Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 20
`Date: May 23, 2024
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASUSTEK COMPUTER INC., ASUS GLOBAL PTE. LTD.,
`DELL TECHNOLOGIES INC., DELL INC., and HP INC.,
`Petitioners,
`v.
`LITL LLC,
`Patent Owner.
`
`IPR2024-00532
`Patent 8,289,688 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, BRIAN D. RANGE, and DAVID COTTA,
`Administrative Patent Judges.
`COTTA, Administrative Patent Judge
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 20
`Date: May 23, 2024
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASUSTEK COMPUTER INC., ASUS GLOBAL PTE. LTD.,
`DELL TECHNOLOGIES INC., DELL INC., and HP INC.,
`Petitioners,
`v.
`LITL LLC,
`Patent Owner.
`
`IPR2024-00532
`Patent 8,289,688 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, BRIAN D. RANGE, and DAVID COTTA,
`Administrative Patent Judges.
`COTTA, Administrative Patent Judge
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2024-00532
`Patent 8,289,688 B2
`
`
`
`I.
`
`INTRODUCTION
`ASUSTeK Computer Inc., Asus Global Pte. Ltd., Dell Technologies
`Inc., Dell Inc., and HP Inc. (collectively, “Petitioner”) filed a corrected
`Petition to institute an inter partes review (“IPR”) of claims 1–10 and 23
`(the “challenged claims”) of U.S. Patent No. 8,289,688 B2 (“the ’688
`patent”). Paper 16 (“Petition” or “Pet.”).1 LiTL LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). With our prior
`authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`Response (Paper 18) and Patent Owner filed a Sur-reply (Paper 19).
`Under 35 U.S.C. § 314(a), inter partes review may not be instituted
`unless the Petition “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.” Petitioner has not established a reasonable likelihood of
`prevailing on its assertion that the challenged claims are unpatentable based
`on the grounds advanced here. Thus, for reasons explained below, we deny
`institution of inter partes review of claims 1–10 and 23 of the ’688 patent.
`Real Parties-in-Interest
`A.
`Petitioner identifies ASUSTeK Computer Inc., Asus Global Pte. Ltd.,
`Dell Technologies Inc., Dell Inc., and HP Inc. as the real parties-in-interest.
`Pet. at xii. Patent Owner identifies itself as the real party-in-interest.
`Paper 7, 1.
`
`
`1 With our permission, Petitioner filed a Corrected Petition to correct the
`cover page of the originally-filed Petition (Paper 1), which incorrectly
`captioned the case. All references herein to the Petition are to the Corrected
`Petition (Paper 16), which we understand to be substantively identical to the
`originally-filed Petition.
`
`2
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`IPR2024-00532
`Patent 8,289,688 B2
`Related Matters
`B.
`The parties identify as related matters the following lawsuits
`involving the ’688 patent: LiTL LLC v. Dell Technologies Inc. and Dell Inc.,
`No. 1:23-cv-00121-RGA (D. Del.); LiTL LLC v. HP Inc., No. 1:23-cv-
`00120-RGA (D. Del.); LiTL LLC v. ASUSTeK Computer Inc., et al., No.
`1:23-cv-00122-RGA (D. Del.); and LiTL LLC v. Lenovo (United States), Inc.
`et al., No. 1:20-cv-00689 (D. Del.). Pet. at xii; Paper 7, 2.
`The parties identify the following administrative matters involving
`the ’688 patent: IPR2021-00681 (not instituted); Ex parte Reexamination
`No. 90/015,035. Pet. at xii; Paper 7, 1.
`Patent Owner also identifies the following proceedings that challenge
`the patents related to the ’688 patent: IPR2021-00800; IPR2021-00822;
`IPR2021-00786; IPR2021-00821; IPR2024-00404; IPR2024-00480;
`IPR2024-00481; IPR2021-01011; IPR2024-00454; IPR2024-00455;
`IPR2024-00456; IPR2024-00457; IPR2024-00458. Paper 7, 1–2. In
`addition, Patent Owner indicates that patents related to the ’688 patent were
`subject to the following reexamination proceedings: 90/015,025;
`90/014,965; and 90/014,958. Id.
`The ’688 Patent
`C.
`The ’688 patent is titled “Portable Computer with Multiple Display
`Configurations.” Ex. 1001, code (54) (capitalization omitted). The ’688
`patent issued from an application filed July 10, 2008. Id. at code (22).
`The ’688 patent claims priority to a provisional application filed April 1,
`2008. Id. at code (60).
`According to the ’688 patent, conventional portable computers
`commonly have a “clam-shell” configuration with a base and a display
`component pivotably coupled by a hinge. Id. at 1:19–27. The ’688 patent
`
`3
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`IPR2024-00532
`Patent 8,289,688 B2
`describes a “portable computer that is configurable between a plurality of
`display modes including a laptop mode . . . and an easel mode.” Id. at code
`(57). The portable computer includes a hinge that “allows the display
`component to be rotated about an axis along an interface between the display
`component and the base to configure the portable computer between a closed
`position, the laptop mode, and the easel mode.” Id.
`Figure 1 of the ’688 patent, reproduced below, illustrates a portable
`computer in a “laptop” configuration. Id. at 4:40–42.
`
`
`Figure 1, above illustrates an example of a portable computer. Id. at
`6:24–25. Portable computer 100 includes display component 102 and base
`104. Id. at 6:25–28. “The display component 102 is pivotably coupled to
`the base 104 by a hinge assembly (not shown)” that “allows the display
`component 102 to be rotated (or tilted) about a longitudinal axis 101 running
`along an interface between the display component and base 104.” Id. at
`
`4
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`IPR2024-00532
`Patent 8,289,688 B2
`6:28–38.
`Figure 4 of the ’688 patent, reproduced below, illustrates a portable
`computer in an “easel” configuration. Id. at 4:47–48.
`
`Figure 4, above, illustrates “portable computer 100 configured into an easel
`mode.” Id. at 7:48–49. Portable computer 100 includes display component
`102 and base 104. Id. at 7:49–52. As shown if Figure 4, portable computer
`100 is converted from a laptop mode to an easel mode by folding away from
`base 104, such that “the base 104 and the display component 102 form an
`inverted ‘V’ shape with the bottom of the base and the back of the display
`component fac[ing one] another.” Id. at 7:49–57.
`
`
`
`5
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`IPR2024-00532
`Patent 8,289,688 B2
`Figure 7A of the ’688 patent, reproduced below, illustrates a portion
`of a portable computer in the laptop configuration. Id. at 4:53–55.
`
`Portable computer 100 in Figure 7A includes display component 102, base
`104, and hinge assembly 138 that allows the portable computer to be
`configured into either a laptop or easel mode. Id. at 9:19–23. “[T]he hinge
`assembly 138 accommodates 0–320 degrees of rotation, allowing a
`minimum angle . . . of 40 degrees.” Id. at 9:23–26.
`Portable computer 100 also includes an “orientation sensor . . . that is
`configured to detect a relative orientation of the display component 102 and
`the base component 104.” Id. at 9:30–34. “[T]he orientation sensor may be
`an accelerometer incorporated the base component 104” or into “hinge
`assembly 138.” Id. at 9:34–38. The orientation sensor may be used to
`translate movement of the hinge into information about the “relative
`orientation of the display component 102 and the base component 104.” Id.
`at 9:36–41.
`
`6
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`IPR2024-00532
`Patent 8,289,688 B2
`D. Challenged Claims
`The ’688 patent includes 32 claims, of which claims 1–10 and 23 are
`challenged in the Petition. Claim 1 is illustrative of the subject matter of the
`challenged claims and is reproduced below.
`1.
`A portable computer configurable between a plurality of
`display modes including a closed mode, a laptop mode and an
`easel mode, the portable computer comprising:
`a single display component including a display screen;
`a base including a keyboard;
`a hinge assembly at least partially housed within the base
`and the display component configured to pivotably couple the
`display component to the base, wherein the hinge assembly
`defines a single longitudinal axis running along an interface
`between the display component and the base, and wherein the
`display component and the base are rotatable about the single
`longitudinal axis;
`wherein, in the closed mode, the display screen is
`disposed substantially against the base;
`wherein rotating either the single display component or
`the base by an operator about the single longitudinal axis up to
`approximately 180 degrees from the closed mode configures the
`portable computer into the laptop mode, wherein in the laptop
`mode the single display component is oriented towards the
`operator and the keyboard is oriented to receive input from the
`operator;
`wherein rotating either the single display component or
`the base by the operator about the single longitudinal axis
`beyond approximately 180 degrees from the closed mode
`configures the portable computer into the easel mode; and
`wherein in the easel mode the single display component
`is oriented facing the operator with the keyboard oriented away
`from the operator.
`Ex. 1001, 17:10–38 (emphasis added to reflect disputed limitation).
`
`
`7
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`IPR2024-00532
`Patent 8,289,688 B2
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that claims 1–10 and 23 would have been
`unpatentable on the following grounds:
`Reference(s)
`Claim(s) Challenged
`35 U.S.C. §2
`Lane3, Misawa4
`1–3, 5–7
`103(a)
`Lane, Misawa, Hisano5
`3–7, 23
`103(a)
`Lane, Misawa, Dunko6
`8, 9
`103(a)
`Lane, Misawa, Hisano, Dunko
`8, 9
`103(a)
`Lane, Misawa, Forstall7
`8, 9
`103(a)
`Lane, Misawa, Hisano, Forstall
`8, 9
`103(a)
`Lane, Misawa, Nako8
`10
`103(a)
`Petitioner relies on the declaration of Dr. Andrew Wolfe, Ph.D.
`
`(Ex. 1004).
`II. ANALYSIS OF GROUNDS 1–7
`Legal Principles
`A.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. The ’688 patent was
`filed before this date. See Ex. 1001, code (22). For the purposes of this
`Decision, we apply the pre-AIA version of 35 U.S.C. §103.
`3 Lane, WO 1995/24007 A1, publ. Sept. 8, 1995 (Ex. 1017 (“Lane”)).
`4 Misawa, US 2005/0134717 A1, publ. June 23, 2005 (Ex. 1016
`(“Misawa”)).
`5 Hisano et al., US 2006/0034042 A1, publ. Feb. 16, 2006 (Ex. 1018
`(“Hisano”)).
`6 Dunko, US 7,791,594 B2, issued Sept. 7, 2010 (Ex. 1019 (“Dunko”)).
`7 Forstall et al., US 7,978,176 B2, issued July 12, 2011 (Ex. 1020
`(“Forstall”)).
`8 Nako et al., US 2004/0212602 A1, publ. Oct. 28, 2004 (Ex. 1021
`(“Nako”)).
`
`8
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`IPR2024-00532
`Patent 8,289,688 B2
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)).
`To show obviousness under 35 U.S.C. § 103(a), the differences
`between the subject matter sought to be patented and the prior art must be
`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
`that 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) secondary
`considerations of nonobviousness, when presented. Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`Level of Ordinary Skill in the Art
`B.
`Petitioner describes a person of ordinary skill in the art (“POSA”) as
`follows:
`A person of ordinary skill in the art at the time of the ’688 Patent
`(“POSA”) would have had a bachelor’s degree (or equivalent) in
`electrical engineering, computer engineering, computer science,
`or a comparable subject, and two to three years of experience in
`the design and architecture of laptop computers and other
`portable electronic devices. Alternatively, a POSA would have
`had an advanced degree (or equivalent) in electrical engineering,
`computer engineering, computer science, or a comparable
`subject and one year of post-graduate research or work
`experience in the design and architecture of laptop computers
`and other portable electronic devices. A POSA would have been
`familiar with the structural hardware aspects of laptop computers
`and other portable electronic devices, as well as designs of user
`interfaces employed and displayed by computer operating
`
`9
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`IPR2024-00532
`Patent 8,289,688 B2
`systems and their organization of content and functionality. A
`POSA could have acquired similar skills and knowledge by other
`means.
`Pet. 7 (citing Ex. 1004 ¶ 15). Patent Owner does not dispute Petitioner’s
`identification of the person of ordinary skill in the art. See generally Prelim.
`Resp. As Petitioner’s description of the person of ordinary skill is consistent
`with the subject matter of the ’688 patent and with the prior art of record, we
`apply it for purposes of this decision. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`Claim Construction
`C.
`We interpret a claim “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe
`the claims “in accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id.
`Petitioner proposes constructions for several claim terms. Pet. 8–13.
`Patent Owner does not identify any claims terms as needing construction.
`See generally Prelim. Resp. We do not find it necessary to construe any
`claim terms in order to reach our decision. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and
`only to the extent necessary to resolve the controversy’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)));
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`
`10
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`IPR2024-00532
`Patent 8,289,688 B2
`(“[C]laim terms need only be construed ‘to the extent necessary to resolve
`the controversy’”).
`Analysis
`D.
`Each of the challenged claims requires a “hinge assembly” that
`“defines a single longitudinal axis running along an interface between the
`display component and the base” where “the display component and the base
`are rotatable about the single longitudinal axis.” Ex. 1001, 17:15–21 (the
`“single axis limitation”). In each of its seven grounds, Petitioner asserts that
`this claim limitation would have been obvious because “a POSA would have
`been motivated and able to adapt the portable computer 10 of Lane to use a
`single-pivot hinge like the hinge 20 taught in Misawa.” Pet. 29; see also id.
`at 32 (“In the portable computer 10 of Lane modified to implement a single-
`pivot hinge like the hinge 20 of Misawa, the hinge would define a ‘single
`longitudinal axis.’”). Our decision turns on whether Petitioner has carried its
`burden to establish a reasonable likelihood of prevailing on its assertion that
`the POSA would have been motivated to use a single-pivot hinge, like that
`disclosed in Misawa, in Lane’s computer, as proposed in the Petition. For
`the reasons discussed below, we find that Petitioner has not carried its
`burden.
`
`The Asserted Prior Art
`
`We begin by considering the disclosures of the prior art that Petitioner
`relies upon as rendering the single-axis limitation obvious. We focus on the
`disclosures of Lane and Misawa because each of Petitioner’s seven grounds
`relies upon Lane and Misawa as meeting the single-axis limitation.
`Lane (Ex. 1017)
`a)
`Lane is titled “Modular, Reconfigurable Devices.” Ex. 1017, code
`(54). Lane discloses that its “invention relates to modular devices and more
`
`11
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`IPR2024-00532
`Patent 8,289,688 B2
`particularly to reconfigurable portable computers and other electronic or
`similar apparatus.” Id. at 1:3–6.
`Lane provides background for its invention by describing the
`deficiencies of existing electronic devices. According to Lane, “[c]onsumers
`. . . appear eager for access to reconfigurable components to meet the
`requirements of the varied locations and situations in which the components
`operate,” but existing electronic devices “can neither be decoupled nor
`reconfigured, . . . and thus fail to address these and other consumer needs.”
`Id. at 1:25–31. As examples of existing devices that fail to meet consumer
`needs, Lane specifically identifies computers disclosed in two different
`patents: U.S. Patent No. 5,103,376 (“Blonder”) and U.S. Patent No.
`5,034,858 (“Kawamoto”). Lane criticizes Blonder’s computer because
`“neither the keyboard nor display is detachable from the remainder of the
`device, and their reconfigurability is severely limited.” Id. at 2:8–11. Lane
`similarly criticizes Kawamoto’s computer because its “display cannot be
`detached from the main body.” Id. at 2:18–20. In addition, Lane explains
`that “neither the Blonder nor [the] Kawamoto patent contemplates rotation
`about two adjacent, parallel axes to permit reconfiguration of components
`throughout approximately 0-360°.” Id. at 2:20–24.
`After describing the deficiencies of existing electronic devices, Lane
`describes its own invention: “The present invention, by contrast, provides a
`modular, reconfigurable system designed to permit mechanical (and, if
`necessary, electrical) coupling and decoupling of devices or components of
`varying types.” Id. at 2:26–30. According to Lane, its “innovative system
`also is adapted to rotate about at least two adjacent, parallel axes” which
`“permits components to be repositioned about each other throughout
`approximately 0-360°.” Id. at 3:5–9. Lane identifies several advantages of
`
`12
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`IPR2024-00532
`Patent 8,289,688 B2
`its decouplable biaxial hinge, including that it allows components to be
`upgraded without having to purchase an entirely new system, that it allows
`users to “‘mix and match’ electronic or other devices and components as
`needed,” and that it allows the use of a display in multiple formats (e.g.,
`standard laptop format, tablet format, and telecommunications monitor
`format). Id. at 2:30–3:4, 3:7–14. Lane concludes the “Summary of the
`Invention” section of its disclosure by listing three specific “object[s] of the
`present invention:” 1) “to provide a system composed of reconfigurable
`modules,” 2) “to provide a modular system permitting coupling and
`decoupling of devices and components,” and 3) “to provide a system having
`two adjacent, parallel axes of rotation to facilitate component rotation about
`approximately 0–360°.” Id. at 3:15–25.
`
`To achieve these objectives, Lane discloses that its invention may
`include one or more connectors to connect a first and second module. Id.
`at 6:7–8. Figures 3 and 4, reproduced below, depict “connector 54 [i.e., the
`hinge] of [Lane’s] invention.” Id. at 6:25–26.
`
`
`Figure 3 provides a “fragmentary perspective view” and Figure 4 provides a
`“cross-sectional view” of a “connector of [Lane’s] invention.” Id. at 4:1–4.
`
`13
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`Patent 8,289,688 B2
`“As shown in FIG. 3, . . . first module 14 [e.g., a keyboard] defines a
`primary axis of rotation 58, while second module 18 [e.g., a monitor] defines
`a corresponding primary axis of rotation 62 parallel to axis 58.” Id. at 6:7–
`13.
`
`“Connector 54 comprises (moveable) leg 66, (fixed) leg 70, pin 74,
`and spring 78 and defines tube 82 for permanently receiving axle 86
`embedded within second module 18.” Id. at 6:26–29. Leg 66 pivots about
`pin 74 and, “when fitted into slots 98 of first module 14, snap, or clamp,
`onto axle 102 of that module and thereby connect first and second modules
`14 and 18.” Id. at 6:29–36. Although slots 98 in Figure 3 are shown formed
`at the edge of first module 14, “they may additionally or alternatively appeal
`along other edges or portions of first module 14,” which would permit the
`device to be configured in additional ways. Id. at 7:20–27.
`Lane’s connector/hinge permits a personal computer to be
`configured in a number of different ways as illustrated in Figures 19–
`28, each of which is reproduced below.
`
`14
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`IPR2024-00532
`Patent 8,289,688 B2
`Figures 19–28 are a “series of side elevational views of an exemplary
`modular device incorporating the technology of the present invention shown
`in various configurations.” Id. at 4: 29–32. Figure 19 shows Lane’s device
`in the “nominally closed position” with the visual display facing inward to
`protect it from damage. Id. at 10:12–17. Figure 20 shows Lane’s device
`rotated “more than 90° to provide a standard ‘desktop’ orientation.” Id.
`at 10:24–31. Figure 21 shows an alternative position where “second
`module 18 has been rotated approximately 180° relative to first module 14.”
`Id. at 10: 21–24. Figures 22–24 show alternative positions where connector
`54 has been detached and reattached. Id. at 10:32–11:10. In Figure 25,
`second module 18 has been rotated more than 270° to form a sideways “V”
`in which only the display is accessible. Id. at 10:29–31. In Figure 26, first
`module 14 and second module 18 are detached “with merely an electrical
`connector 270 between [them].” Id. at 11:10–16. Figure 27 shows Lane’s
`device rotated 360°, “exposing visual display 35 for use as, for example, a
`tablet for pen-based computing.” Id. at 10:17–20. And Figure 28 shows
`second module 18 rotated more than 270° to form an inverted “V” in which
`only the display is accessible. Id. at 10:29–31.
`b) Misawa (Ex. 1016)
`Misawa is titled “Portable Device with Camera.” Ex. 1016, code (54).
`In Misawa’s portable telephone, “[a] first casing body is equipped with a
`control portion and a second casing body is equipped with a monitor.” Id. at
`code (57). “The first and second casing bodies are openably/closeably
`joined by a uni-axial hinge portion.” Id.
`
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`Figure 1 of Misawa, reproduced below, provides “a perspective view
`showing a portable telephone incorporating a camera” embodying Misawa’s
`invention. Id. ¶ 13.
`
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`Figure 1 shows “a portable telephone with a camera 10 . . . , a first casing
`body 14, and a second casing body 18.” Id. ¶ 29. The first and second
`casing bodies are “openably/closeably joined by a hinge portion 20.” Id. In
`Figure 1, the second casing body 18 has been opened to 150° and is in “a
`condition for performing telephone calls, usual photography and the like.”
`Id. ¶ 53.
`Misawa also describes opening the second casing body 18 to 300
`degrees from a closed state such that “the first casing body 14 and the
`second casing body 18 can be invertedly stood on a flat surface” with the
`hinge portion 20 oriented upward. Id. ¶ 54. In this state, the control
`portion 12 and the monitor 16 each face outward. Id. ¶ 55.
`
`Petitioner’s Contentions with Respect to the Single Axis
`Limitation
`Petitioner asserts that Lane and Misawa both disclose portable
`electronic devices with a base and a display coupled by a hinge. Pet. 29.
`
`16
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`Patent 8,289,688 B2
`Petitioner characterizes Lane as disclosing a “double-pivot hinge” and
`Misawa as disclosing a “single-pivot hinge.” Id. Petitioner’s obviousness
`challenge is premised on the POSA using Misawa’s single-pivot hinge in
`Lane’s portable computer. Id.; see also, id. at 31–32. Petitioner explains
`why the POSA would have been motivated to make this alteration as
`follows:
`
`Lane discloses a double-pivot hinge 54, whereas
`Misawa discloses a single-pivot hinge 20. A POSA would
`have recognized that (a) a single-pivot hinge is less
`mechanically complex than a dual-pivot hinge, and thus less
`expensive and likely more reliable over the service life of a
`portable computer; and (b) a dual-pivot hinge is generally
`unnecessary except to allow the display component to rotate
`far enough to fold flat against the bottom of the base to
`deploy the portable computer in tablet mode. Thus, a POSA
`would have been motivated and able to adapt the portable
`computer 10 of Lane to use a single-pivot hinge like the
`hinge 20 taught in Misawa.
`Id. at 29. The position set forth in the Petition is supported by the
`testimony of Dr. Wolfe, which largely mirrors the rationale set forth in the
`Petition. See Ex. 1004 ¶¶ 113, 114, 131.
`
`Patent Owner’s Arguments
`Patent Owner argues that Petitioner proposes to “modif[y] Lane based
`on Misawa in a manner that would have obliterated everything Lane teaches
`is innovative about its computer.” Prelim. Resp. 17. According to Patent
`Owner, Petitioner’s proposed modification “destroys the basic objectives of
`Lane’s system”––i.e., to “allow decoupling and reconfiguration of the base
`and display modules” and to use “two parallel axes of rotation to support
`0–360° rotation. Id. at 17–18. Patent Owner cites case law supporting that
`modifications to a primary reference that render it inoperable for its intended
`
`17
`
`
`
`IPR2024-00532
`Patent 8,289,688 B2
`purpose may be non-obvious. Id. at 19. Patent Owner also argues that
`Petitioner’s contentions are unsupported, that Petitioner fails to consider
`Lane’s teachings as a whole, and that Petitioner fails to weigh the benefits
`Lane’s novel hinge provides against any benefits a single-axis hinge
`provides. Id. at 20–26.
`
`
`Analysis
`We agree with Patent Owner that Petitioner has not carried its burden
`to establish a reasonable likelihood of prevailing in showing that the POSA
`would have been motivated to use a single-pivot hinge, like that disclosed in
`Misawa, in Lane’s computer.
`As discussed above, Petitioner posits that the POSA would have been
`motivated to replace Lane’s hinge with a single axis hinge because a single
`axis hinge is less expensive and more reliable than Lane’s biaxial
`decouplable hinge. Pet 29; Ex. 1004 ¶¶ 113, 114, 131 (testimony of Dr.
`Wolfe to the same effect). Patent Owner argues this proffered motivation
`is supported only by the conclusory testimony of Dr. Wolfe. Prelim.
`Resp. 21. Patent Owner also argues that neither Petitioner nor Dr. Wolfe
`attempts to explain or quantify just how much of a benefit using a simpler
`hinge provides. Id. We agree that Dr. Wolfe’s testimony on this point is
`somewhat conclusory. See, e.g., Ex. 1004 ¶¶ 113, 114, 131 (citing only
`limited supporting evidence). Nonetheless, we give Dr. Wolfe’s
`testimony some weight because it is consistent with the notion that a
`simpler device with fewer moving parts is likely to be somewhat less
`expensive and more reliable than a more complicated device. See
`Ex. 1016 ¶ 9 (prior art reference cited by Dr. Wolfe (Misawa), teaching
`that the mechanism of a hinge having a biaxial structure is “likely to be
`
`18
`
`
`
`IPR2024-00532
`Patent 8,289,688 B2
`complicated”). On the current record, we determine that replacing Lane’s
`biaxial decouplable hinge with Misawa’s single axial hinge would provide
`a modest benefit.
`Having determined that Petitioner’s proposed modification provides a
`modest benefit, we now consider whether such modification has any
`drawbacks. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332
`(Fed. Cir. 2019) (explaining that, in an obviousness inquiry, “[t]he benefits,
`both lost and gained, should be weighed against one another.”) (citing
`Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
`2000)).
`Here, by Petitioner’s own admission, modifying Lane’s hinge in the
`manner Petitioner proposes comes at the expense of the hinge’s ability to
`rotate through a full 360°, which allows Lane’s computer to function as a
`tablet. Pet. 17 (explaining that Misawa’s single axis hinge “can open
`beyond the stated 300° (but less than 360°)”), 29 (explaining that a dual-
`pivot hinge is “unnecessary except to allow the display component to rotate
`far enough to fold flat against the bottom of the base to deploy the portable
`computer in tablet mode”); Ex. 1004 ¶¶ 110 (testimony of Dr. Wolfe
`echoing statement in the Petition that Misawa’s hinge cannot rotate through
`the full 360°), 114 (testimony of Dr. Wolf explaining that “the use of a dual-
`pivot hinge would make it easier to design a portable computer having a
`display that can rotate far enough to fold flat against the bottom of the base
`to deploy the portable computer in a tablet mode”); Ex. 1017, 3:5–14 (Lane,
`teaching that allowing 360° of rotation allows a laptop computer to function
`as a “pen-based computing tablet”).
`Modifying Lane’s hinge in the manner Petitioner proposes also comes
`at the expense of the hinge’s ability to decouple the respective components
`
`19
`
`
`
`IPR2024-00532
`Patent 8,289,688 B2
`of Lane. As discussed supra § II.D.1.a, Lane’s hinge is designed to permit
`mechanical decoupling of components––for example, by allowing a laptop
`computer monitor to be decoupled from its keyboard. Ex. 1017, 2:26–30.
`This allows components to be upgraded without having to purchase an
`entirely new system, allows users to “‘mix and match’ electronic or other
`devices and components as needed,” and allows the use of a display in
`multiple formats (e.g., standard laptop format, tablet format, and
`telecommunications monitor format). Id. at 2:30–3:4, 3:9–14. Misawa does
`not teach that its single-axis hinge is decouplable, and Petitioner does not
`contend that implementing Misawa’s hinge in Lane’s computer would result
`in a device with decoupling capability.
`Importantly, the computer that Petitioner proposes to modify is not a
`generic laptop computer, but Lane’s particular computer. Pet. 29 (asserting
`that “a POSA would have been motivated and able to adapt the portable
`computer 10 of Lane to use a single-pivot hinge like the hinge 20 taught in
`Misawa”); see also id. at 31–32 (making a similar assertion with slightly
`different language). The fact that it is Lane’s particular computer that
`Petitioner proposes to modify emphasizes the drawbacks that the modified
`device proposed by Petitioner would not be decouplable and would not have
`a hinge that allows a full 360° of rotation because, as discussed supra
`§ II.D.2.a, Lane identifies these features as objects of its invention and
`criticizes prior art hinges that lack these features. See e.g., Ex. 1017, 2:20–
`24 (Lane, stating: “neither the Blonder not [the] Kawamoto patent
`contemplates rotation about two adjacent, parallel axes to permit
`reconfiguration of components throughout approximately 0–360°”), 3:15–25
`(Lane, identifying “reconfigurable modules,” “permitting coupling and
`decoupling,” and providing “rotation about approximately 0–360°” as
`
`20
`
`
`
`IPR2024-00532
`Patent 8,289,688 B2
`“object[s] of the present invention”). Indeed, Lane’s entire premise is to use
`a biaxial decouplable hinge in its computer. See e.g., Ex. 1017, code (57)
`(Lane’s Abstract, describing its invention as “[a] modular, reconfigurable
`system designed to permit coupling and decoupling of devices or
`components” and “adapted to rotate about two adjacent parallel axes . . .
`throughout approximately 0–360 degrees”), 2:26–30 (“The present
`invention, by contrast [to the prior art], provides a modular, reconfigurable
`system designed to permit mechanical (and, if necessary, electrical) coupling
`and decoupling of devices or components of varying types.”), 3:5–9 (“The
`innovative system also is adapted to rotate about at least two adjacent,
`parallel axes. Consequently, the present invention permits components to be
`repositioned about each other throughout approximately 0-360°.”).
`In determining whether the POSA would have been motivated to
`make the change proposed by Petitioner, these drawbacks of making the
`modification to Lane weigh more heavily than the modest benefit that
`Misawa’s hinge in Lane’s computer is likely to be a somewhat less
`expensive and somewhat more reliable hinge. This is particularly true where
`Petitioner’s proposed modification results in a computer much like the prior
`art computers Lane criticized, renders Petitioner’s modified computer
`incapable of fulfilling Lane’s objectives, and, indeed, destroys the entire
`premise of Lane’s invention. See Medtronic, Inc. v. Teleflex Innovations SA
`RL, 69 F.4th 1341, 1349–50 (Fed. Cir. 2023) (explaining that it would have
`been “error for the Board to ignore evidence that a proposed modification
`would interfere with a reference’s stated purpose” and affirming Board
`finding that challenged patent was non-obvious in pa
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