PTAB

IPR2016-00404

Microsoft Corp v. Smart Skins LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Adding Peripheral Devices to Mobile Devices via Smart Interchangeable Cover
  • Brief Description: The ’864 patent discloses an interchangeable cover for a mobile device, such as a Personal Digital Assistant (PDA). The cover adds functionality by including at least one peripheral device on its exterior, an I/O interface to connect to the mobile device’s extension port, and internal electronics to facilitate communication between the peripheral and the device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Related Palm Patents - Claims 1, 12, 13, 15, 23, and 24 are obvious over Lunsford in view of Canova-Lunsford.

  • Prior Art Relied Upon: Lunsford (Patent 6,356,442) and Canova-Lunsford (Patent 6,535,199).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lunsford, which discloses a book-style "encasement" for a handheld computer, teaches nearly every element of the challenged claims. Lunsford’s encasement serves as a cover, mates with a PDA, includes an external peripheral (a radio antenna), and contains internal electronics (a processor, UART, and memory) to integrate the peripheral. Petitioner asserted that Lunsford only ambiguously describes its I/O connector as being "installed in an opening." The secondary reference, Canova-Lunsford, was used to explicitly teach and depict an I/O interface "disposed on the cover's body," thereby supplying a clear, known location for the connector and rendering the claimed arrangement obvious. Dependent claims reciting a "protocol processor" and "storage unit" were also argued to be disclosed in both references.
    • Motivation to Combine: Petitioner contended that the two references are so closely related they could be considered a single source. They were filed only two weeks apart, share a common inventor and assignee (Palm, Inc.), and Canova-Lunsford expressly incorporates Lunsford by reference. A person of ordinary skill in the art (POSITA) seeking to implement Lunsford's design would have naturally consulted the highly related Canova-Lunsford for compatible design details, such as the precise placement of the I/O connector.
    • Expectation of Success: The design approaches of Lunsford and Canova-Lunsford were presented as entirely compatible, ensuring a POSITA would have a high expectation of success in combining their teachings to arrive at the claimed invention.

Ground 2: Obviousness over Sled-Style Adapter References - Claims 1, 12, 13, 15, 23, and 24 are obvious over Janik in view of Kehoe.

  • Prior Art Relied Upon: Janik (Application # 2002/0078248) and Kehoe (Patent 6,837,435).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Janik discloses a removable, sled-style PDA adapter with all the core electronic features of the claims: an I/O interface, external peripherals (e.g., VOIP button, wireless LAN antenna), and internal electronics (processor, memory). However, Petitioner characterized Janik's adapter as a flat, "card-like part" that only covers the back and bottom of the PDA. This design fails to meet the claim requirement of a "cover," which the ’864 patent defines as covering multiple surfaces in different geometric planes while explicitly excluding "card-like" parts. Kehoe was introduced to remedy this deficiency by teaching a non-card-like, sled-style adapter with curved sidewalls that cover multiple surfaces of a PDA, enhancing its ruggedness. The combination of Janik's electronics with Kehoe's protective, multi-surface form factor allegedly rendered the claims obvious.
    • Motivation to Combine: A POSITA starting with Janik's functional design would have been motivated to incorporate the teachings of Kehoe to improve the physical protection of the PDA. Kehoe explicitly teaches that its sidewalls enhance "mechanical ruggedness" and protect the PDA from "drop and vibration" and "side impact." This express teaching provided a strong motivation to modify Janik's less-protective, card-like adapter to achieve the predictable result of a more durable product.
    • Expectation of Success: Petitioner asserted that modifying Janik's adapter by adding protective sidewalls as taught by Kehoe was a simple mechanical alteration. A POSITA would have had a reasonable expectation of success in combining the known electronic systems of Janik with the known mechanical housing of Kehoe.

4. Key Claim Construction Positions

  • "cover": Petitioner argued that the patent's own specification defines this term, requiring a construction that is central to its invalidity arguments. According to the specification, a "cover" must be a part that "inherently include[s] multiple surfaces that cover at least multiple ones of the exterior surfaces of the... mobile device, where the exterior surfaces are inherently disposed in different geometric planes." The patent explicitly states that "a 'card' like part... is not a 'cover'." This proposed construction was used to argue that the Janik reference alone does not teach the claimed "cover," necessitating the combination with Kehoe, which discloses a multi-surface, non-card-like design.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 12, 13, 15, 23, and 24 of the ’864 patent as unpatentable under 35 U.S.C. §103.