UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner.
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`Case IPR2021-00472
`Patent 10,562,077
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`PETITIONER’S REPLY TO
`PATENT OWNERS’ RESPONSE TO THE PETITION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner.
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`Case IPR2021-00472
`Patent 10,562,077
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`PETITIONER’S REPLY TO
`PATENT OWNERS’ RESPONSE TO THE PETITION
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 1
`A. A POSITA Had Ample Motivation to Pursue the Gundlach-Lee
`Combination (Grounds 1A/2A) ............................................................. 1
`1.
`The Gundlach-Lee Combination Presents a Classic Case of
`Obviousness ................................................................................ 1
`The Law Preempts Patent Owner’s Motivation Arguments ....... 5
`2.
`Patent Owner’s Motivation Arguments Are Factually Flawed .. 9
`3.
`Brown is Analogous Art to the ’077 Patent (Grounds 1D/2D) ........... 15
`A POSITA Would Have Been Motivated to Combine Mak-Fan’s
`Teachings with Gundlach-Lee (Grounds 1E/2E) ................................ 16
`The Prior Art Combinations Render Obvious Every Feature of the
`Challenged Claims (Grounds 1A-2E) ................................................. 17
`1.
`Grounds 1A/2A, Element [1b]—the switching device and the
`electronic device are configured to selectively couple to each
`other employing magnetic force ............................................... 17
`Grounds 1A/2A, Element [1d]—the electronic device
`comprises a second case and an electronic circuit that is
`responsive to the switching device ........................................... 21
`Grounds 1A/2A, Element [1g]—the portable switching device
`is configured to activate, deactivate, or send into hibernation the
`portable electronic device ......................................................... 22
`Grounds 1A/2A, Element [1j]—the lid is recessed to configure
`to the electronic device ............................................................. 24
`
`B.
`C.
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`D.
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`2.
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`3.
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`4.
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`Case IPR2021-00472
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`5.
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`6.
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`7.
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`Grounds 1A/2A and 1C/2C, Element [11]—the electronic
`device is wireless earplugs ........................................................ 25
`Grounds 1E/2E, Element [4]—the lid has a second magnet
`disposed within it ...................................................................... 26
`Grounds 1E/2E, Element [10]—the second or a third magnet is
`employed in the lid to actuate the electronic circuit ................. 26
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`ii
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`APPLE-1001
`APPLE-1002
`APPLE-1003
`APPLE-1004
`APPLE-1005
`APPLE-1006
`APPLE-1007
`APPLE-1008
`APPLE-1009
`APPLE-1010
`APPLE-1011
`APPLE-1012
`APPLE-1013
`APPLE-1014
`APPLE-1015
`APPLE-1016
`APPLE-1017
`APPLE-1018
`APPLE-1019
`APPLE-1020
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`LIST OF EXHIBITS
`
`U.S. Patent No. 10,562,077 to Walter G. Mayfield, et al.
`Excerpts from the Prosecution History of the ’077 patent
`Declaration of Dr. Jeremy Cooperstock
`Reserved
`U.S. Patent Publication No. 2008/0132293 to Gundlach, et al.
`U.S. Patent No. 7,548,040 to Lee, et al.
`U.S. Patent Publication No. 2011/0117851 to Kim
`U.S. Patent No. 7,631,811 to Brown
`U.S. Patent Publication No. 2009/0124308
`U.S. Patent Publication No. 2008/0012706 to Mak-Fan, et al.
`U.S. Provisional Application No. 61/515,752
`U.S. Provisional Application No. 61/555,310
`U.S. Provisional Application No. 61/561,087
`U.S. Provisional Application No. 61/568,031
`U.S. Provisional Application No. 61/569,093
`U.S. Provisional Application No. 61/576,834
`U.S. Provisional Application No. 61/592,344
`U.S. Provisional Application No. 61/619,229
`U.S. Provisional Application No. 61/661,090
`
`Wireless charging mats and receivers for your iPhone, iPod,
`BlackBerry and other devices, Powermat,
`https://web.archive.org/web/20110103055034/http://www.powe
`rmat.com/
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`iii
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`APPLE-1021
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`APPLE-1022
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`APPLE-1023
`APPLE-1024
`APPLE-1025
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`APPLE-1026
`APPLE-1027
`APPLE-1028
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`APPLE-1029
`APPLE-1030
`APPLE-1031
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`APPLE-1032
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`APPLE-1033
`APPLE-1034
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`APPLE-1035
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`Palm | HP® Official Store,
`https://web.archive.org/.../http://www.shopping.hp.com/webapp
`/shopping/can.do?storeName=accessories&landing=handheld&
`category=categories&subcat1=palm&orderflow=1&sort=top_se
`llers
`Palm Touchstone Kit Review,
`http://www.palminfocenter.com/news/9819/palm-touchstone-
`kit-review/
`U.S. Pat. No. 7,211,986
`U.S. Publication. No. 2008/0085617
`Newton’s Telecom Dictionary (26th Expanded and Updated
`Edition) (excerpt)
`Chambers Dictionary of Science and Technology (excerpt)
`U.S. Publication No. 2008/0152182
`Lecture 10: Magnetic Force; Magnetic Fields; Ampere’s Law,
`Massachusetts Institute of Technology—Department of Physics
`(8.022 Spring 2004)
`U.S. Pat. No. 7,627,289
`U.S. Pat. No. 6,076,790
`
`Inclusive design and human factors: designing mobile phones
`for older users (Vol. 4, No. 3), PsychNology Journal
`Inductive Power Transmission, Wireless Power Consortium,
`https://web.archive.org/...b/20110821051544/http://www.wirele
`sspowerconsortium.com/technology/basic-principle-of-
`inductive-power-transmission.html
`U.S. Publication No. 2011/0151941
`AUDIO/VIDEO REMOTE CONTROL PROFILE (Version 1.0
`Adopted), Bluetooth Audio Video Working Group
`U.S. Publication No. 2006/0166715
`iv
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`
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`APPLE-1036
`APPLE-1037
`APPLE-1038
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`APPLE-1039
`APPLE-1040
`APPLE-1041
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`APPLE-1042
`APPLE-1043
`APPLE-1044
`APPLE-1045
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`APPLE-1046
`APPLE-1047
`APPLE-1048
`APPLE-1049
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`APPLE-1050
`APPLE-1051
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`U.S. Publication No. 2008/0070501
`U.S. Pat. No. 7,761,091
`Voyager 855 Bluetooth Headset—User Guide, Plantronics
`Sound Innovation
`Jabra Sport—User Manual, Jabra
`Plantronics Discovery 975—User Guide, Plantronics
`Plantronics Discovery 975 Storage Case & Charger 79413-02,
`https://web.archive.org/web/20101124231910/https://headsetpl
`us.com/product1200/product_info.html
`U.S. Pat. No. 7,012,802
`U.S. Publication No. 2008/0167088
`U.S. Publication No. 2008/0157110
`Advantages and Weaknesses of LED Application, LEDinside,
`https://web.archive.org/web/20121102080414/https://www.ledi
`nside.com/knowledge/2007/12/Advantages_and_weaknesses_o
`f_LED_Application_200712
`U.S. Publication No. 2007/0135185
`U.S. Pat. No. 7,130,654
`U.S. Publication No. 2008/0132168
`Plastics in Electrical and Electronic Applications, BPF: British
`Plastics Federation,
`https://web.archive.org/web/20110811172429/https://www.bpf.
`co.uk/innovation/plastics_in_electrical_and_electronic_applicat
`ions.aspx
`U.S. Publication No. 2008/0076489 to Rosener, et al.
`Next-Generation Stereo Bluetooth Headsets, TechHive,
`https://www.techhive.com/article/162341/stereo_bluetooth_hea
`dsets.html
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`v
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`APPLE-1052
`APPLE-1053
`APPLE-1054
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`APPLE-1055
`APPLE-1056
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`APPLE-1057
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`APPLE-1058
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`APPLE-1059
`APPLE-1060
`APPLE-1061
`APPLE-1062
`APPLE-1063
`APPLE-1064
`APPLE-1065
`APPLE-1066
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`APPLE-1067
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`Motorola Elite Sliver—User Guide, Motorola
`U.S. Publication No. 2011/0199727
`Magnetic Closures For Packaging, Adams Magnetic Products,
`https://www.adamsmagnetic.com/blogs/magnet-blog-magnets-
`packaging-closures
`U.S. Pat. No. 3,716,091
`MacBook Air shells and sleeves Review, Macworld,
`https://web.archive.org/web/20120403022106/https://www.mac
`world.com/article/1134919/airshellsleeve.html
`
`Applications for Hall Effect IC Switches in Portable
`Applications, ROHM Semiconductor
`ASTM Dictionary of Engineering Science & Technology (10th
`Edition), ASTM Committee E02 on Terminology (excerpt)
`U.S. Patent Publication No. 2007/0145255 to Nishikawa, et al.
`U.S. Patent Publication No. 2011/0167287
`U.S. Patent Publication No. 2008/0168286
`U.S. Patent No. 7,195,362
`U.S. Patent No. 8,064,194
`EP Patent Publication No. 0 517 497
`U.S. Patent Publication No. 2010/0195860
`Plugfones.com,
`https://web.archive.org/web/20110820072700/https://www.plug
`fones.com/
`CES: Hands On with the Kleer Wireless Earbuds, Gadget Lab |
`WIRED,
`https://web.archive.org/web/20140721204820/http://www.wire
`d.com/2007/01/ces_hands_on_wi/
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`vi
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`
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`APPLE-1068
`APPLE-1069
`APPLE-1070
`APPLE-1071
`APPLE-1072
`APPLE-1073
`APPLE-1074
`APPLE-1075
`APPLE-1076
`APPLE-1077
`APPLE-1078
`APPLE-1079
`APPLE-1080
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`APPLE-1081
`APPLE-1082
`APPLE-1083
`APPLE-1084
`APPLE-1085
`APPLE-1086
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`APPLE-1087
`APPLE-1088
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`U.S. Patent Publication No. 2006/0111044
`U.S. Patent No. 3,840,795
`U.S. Patent No. 4,379,988
`U.S. Patent No. 4,873,677
`U.S. Patent No. 6,310,960
`U.S. Patent No. 6,658,124
`U.S. Patent No. 6,661,197
`U.S. Patent Publication No. 2008/0205678
`U.S. Patent Publication No. 2003/0211871
`U.S. Patent Publication No. 2003/0048254
`European Patent Publication No. EP 1 942 570 A1
`U.S. Patent Publication No. 2011/0115429
`
`Bringing Rechargeable Hearing Aids Into the Mainstream
`Market, Jerry Yanz, PhD, Jörg Ellesser, MS, AND Holger
`Kaempf, MS, hearingreview.com
`U.S. Patent Publication No. 2009/0052721
`U.S. Patent Publication No. 2010/0194336
`U.S. Patent Publication No. 2009/0067661
`U.S. Patent Publication No. 2010/0310106
`U.S. Patent Publication No. 2008/0181441
`ExpressCard Standard, Release 2.0, ExpressCard Standard,
`Release 2.0
`Excerpts from the prosecution history of U.S. Appl. 14/343,665
`Remote Deposition Transcript, Dr. Hamid A. Toliyat, Ph.D.
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`vii
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`APPLE-1101
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`APPLE-1102
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`APPLE-1103
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`APPLE-1104
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`APPLE-1105
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`APPLE-1089
`APPLE-1090-1099
`Reserved
`APPLE-1100
`Complaint for Patent Infringement, GUI Global Products, Ltd.
`D/B/A Gwee v. Apple Inc., Case No. 4:20-cv-02652 (SDTX)
`Complaint for Patent Infringement, GUI Global Products, Ltd.
`D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case No.
`4:20-cv-02624 (SDTX)
`Joint Motion to Consolidate, GUI Global Products, Ltd. D/B/A
`Gwee v. Samsung Electronics Co. Ltd, et al., Case No. 4:20-cv-
`02624 (SDTX)
`Response to Joint Motion to Consolidate, GUI Global
`Products, Ltd. D/B/A Gwee v. Samsung Electronics Co. Ltd, et
`al., Case No. 4:20-cv-02624 (SDTX)
`Order re Joint Motion to Consolidate, GUI Global Products,
`Ltd. D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case
`No. 4:20-cv-02624 (SDTX)
`Defendant Apple Inc.’s Motion to Transfer Venue to the
`Northern District of California, GUI Global Products, Ltd.
`D/B/A Gwee v. Apple Inc., Case No. 4:20-cv-02652 (SDTX)
`Defendant Samsung’s Motion to Transfer Venue to the
`Northern District of California, GUI Global Products, Ltd.
`D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case No.
`4:20-cv-02624 (SDTX)
`Joint Submission Regarding Agreed and Non-Agreed
`Scheduling Dates, GUI Global Products, Ltd. D/B/A Gwee v.
`Samsung Electronics Co. Ltd, et al., Case No. 4:20-cv-02624
`(SDTX)
`Amended Scheduling Order, GUI Global Products, Ltd. D/B/A
`Gwee v. Samsung Electronics Co. Ltd, et al., Case No. 4:20-cv-
`02624 (SDTX)
`Stipulation by Apple Inc.
`viii
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`APPLE-1109
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`APPLE-1106
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`APPLE-1107
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`APPLE-1108
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`
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`Case IPR2021-00472
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`Transcript of Discovery Hearing, GUI Global Products, Ltd.
`D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case No.
`4:20-cv-02624 (SDTX)
`SDTX 2011 Onward – Time to Milestones Search, Docket
`Navigator
`Amended Scheduling Order, GUI Global Products, Ltd.
`D/B/A Gwee v. Samsung Electronics Co. Ltd, et al., Case No.
`4:20-cv-02624 (SDTX), entered July 16, 2021
`Declaration of Seth M. Sproul in Support of Pro Hac Vice
`Admission
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`APPLE-1110
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`APPLE-1111
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`APPLE-1112
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`APPLE-1113
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`ix
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`INTRODUCTION
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`The ’077 Patent’s overly broad claims are obvious, and the Petition proves so
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`conclusively. Like its pre-institution briefing, Patent Owner’s Response hinges on
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`motivation to combine. Indeed, Patent Owner recycles the same “shotgun” approach
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`of raising numerous technical issues that purportedly would have dissuaded a skilled
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`artisan from pursuing the Petition’s Gundlach-Lee combination. But the law
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`precludes Patent Owner’s motivation arguments, and countervailing record evidence
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`debunks them. The claims should all be held unpatentable.
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` ARGUMENT
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`A. A POSITA Had Ample Motivation to Pursue the Gundlach-Lee
`Combination (Grounds 1A/2A)
`1.
`The Gundlach-Lee Combination Presents a Classic Case of
`Obviousness
`a)
`
`Gundlach and Lee’s express teachings suggest the
`Gundlach-Lee combination
`Patent Owner cannot deny Lee’s teaching to modify wireless headsets with
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`older conductive charging technology by employing newer inductive charging
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`technology. APPLE-1006, 1:14-61 (describing wireless headsets using USB
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`plugs/sockets), 1:62-2:2 (“[a]s improvements of technology become available”),
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`3:15-6:4 (describing wireless headsets using inductive charging circuits). Patent
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`Owner also cannot deny that Gundlach describes a wireless headset using the older
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`conductive charging technology targeted for improvement by Lee. Compare
`1
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`
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`APPLE-1006 at 1:14-61 with APPLE-1005 at [0066]. Thus, the Gundlach-Lee
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`combination presents a classic case of obviousness: one where the teachings of the
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`references themselves suggest their combination. KSR Int’l Co. v. Teleflex Inc., 550
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`U.S. 398, 418 (2007) (the TSM test captured “helpful insight”); Comaper Corp. v.
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`Antec, Inc., 596 F.3d 1343, 1352 (Fed. Cir. 2010) (“the TSM test, flexibly applied,
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`remains an important tool”); APPLE-1089, ¶¶7-9.
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`b)
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`rationales
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`support
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`Additional
`combination
`Even beyond express teachings and suggestions, other rationales in KSR’s
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`the Gundlach-Lee
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`“expansive and flexible approach” to obviousness support the Gundlach-Lee
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`combination. 550 U.S. at 416.
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`For example, KSR reiterated the Supreme Court’s prior precedent that “if a
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`technique has been used to improve one device, and a person of ordinary skill in the
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`art would recognize that it would improve similar devices in the same way, using
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`the technique is obvious unless its actual application is beyond his or her skill.” 550
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`U.S. at 417. Likewise, here, Lee’s disclosure of various improvements to wireless
`
`headsets by way of inductive charging supports that a POSITA would have been
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`motivated to improve Gundlach’s wireless headset—a similar device—in the same
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`way. APPLE-1003, ¶¶36, 42. Despite arguing that the combination would have
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`2
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`brought about design challenges and tradeoffs, Patent Owner does not establish that
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`it was beyond the POSITA’s ability to apply Lee’s teachings to Gundlach.
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`
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`As another example, KSR confirmed “that when a patent claims a structure
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`already known in the prior art that is altered by the mere substitution of one element
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`for another known in the field, the combination must do more than yield a predictable
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`result.” 550 U.S. at 416; In re Lackey, 371 Fed. App’x 80, 82 (Fed. Cir. 2010) (“A
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`simple substitution of one known element for another known element in the field to
`
`obtain predictable results is obvious.” (citing KSR)). The record evidence also
`
`supports this model of obviousness. For example, Lee and other references show
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`that inductive charging can substitute for conductive charging in wireless headsets
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`with predictable results. APPLE-1003, ¶¶31-43; APPLE-1089, ¶¶10-17.
`3
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`As yet another example, Gundlach-Lee follows the longstanding pattern of a
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`
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`“combination of familiar elements according to known methods,” which “is likely
`
`to be obvious when it does no more than yield predictable results.” KSR, 550 U.S.
`
`at 416. Patent Owner does not dispute that Gundlach, Lee, and multiple other
`
`references demonstrate knowledge in the prior art of wireless headsets, inductive
`
`charging, and inductive charging applied to wireless headsets. APPLE-1003, ¶¶40-
`
`45, 49, 85, 93, 98-99, 107; APPLE-1089, ¶¶10-17 (citing APPLE1069 through
`
`APPLE-1080); APPLE-1088, 46:3-47:12 (Dr. Toliyat conceding he did not discuss
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`corroborating evidence submitted with the Petition)1. Patent Owner also does not
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`dispute that Lee’s inductive charging functionality would remain intact in the
`
`context of Gundlach.2 Finally, Patent Owner could not reasonably contend that the
`
`result of combining Gundlach and Lee was somehow unpredictable because Patent
`
`Owner itself purports to predict the result of the combination. E.g., POR, 20-34
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`(predicting various design challenges and tradeoffs).
`
`
`
`
`1 Testimony on the ’320 Patent applies to the ’077 Patent. APPLE-1088:23:13-23:4.
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`2 Patent Owner challenges the efficacy of Lee’s inductive charging, not its function.
`
`But “[c]onclusive proof of efficacy is not necessary to show obviousness.”
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`Hoffmann La Roche, Inc. v. Apotex Inc., 748 F.3d 1326, 1331 (Fed. Cir. 2014).
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`4
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`2.
`The Law Preempts Patent Owner’s Motivation Arguments
`In the face of all the evidence that supports the Gundlach-Lee combination,
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`Patent Owner argues that a POSITA would not have pursued it because of purported
`
`design challenges and tradeoffs. Patent Owner’s critique of the Gundlach-Lee
`
`combination centers on allegations that [1] inductive charging is inferior to
`
`conductive charging in terms of efficiency, resulting in weight, cost, and size
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`penalties; and [2] Lee’s dual-purpose coil embodiment (Figure 12) would be difficult
`
`to implement in the context of Gundlach’s headset form factor. In addition to their
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`clear factual deficiencies, which we address infra at Section II.A.3, Patent Owner’s
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`contentions fall short as a matter of law.
`
`a)
`Design tradeoffs do not undermine motivation
`“[A] given course of action often has simultaneous advantages and
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`disadvantages, and this does not necessarily obviate motivation to combine.” Allied
`
`Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381
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`(Fed. Cir. 2016). Additionally, “obviousness ‘does not require that the motivation
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`be the best option, only that it be a suitable option from which the prior art did not
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`teach away.’” Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed.
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`Cir. 2017); accord GE v. Raytheon Techs. Corp., 983 F.3d 1334, 1351 (Fed. Cir.
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`2020). There is no legitimate question as to whether Lee’s inductive charging
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`5
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`
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`technology is “a suitable option,” and Patent Owner could not reasonably allege that
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`the prior art “teach[es] away.” Bayer, 874 F.3d at 1328.
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`Lee’s teachings alone are sufficient to establish the suitability of inductive
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`charging in the context Gundlach. After all, Lee and Gundlach are both directed to
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`wireless headsets, and Lee makes clear that inductive charging is suitable—even
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`preferred—in certain respects. But Lee is not the only relevant evidence on this
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`point. Dr. Cooperstock cited at least ten other prior art examples of inductively
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`charged wireless audio devices like headsets and hearing aids. APPLE-1089, ¶¶12-
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`15 (citing APPLE-1023; APPLE-1029; APPLE-1070 through APPLE-1080). By
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`comparison, Patent Owner and its expert, Dr. Toliyat, have not produced a single
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`document that says inductive charging is unsuitable for such applications. All Patent
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`Owner can muster is the bare testimony of Dr. Toliyat, who “do[es] not recall”
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`having ever “done any work, research into, [or] testimony related to earbuds or
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`headsets.” APPLE-1088, 19:19-21.
`
`Just as it fails to show unsuitability, Patent Owner also necessarily fails to
`
`establish teaching away. Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
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`F.3d 1314, 1327 (Fed. Cir. 2009) (“criticize, discredit, or otherwise discourage”).
`
`Even if Patent Owner’s contentions regarding design challenges and tradeoffs were
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`relevant to “teaching away” (which they are not), those contentions come from a
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`single source—Dr. Toliyat—that other record evidence heavily outweighs.
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`6
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`b)
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`The POSITA is not an automaton attempting bodily
`incorporation
`Patent Owner’s alleged design challenges and tradeoffs premised on a
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`physical implementation of Lee’s dual-purpose charging coil (Figure 12) into an
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`otherwise exact replica of Gundlach’s headset are inapposite.
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`To start, the en banc Federal Circuit firmly rejected an approach resembling
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`Patent Owner’s argument that the size, shape, and componentry layout of
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`Gundlach’s headset would “seriously constrain” a POSITA’s attempt “to implement
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`Lee’s dual-purpose coil.” POR, 22 (“limit the size of the receiving coil”), 27-30
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`(similar), 31 (“additional energy loss”), 36-37 (“serious size limitations”). In the
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`Court’s words, Patent Owner’s assertions that Lee’s dual-purpose coil cannot be
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`incorporated in Gundlach’s form factor “are basically irrelevant, the criterion being
`
`not whether the references could be physically combined but whether the claimed
`
`inventions are rendered obvious by the teachings of the prior art as a whole.” In re
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`Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); accord In re Mouttet, 686 F.3d
`
`1322, 1332 (Fed. Cir. 2012); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
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`1983) (upholding a combination when physical integration was “an insurmountable
`
`task”); Allied Erecting & Dismantling, 825 F.3d at 1380-81 (Fed. Cir. 2016)
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`(upholding a combination when the “suggested modification…would entail design
`
`and structural changes”); Hologic, Inc. v. Minerva Surgical, Inc., 764 Fed. App’x
`
`7
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`
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`873, 880 (Fed. Cir. 2019) (“incompatibility would not preclude a motivation to
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`Case IPR2021-00472
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`combine…”). As stated at the outset of this IPR, “Petitioner does not intend to
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`represent a bodily incorporation of Lee with Gundlach.” Pet., 15 n2.
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`Patent Owner errs further by limiting the POSITA to someone who “can only
`
`perform combinations of a puzzle element A with a perfectly fitting puzzle element
`
`B,” which “[t]he rationale of KSR does not support.” ClassCo, Inc. v. Apple, Inc.,
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`838 F.3d 1214, 1219 (Fed. Cir. 2016). “‘[A] person of ordinary skill is also a person
`
`of ordinary creativity, not an automaton,’ so the fact that it would take some
`
`creativity to carry out the combination does not defeat a finding of obviousness.”
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`Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir.
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`2020) (quoting KSR, 550 U.S. at 421)). Accordingly, the Federal Circuit reversed
`
`the Board in GE v. Raytheon Technologies Corporation because the Board premised
`
`its conclusion of non-obviousness on the fact that the proposed combination “would
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`likely lead to changes to other components.” 983 F.3d at 1352. Here, for example,
`
`the POSITA would have resolved Patent Owner’s concern that Gundlach’s form
`
`factor imposes a size constraint on Lee’s coil using a variety of common-sense
`
`solutions. See infra Section II.A.3.c; APPLE-1088, 48:19-50:22 (Dr. Toliyat
`
`explaining that skilled artisans would have had “electronic device or system design
`
`experience” and “are very creative”).
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`8
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`Case IPR2021-00472
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`3.
`Patent Owner’s Motivation Arguments Are Factually Flawed
`Legal deficiencies aside, the Board should make factual findings that discard
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`Patent Owner’s critiques of the Petition’s four independent motivations for the
`
`Gundlach-Lee combination. Pet., 15-16 (citing APPLE-1003, ¶¶40-45).
`
`a)
`
`Inductive charging was a known alternative to conductive
`charging
`According to Patent Owner, a POSITA “would not have seen inefficient
`
`inductive charging…as an industry-recognized alternative to efficient conductive
`
`charging for low power portable devices.” POR, 10; see also id., 10-14 (alleging a
`
`lack of relevant commercial products), 17 (alleging weight, cost, size design costs
`
`from lower efficiency), 22-23 (reduced efficiency), 25-26 (design penalties). The
`
`record refutes this argument.
`
`Nikola Tesla discovered inductive charging in the 19th century, and skilled
`
`artisans applied this technology in a wide variety of handheld electronic devices,
`
`including hearing aids and wireless headsets, in the intervening century leading up
`
`to the ’077 Patent. APPLE-1089, ¶¶11-17 (citing APPLE-1069 through APPLE-
`
`1080; Ex.2032; Ex.2033). Moreover, the parties’ experts agree that the Wireless
`
`Power Consortium—a multi-national group of electronics companies formed in
`
`2008—promoted commercial adoption of inductive charging by standardizing
`
`specifications for inductive transmitters and receivers. APPLE-1089, ¶16 (citing
`
`9
`
`
`
`
`Ex.2032); Ex.2022, ¶121 (citing Ex.2029, Ex.2030). Given the totality of the
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`Case IPR2021-00472
`Attorney Docket No: 50095-0030IP1
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`evidence, it is beyond debate that inductive charging was well known and viewed
`
`by those of skill as an alternative to conductive charging. The existence of design
`
`challenges and tradeoffs does not prove otherwise. The market and the community
`
`of skilled artisans knew of these issues. Still, they pressed forward with inductive
`
`charging because of its known benefits (e.g., reliability, ease of use, interoperability,
`
`and user safety). APPLE-1089, ¶¶11-23 (citing APPLE-1023, APPLE-1070;
`
`APPLE-1074, Ex.2032).
`
`b)
`
`Enhanced reliability was a known benefit of inductive
`charging
`Patent Owner argues against the Petition’s reliability rationale by contending
`
`that “electrical contacts are highly reliable” and could be made from “highly
`
`conductive metals which resist corrosion.” POR, 15-16. Here too, though, the
`
`record evidence undercuts Patent Owner. As Dr. Cooperstock explained, Lee is but
`
`one of multiple prior art references that recognized the reliability benefit associated
`
`with inductive charging. APPLE-1089, ¶¶19-20 (APPLE-1023, APPLE-1070;
`
`APPLE-1074). Additionally, Patent Owner reaches the wrong conclusion from
`
`Gundlach’s teaching of a special USB-plug adapter. POR, 2. First, Gundlach
`
`teaches that the adapter merely “reduce[s]” mechanical stress, as opposed to
`
`eliminating it altogether as would inductive charging. APPLE-1005, [0066];
`
`10
`
`
`
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`APPLE-1089, ¶21. Second, stress is just one of multiple reliability considerations
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`with USB ports. Id. They also serve as entry points for water, dust, and other foreign
`
`objects that could cause damage and inhibit charging. Id.
`
`c)
`
`Lee’s dual-purpose coil design was advantageous and
`feasible
`The Petition established that a POSITA would have viewed Lee’s dual-
`
`purpose coil design (Figure 12) as advantageous in the sense that it “avoided
`
`unnecessary bulk and achieved ‘a reduction of size and weight.’” Pet., 15 (citing
`
`APPLE-1006, 2:62-66, 4:55-57, Figure 12; APPLE-1003, ¶44; APPLE-1029). In
`
`response, Patent Owner challenged the feasibility of Lee’s dual-purpose coil in the
`
`context of Gundlach.3 Patent Owner weaves three threads of argument to this effect,
`
`none of which has merit.
`
`First, Patent Owner argues that coil alignment and other issues would reduce
`
`charging efficiency. POR, 18, 26-27, 30-31. However, as discussed, charging
`
`efficiency was a known design tradeoff regarding inductive charging, and it would
`
`not have dissuaded a POSITA from pursuing Lee’s dual-purpose coil design. Supra
`
`
`
`3 The Petition does not solely rely on Lee’s dual-purpose coil embodiment to satisfy
`
`claim 1. The switch 470 disclosed in that embodiment concerns just one of multiple
`
`mappings advanced in the Petition. Pet., 33-38; APPLE-1088, 51:12-52:5.
`
`11
`
`
`
`
`Section II.A.3.a; APPLE-1089, ¶¶24-27 (citing APPLE-1029; APPLE-1075;
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`Case IPR2021-00472
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`APPLE-1081; APPLE-1082). Regardless, Patent Owner does not adequately
`
`support its coil alignment theory. Other than the conclusory testimony of its expert,
`
`Patent Owner provides no record evidence that speaks to why coil alignment was an
`
`unsurmountable challenge. To the contrary, as Dr. Cooperstock explains,
`
`positioning the primary coil in the clamshell case and the secondary coil in the
`
`headset would have been a routine design problem that a POSITA would have
`
`accounted for and solved. APPLE-1089, ¶¶28-32 (citing APPLE-1083; APPLE-
`
`1084; APPLE-1085).
`
`Patent Owner’s additional theories of heat/vibration problems resulting from
`
`“using a higher frequency” for transmitting AC power (POR, 30-31) and
`
`inadvertently capturing “eddy currents” with a speaker magnet (POR, 27) are even
`
`less credible than its flawed coil alignment theory. Patent Owner does not
`
`adequately explain or support these heat/vibration theories with evidence.
`
`Regardless, a POSITA would have expected any heat/vibration effects to be
`
`negligible or easily mitigated at least because the headsets involved in Gundlach and
`
`Lee are low-power devices. APPLE-1089, ¶¶33-35.
`
`Second, Patent Owner argues that constraints imposed by the 5mm dimension
`
`noted in Gundlach would lead to a small (3-4mm), and thus inefficient, coil in the
`
`headset. POR, 22, 27-31. But this argument reasons from false premises.
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`12
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`Case IPR2021-00472
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`For one, Patent Owner assumes that Lee’s dual-purpose coil must be located
`
`
`
`in Gundlach’s earpiece and positioned with its diameter aligned to the 5mm
`
`thickness dimension. POR, 28-29; APPLE-1088, 61:3-8, 93:12-22. Not so. Dr.
`
`Cooperstock explains that a POSITA more likely would have located Lee’s dual-
`
`purpose coil in the main housing of Gundlach’s headset, positioned with its diameter
`
`aligned to the much larger length and width dimensions. APPLE-1089, ¶¶28-32, 36.
`
`Patent Owner also appears to assume that the Gundlach-Lee combination
`
`must preserve Gundlach’s exemplary headset dimensions to fit into a laptop’s
`
`standard expansion slot. POR, 6, 17, 37. But the dimensions and expansion slot
`
`compatibility are optional in Gundlach, not mandatory. APPLE-1005, [0056] (“may
`
`fit inside a standard expansion slot”) (alternatively mentioning “a unique slot or
`
`cavity”), [0057] (“may be designed”); compare id., [0021-0077] (describing
`
`expansion slot embodiments) with id., [0079-0080] (describing the clamshell case
`
`embodiment without mentioning expansion slots). A POSITA would not have been
`
`dissuaded from pursuing Lee’s dual-purpose coil based on Gundlach’s optional
`
`dimensions. APPLE-1089, ¶¶37-41. If Gundlach’s exemplary dimensions were
`
`problematic (which they were not), the POSITA would have increased them. Id.
`
`Third, Patent Owner argues that Lee’s dual-purpose coil embodiment lacks
`
`“means of communication for controlling the charging process,” meaning “the
`
`proposed Gundlach-Lee combination would drain the clamshell case battery.” POR,
`
`13
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`36-37. This implementation detail does not undermine the Gundlach-Lee
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`Case IPR2021-00472
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`combination. It is irrelevant to the Petition’s motivation analysis and undermined
`
`by Lee. Lee teaches the POSITA that “[t]here is a wireless communication channel
`
`between the wireless headphone/headset and the power adaptor,” and it can be used
`
`to “provide control signals” and/or “battery charging status.” APPLE-1006, 6:5-21.
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`Thus, to the extent a POSITA would have viewed the lack of “means of
`
`communication” as a design problem, Lee provides an exemplary solution. APPLE-
`
`1089, ¶¶42-46 (citing Ex.2032).
`
`d)
`Interoperability was a known benefit of inductive charging
`Patent Owner fails to confront the fact that Gundlach’s embodiments have
`
`challenges with interoperability that inductive charging would address. POR, 17-
`
`18. For example, Gundlach’s embodiments that use exposed electrical contacts for
`
`charging are not interoperable because charging requires insertion of the headset into
`
`a specially designed case with mating contacts. E.g., APPLE-1005, [0069]; APPLE-
`
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