Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Walter G. Mayfield, et al.
`U.S. Patent No.:
`10,259,021 Attorney Docket No.: 50095-0029IP1
`Issue Date:
`April 16, 2019
`
`Appl. Serial No.: 15/852,000
`
`Filing Date:
`December 22, 2017
`
`Title:
`APPARATUS FOR CLEANING VIEW SCREENS AND
`LENSES AND METHOD FOR THE USE THEREOF
`
`
`
`
`
`
`DECLARATION OF DR. JEREMY COOPERSTOCK
`
`
`
`
`
`
`1
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`APPLE 1003
`
`

`

`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION .......................................................................................... 4
`
`II. QUALIFICATIONS ....................................................................................... 5
`
`III. MATERIALS CONSIDERED ....................................................................... 7
`
`IV. SUMMARY OF CONCLUSIONS ............................................................... 13
`
`V.
`
`LEGAL PRINCIPLES .................................................................................. 14
`
`A. Obviousness ........................................................................................ 14
`
`VI. PERSON OF ORDINARY SKILL IN THE ART ........................................ 15
`
`VII. OVERVIEW OF THE ’021 PATENT .......................................................... 15
`
`VIII. GROUND 1A—Claims 1, 4-7, 10, 14-16, and 19 are obvious in view
`of Gundlach and Lee. .................................................................................... 18
`
`A. Overview of Gundlach ........................................................................ 18
`
`B. Overview of Lee ................................................................................. 22
`
`C.
`
`The Gundlach-Lee Combination ........................................................ 25
`
`D. Analysis of Claims 1, 4-7, 10, 14-16, and 19 ..................................... 33
`
`IX. GROUND 1B: Claims 4 and 14 are obvious in view of Gundlach,
`Lee, and Nishikawa. ...................................................................................... 77
`
`A. Overview of Nishikawa ...................................................................... 77
`
`B.
`
`The Gundlach-Lee-Nishikawa Combination ...................................... 78
`
`C. Analysis of Claims 4 and 14 ............................................................... 78
`
`X. GROUND 1C: Claim 10 is obvious in view of Gundlach, Lee, and
`Rosener.......................................................................................................... 79
`
`A. Overview of Rosener .......................................................................... 79
`
`B. The Gundlach-Lee-Rosener Combination ........................................... 80
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`2
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`

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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`C. Analysis of Claim 10 .......................................................................... 82
`
`XI. GROUND 1D: Claims 2 and 12 are obvious in view of Gundlach,
`Lee, and Brown. ............................................................................................ 83
`
`A. Overview of Brown ............................................................................ 83
`
`B.
`
`The Gundlach-Lee-Brown Combination ............................................ 84
`
`C. Analysis of Claims 2 and 12 ............................................................... 86
`
`XII. GROUND 1E: Claims 8, 9, and 17 are obvious in view of Gundlach,
`Lee, and Mak-Fan. ........................................................................................ 88
`
`A. Overview of Mak-Fan ......................................................................... 88
`
`B.
`
`The Gundlach-Lee-Mak-Fan Combination ........................................ 89
`
`C. Analysis of Claims 8, 9, and 17 .......................................................... 92
`
`XIII. CONCLUSION ............................................................................................. 96
`
`
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`3
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`

`

`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
`I, Jeremy Cooperstock, of Montreal, Canada, declare that:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Fish & Richardson, P.C., on behalf of Apple
`
`Inc. (“Petitioner”), as an independent expert consultant in this inter partes review
`
`(“IPR”) proceeding before the United States Patent and Trademark Office
`
`(“PTO”).
`
`2.
`
`I have been asked by Petitioner’s counsel (“Counsel”) to consider
`
`whether certain references teach or suggest the features recited in Claims 1, 2, 4-
`
`10, 12, 14-17 and 19 of U.S. Patent No. 10,259,021 (“the ’021 patent”). My
`
`opinions and the bases for my opinions are set forth below. My opinions are based
`
`on my education and experience.
`
`3.
`
`In writing this Declaration, I have considered the following: my own
`
`knowledge and experience, including my teaching and work experience in the
`
`above fields; and my experience of working with others involved in those fields.
`
`4.
`
`I have no financial interest in either party or in the outcome of this
`
`proceeding. I am being compensated for my work as an expert on an hourly basis,
`
`for all tasks involved. My compensation is not dependent on the outcome of these
`
`proceedings or on the content of my opinions.
`
`
`
`4
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`

`

`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
`
`II. QUALIFICATIONS
`
`5.
`
`I am a professor in the Department of Electrical and Computer
`
`Engineering at McGill University. My curriculum vitae is provided as Appendix A.
`
`6.
`
`I received my B.Sc. in Electrical Engineering from the University of
`
`British Columbia, my M.Sc. in Computer Science from the University of Toronto
`
`in 1992, and my Ph.D. in Electrical and Computer Engineering from the University
`
`of Toronto in 1996.
`
`7.
`
`I am a member of the Centre for Intelligent Machines, and a founding
`
`member of the Centre for Interdisciplinary Research in Music Media and
`
`Technology at McGill University. I also direct the Shared Reality Lab at McGill,
`
`which focuses on computer mediation to facilitate high-fidelity human
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`communication and the synthesis of perceptually engaging, multimodal, immersive
`
`environments. I led the development of the Intelligent Classroom, the world's first
`
`Internet streaming demonstrations of Dolby Digital 5.1, multiple simultaneous
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`streams of uncompressed high-definition video, a high-fidelity orchestra rehearsal
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`simulator, a simulation environment that renders graphic, audio, and vibrotactile
`
`effects in response to footsteps, and a mobile game treatment for amblyopia.
`
`8. My work on the Ultra-Videoconferencing system was recognized by
`
`an award for Most Innovative Use of New Technology from ACM/IEEE
`
`Supercomputing and a Distinction Award from the Audio Engineering Society.
`
`
`
`5
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`

`

`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
`
`The research I supervised on the Autour project earned the Hochhausen Research
`
`Award from the Canadian National Institute for the Blind and an Impact Award
`
`from the Canadian Internet Registry Association, and my Real-Time Emergency
`
`Response project won the Gold Prize (brainstorm round) of the Mozilla Ignite
`
`Challenge.
`
`9.
`
`I have worked with IBM at the Haifa Research Center, Israel, and the
`
`Watson Research Center in Yorktown Heights, New York, the Sony Computer
`
`Science Laboratory in Tokyo, Japan, and was a visiting professor at Bang &
`
`Olufsen, Denmark, where I conducted research on telepresence technologies as
`
`part of the World Opera Project. I led the theme of Enabling Technologies for a
`
`Networks of Centres of Excellence on Graphics, Animation, and New Media
`
`(GRAND) and I am an associate editor of the Journal of the AES.
`
`10.
`
`have carried out significant research involving network
`
`communication protocols, including wireless communication employing IEEE
`
`802.11 (WiFi) and IEEE 802.15 (Bluetooth). My experience in these areas includes
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`development of the Adaptive File Distribution Protocol (AFDP, 1995), analysis of
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`the tradeoffs between bandwidth, power demands, and latency for audio streaming
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`over WiFi, Bluetooth, and ultra-wideband protocols (2007), and assessment of the
`
`performance and scalability of wireless audio streaming for applications requiring
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`latency-optimized multimedia streaming (2008). I have led all aspects of
`
`
`
`6
`
`

`

`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
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`development and experimentation in the Autour project (2009-2016), for which
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`Bluetooth is typically used as a communication layer for audio between the user’s
`
`smartphone and a wireless headset, or, experimentally, to transmit user input
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`acquired from a wireless game controller. I am currently leading a research project
`
`(MIMIC), which communicates sensor data between two coupled smartwatches
`
`using Bluetooth for local communication between the smartwatches and their
`
`peered smartphones, and the public Internet between the smartphones. I am also
`
`leading a project that uses both Bluetooth and WiFi communication between
`
`smartphones, a GPU-based physics engine, and a microelectronics architecture that
`
`renders vibrotactile effects on mobile footwear.
`
`III. MATERIALS CONSIDERED
`
`11.
`
`I have reviewed the ’021 patent (APPLE-1001) and relevant excerpts
`
`of its prosecution history (APPLE-1002). I understand that the ’021 patent was
`
`filed on December 22, 2017 with a priority claim dating back to the August 5, 2011
`
`filing date of provisional application No. 61/515,752. While I am not opining on
`
`whether the ’021 patent is entitled to its priority claim, for purposes of this
`
`Declaration, I am using August 5, 2011 as the purported priority date (“Critical
`
`Date”).
`
`12. As part of my independent analysis for this Declaration, I have
`
`considered my personal knowledge and experience; the common knowledge of
`
`
`
`7
`
`

`

`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
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`persons of ordinary skill prior to August 5, 2011, and the following publications
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`and materials:
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`APPLE-1005
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`
`
`U.S. Patent Publication No. 2008/0132293
`(“Gundlach”)
`
`APPLE-1006
`
`U.S. Patent No. 7,548,040 (“Lee”)
`
`APPLE-1008
`
`U.S. Patent No. 7,631,811 (“Brown”)
`
`APPLE-1009
`
`U.S. Patent Publication No. 2009/0124308
`
`APPLE-1010
`
`
`
`U.S. Patent Publication No. 2008/0012706
`(“Mak-Fan”)
`
`APPLE-1020
`
`
`
`
`
`APPLE-1021
`
`
`
`
`
`
`Wireless charging mats and receivers for
`your iPhone, iPod, BlackBerry and other
`devices, Powermat,
`https://web.archive.org/web/2011010305503
`4/http://www.powermat.com/
`
`Palm | HP® Official Store,
`https://web.archive.org/.../http://www.shoppi
`ng.hp.com/webapp/shopping/can.do?storeN
`ame=accessories&landing=handheld&categ
`ory=categories&subcat1=palm&orderflow=
`1&sort=top_sellers
`
`APPLE-1022
`
`
`
`Palm Touchstone Kit Review,
`http://www.palminfocenter.com/news/9819/
`palm-touchstone-kit-review/
`
`APPLE-1023
`
`U.S. Pat. No. 7,211,986
`
`APPLE-1024
`
`U.S. Publication. No. 2008/0085617
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`APPLE-1025
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`Newton’s Telecom Dictionary (26th
`
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`8
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`
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`Expanded and Updated Edition) (excerpt)
`
`APPLE-1026
`
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`Chambers Dictionary of Science and
`Technology (excerpt)
`
`APPLE-1027
`
`U.S. Publication No. 2008/0152182
`
`APPLE-1028
`
`
`
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`Lecture 10: Magnetic Force; Magnetic
`Fields; Ampere’s Law, Massachusetts
`Institute of Technology—Department of
`Physics (8.022 Spring 2004)
`
`APPLE-1029
`
`U.S. Pat. No. 7,627,289
`
`APPLE-1030
`
`U.S. Pat. No. 6,076,790
`
`APPLE-1031
`
`
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`Inclusive design and human factors:
`designing mobile phones for older users
`(Vol. 4, No. 3), PsychNology Journal
`
`APPLE-1032
`
`
`
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`
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`Inductive Power Transmission, Wireless
`Power Consortium,
`https://web.archive.org/...b/2011082105154
`4/http://www.wirelesspowerconsortium.com
`/technology/basic-principle-of-inductive-
`power-transmission.html
`
`APPLE-1033
`
`U.S. Publication No. 2011/0151941
`
`APPLE-1040
`
`
`Plantronics Discovery 975—User Guide,
`Plantronics
`
`APPLE-1041
`
`
`
`
`
`Plantronics Discovery 975 Storage Case &
`Charger 79413-02,
`https://web.archive.org/web/2010112423191
`0/https://headsetplus.com/product1200/prod
`uct_info.html
`
`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`9
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
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`APPLE-1042
`
`U.S. Pat. No. 7,012,802
`
`APPLE-1043
`
`U.S. Publication No. 2008/0167088
`
`APPLE-1044
`
`U.S. Publication No. 2008/0157110
`
`APPLE-1045
`
`
`
`
`
`
`Advantages and Weaknesses of LED
`Application, LEDinside,
`https://web.archive.org/web/2012110208041
`4/https://www.ledinside.com/knowledge/200
`7/12/Advantages_and_weaknesses_of_LED
`_Application_200712
`
`APPLE-1046
`
`U.S. Publication No. 2007/0135185
`
`APPLE-1047
`
`U.S. Pat. No. 7,130,654
`
`APPLE-1048
`
`U.S. Publication No. 2008/0132168
`
`APPLE-1049
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`
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`
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`Plastics in Electrical and Electronic
`Applications, BPF: British Plastics
`Federation,
`https://web.archive.org/web/2011081117242
`9/https://www.bpf.co.uk/innovation/plastics
`_in_electrical_and_electronic_applications.a
`spx
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`APPLE-1050
`
`
`U.S. Publication No. 2008/0076489
`(“Rosener”)
`
`APPLE-1051
`
`
`
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`Next-Generation Stereo Bluetooth Headsets,
`TechHive,
`https://www.techhive.com/article/162341/ste
`reo_bluetooth_headsets.html
`
`APPLE-1052
`
`
`Motorola Elite Sliver—User Guide,
`Motorola
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`10
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`

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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
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`APPLE-1053
`
`U.S. Publication No. 2011/0199727
`
`APPLE-1054
`
`
`
`
`Magnetic Closures For Packaging, Adams
`Magnetic Products,
`https://www.adamsmagnetic.com/blogs/mag
`net-blog-magnets-packaging-closures
`
`APPLE-1055
`
`U.S. Pat. No. 3,716,091
`
`APPLE-1056
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`
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`MacBook Air shells and sleeves Review,
`Macworld,
`https://web.archive.org/web/2012040302210
`6/https://www.macworld.com/article/113491
`9/airshellsleeve.html
`
`APPLE-1057
`
`
`
`Applications for Hall Effect IC Switches in
`Portable Applications, ROHM
`Semiconductor
`
`APPLE-1059
`
`
`
`U.S. Patent Publication No. 2007/0145255
`(“Nishikawa”)
`
`APPLE-1060
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`U.S. Patent Publication No. 2011/0167287
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`APPLE-1061
`
`U.S. Patent Publication No. 2008/0168286
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`APPLE-1062
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`U.S. Patent No. 7,195,362
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`APPLE-1063
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`U.S. Patent No. 8,064,194
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`APPLE-1064
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`EP Patent Publication No. 0 517 497
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`APPLE-1065
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`U.S. Patent Publication No. 2010/0195860
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`APPLE-1066
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`Plugfones.com, https://web.archive.org/web/
`20110820072700/
`https://www.plugfones.com/
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`11
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`

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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
`
`•
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`APPLE-1067
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`
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`CES: Hands On with the Kleer Wireless
`Earbuds, Gadget Lab | WIRED,
`
`https://web.archive.org/web/
`20140721204820/http://
`www.wired.com/2007/01/ces_hands_on_wi/
`
`•
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`APPLE-1068
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`U.S. Patent Publication No. 2006/0111044
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`
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`13. Note that my citations to non-patent literature throughout this
`
`declaration reference the absolute page number added to the exhibit (as opposed to
`
`the original pagination of the document). For patent literature, I’ve used the
`
`column/line numbers or paragraph numbers. Note also that all emphasis
`
`(bold/italics/underline) in any quoted text has been added.
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`14. Although this declaration refers to selected portions of the cited
`
`references for the sake of brevity, it should be understood that these are examples,
`
`and that one of ordinary skill in the art would have viewed the references cited
`
`herein in their entirety and in combination with other references cited herein or
`
`cited within the references themselves. The references used in this declaration,
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`therefore, should be viewed as being incorporated herein in their entireties.
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`15. Counsel has informed me that I should consider these materials
`
`through the lens of a person of ordinary skill in the art (“POSITA,” which is
`
`discussed further in § VI below) as of the Critical Date, and I have done so. Unless
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`otherwise stated, my testimony below refers to the knowledge of a POSITA as of
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`the Critical Date.
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`
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`12
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`

`

`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
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`IV. SUMMARY OF CONCLUSIONS
`
`16. This Declaration explains the conclusions that I have formed based on
`
`my independent analysis. To summarize those conclusions:
`
`• Ground 1A: Claims 1, 4-7, 10, 14-16, and 19 are obvious in view of
`
`Gundlach and Lee. See Infra, § VIII.
`
`• GROUND 1B: Claims 4 and 14 are obvious in view of Gundlach,
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`Lee, and Nishikawa. See Infra, § IX.
`
`• Ground 1C: Claim 10 is obvious in view of Gundlach, Lee, and
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`Rosener. See Infra, § X.
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`• Ground 1D: Claims 2 and 12 are obvious in view of Gundlach, Lee,
`
`and Brown. See Infra, § IX.
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`• Ground 1E: Claims 8, 9, and 17 are obvious in view of Gundlach,
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`Lee, and Mak-Fan. See Infra, § XI.
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`13
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`

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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
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`V. LEGAL PRINCIPLES
`
`17.
`
`In forming my analysis and conclusions expressed in this Declaration,
`
`I have applied the legal principles described in the following paragraphs, which
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`were provided to me by counsel for the Petitioner.
`
`A. Obviousness
`
`18.
`
`I have been informed that a patent claim is invalid as “obvious” in
`
`light of one or more prior art references if it would have been obvious to a person
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`of ordinary skill in the art at the time of the alleged invention (“POSITA”), taking
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`into account (1) the scope and content of the prior art, (2) the differences between
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`the prior art and the claims, (3) the level of ordinary skill in the art, and (4) any so
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`called “secondary considerations” of non-obviousness, which include: (i) “long felt
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`need” for the claimed invention, (ii) commercial success attributable to the claimed
`
`invention, (iii) unexpected results of the claimed invention, and (iv) “copying” of
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`the claimed invention by others.
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`19.
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`I have been informed that a claim can be obvious in light of a single
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`prior art reference or multiple prior art references. To be obvious in light of a
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`single prior art reference or multiple prior art references, there must be a reason
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`that would have prompted a POSITA to modify or supplement the single prior art
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`reference, or to combine two or more references, in a manner that provides the
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`elements of the claimed invention. This reason may come from a teaching,
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`14
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`

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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
`
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`suggestion, or motivation to combine, or may come from the reference(s)
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`themselves, the knowledge or “common sense” of a POSITA, or from the nature of
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`the problem to be solved, and this reason may be explicit or implicit from the prior
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`art as a whole. I have been informed that, under the law, the combination of
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`familiar elements according to known methods is likely to be obvious when it does
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`no more than yield predictable results. I also understand it is improper to rely on
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`hindsight in making the obviousness determination.
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`VI. PERSON OF ORDINARY SKILL IN THE ART
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`20. Based on my knowledge and experience in the field and my review of
`
`the ’021 patent and its file history, I believe that would have had would have had at
`
`least a Bachelor’s degree in an academic area emphasizing electrical engineering,
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`mechanical engineering, or a similar discipline, and at least two years of
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`experience in the field working with electronic devices. Superior education could
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`compensate for a deficiency in work experience, and vice-versa.
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`VII. OVERVIEW OF THE ’021 PATENT
`
`21. The ’021 patent traces its lineage back to the disclosures of nine
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`provisional applications filed between August 2011 and June 2012.
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`22. Eight of those provisional applications (yellow, below) are directed to
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`various embodiments of a device for cleaning the view screens of portable
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`electronic devices. Such a device is described in the provisionals and the ’021
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`
`15
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`

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`patent as a “cleaning device.” (E.g., ’021 patent, 3:54-63.)
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`23. The remaining provisional application in the ’021 patent’s priority
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`chain (green, above) discloses various embodiments of a “switching device” for
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`activating and deactivating the magnetic switch of a portable electronic device.
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`This “switching device” provisional disclosure is what most closely resembles the
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`claimed subject matter of the ’021 patent, despite the misnomer title “APPARATUS
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`FOR CLEANING VIEW SCREENS AND LENSES AND METHOD FOR THE USE THEREOF.”
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`(See ’021 patent, 21:37-39 (“What is claimed is: 1. A system comprising: a
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`portable switching device . . .).)
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`16
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`24. The ’021 patent’s Summary references “a switching device for use
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`with a portable electronic device having . . . at least one switch that can be
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`activated or de-activated.” (’021 patent, 3:64-4:3.) As one example, the switch of
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`the portable electronic device can be activated/deactivated “by introducing a
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`magnetic field to the at least one switch” via a magnet in the switching device.
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`(Id.)
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`25. Figure 24 (below) is a front view of a switching device 2401 and a
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`portable electronic device 2402 discussed in the ’021 patent’s Detailed
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`Description. (’021 patent, 18:5-31.) As shown, the switching device 2401 “is
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`selectively coupled to the front of the portable electronic device 2402.” (Id., 18:6-
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`9.) And consistent with the above-discussed example in the Summary, the
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`electronic device 2402 includes a magnetic switch 2404 activated/deactivated by
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`applying the switching device 2401 either “directly to the magnetic switch or [] to
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`either side of the switch and then slid past it.” (Id., 18:9-18; see also 17:54-58,
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`20:14-16 (“The switching devices have a functionality of being able to activ[ate]
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`magnetic switches on devices having such switches.”).) In one embodiment,
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`activation/deactivation of the switch causes the device to turn on/off. (Id., 17:54-
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`58.)
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`17
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`VIII. GROUND 1A—Claims 1, 4-7, 10, 14-16, and 19 are obvious in view of
`Gundlach and Lee.
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`A. Overview of Gundlach
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`26. Gundlach’s disclosure—entitled “WIRELESS HEADSET”—was inspired
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`by the demand for “wireless technologies” that emerged when the industry sought
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`to eliminate the burden of “managing the wires” on mobile device peripherals.
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`(Gundlach, [0003].) But wireless peripherals brought about their own problems—
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`e.g., “keeping track of [them] and keeping them charged and ready to use.” (Id.,
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`[0005].) Gundlach set out to address these problems, and did so by providing “a
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`device that when in [an expanded] configuration . . . becomes a wireless mono or
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`stereo headset and when in a [collapsed] configuration . . . may be stored and
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`18
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`charged.” (Id., [0055].) Gundlach’s disclosure includes a variety of embodiments
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`consistent with the theme of an expandable/collapsible wireless headset having a
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`“relatively thin shape [that] may allow the headset to be stored and charged in a
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`portable cradle,” such as “a holder, clip, case or card.” (Id., [0055-0056].)
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`27. Gundlach describes the basic components of its wireless headset with
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`reference to a schematic view provided in Figure 1 (below). (See Gundlach,
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`[0058].) As was conventional at the time, Gundlach’s wireless headset 100
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`includes a housing 101 for supporting various functional components, including a
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`microphone 102 and a speaker 105 directing sound through an earpiece 104. (Id.)
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`The housing 101 further supports “a transceiver 106 for sending and receiving
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`information 108 from a host device 110, such as a computer, a cell phone or a
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`media player,” and a power source 111 in the form of a rechargeable battery. (Id.)
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`19
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`28. Gundlach’s Figures 2a-2d (below) provide perspective, front, bottom,
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`and top views of the wireless headset 200, highlighting its compact design.
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`
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`29. Figures 3a-3b (below) illustrate the expanded and collapsed states of
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`Gundlach’s wireless headset 300. In the expanded state (Fig. 3b), an arm 314
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`carrying the earpiece 304 is pivoted away from the housing via a hinge connection
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`316, exposing earpiece 304 for insertion within the user’s ear. (Gundlach, [0060];
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`see also id., [0055-0056].) In the collapsed state (Fig. 3a), the arm 314 is pivoted
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`back towards the housing, tucking the earpiece 304 back into the housing, which
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`provides a slim volume envelope for storage and charging. (Id.)
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`20
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`30. Gundlach’s disclosure is expansive on the topic of “storage,” noting
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`broadly at the outset that the wireless headset can be “stored and charged in a
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`portable cradle,” such as “a holder, clip, case or card.” (Gundlach, [0056].)
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`Gundlach then goes on to illustrate and describe a variety of exemplary cradle
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`designs with embedded magnets and/or mechanical elements for retaining the
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`wireless headset. (E.g., id., [0068], [0073], [0075], Figures 10a-19b.) As one
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`example, in Figures 18a-18b (below) the “portable cradle” is a clamshell case 1860
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`that retains the wireless headset 1800 within a contoured recess 1846 in one of two
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`opposing lids. (Id., [0080].)
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`21
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`B. Overview of Lee
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`31. Lee is entitled “WIRELESS BATTERY CHARGING OF ELECTRONIC
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`DEVICES SUCH AS WIRELESS HEADSETS/HEADPHONES.” Similar to Gundlach, and
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`as its title suggests, Lee “relates to wireless battery charging of wireless
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`headphones/headsets.” (Lee, 3:21-22; see also id., 1:14-29.) And while Gundlach
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`was more concerned with the physical form factor and envelope of the wireless
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`headset and charging case, Lee sought improvements relating to energy transfer.
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`Specifically, Lee recognized that conventional conductive charging techniques
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`(such as described by Gundlach) “add size [to the wireless headset] by way of the
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`necessity of connectors and increase the risk of failure via failure of mechanical
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`components caused by fatigue and corrosion of contact elements.” (Id., 1:62-2:2.)
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`22
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`Attorney Docket No. 50095-0029IP1
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`In Lee’s words, “[w]hat is needed in the art is a mechanism to re-charge batteries
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`in wireless headphones/headsets in order to minimize size and weight, maximize
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`reliability, and improve end user experience.” (Id., 3:17-20.)
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`32. The basic paradigm of Lee’s solution is illustrated in Figures 5 and 18
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`(below), where “[t]he power source 200 provides energy via a conductive means
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`202 to a power adapter 201,” and “[t]he power adapter 201 provides power to the
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`wireless headphone/headset apparatus 204 via non-conductive means 203,
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`typically inductive coupling.” (Lee, 3:32-37.) Notably, and consistent with
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`Gundlach, Lee’s “power adapter” is illustrated in certain embodiments with the
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`physical form factor of a protective case. (Id., 6:31-38.)
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`33. Lee provides more detail about the disclosed inductive charging
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`solution with reference to Figure 12 (below). As shown, energy transferred to the
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`headset apparatus 460 is received by an energy collection element 465 via
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`23
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`Attorney Docket No. 50095-0029IP1
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`inductive coupling 461. (Lee, 4:51-57.) Energy received by collection element
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`465 is converted from AC voltage to DC voltage by rectifier 464 and filtered using
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`an energy storage capacitor 469 en route to a battery charging circuit 462 that
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`provides the proper voltage to the battery 463. (Id., 4:59-5:66.)
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`34. Recognizing that “audio distortion” may occur when the energy
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`collection element 465, a speaker transducer coil, is connected to the above-
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`discussed charging components, Lee provides an isolation switch 470. (Lee, 5:12-
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`26.) Closing switch 470 places the headset apparatus 460, in a “charging mode”
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`24
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`and opening switch 470 places headset apparatus 460 in a “non-charging mode.”
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`(Id.) Operation of switch 470 occurs either automatically when the power adapter
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`is “sense[d]” near the headset apparatus 460 or in response to a wireless control
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`signal from the power adapter. (Id., 5:30-40.)
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`C. The Gundlach-Lee Combination
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`35. As I’ve explained (§ VIII.A), Gundlach is focused on providing a
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`wireless headset that, when not in use, collapses down to a “relatively thin shape”
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`for storage and charging. (Gundlach, [0055-0056].) Consistent with this theme,
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`Gundlach teaches a variety of embodiments featuring “a wireless mono or stereo
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`headset” that is “stored and charged” in a “portable cradle,” such as “a holder, clip
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`case or card that may fit inside” a slot or cavity “designed into a laptop or cell
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`phone.” (Id.) While robust on structural aspects of the wireless headset and
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`storage solutions, Gundlach provides significantly less guidance and
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`implementation details on the subject of charging. I note a handful of remarks by
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`Gundlach that “[t]he case may contain . . . charging circuitry” and “electrical
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`contacts,” but little more. (Gundlach, [0069] (electrical contacts), [0073]
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`(electrical contacts), [0079] (electrical contacts) [0080] (charging circuitry).) A
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`POSITA considering Gundlach, and noting its limited disclosure on charging,
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`would have seen a need for elaboration and description of design options to
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`implement the charging functionality. A search for supplemental disclosure on
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`25
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`charging would have led the POSITA to Lee, a reference addressing this topic in
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`the same context as Gundlach—wireless headsets.
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`36. A POSITA would have immediately noted Lee’s similarity to
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`Gundlach. Like Gundlach, Lee also discloses multiple embodiments for storing
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`and charging a wireless headset in a “power adapter” illustrated as a protective
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`case. (Compare Lee, 3:32-37, 3:50-62, 6:39-46 with Gundlach [0080].)
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`37. Similarity aside, one notable distinction between Gundlach and Lee is
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`the technology used to effect charging. As I’ve explained, multiple embodiments
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`26
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`described in Gundlach include electrical contacts, which implies conductive
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`charging. (See Gundlach, [0066], [0069], [0073], [0079].) Lee, on the other hand,
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`is explicit in teaching that its charging case and headset employ inductive charging.
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`(See Lee, 3:32-37, 3:50-62, 4:11-5:40.) With this understanding of Gundlach and
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`Lee, it would have been relatively simple for a POSITA to simply exchange the
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`conductive charging components hinted at by Gundlach with the more thoroughly
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`explained inductive charging components of Lee.
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`
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`38. These modifications would have been well within a POSITA’s skill
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`level and relatively straight forward given, for example, that (i) Gundlach does not
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`suggest its embodiments are strictly limited to conductive charging; (ii) the
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`remaining structural aspects of the clamshell charging case and wireless headset
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`would remain unchanged; and (iii) Lee provides clear circuit diagrams to guide
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`27
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`Attorney Docket No. 50095-0029IP1
`IPR of U.S. Patent No. 10,259,021
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`implementation in the same context as Gundlach—wireless headsets.
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`39. The resulting Gundlach-Lee combination would facilitate inductive
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`charging in the manner described by Lee. While I’ve already explained Lee’s
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`inductive charging technique (§ VIII.B), it bears repeating here. When the
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`isolation switch (Lee’s element 470) is activated to the closed position—either
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`automatically in response to sensing the charging case or in response to a wireless
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`control signal from the charging case—the battery charging circuit (Lee’s element
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`462) in the headset is activated to provide energy to the battery at the proper
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`voltage for charging (Lee’s element 463). (E.