`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2021-00470
`
`Patent 10,589,320
`
`___________________________
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITION FOR INTER PARTES
`
`REVIEW
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. ARGUMENT ....................................................................................................... 3
`
`A. Bohbot does not render obvious a “switching device” “configured to activate,
`
`deactivate or send into hibernation the portable electronic device” (elements 1[a]
`
`and 1[d]). ................................................................................................................. 3
`
`1. Petitioner has not proven that Bohbot’s headset “acts as a switching device
`
`to activate and deactivate discharging of power from the primary module’s
`
`power storage device.” ......................................................................................... 4
`
`2. Petitioner has not proven that 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.” ................................................................................................ 8
`
`3. Petitioner has not proven that Bohbot’s headset “acts as a switching device
`
`to activate and deactivate the primary module’s microphone circuitry.” .........10
`
`4. Petitioner has not proven that Bohbot’s headset “acts as a switching device
`
`to activate and deactivate the primary module.” ...............................................12
`
`B. A POSITA would not have modified Bohbot’s FIG. 3 based on FIG. 2 in the
`
`manner alleged by Petitioner. ..................................................................................14
`
`C. Bohbot-Gundlach does not render 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]). .......................................................................................15
`
`D. Bohbot-Gundlach-Diebel does not render obvious the “switching device is
`
`configured to activate, deactivate or send into hibernation the portable electronic
`
`device” (element 1[f]). ..........................................................................................18
`
`E. Bohbot-Gundlach and Bohbot-Gundlach-Diebel do not render obvious claim
`
`6. 21
`
`F. Bohbot-Gundlach and Bohbot-Gundlach-Diebel do not render obvious claim
`
`7. 22
`
`G. Bohbot-Gundlach-Stevinson and Bohbot-Gundlach-Diebel-Stevinson do not
`
`render obvious claims 8 and 9. .............................................................................24
`
`H. Bohbot-Gundlach-Stevinson-Iio and Bohbot-Gundlach-Diebel- Stevinson-Iio
`
`do not render obvious claim 17. ...........................................................................26
`
`III. CONCLUSION ..............................................................................................28
`
`WORD-COUNT CERTIFICATE ............................................................................30
`
`CERTIFICATE OF SERVICE ................................................................................31
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc., v. ContentGuard Holdings, Inc., Case Nos. IPR2015-00451, -452, -453
`
`(PTAB, July 13, 2015) ..........................................................................................14
`
`Henny Penny v. Frymaster, 938 F.3d 1324 (Fed. Cir. 2019) .................................... 2
`
`Hulu v. Sound View Innovations (IPR2018-00582, Paper 34) ............... 3, 17, 20, 27
`
`Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359 (Fed. Cir. 2016) ........... 2
`
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) ......................................................... 2
`
`SAS Inst. v. Iancu, 138 S. Ct. 1348 (2018) ................................................................ 2
`
`Regulations
`
`37 C.F.R. § 42.108(c) ...............................................................................................43
`
`
`
`
`
`EXHIBIT LIST
`
`Exhibit 2001
`
`Declaration of Hamid Toliyat, PhD
`
`Exhibit 2002
`
`CV of Hamid Toliyat, PhD
`
`Exhibit 2003
`
`Remote Deposition Transcript (Nov. 19, 2021), Dr.
`
`Jeremy Cooperstock, Ph.D.
`
`Exhibit 2004
`
`Remote Deposition Transcript (April 14, 2022), Dr.
`
`Jeremy Cooperstock, Ph.D.
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Gwee’s Response showed, with the well-reasoned testimony of Dr. Toliyat,
`
`that Petitioner’s obviousness contentions missed the mark with motivation to
`
`combine and with elements not met by the asserted combinations. Petitioner’s
`
`attempt to shift the burden to Gwee to disprove why elements such as “switching
`
`device,” “activating” and “deactivating” are not met misses the point that Petitioner
`
`bears the burden of proof, including to make specific contentions based upon
`
`specific disclosures from the cited references.
`
`Petitioner’s reference to ípse dixit declarations is curious, since the original
`
`declaration (EX1003) of its expert, Dr. Cooperstock, is replete with ipsa dixit
`
`assertions that a POSITA would somehow “understand” the text of the cited prior
`
`art references to disclose what they clearly do not disclose. The untimely Reply
`
`Declaration of Dr. Cooperstock (EX1089), with its untimely and improper
`
`arguments and theories, is even worse. Dr. Cooperstock’s declarations are
`
`essentially briefs stating arguments instead of valid opinions, and, even if the new
`
`theories included in his second declaration were erroneously considered by the
`
`Board, very little in either declaration should receive any weight.
`
`
`
`
`1
`
`
`
`Petitioner’s multiple new theories1 made for the first time in its Reply, as well
`
`as the new Exhibits, namely EX1112–1118 and 1089 submitted with the Reply, are
`
`untimely, improper and unfairly prejudicial in a Reply, and they should be
`
`disregarded.2 See, e.g., Henny Penny v. Frymaster, 938 F.3d 1324, 1330-31 (Fed.
`
`Cir. 2019); SAS Inst. v. Iancu, 138 S. Ct. 1348, 1355 (2018); Intelligent Bio-Sys. v.
`
`Illumina Cambridge, 821 F.3d 1359, 1369-70 (Fed. Cir. 2016). The Board may not
`
`overlook flaws in the petition or reformulate its challenges to enhance their
`
`suitability. SAS Inst, 138 S. Ct. at 1355.
`
`Petitioner’s arguments that its proposed combinations, despite their serious
`
`drawbacks, are somehow “suitable” misses the point that Gwee’s Response,
`
`including the well-reasoned expert testimony of Gwee’s expert, Dr. Toliyat amply
`
`
`1 For simplicity, in this Sur-Reply the word “theory” is used short-hand to
`
`reference an improper new theory, argument, basis and/or ground, as each such
`
`word is most applicable.
`
`2 For simplicity, in this Sur-Reply the word “disregard” is used as shorthand for the
`
`words reject and disregard and to note Gwee’s continuing objection to untimely,
`
`improper new theories in the Reply.
`
`
`
`
`2
`
`
`
`contravenes, debunks and outweighs any alleged motions to combine proffered by
`
`Petitioner. Hulu v. Sound View Innovations (IPR2018-00582, Paper 34).
`
`II. ARGUMENT
`
`A.
`
`Bohbot does not render obvious a “switching device” “configured to
`
`activate, deactivate or send into hibernation the portable electronic
`
`device” (elements 1[a] and 1[d]).
`
`Contrary to what Petitioner states in its Reply (p. 1), the Petition did not
`
`“establish” that the claimed switching device “encompasses” any “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.” Including this argument in
`
`the Cooperstock declaration (EX1089, ¶9), which should be disregarded, does not
`
`make it so. Such a broad statement omits needed details of the means of detecting,
`
`details of the method of alleged switching, details of what is being characterized as
`
`a “state change,” details of the functions that the electronic device performs before
`
`and after any such “state change,” and details of the causal connection between the
`
`method of switching and what Petitioner characterizes as a state change. By
`
`Petitioner’s flawed logic, a wall socket would be a switching device because the
`
`mating of electrical contacts would result in electricity flowing across them. Even
`
`the Petition’s theories of Bohbot being a switching device do not rely upon mere
`
`
`
`
`3
`
`
`
`“close proximity.” Rather, they rely upon the touching of “blade contacts.” Pet. 12-
`
`13.
`
`1.
`
`Petitioner has not proven that Bohbot’s headset “acts as a
`
`switching device to activate and deactivate discharging of power
`
`from the primary module’s power storage device.”
`
`The first basis for Petitioner asserting Bohbot discloses a switching device is
`
`Petitioner’s theory that the flow of current from the primary module to the earpiece
`
`makes the earpiece a switching device. Pet., 12. To be clear, this is all the detail
`
`provided by Bohbot. However, the mere provision of current across blade
`
`connectors does not make Bohbot’s headset a switching device. POR, 1-2.
`
`Petitioner’s attempt to read more into what is lacking from Bohbot’s disclosure is
`
`unwarranted speculation, and Petitioner’s conclusions are not warranted Bohbot’s
`
`disclosures.
`
`Petitioner states that “nothing in Bohbot suggests that the charging voltage is
`
`always available.” Reply, 1. It is known that Bohbot’s primary module has a battery,
`
`that its earpiece has a battery, and that current automatically flows from negative to
`
`positive poles. EX2001, ¶¶184-185. Bohbot provides no other details. All the
`
`pertinent detail provided by Bohbot is that current flows across contacts. Petitioner
`
`has the burden of proving that Bohbot discloses a switching device, which it cannot
`
`
`
`
`4
`
`
`
`meet with Bohbot’s lack of details. Petitioner’s attempts to characterize the flow of
`
`electrons or data as a “state,” so that it will then hopefully fit Petitioner’s overbroad
`
`conception of a switching device, does not change what little Bohbot actually
`
`discloses, and how a “switching device” is not disclosed.
`
`Instead of relying upon what Bohbot actually discloses, Petitioner alleges “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.”
`
`Reply, 2. Yet, Petitioner’s expert Dr. Cooperstock admits that these are merely
`
`examples of circuitry that Bohbot’s primary module might include. EX2004, 20:11-
`
`30:19 (e.g., “I can't give you a statement as to whether it's necessary or whether it's
`
`an example that is found… These are elements of circuitry that are commonly found
`
`in battery-charging or portable chargers…Bohbot does contain some high-level
`
`description but doesn't offer the details of circuitry…”). Bohbot describes no such
`
`circuitry and Dr. Cooperstock’s speculation about what one might include cannot fill
`
`in for the lack of such actual disclosure. PTAB Consolidated Trial Practice Guide
`
`(Nov. 2019), p. 36 (“[E]xpert testimony cannot take the place of disclosure…[and]
`
`is not a substitute for disclosure...”). Even if the untimely Cooperstock declaration,
`
`(EX1089, ¶10-11), was erroneously considered, its carefully crafted words only state
`
`
`
`
`5
`
`
`
`“examples” of circuitry that might be used. EX2004, 20:11-30:19. Irrespective,
`
`Bohbot has no details of any such circuitry, including the state or level of activity of
`
`any such circuitry prior to or after receiving any current or data from the earpiece.
`
`Petitioner’s attempt to equate the mere flow of DC current, which as a matter
`
`of physics is the continuous movement of electrons from an area of negative charges
`
`to an area of positive charges, (POR, ¶17; EX2001, 107), with a “state change”
`
`sufficient to show that a device has been activated by switching, lacks support. Even
`
`if the untimely Cooperstock declaration, (EX1089, ¶10-11), was erroneously
`
`considered, its ipsa dixits attempting to read “states” into the mere movement of
`
`electrons across contacts should be given no weight.
`
`Petitioner’s simplistic “if/then” argument, that current could not flow across
`
`contacts unless they touched, (Reply, 3), fails to show anything except that electrons
`
`flow across touching contacts from an area of negative charges to an area of positive
`
`charges. The most that can be said from Bohbot’s disclosure is that the touching of
`
`contacts is a necessary condition for electrons (or data) to flow across them. Other
`
`conditions, if any, sufficient for charging (or data flow) are not disclosed.
`
`
`
`Finally, the Reply’s untimely new “converse is also true” argument, (Reply,
`
`3; Ex. 1089, ¶13), even if erroneously considered, does not support this element
`
`
`
`
`6
`
`
`
`being met. Even if Bohbot’s headset did consume power, Petitioner’s theory is that
`
`the primary module, not the headset, is the “switching device.”
`
`Again, all Bohbot discloses is the flow of electrons across blade connectors.
`
`POR, 1-2. No alleged “change of state” of the headset or the primary module is
`
`reported and there is no reason to conclude (and a POSITA would not conclude) that
`
`any “switching” has taken place. POR, 2.
`
`As to activating/deactivating, the deposition testimony of Petitioner’s expert
`
`Dr. Cooperstock is inconsistent and undermines any weight that might be given to
`
`his lawyer arguments masquerading as expert opinions, for example: (1) “Q. Is
`
`activating or deactivating a component of the primary device activating or
`
`deactivating the primary device? A. I suppose it depends on the context and what
`
`the user interprets at the time the core functionality of the device to be.” EX2003,
`
`111:6-11; and (2) “Q… how can the person of ordinary skill in the art know whether
`
`or not something is in an active state?... A…this is very much dependent on the
`
`particular circumstance, what is the nature of the device…These are very much
`
`dependent on the specifics…” EX2004, 18:9-20:4. Dr. Cooperstock’s deposition
`
`testimony undermines his Declaration and the Petition reliant thereon, and it is
`
`consistent with Dr. Toliyat’s testimony that details and context missing from
`
`
`
`
`7
`
`
`
`Bohbot’s disclosure are needed in order to determine whether a subject device is a
`
`switching device that activates/deactivates.
`
`2.
`
`Petitioner has not proven that 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.”
`
`Petitioner misreads the Board’s institution decision as having reached a
`
`conclusion on this issue, and tellingly the Reply cites to no Petition support for its
`
`argument. It is not disputable that all the detail provided by Bohbot is that data (a
`
`structured form of electrical current) from the earpiece flows across contacts to the
`
`primary module. POR, 2. The mere passive receipt of data across blade connectors
`
`does not amount to Bohbot’s primary module undergoing a “state change” or its
`
`headset constituting a switching device. POR, 2.
`
`Petitioner argues that the data being first requested by the primary module and
`
`then sent in response by the headset “is not supported by Bohbot.” Reply 3.
`
`However, Gwee’s expert Dr. Toliyat testified that such a data transfer would be
`
`preceded by a request from the receiving device, i.e., the primary module. POR, 19,
`
`EX2001, ¶114. Petitioner offers no testimony or argument that this is not true.
`
`Moreover, even if Petitioner’s disagreement with this point was valid, one would
`
`just be left with Bohbot’s lack of detail beyond passive receipt of data.
`
`
`
`
`8
`
`
`
`The Reply mentions “storage” and that Bohbot’s primary module “stores”
`
`data. Reply, 3. However, the Petition theory was that “receipt” of data by Bohbot’s
`
`primary module was the basis for the earpiece being a switching device. POR, 12-
`
`13. Although the Reply only appears to mention storage/stores off-hand, to the
`
`extent this is a new theory for activating or why Bohbot’s earpiece is a switching
`
`device, it should be disregarded as untimely. Irrespective, Bohbot has no details of
`
`its storage means, including the state or level of activity of the storage means (or
`
`other potential circuitry) prior to or after receiving any data from the earpiece. If
`
`anything, Bohbot teaches that the primary device may access its local data “even
`
`if…the headset is detached.” EX1004, 7. This implies no “state change” as Petitioner
`
`proposes takes place.
`
`Petitioner’s attempt to equate the mere flow of data with a “state change”
`
`sufficient to show that a device has been activated by switching, is meritless.
`
`Petitioner has no explanation for how passive receipt of data by Bohbot’s primary
`
`module constitutes a “state change” of the primary module or would otherwise show
`
`Bohbot’s headset to be a switching device. POR, 19-20; Ex. 2001, 112. Even if the
`
`Cooperstock declaration, (EX1089, ¶15), with its untimely theories, was erroneously
`
`considered, its ipsa dixits attempting to read “states” into the mere movement of data
`
`across blade contacts should be given no weight.
`
`
`
`
`9
`
`
`
`Petitioner’s footnote argument that “GUI does not dispute that ‘receiving
`
`data’ is an ‘operative state’ and ‘not receiving data’ is an ‘inoperative state’” is an
`
`unwarranted assumption. The terms “operative state” and “inoperative state” are
`
`merely labels used by Petitioner to characterize the primary device receiving data.
`
`Gwee does not dispute that the primary device receives data. Clearly Gwee disputes
`
`that Bohbot discloses the details of what that receipt entails; and that such receipt,
`
`however Petitioner wishes to characterize it, proves Bohbot’s earpiece to be a
`
`switching device. See, e.g., POR, 24-25.
`
`The most that can be said from Bohbot’s disclosure is that the touching of
`
`electrical contacts is a necessary condition for current or data to flow across said
`
`contracts. Other details and conditions, if any, that might be sufficient to show
`
`activation by a switching device are lacking.
`
`3.
`
`Petitioner has not proven that Bohbot’s headset “acts as a
`
`switching device to activate and deactivate the primary module’s
`
`microphone circuitry.”
`
`Petitioner misreads the Board’s institution decision as having reached a
`
`conclusion on this issue. Gwee’s Response noted that a POSITA would not
`
`understand that mere unspecified and alleged state transitions of the “corresponding
`
`circuit” of the primary module and on microphone 25, without more information
`
`
`
`
`10
`
`
`
`about how the primary module operates, constitutes activating the primary module.
`
`POR, 25; Ex. 2001, 144. Nor would a POSITA understand that mere alleged and
`
`unspecified state transitions of the “corresponding circuit” of the primary module
`
`and of microphone 25, without more information about how the primary module
`
`operates, constitutes activating the primary module. POR, 25 Ex. 2001, 144.
`
`Petitioner’s Reply has no answer for this.
`
`Instead, Petitioner’s Reply attempts to rely upon two new “operating modes,”
`
`which are “telephone call in progress” and “no telephone call in progress.” Reply, 6.
`
`This untimely theory in the Reply, even if erroneously considered, does not support
`
`this element being met. If anything, it shows a causal connection between a phone
`
`call and microphone activity, not a causal connection between attachment of the
`
`earpiece and microphone activity.
`
`As to this third theory and the prior two as well, Petitioner continues to assume
`
`inactivity on the part of Bohbot’s primary module prior to the attachment of the
`
`headset, but this assumption is unwarranted and not supported by any disclosure
`
`from Bohbot. POR, 1.
`
`The most that can be said from Bohbot’s disclosure is that the touching of
`
`electrical contacts is a necessary condition for the microphone of the primary device
`
`
`
`
`11
`
`
`
`to play sound. Other details and conditions, if any, that might be sufficient to show
`
`activation by a switching device are lacking.
`
`With all due respect to the Board’s institution decision, (Decision, 15,) Bohbot
`
`does not disclose any means of microphone detection, and even if it did, without
`
`more details, there has been insufficient information put forth to conclude that
`
`Bohbot’s earpiece is a switching device.
`
`
`
`4.
`
`Petitioner has not proven that Bohbot’s headset “acts as a
`
`switching device to activate and deactivate the primary module.”
`
`Instead of addressing Gwee’s Response, Petitioner’s Reply attempts a new
`
`theory that a POSITA would have found it “obvious” that allegedly collectively
`
`activating “all” of the primary module’s components constitutes activating the
`
`primary module, and that allegedly deactivating collectively all of the primary
`
`module’s components constitutes deactivating the primary module. Reply, 6-7
`
`(citing EX1089, ¶21). The Petition theory was that activate/deactivate was met. E.g.,
`
`Pet, 26 (“…when the head set is attached to the primary module, the microphone 25
`
`and corresponding circuit of the primary module are activated…”). Further, the
`
`Petition presented the three functions (i.e., charging, data and microphone) as
`
`alternative bases for activating/deactivating being met, and never advances a theory
`12
`
`
`
`
`
`
`that the three combined would meet or render obvious activating or deactivating (or,
`
`indeed, that Bohbot even discloses same).
`
`Irrespective, Petitioner’s new reply theory is incorrect. Receiving current,
`
`receiving data, and making use of a microphone are clearly not the only three
`
`functions of Bohbot’s primary device. For example, it has a storage means that
`
`necessarily does more than merely receive data, it has buttons that accept inputs, it
`
`has a screen that outputs information, and it has a processor that manages and
`
`performs a variety of functions. Without limitation, the devices disclosed by Bohbot
`
`have buttons, a keypad and/or keyboard, a screen, for example a tactile screen, a
`
`directory storage, a display and navigation function; and software means making it
`
`possible to start a telephone call with a person whose number is not stored in the
`
`directory of the telephone and/or on the SIM card of the telephone; and they may
`
`also have an anemometer, thermometer, rain gauge, distance measurement, laser
`
`pointer, barometer, altimeter, inclinometer, etc. EX1004, 5-6, 8. Petitioner lacks
`
`details, because Bohbot lacks details, of what specific functions or sub-components
`
`of Bohbot’s primary device are allegedly active/inactive prior to contacts touching
`
`and what specific functions or sub-components of Bohbot’s primary device are
`
`allegedly active/inactive once the contacts have touched. Petitioner has not met its
`
`
`
`
`13
`
`
`
`burden of proof for demonstrating that Bohbot’s primary module was not already
`
`“activated.” See, e.g., EX1004, 7.
`
`B. A POSITA would not have modified Bohbot’s FIG. 3 based on FIG. 2
`
`in the manner alleged by Petitioner.
`
`Petitioner’s attempt to pick and choose between the different Fig. 2 and Fig.
`
`3 embodiments is unsupported by sufficient obviousness bases in the Petition,
`
`including in view of Bohbot presenting the Fig. 2 and Fig. 3 embodiments as
`
`alternatives, not ones to be mixed and matched. POR, 3; Ex. 1004 at 9:13-16. The
`
`only rationale in the Petition and Reply for substantially modifying Bohbot’s FIG. 3
`
`(which had already been modified by Petitioner without an obviousness basis) based
`
`on FIG. 2 is that “a POSITA would have found it convenient to use the headset alone
`
`to participate in telephone calls by having a separate microphone in the headset to
`
`avoid having to be in close proximity to the microphone in the primary module
`
`during calls.” Pet, 29. However, Bohbot’s Fig. 3 device is a headset “reduced to a
`
`minimum of features,” with only a single speaker. EX0014, 11; Fig. 3. Even if one
`
`added a microphone to the Fig. 3 primary module as advocated by the Petition, it
`
`would be the only microphone in the system. Petitioner has no meaningful Petition
`
`rationales for importing any other features of the Fig. 2 device into the Fig. 3 device.
`
`There is no basis for the Board to broadly maintain “that a POSITA would have
`
`
`
`
`14
`
`
`
`modified Bohbot’s FIG. 3 embodiment based on Bohbot’s FIG. 2 teachings,”
`
`(Reply, 7) without sufficient bases for transferred features being set forth in the
`
`Petition, as advocated by the Reply.
`
`C.
`
`Bohbot-Gundlach does not render obvious “the electronic device
`
`comprises...recessed areas...configured to correspond to complimentary
`
`surface elements” and “when coupled, the second case [of the electronic
`
`device] functions to protect the first case.”
`
`Petitioner’s Response does not contest that the Petition failed to provide
`
`specifics about any Gundlach “contoured recess” being relied upon. Reply, 8. See
`
`Pet., 7; POR, 13. Petitioner claims that such details are “irrelevant.” To the contrary,
`
`the Petition is defective for lack of explanation regarding the specific grounds on
`
`which it is based. Apple v. ContentGuard Holdings, Case Nos. IPR2015-00451, -
`
`452, -453 (PTAB, July 13, 2015). The board cannot “fill in the blanks” for
`
`Petitioner’s lack of specificity or allow Petitioner to revise/refine its theory in its
`
`Reply.
`
`Petitioner does not dispute that all of Gundlach’s contoured recesses appear
`
`to contain the entire earpiece, making its surface flush with the recessed device, see,
`
`for example, Figs. 11b, 12a, 13b and 18b:
`
`
`
`
`15
`
`
`
`
`
`POR 13-14; Ex. 2001, 96. Moreover, the only potential specificity provided by the
`
`Petition was its reliance upon Gundlach’s Fig. 18 clamshell case embodiment, ,
`
`wherein the headset is fully embedded in the body of the clamshell case. The
`
`Petition has the following illustrations:
`
`
` and
`Pet, 37-38, both of which illustrate a deeply embedded headset. See POR, 13. None
`
`of the illustrations in the Petition or in Gundlach show headset extending above a
`
`recess in the primary module or modified primary module.
`
`Petitioner does not dispute that Gundlach’s devices, including its clamshell
`
`case, are intended to fit into an expansion slot; rather, Petitioner focuses on the word
`
`“may” in Gundlach. What Petitioner misses is that Gundlach fails to describe any
`
`device that would not fit in an expansion slot. See, e.g., EX 1005, [00005]-[0006].
`16
`
`
`
`
`
`
`Charging from an expansion slot is an important design goal of Gundlach that
`
`Petitioner’s arguments fail to overcome.
`
`Petitioner’s argument that “[i]f Gundlach’s exact recess dimensions were
`
`unsuitable for Bohbot’s system, a POSITA would have been capable of employing
`
`ordinary creativity…the common sense solution of a shallow recess in the primary
`
`module…” (Reply, 9-10; EX1089, ¶25-27), is an improper new Reply theory that
`
`should be disregarded. Further, Petitioner has no explanation for how its new Reply
`
`argument that the “primary module [] still provides protection to at least half of the
`
`surface of the headset’s case” meets the separate requirement of Claim 1 for the
`
`second case functioning to protect the first case.
`
`The Reply does not dispute that Gundlach’s deep recesses would be unsuitable
`
`for the easy and quick detachment, or that with such recesses the headset would not
`
`readily available for use. Reply, 10. See Ex. 1004, 3:26-4:3-5. POR, 13-15.
`
`However, the Reply appears to dispute that Bohbot’s devices are intended to be
`
`detachable with one hand. Reply, 10. Bohbot’s itself indicates that features are
`
`“particularly advantageous when the user is driving a vehicle,” (EX1004, 1), in
`
`which case a driver would necessarily need to keep one hand on the wheel. Further,
`
`Bohbot’s only figures showing the device in use (Figs. 1a-b) show a handbag being
`
`
`
`
`17
`
`
`
`carried by one hand, in which case only the other hand would be available to use the
`
`Bohbot device.
`
`Petitioner asserts that obviousness only requires a suitable option. Reply, 11.
`
`However, suitability does not equate with motivation; and in any event
`
`disadvantages can, and here do, obviate an alleged option being suitable. Hulu ,
`
`supra (IPR2018-00582, Paper 34).
`
`The Reply re-argues that partially protecting a case constitutes protecting a
`
`case. To the contrary, a POSITA would understand that a recess protecting only
`
`three sides of a six-sided headset leaves three of the six sides unprotected, and thus
`
`the headset is not protected. POR, 27-28; Ex. 2001, 156-157. Likewise, a recess
`
`protecting only five of six sides would also not be protecting the headset. POR, 28;
`
`Ex. 2001, 157.
`
`D.
`
`Bohbot-Gundlach-Diebel does not render obvious the “switching
`
`device is configured to activate, deactivate or send into hibernation
`
`the portable electronic device.”
`
`Petitioner makes the unsupported argument that Bohbot would be motivated
`
`to add an extended sleep mode. To the contrary, 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
`
`
`
`
`18
`
`
`
`magnetically coupled to the primary module. POR 59-60; Ex. 2001, 259-61.
`
`Petitioner lacks factual details for how the extended sleep mode alleged would save
`
`power not already being saved. There is no suggestion that Bohbot would benefit
`
`from the primary module being in extended sleep mode when the headset is
`
`detached.
`
`Petitioner’s suggestion that connecting or disconnecting the phone from
`
`Diebel’s charging cases involves more aspects of an extended sleep mode than the
`
`charge phone battery mode is not borne out by Diebel’s disclosure. POR, 61; Ex.
`
`2001, 265. Petitioner’s argument that the “Petition does not rely on entering and
`
`exiting Diebel’s ‘charge phone battery mode’ but rather Diebel’s teaching of an
`
`‘extended sleep mode’ (hibernation),” (Reply, 12), misses the point that they are one
`
`in the same thing. EX1030, [0194-0194]. The statement in the Cooperstock Reply
`
`Declaration, ¶38, that Diebel discloses something to the contrary of its actual
`
`disclosure should be disregarded. Petitioner continues to fail to explain how
`
`Diebel’s putting to sleep its charging function would render any meaningful benefit
`
`to Bohbot or constitute hibernating an otherwise non-hibernated Bohbot primary
`
`module carrying out its other functions.
`
`Contrary to the notion of extended sleep mode, Bohbot’s headset is “designed
`
`to be detached by nature, and then repositioned frequently on the primary module.”
`
`
`
`
`19
`
`
`
`EX1004, 3. Further, the devices disclosed by Bohbot have functions including
`
`buttons, a keypad and/or keyboard, a screen, for example a tactile screen, a directory
`
`storage, display and navigation function; and software means making it possible to
`
`start a telephone call with a person whose number is not stored in the directory of
`
`the telephone and/or on the SIM card of the telephone; and they may also have an
`
`anemometer, thermometer, rain gauge, distance measurement, laser pointer,
`
`barometer, altimeter, inclinometer, etc. EX1004, 5-6, 8. Further, Bohbot teaches
`
`saving data “locally, in order to be able to access this data even if it cannot
`
`communicate with the mobile telephone, either because the headset is detached, 15
`
`or because the first means of data exchange are inoperative.” EX1004, 7. Unlike
`
`Diebel’s phones, which could be charged by means (e.g., USB) other than a battery
`
`powered case, Bohbot’s headsets are only chargeable from its primary modules, thus
`
`ensuring they would never be apart for very long.
`
`The argument in the Cooperstock Reply Declaration that “Bohbot does not
`
`disclose that its primary module needs to stay active to function when the headset is
`
`separated from the primary module, (EX1089, ¶31) is at odds with Bohbot’s
`
`disclosure.
`
`
`
`
`20
`
`
`
`Bohbot contemplates an activated primary module when the headset is
`
`frequently attached and detached, (POR, 5), which is firmly at
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
