`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`___________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner.
`____________
`
`Case IPR2021-00473
`Patent 10,589,320 B1
`___________________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`INTRODUCTION AND SUMMARY OF ARGUMENTS .......................... 1
`BACKGROUND ............................................................................................ 5
`A.
`The ’320 Patent .................................................................................... 5
`B.
`Claim Construction and the Level of Ordinary Skill in the
`Art ...................................................................................................... 10
`Related Proceedings ........................................................................... 12
`C.
`The IPR Petition ................................................................................. 13
`D.
`III. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY CHALLENGED CLAIM IS
`UNPATENTABLE ...................................................................................... 15
`The Challenged Claims are Not Unpatentable in View of
`A.
`Gundlach and Lee .............................................................................. 18
`1.
`Overview of Gundlach ............................................................. 19
`2.
`Overview of Lee ...................................................................... 21
`3.
`A POSITA Would Not Have Combined the Teachings of
`Gundlach and Lee .................................................................... 23
`The Combination of Gundlach and Lee Does Not Teach or
`Suggest the Requirements of Claim 1 ..................................... 36
`IV. THE OFFICE’S FRAMEWORK FOR HANDLING IPRs IS
`STRUCTURALLY BIASED AGAINST PATENT OWNERS. ................. 46
`THE JUDGES HANDLING THIS CASE WERE APPOINTED IN
`VIOLATION OF THE APPOINTMENTS CLAUSE. ................................ 49
`VI. CONCLUSION ............................................................................................ 50
`
`
`V.
`
`4.
`
`IPR2021-00473
`
`Prelim. Response
`
`Page i
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .......................................................................... 49
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 44
`
`DePiero v. City of Macedonia,
`180 F.3d 770 (6th Cir. 1999) .............................................................................. 48
`
`Dugan v. Ohio,
`277 U.S. 61 (1928) ............................................................................................. 48
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 45
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 44
`
`Hartness Int’l. Inc. v. Simplimatic Engineering Co.,
`819 F.2d 1100 (Fed. Cir. 1987) .......................................................................... 45
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ...................................................................... 17, 32
`
`In re Peterson,
`315 F.3d 1325 (Fed. Cir. 2003) .......................................................................... 17
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) .......................................................................... 17, 32
`
`In re Warner,
`379 F.2d 1011 (CCPA 1967) .............................................................................. 16
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 16, 33
`
`
`IPR2021-00473
`
`Prelim. Response
`
`Page ii
`
`
`
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) ..................................................................................... 16, 18
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 10
`
`Rose v. Village of Peninsula,
`875 F. Supp. 442 (N.D. Ohio 1995) ................................................................... 48
`
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................ 16
`
`Sawai USA, Inc. v. Astellas Pharma Inc.,
`IPR2018-00079 (PTAB May 4, 2018) ............................................................... 10
`
`Smithkline Beecham Corp. v. Apotex Corp.,
`439 F.3d 1312 (Fed. Cir. 2006) .......................................................................... 10
`
`Thryv, Inc. v. Click-to-Call Techs., LP,
`140 S. Ct. 1367 (2020) ........................................................................................ 48
`
`Tumey v. Ohio,
`273 U.S. 510 (1927) ..................................................................................... 48, 49
`
`Ward v. Village of Monroeville,
`409 U.S. 57 (1972) ............................................................................................. 48
`
`
`STATUTES
`
` 5
`
` U.S.C. § 7513(a) .................................................................................................. 49
`
`35 U.S.C. § 312(a)(3) ................................................................................. 15, 44, 46
`
`35 U.S.C. § 314 ...................................................................................................... 46
`
`
` REGULATIONS
`
`
`37 C.F.R. § 42.15(a)(2) ........................................................................................... 46
`
`IPR2021-00473
`
`Prelim. Response
`
`Page iii
`
`
`
`
`37 C.F.R. § 42.104(b)(3) ........................................................................................ 10
`
`37 C.F.R. § 42.108 .................................................................................................. 46
`
`37 C.F.R. § 42.108(c) ............................................................................................. 44
`
`
`
`
`OTHER AUTHORITIES
`
`
`112 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) ..................................................... 15
`
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) .................................................................................................... 10
`
`
`
`
`
`
`IPR2021-00473
`
`Prelim. Response
`
`Page iv
`
`
`
`
`
`Exhibit No.
`2001
`2002
`2003
`
`2004
`
`2005
`
`2006
`
`EXHIBIT LIST
`
`Description
`Declaration of Robert Stillerman
`Stillerman CV
`Rebecca Beam, Mary Kate Wilkin, Jason Kuszynski, and
`Marcetta Y. Darensbourg, “Batteries: Rechargeable vs. Non-
`rechargeable Batteries” (available at:
`https://www.chem.tamu.edu/rgroup/marcetta/chem362/HW/
`2017%20Student%20Posters/Batteries-
`%20Rechargeable%20vs.%20Non-
`rechargeable%20Batteries.pdf).
`Luke Filipowicz, “Decade in review: 2012 brought Qi
`wireless charging and reinvented how we juice up our
`phones,” iMore (Dec., 23 2019) (available at
`https://www.imore.com/most-significant-apple-gadget-
`2012-qi-wireless-
`charging#:~:text=While%20Qi%20was%20%22invented%2
`2%20in,Nokia%20Lumia%20920%20in%202012)
`Lucas Mearian, “Wireless charging explained: What is it and
`how does it work?” Computerworld (Mar. 28, 2018)
`(available at
`https://www.computerworld.com/article/3235176/wireless-
`charging-explained-what-is-it-and-how-does-it-
`work.html#:~:text=Wireless%20charging%20has%20been%
`20around,a%20transmitter%20and%20a%20receiver)
`Alan Li, David Law, “Choosing a Standard for Portable
`Wireless Charging Systems Design,” IEEE Standards
`University (May 31, 2016) (available at:
`https://www.standardsuniversity.org/e-magazine/june-
`2016/standard-consider-designing-portable-wireless-
`charging-systems/)
`
`IPR2021-00473
`
`Prelim. Response
`
`Page v
`
`
`
`2007
`
`2008
`
`2009
`
`2010
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`Electronics Notes, “Qi Wireless Charging Standard,”
`(available at: https://www.electronics-
`notes.com/articles/equipment-items-gadgets/wireless-
`battery-charging/qi-wireless-charging-standard.php)
`Nicholaus Smith, “White Paper –Tuning Qi® and
`AirFuel®/PMA® Inductive Resonance Circuits for Optimal
`Efficiency,” (2019) (available at:
`https://www.renesas.com/us/en/document/whp/tuning-qi-
`and-airfuel-pma-inductive-resonance-circuits-optimal-
`efficiency)
`Juli Clover, “MagSafe: Everything About Apple's New
`iPhone 12 Charging Technology,” MacRumors, March 12,
`2021 (available at:
`https://www.macrumors.com/guide/magsafe/)
`U.S. PGPUB 2013/0119773
`Nic Vargus, “Review: Powermat Home & Office Mat,
`Portable Mat, IOS Central,” (Feb 4, 2010) (available at:
`https://www.macworld.com/article/202372/powermat.html)
`John Burnett, Lenard Audio Institute, “Speakers” (Dec. 17,
`2008 (available at:
`http://education.lenardaudio.com/en/05_speakers_2.html#:~:t
`ext=Most%20voice%20coils%20are%20double,less%20wei
`ght%20and%20greater%20accuracy)
`Apple, Inc., “About the magnets inside iPhone 12, iPhone 12
`mini, iPhone 12 Pro, iPhone 12 Pro Max, and MagSafe
`accessories” (Mar. 29, 2021) (available at:
`https://support.apple.com/en-us/HT211900)
`Chris Woodford, “Headphones,” Explain That Stuff (Apr.
`14, 2021) (available at:
`https://www.explainthatstuff.com/headphones.html)
`USB.org, “About Express Card® Technology,” (available at:
`https://web.archive.org/web/20140625130909/http://www.us
`b.org/developers/expresscard/)
`Jerry Hildenbrand, “Wireless charging may be inefficient,
`but it's only a catastrophe if you ignore the alternatives”
`
`IPR2021-00473
`
`Prelim. Response
`
`Page vi
`
`
`
`Android Central (Aug. 7, 2020) (available at:
`https://www.androidcentral.com/wireless-charging-
`inefficient-only-if-you-ignore-alternatives)
`Magnetic Forces, Britannica, (available at:
`https://www.britannica.com/science/magnetism/Magnetic-
`forces)
`USPTO Aggregate Revenue Tables 2020 Tab 1
`
`USPTO APJ 2019 Ratings
`USPTO APJ Evaluation Papers
`Jabra Sport Pace Wireless Web Manual, RevA_EN (2015)
`
`2017
`
`2018
`
`2019
`2020
`2021
`
`
`
`
`
`
`
`
`
`IPR2021-00473
`
`Prelim. Response
`
`Page vii
`
`
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENTS
`
`Petitioner challenges the patentability of claims 1-5 and 7-13 of U.S. Patent
`
`10,589,320 (the “’320 patent”) on several proposed grounds, Pet. at 1, but
`
`underlying each of the proposed grounds is the allegation that a person of ordinary
`
`skill in the art (“POSITA”) would have combined the teachings of Gundlach and
`
`Lee and that claim 1, the sole independent claim of the challenged patent, would be
`
`obvious in view of such a combination. Id. at 18-42. Because a POSITA would not
`
`make such a combination and, further, because any such combination would not
`
`suggest all of the limitations of claim 1, the petition fails to demonstrate any
`
`reasonable likelihood that Petitioner would prevail at trial on any proposed ground.
`
`Further, to the extent the petition also relies on the teachings of Kim to
`
`demonstrate the play/pause feature of claim 1, id. at 65-69, the failures of the
`
`petition are not cured inasmuch as, “Integration of Kim does not disturb the aspects
`
`of Gundlach-Lee mapped to other claim elements.” Id. at 65-66.
`
`Contrary to the argument in the petition, a POSITA would not have
`
`recognized Lee’s inductive charging as a suitable alternative to Gundlach’s
`
`conductive charging. Rather, the POSITA would have appreciated Gundlach’s
`
`disclosures of conductive charging as being more than adequate to implement such
`
`a solution. Indeed, Gundlach’s specific mention of mini USB and/or micro USB
`
`connectors for charging the batteries of a wireless headset would have been
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 1 of 50
`
`
`
`understood to employ a solution that was pervasive in the art and the POSITA
`
`would have readily understood that such a connector or one of the other conductive
`
`charging arrangements described by Gundlach could be provided in the case for
`
`charging the headset. This is especially true since Gundlach’s wireless headset is
`
`fitted with electrical connectors for just such a purpose.
`
`Additionally, the POSITA would not have considered Lee’s inductive
`
`charging to provide any benefits over Gundlach’s conductive charging that would
`
`make such a replacement desirable. At the relevant time, wireless charging was not
`
`widespread and was viewed as offering “little more than [to] improve [one’s] life
`
`ever so slightly” and at best avoid “minor inconveniences” while adding
`
`complexities to and at the same time running up the costs of a device. Nor would
`
`any enhanced reliabilities motivate the POSITA to adopt Lee’s wireless charging
`
`in a system as described by Gundlach. A POSITA would have known that wireless
`
`charging is inherently less efficient than conductive charging, adds complexities
`
`such as Petitioner’s suggested combination of Gundlach with Lee to turn
`
`Gundlach’s simple charging solution from a simple DC-based system to a DC-to-
`
`AC-to-DC charging system due to Lee’s need for a time varying (AC) current to
`
`transfer energy from a transmitter induction coil to a receiver induction coil. At
`
`minimum, this would require both an inverter (e.g., inverter 222) and a rectifier
`
`according to the teachings of Lee. See Ex. 2001 ¶ 111. All this in an attempt by
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 2 of 50
`
`
`
`Petitioner to replace the simple conductive contacts (e.g., contacts 326) that
`
`Gundlach has already provided for conductive charging of the headset.
`
`Additionally, precise alignment of coils in the charger and the device being
`
`charged would be needed. And, in any event, Gundlach already addressed any
`
`reliability concerns by instructing that the power adapter can be formed “in a
`
`manner that may reduce the stress on the electrical connection between the adapter
`
`and wireless device. For example, the adapter may be formed so as to slide or latch
`
`onto a portion of the wireless device, preventing, e.g., torsional motion between the
`
`adapter and device.” Ex. 1005 at [0066]. Inasmuch as the existing Gundlach
`
`conductive charging solution was both adequate and reliable, a POSITA would
`
`have found no reason to replace it, especially with Lee’s less efficient induction
`
`charging system that would require DC (from clamshell reserve battery) be
`
`converted to AC (for inductive transmission) and then converted back to DC (for
`
`charging of the headset battery) that would either require increased battery sizes
`
`for the headset or clamshell, or both (due to power lost in the form of heat), or, if
`
`not, would substantially increase the time to charge the headset battery. As noted
`
`by Mr. Stillerman, the “inefficiencies of wireless charging can be traced to
`
`inaccurate alignments between the charging circuit’s coil and the receiver’s coil,
`
`excessive distances between the charging circuit’s coil and the receiver’s coil, and
`
`losses to heat, to name a few factors.” Ex. 2001 at ¶ 51.
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 3 of 50
`
`
`
`Further, adopting Lee’s wireless charging arrangement would not promote
`
`or be consistent with Gundlach’s goal of providing a compact form factor. The
`
`proposed Gundlach-Lee combination relies on an embodiment of Lee that would
`
`necessitate additional components and circuitry and associated bulk in the
`
`Gundlach case embodiment and introduce unneeded complexities with the design
`
`due to demands of coil alignment and proximities. Nor would Lee’s wireless
`
`charging solution offer any advantages of interoperability over the conductive
`
`charging solutions taught by Gundlach, which were already based on conductive
`
`connectors in use worldwide.
`
`Not only would the POSITA not make the Gundlach-Lee combination
`
`proposed in the petition, that combination does not even meet the requirements of
`
`the claims. For example, adopting the Lee wireless charging solution in the
`
`Gundlach case embodiment would not provide a switching device and an
`
`electronic device configured to selectively couple to each other employing
`
`magnetic force, as required in claim 1. Instead, such an arrangement would
`
`actually yield a system in which transmitter and receiver coils of the inductive
`
`charging system act so as to repel one another—that is, the arrangement would
`
`actually have the switching device and the electronic device configured in a
`
`fashion opposite to that required by the claims. To the extent the petition might
`
`erroneously be read to argue this could be addressed by including physical magnets
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 4 of 50
`
`
`
`in the Lee-Gundlach system, a POSITA would not have done so, as Gundlach’s
`
`clamshell with cover and securing latch shown by Figs. 18a and 18b already secure
`
`the headset. As such, magnets would be unnecessary and would only serve to
`
`complicate the design considerations for employing the headset speaker coil as an
`
`energy collector in the Lee wireless charger.
`
`For these and further reasons as discussed below, the Board should not
`
`institute trial.
`
`
`
`II. BACKGROUND
`
`A. The ’320 Patent
`
`The president and primary force behind Patent Owner GUI Global Products,
`
`Ltd., d/b/a Gwee (“Gwee”) is businessman and prolific inventor Walter (“Tad”)
`
`Mayfield. Mr. Mayfield and his ’320 patent co-inventor, Dan Valdez, took portable
`
`magnetic switching in new directions and to new levels, as evidenced by the
`
`exemplary portable magnetic switching devices in FIGs. 1-26 of the ’320 patent.
`
`The disclosed switching devices have functions such as activating, deactivating
`
`and hibernating electronic devices such as cell phones, smartphones, tablet
`
`computers and laptop computers. For example, the switching device 2401 shown in
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 5 of 50
`
`
`
`FIGs. 24 and 25, reproduced below, includes magnets 2504 to activate, deactivate,
`
`or hibernate a tablet computer 2400. Ex. 1001 at 18:6-10.
`
`
`
`
`
`Another example of a switching device is the doll-shaped device shown in FIG. 26,
`
`reproduced above, which is disclosed as a switching device for a version of the
`
`iPadTM. Id. at 5:57-59.
`
`Aspects of disclosed embodiments of the invention comprise a switching
`
`device selectively coupled to the front of a portable electronic device. Id. at 18:6-
`
`10 (“switching device (2401) is selectively coupled to the front of the portable
`
`electronic device 2402 outside of the view screen 2403.”). The switching device
`
`may have a magnet element to activate or deactivate a magnetic switch. Id. at 3:6-
`
`8, and see Figs 1A, 1B (illustrating a round switching device 100 having magnet
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 6 of 50
`
`
`
`102); FIGs. 2A-2C (showing a square switching device 200 having magnet 202);
`
`FIG. 3 (showing a switching device 303 comprising a magnetic substrate); FIG. 4
`
`(showing a switching device 402 with a magnet); and FIGs. 5A, 5B (showing a
`
`switching device 503/503a with magnets 506).
`
`Aspects of disclosed embodiments of the invention further comprise a case
`
`for an electronic device having a magnetic switch, and in the area of the case over
`
`the magnetic switch, a recessed area functions to facilitate a switching device
`
`having a magnet moving past the switch in order to activate or deactivate the
`
`switch. Id. at 3:21-25. Examples of depicted recesses include indention 302 in
`
`FIG. 3, and recess 904 in FIG. 9, each reproduced below. Id. at 8:62-66; 11:40-51.
`
`
`
`
`
`
`
`Aspects of disclosed embodiments of the invention further comprise
`
`switching devices with beveled edges, id. at 8:33-38; 18:62-67, and switching
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 7 of 50
`
`
`
`devices that may be received into a groove, slot, or other indented geometrical
`
`shape to lower the profile of the switching device to facilitate closing a cover or
`
`prevent snagging a cleaning component. Id. at 8:55-59; 19:9-16.
`
`Aspects of disclosed embodiments of the invention further comprise a
`
`switching device that includes at least one ferromagnetic or ferrimagnetic material
`
`within, it wherein the ferromagnetic or ferrimagnetic material may function to
`
`actuate a power switch or sensor that is capable of being actuated using a magnet.
`
`Id. at 3:58-64; 16:16-21.
`
`Aspects of disclosed embodiments of the invention further comprise a
`
`switching device that activates or deactivates an electronic device by employing a
`
`magnet, the switching device having a body surrounding the magnet and at least
`
`one surface non-abrasive to the electronic device. Id. at 4:8-16.
`
`Aspects of disclosed embodiments of the invention further comprise
`
`methods of conserving power when using a portable electronic device having a
`
`view screen and a switch that can activated or de-activated by introducing a
`
`magnetic field to the switch, wherein the switching device has at least one magnet
`
`and at least one surface that is non-abrasive to the surface of the view screen,
`
`wherein the method includes using the switching device to turn the portable
`
`electronic device off when the portable electronic device is not in actual use and
`
`then on when the portable electronic device is needed. Id. at 4:17-27.
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 8 of 50
`
`
`
`Aspects of disclosed embodiments of the invention further comprise a
`
`switching device putting a tablet into hibernation mode with a single touch to the
`
`switching device as compared to the multiple touches required to do the same
`
`thing using the touch pad of the tablet. Id. at 20:18-24.
`
`Aspects of disclosed embodiments of the invention further comprise a case
`
`for an electronic device having a magnetic switch, and in the area of the case over
`
`the magnetic switch, a recessed area (see above regarding recesses) that facilitates
`
`a cleaning component having a magnet moving past the switch in order to activate
`
`or deactivate the switch. Id. at 3:21-26.
`
`Aspects of disclosed embodiments of the invention further comprise the
`
`case of the switching device functioning to protect an electronic device's primary
`
`case. See, e.g., id. at 2:47-48; and FIG. 5A, reproduced below.
`
`
`
`
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 9 of 50
`
`
`
`B. Claim Construction and the Level of Ordinary Skill in the Art
`
`A petition for IPR must include a statement regarding how each challenged
`
`claim is to be construed. 37 C.F.R. § 42.104(b)(3). The present petition fails to
`
`meet this requirement inasmuch as no constructions are offered and no framework
`
`for evaluating the claims is proposed. Pet. at 6. This alone is sufficient for the
`
`Board to deny institution of trial. To the extent the petition alleges it is applying
`
`the “ordinary meaning” of the claims, Pet at 27, fn. 3, arguments in footnotes are
`
`not sufficient, see Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320
`
`(Fed. Cir. 2006) (collecting cases); see also Sawai USA, Inc. v. Astellas Pharma
`
`Inc., IPR2018-00079, Paper 7 at 18 n. 3 (PTAB May 4, 2018) (“We decline to
`
`consider an argument made entirely in footnotes.”), and, in any event, Petitioner
`
`has not explained what any “ordinary meanings” of the claims are.
`
`Claim terms “are generally given their ordinary and customary meaning.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (“[T]he person of
`
`ordinary skill in the art is deemed to read the claim term not only in the context of
`
`the particular claim in which the disputed term appears, but in the context of the
`
`entire patent, including the specification.”); and see Changes to the Claim
`
`Construction Standard for Interpreting Claims in Trial Proceedings Before the
`
`Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (Final Rule)
`
`(adopting application of the same claim construction standard used to construe a
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 10 of 50
`
`
`
`claim in a civil action under 35 U.S.C. § 282(b) to all IPR petitions filed on or after
`
`November 13, 2018).
`
`As explained by Mr. Stillerman, a POSITA “would be someone with either a
`
`bachelor’s degree in Electrical Engineering, Computer Science, or Mechanical
`
`Engineering and two years of post-baccalaureate electronic device or system
`
`design experience, or someone with no degree but four years of experience in
`
`electronic device or system design.” Ex. 2001 at ¶ 32. Such a POSITA would
`
`understand the ordinary and customary meaning of the term “fully disposed
`
`within” as used in claim 1, Ex 1001 at 21:49, to be “entirely contained within.”
`
`The common dictionary definition of “fully” is “entirely.” To be “disposed” within
`
`something is to be arranged within it, and the context of the ’320 patent makes
`
`clear that the arrangement is such that the magnet is contained within the specified
`
`device. Id. at 6:50-53 (“Turning to FIGS. 2A and 2 B, a side view of the cleaning
`
`component, it can be seen that disposed within the cleaner material (201) is a
`
`ferromagnetic or ferrimagnetic substrate (202).”); 18:23-25 (referring to FIG. 25,
`
`“Disposed within the switching device is a ferromagnetic or ferrimagnetic
`
`substrate (2504).”). Hence, the POSITA would understand the term “fully disposed
`
`within” to mean “entirely contained within.” See, e.g., Ex. 2001 at ¶ 62.
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 11 of 50
`
`
`
`Claim 1 further recites, inter alia, “the switching device and the electronic
`
`device are configured to selectively couple to each other employing magnetic
`
`force.” Ex. 1001 at 21:42-44. According to the ’320 patent,
`
`The switching devices of the application selectively couple with
`the case or cases of the portable electronic devices. The term
`"selectively couple" describes the process wherein a switching
`device of the disclosure is applied to a portable electronic
`device and adheres to it because of a magnetic force. In one
`embodiment of the disclosure, there is sufficient magnetic force
`to allow the witching device to remain in place despite casual
`movements of the portable electronic device, but to still be
`easily removed by a human operator.
`
`Id. at 17:63 – 18:5. Accordingly, the term “selectively couple” as used in the
`
`claims should be construed as “adheres.” Ex. 2001 at ¶ 63.
`
`
`
`C. Related Proceedings
`
`This inter partes review is related to the following co-pending litigation:
`
`Civil Action No. 4:20-cv-02624, GUI Global Products, Ltd. d/b/a Gwee v.
`
`Samsung Elecs. Co., Ltd. and Samsung Electronics America, Inc., and Civil Action
`
`No. 4:20-cv-02652, GUI Global Products, Ltd. d/b/a Gwee v. Apple, Inc., both in
`
`the United States District Court for the Southern District of Texas. The ’320 patent
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 12 of 50
`
`
`
`is also at issue in IPR2021-00338, presently pending. Related proceedings are IPRs
`
`2020-00335, 2020-00336, 2020-00337, 2021-00470, 2021-00471, and 2021-
`
`00472.
`
`
`
`D. The IPR Petition
`
`The petition challenges the patentability of claims 1-5 and 7-13, Pet. at 1, of
`
`which claim 1 is the sole independent claim. Ex. 1001 at 21:38 – 22:48.
`
`Altogether, the petition alleges five grounds for unpatentability of the challenged
`
`claims:
`
`Claims Challenged
`
`Statutory ground
`for challenge
`
`References cited in support of
`challenge
`
`1, 2, 8, 9, and 11
`
`35 U.S.C. § 103
`
`2 and 8
`
`35 U.S.C. § 103
`
`11
`
`35 U.S.C. § 103
`
`U.S. PGPUB 2008/0132293 of
`Gundlach et al. (“Gundlach”; Ex.
`1005) and U.S. Pat. 7,548,040 to
`Lee et al. (“Lee”; Ex.1006).
`
`Gundlach, Lee, and U.S. PGPUB
`2007/0145255 of Nishikawa et al.
`(“Nishikawa”; Ex. 1059).
`
`Gundlach, Lee, and U.S. PGPUB
`2008/0076489 of Rosener et al.
`(“Rosener”; Ex. 1050).
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 13 of 50
`
`
`
`3 and 7
`
`35 U.S.C. § 103
`
`4, 5, 10, 12, and 13
`
`35 U.S.C. § 103
`
`1, 2, 8, 9, and 11
`
`35 U.S.C. § 103
`
`2 and 8
`
`35 U.S.C. § 103
`
`11
`
`35 U.S.C. § 103
`
`Gundlach, Lee, and U.S. Pat.
`7,631,811 to Brown (“Brown”;
`Ex. 1008).
`
`Gundlach, Lee, and U.S. PGPUB
`2008/0012706 of Mak-Fan et al.
`(“Mak-Fan”; Ex. 1010).
`
`Gundlach, Lee, and U.S. PGPUB
`2011/0117851 of Kim (“Kim”;
`Ex. 1007).
`
`Gundlach, Lee, Kim, and
`Nishikawa.
`
`Gundlach, Lee, Kim, and
`Rosener.
`
`3 and 7
`
`35 U.S.C. § 103
`
`Gundlach, Lee, Kim, and Brown.
`
`4, 5, 10, 12, and 13
`
`35 U.S.C. § 103
`
`Gundlach, Lee, Kim, and Mak-
`Fan.
`
`Pet. at 1-2.
`
`
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 14 of 50
`
`
`
`III. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY CHALLENGED CLAIM IS
`UNPATENTABLE
`
`“The Director may not authorize an inter partes review [trial] to be instituted
`
`unless the Director determines that the information presented in the petition . . .
`
`shows that there is a reasonable likelihood that the petitioner would prevail.” 35
`
`U.S.C. § 314(a). At a minimum, the reasonable-likelihood-of-prevailing standard
`
`“effectively requires the petitioner to present a prima facie case justifying a
`
`rejection of the claims in a patent.” 112 Cong. Rec. S1375 (daily ed. Mar. 8, 2011)
`
`(quoting Sen. Kyl). Indeed, if a challenge fails to set forth at least a prima facie
`
`case of unpatentability, then it would be pointless to institute trial on that
`
`challenge, as the petitioner cannot cure defects in a petition during trial. As
`
`explained by the Federal Circuit:
`
`It is of the utmost importance that petitioners in the IPR
`proceedings adhere to the requirement that the initial
`petition identify “with particularity” the “evidence that
`supports the grounds for the challenge to each claim.” 35
`U.S.C. § 312(a)(3). . . . Unlike district court litigation —
`where parties have greater freedom to revise and develop
`their arguments over time and in response to newly
`discovered material — the expedited nature of IPRs
`bring[s] with it an obligation for petitioners to make their
`case in their petition to institute.
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 15 of 50
`
`
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed.
`
`Cir. 2016) (emphases added).
`
`Moreover, the petition must be judged as it is written. The Board may not
`
`overlook flaws in the petition or reformulate its challenges to enhance their
`
`suitability. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (“[I]t’s the
`
`petitioner, not the Director, who gets to define the contours of the proceeding.”);
`
`see also id. (“[T]he petitioner is master of its complaint . . .”); see also id. at 1353
`
`(forbidding the Board from “curat[ing]” the petition).
`
`Furthermore, because all of the challenges in this petition rely on
`
`conclusions of obviousness, the analyses set forth in the petition must include
`
`“some articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007)
`
`(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The challenger must
`
`supply the factual basis for the challenge and “may not resort to speculation,
`
`unfounded assumptions or hindsight reconstruction to supply deficiencies in its
`
`factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Additionally, in
`
`cases such as the present, where the obviousness challenges involve a modification
`
`or combination of teachings, the Petitioner must also establish that one skilled in
`
`the art would have had a reasonable expectation of success to make the
`
`modification or combination. Intelligent Bio-Sys., 821 F.3d at 1367-68. The
`
`IPR2021-00473
`
`Prelim. Response
`
`Page 16 of 50
`
`
`
`modification or combination must not “require a substantial reconstruction and
`
`redesign of the elements” in a reference or “a change in the basic principles under
`
`which [a reference] was designed to operate.” In re Ratti, 270 F.2d 810, 813
`
`(CCPA 1959). Nor can the modification or combination render a reference
`
`unsatisfactory or “inoperable for its intended purpose.” In re Gordon, 733 F.2d
`
`900, 902 (Fed. Cir. 1984).
`
`Also, the prior art must be considered for all that it teaches, and a prima
`
`facie case of obviousness may be rebutted “by showing that prior art teaches away
`
`from claimed invention in any material respect.” In re Peterson, 315 F.3d 1325,
`
`1331 (Fed. Cir. 2003).
`
`Last but not least, obviousness cannot be established by hindsight
`
`combination to produce the claimed i
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
