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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00470
`Patent 10,259,020
`
`
`
`
`
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
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`
`
`
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`

`

`I. 
`
`TABLE OF CONTENTS
`
`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]). ................................ 1 
`A.  Bohbot’s headset acts as a switching device to activate and deactivate
`discharging of power from the primary module’s power storage device.
` .................................................................................................................. 2 
`B.  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. 4 
`C.  Bohbot’s headset acts as a switching device to activate and deactivate
`the primary module’s microphone circuitry. ........................................... 5 
`D.  Bohbot’s headset acts as a switching device to activate and deactivate
`the primary module. ................................................................................. 6 
`A POSITA would have modified Bohbot’s FIG. 3 based on FIG. 2. ............. 7 
`II. 
`III.  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]). .................................................. 8 
`IV.  Bohbot-Gundlach-Diebel renders obvious the “switching device is
`configured to activate, deactivate or send into hibernation the portable
`electronic device” (element 1[f]). .................................................................. 12 
`Bohbot-Gundlach and Bohbot-Gundlach-Diebel renders obvious claim 6. . 16 
`V. 
`VI.  Bohbot-Gundlach and Bohbot-Gundlach-Diebel renders obvious claim 7. . 18 
`VII.  Bohbot-Gundlach-Li and Bohbot-Gundlach-Diebel-Li render obvious claims
`4 and 18. ......................................................................................................... 19 
`VIII.  Bohbot-Gundlach-Stevinson and Bohbot-Gundlach-Diebel-Stevinson render
`obvious claims 8 and 9. ................................................................................. 21 
`IX.  Bohbot-Gundlach-Stevinson-Iio and Bohbot-Gundlach-Diebel-Stevinson-Iio
`render obvious claim 17. ............................................................................... 23 
`CONCLUSION .............................................................................................. 27 
`
`X. 
`
`
`i
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`

`

`
`
`
`
`APPLE-1001
`
`
`APPLE-1002
`
`APPLE-1003
`
`APPLE-1004
`
`
`APPLE-1005
`
`
`APPLE-1006
`
`
`APPLE-1007
`
`
`APPLE-1008
`
`
`APPLE-1009
`
`
`APPLE-1010
`
`
`APPLE-1011
`
`APPLE-1012
`
`APPLE-1013
`
`APPLE-1014
`
`APPLE-1015
`
`
`
`
`
`
`
`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`EXHIBITS
`
`U.S. Patent No. 10,259,020 to Mayfield et al. (“the ’020
`patent”)
`
`Excerpts from the Prosecution History of the ’020 patent
`
`Declaration of Dr. Jeremy Cooperstock
`
`Certified English Translation of French Patent Publication No.
`FR2912858 to Bohbot
`
`U.S. Patent Application Publication No. 2008/0132293 to
`Gundlach et al.
`
`Certified English Translation of Chinese Patent Publication No.
`CN201114710Y to Li et al.
`
`U.S. Patent Application Publication No. 2011/0317865 to
`Stevinson
`
`U.S. Patent Application Publication No. 2003/0005558 to
`Wong
`
`U.S. Patent Application Publication No. 2009/0014105 to
`Shattuck
`
`U.S. Patent Application Publication No. 2011/0218502 to Iio et
`al.
`
`U.S. Provisional Application No. 61/515,752
`
`U.S. Provisional Application No. 61/555,310
`
`U.S. Provisional Application No. 61/561,087
`
`U.S. Provisional Application No. 61/568,031
`
`U.S. Provisional Application No. 61/569,093
`
`ii
`
`

`

`
`
`
`APPLE-1016
`
`APPLE-1017
`
`APPLE-1018
`
`APPLE-1019
`
`APPLE-1020
`
`
`APPLE-1021
`
`APPLE-1022
`
`APPLE-1023
`
`APPLE-1024
`
`APPLE-1025
`
`APPLE-1026
`
`APPLE-1027
`
`
`APPLE-1028
`
`
`APPLE-1029
`
`APPLE-1030
`
`
`
`
`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`U.S. Provisional Application No. 61/576,834
`
`U.S. Provisional Application No. 61/592,344
`
`U.S. Provisional Application No. 61/619,229
`
`U.S. Provisional Application No. 61/661,090
`
`Certified English Translation of European Patent Publication
`No. EP2037661 to Ponticelli et al.
`
`French Patent Publication No. FR2912858 to Bohbot
`
`Chinese Patent Publication No. CN201114710Y to Li et al.
`
`European Patent Publication No. EP2037661 to Ponticelli et al.
`
`U.S. Patent No. 8,086,281 to Rabu et al.
`
`U.S. Patent No. 8,737,650 to Pedersen
`
`U.S. Patent No. 7,161,578 to Schneider
`
`U.S. Patent Application Publication No. 2004/0227998 to
`Aoshima et al.
`
`U.S. Patent Application Publication No. 2009/0091708 to
`Greene
`
`U.S. Patent Application Publication No. 2011/0117851 to Kim
`
`U.S. Patent Application Publication No. 2010/0124040 to
`Diebel et al.
`
`
`APPLE-1031-1033 RESERVED
`
`APPLE-1034
`
`AUDIO/VIDEO REMOTE CONTROL PROFILE (Version 1.0
`Adopted), Bluetooth Audio Video Working Group
`
`
`APPLE-1035
`
`
`
`U.S. Patent Application Publication No. 2006/0166715
`
`iii
`
`

`

`
`
`
`
`APPLE-1036
`
`APPLE-1037
`
`APPLE-1038
`
`
`
`
`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`U.S. Patent Application Publication No. 2008/0070501
`
`U.S. Patent No. 7,761,091
`
`Voyager 855 Bluetooth Headset—User Guide, Plantronics
`Sound Innovation
`
`Jabra Sport—User Manual, Jabra
`
`U.S. Patent No. 7,012,802
`
`U.S. Patent Application Publication No. 2008/0167088
`
`U.S. Patent Application Publication No. 2008/0157110
`
`
`APPLE-1039
`
`APPLE-1040-1041 RESERVED
`
`APPLE-1042
`
`APPLE-1043
`
`APPLE-1044
`
`APPLE-1045
`
`Advantages and Weaknesses of LED Application, LEDinside,
`https://web.archive.org/web/20121102080414/https://www.ledi
`nside.com/knowledge/2007/12/Advantages_and_weaknesses_o
`f_LED_Application_200712
`
`
`APPLE-1046-1049 RESERVED
`
`APPLE-1050
`
`APPLE-1051
`
`U.S. Publication No. 2008/0076489 to Rosener et al.
`
`Next-Generation Stereo Bluetooth Headsets, TechHive,
`https://www.techhive.com/article/162341/stereo_bluetooth_hea
`dsets.html
`
`
`APPLE-1052-1058 RESERVED
`
`APPLE-1059
`
`U.S. Patent Publication No. 2007/0145255 to Nishikawa et al.
`
`U.S. Patent Publication No. 2008/0298606 to Johnson et al.
`
`APPLE-1060
`
`APPLE-1061
`
`APPLE-1062
`
`
`
`RESERVED
`
`U.S. Patent No. 7,195,362
`
`iv
`
`

`

`
`
`
`
`APPLE-1063
`
`APPLE-1064
`
`APPLE-1065
`
`APPLE-1066
`
`
`APPLE-1067
`
`
`
`
`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`U.S. Patent No. 8,064,194
`
`EP Patent Publication No. 0 517 497
`
`U.S. Patent Publication No. 2010/0195860
`
`Plugfones.com,
`https://web.archive.org/web/20110820072700/https://www.plug
`fones.com/
`
`CES: Hands On with the Kleer Wireless Earbuds, Gadget Lab |
`WIRED,
`https://web.archive.org/web/20140721204820/http://www.wire
`d.com/2007/01/ces_hands_on_wi/
`
`U.S. Patent Publication No. 2006/0111044
`
`RESERVED
`
`
`APPLE-1068
`
`APPLE-1069-1087
`
`APPLE-1088
`
`APPLE-1089
`
`APPLE-1090-1099
`
`APPLE-1100
`
`Remote Deposition Transcript, Dr. Hamid A. Toliyat, Ph.D.
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`
`RESERVED
`
`Complaint for Patent Infringement, GUI Global Products, Ltd.
`D/B/A Gwee v. Apple Inc., Case No. 4:20-cv-02652 (SDTX)
`
`Complaint for Patent Infringement, GUI Global Products, Ltd.
`D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case No.
`4:20-cv-02624 (SDTX)
`
`Joint Motion to Consolidate, GUI Global Products, Ltd. D/B/A
`Gwee v. Samsung Electronics Co. Ltd, et al., Case No. 4:20-cv-
`02624 (SDTX)
`
`Response to Joint Motion to Consolidate, GUI Global
`Products, Ltd. D/B/A Gwee v. Samsung Electronics Co. Ltd, et
`al., Case No. 4:20-cv-02624 (SDTX)
`
`
`APPLE-1101
`
`
`APPLE-1102
`
`
`APPLE-1103
`
`
`
`v
`
`

`

`
`
`
`
`APPLE-1104
`
`
`APPLE-1105
`
`
`APPLE-1106
`
`
`APPLE-1107
`
`
`APPLE-1108
`
`
`APPLE-1109
`
`APPLE-1110
`
`
`APPLE-1111
`
`
`APPLE-1112
`
`
`APPLE-1113
`
`APPLE-1114
`
`
`
`
`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`Order re Joint Motion to Consolidate, GUI Global Products,
`Ltd. D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case
`No. 4:20-cv-02624 (SDTX)
`
`Defendant Apple Inc.’s Motion to Transfer Venue to the
`Northern District of California, GUI Global Products, Ltd.
`D/B/A Gwee v. Apple Inc., Case No. 4:20-cv-02652 (SDTX)
`
`Defendant Samsung’s Motion to Transfer Venue to the
`Northern District of California, GUI Global Products, Ltd.
`D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case No.
`4:20-cv-02624 (SDTX)
`
`Joint Submission Regarding Agreed and Non-Agreed
`Scheduling Dates, GUI Global Products, Ltd. D/B/A Gwee v.
`Samsung Electronics Co. Ltd, et al., Case No. 4:20-cv-02624
`(SDTX)
`
`Amended Scheduling Order, GUI Global Products, Ltd. D/B/A
`Gwee v. Samsung Electronics Co. Ltd, et al., Case No. 4:20-cv-
`02624 (SDTX)
`
`Stipulation by Apple Inc.
`
`Transcript of Discovery Hearing, GUI Global Products, Ltd.
`D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case No.
`4:20-cv-02624 (SDTX)
`
`SDTX 2011 Onward – Time to Milestones Search, Docket
`Navigator
`
`Amended Scheduling Order, GUI Global Products, Ltd. D/B/A
`Gwee v. Samsung Electronics Co. Ltd, et al., Case No. 4:20-
`cv02624 (SDTX), entered July 16, 2021
`
`Declaration of Seth Sproul
`
`U.S. Patent Application Publication No. 2010/0320961 to
`Castillo et al.
`
`
`
`vi
`
`

`

`
`
`
`
`APPLE-1115
`
`
`APPLE-1116
`
`
`APPLE-1117
`
`
`APPLE-1118
`
`
`
`
`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`U.S. Patent Application Publication No. 2005/0046384 to
`Simoes et al.
`
`U.S. Patent Application Publication No. 2007/0236180 to
`Rodgers
`
`U.S. Patent Application Publication No. 2011/0148344 to
`Manor et al.
`
`Science Made Simple, How Do Batteries Work?,
`https://web.archive.org/web/20060710011651/http://www.scien
`cemadesimple.com:80/welcome/new.pdf
`
`
`
`vii
`
`

`

`
`
`
`
`
`
`
`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`As demonstrated below with reference to evidence including Dr.
`
`Cooperstock’s testimony, GUI’s Response (POR) fails to address, much less rebut,
`
`positions advanced in Apple’s Petition.
`
`Indeed, rather than squarely confronting the Petition’s substantial evidence
`
`of unpatentability, the POR recycles previously failed arguments that
`
`mischaracterize Apple’s positions and the prior art. Notably, in repeating these
`
`arguments, GUI now relies upon an expert who, unlike Dr. Cooperstock, provides
`
`no corroborating evidence or factual analysis in support of his conclusions. Cf. TQ
`
`Delta, LLC v. Cisco Systems Inc., 942 F.3d 1352, 1362-63 (Fed. Cir. 2019)
`
`(reversing a PTAB finding of obviousness that was based on an “ipse dixit
`
`declaration”).
`
`As explained in the Petition and addressed below, the prior art renders
`
`obvious the Challenged Claims. Accordingly, Apple respectfully submits that the
`
`Board should find the Challenged Claims unpatentable.
`
`I.
`
`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]).
`The Petition established that the claimed “‘switching device’ encompasses a
`
`device that, when detected to be in close proximity to a portable electronic device,
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`causes that portable electronic device to switch from one state to another”
`
`
`
`1
`
`

`

`
`
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`(Petition, 12; APPLE-1089, ¶9), which GUI does not dispute (see POR, 16). The
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`
`
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`Petition provides three independent, alternative mappings demonstrating the
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`obviousness of these claim elements. Each of GUI’s three attempted rebuttals fail.
`
`A. Bohbot’s headset acts as a switching device to activate and
`deactivate discharging of power from the primary module’s
`power storage device.
`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.
`
`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-1089,
`
`
`
`2
`
`

`

`
`
`
`¶¶10-11; APPLE-1030, [0235], FIG. 34; APPLE-1114, [0028], FIG. 1; APPLE-
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`
`
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`1115, [0013]-[0021], FIG. 1; APPLE-1116, [0043], FIG. 7; APPLE-1117, [0036]-
`
`[0038], FIG. 4.
`
`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-1089, ¶12; APPLE-1118, 2-4.
`
`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 established in the Petition, 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.
`
`Petition, 12, 28-29. 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.
`3
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`
`
`

`

`
`
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`Logically, the converse is also true—if Bohbot’s headset is connected to the
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`
`
`
`primary module, there would be charging and power consumption from the
`
`charging process. APPLE-1089, ¶13.
`
`B.
`
`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.
`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. Additionally, 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. APPLE-1089,
`
`¶14.
`
`Even if GUI’s characterization of Bohbot were correct (which Apple does
`
`not concede), 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) when the headset is disconnected from, or otherwise
`
`
`
`4
`
`

`

`
`
`
`stops sending data to, the primary module.1 Petition, 12-13, 27-28; APPLE-1089,
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
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`
`
`
`¶15.
`
`C. Bohbot’s headset acts as a switching device to activate and
`deactivate the primary module’s microphone circuitry.
`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.
`
`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. Further, GUI does not dispute
`
`that Bohbot activates and deactivates the primary module’s microphone. GUI
`
`
`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.
`
`
`
`
`
`5
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`

`

`
`
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`alleges, however, that “the alternating microphone functionality...is due to an
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`
`
`
`undisclosed operating mode.” POR 21. Here, GUI mischaracterizes Bohbot.
`
`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.; APPLE-1088, 76:1-19. 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.” Id. 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. Petition, 14-15, 28; APPLE-
`
`1089, ¶¶16-18.
`
`D. Bohbot’s headset acts as a switching device to activate and
`deactivate the primary module.
`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.
`
`
`
`6
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`

`

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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`However, as Dr. Cooperstock previously explained, 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. Petition, 12-15, 27-29;
`
`APPLE-1089, ¶¶19-20.
`
`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. APPLE-1089, ¶21.
`
`II. A POSITA would have modified Bohbot’s FIG. 3 based on FIG. 2.
`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
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`POR to address the specific reasons to combine Bohbot’s FIGS. 2 and 3 (Petition,
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`17; APPLE-1089, ¶22), which the Board found sufficient. Decision, 19.
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`Accordingly, the Board should maintain its determination that a POSITA would
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`have modified Bohbot’s FIG. 3 embodiment based on Bohbot’s FIG. 2 teachings.
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`7
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`Id.
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
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`III. 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]).
`GUI does not dispute that Bohbot-Gundlach discloses elements 1[e] and
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`1[g], but rather argues that Apple’s rationale to combine Gundlach and Bohbot “is
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`vague because it does not specify which Gundlach ‘contoured recess’ is being
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`referenced.” POR, 13. Apple is not required to “specify which Gundlach
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`‘contoured recess’ is being reference[d]” because it is irrelevant. A “prior art
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`reference must be considered for all that it teaches to those of ordinary skill in the
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`art, not just the embodiments disclosed therein.” In re Arora, 369 F. App’x 120,
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`122 (Fed. Cir. 2010) (citing In re Inland Steel Co., 265 F.3d 1354, 1361 (Fed. Cir.
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`2001); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992).) Bohbot-Gundlach
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`incorporates Gundlach’s general teaching of a contoured recess for retaining a
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`headset, not any of Gundlach’s particular embodiments. Petition, 7-8; APPLE-
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`1089, ¶23.
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`GUI points to Gundlach’s embodiment where “the entire container is
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`intended to fit into an expansion slot” and alleges that a “POSITA would
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`understand the desire for Gundlach to deeply embed its earpieces in their
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`container.” POR, 13 (emphasis added). Yet, Gundlach makes clear that the
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`8
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`expansion-slot feature is an optional feature. See APPLE-1005, [0056]-[0057]
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
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`(“may fit inside a standard expansion slot.”). Indeed, Gundlach does not mention
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`the expansion slot feature in connection with the clamshell case embodiment.
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`Compare APPLE-1005, [0021]-[0077] with [0079]-[0080]; APPLE-1088, 81:22-
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`82:3; APPLE-1089, ¶24.
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`Relying upon its misunderstanding of Gundlach, GUI mischaracterizes Dr.
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`Cooperstock’s Bohbot-Gundlach combination as adding “Gundlach’s deep recess
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`to Bohbot” and states that “the reasons for Gundlach’s deep recesses are not
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`applicable to Bohbot.” POR, 22 (emphasis added), 14. Notwithstanding this
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`mischaracterization, a POSITA would not have been dissuaded by Gundlach’s
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`optional recess dimensions from providing Bohbot’s primary module with a
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`contoured recess for retaining a headset. APPLE-1089, ¶25. If Gundlach’s exact
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`recess dimensions were unsuitable for Bohbot’s system, a POSITA would have
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`been capable of employing ordinary creativity to carry out the combination in a
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`manner necessary to achieve the advantages taught by Bohbot. Facebook, Inc. v.
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`Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020); APPLE-1088,
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`48:19-50:22 (Dr. Toliyat explaining that skilled artisans would have had
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`“electronic device or system design experience” and “are very creative”); APPLE-
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`1089, ¶25. For example, GUI’s concerns regarding the deep recess could be
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`accommodated by the common sense solution of a shallow recess in the primary
`9
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`module that still provides protection to at least half of the surface of the headset’s
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
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`
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`case. Id.
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`GUI further argues that “Gundlach’s deep recesses would be unsuitable for
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`the easy and quick detachment needed by Bohbot,” adding that the headset would
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`be “not readily available for use,” and difficult to remove “with one hand.” POR,
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`13-15. However, Bohbot nowhere describes its headset as being easy and quick to
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`detach “with one hand,” and thereby being “readily available for use.” APPLE-
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`1089, ¶26.
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`Indeed, the portions of Bohbot that GUI cites do not support GUI’s
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`conclusion. Rather, as even GUI recognizes, Bohbot’s magnetic attachments
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`“make attachment and detachment easy” but also “are powerful enough to make an
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`effective attachment possible, thus avoiding a detachment that is so easy it could
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`easily be removed by a person with malicious intentions, or an untimely
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`detachment that would lead to loss of the headset.” Ex. 1004, 3:26-4:3 (emphasis
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`added); POR, 14. As Dr. Cooperstock previously noted, the semi-enclosed
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`protection provided by the contoured recess is further advantageous and
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`complementary to Bohbot’s stated goal. Petition, 8; APPLE-1089, ¶27.
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`Based on Bohbot’s disclosure cited above, GUI argues that a “POSITA
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`would appreciate that Bohbot provides all the attaching means needed or desired,
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`and would have no motivation to seek out Gundlach or to add Gundlach’s recess.”
`10
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`POR, 14, 12. GUI further argues that “a recess becomes a hinderance, not a
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
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`solution.” Id. However, Bohbot’s magnetic attachment does not provide semi-
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`enclosed protection offered by a contoured recess, which is further advantageous in
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`preventing detachment or physical damage during minor jostling or when hit by
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`objects, or removal by person with malicious intent, as discussed in the Petition.
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`Petition, 8; APPLE-1089, ¶28.
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`Moreover, GUI not only ignores these motivations, but also ignores the
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`Federal Circuit’s instruction that “obviousness ‘does not require that the
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`motivation be the best option, only that it be a suitable option from which the prior
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`art did not teach away.’” Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316,
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`1328 (Fed. Cir. 2017) (quoting Par Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d
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`1186, 1197-98 (Fed. Cir. 2014)). Here, Gundlach provides a suitable option for
`
`semi-enclosed protection in the form of a contoured recess, and Bohbot does not
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`teach away from the use of a contoured recess. See Depuy Spine, Inc. v. Medtronic
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`Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); APPLE-1089, ¶28.
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`GUI additionally argues that, in essence, a recess that leaves any side of the
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`headset unprotected would not be protecting the headset. POR, 27. However, the
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`plain language of the claim does not require total protection of the first case on all
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`sides, and GUI has not established otherwise. APPLE-1089, ¶29. Indeed, Dr.
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`Toliyat conceded that a recess would provide some level of protection to the
`11
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`bottom and sides of the headset. APPLE-1088, 83:11-18.
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
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`IV. Bohbot-Gundlach-Diebel renders obvious the “switching device is
`configured to activate, deactivate or send into hibernation the portable
`electronic device” (element 1[f]).
`The Board determined that the Petition had shown that it would have been
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`reasonable for a POSITA to modify Bohbot-Gundlach to incorporate the “extended
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`sleep mode” teachings of Diebel. Decision, 38; Petition, 75-76; APPLE-1089, ¶30.
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`GUI does not dispute that Bohbot-Gundlach-Diebel discloses element 1[f], but
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`rather argues there is no motivation to combine them. GUI’s POR arguments do
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`not disturb the Board’s findings.
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`GUI argues that “Bohbot evidences no need for, or benefit from, such an
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`extended sleep mode for the primary module which needs to stay active to function
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`as Bohbot intended such as to interface with the phone and provide incoming call
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`notifications.” POR, 5. Neither GUI nor its expert provides any support for this
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`assertion. Bohbot does not disclose that its primary module needs to stay active to
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`function when the headset is separated from the primary module. APPLE-1089,
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`¶31. In fact, Bohbot’s primary module cannot interface with the phone and
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`provide incoming call notifications when the headset is separated from the primary
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`module. APPLE-1004, 5:9-18, 7:6-27.
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`GUI further argues that “a POSITA would have no reason or motivation to
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`make the suggested combination...because Bohbot is concerned with, and indeed
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`12
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`seeks to address, the issue of low batteries in the headset, not in the primary
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
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`
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`module.” POR, 5. GUI’s argument is misplaced, as Bohbot’s alleged concern with
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`low batteries in the headset does not undermine a POSITA’s motivation to also
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`address the issue of low batteries in the primary module. APPLE-1089, ¶32. The
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`Board determined that the Petition’s rationale for combining the references—that
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`the primary module will use less power and the primary module will retain its
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`battery power for relatively longer periods of time—is reasonable. Decision, 38.
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`GUI fails to rebut the Petition’s stated rationale.
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`Instead, GUI argues that Diebel’s teaching of “lowering power
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`consumption” does not address “initiating charging, alternating microphones, or
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`receiving data.” POR, 58. However, the Petition does not rely on Diebel for these
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`features addressed by Bohbot, but rather for Diebel’s teaching of an “extended
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`sleep mode” (hibernation) that is entered when the headset is separated from the
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`primary module and exited when the headset is connected to the primary module.
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`Petition, 75-76; APPLE-1089, ¶33.
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`GUI further argues that Diebel does not describe “[t]he specific mechanism
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`for initiating or discontinuing such ‘extended sleep mode.’” POR, 59. Apple
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`disagrees. See APPLE-1030, [0192]-[0197]; APPLE-1089, ¶34. Further, this is an
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`obviousness ground and, therefore, “the question under 35 [U.S.C. §]103 is not
`
`merely what the references expressly teach but what they would have suggested to
`13
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`one of ordinary skill in the art at the time the invention was made.” Merck & Co. v.
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`Case No. IPR2021-00470
`Attorney Docket No. 50095-0028IP1
`
`
`
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`Biocraft Labs., Inc., 874 F.2d 804, 807-08 (Fed. Cir. 1989). Additionally, “‘a
`
`person of ordinary skill is also a person of ordinary creativity, not an automaton,’
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`so the fact that it would take some creativity to carry out the combination does not
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`defeat a finding of obviousness.” Facebook, 973 F.3d at 1343.
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`Apple agrees with GUI that “Bohbot already has functionality for the
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`primary module not receiving data, the primary module not providing power, and
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`the primary module not having its microphone on when Bohbot’s headset is not
`
`magnetically coupled to the primary module.” POR, 59. However, Diebel
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`provides a POSITA with additional details and advantages of “extended sleep
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`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
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`circuit will be turned off so they do not draw power.” APPLE-1030, [0192]-
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`[0193]. A POSITA would have been motivated to look to Diebel for its stated
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`benefits. APPLE-1089, ¶35.
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`With respect to element 1[f], GUI argues that it is “not clear how Apple is
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`trying to weave together Bohbot’s headset, Bohbot’s primary module and Diebel’s
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`charging case.” POR, 61. This argument appears to focus on whether components
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`of Bohbot and Diebel can be physically combined together. APPLE-1089, ¶36.
`14
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`“The test for obviousness is not whether the features of a secondary refe