Trials@uspto.gov
`571-272-7822
`
` Paper 9
`
` Entered: August 13, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00473
`Patent 10,589,320 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571-272-7822
`
` Paper 9
`
` Entered: August 13, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00473
`Patent 10,589,320 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2021-00473
`Patent 10,589,320 B1
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–5 and 7–13 of U.S. Patent No. 10,589,320 B1 (Ex. 1001, “the
`’320 patent”). Paper 2 (“Pet.”). GUI Global Products, Ltd., D/B/A Gwee
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). Upon consideration of the Petition, the Preliminary Response, and
`the evidence of record, we determine that Petitioner has established a
`reasonable likelihood of prevailing with respect to the unpatentability of at
`least one claim of the ’320 patent. Accordingly, for the reasons that follow,
`we institute an inter partes review of claims 1–5 and 7–13 of the ’320
`patent.
`
`A. Related Matters
`The parties indicate this Petition is related to GUI Global Prods, Ltd.
`d/b/a Gwee v. Samsung Elecs. Co., No. 4:20-cv-02624 (E.D. Tex.) and GUI
`Global Prods, Ltd. d/b/a Gwee v. Apple, Inc., No. 4:20-cv-02652 (S.D.
`Tex.). Pet. 82; Paper 4, 1–2. The parties indicate that the ’320 patent is also
`the subject of a petition filed by Samsung Electronics Co., Ltd. in IPR2021-
`00338. Pet. 83; Paper 4, 2.
`
`
`B. The ’320 Patent
`The Specification of the ’320 patent describes how an apparatus may
`be used for cleaning view screens of electrical devices. See Ex. 1001, 2:19–
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`24. The ’320 patent aims to provide appropriate cleaning materials where
`the cleaning component can be carried on an electronic device case. Id. at
`1:56–2:15.
`In one embodiment, a cleaning component for cleaning a view screen
`of an electronic device is coupled to a first case of the electronic device
`using magnetic attractive force. Ex. 1001, 5:64–6:2, Fig. 1B. Figure 1B is
`illustrative and is reproduced below.
`
`
`Figure 1B, above, shows a side view of a cleaning component. Ex. 1001,
`6:29–30. Cleaning component 100 includes ferromagnetic or ferrimagnetic
`substrate 102 covered by cleaning material 101, such as a fabric or a cloth.
`Id. at 6:20–49.
`In another embodiment, a second case receives the cleaning
`component and also “functions to protect the primary case.” Ex. 1001, 6:2–
`7. Figure 3 is illustrative and is reproduced below.
`
`
`Figure 3, above, shows a computer case configured to receive a cleaning
`component. Ex. 1001, 4:45–46. Laptop 300 has rectangular indentation 302
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`dimensioned for receiving cleaning component 303 which has a magnet. Id.
`at 8:62–9:2.
`Figure 5A is also illustrative and is reproduced below.
`
`
`Figure 5A, above, shows “a lateral type phone case configured to receive a
`cleaning component.” Ex. 1001, 4:49–50. Case 500 includes body 504
`“which functions to hold a smart phone” and a lid having top 501, side 502,
`hinge 507, and cleaning component 503. Id. at 10:13–18.
`
`A cleaning component may be secured and adhered to a case utilizing
`“dimensional stability to increase the security with which the clean
`components are adhered to the case.” Ex. 1001, 11:44–49; Fig. 9. Figure 9
`is illustrative and is reproduced below.
`
`
`Figure 9, above, shows a cleaning component “employing a structural
`feature to enhance adhesion.” Ex. 1001, 4:60–61. Device 901 has raised
`section 902 which is configured to fit within recess 904 of cleaning
`component 903. Id. at 11:49–51.
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`In another embodiment, the cleaning component has a magnetic
`element that activates or deactivates a magnetic switch. Ex. 1001, 3:6–8.
`The ’320 patent describes “activating or deactivating a device having a
`magnetic switch” as a “secondary application[]” and that “cleaning devices”
`“may also be manufactured without a cleaning component for use with the
`secondary application.” Id. at code (57). Thus, a device “may or may not
`include cleaning capabilities but will include a rare earth magnet or
`magnets” for “additional functionality.” Id. at 16:41–45. Figure 24 is
`illustrative and is reproduced below.
`
`
`Figure 24, above, shows a tablet computer having a switching device. Ex.
`1001, 5:53–54. Tablet computer 2400 has switching device 2401 that “is
`selectively coupled to the front of the portable electronic device 2402
`outside of the view screen 2403.” Id. at 18:6–10. A “magnetic switch is
`normally disposed with the portable electronic device but is shown [in
`Figure 24] for illustration purposes (2404).” Id. at 18:10–12. The ’320
`patent describes that the switching component “may be picked up” and
`switching device “is either applied directly to the magnetic switch or applied
`to either side of the switch and then slid past it to activate or deactivate the
`portable electronic device.” Id. at 18:13–18.
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`Figure 25, reproduced below, shows a side view of the switching
`
`device in Figure 24. Ex. 1001, 5:55–56, 18:19–20.
`
`
`Figure 25, above, shows switching device 2401 having bottom surface 2501,
`top surface 2502, and ferromagnetic or ferrimagnetic substrate 2504
`disposed therebetween. Ex. 1001, 18:19–21, 23–25. Tab 2503 “on the top
`surface” facilitates manipulation of switching device 2401. Id. at 18:22–23.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–5 and 7–13 of the ’320 patent. Claim 1
`is an independent claim, and claims 2–5 and 7–13 depend, directly or
`indirectly, from claim 1. Claim 1 is reproduced below, with bracketed
`letters added to the limitations for reference purposes.
`1. A system comprising:
`[a] a portable switching device coupled to a portable
`electronic device;
`wherein:
`[b] the switching device and the electronic device are
`configured to selectively couple to each other employing
`magnetic force;
`[c] the switching device comprises a first case;
`[d] the electronic device comprises a second case and an
`electronic circuit that is responsive to the switching
`device;
`[e] a first magnet is fully disposed within the electronic
`device;
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`[f] the electronic device comprises at least one element
`selected from the group consisting of beveled edges,
`ridges, recessed areas, grooves, slots, indented shapes,
`bumps, raised shapes, and combinations thereof;
`configured to correspond to complementary1 surface
`elements on the switching device;
`[g] wherein the second case is decoupled from the first
`case by overcoming magnetic force the portable
`switching device is configured to activate, deactivate, or
`send into hibernation the portable electronic device;
`[h] the electronic device plays or pauses a remote device;
`[i] the switching device includes a lid and hinge attaching
`the lid to the switching device;
`[j] the lid is recessed to configure to the electronic
`device; and
`[k] when coupled, the first case functions to protect the
`second case.
`Ex. 1001, 21:38–22:18.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–5 and 7–13 are unpatentable based on
`the following grounds (Pet. 1):
`
`Claim(s) Challenged
`1, 2, 8, 9, 11
`2, 8
`
`35 U.S.C §
`103(a)2
`103(a)
`
`Reference(s)/Basis
`Gundlach,3 Lee4
`Gundlach, Lee,
`
`
`1 Correction provided in July 21, 2020 Certification of Correction.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’320 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
`3 U.S. Pat. Appl. Pub. No. US 2008/0132293 A1, published June 5, 2008
`(Ex. 1005, “Gundlach”).
`4 U.S. Pat. No. US 7,548,040 B2, issued June 16, 2009 (Ex. 1006, “Lee”).
`
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`Claim(s) Challenged
`
`
`35 U.S.C §
`
`11
`3, 7
`4, 5, 10, 12, 13
`1, 2, 8, 9, 11
`2, 8
`
`11
`
`3, 7
`
`4, 5, 10, 12, 13
`
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Nishikawa5
`Gundlach, Lee, Rosener6
`Gundlach, Lee, Brown7
`Gundlach, Lee, Mak-
`Fan8
`Gundlach, Lee, Kim9
`Gundlach, Lee, Kim,
`Nishikawa
`Gundlach, Lee, Kim,
`Rosener
`Gundlach, Lee, Kim,
`Brown
`Gundlach, Lee, Kim,
`Mak-Fan
`
`II. DISCUSSION
`
`A. Level of Ordinary Skill in the Art
`Relying on the testimony of Dr. Jerry Cooperstock, Petitioner
`proposes that a person of ordinary skill in the art at the time of the ’320
`patent would have had “a Bachelor’s degree in an academic area
`emphasizing electrical engineering, mechanical engineering, or a similar
`discipline, and at least two years of experience in the field working with
`electronic devices,” and a person of skill could have obtained similar
`experience with additional education or additional experience could
`
`
`5 U.S. Pat. Appl. Pub. No. US 2007/0145255 A1, published June 28, 2007
`(Ex. 1059, “Nishikawa”).
`6 U.S. Pat. Appl. Pub. No. US 2008/0076489 A1, published Mar. 27, 2008
`(Ex. 1050, “Rosener”).
`7 U.S. Pat. No. US 7,631,811 B1, issued Dec. 15, 2009 (Ex. 1008, “Brown”).
`8 U.S. Pat. Appl. Pub. No. US 2008/0012706 A1, published Jan. 17, 2008
`(Ex. 1010, “Mak-Fan”).
`9 U.S. Pat. Appl. Pub. No. US 2011/0117851 A1, published May 19, 2011
`(Ex. 1007, “Kim”).
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`compensate for educational deficiencies. Pet. 6 (citing Ex. 1003 ¶ 20).
`Although Patent Owner does not explicitly adopt Petitioner’s proposed claim
`construction, Patent Owner assumes these qualifications are used as
`discussed in its claim construction arguments. Prelim. Resp. 11. Mr.
`Stillerman, Patent Owner’s expert, additionally testifies that although Dr.
`Cooperstock’s qualifications for a person of skill are somewhat different
`than his, “nevertheless my opinions in This Declaration would still be the
`same if Dr. Cooperstock’s description of a person of ordinary skill in the art
`(POSITA) is used.” Ex. 2001 ¶ 32.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). The level of ordinary skill in the art is also reflected by
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001). To the extent necessary, and for purposes of this Decision, we
`adopt the assessment offered by Petitioner as it is consistent with the ’320
`patent and the asserted prior art.10
`
`Claim Construction
`B.
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). The claim
`
`
`10 The parties are encouraged to address the impact, if any, of differences in
`the level of qualifications on the obviousness analysis in any subsequent
`briefing.
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`construction standard includes construing claims in accordance with the
`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`According to Petitioner, “no express constructions are required to
`institute review and find the Challenged Claims unpatentable” at this time in
`the proceeding. Pet. 6. Patent Owner presents arguments on the
`construction of the terms “fully disposed within” and “selectively couple.”
`Prelim. Resp. 10–12.
`Patent Owner argues “[a] petition for IPR must include a statement
`regarding how each challenged claim is to be construed” and “[t]he present
`petition fails to meet this requirement inasmuch as no constructions are
`offered and no framework for evaluating the claims is proposed.” Prelim.
`Resp. 10. We decline to dismiss the Petition on this basis because there is a
`a “heavy presumption” that claim terms carry their ordinary and customary
`meaning, and Petitioner has manifested an intent to adopt the ordinary
`meaning of terms. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1366 (Fed. Cir. 2002); Pet. 27 n.3. Further, “[a] petitioner may
`include a statement that the claim terms require no express construction.”
`Consolidated Trial Practice Guide, 44. 11
`For purposes of this Decision, we need not expressly construe any
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`
`
`11 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`10
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`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`Principles of Law
`C.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`D. Asserted Obviousness of Claims 1, 2, 8, 9, and 11 Over
`Gundlach and Lee
`Petitioner contends that claims 1, 2, 8, 9, and 11 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Gundlach and Lee. Pet. 17–48. In
`support of its showing, Petitioner relies upon the declaration of Dr. Jeremy
`Cooperstock. Id. (citing Ex. 1003). In support of its Preliminary Response,
`Patent Owner relies upon the declaration of Mr. Robert Stillerman (Ex.
`2001).
`
`Gundlach
`1.
`Gundlach describes a device that operates as a wireless headset and
`can be stored and charged in a host device such as a laptop computer or a
`
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`cell phone. Ex. 1005 ¶ 2. Gundlach indicates a desire for mobility while
`managing peripherals that accompany a portable computer. Id. ¶ 3. To this
`end, Gundlach discloses that its device’s “relatively thin shape may allow
`the headset to be stored and charged in a portable cradle” and the “portable
`cradle may be a holder, clip, case or card that may fit inside a standard
`expansion slot.” Id. ¶ 56.
`Figure 1 is illustrative and is reproduced below.
`
`
`Figure 1, above, shows a schematic view of a wireless device in
`communication with a host device. Ex. 1005 ¶ 11. Wireless device 100
`includes housing 101 and earpiece 104. Id. ¶ 58. Housing 101 includes
`microphone 102, power source 111 such as a battery, and transceiver 106 for
`sending and receiving information 108 from host device 110 such as a
`computer or a cell phone. Id. Earpiece 104 includes speaker 105. Id.
`Gundlach’s wireless device may be held to a cradle by a magnet
`“which may be embedded in the cradle” and the wireless device “may
`include a ferromagnetic portion” such as another magnet which the magnet
`in the cradle may be attracted. Ex. 1005 ¶ 68. The wireless device may also
`
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`be held to the cradle by “mechanical means” such that the wireless headset is
`retained to the cradle. Id.
`Figure 18b is illustrative and is reproduced below.
`
`
`Figure 18b, above, shows a perspective view of a case for retaining a
`wireless device. Ex. 1005 ¶ 52. Wireless device 1800 is provided in a
`clamshell case that has recess 1846 “defined therein to accommodate the
`wireless device.” Id. ¶ 80.
`
`Lee
`2.
`Lee describes a wireless battery for charging a wireless headset. Ex.
`1006, 3:21–22. Lee indicates that wireless headsets require their own power
`source such that many use rechargeable batteries which require a method for
`recharging. Id. at 1:25–29. Lee thus provides a method for wirelessly
`charging a battery in a wireless headset. Id. at 3:32–33.
`
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`Figure 5 is illustrative and is reproduced below.
`
`
`Figure 5 shows a block diagram for wireless battery charging of a wireless
`headset. Ex. 1006, 2:14–15. Power source 200 provides energy via
`conductive means 202 to power adapter 201. Id. at 3:32–35. Power adapter
`201 provides power to wireless headset apparatus 204 via non-conductive
`means 203, which is “typically inductive coupling.” Id. at 3:35–37. Lee
`indicates that energy can be transferred to a wireless headset via inductive
`coupling to an energy collection element which is then transferred to a
`battery via a battery charging circuit. Id. at 4:27–31. A headset circuit that
`is powered by the battery provides a drive signal to a transducer, in which
`the transducer has a dual purpose of producing sound and “receiving
`magnetic energy via [a] wireless magnetic field.” Id. at 4:32–39.
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`Figure 12 is illustrative and is reproduced below.
`
`
`Figure 12 shows a block diagram for wireless battery charging of a wireless
`headset using a coil of a transducer as an energy collection element. Ex.
`1006, 2:34–37. Energy is transferred to wireless headset apparatus 460 via
`inductive coupling 461 to energy collection element 465 (transducer coil)
`which is then transferred to battery 463 via battery charging circuit 462. Id.
`at 4:53–66. Switch 470, controlled by switch control signal 471, is closed
`when in a charging mode and is open in a non-charging mode. Id. at 5:13–
`16. When switch 470 is open, the transducer coil is isolated from the battery
`charging circuit such that the wireless headset is in a non-charging mode.
`Id. at 5:16–18. Preferably, switch 470 “can sense” when headset apparatus
`460 is near a power adapter so that it automatically closes or opens. Id. at
`5:30–34. A power adapter can provide charging, physical protection, and
`storage of the headset apparatus. Id. at 6:35–37.
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`3. Discussion
`
`a. Claim 1
`The Petition asserts that the combination of Gundlach and Lee teaches
`
`all the limitations of claim 1. Pet. 12–42. Below we consider the claim 1
`limitations in turn.
`
`i. Preamble
`Petitioner asserts that, to the extent that the preamble is limiting,
`
`Gundlach describes a system including a “wireless mono or stereo headset”
`and “a portable cradle,” such as a “case” where the headset is “stored and
`charged.” Pet. 17 (citing Ex. 1005 ¶¶ 55–56; Ex. 1003 ¶ 46). Petitioner
`asserts that this combination is consistent with a person of ordinary skill’s
`understanding of a system. Id. (citing Ex. 1003 ¶ 47). Patent Owner
`presents no arguments specifically related to the preamble. See generally
`Prelim. Resp. We have reviewed the evidence and argument and on this
`record we determine that Petitioner has presented sufficient evidence that
`Gundlach teaches a “system.”12
`ii. Limitations 1[a], 1[b]
`(1) Petitioner’s Assertions
`Petitioner asserts that Gundlach teaches a portable charging case
`
`(portable switching device) coupled to a wireless headset (portable
`electronic device), as shown in annotated Figure 18a, reproduced below.
`Pet. 18 (citing Ex. 1003 ¶ 48).
`
`
`12 We need not determine whether the preamble of claim 1 is limiting
`because Petitioner has shown that the prior art teaches the preamble. See
`Nidec, 868 F.3d at 1017.
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`In annotated Figure 18b, above, which is a perspective view of a case
`including a retained wireless device, Petitioner maps the headset to the
`claimed “electronic device” and the case to the claimed “switching device.”
`Pet. 18; Ex. 1005 ¶ 52. Petitioner asserts that Gundlach’s wireless headset is
`a well-known type of portable electronic device. Pet. 18 (citing Ex. 1003
`¶ 49; Exs. 1024, 1027).
`
`Petitioner asserts that Gundlach’s case in combination with Lee’s
`inductive charging is a switching device because Gundlach teaches a case,
`which is one form of a “portable cradle,” and Lee describes an inductive
`charging case that activates a charging switch in a wireless headset. Pet. 19
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`(citing Ex. 1005 ¶ 56; Ex. 1006, 5:12–40, 6:31–38; Ex. 1003 ¶ 50); see also
`Pet. 33–37.
`
`Petitioner asserts that Gundlach teaches a variety of embodiments
`featuring “a wireless mono or stereo headset” that is “stored and charged” in
`a “portable cradle.” Pet. 12 (citing Ex. 1005 ¶ 55). Petitioner contends that
`Gundlach is “largely unconcerned with implementation details” for
`charging, so a person of ordinary skill in the art “would have seen a need for
`elaboration and description of design options” and would have looked to
`Lee. Id. (citing Ex. 1005 ¶¶ 69, 73, 79–80; Ex. 1003 ¶ 35). Petitioner also
`argues that a person of ordinary skill in the art would have been motivated to
`pursue the combination of Gundlach with Lee because a person of ordinary
`skill in the art: 1) would have looked to Lee for details on charging in view
`of Gundlach’s deficient descriptions; 2) would have recognized that
`inductive charging is a suitable alternative to conductive charging that was
`known to produce similar results; 3) would have appreciated benefits of
`inductive charging such as enhanced reliability; 4) would have appreciated
`that Lee’s inductive charging solution was consistent with Gundlach’s goal
`of providing a compact form factor; and 5) would have viewed Lee’s
`inductive charging solution as providing interoperability whereas the
`wireless headset could be recharged using other types of chargers beyond the
`clamshell case without a penalty of additional hardware. Id. at 12–15.
`
`Petitioner alleges that the combination of Gundlach and Lee also
`teaches the claim limitations by teaching that the switching device is both
`inductively and physically coupled to the electronic device. Pet. 22.
`Petitioner asserts that a person of ordinary skill in the art would have
`understood that the inductive coupling between the wireless headset and
`charging case employs magnetic force. Id. (citing Ex. 1003 ¶ 54). Petitioner
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`also relies upon Gundlach’s description of a cradle embodiment where a
`wireless headset is secured by both mechanical means and the attractive
`magnetic force between embedded magnets. Id. at 22–23 (citing Ex. 1005
`¶¶ 67–68, Figs. 10a–10c; Ex. 1003 ¶ 55). Petitioner asserts that a person of
`ordinary skill in the art would have been motivated to incorporate the
`embedded magnets of Figures 10a–10c’s cradle embodiment into the Figures
`18a–18b’s clamshell embodiment because: 1) Gundlach discloses that a
`“case” is a type of “portable cradle;” 2) inclusion of embedded magnets in a
`clamshell case is the use of a known technique to improve a similar device
`in the same way; and 3) this would offer predictable advantages to promote
`retention of the wireless headset if the case were dropped. Id. at 24–25.
`
`At this juncture, we determine that Petitioner has provided sufficient
`evidence that the combination of Gundlach and Lee teaches limitations 1[a]
`and 1[b] and sufficient rationale to combine the references has been
`provided.
`
`(2) Patent Owner’s Contentions and Analysis
`(a) Rationale to Combine
`Patent Owner argues that Petitioner has not provided sufficient
`
`motivation for why one of ordinary skill in the art would have combined
`Gundlach with Lee. See Prelim. Resp. 24–36. Patent Owner asserts that a
`person of ordinary skill in the art would not have recognized that an
`inductive charging system is a suitable alternative to conductive charging via
`electronic contacts. Id. at 24. On this issue, Patent Owner argues that
`Gundlach’s disclosures are more than adequate to appraise a person of
`ordinary skill of what was required for implementation. Id. (citing Ex. 2001
`¶¶ 87–93, 124). Patent Owner points to some of Gundlach’s disclosures and
`Mr. Stillerman’s testimony in support of its arguments. Id. at 24–25 (citing
`
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`
`Ex. 1005 ¶¶ 66, 69, Figs. 3b, 9a, 9b, 11a; Ex. 2001 ¶¶ 72–74, 87–93, 124).
`At this juncture, although we agree that Gundlach discloses some
`information on device recharging (see Ex. 1005 ¶ 81), it does not have a
`discussion on how the headset’s charging circuitry responds when placed in
`the cradle for charging. Pet. 12; Ex. 1003 ¶ 35. Thus, on this record, there
`is support for Petitioner’s contention that one of ordinary skill in the art
`would have looked for supplemental information, such as that contained in
`Lee. See Pet. 12; Ex. 1003 ¶ 35.
`
`At this juncture, we also credit Petitioner’s rationale for other reasons,
`such as a person of skill’s recognition of Lee’s inductive charging as a
`suitable alternative, which provides enhanced reliability and also allows
`recharging using other types of chargers, such as a charging pad. See Pet.
`13–14.
`
`On the issue of whether Lee is a suitable alternative, Patent Owner
`argues that one of ordinary skill in the art “would not have considered
`inductive charging as disclosed by Lee to provide benefits over conductive
`charging” because at the time of the filing of the ’320 patent, wireless
`charging of devices had been little adopted, trade literature at the time
`criticized its use, and it was a “complex” replacement for simple conductive
`charges. Prelim. Resp. 26–27 (citing Ex. 2001 ¶¶ 89, 92–93; Ex. 2011, 1)
`Thus, according to Patent Owner, one of skill in the art would have
`recognized that “there would be little or nothing to be gained by” making the
`modification. Id. Patent Owner additionally asserts that wireless charging is
`less efficient, more costly, generates heat, requires precise alignment of
`coils, makes the device unusable when charging, and results in a risk of
`emitted radiation. Id. at 27–28 (citing Ex. 2001 ¶¶ 94–96). Mr. Stillerman
`testifies that one of ordinary skill in the art would not have been motivated
`
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`IPR2021-00473
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`
`to modify Gundlach to “exchang[e] a proven conductive charging solution
`for inductive charging.” Ex. 2001 ¶ 94.
`
`The evidence of record provides support that there were products
`commercially available in the market that inductively charged portable
`devices, so inductive charging was an available option. See Ex. 1003 ¶¶ 40–
`41; Ex. 1020; Ex. 1021; Ex. 1022. Dr. Cooperstock references the
`Powermat and Touchstone inductive chargers, which were available, and
`testifies that in a design process a person of skill who is “developing a
`portable device and associated charger—here, the wireless headset and
`charging case provided by Gundlach—would have contemplated an
`inductive charging solution like Lee’s.” Ex. 1003 ¶ 41. At this juncture, we
`credit Dr. Cooperstock’s testimony in view of the availability of inductive
`charging products to consumers. See KSR, 550 at 417 (“When a work is
`available in one field of endeavor, design incentives and other market forces
`can prompt variations of it, either in the same field or a different one. If a
`person of ordinary skill can implement a predictable variation, § 103 likely
`bars its patentability.”). And, although there may have been disadvantages
`of inductive charging, these are weighed against potential advantages. See
`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
`(stating that “a given course of action often has simultaneous advantages and
`disadvantages, and this does not necessarily obviate motivation to
`combine”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
`1349, n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
`expense of another benefit . . . should not nullify its use as a basis to modify
`the disclosure of one reference with the teachings of another. Instead, the
`benefits, both lost and gained, should be weighed against one another.”).
`We turn to Petitioner’s alleged benefits of the combination.
`
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`Petitioner asserts that there would be an increase in Gundlach’s
`
`reliability by combining it with Lee to use inductive charging because, as
`Dr. Cooperstock testifies, there can be failure caused by fatigue and
`corrosion of electrical contact elements, and particularly for wireless
`headsets, which are issues recognized by Lee and other literature. Pet. 14–
`15 (Ex. 1003 ¶¶ 42–43; Ex. 1006, 1:62–2:2; Ex. 1023, 1:39–60 (Flowerdew
`patent)). Petitioner argues therefore that eliminating contact elements and
`using inductive charging would improve reliability. Pet. 14; Ex. 1003 ¶ 42.
`Patent Owner argues that Gundlach describes forming a power adapter “in a
`manner that may reduce the stress on the electrical connection between the
`adapter and wireless device,” so the disclosed charging solutions “were both
`adequate and reliable, and the alleged reliability gap that Petitioner relies
`upon does not actually exist.” Prelim. Resp. 28–29 (citing Ex. 1005 ¶ 66).
`Mr. Stillerman testifies that electronic devices had employed direct
`conductive charging connections without problems for years and Gundlach’s
`teachings indicate that connections could be made in a way that avoided
`reliability issues. Ex. 2001 ¶ 95. Mr. Stillerman further testifies that Dr.
`Cooperstock’s reliance on the Flowerdew reference is misplaced because
`Flowerdew’s surface contacts are spring-loaded surface wiping contacts,
`which Gundlach does not use. Id. ¶ 96 (citing Ex. 1003 ¶ 43; Ex. 1023,
`1:39–60). Mr. Stillerman also testifies that inductive charging required
`precise alignment of the charging coil and therefore it would be a less
`reliable option than conductive charging. Id. ¶ 95.
`
`On the issue of alleged reliability improvement, the record indicates
`that Gundlach was cognizant of potential problems with the electrical
`contacts for recharging the wireless device, even with the use of USB
`charging, and sought to mitigate them by specific design, i.e. sliding or
`
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`latching connections between the wireless device and the USB charger. Ex.
`1005 ¶ 66. Gundlach’s disclosures do not indicate whether some potential
`problems could remain with the electrical connections, even with its
`alternative designs, and Lee identifies the issue of corrosion, which may be
`an issue with electrical contacts. See id.; Ex. 1006, 1:62–2:2. So at least on
`this record, there is support for Petitioner’s contentions on this issue.
`
`Petitioner also alleges that the combination of Lee’s inductive
`charging in Gundlach would result in a compact form factor because, for
`example, a single coil could be used for both audio transmission and
`inductive charging. Pet. 15 (c
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