`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`U.S. Patent No. 10,259,020
`
`Patent Owner’s Preliminary Response Petition for Inter Partes Review of
`
`U.S. Patent No. 10,259,020
`
`

`

`
`
`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
`TABLE OF CONTENTS
`
`V.
`
`VI.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT ........................... 1
`I.
`PRIORITY DATE , A POSITA AND CLAIM CONSTRUCTION .......... 12
`II.
`RELATED PROCEEDINGS ...................................................................... 14
`III.
`IV. OVERVIEW OF THE ’020 PATENT ........................................................ 14
`A. Overview of the Presently Relevant Disclosure of the ’020 Patent ........ 14
`1.
`Overview of ‘020 Claim 1. ...................................................... 20
`THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT CHALLENGED CLAIM 1, AND THUS ANY
`OF ITS DEPENDENT CLAIMS, IS UNPATENTABLE .......................... 21
`THE CHALLENGED CLAIMS ARE NOT OBVIOUS IN VIEW OF
`BOHBOT AND GUNDLACH; THUS, PETITIONER FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF
`PREVAILING ON GROUNDS 1A-1F. ..................................................... 24
`A. Overview of Allegedly Relevant Disclosures of Bohbot ................... 24
`B.
`Overview of Gundlach ....................................................................... 29
`C.
`Bohbot and Gundlach are not analogous art; thus, a POSITA would
`have no reason or motivation to combine them as alleged ................ 31
`Bohbot does not disclose a “switching device” ................................. 33
`Bohbot does not disclose that the alleged switching device is
`“configured to activate, deactivate or send into hibernation the
`portable electronic device” ................................................................. 38
`Bohbot does not disclose or render obvious “a first magnet disposed
`within” the headset, i.e., the alleged switching device ...................... 38
`G. A POSITA would not have reason or motivation to make the
`suggested combination of Bohbot and Gundlach, which does not
`disclose or render obvious that the primary module, i.e., the electronic
`
`D.
`E.
`
`F.
`
`
`
`ii
`
`

`

`
`
`H.
`
`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
`device, has a recessed area configured to correspond to
`complementary surface elements on the alleged switching device, i.e.,
`the headset. ......................................................................................... 40
`The combination of Bohbot and Gundlach does not render obvious
`that “when coupled, the second case functions to protect the first
`case” ................................................................................................... 43
`VII. THE CHALLENGED CLAIMS ARE NOT OBVIOUS IN VIEW OF
`BOHBOT IN VIEW OF GUNDLACH AND DIEBEL; THUS,
`PETITIONER FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING ON GROUNDS 1A-1F. ..................... 45
`A. Overview of allegedly relevant portions of Diebel ................................. 46
`B. Neither Gundlach nor Diebel are analogous art to Bohbot, nor is the
`alleged Bohbot-Gundlach combination analogous art to Diebel; thus, a
`POSITA would have no reason or Motivation to combine as alleged 48
`C. A POSITA would not have reason or motivation to make the
`suggested combination of Diebel with the alleged Bohbot-Gundlach
`Combination to add an extended sleep mode to Bohbot .................... 50
`VIII. THE FINTIV DISCRETIONARY FACTORS, NAMELY THOSE
`DISFAVORING PARALLEL PROCEEDINGS, FURTHER WEIGH
`AGAINST THE BOARD EXERCISING ITS DISCRETION TO
`GRANT THE PETITION ........................................................................... 51
`THE BOARD SHOULD TERMINATE THIS IPR BECAUSE IT
`FAILS UNDER THE APPOINTMENTS AND DUE PROCESS
`CLAUSES. .................................................................................................. 53
`CONCLUSION ........................................................................................... 55
`X.
`CERTIFICATE OF COMPLIANCE .......................................................... 57
`XI.
`XII. CERTIFICATE OF SERVICE ................................................................... 58
`
`
`IX.
`
`
`
`iii
`
`

`

`
`
`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020) ....... 52
`Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) ................ 53
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) .............................. 54
`Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019), cert denied, 141 S.Ct. 132
`(2020) .................................................................................................................. 55
`Doolin Sec. Sav. Bank, F.S.B. v. FDIC, 53 F.3d 1395 (4th Cir. 1995) .................. 55
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015)
` ............................................................................................................................. 52
`Edmond v. United States, 520 U.S. 651 (1997) ...................................................... 54
`Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334 (Fed. Cir. 2020) ............ 52
`In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) ......................................................... 23
`In re Longi, 759 F.2d 887 (Fed. Cir. 1985) .............................................................. 1
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ..................... 52
`In re Ratti, 270 F.2d 810 (CCPA 1959) ................................................................. 23
`In re Warner, 379 F.2d 1011 (CCPA 1967) ........................................................... 22
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir.
`2016) .............................................................................................................. 22, 23
`KSR Int’l v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 22, 23
`K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed. Cir. 2012) ............................ 32
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) ...................................................... 22
`Sawai USA, Inc. v. Astellas Pharma Inc., IPR2018-00079 (PTAB May 4, 2018) . 13
`Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) ....... 13
`Tumey v. Ohio, 273 U.S. 510 (1927) ...................................................................... 55
`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018) ................................. 52
`
`
`
`iv
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
`
`
`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................. 21
`35 U.S.C. § 314(a) .................................................................................................. 51
`5 U.S.C. § 556 ........................................................................................................ 54
`5 U.S.C. § 7521(a) .................................................................................................. 54
`
`Regulations
`37 C.F.R. § 42.104(b)(3) ........................................................................................ 13
`37 C.F.R. § 42.20(c) ............................................................................................... 52
`
`Other Authorities
`112 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) ..................................................... 21
`
`
`
`
`
`
`v
`
`

`

`INTRODUCTION AND SUMMARY OF ARGUMENT
`
`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
` III
`I.
`
`The Petition by Apple, Inc. (“Apple” or “Petitioner”) fails to establish a
`
`reasonable likelihood of rendering obvious claim 1 of challenged U.S. Patent No.
`
`10,259,020 (the “‘020 patent”), and thus the Petition fails to establish a reasonable
`
`likelihood of success1 on any challenged grounds.2 The Petition challenges claim 1 (and
`
`
`1 See In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985).
`
`2 Each of challenged claims 2-19 depend from claim 1. Ground 1A seeks
`
`cancellation of claim 1 and various dependent claims based upon the combined
`
`disclosure of Bohbot and Gundlach. Grounds 1B – 1F seek cancellation of various
`
`dependent claims based upon the same cited disclosure of Bohbot and Gundlach plus
`
`added disclosure from additional references. Ground 2A seeks cancellation of claim
`
`1 and various dependent claims based upon the combined disclosures of Bohbot,
`
`Gundlach, and Diebel. Grounds 2B – 2F seek cancellation of various dependent
`
`claims based upon the same cited disclosure of Bohbot and Gundlach plus added
`
`disclosure from additional references. As noted above, because the Petition lacks a
`
`reasonable likelihood of success for proving obviousness of claim 1, it is sufficient
`
`for purposes of this Preliminary Response to address the challenge to claim 1 only.
`
`Gwee’s silence at this preliminary stage on unnecessary issues raised by Grounds 1-
`
`
`
`
`
`1
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`thus all other claims, which each depend from claim 1) based upon FR2912858 to Bohbot
`
`when considered in combination with U.S. PGPUB 2008/0132293 of Gundlach,
`
`allegedly rendering it obvious. Because the Petition lacks a reasonable likelihood of
`
`success for establishing obviousness of claim 1, it is sufficient for purposes of this
`
`Preliminary Response to address only Petitioner’s challenge to claim 1, and further to
`
`address only some of the most glaring shortcomings in Petitioner’s claim 1 arguments.
`
`The crux of Petitioner’s argument for Ground 1A is a fictional Bohbot
`
`embodiment, based on hindsight from the ‘020 patent, which Petitioner alleges would
`
`have been an obvious modification of Bohbot’s Fig. 3 embodiment in view of disclosures
`
`from Bohbot’s Fig. 2 embodiment, and further in view of disclosures from Gundlach that
`
`run counter to the Bohbot Fig. 3 embodiment, and that a person of ordinary skill in the
`
`art at the time of invention (a “POSITA”) would not be motivated to make.
`
`As a threshold matter, Bohbot and Gundlach are not analogous prior art, as
`
`explained in detail below. Further, a POSITA would have no reason or motivation to
`
`make the suggested combination for multiple reasons.
`
`First, Bohbot does not disclose a “switching device,” which is a requirement of
`
`
`4 is not a concession that any assertions in the Petition are correct. Gwee reserves
`
`the right to address issues as they become relevant or otherwise appropriate to
`
`address in the future.
`
`
`
`2
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`multiple Claim 1 elements. The first basis for Petitioner asserting Bohbot to disclose a
`
`switching device is that “‘when the detachable headset is in contact with the primary
`
`module,’ power is transmitted from a main power storage device of the primary module
`
`to a secondary power storage device of the headset.” Pet. at 12 (citing Ex. 1004 at 6:22-
`
`7:1; 14:12:18). This basis is unpersuasive. The only actual structure corresponding to
`
`the “means for transmitting power” relied upon by Petitioner are the blade contactors.
`
`Ex. 1004 at 2:4-9; 2:14-20; 10:20-25. The passive acceptance of a charge across
`
`blade connectors by the primary module does not amount to Bohbot’s headset
`
`constituting a switching device. Further, Petitioner’s assumption of relevant
`
`inactivity in Bohbot’s primary module prior to the attachment of the headset is
`
`unwarranted and not supported by any disclosure from Bohbot. Again, all Bohbot
`
`discloses is the passive transmission of power across contacting blade connectors.
`
`Petitioner’s similar, yet also unpersuasive, second argument for a “switching
`
`device” is that “the primary module includes [s] data storage unit that receives data
`
`‘when the detachable [headset] is in contact with the primary module.’” Pet, 12-13 (citing
`
`Ex. 1004 at 7:16-27; 14:19-24). The only actual structure corresponding to the “means
`
`for data exchange” relied upon by Petitioner are the blade contactors. Ex. 1004 at 2:4-
`
`9; 2:14-20; 10:20-25. The passive acceptance of data across blade connectors by
`
`the primary module does not amount to Bohbot’s headset constituting a switching
`
`device.
`
`
`
`3
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`Further, what Bohbot actually discloses is that the headset is a conduit for
`
` III
`
`data between the mobile telephone and the primary module when the mobile
`
`telephone is transmitting data and when the blade connectors of the headset and the
`
`primary module are connected. Ex. 1004 at 7:16-22. Thus, on this “receives data”
`
`issue, the headset is merely a conduit for data that is passively transmitted across
`
`blade connectors.
`
`Petitioner’s third, and also unpersuasive, argument for a “switching device”
`
`is that “the miniature device comprises[] means to detect the presence of the
`
`detachable headset 20 on the primary module 18,” which make it possible to
`
`activate or deactivate either of the microphones 25 and 26.” Pet. p. 35 (quoting Ex.
`
`1004, 10:20-11:4, 6:8-9). However, neither Petitioner 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
`
`20.
`
`Petitioner’s assumption that all aspects of Bohbot’s Fig. 3 embodiment
`
`would also be found in Bohbot’s Fig. 2 embodiment is unfounded and unpersuasive.
`
`Petitioner’s attempt to pick and choose between the different Fig. 2 and Fig. 3
`
`embodiments is improper. Bohbot presents the Fig. 2 and Fig. 3 embodiments as
`
`alternative embodiments. Ex. 1004 at 9:13-16.
`
`None of the Bohbot disclosures relied upon by Petitioner teach, or even
`
`
`
`4
`
`

`

` III
`remotely suggest, the switching functionality that Petitioner argues.
`
`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
`Second, Bohbot does not disclose that the alleged switching device is
`
`“configured to activate, deactivate or send into hibernation the portable electronic
`
`device.” Petitioner alleges that this element is met because Bohbot’s headset 31 in
`
`Fig. 3 is a “switching device” and because it allegedly activates or deactivates the
`
`primary module 30, namely its microphone, in the manners already addressed
`
`above. Pet. at 27-29. For the same reasons noted above, Bohbot not disclose that
`
`the alleged switching device is “configured to activate, deactivate or send into
`
`hibernation the portable electronic device.”
`
`Third, Bohbot does not disclose or render obvious “a first magnet disposed
`
`within” the headset, i.e., the alleged switching device. For its hindsight
`
`reconstruction, Petitioner argues, spuriously, that the magnet 33a on the surface of
`
`a Bohbot headset 20 are somehow “disposed within” the headset. Pet. p. 18. To
`
`the contrary, Fig. 3 depicts a magnet on the surface of headset 31, just like it depicts
`
`speaker 31 and blade connectors 35a on the surface of headset 31. See Fig. 3,
`
`At least tacitly admitting that its argument for magnet 33a being “disposed
`
`within” headset 31 lacks merit, Petitioner next argues that a POSITA would have
`
`found it obvious and would have been motivated to pursue such a configuration. In
`
`fact, a POSITA would be motivated to keep the magnet 33a at surface where Bohbot
`
`places it. The Petition’s modification would require embedding a significantly larger
`
`
`
`5
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`magnet within the already small, thin and lightweight headset to maintain a similar
`
`magnetic coupling force. However, with disposed magnets needing to be
`
`substantially larger due to the inverse square law of attractive force regarding
`
`distance, the magnets would need to be much larger and therefore much heavier. A
`
`POSITA would want the strength of a magnet 33a in direct contact with
`
`corresponding ferrimagnetic material 33b. Further a POSITA would not want to add
`
`weight to headset 31, which was already intentionally simplified to minimize weight,
`
`because this runs contrary to the lightweight design of headset 31, it makes the
`
`headset less comfortable to the ear, and makes it more likely that the headset would
`
`fall out of the ear, especially during the “advantageous” use of Bohbot devices
`
`during “sports” including “extreme” sports. Ex. 1004 at 8:1-5.
`
`Further with a POSITA wanting to keep a headset light weight by not
`
`increasing the weight of the magnet, an embedded magnet of the same size within
`
`the headset would be much weaker and would run contrary to Bohbot’s design goal
`
`of the headpiece staying securely and reliably attached to the primary module,
`
`especially when the primary module is undergoing the stresses of being bounced
`
`around when tethered to a bag, as demonstrated in Fig. 1a.
`
`Fourth, the combination of Bohbot and Gundlach does not disclose or render
`
`obvious that the primary module, i.e., the electronic device, has a recessed area
`
`configured to correspond to complementary surface elements on the alleged
`
`
`
`6
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`switching device, i.e., the headset. Petitioner advances one reason as to why a
`
`POSITA would make the Bohbot-Gundlach combination; namely, that a POSITA
`
`would have combined Bohbot with Gundlach to provide a primary Bohbot module
`
`with a contoured recess for retaining a headset in position therein to provide “robust
`
`protection” for the headset. Pet. at 7-8. Petitioner’s rationale for the asserted
`
`combination is unconvincing, and to a POSITA, would be greatly outweighed by
`
`countervailing considerations.
`
`First, a POSITA would not add a recess to primary module 32 for embedding
`
`headset 31 flush with the top of primary module 32 – as Petitioner suggests, and as
`
`is taught by Figs. 18b and 17a of Gundlach relied upon by Petitioner -- because it
`
`would then become very difficult to remove the headset with one hand, especially
`
`when holding a purse, as illustrated in Fig. 1a, or during the “advantageous” use of
`
`Bohbot devices during “sports” including “extreme” sports. Ex. 1004 at 8:1-5.
`
`Similarly, if the primary module was clipped to a shoulder strap as also taught by
`
`Bohbot, only one hand could be used to dislodge the headset. This is illustrated by
`
`the following:
`
`
`
`7
`
`

`

` III
`
`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
`
`
`Further, Bohbot discloses that the headset may be placed on the ear and may
`
`be used hands free as shown in Fig. 1b. A POSITA would not bury speaker 32 of
`
`headset 31 in a recess, as this would make it more difficult, if not impossible, to hear
`
`an indication from speaker 32 of an incoming call.
`
`Further, for headset 31 to be placed on an ear, it would need an additional
`
`support to be hands free, such as an over the ear or over the head support. Gundlach
`
`does not teach a recess for an over the ear or over the head support, nor does
`
`Petitioner offer, or Gundlach provide, any support for how the Gundlach recess
`
`would protect (see “protects” element below) a first case of headset 31 that included
`
`
`
`8
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`such a necessary support. This non-functional aspect of the claimed combination is
`
`illustrated by the following:
`
`
`
`Further, Petitioner uses a contoured recess as disclosed by Gundlach, yet
`
`Bohbot discloses (and Petitioner also shows) a rectangular shaped detachable
`
`headset 31 with round speaker 32, oval magnet 33a and rectangular charging blades
`
`35a. This weighs heavily against Petitioner’s asserted modification for at least three
`
`reasons noted herein.
`
`Fifth, the combination of Bohbot and Gundlach does not render obvious that
`
`“when coupled, the second case functions to protect the first case.” Petitioner’s
`
`argument for the combination of Bohbot and Gundlach rendering obvious the “when
`
`coupled, the second case functions to protect the first case,” element of Claim 1
`
`depends entirely upon the fictional Bohbot primary module modified to include a
`
`“contoured recess,” Pet. at 27-28. Thus, for the same reasons that the electronic
`
`
`
`9
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`device comprises a recessed area is not rendered obvious (see above), this element
`
`is not rendered obvious either.
`
`Further, even if Bohbot was modified in view of Gundlach to include such a
`
`contoured recess, such a recess in the “second case” of the electronic device, i.e.,
`
`primary module 30, would at most accept five sides of a six-sided headset 31,
`
`making the headset very difficult to detach from the primary module as previously
`
`described and leaving the entire sixth side completely unprotected, as demonstrated
`
`by the following figure from p. 27 of the Petition, with the unprotected side of
`
`allegedly embedded headset 31 shaded in blue:
`
`Thus, even if Bohbot was modified in view of Gundlach to include such a contoured
`
`recess, the “when coupled, the second case functions to protect the first case,”
`
`
`
`element of Claim 1 would not be met.
`
`
`
`10
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`Fundamentally, Petitioner’s analysis uses hindsight to try to re-engineer a
`
` III
`
`fictional version of a Bohbot device at odds with the teachings of Bohbot for the
`
`sole purpose of matching Bohbot with the elements of claim 1, without any analysis
`
`or persuasive reasoning that Bohbot combined with Gundlach renders claim 1
`
`obvious as a whole.
`
`The Petition and the hindsight theories espoused therein have numerous other fatal
`
`flaws that add to the lack of reasonable likelihood of success for proving obviousness of
`
`claim 1 or any other claims, but it is sufficient for purposes of this Preliminary Response
`
`to address the limited issues addressed herein, since no more is needed at this time to
`
`show a lack of reasonable likelihood of success sufficient to justify denying institution.
`
`Petitioner’s fallback argument at Ground 2A is that Diebel supplies the switching
`
`device hibernating the electronic device element for which Petitioner must sense
`
`weakness in its Ground 1A arguments. The only aspect allegedly added by Diebel is the
`
`hibernation from an extended sleep mode. However, as a threshold matter, Bohbot and
`
`Diebel are not analogous prior art, and the Bohbot-Gundlach combination is also not
`
`analogous to Diebel, as explained in detail below. Further, a POSITA would have no
`
`reason or motivation to make the suggested combination for multiple reasons, including
`
`because Bohbot evidences no need for, or benefit from, such an extended sleep mode for
`
`the primary module which needs to stay active to function as Bohbot intended such as to
`
`interface with the phone and provide incoming call notifications, and because Bohbot is
`
`
`
`11
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`concerned with, and indeed seeks to address, the issue of low batteries in the earpiece,
`
`not in the primary module.
`
`
`
`II.
`
`PRIORITY DATE , A POSITA AND CLAIM CONSTRUCTION
`
`Petitioner “does not concede,” Pet. at 2, but assumes and does not contest, that the
`
`priority date, and thus the relevant date of invention for a POSITA, for the ‘020 claims is
`
`the August 5, 2011 filing date of provisional application No. 61/515,752 listed in the
`
`priority claim of the ‘020 patent. Ex. 2001, p. 2, block (60). For purposes of this
`
`Preliminary Response, and because priority does not appear to be at issue with respect to
`
`the issues addressed in this preliminary response, Gwee will operate under the same
`
`assumption.
`
`Gwee contends that a POSITA would be someone with either a bachelor’s
`
`degree in Electrical Engineering, Computer Science, or Mechanical Engineering
`
`and two years of post-baccalaureate electronic device or system design experience,
`
`or someone with no degree but four years of experience in electronic device or
`
`system design. Conversely, Petitioner contends that a POSITA at the time of the
`
`’020 patent (a “POSITA”) would have had at least a bachelor’s degree in an
`
`academic area emphasizing electrical engineering, mechanical engineering, or a
`
`similar discipline, and at least two years of experience in the field working with
`
`electronic devices. Pet. at 4.
`
`
`
`12
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`A petition for IPR must include a statement regarding how each challenged
`
` III
`
`claim is to be construed. 37 C.F.R. § 42.104(b)(3). The present petition fails to meet
`
`this requirement inasmuch as no constructions are offered and no framework for
`
`evaluating the claims is proposed. Pet. at 4. This alone is sufficient for the Board to
`
`deny institution of trial. To the extent the petition alleges it is applying the “ordinary
`
`meaning” of the claims, Pet. at 22, fn. 2, arguments in footnotes are not sufficient,
`
`see Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
`
`2006) (collecting cases); see also Sawai USA, Inc. v. Astellas Pharma Inc.,
`
`IPR2018-00079, Paper 7 at 18 n. 3 (PTAB May 4, 2018) (“We decline to consider
`
`an argument made entirely in footnotes.”), and, in any event, Petitioner has not
`
`explained what any “ordinary meanings” of the claims are.
`
`A POSITA would understand the ordinary and customary meaning of the term
`
`“disposed within” as used in claim 1, Ex 1001 at 21:34-35, to be “contained within.”
`
`To be “disposed” within something is to be arranged within it, and the context of
`
`the ’020 patent makes clear that the arrangement is such that the magnet is contained
`
`within the specified device. Id. at 6:40-43 (“Turning to FIGS. 2A and 2 B, a side
`
`view of the cleaning component, it can be seen that disposed within the cleaner
`
`material (201) is a ferromagnetic or ferrimagnetic substrate (202).”); 18:13-15
`
`(referring to FIG. 25, “Disposed within the switching device is a ferromagnetic or
`
`ferrimagnetic substrate (2504).”). Hence, the POSITA would understand the term
`
`
`
`13
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
` III
`“disposed within” to mean “contained within.”
`
`
`
`III. RELATED PROCEEDINGS
`
`This inter partes review is related to the following co-pending litigation: Civil
`
`Action No. 4:20-cv-02624, GUI Global Products, Ltd. d/b/a Gwee v. Samsung Elecs. Co.,
`
`Ltd. and Samsung Electronics America, Inc., and Civil Action No. 4:20-cv-02652, GUI
`
`Global Products, Ltd. d/b/a Gwee v. Apple, Inc., both in the United States District Court
`
`for the Southern District of Texas, which have been consolidated under Civil Action No.
`
`4:20-cv-02624. Ex. 1004. The ‘020 patent is also at issue in IPR2021-00335, filed by
`
`Apple’s co-defendant Samsung, presently pending. Related proceedings involving related
`
`patents are IPRs 2020-00336, 2020-00337, 2020-00338, 2021-00471, 2021-00472, and
`
`2021-00473.
`
`
`
`IV. OVERVIEW OF THE ’020 PATENT
`
`A. Overview of the Presently Relevant Disclosure of the ’020 Patent
`
`The president and primary force behind GUI Global Products, Ltd., D/B/A
`
`Gwee (“Gwee”) is businessman and prolific inventor Walter (“Tad”) Mayfield. Mr.
`
`Mayfield and his ‘020 co-inventor, Dan Valdez, took portable magnetic switching
`
`
`
`14
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`in new directions and to new levels, as evidenced by the exemplary portable3
`
`magnetic switching devices in FIGs. 1-26 of the ‘020 patent. In certain preferred
`
`embodiments such switching devices may be cleaning devices, but they need not
`
`be cleaning devices. Ex. 1001/Abstract (“The cleaning devices may have secondary
`
`applications such as … activating or deactivating a device having a magnetic switch
`
`… They may also be manufactured without a cleaning component for use with the
`
`secondary applications.”); Ex. 1001/21:24-264 (“Where such a secondary use has
`
`been disclosed, then such devices, with or without the cleaning material are also
`
`within the scope of the application.”). The disclosed switching devices have
`
`functions such as activating, deactivating and hibernating electronic devices such
`
`as cell phones, smartphones, tablet computers and laptop computers. For example,
`
`the magnetic switching device 2401 in FIGs. 24 and 25,
`
`
`3 The ‘020 claims are directed to systems comprising portable switching devices and
`
`portable electronic devices, and the ‘020 specification describes, inter alia, systems
`
`comprising portable switching devices and portable electronic devices. Whether
`
`“portable” is expressly stated, references herein to switching devices and electronic
`
`devices are to portable ones.
`
`4 Ex. 1001/21:24-26 refers to column 21, lines 24-26 of the ‘020 patent.
`
`
`
`15
`
`

`

` III
`
`IPR2021-00470
`U.S. Patent No. 10,259,020
`
`
`,
`
`comprising magnets 2504 activates, deactivates or hibernates tablet computer 2400.
`
`Ex. 1001/17:63-67. Another example is the doll-shaped switching device in Fig. 26,
`
`which is depicted as a switching device for a version of the iPad. Ex. 1001/5:47-49.
`
`
`
`Aspects of disclosed embodiments comprise a switching device selectively
`
`coupled to the front of the portable electronic device. Ex. 1001/17:63-67 (“switching
`
`device (2401) is selectively coupled to the front of the portable electronic device
`
`2402 outside of the view screen 2403.”).
`
`Aspects of disclosed embodiments comprise a switching device having a
`
`magnet element to activate or deactivate a magnetic switch. Ex. 1001/2:65-67. See,
`
`e.g., a round switching device 100 comprising magnet 102 (Figs 1A and 1B); a
`
`square switching device 200 comprising magnet 202 in FIGs. 2A-2C; a switching
`
`
`
`16
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`device 303 comprising a magnetic substrate (Fig. 3); a switching device 402 with a
`
`magnet (Fig. 4); a switching device 503/503a with magnets 506 (FIGs. 5A, 5B).
`
`Aspects of disclosed embodiments further comprise a case for an electronic
`
`device having a magnetic switch, and in the area of the case over the magnetic
`
`switch, a recessed area functions to facilitate a switching device having a magnet
`
`moving past the switch in order to activate or deactivate the switch. Ex. 1001/3:125-
`
`17. Examples of depicted recesses include indention 302 in Fig. 3:
`
`Ex. 1001/8:51-55, and recess 904 in Fig. 9.
`
`
`
`17
`
`,
`
`
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`21/011:39-45. Aspects of disclosed embodiments further comprise switching
`
`devices with beveled edges. Ex. 1001/18:53-54. Aspects of disclosed embodiments
`
`further comprise switching devices that may be received into a groove, slot, or other
`
`indented geometrical shape to lower the profile of the switching device to facilitate
`
`closing a cover or prevent snagging a cleaning component. Ex. 1001/8:51-55; 19:2-
`
`6.
`
`Aspects of disclosed embodiments further comprise a switching device
`
`including at least one ferromagnetic or ferrimagnetic material within, wherein the
`
`ferromagnetic or ferrimagnetic material may function to actuate a power switch or
`
`sensor that is capable of being actuated using a magnet. Ex. 1001/8:29-34; 3:54-60.
`
`Aspects of disclosed embodiments further comprise a switching device that
`
`activates or deactivates an electronic device by employing a magnet, the switching
`
`device having a body surrounding the magnet and at least one surface non-abrasive
`
`to the electronic device. Ex. 1001/3:49-55.
`
`Aspects of disclosed embodiments further comprise methods of conserving
`
`power when using a portable electronic device having a view screen and a switch
`
`that can activated or de-activated by introducing a magnetic field to the switch,
`
`wherein the switching device has at least one magnet and at least one surface that
`
`is non-abrasive to the surface of the view screen, wherein the method includes using
`
`the switching device to turn the portable electronic device off when the portable
`
`
`
`18
`
`

`

`IPR2021-00470
`U.S. Patent No. 10,259,020
`
` III
`electronic device is not in actual use and then on when the portable electronic device
`
`is needed. Ex. 1001/4:7-17.
`
`Aspects of disclosed embodiments further comprise a switching device
`
`putting a tablet into hibernation mode with a single touch to the switching device
`
`as compared to the multiple touches required to do