PTAB

IPR2013-00197

Fellowes Inc v. Speculative Product Design LLC

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1. Case Identification

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 describes a one-piece protective case for a personal electronic device. The invention comprises a flexible inner elastomeric layer permanently co-molded with a rigid exterior hard layer to form a single assembly that is flexible enough for device insertion but rigid enough for retention.

3. Grounds for Unpatentability

Ground 1: Anticipation over 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 the challenged claims. Bodkin teaches a case for a portable electronic device constructed as a "single unit" through co-molding. It explicitly describes co-molding a first sheet of material (e.g., a harder plastic like PVC) with a second sheet of material (e.g., a more flexible material like silicone), which directly corresponds to the claimed exterior hard layer and flexible inner layer. Crucially, Bodkin discloses forming open areas or "cutouts" at the corners of the harder first panel and filling these areas with "protective structures" made from the second, more flexible material using the co-molding process. Petitioner asserted this 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 secure allowance.
    • Key Aspects: The core of this argument was that the very feature used to overcome prior art during prosecution was explicitly taught by Bodkin, a reference the examiner never reviewed.

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), Bau (Application # 2010/0096284).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Bau, which was cited during prosecution, discloses a case with a structure nearly identical to that claimed: a soft inner "glove" layer and a hard outer "exoskeleton" with cutouts ("fingers") that wrap around the inner layer. The examiner initially rejected the claims over Bau, and the applicant overcame the rejection by arguing Bau was not a "one piece case" and was not "permanently affixed" via co-molding. Petitioner argued that Bodkin remedies these exact deficiencies. Bodkin expressly teaches the benefits of co-molding different materials to form a "single unit" case.
    • Motivation to Combine: A POSITA would combine Bau’s specific form factor (hard exoskeleton over a soft liner) with Bodkin’s co-molding manufacturing process for known benefits. Bodkin itself states its teachings can be applied to non-clamshell phones like those in Bau. The motivation would be to create a more durable, integrated case by making the separate components of Bau integral, a well-established design principle recognized in patent law.
    • Expectation of Success: Given that both references relate to protective cases for electronics and Bodkin explicitly teaches co-molding as a method of construction for such cases, a POSITA would have had a high expectation of success in applying Bodkin’s manufacturing process to Bau’s design.

Ground 3: Obviousness over Bodkin in view of Applicant's Admitted Prior Art - Claims 1-16 are obvious over Bodkin in view of Applicant's Admitted Prior Art (AAPA).

  • Prior Art Relied Upon: Bodkin (Application # 2007/0225031), AAPA (admissions in the ’561 patent specification).

  • Core Argument for this Ground:

    • Prior Art Mapping: To the extent the Patent Owner might argue that Bodkin fails to explicitly disclose certain material properties (e.g., a hard outer layer for protection and a soft inner layer for cushioning), Petitioner asserted that the ’561 patent’s own specification fills any such gaps. The AAPA section of the patent explicitly acknowledges that "combinations of elastomeric/rubber skins and hard plastic shells are known" and that prior art phone cases often have "a hard outer layer and an inner liner of elastomeric material co-molded therein to cushion the electronic device."
    • Motivation to Combine: The motivation was to apply the known, conventional materials and properties described in the AAPA to the co-molded structure taught by Bodkin. A POSITA reading Bodkin’s disclosure of a co-molded case with corner cutouts would naturally turn to the well-known practice, admitted in the ’561 patent itself, of using a hard exterior and a soft, shock-absorbing interior for such cases.
    • Expectation of Success: Combining Bodkin's structure with the material properties acknowledged as conventional in the AAPA would have been a straightforward and predictable design choice with a high expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges over Bodkin in view of Horwitz-SwitchEasy (a commercial embodiment of Bau) and Horwitz-Incipio (disclosing a silicone case with a hard plastic shell). These grounds relied on similar logic, using the articles to supply a non-clamshell form factor or specific material choices to be combined with Bodkin's fundamental co-molding and filled-cutout teachings.

4. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-16 of the ’561 patent as unpatentable.