Quest USA Corp v. PopSockets LLC

1. Case Identification

• Case #: IPR2018-00497
• Patent #: 8,560,031
• Filed: January 15, 2018
• Petitioner(s): Quest USA Corp.
• Patent Owner(s): PopSockets LLC
• Challenged Claims: 9-11, 16, and 17

2. Patent Overview

• Title: Extending Socket for Portable Media Player
• Brief Description: The ’031 patent describes an accessory, termed a "socket," for portable electronic devices like mobile phones. The accessory features a selectively extendable and retractable accordion structure that attaches to the back of a device to serve multiple functions, including as a finger grip, a media viewing stand, or a management system for headset cords.

3. Grounds for Unpatentability

Ground 1: Anticipation over Grinfas - Claims 9-11, 16, and 17 are anticipated by Grinfas under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Grinfas (UK Patent Application Publication No. GB 2 316 263).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Grinfas, which discloses a collapsible sound conduit for a mobile telephone, teaches every element of the challenged claims. The claimed "socket" for attaching to a portable media player was asserted to be met by Grinfas’s collapsible conduit for a mobile phone. The "securing element" was met by Grinfas’s disclosure of an adhesive pad or straps. Petitioner mapped the claimed "tapered accordion" to Grinfas's tapered, collapsible conduit and equated the "foot" at the distal end to Grinfas’s "user listening portion." For method claims 16 and 17, Petitioner contended that Grinfas’s structure is inherently capable of performing the claimed steps of selectively extending and retracting.
  • Key Aspects: This ground rests on the assertion that a prior art device designed for a different purpose (a sound conduit) possesses all the structural features of the patented invention, thereby anticipating it.

Ground 2: Obviousness over Karmatz and Mikol - Claims 9-11, 16, and 17 are obvious over Karmatz in view of Mikol under 35 U.S.C. §103(a).

• Prior Art Relied Upon: Karmatz (Application # 2012/0042476) and Mikol (Patent 4,927,191).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Karmatz discloses the basic invention: a movable grip ("socket") with a securing element and a distal end portion ("foot") for a handheld device. To the extent Karmatz's simple telescoping extension does not meet the "accordion" with "flexural hinges" limitations, Mikol was argued to supply them. Mikol discloses adjustable, tapered tubular structures with a pleated accordion configuration, explicitly teaching the use of semi-rigid walls interspersed with thinner, flexible "living hinges" to provide flexibility and stability.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Mikol's superior accordion structure with Karmatz's grip device to address the known design need identified in Karmatz—securely gripping a handheld device. Mikol expressly teaches that its accordion provides "substantially precise adjustment" and is "fully stable," offering clear advantages over a simple telescoping mechanism. Petitioner argued this combination was one of a finite number of predictable solutions.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. Applying the known, adjustable accordion structure from Mikol to the grip device of Karmatz was a predictable implementation of known technologies to achieve the known goal of an improved, stable, and compact phone grip with predictable results.

• Additional Grounds: Petitioner asserted additional challenges, including that claims 9-11 are obvious over Grinfas alone (Ground 2); claim 9 is anticipated by Karmatz alone (Ground 3); and claim 9 is anticipated by Barbera (Patent 2,876,979), a prior art shock-absorbing mount utilizing a tapered metal bellows (Ground 5).

4. Key Claim Construction Positions

• "Socket": Petitioner contended the term is ambiguous and used unconventionally in the ’031 patent. Arguing that the patentee acted as its own lexicographer without providing a clear definition, Petitioner proposed the broad construction of "a hollow structure" based on dictionary definitions. This broad construction was critical to applying prior art like Grinfas, which discloses a hollow "conduit" but not a "socket" in a traditional mechanical sense.
• "Accordion": Petitioner proposed a construction of "a structure comprised of wall segments that fold parallel to its longitudinal axis." This interpretation, based on dictionary definitions and the patent's disclosure, was central to arguing that the pleated and bellows-like structures in the prior art meet the claim limitation.
• "Foot": The petition argued this term is ambiguous as it is not used in the specification outside of the claims. Petitioner proposed a broad interpretation of either "an end portion of an object" or "a separate structure located at the end of an object." This disjunctive construction was necessary to map structurally different prior art elements, such as the "user listening portion" of Grinfas or the "grip" of Karmatz, to this claimed element.
• "Flexural Hinge": Based on the specification equating the term with a "living hinge," Petitioner proposed the construction "a thinner, flexible joint possessing some inherent elasticity which is positioned between thicker, more rigid walls." This construction was key to the obviousness argument combining Karmatz with Mikol, which explicitly discloses such structures.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 9-11, 16, and 17 of the ’031 patent as unpatentable.