`
`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 10,259,020
`
`___________________________
`
`
`
`PATENT OWNER'S ORAL HEARING DEMONSTRATIVES
`
`
`
`
`
`
`
`

`

`APPLE, INC.,
`Petitioner
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner
`
`____________________________________________________
`
`IPR2021-00470
`Demonstratives of Patent Owner GUI Global Products, Ltd.
`
`Hearing Date: May 19, 2022
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`1
`
`

`

`Petitioner’s reasons for combining Bohbot and Gundlach are unfounded and unpersuasive
`
`Petitioner’s base combination of Bohbot and Gundlach is unpersuasive, including because the design goals and functionality of
`Bohbot’s headsets are fundamentally at odds with the elements sought to be imported from Gundlach.
`
`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 multiple new theories made for the first time in its Reply, as well as the new Exhibits, namely Exs. 1112–1118 and
`1089 submitted with the Reply, are untimely, improper and unfairly prejudicial in a Reply, and they should be disregarded.
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`2
`
`

`

`Petitioner’s reasons for combining Bohbot and Gundlach are unfounded and unpersuasive
`
`Bohbot’s disclosure, which serves Bohbot’s
`aims, is of a detachable headset magnetically
`coupled to the surface of a primary module in a
`fashion that the headset is readily available for
`use. (Ex. 2001, 95)
`
`Ex. 1004, 4:9-13
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`Ex. 1004, 1:9-10
`
`Ex. 1004, 2:9-10
`
`Ex. 1004, 3:10-11
`
`Ex. 1004, 3:26-4:4
`
`3
`
`

`

`Petitioner’s reasons for combining Bohbot and Gundlach are unfounded and unpersuasive
`
`Bohbot disclosure, which serves Bohbot’s aims, is of a detachable headset magnetically coupled to the surface of a primary
`module in a fashion that the headset is readily available for use. See, e.g., (Ex. 1004, 1:3-5, 2:25-27, 3:4-5, 9:19-21, 6:22-7:1,
`7:16-27, 10:20-11:6, 14:12-24, Figs. 1a, 1b; Ex. 2001, 95).
`
`The Petition (p. 7) does not specify which Gundlach “contoured recess” is being referenced. 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:
`
`(Ex. 2001, 96).
`
`The desire for Gundlach to deeply embed its earpieces in there is consistent with its intent to fit the headset/cradle/case
`assemblies into an expansion slot (see next slide).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`4
`
`

`

`Petitioner’s reasons for combining Bohbot and Gundlach are unfounded and unpersuasive
`
`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, i.e.,
`
`Pet, 37-38, both of which illustrate a deeply embedded headset.
`
`None of the illustrations in the Petition or in Gundlach show headset extending above a recess in the primary module or
`modified primary module.
`
`The desire for Gundlach to deeply embed its earpieces in there is consistent with its intent to fit the headset/cradle/case
`assemblies into an expansion slot (see next slide).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`5
`
`

`

`The desire for Gundlach to deeply embed its earpieces in there is consistent with its intent
`to fit the headset/cradle/case assemblies into an expansion slot
`
`Gundlach does not describe any
`device that would not fit in an
`expansion slot.
`
`Ex. 2037 - Patent Owner’s Demonstratives - Not Evidence
`
`Ex. 1005
`6
`
`

`

`Petitioner’s reasons for combining Bohbot and Gundlach are unfounded and unpersuasive
`
`Gundlach’s deep recesses are opposed to Bohbot’s desire for readily available earpieces. (Ex. 2001, 97).
`
`Bohbot’s magnetic attachments “are, on the one hand, such that they make attachment and detachment easy for the communication device user
`and on the other hand, they are powerful enough to make an effective attachment possible.” Ex. 1004, 3:26-4:3. Bohbot already “avoid[s] …
`an untimely detachment that would lead to loss of the headset.” Ex. 1004, 4:3-5. Bohbot provides all the attaching means needed or desired,
`and would have no motivation to seek out Gundlach or to add Gundlach’s recess. (Ex. 2001, 99-100, 129).
`
`Bohbot’s devices should be able to be used “without having to hold the telephone in one hand to bring it to his ear when the user is driving a
`vehicle.” Ex. 1004, 1/7-9; Ex. 2001, 98. A POSITA would not want to have to dig out the headset from a Gundlach-inspired recess (or closed
`clamshell case), especially with one hand, and especially while using the other hand to carry a purse, hold a mobile phone, drive a vehicle, etc.
`(Ex. 2001, 98, 130-131)
`
`One would not add a headset recess to the primary module because it would then become difficult to remove the headset
`with one hand, especially when holding a purse, or if the primary module was clipped to a shoulder strap, as also taught
`by Bohbot. (Ex. 1005, 4:27; Ex. 2001, 130-131).
`
`Bohbot notes a drawback of existing headsets in that “it is not easy to quickly find this type of headset during an
`incoming call…” Ex. 1004, 2/9-13. One would not want to have to dig a headset out from a recess with one hand
`because it make it more difficult and time consuming to remove the headset from the primary module. (Ex. 2001, 132-
`133).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`7
`
`

`

`Bohbot-Gundlach does not disclose a “switching device” [1a]
`
`The Petition theory is that Bohbot’s headset 20 is a switching device and its primary module 18 is an electronic
`device, or that headset 31 (as modified by Apple to have a microphone and speaker on its back cover) is a
`switching device and primary module 30 is an electronic device. (Ex. 1003, 42-49; (Ex. 2001, 103).
`
`Petitioner’s fundamental contention is that a switching device is a device that has a causal connection, even when
`(as here) the means of the causal connection is unknown, with any happening referred to by Petitioner as a “state
`change” in an electronic device. (Ex. 1003, 42; Ex. 2001, 103).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`8
`
`

`

`Bohbot-Gundlach does not disclose a “switching device” [1a]
`
`Petitioner Replies that “nothing in Bohbot suggests that the charging voltage is always available.” Reply, 1.
`
`However, 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. (Ex. 2001, ¶¶184-185).
`
`Bohbot provides no other details.
`
`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” various components. 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.
`
`Even if the untimely Cooperstock declaration, (Ex. 1089, ¶10-11), was erroneously considered, its carefully crafted words
`only state “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.
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`9
`
`

`

`Bohbot-Gundlach does not disclose a “switching device” [1a]
`
`Petitioner’s first theory is that that Bohbot’s headset is a switching device based upon Bohbot’s disclosure of power from the
`primary module being transferred to the headset across electrical contacts 35a/b when they are touching. (Ex. 1003, 43; Ex.
`2001, 104).
`
`Petitioner has no explanation for how passive transmission of current by Bohbot’s primary module would show Bohbot’s
`headset to be a switching device.
`
`DC current passing across conductive contacts 35a/b is driven by a voltage differential. (Ex. 2001, 107-108). There is no
`switching from one “state” to another of the primary module as Petitioner alleges. (Ex. 2001, 106-109).
`
`Petitioner contends that before such contact between the detachable headset and the primary module a power storage device of
`the primary module is inactive.
`
`But this is nowhere described by Bohbot.
`
`Petitioner has no basis to assert that current is not always available at the contacts of Bohbot’s primary device (like an
`electrical outlet). (Ex. 2001, 109).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`10
`
`

`

`Bohbot-Gundlach does not disclose a “switching device” [1a]
`
`Petitioner’s second theory is that Bohbot’s headset is a switching device based upon Bohbot’s disclosure of data from the
`headset being transferred to the primary module across electrical contacts 35a/b, with the means for the initiation of the data
`transfer being undisclosed. (Ex. 2001, 110; Ex. 1003, 44).
`
`Similar to its charging current theory, Petitioner relies upon Bohbot’s disclosure of nothing more than passive receipt of data
`across contacting blade connectors. (Ex. 2001, 111).
`
`From what little is disclosed in Bohbot, all that one can conclude is data is transmitted across electrical contacts as pulses of
`current from the headset to the primary module. (Ex. 2001, 111-113).
`
`Although Bohbot does not disclose means for the initiation of the data transfer, a POSITA would understand that the primary
`module would request data. (Ex. 2001, 114-115).
`
`A POSITA would not conclude that a headset sending data across the circuit completed by electrical contacts in response to a
`request from the primary device constitutes the headset being a switching device. (Ex. 2001, 1160).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`11
`
`

`

`Bohbot-Gundlach does not disclose a “switching device” [1a]
`
`Petitioner’s third theory is that undisclosed “means to detect” present somewhere on the “miniature device” render the Bohbot’s headset a switching device.
`(Ex. 1003, 44; Ex. 2001, 117).
`
`(Ex. 1004/10:20-11:6).
`
`At minimum, Bohbot lacks sufficient details to justify Bohbot’s headset being a switching device. (Ex. 2001, 110-120).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`12
`
`

`

`Bohbot-Gundlach does not disclose render obvious the electronic device “consisting of … recessed areas …
`configured to correspond to complementary surface elements on the switching device
`
`Gundlach’s deep recesses are opposed to Bohbot’s desire for readily available earpieces. (Ex. 2001, 97).
`
`Bohbot’s magnetic attachments “are, on the one hand, such that they make attachment and detachment easy for the communication device user
`and on the other hand, they are powerful enough to make an effective attachment possible.” Ex. 1004, 3:26-4:3. Bohbot already “avoid[s] …
`an untimely detachment that would lead to loss of the headset.” Ex. 1004, 4:3-5. Bohbot provides all the attaching means needed or desired,
`and would have no motivation to seek out Gundlach or to add Gundlach’s recess. (Ex. 2001, 99-100, 129).
`
`Bohbot’s devices should be able to be used “without having to hold the telephone in one hand to bring it to his ear when the user is driving a
`vehicle.” Ex. 1004, 1/7-9; Ex. 2001, 98. A POSITA would not want to have to dig out the headset from a Gundlach-inspired recess (or closed
`clamshell case), especially with one hand, and especially while using the other hand to carry a purse, hold a mobile phone, drive a vehicle, etc.
`(Ex. 2001, 98, 130-131)
`
`One would not add a headset recess to the primary module because it would then become difficult to remove the headset
`with one hand, especially when holding a purse, or if the primary module was clipped to a shoulder strap, as also taught
`by Bohbot. (Ex. 1005, 4:27; Ex. 2001, 130-131).
`
`Bohbot notes a drawback of existing headsets in that “it is not easy to quickly find this type of headset during an
`incoming call…” Ex. 1004, 2/9-13. One would not want to have to dig a headset out from a recess with one hand
`because it make it more difficult and time consuming to remove the headset from the primary module. (Ex. 2001, 132-
`133).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`13
`
`

`

`Bohbot-Gundlach does not render obvious portable switching device is configured to
`activate, deactivate or send into hibernation the portable electronic device
`
`Petitioner’s first theory is that transitioning an alleged electronic circuit within the primary module that “transfers power” into
`an “operative state” constitutes activating the primary module, and that transitioning an alleged electronic circuit within the
`primary module that “transfers power” into an “inoperative state” constitutes deactivating the primary module. (Ex. 1003, 71).
`
`However, mere transitioning of an alleged electronic circuit within the primary module that “transfers power” into an alleged
`“operative state” or “operative state,” without more information about how the primary module works, does not equate with
`activating the primary module. (Ex. 2001, 140).
`
`Bohbot does not disclose any such operative or inoperative states. Bohbot provides no basis for concluding that charging
`voltage is not always available at the blade contacts for charging the detachable headset when it come into contact with the
`primary module and no state transition need occur. (Ex. 2001, 140).
`
`Nothing about an alleged charging circuit would or need change whether charging is taking place or not. (Ex. 2001, 140).
`
`It is the flow of electrons across the blade-to-blade contacts that would distinguish charging from not charging, and that
`electron flow is not a characteristic of any change of state of any primary module circuitry. (Ex. 2001, 140).
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`14
`
`

`

`Bohbot-Gundlach does not render obvious portable switching device is configured to
`activate, deactivate or send into hibernation the portable electronic device
`
`Petitioner’s second theory is that transitioning an alleged electronic circuit within the primary module that is part of the alleged
`means for “data transfer” into an “operative state” of “receiving data” constitutes activating the primary module, and that
`transitioning an alleged electronic circuit within the primary module that is part of the alleged means for “data transfer” into an
`“inoperative state” of “no receiving data” constitutes de activating the primary module. (Ex. 1003, 72).
`
`However, mere transitioning of an alleged electronic circuit within the primary module that “transfers data” into an alleged
`“operative state” or “operative state,” without more information about how the primary module works, does not equate with
`activating the primary module. (Ex. 2001, 142).
`
`Nor would a POSITA understand that mere transitioning an alleged electronic circuit within the primary module that is part of
`the unspecified means for “data transfer” into an “inoperative state” of “not receiving data,” without more information about
`how the primary module operates, constitutes deactivating the primary module. Ex. 2001, 142.
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`15
`
`

`

`Bohbot-Gundlach does not render obvious portable switching device is configured to
`activate, deactivate or send into hibernation the portable electronic device
`
`Petitioner’s attempt to equate the mere flow of current or 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 current or 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. (Ex. 2001, 112).
`
`The terms “operative state” and “inoperative state” are merely labels used by Petitioner to characterize the primary device
`providing current or receiving data. Facts not labels should be given weight.
`
`Even if the Cooperstock Reply declaration, (Ex. 1089, ¶15), with its untimely theories, was erroneously considered, its ipsa
`dixits attempting to read “states” into the mere movement of current data across blade contacts should be given no weight.
`
`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 Ex. 1089, ¶21). In view of Bohbot’s lack of disclosure, Petitioner has no basis to maintain
`that Bohbot’s primary module was not already “activated.”
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`16
`
`

`

`Bohbot-Gundlach does not render obvious portable switching device is configured to
`activate, deactivate or send into hibernation the portable electronic device
`
`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 Ex. 1089, ¶21).
`
`Petitioner’s improper 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. Ex. 1004, 5-6, 8.
`
`Including in view of Bohbot’s lack of disclosure, Petitioner has no basis to maintain that Bohbot’s primary module was not
`already “activated.”
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`17
`
`

`

`Bohbot-Gundlach does not render obvious portable switching device is configured to
`activate, deactivate or send into hibernation the portable electronic device
`
`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, E.g.:
`
`(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.” (Ex.
`2003, 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…” (Ex. 2004, 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 (see above) that details and context missing from Bohbot’s disclosure are needed in order to determine
`whether a subject device is a switching device that activates/deactivates.
`
`Ex. 2005 - Patent Owner’s Demonstratives - Not Evidence
`
`18
`
`

`

`Bohbot-Gundlach does not render obvious that when coupled, the second case functions to protect the first case (1g)
`
`The same analysis applicable to element 1e is applicable to this element 1g. (Ex. 2001, 146).
`
`Petitioner argues that inserting the headset “into the recess in the housing of the primary module [] provides a semi-enclosed storage space for
`the headset that protects the headset from environmental exposure/impacts on at least three sides.” (Ex. 1003, 75).
`
`Even of a Gundlach-inspired recess was added to Bohbot, the housing (second case) of the primary module would not function to protect the
`housing (first case) of the headset. (Ex. 2001, 148-149).
`
`Rather, 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. (Ex. 2001, 156). Likewise, a recess protecting only five of six sides would also not be protecting the headset. (Ex. 2001, 157).
`
`Ex. 2003 - Patent Owner’s Demonstratives - Not Evidence
`
`19
`
`

`

`The Bohbot-Gundlach combination does not render obvious “wherein the electronic device includes a lid
`and hinge attaching the lid to the electronic device [Claim 6]
`
`Petitioner’s rationale for housing Bohbot’s earpiece in Gundlach’s clamshell case is that such a case would provide a “robust, enclosed
`storage space” for the headset that “protects the headset from environmental exposure/impacts when the lid is closed.” (Ex. 1003, 88).
`
`However, Gundlach’s clamshell case is totally unsuitable for Bohbot’s headset and it would defeat important design goals and
`principles of operation by Bohbot, for multiple reasons. (Ex. 2001, 166).
`
`(1) The same reasons that one would not use a Gundlach recess for a Bohbot earpiece (see above) are even more applicable to using a
`Gundlach clamshell case for a Bohbot earpiece. (Ex. 2001, 128-133, 150-155, 166-167). One would be more inclined not to use
`an encased Bohbot headset at all, and instead would just pull his or her phone out of a pocket or bag. (Ex. 2001, 167).
`(2) When using only one hand, as Bohbot intends, it would be easier to remove the phone from the bag than to manipulate a clamshell
`with one hand. (Ex. 2001, 168).
`
`(3) Bohbot teaches that its headset should be able to be used “without having to hold the telephone in one hand to bring it to his ear
`when the user is driving a vehicle.” (Ex. 1004, 1/7-9). Putting Bohbot’s headset inside a clamshell case defeats this design goal
`and intent. (Ex. 2001, 169-170).
`
`(4) Bohbot’s detachable headset is “designed to be detached by nature, and then repositioned frequently on the primary module,” as
`one would expect when answering a call. (Ex. 1004, 3:10-11). Putting Bohbot’s headset inside a clamshell case defeats this design
`goal and intent. (Ex. 2001, 171).
`
`Ex. 2003 - Patent Owner’s Demonstratives - Not Evidence
`
`20
`
`

`

`The Bohbot-Gundlach combination does not render obvious “wherein the electronic device includes a lid
`and hinge attaching the lid to the electronic device (Claim 6)
`
`Gundlach’s clamshell case is unsuitable for Bohbot’s headset and it would defeat important design goals and principles of operation by Bohbot, for
`multiple reasons. (Ex. 2001, 166).
`
`(4) Bohbot’s detachable headset is “designed to be detached by nature, and then repositioned frequently on the primary module,” as one would expect
`when answering a call. (Ex. 1004, 3:10-11). Putting Bohbot’s headset inside a clamshell case defeats this design goal and intent. (Ex. 2001, 171).
`
`(5) Bohbot’s magnetic means of attachment are, on the one hand, such that they make attachment and detachment easy for the communication device
`user and on the other hand, they are powerful enough to make an effective attachment possible. Ex. 1004, 3:26-4:3. Putting Bohbot’s headset inside
`a clamshell case defeats this design goal and intent. (Ex. 2001, 172).
`
`(6) One 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. (Ex. 2001, 173). For example, Bohbot’s miniature devices only have a single speaker, which
`is speaker 27 in Fig. 2 and speaker 32 in Fig. 3. (Ex. 104, 10:10-12; 11:26-27; EX 2001, 173).
`
`(7) If Bohbot’s headset was contained within a Gundlach clamshell, then one could not use the speaker unless the headset was removed from the
`clamshell case. (Ex. 2001, 174). However, one of Bohbot’s goals and intentions is that during a telephone conversation, the user may choose to bring
`the entire miniature device to her ear. (Ex. 1004, 5:2-5; Ex. 2001, 174).
`
`(8) If Bohbot’s headset was contained within a Gundlach clamshell, then one would have difficulty hearing, or might not hear at all, the speaker/ringer
`when the clamshell was closed, i.e., one could not hear an incoming call. Ex. 2001, 175. In addition, as further explained relative to Apple’s
`suggested Bohbot-Gundlach-Stevinson-Iio, if Bohbot’s headset could not charge unless the clamshell was shut, then one could not use the headset,
`or the speaker, while it is charging. Ex. 2001, 175.
`
`Ex. 2003 - Patent Owner’s Demonstratives - Not Evidence
`
`21
`
`

`

`The Bohbot-Gundlach combination does not render obvious “wherein the electronic device includes a lid
`and hinge attaching the lid to the electronic device (Claim 6)
`
`Petitioner’s argument that “[i]f Gundlach’s case were unsuitable for Bohbot’s system, a POSITA would use their ordinary creativity to
`carry out the combination,” (Reply, 17) is an improper new Reply argument that, even if not hopelessly vague (which it is), should be
`disregarded.
`
`Petitioner’s specific argument of a new “common sense solution,” such as using unspecified “sound permeable material” for the case
`or having “slits” at unspecified locations in the case for the sound to travel through,” (Reply, 17), is yet another improper new Reply
`argument. It and the new Cooperstock Declaration upon which it relies (Ex. 1089, ¶41) should be disregarded.
`
`Petitioner’s Reply provides no details of how these new proposed features might be feasibly implemented.
`
`Ex. 2003 - Patent Owner’s Demonstratives - Not Evidence
`
`22
`
`

`

`The Gundlach case relied upon by the Petition does not have a lid “recessed to configure to the electronic device
`[Claim 7]
`
`Gundlach has a beveled earpiece (see, e.g., figures at Pet. 32) and a flat/planar interior lid, as follows:
`
`This flat clamshell case lid is not configured to the beveled earpiece. (Ex. 2001, 180).
`
`Apple’s apparent alternative argument is that the base of Gundlach’s clamshell base is somehow its lid (Ex. 1003, 91) is meritless.
`(Ex. 2001, 180).
`
`Ex. 2037 - Patent Owner’s Demonstratives - Not Evidence
`
`23
`
`

`

`Claims 4 (“switching device has a lens) and 8 (“switching device additionally comprises a laser”) are
`not obvious in view of Bohbot, Gundlach, and Li
`
`Petitioner lacks persuasive rationales for combining Li’s laser pointer on Li’s earpiece with the alleged Bohbot-Gundlach
`combination, which, at most, would already have a laser pointer on the Bohbot primary module. (Ex. 1004, 8:16-27; Ex. 2001,
`194).
`
`Bohbot’s earpieces are “intended for the implementation of short-range mobile telephone features.” (Ex. 1004, 1:1-5). A laser
`pointer is not a mobile telephone feature. (Ex. 2001, 197).
`
`Bohbot finds the feature of being able to bring its earpiece to the ear to be “particularly advantageous when the user is driving a
`vehicle, but it is also useful in any situation, since it frees the user's hands.” Ex. 1004, 6:6-12. A POSITA would understand
`such hands free functionality to be contrary to using the headset as a hand-held laser pointer. Ex. 2001, 198. Indeed, a POSITA
`would understand that Bohbot’s headset, intended to be ear mounted, to be contrary to a laser pointer. In addition, a POSITA
`would want the flexibility of using Bohbot’s earpiece as an earpiece during “business presentations,” including to take or refuse
`calls, especially when Bohbot’s primary device (as opposed to the headset) already has a laser pointer. Ex. 2001, 198.
`
`Ex. 2003 - Patent Owner’s Demonstratives - Not Evidence
`
`24
`
`

`

`Claims 8 (“lid has a second magnet disposed within it” and 9 (“lid is configured to employ the second magnet to
`secure the lid in a closed position”) are not obvious in view of Bohbot, Gundlach, and Stevinson
`
`The only means for such magnetic fastening disclosed by Stevinson is “magnetic, double sided adhesive tape.” (Ex. 1007, [0149]).
`
`The only “magnetic fasteners” mentioned by Stevenson are coupled with formers 1406, 1407 and 2404. (Ex. 1007, [0097]. [0128], Figs. 14A, 24A), e.g.,
`
`Petitioner’s new Reply theory that a POSITA “would have recognized that magnetic fasteners can be neodymium magnets…or other magnetic
`material…enclosed in a magnetic permeable housing’ to provide weathering shield,” (Reply 22), should be disregarded.
`
`Irrespective, what a POSITA would have recognized from Stevenson is what it teaches, which is the magnetic tape “formers” described and depicted in
`the patent (and also in the Petition).
`
`Gundlach already has a secure mechanical latch, and thus there would be no motivation to add Stevinson’s weak magnetic tape. (Ex. 2001, ¶212). The
`“predictable result” of the modification would be a lack of latching benefit.
`
`The new Reply theory that “a POSITA would have found it obvious to embed a magnetic fastener within the lid…,” (Reply, 22) should be disregarded
`along with the declaration it relies upon. (Ex. 1089, ¶49).
`
`Ex. 2003 - Patent Owner’s Demonstratives - Not Evidence
`
`25
`
`

`

`Claim 17 (“second or a third magnet is employed in the lid to actuate the electronic circuit [in the
`electronic device]”) is not obvious in view of Bohbot, Gundlach, Stevinson, and Iio
`
`Iio is not analogous art. The Reply’s suggestion that Iio’s portable syringe might be a “laboratory device,” (Reply, 23), is
`meritless.
`
`Iio has three separate and distinct devices, a syringe, a charging device, and a carrying case for the syringe and charging device.
`(Ex. 2001, 234; Ex. 1010, [0011], [0015]). Iio activates a separate charging device inside the carrying case, which then charges
`a third device, the syringe, when the carrying case senses that its lid is closed. (Ex. 2001, 241).
`
`The Bohbot-Gundlach-Stevinson-Iio combination would undesirably limit the charging of the headset to when the lid is closed.
`(Ex. 2001, 243).
`
`If one had to put the headset into a closed clamshell in order to charge it, then one could not participate in calls while the
`earpiece was charging. (Ex. 2001, 244). Bohbot teaches charging the earpiece whenever the blades are touching to ensure it
`gets sufficiently charged. (Ex. 1004, 7:1-2).
`
`As noted already - there is no motivation to use a closed case for a Bohbot device intended to be readily detachable with one
`hand; or for the fact that, absent any modifications from Gundlach, Stevinson, or Iio. (Ex. 2001, ¶¶242-246, see, e.g., Ex.
`1004, 3:26-4:3).
`
`Ex. 2003 - Patent Owner’s Demonstratives - Not Evidence
`
`26
`
`

`

`Claims 1-3, 5-7, 10, 16, and 19 are not obvious in view of Bohbot, Gundlach, and Diebel
`
`Petitioner’s fallback argument at Ground 2A is that Diebel supplies the switching device hibernating the electronic device
`element.
`
`Bohbot does not give rise to any motivation for extended sleep mode of the primary device.
`
`Bohbot’s headset is “designed to be detached by nature, and then repositioned frequently on the primary module.” (Ex.
`1004, 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. (Ex. 1004, 5-6, 8).
`
`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.” (Ex.
`1004, 7).
`
`Petitioner fails to explain how Diebel’s putti