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`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.
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`IPR2021-00473
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`Prelim. Response
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`Page i
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`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
`
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`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
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`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
`
`
`
`
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`IPR2021-00473
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`Prelim. Response
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`Page iv
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`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/)
`
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`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
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`Page vi
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`
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`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
`
`
`
`
`
`
`
`
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`IPR2021-00473
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`Page vii
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`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENTS
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`Petitioner challenges the patentability of claims 1-5 and 7-13 of U.S. Patent
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`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
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`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
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`understood to employ a solution that was pervasive in the art and the POSITA
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`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
`
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`Petitioner to replace the simple conductive contacts (e.g., contacts 326) that
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`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.
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`Further, adopting Lee’s wireless charging arrangement would not promote
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`or be consistent with Gundlach’s goal of providing a compact form factor. The
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`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
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`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
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`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
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`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
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`FIGs. 24 and 25, reproduced below, includes magnets 2504 to activate, deactivate,
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`or hibernate a tablet computer 2400. Ex. 1001 at 18:6-10.
`
`
`
`
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`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
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`102); FIGs. 2A-2C (showing a square switching device 200 having magnet 202);
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`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.
`
`
`
`
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`
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`Aspects of disclosed embodiments of the invention further comprise
`
`switching devices with beveled edges, id. at 8:33-38; 18:62-67, and switching
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`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.
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`Aspects of disclosed embodiments of the invention further comprise a
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`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.
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`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
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`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
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`claim in a civil action under 35 U.S.C. § 282(b) to all IPR petitions filed on or after
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`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
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`ferromagnetic or ferrimagnetic substrate (202).”); 18:23-25 (referring to FIG. 25,
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`“Disposed within the switching device is a ferromagnetic or ferrimagnetic
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`substrate (2504).”). Hence, the POSITA would understand the term “fully disposed
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`within” to mean “entirely contained within.” See, e.g., Ex. 2001 at ¶ 62.
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`Claim 1 further recites, inter alia, “the switching device and the electronic
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`device are configured to selectively couple to each other employing magnetic
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`force.” Ex. 1001 at 21:42-44. According to the ’320 patent,
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`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.
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`Id. at 17:63 – 18:5. Accordingly, the term “selectively couple” as used in the
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`claims should be construed as “adheres.” Ex. 2001 at ¶ 63.
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`
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`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.
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`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
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`the United States District Court for the Southern District of Texas. The ’320 patent
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`is also at issue in IPR2021-00338, presently pending. Related proceedings are IPRs
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`2020-00335, 2020-00336, 2020-00337, 2021-00470, 2021-00471, and 2021-
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`00472.
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`
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`D. The IPR Petition
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`The petition challenges the patentability of claims 1-5 and 7-13, Pet. at 1, of
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`which claim 1 is the sole independent claim. Ex. 1001 at 21:38 – 22:48.
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`Altogether, the petition alleges five grounds for unpatentability of the challenged
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`claims:
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`Claims Challenged
`
`Statutory ground
`for challenge
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`References cited in support of
`challenge
`
`1, 2, 8, 9, and 11
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`35 U.S.C. § 103
`
`2 and 8
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`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).
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`3 and 7
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`35 U.S.C. § 103
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`4, 5, 10, 12, and 13
`
`35 U.S.C. § 103
`
`1, 2, 8, 9, and 11
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`35 U.S.C. § 103
`
`2 and 8
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`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.
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`4, 5, 10, 12, and 13
`
`35 U.S.C. § 103
`
`Gundlach, Lee, Kim, and Mak-
`Fan.
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`Pet. at 1-2.
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`
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`III. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY CHALLENGED CLAIM IS
`UNPATENTABLE
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`“The Director may not authorize an inter partes review [trial] to be instituted
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`unless the Director determines that the information presented in the petition . . .
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`shows that there is a reasonable likelihood that the petitioner would prevail.” 35
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`U.S.C. § 314(a). At a minimum, the reasonable-likelihood-of-prevailing standard
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`“effectively requires the petitioner to present a prima facie case justifying a
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`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
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`challenge, as the petitioner cannot cure defects in a petition during trial. As
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`explained by the Federal Circuit:
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`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.
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed.
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`Cir. 2016) (emphases added).
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`Moreover, the petition must be judged as it is written. The Board may not
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`overlook flaws in the petition or reformulate its challenges to enhance their
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`suitability. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (“[I]t’s the
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`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
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`(forbidding the Board from “curat[ing]” the petition).
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`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
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`modification or combination must not “require a substantial reconstruction and
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`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
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`(CCPA 1959). Nor can the modification or combination render a reference
`
`unsatisfactory or “inoperable for its intended purpose.” In re Gordon, 733 F.2d
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`900, 902 (Fed. Cir. 1984).
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`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,
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`1331 (Fed. Cir. 2003).
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`Last but not least, obviousness cannot be established by hindsight
`
`combination to produce the claimed i