FelLowes Inc v. Speculative Product DeSign LLC

1. Case Identification

• Patent #: 8,204,561
• Filed: March 20, 2013
• Petitioner(s): Fellowes, Inc.
• Patent Owner(s): Speculative Product Design, LLC.
• Challenged Claims: 1-16

2. Patent Overview

• Title: ONE PIECE CO-FORMED EXTERIOR HARD SHELL CASE WITH AN ELASTOMERIC LINER FOR MOBILE ELECTRONIC DEVICES
• Brief Description: The ’561 patent discloses a one-piece protective case for mobile electronic devices. The invention centers on a flexible inner layer that is co-molded with and permanently affixed to a hard exterior shell, creating a single assembly. A key feature is that the exterior hard shell has "cut away" portions, particularly at the corners, which are permanently filled by the co-molded flexible inner layer to provide flexibility for inserting and removing the device.

3. Grounds for Unpatentability

Ground 1: Anticipation by Bodkin - Claims 1-16 are anticipated by Bodkin under 35 U.S.C. §102.

• Prior Art Relied Upon: Bodkin (Application # 2007/0225031).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bodkin, which was not considered during prosecution, discloses every limitation of claims 1-16. Bodkin teaches a carrying case for electronic devices constructed as a "single unit" through a co-molding process involving materials with different elastic characteristics (e.g., a harder outer material and a softer inner material). Critically, Bodkin discloses forming open areas or "cutouts" at the corners of a first hard panel and filling these open areas with a second, more flexible material as part of the co-molding process. This, Petitioner asserted, directly teaches the key limitation of "a cut away portion that is permanently filled with a portion of the co-molded flexible inner layer," which was added to the claims to overcome prior art during prosecution. Bodkin's disclosure of using co-molding to place "protective structures" at the corners that can be part of the second, inner panel anticipates the functional aspects of the dependent claims, such as providing shock protection and flexibility.

Ground 2: Obviousness over Bodkin in view of Bau - Claims 1-16 are obvious over Bodkin in view of Bau under 35 U.S.C. §103.

• Prior Art Relied Upon: Bodkin (Application # 2007/0225031) and Bau (Application # 2010/0096284).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Bau, which was cited during prosecution, discloses a case structurally almost identical to the claimed invention, featuring a soft, flexible inner "glove" and a hard plastic outer "exoskeleton" with finger-like cutouts. The patent examiner allowed the ’561 patent claims over Bau because Bau's layers were not a "co-molded one-piece assembly." Petitioner argued that Bodkin remedies this deficiency by explicitly teaching the co-molding of hard and soft layers to form a single-unit case, including filling cutouts in the hard layer with the softer material. The combination of Bau's structure with Bodkin's manufacturing method renders the claims obvious.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the known design of Bau with the co-molding process taught by Bodkin. Bodkin explains the benefits of creating a single-unit case, and a POSITA would have been motivated to apply this known manufacturing process to Bau's two-piece design to achieve a more integrated and durable final product, which is a recognized rationale for combination.
  • Expectation of Success: As co-molding was a well-established technique for creating multi-material objects, including electronic cases as shown in Bodkin, a POSITA would have had a reasonable expectation of successfully applying Bodkin's co-molding process to the components disclosed in Bau.

Ground 3: Obviousness over Bodkin in view of Horwitz-Incipio - Claims 1-16 are obvious over Bodkin in view of Horwitz-Incipio under §103.

• Prior Art Relied Upon: Bodkin (Application # 2007/0225031) and Horwitz-Incipio (a July 2007 article from iLounge.com).
• Core Argument for this Ground:
  • Prior Art Mapping: The Horwitz-Incipio article discloses the commercial "Incipio Silicrylic" phone case, which combines a silicone inner layer with a hard exterior plastic shell. Images in the article show that the hard shell has cutouts that facilitate flexing to position the case around the phone. This discloses the basic two-piece, dual-material structure with cutouts. Petitioner argued that, as in the combination with Bau, Bodkin supplies the missing teaching of co-molding these separate components into a single, integrated unit.
  • Motivation to Combine: A POSITA would be motivated to improve upon the two-piece design shown in Horwitz-Incipio by making the components integral, a common design goal that reduces parts and can improve durability. Bodkin provides the explicit method for achieving this integration through co-molding. Bodkin's teachings are not limited to the specific clamshell designs shown therein and would have been understood as applicable to non-clamshell phones like the one for which the Incipio case was designed.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on Bodkin in view of Applicant's Admitted Prior Art (AAPA), Bau in view of Bodkin, and Bodkin in view of Horwitz-SwitchEasy (another product review article). These grounds relied on similar theories where Bodkin provides the teaching of a co-molded, single-unit construction with filled-in cutouts to supplement other prior art showing dual-material cases.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of Patent 8,204,561 as unpatentable.