Trials@uspto.gov
`571-272-7822
`
` Paper 10
`
` Entered: August 13, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00471
`Patent 10,259,021 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`

`

`IPR2021-00471
`Patent 10,259,021 B2
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1, 2, 4–10, 12, 14–17, and 19 of U.S. Patent No. 10,259,021 B2
`(Ex. 1001, “the ’021 patent”). Paper 2 (“Pet.”). GUI Global Products, Ltd.,
`D/B/A Gwee (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). Institution of an inter partes review is authorized by
`statute when “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the
`Preliminary Response, and the evidence of record, we determine that
`Petitioner has established a reasonable likelihood of prevailing with respect
`to the unpatentability of at least one claim of the ’021 patent. Accordingly,
`for the reasons that follow, we institute an inter partes review of claims 1, 2,
`4–10, 12, 14–17, and 19 of the ’021 patent.
`
`A. Related Matters
`The parties indicate that related district court litigations are GUI
`Global Prods., Ltd. d/b/a Gwee v. Samsung Elecs. Co., No. 4:20-cv-02624
`(S.D. Tex.) and GUI Global Prods., Ltd. d/b/a Gwee v. Apple, Inc., No.
`4:20-cv-02652 (S.D. Tex.). Pet. 79; Papers 4, 1–2; 5, 1–2. The parties also
`indicate that the ’021 patent is the subject of a petition filed by Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc. in
`IPR2021-00336. Pet. 79; Papers 4, 2; 5, 2.
`
`B. The ’021 Patent
`The Specification of the ’021 patent describes how an apparatus may
`be used for cleaning view screens of electrical devices. Ex. 1001, 1:32–34.
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`The ’021 patent aims to address the lack of convenient cleaning materials
`faced by users of portable electronic devices. Id. at 1:54–2:8.
`In one embodiment, a cleaning component for cleaning a view screen
`of an electronic device is coupled to a first case of the electronic device
`using a magnetic attractive force. Id. at 2:13–18, Fig. 1B.
`Figure 1B is illustrative and is reproduced below.
`
`
`Figure 1B shows a side view of a cleaning component. Id. at 4:33–34.
`Cleaning component 100 includes ferromagnetic or ferrimagnetic substrate
`102 covered with cleaning material 101, such as a fabric or a cloth. Id. at
`6:26–46.
`In another embodiment, a second case receives the cleaning
`component and also “functions to protect an electronic device’s primary
`case.” Id. at 2:42–55; Fig. 3.
`Figure 3 is illustrative and is reproduced below.
`
`
`Figure 3 shows a computer case configured to receive a cleaning
`
`component. Id. at 4:41–42. Laptop computer 300 has rectangular
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`indentation 302 dimensioned for receiving cleaning component 303 which
`has a magnet. Id. at 8:58–65.
`Figure 5A is also illustrative and is reproduced below.
`
`
`Figure 5A shows “a lateral type phone case configured to receive a
`cleaning component.” Id. at 4:45–46. Case 500 includes body 504 “which
`functions to hold a smart phone” and a lid having top 501, side 502, hinge
`507, and cleaning component 503. Id. at 10:9–14.
`
`The cleaning component is secured and adhered to a case via
`“dimensional stability to increase the security with which the clean
`components are adhered to the case.” Id. at 11:40–51; Fig. 9.
`Figure 9 is illustrative and is reproduced below.
`
`
`Figure 9 shows a cleaning component “employing a structural feature
`
`to enhance adhesion.” Id. at 4:56–57. Device case 901 has raised section
`902 that is configured to fit within recess 904 of cleaning component 903.
`Id. at 11:45–47.
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`Still in another embodiment, the cleaning component has a magnetic
`element that activates or deactivates a magnetic switch. Id. at 3:1–3. The
`’021 patent describes “activating or deactivating a device having a magnetic
`switch” as a “secondary application[]” and that “cleaning devices” “may
`also be manufactured without a cleaning component for use with the
`secondary applications.” Id. at code (57); see also id. at 11:59–62
`(explaining that the cleaning component may be able to activate magnetic
`switches on devices having switches). Thus, a device “may or may not
`include cleaning capabilities but will include a rare earth magnet or
`magnets” for “additional functionality.” Id. at 16:30–32, 40–42.
`
`Figure 24 is illustrative and is reproduced below.
`
`
`Figure 24 shows a tablet computer having a switching device. Id. at
`
`5:49–50. Tablet computer 2400 has switching device 2401 that “is
`selectively coupled to the front of the portable electronic device 2402
`outside of the view screen 2403.” Id. at 18:5–9. A “magnetic switch is
`normally disposed with the portable electronic device but is shown [in
`Figure 24] for illustration purposes (2404).” Id. at 18:10–12. The
`’021 patent describes that the switching component “may be picked up” and
`switching device “is either applied directly to the magnetic switch or applied
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`to either side of the switch and then slid past it to activate or deactivate the
`portable electronic device.” Id. at 18:13–18.
`
`Figure 25, reproduced below, shows a side view of the switching
`device in Figure 24. Id. at 5:51–52, 18:19–20.
`
`
`Figure 25 shows switching device 2401 having bottom surface 2501,
`
`top surface 2502, and ferromagnetic or ferrimagnetic substrate 2504
`disposed therebetween. Id. at 18:19–21, 23–25. Tab 2503 “on the top
`surface” facilitates manipulation of switching device 2401. Id. at 18:22–23.
`
`C. Illustrative Claim
`Petitioner challenges claims 1, 2, 4–10, 12, 14–17, and 19 of the
`’021 patent. Claim 1 is an independent claim, and claims 2, 4–10, 12, 14–
`17, and 19 depend therefrom. Claim 1 is reproduced below, which includes
`changes made per a Certificate of Correction.
`1. A system comprising:
`a portable switching device coupled to a portable electronic
`device;
`wherein:
`the switching device and the electronic device are
`configured
`to selectively couple
`to each other
`employing magnetic force;
`the switching device comprises a first case;
`the electronic device comprises a second case and an
`electronic circuit that is responsive to the switching
`device;
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`a first magnet is fully disposed within the electronic
`device;
`the electronic device comprises at least one element
`selected from the group consisting of beveled edges,
`ridges, recessed areas, grooves, slots, indented shapes,
`bumps, raised shapes, and combinations thereof;
`configured to correspond to complementary surface
`elements on the switching device;
`the portable switching device is configured to activate,
`deactivate or send into hibernation the portable
`electronic device; and
`when coupled, the first case functions to protect the second
`case.
`Ex. 1001, 21:38–22:7, p.27.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 2, 4–10, 12, 14–17, and 19 are
`unpatentable based on the following grounds (Pet. 1):
`
`Reference(s)/Basis
`Gundlach,2 Lee3
`Gundlach, Lee,
`Nishikawa4
`Gundlach, Lee, Rosener5
`
`35 U.S.C §
`103(a)1
`103(a)
`103(a)
`
`Claim(s) Challenged
`1, 4–7, 10, 14-16, 19
`4, 14
`10
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’021 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C.
`§§ 102 and 103.
`2 U.S. Pat. Appl. Pub. No. US 2008/0132293 A1, published June 5, 2008
`(Ex. 1005, “Gundlach”).
`3 U.S. Pat. No. US 7,548,040 B2, issued June 16, 2009 (Ex. 1006, “Lee”).
`4 U.S. Pat. Appl. Pub. No. US 2007/0145255 A1, published June 28, 2007
`(Ex. 1059, “Nishikawa”).
`5 U.S. Pat. Appl. Pub. No. US 2008/0076489 A1, published Mar. 27, 2008
`(Ex. 1050, “Rosener”).
`
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`IPR2021-00471
`Patent 10,259,021 B2
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`Claim(s) Challenged
`2, 12
`8, 9, 17
`
`
`35 U.S.C §
`103(a)
`103(a)
`
`II. DISCUSSION
`
`Reference(s)/Basis
`Gundlach, Lee, Brown6
`Gundlach, Lee, Mak-
`Fan7
`
`A. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). The claim
`construction standard includes construing claims in accordance with the
`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`According to Petitioner, “no express constructions are required to
`institute review and find the Challenged Claims unpatentable” at this time in
`the proceeding. Pet. 8. Patent Owner argues “[a] petition for IPR must
`include a statement regarding how each challenged claim is to be construed”
`and “[t]he present petition fails to meet this requirement inasmuch as no
`constructions are offered and no framework for evaluating the claims is
`proposed.” Prelim. Resp. 10 (citing 37 C.F.R. § 42.104(b)(3)). Patent
`Owner, however, overlooks that “[a] petitioner may include a statement that
`the claim terms require no express construction.” Consolidated Trial
`Practice Guide (“Consolidated Practice Guide”)8 at 44. In addition, Patent
`
`6 U.S. Pat. No. US 7,631,811 B1, issued Dec. 15, 2009 (Ex. 1008, “Brown”).
`7 U.S. Pat. Appl. Pub. No. US 2008/0012706 A1, published Jan. 17, 2008
`(Ex. 1010, “Mak-Fan”).
`8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`Owner presents proposed constructions for “fully disposed within” and
`“selectively couple.” Prelim. Resp. 11–12.
`For purposes of this Decision, we need not expressly construe any
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;9 and (4) when in evidence, objective
`
`9 Relying on the testimony of Dr. Jeremy Cooperstock, Petitioner offers an
`assessment as to the level of ordinary skill in the art and the general
`knowledge of a person of ordinary skill at the time of the ’021 patent.
`Pet. 7–8 (citing Ex. 1003 ¶ 20). For example, Dr. Cooperstock states that a
`person having ordinary skill in the art “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” and that “[s]uperior education
`could compensate for a deficiency in work experience, and vice-versa.” Ex.
`1003 ¶ 20. Patent Owner relies on the testimony of Mr. Robert Stillerman
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`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Asserted Obviousness of Claims 1, 4–7, 10, 14-16, and 19 over Gundlach
`and Lee
`Petitioner contends that claims 1, 4–7, 10, 14-16, and 19 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Gundlach and Lee.
`Pet. 9–50. In support of its showing, Petitioner relies upon the declaration of
`Dr. Jeremy Cooperstock. Id. (citing Ex. 1003). In support of its Preliminary
`Response, Patent Owner relies upon the declaration of Mr. Robert Stillerman
`(Ex. 2001).
`
`1. Gundlach
`Gundlach describes a device that operates as a wireless headset and
`can be stored and charged in a host device such as a laptop computer or a
`cell phone. Ex. 1005 ¶ 2. Gundlach indicates a desire for mobility while
`managing peripherals that accompany a portable computer. Id. ¶ 3. To this
`end, Gundlach discloses that its device’s “relatively thin shape may allow
`the headset to be stored and charged in a portable cradle” and the “portable
`cradle may be a holder, clip, case or card that may fit inside a standard
`expansion slot.” Id. ¶ 56.
`
`
`whose assessment is similar to that of Dr. Cooperstock. Prelim. Resp. 11
`(citing Ex. 2001 ¶ 32). To the extent necessary, and for purposes of this
`Decision, we accept the assessment offered by Petitioner as it is consistent
`with the ’021 patent and the asserted prior art.
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`Figure 1 is illustrative and is reproduced below.
`
`
`Figure 1 shows a schematic view of a wireless device in
`communication with a host device. Id. ¶ 11. Wireless device 100 includes
`housing 101 and earpiece 104. Id. ¶ 58. Housing 101 includes microphone
`102, power source 111 such as a battery, and transceiver 106 for sending and
`receiving information 108 from host device 110 such as a computer or a cell
`phone. Id. Earpiece 104 includes speaker 105. Id.
`Gundlach’s wireless device may be held to a cradle by a magnet
`“which may be embedded in the cradle” and the wireless device “may also
`include a ferromagnetic portion” such as another magnet to which the
`magnet in the cradle may be attracted. Id. ¶ 68. The wireless device may
`also be held to the cradle by “mechanical means” such that the wireless
`headset is retained to the cradle. Id.
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`Figure 18b is illustrative and is reproduced below.
`
`
`Figure 18b shows a perspective view of a case for retaining a wireless
`device. Id. ¶ 52. Wireless device 1800 is provided in a clamshell case that
`has recess 1846 “defined therein to accommodate the wireless device.” Id.
`¶ 80.
`
`2. Lee
`Lee describes a wireless battery for charging a wireless headset.
`Ex. 1006, 3:21–22. Lee indicates that wireless headsets require their own
`power source such that many use rechargeable batteries which require a
`method for recharging. Id. at 1:25–29. Lee thus provides a method for
`wirelessly charging a battery in a wireless headset. Id. at 3:32–33.
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`Figure 5 is illustrative and is reproduced below.
`
`
`
`Figure 5 shows a block diagram for wireless battery charging of a
`wireless headset. Id. at 2:14–15. Power source 200 provides energy via
`conductive means 202 to power adapter 201. Id. at 3:32–35. Power adapter
`201 provides power to wireless headset apparatus 204 via non-conductive
`means 203, which is “typically inductive coupling.” Id. at 3:35–37. Lee
`indicates that energy can be transferred to a wireless headset via inductive
`coupling to an energy collection element which is then transferred to a
`battery via a battery charging circuit. Id. at 4:27–31. A headset circuit that
`is powered by the battery provides a drive signal to a transducer, in which
`the transducer has a dual purpose of producing sound and “receiving
`magnetic energy via [a] wireless magnetic field.” Id. at 4:32–39.
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`Figure 12 is illustrative and is reproduced below.
`
`
`Figure 12 shows a block diagram for wireless battery charging of a
`wireless headset using a coil of a transducer as an energy collection element.
`Id. at 2:34–37. Energy is transferred to wireless headset apparatus 460 via
`inductive coupling 461 to energy collection element 465 (transducer coil)
`which is then transferred to battery 463 via battery charging circuit 462. Id.
`at 4:53–66. Switch 470, controlled by switch control signal 471, is closed
`when in a charging mode and is open in a non-charging mode. Id. at 5:13–
`16. When switch 470 is open, the transducer coil is isolated from the battery
`charging circuit such that the wireless headset is in a non-charging mode.
`Id. at 5:16–18. Preferably, switch 470 “can sense” when headset apparatus
`460 is near a power adapter so that it automatically closes or opens. Id. at
`5:30–34. A power adapter can provide charging, physical protection, and
`storage of the headset apparatus. Id. at 6:35–37.
`
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`3. Discussion
`Claim 1 recites “[a] system comprising.” Petitioner contends that
`Gundlach describes a system including a headset and case where the headset
`is stored and charged. Pet. 19 (citing Ex. 1005 ¶¶ 55–56, 80; Ex. 1003
`¶¶ 46–47; Ex. 1025; Ex. 1026).
`Claim 1 further recites “a portable switching device coupled to a
`portable electronic device.” Petitioner contends that Gundlach’s wireless
`headset is a portable electronic device as claimed. Id. at 20–21 (citing
`Ex. 1005 ¶¶ 55–58, Fig, 18b; Ex. 1003 ¶ 49; Ex. 1024; Ex. 1027; Ex. 1100
`¶ 79). Petitioner further contends that the combined teachings of Gundlach
`and Lee “yield a clamshell case that stores and inductively charges a
`wireless headset.” Id. at 21 (citing Ex. 1005 ¶¶ 56, 80. Figs. 18a-18b;
`Ex. 1006, 3:50–62, Fig. 7). In particular, Petitioner argues that Gundlach
`describes a portable cradle (case) that fits into a slot of a laptop or cell
`phone. Id. (citing Ex. 1005 ¶ 56). Petitioner further argues that Lee
`describes an inductive charging case that activates a charging “switch” in a
`wireless headset. Id. at 21–22 (citing Ex. 1006, 5:12–40, 6:31–38, Figs. 12,
`17; Ex. 1003 ¶ 50; Ex. 1001, 18:6–18). Petitioner contends that the
`“Gundlach-Lee” charging case (switching device) is coupled to the wireless
`headset (electronic device), because the headset and case are inductively
`coupled, and physically coupled to one another. Id. at 23 (citing Ex. 1003
`¶ 51; Ex. 1006, 3:31–62, Figs. 5–7; Ex. 1005 ¶¶ 55–56, 80, Figs. 18a–18b).
`Petitioner provides reasons to combine Gundlach and Lee. Id. at 14–
`18. For example, Petitioner argues that although Gundlach describes a
`wireless headset that includes “an electronic circuit that is responsive to the”
`portable cradle, Gundlach does not expressly describe the manner in which
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`the headset’s charging circuitry responds when placed in the cradle for
`charging. Id. at 14. Petitioner further argues that “[a] POSITA10
`considering Gundlach, and noting its limited disclosure on charging, would
`have seen a need for elaboration and description of design options.” Id.
`(citing Ex. 1003 ¶ 35). According to Petitioner, a POSITA “seeking a
`supplement to Gundlach, . . . would have encountered Lee’s disclosure on
`charging in the familiar context of wireless headsets.” Id. at 14–15 (citing
`Ex. 1003 ¶ 35). Petitioner argues that a POSITA would have been
`motivated to exchange Gundlach’s conductive charging components with
`Lee’s more thoroughly explained inductive charging components. Id. at 15
`(citing Ex. 1003 ¶ 37). Petitioner contends that a POSITA would have
`recognized that inductive charging is a suitable alternative to conductive
`charging and that a POSITA would have appreciated benefits of inductive
`charging, such as enhanced reliability. Id. at 16–17 (citing Ex. 1003 ¶¶ 40–
`43; Exs. 1020–1022; Ex. 1006, 1:62–2:2). Petitioner further contends that
`employing Lee’s inductive charging solution in Gundlach’s device would
`result in a more compact form factor and charger interoperability. Id. at 17–
`18 (citing Ex. 1003 ¶¶ 44–45; Ex. 1005 ¶¶ 56–57, 66; Ex. 1006, 2:62–66,
`4:55–57, Figs. 12, 16, 18, 19; Ex. 1029).
`Patent Owner argues that a POSITA would not have combined the
`teachings of Gundlach and Lee. Prelim. Resp. 23–35. First, Patent Owner
`argues that a POSITA would not have recognized a complex inductive
`charging system as a suitable alternative to simple conductive charging via
`electrical contacts. Id. at 23–24 (citing Ex. 2001 ¶¶ 87–94, 124). Patent
`Owner further argues that “a POSITA would have no need to seek out and
`
`
`10 A person of ordinary skill in the art.
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`would not have sought out discussions of other charging options when
`Gundlach is clear about how the disclosed devices are recharged” and that
`“the architectures which Gundlach describes are better suited for conductive
`charging than for wireless charging.” Id. at 25 (citing Ex. 2001 ¶¶ 89, 91).
`At this juncture of the proceeding, Patent Owner’s arguments do not
`undermine Petitioner’s persuasive showing. In particular, Patent Owner’s
`arguments regarding Gundlach’s contacts and connectors of the wireless
`device and/or case for charging do not address Petitioner’s contention that
`Gundlach does not expressly describe the manner in which the headset’s
`charging circuitry responds when placed in the cradle for charging. Pet. 14.
`Based on the current record, we determine that it would have been
`reasonable for a POSITA to look to a reference such as Lee for details of a
`wireless headset’s charging circuitry. Ex. 1003 ¶¶ 35, 37.
`Patent Owner also argues that a POSITA would not have considered
`inductive charging to provide benefits over conductive charging as alleged.
`Prelim. Resp. 25–28 (citing Ex. 2001 ¶¶ 89, 92–96; Ex. 2011, 1; Ex. 1003
`¶ 43; Ex. 1005 ¶ 66). We disagree. Lee describes that “[w]ired methods of
`recharging batteries in wireless headphones/headsets add size by way of the
`necessity of connectors and increase the risk of failure via failure of
`mechanical components caused by fatigue and corrosion of contact elements
`. . . the end user complexity is increased by a wired- based recharging
`procedure.” Ex. 1006, 1:62–2:2. To overcome the issues with conductive
`charging, Lee describes inductive charging “in order to minimize size and
`weight, maximize reliability, and improve end user experience.” Id. at 3:17–
`20. We have considered Mr. Stillerman’s testimony that Patent Owner relies
`on in support of its arguments. Ex. 2001 ¶¶ 94–96. In particular,
`Mr. Stillerman testifies that “Lee does not assert any enhanced reliability
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`over Gundlach’s conductive charging.” Id. ¶ 94. But Mr. Stillerman does
`not consider Lee as a whole and what it teaches, especially the passages
`discussed above. Mr. Stillerman’s conclusory statement is in direct odds
`with what is described in Lee. Accordingly, at this stage of the proceeding,
`we determine that Patent Owner’s arguments do not undermine Petitioner’s
`showing that a POSITA would have been motivated to use Lee’s inductive
`charging arrangement in Gundlach’s system.
`Next, Patent Owner argues that “[i]n any wireless charging solution,
`the charging coil and the receiving coil must be parallel to and properly
`aligned with one another in order for the charger to operate properly.”
`Prelim. Resp. 29 (citing Ex. 2001 ¶¶ 44–46). Patent Owner argues that in
`the proposed Gundlach-Lee system, the charging coil would be
`perpendicular to the receiving coil, when the wireless headset is placed in
`the case, making it unsuitable for use as a charging device. Id. at 28–31
`(citing Ex. 2001 ¶¶ 44–46, 97–106). Patent Owner further argues that
`arranging the coils to be parallel to one another would not lead to a compact
`form factor, would be inefficient, add weight to the device, create
`interferences, and eliminate the need for a switch. Id. at 31–35 (citing
`Ex. 2001 ¶¶ 44–46, 97–106). Lastly, Patent Owner argues that a POSITA
`would not have regarded an inductive charging solution to provide
`interoperability advantages over conductive charging solutions, but would
`result in inefficiencies, and an increased size of the combined Gundlach-Lee
`system. Id. at 33–35 (citing Ex. 2001 ¶¶ 107–119).
`On this record, all of the issues Patent Owner alleges would be
`encountered by combining the teachings of Gundlach with Lee are not
`supported by sufficient evidence. While Mr. Stillerman opines of many
`disadvantages of combining the teachings of Gundlach with Lee, his
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`testimony is conclusory, unsupported by record evidence and based on
`bodily incorporating Lee’s inductive charging into Gundlach’s system.
`First, Mr. Stillerman recognizes that “[t]here are two basic techniques
`generally employed to recharge batteries in electronic devices: conductive
`charging and inductive charging,” and that there are
`“advantages/disadvantages of each.” Ex. 2001 ¶ 44. Thus, Mr. Stillerman
`recognizes that there were only two types of charging known in this art. Mr.
`Stillerman, however, testifies that a POSITA would not have been motivated
`to replace one known charging arrangement with the only other known
`charging arrangement in Gundlach’s system. For example, Mr. Stillerman
`opines that for the Gundlach-Lee inductive charging, it would not have been
`possible to place the inductive charging coils to maintain a compact form
`factor. Id. ¶¶ 100–102. In particular, Mr. Stillerman opines that “[t]he
`inverter from Lee . . . would require many new components including
`perhaps a transformer, which would be bulky, heavy, inefficient, and give
`off substantial heat inside the enclosed clamshell case.” Id. ¶ 101. Mr.
`Stillerman, however, cites to no evidence in support of his opinion, e.g., that
`at the time of the invention only heavy, bulky, inefficient transformers were
`known to a POSITA. The bulk of Mr. Stillerman’s declaration makes
`similar assertions without supporting evidence. Mr. Stillerman’s testimony
`in that regard is not supported by a sufficient factual basis and, thus, is
`entitled to little weight. 37 C.F.R. § 42.65(a). At this juncture of the
`proceeding, we determine that Patent Owner’s arguments do not undermine
`Petitioner’s reasons for combining Gundlach and Lee.
`Claim 1 recites “the switching device and the electronic device are
`configured to selectively couple to each other employing magnetic force.”
`Petitioner contends that the Gundlach-Lee charging case (switching device)
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`is both inductively and physically coupled to the wireless headset (electronic
`device) and that either the inductive or physical coupling meets the claim
`limitation. Pet. 23–25. First, Petitioner argues that a POSITA would have
`appreciated that the “inductive/physical” coupling exists when a user
`chooses (selects) to install the wireless headset in the charging case. Pet. 24
`(Ex. 1003 ¶ 54). Petitioner further contends that a POSITA would have
`understood that the inductive coupling between the wireless headset and
`charging case employs magnetic force. Id. (citing Ex. 1003 ¶ 54; Ex. 1006,
`4:25–30; Ex. 1028). Petitioner further contends that “[a]s to the physical
`coupling, Gundlach describes an embodiment where a wireless headset is
`secured within a cradle by both ‘mechanical means’ and the attractive
`magnetic force between respective embedded magnets.” Id. at 24 (citing
`Ex. 1005 ¶¶ 67, 68, Figs. 10a–10c; Ex. 1003 ¶ 55). Petitioner provides
`reasons for incorporating the embedded magnets disclosed in Gundlach’s
`cradle embodiment in the clamshell case embodiment. Id. at 25–28 (citing
`Ex. 1003 ¶¶ 56–62; Ex. 1005 ¶¶ 56, 68, Figs. 10, 18; Exs. 1020, 1030–
`1032).
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`Patent Owner argues that the combination of Gundlach and Lee does
`not suggest “the switching device and the electronic device are configured to
`selectively couple to each other employing magnetic force.” Prelim.
`Resp. 35–41. Patent Owner argues that the term “selectively couple” means
`“adheres” and that Petitioner has not demonstrated that the limitation would
`be met with inductive coupling. Id. at 37–39. Patent Owner also argues
`that, with respect to Petitioner’s showing of “physical” coupling of the
`headset and case, there is no need for magnets in the case embodiment
`because the case already has a recess and cover that latches shut to keep the
`headset in place. Id. at 40–41 (citing Ex. 2001 ¶¶ 138, 139). Patent Owner
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`contends that Petitioner misreads the disclosure of Gundlach, which
`proposes either the use of a magnet or the use of another mechanical means
`to secure the headset, but not both. Id. at 41.
`For purposes of this Decision, we focus on Petitioner’s alternative
`showing that the combined teachings of Gundlach and Lee teach or suggest
`“physical” coupling. First, we disagree with Patent Owner that Petitioner
`misreads Gundlach, as Gundlach describes the wireless device may include a
`magnet to which a magnet in the cradle may be attracted and that the
`wireless device “may also be held to the cradle by mechanical means, such
`as a bendable clip or protrusion that retains the wireless headset to the
`cradle.” Ex. 1005 ¶ 68. Based on the record before us, we agree with
`Petitioner that “Gundlach’s own teachings and suggestions would have
`motivated a POSITA to include embedded magnets in the clamshell case
`embodiment.” Pet. 26. Moreover, Patent Owner does not respond to
`Petitioner’s explanation that Gundlach describes a system where the headset
`is “stored and charged in a portable cradle” taking the form of “a holder,
`clip, case or card,” would have led a POSITA to understand that certain
`features of Gundlach’s Figure 10 cradle embodiment are generally
`applicable to the Figure 18 clamshell case embodiment. Id. Nor does Patent
`Owner respond to Petitioner’s reasoning for including the embedded
`magnets in the case, such as that “a POSITA would have understood that
`incorporating embedded magnets would promote retention of the wireless
`headset within the clamshell case if the case were opened inadvertently.” Id.
`at 27 (citing Ex. 1003 ¶ 60; Ex. 1030). Based on the current record,
`Petitioner’s rationale for incorporating embedded magnets in the clamshell
`embodiment is reasonable.
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`Claim 1 recites “the switching device comprises a first case.”
`Petitioner contends that “the combined teachings of Gundlach-Lee provide a
`switching device in the form of a clamshell inductive charging (first) case.”
`Id. at 28 (citing Ex. 1003 ¶ 63). Claim 1 further recites “the electronic
`device comprises a second case and an electronic circuit that is responsive to
`the switching device.” Petitioner contends that Gundlach’s wireless headset
`(electronic device) includes a housing (second case). Id. at 29–30 (citing
`Ex. 1005 ¶¶ 58, 59, 65, Figs. 1, 2a–2f, 8; Ex. 1003 ¶¶ 64, 65; Ex. 1001,
`5:65–6:4). Petitioner further contends that in the combined Gundlach-Lee
`device, the battery charging circuit of the headset (electronic device) is
`responsive to the clamshell charging case (switching device). Id. at 30–31
`(citing Ex. 1005 ¶¶ 56, 80, Figs. 18a, 18b; Ex. 1006, 3:50–62,4:57–59, 4:62–
`66, Figs. 7, 12; Ex. 1003 ¶ 66).
`Claim 1 further recites “a first magnet is fully dispo