`
`clamshell case embodiment. Compare APPLE-1005, [0021]-[0077] (describing
`
`13
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`expansion slot embodiments) with [0079]-[0080] (discussing the clamshell case
`
`
`
`embodiment).
`
`25. Relying upon its misunderstanding of Gundlach, GUI
`
`mischaracterizes my discussion of the Bohbot-Gundlach combination as adding
`
`“Gundlach’s deep recess to Bohbot” and states that “the reasons for Gundlach’s
`
`deep recesses are not applicable to Bohbot.” POR, 22 (emphasis added), 14.
`
`Notwithstanding this mischaracterization, a POSITA would not have been
`
`dissuaded by Gundlach’s optional recess dimensions from providing Bohbot’s
`
`primary module with a contoured recess for retaining a headset. If Gundlach’s
`
`exact recess dimensions were unsuitable for Bohbot’s system, a POSITA would
`
`have been capable of employing ordinary creativity to carry out the combination in
`
`a manner necessary to achieve the advantages taught by Bohbot. For example,
`
`GUI’s concerns regarding the deep recess could be accommodated by the common
`
`sense solution of a shallow recess in the primary module that still provides
`
`protection to at least half of the surface of the headset’s case.
`
`26. GUI further argues that “Gundlach’s deep recesses would be
`
`unsuitable for the easy and quick detachment needed by Bohbot,” adding that the
`
`headset would be “not readily available for use,” and difficult to remove “with one
`
`hand.” POR, 13-15. However, Bohbot nowhere describes its headset as being
`
`14
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`easy and quick to detach “with one hand,” and thereby being “readily available for
`
`
`
`use.”
`
`27.
`
`Indeed, the portions of Bohbot that GUI cites do not support GUI’s
`
`conclusion. Rather, as even GUI recognizes, Bohbot’s magnetic attachments
`
`“make attachment and detachment easy” but also “are powerful enough to make an
`
`effective attachment possible, thus avoiding a detachment that is so easy it could
`
`easily be removed by a person with malicious intentions, or an untimely
`
`detachment that would lead to loss of the headset.” Ex. 1004, 3:26-4:3 (emphasis
`
`added); POR, 14. As I had previously noted in my First Declaration, the semi-
`
`enclosed protection provided by the contoured recess is further advantageous and
`
`complementary to Bohbot’s stated goal. APPLE-1003, ¶¶33-36.
`
`28. Based on Bohbot’s disclosure cited above, GUI argues that a
`
`“POSITA would appreciate that Bohbot provides all the attaching means needed or
`
`desired, and would have no motivation to seek out Gundlach or to add Gundlach’s
`
`recess.” POR, 14, 12. GUI further argues that “a recess becomes a hinderance, not
`
`a solution.” Id. However, Bohbot’s magnetic attachment does not provide semi-
`
`enclosed protection offered by a contoured recess, which is further advantageous in
`
`preventing detachment or physical damage during minor jostling or when hit by
`
`objects, or removal by person with malicious intent, as I had discussed in my First
`
`Declaration. APPLE-1003, ¶¶33-36. Moreover, GUI not only ignores these
`
`15
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`motivations, but also ignores that Gundlach provides a suitable option for semi-
`
`
`
`enclosed protection in the form of a contoured recess, and Bohbot does not teach
`
`away from the use of a contoured recess.
`
`29. GUI additionally argues that, in essence, a recess that leaves any side
`
`of the headset unprotected would not be protecting the headset. POR, 27.
`
`However, the plain language of the claim does not require total protection of the
`
`first case on all sides, and GUI has not established otherwise.
`
`D. Bohbot-Gundlach-Diebel renders obvious the “switching device is
`configured to activate, deactivate or send into hibernation the
`portable electronic device” (element 1[f]).
`
`30. GUI does not dispute that Bohbot-Gundlach-Diebel discloses element
`
`1[f], but rather argues there is no motivation to combine them. As I had explained
`
`in my First Declaration, a POSITA would have been motivated to combine the
`
`Bohbot-Gundlach system with the teachings of Diebel to provide a primary module
`
`with an “extended sleep mode” (hibernation) that, when the headset is separated
`
`from the primary module, turns off inactive circuits of the primary module so that
`
`circuitry of the primary module will use less power and the primary module will
`
`retain its battery power for relatively longer periods of time. APPLE-1003, ¶¶159-
`
`162. The Board determined that it would have been reasonable for a POSITA to
`
`modify Bohbot-Gundlach to incorporate the “extended sleep mode” teachings of
`
`Diebel. Decision, 38.
`
`16
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`31. GUI argues that “Bohbot evidences no need for, or benefit from, such
`
`an extended sleep mode for the primary module which needs to stay active to
`
`function as Bohbot intended such as to interface with the phone and provide
`
`incoming call notifications.” POR, 5. Neither GUI nor its expert provides any
`
`support for this assertion. Bohbot does not disclose that its primary module needs
`
`to stay active to function when the headset is separated from the primary module.
`
`In fact, Bohbot’s primary module cannot interface with the phone and provide
`
`incoming call notifications when the headset is separated from the primary module.
`
`APPLE-1004, 5:9-18, 7:6-27.
`
`32. GUI further argues that “a POSITA would have no reason or
`
`motivation to make the suggested combination... because Bohbot is concerned
`
`with, and indeed seeks to address, the issue of low batteries in the headset, not in
`
`the primary module.” POR, 5. GUI’s argument is misplaced, as Bohbot’s alleged
`
`concern with low batteries in the headset does not undermine a POSITA’s
`
`motivation to also address the issue of low batteries in the primary module. The
`
`Board determined that the rationale for combining the references—that the primary
`
`module will use less power and the primary module will retain its battery power
`
`for relatively longer periods of time—is reasonable. Decision, 38. GUI fails to
`
`rebut the stated rationale discussed in my First Declaration. APPLE-1003, ¶¶159-
`
`162.
`
`17
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`33.
`
`Instead, GUI argues that Diebel’s teaching of “lowering power
`
`consumption” does not address “initiating charging, alternating microphones, or
`
`receiving data.” POR, 58. However, I did not rely on Diebel for these features
`
`addressed by Bohbot, but rather for Diebel’s teaching of an “extended sleep mode”
`
`(hibernation) that is entered when the headset is separated from the primary
`
`module and exited when the headset is connected to the primary module. APPLE-
`
`1003, ¶¶159-162. Diebel explains that for the extended sleep mode, “some
`
`inactive circuits or portions of the circuit will be turned off so they do not draw
`
`power.” APPLE-1030, [0192]. Applying Diebel’s teachings to Bohbot-Gundlach,
`
`a POSITA would have found it obvious to turn off inactive circuits (e.g., power
`
`storage device, data storage unit, and microphone circuitry) of the primary module
`
`when the headset is separated from the primary module so they do not draw power.
`
`APPLE-1003, ¶¶159-162.
`
`34. GUI further argues that Diebel does not describe “[t]he specific
`
`mechanism for initiating or discontinuing such ‘extended sleep mode.’” POR, 59.
`
`I disagree as Diebel describes how it initiates and discontinues its “extended sleep
`
`mode.” See APPLE-1030, [0192]-[0197]. Further, Diebel’s specific mechanism
`
`for initiating and discontinuing the extended sleep mode is irrelevant to my
`
`analysis of the combination.
`
`18
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`35.
`
`I agree with GUI that “Bohbot already has functionality for the
`
`primary module not receiving data, the primary module not providing power, and
`
`the primary module not having its microphone on when Bohbot’s headset is not
`
`magnetically coupled to the primary module.” POR, 59. However, Diebel
`
`provides a POSITA with additional details and advantages of “extended sleep
`
`mode,” including that “extended sleep mode” provides the benefits that “circuitry
`
`of the case will use less power so the case will retain its battery power for
`
`relatively longer periods of time” and “some inactive circuits or portions of the
`
`circuit will be turned off so they do not draw power.” APPLE-1030, [0192]-
`
`[0193]. A POSITA would have been motivated to look to Diebel for its stated
`
`benefits.
`
`36. With respect to element 1[f], GUI argues that it is “not clear how
`
`Apple is trying to weave together Bohbot’s headset, Bohbot’s primary module and
`
`Diebel’s charging case.” POR, 61. This argument appears to focus on whether
`
`components of Bohbot and Diebel can be physically combined together. However,
`
`my analysis did not rely on the physical combination of Bohbot and Diebel, but
`
`rather for Diebel’s teaching of an “extended sleep mode” (hibernation) that is
`
`entered when the headset is separated from the primary module and exited when
`
`the headset is connected to the primary module. APPLE-1003, ¶¶159-162.
`
`19
`
`

`

`
`
`
`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`37. GUI further attacks Bohbot’s and Diebel’s disclosures. POR, 61.
`
`With respect to Bohbot, GUI argues that “element 1[f] would still not be met for
`
`lack of a showing that Bohbot’s headset (or anything else from Bohbot) is
`
`configured to activate, deactivate or send into hibernation Bohbot’s primary
`
`module.” POR, 61. As explained above in Section III.A.4, Bohbot renders
`
`obvious element 1[f].
`
`38. With respect to Diebel, GUI references Diebel’s “charge phone
`
`battery mode” and argues that a POSITA would not understand entering or exiting
`
`this mode constitutes activating, deactivating, or hibernating Diebel’s charging
`
`case “without more information about how this process works.” POR, 61. This
`
`argument is a strawman as I did not rely on entering and exiting Diebel’s “charge
`
`phone battery mode” but rather Diebel’s teaching of an “extended sleep mode”
`
`(hibernation) that is entered when the headset is separated from the primary
`
`module and exited when the headset is connected to the primary module. APPLE-
`
`1003, ¶¶159-162.
`
`E.
`
`Bohbot-Gundlach and Bohbot-Gundlach-Diebel renders obvious
`claim 6.
`
`39. GUI does not dispute that Bohbot-Gundlach discloses claim 6, but
`
`rather argues there is no motivation to combine them. Similar to GUI’s arguments
`
`addressed in Section III.C, GUI argues that a clamshell case would make it “more
`
`20
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`difficult to access the headset” “especially with one hand.” POR, 30-31. As
`
`
`
`previously discussed, Bohbot nowhere describes the headset being easy and quick
`
`to detach “with one hand.” The portions of Bohbot that GUI cites do not support
`
`its conclusion. Rather, as GUI recognizes, Bohbot’s magnetic attachments “make
`
`attachment and detachment easy” but also “are powerful enough to make an
`
`effective attachment possible, thus avoiding a detachment that is so easy it could
`
`easily be removed by a person with malicious intentions, or an untimely
`
`detachment that would lead to loss of the headset.” Ex. 1004, 3:26-4:3 (emphasis
`
`added); POR, 14. In my First Declaration, I provided an explanation of various
`
`predictable advantages of a lid on the primary module that would have motivated a
`
`POSITA to modify Bohbot based on Gundlach’s teachings, which GUI does not
`
`address, much less rebut. APPLE-1003, ¶¶86-88.
`
`40. GUI further argues that “Bohbot’s headset inside a clamshell case
`
`defeats” Bohbot’s design goals of being “detached by nature, and then repositioned
`
`frequently;” making “attachment and detachment easy” but “powerful enough to
`
`make an effective attachment possible;” and allowing the user to “bring the entire
`
`miniature device to his ear” during a telephone conversation. POR, 31-32. GUI
`
`also argues that “a POSITA would not want to contain Bohbot’s headset in a
`
`clamshell case, because then one would not be able to utilize the necessary, useful,
`
`and desirable features of the headset if the case was closed,” for example, “one
`
`21
`
`

`

`
`
` Attorney Docket No. 50095-0028IP1
`IPR of U.S. Patent No. 10,259,020
`
`
`
`could not use the speaker unless the headset was removed from the clamshell
`
`
`
`case;” “one could not use the headset, or the speaker, while it is charging;” and
`
`“one would have difficulty hearing, or might not hear at all, the speaker/ringer
`
`when the clamshell was closed.” POR, 31-32. However, neither GUI nor its
`
`expert provide any evidence that retaining the headset in a clamshell case would
`
`defeat Bohbot’s design goals or render Bohbot’s system less efficient or effective.
`
`Moreover, as would have been obvious to a POSITA, it is not a complex task for a
`
`user to open a clamshell case, and that it was, as of the timeframe of the critical
`
`date, a common design choice to make use of electronic devices for audio
`
`communications (cellphones) by way of opening a clamshell case that exposed the
`
`microphone and speaker.
`
`41. Further, a POSITA would not have been dissuaded by Bohbot’s
`
`alleged design goals from providing Bohbot’s primary module with a lid and a
`
`hinge. If Gundlach’s recess dime