Distributing Co LLC v. DOK Solution LLC

1. Case Identification

• Case #: IPR2015-01745
• Patent #: 7,742,293
• Filed: August 17, 2015
• Petitioner(s): FKA Distributing Co., LLC
• Patent Owner(s): DOK Solution, LLC
• Challenged Claims: 1, 2, 5, 7, 8, 11-13, 17, 19, and 20

2. Patent Overview

• Title: Adaptable Digital Music Player Cradle
• Brief Description: The ’293 patent describes a cradle for digital music players that includes a cavity with a series of ledges of decreasing size. This configuration allows the cradle to sequentially support multiple, differently-sized digital music players, such as various models of Apple iPods.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 5, 7-8, 11-13, 17, and 19-20 are obvious over JP ’125, alone or in view of general knowledge.

• Prior Art Relied Upon: JP ’125 (Japanese Patent Publication 10-023125).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that JP ’125, which discloses a "Mobile Phone Holder For Computer," teaches all key limitations of the challenged claims. JP ’125 describes a box-shaped holder with an upper opening (a cavity) for maintaining a mobile phone in an upright position. Critically, Petitioner asserted that JP ’125 discloses a structure with different sized retaining surfaces, analogous to the claimed "ledges," to accommodate devices of different dimensions. Specifically, the holder’s opening is sized to be smaller than the width of a mobile phone but wider than its thickness, allowing a narrow phone to be retained lower in the cradle while a wider phone is retained higher up. This structure, Petitioner contended, inherently creates "ledges of decreasing size." Petitioner further argued that other elements, like a support wall and a trough for a data cable (a slit in JP ’125), are also explicitly or inherently disclosed.
  • Motivation to Combine (or Modify): The primary motivation argued was to apply the known concept of an adaptable holder to the well-known problem of accommodating the proliferation of differently-sized digital music players. Since JP ’125 taught a cradle that could hold different devices and touted the benefit of improved data communication by keeping the device upright, a person of ordinary skill in the art (POSITA) would have been motivated to adapt this design for various digital music players (e.g., small, medium, large iPods) to achieve the same predictable benefits. The general knowledge of a POSITA would include the existence of these various player sizes and the common use of USB cables for connection.
  • Expectation of Success: A POSITA would have had a high expectation of success because adapting the simple mechanical features of the JP ’125 holder for different electronic devices was a straightforward design choice with predictable results.

Ground 2: Claims 1-2, 5, 7-8, 11-13, 17, and 19-20 are obvious over Struthers in view of the iPort IW Manual and Brochure.

• Prior Art Relied Upon: Struthers (Patent 7,155,214) and the iPort In-Wall (IW) Instruction Manual and Marketing Brochure (iPort IW materials).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Struthers discloses a wall-mounted "I-Port Controller" cradle for handheld audio devices. Struthers teaches a dock with a cavity ("dock engaging well") and acknowledges that different devices have different footprints, suggesting the use of alternate or replaceable cradles to fit various devices. The iPort IW materials, which describe a commercial embodiment of Struthers, disclose a "universal docking bay" that "handles all iPods with dock connectors without adapters." Petitioner pointed to figures in the iPort IW materials showing multiple ledges within the cavity—including spring-loaded clamps that form inner ledges for smaller models and rotate away to allow outer ledges to support larger models. Petitioner contended this combination explicitly teaches a cradle with a plurality of ledges of decreasing size, each sized to hold a different digital music player, as claimed.
  • Motivation to Combine: A POSITA, when considering the Struthers patent, would have naturally looked to its commercial embodiments for implementation details. The iPort IW materials provide a direct solution to the problem addressed in Struthers—accommodating different handheld devices. A POSITA would combine the teachings to gain the explicit and commercially touted benefit of a single, universal cradle that supports multiple device sizes without needing adapters or replaceable parts, which is a simpler and more elegant design.
  • Expectation of Success: The combination was already successfully implemented in the iPort IW commercial product, demonstrating that the integration of multiple ledges into a cradle was not only possible but practically achieved. Therefore, a POSITA would have had a very high expectation of success.

4. Key Claim Construction Positions

Petitioner proposed several constructions, often adopting the Patent Owner's broader proposals from related district court litigation to demonstrate invalidity even under those constructions.

• "Ledges": Petitioner proposed adopting the district court's construction of "a narrow surface that sticks out from a wall."
• "Ledges of decreasing size towards a bottom of the cavity, whereas each ledge is sized to hold a different one of the multiple digital music players": Petitioner argued for adopting the Patent Owner’s proposed broader construction from litigation: "steps or ledges of decreasing size toward the bottom of the cavity to hold a digital music player." This broad construction was central to Petitioner's argument that the prior art met this limitation.
• Means-Plus-Function Terms (Claim 12): For several means-plus-function terms, Petitioner argued that for IPR purposes, the broadest reasonable construction should align with the Patent Owner’s broad proposals from litigation. For example, for "a stepped means for supporting..." the multiple players, Petitioner proposed construing the disclosed structure broadly as "at least one step or ledge of decreasing size towards a bottom of the cavity."

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 5, 7, 8, 11-13, 17, 19, and 20 of the ’293 patent as unpatentable.