ASUSTeK Computer Inc v. ExoTablet Ltd

1. Case Identification

• Case #: IPR2015-00041
• Patent #: 7,477,919
• Filed: October 7, 2014
• Petitioner(s): ASUSTeK Computer Inc.
• Patent Owner(s): ExoTablet, Ltd.
• Challenged Claims: 1-4, 6, 7, 14, and 19

2. Patent Overview

• Title: Handheld Input/Output Device Providing Enhanced User Interface for a Mobile Telephone
• Brief Description: The ’919 patent discloses an input/output accessory device for a mobile telephone. The device, which includes a larger display screen and additional input components (e.g., a keyboard), is configured to physically receive and hold a mobile phone, thereby creating an integrated, handheld unit with an enhanced, tablet-like user interface powered by the phone's processor.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6, 7, 14, and 19 are anticipated or obvious over Kumar in view of Kahn.

• Prior Art Relied Upon: Kumar (International Publication No. WO 00/60450) and Kahn (Patent 6,505,055).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kumar discloses all limitations of the challenged claims. Kumar teaches a "docking display unit" for a mobile "handset unit" that functions as the claimed "input/output device." This unit is handheld and provides an enhanced user interface through an "auxiliary, larger display" and an "auxiliary keyboard." Kumar’s "recessed platform," "fixed tab," and "movable tab" together form the claimed "cradle" for physically holding the handset. A "mating electrical connector" in the docking unit serves as the "communication port." For dependent claims, Kumar's keyboard teaches claim 6, and its disclosure of a "pen-input panel" from MicroTouch Systems anticipates the touchscreen of claim 4. Petitioner asserted that the cradle's recessed platform forms a channel that conceals the handset's display when docked, satisfying claim 7.
  • Motivation to Combine: For claims 3 and 14, which require a processor, data storage, and a power source within the docking unit, Petitioner argued it would have been obvious to modify Kumar. Kumar's primary goal was to reduce cost by leveraging the phone's processor, but it also acknowledged that similar devices (like the StarTAC clipOn Organizer) were known to be standalone units with their own processors and power supplies. To provide a standalone capability or improved battery life—a known challenge for portable electronics—a POSITA would combine Kumar's docking unit with the teachings of a power supply from a reference like Kahn. Kahn, which addresses auxiliary display devices for phones, explicitly teaches including batteries in the auxiliary device and managing power between the device and the phone.
  • Expectation of Success: A POSITA would have had a high expectation of success in integrating a processor and battery into Kumar's device, as it involved applying conventional components and known design principles to achieve the predictable result of standalone functionality and extended operational time.

Ground 2: Claims 1-4, 7, 14, and 19 are anticipated or obvious over Lebby.

• Prior Art Relied Upon: Lebby (Patent 6,115,618).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Lebby, which discloses a "display and battery combination" accessory for a mobile phone, anticipates or renders obvious the challenged claims. Lebby’s device is a handheld input/output unit that provides an "additional display" larger than the phone's "small display" and input controls, creating an enhanced interface. The back of Lebby's device, featuring "snap-fit connections," functions as a mechanical support and thus meets the broad construction of a "cradle." The device includes a "communication interface" for data exchange, which can be a wired connection or a wireless link, satisfying the "communication port" limitation. For dependent claim 3 (processor/data storage), Petitioner argued that because Lebby teaches its display can function "separate and apart" from the phone, it inherently must contain a processor and memory.
  • Motivation to Combine: While Lebby was the primary reference, Petitioner argued that certain limitations were obvious in light of known design alternatives. For claim 7 (cradle defines a channel that conceals the phone screen), Lebby is directed to a flip-phone. Petitioner argued a POSITA would find it obvious to adapt Lebby's concept for other common phone types, like the bar-style phone shown in Kumar. This adaptation would have led to a channel-based cradle design (as in Kumar) where the phone's screen is naturally concealed, a predictable outcome of designing for that form factor.
  • Expectation of Success: Adapting Lebby's accessory for a different but common phone style would have been a straightforward design choice with a high expectation of success, as it involved applying known mechanical housing and interface principles.

4. Key Claim Construction Positions

• "cradle": Petitioner proposed that under the broadest reasonable interpretation, this term should be construed as "a mechanical support." This construction is based on the patent's single exemplary use and allows prior art features like recessed platforms or snap-fit mechanisms to meet the limitation.
• "concealed": Petitioner proposed this term be construed as "hidden from sight" based on its plain and ordinary meaning, as it is not defined in the specification.
• "power source": Petitioner proposed this term means "a source of power including any connection for connecting to a power outlet." This broad construction was argued to be consistent with the specification's disclosure of power being supplied by a detachable cord connected to a line "source."

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 6, 7, 14, and 19 of Patent 7,477,919 as unpatentable.