PTAB

IPR2019-00233

Apple Inc. v. Kilbourne, Mark

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1. Case Identification

2. Patent Overview

  • Title: Universal Remote Deadbolt Adapter
  • Brief Description: The ’795 patent discloses a system and method for retrofitting a pre-existing deadbolt lock to enable remote, electronic operation. The purported novelty centers on a "reversible elongated member" designed with different openings on each end to accommodate the varied cross-sectional shapes of deadbolt tailpieces from different manufacturers.

3. Grounds for Unpatentability

Ground 1: Claims 11-15 and 17 are obvious over Padiak in view of Anderson

  • Prior Art Relied Upon: Padiak (Patent 6,282,931) and Anderson (Patent 6,318,218).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Padiak taught all elements of independent claim 11 except for the "reversible elongated member." Padiak disclosed a complete system for retrofitting a deadbolt with remote electronic control, including a motor, gears, a tracking system with sensors to detect lock status, and an audible alert. To accommodate different tailpiece shapes, Padiak taught using a plurality of interchangeable, single-ended adaptors. The key difference is that the ’795 patent claimed a single, reversible member to solve this problem.
    • Motivation to Combine: Petitioner asserted that Anderson, which disclosed a reversible screwdriver bit with different tool heads on each end, taught the missing element. A person of ordinary skill in the art (POSA) would have recognized that Padiak’s use of multiple adaptors and Anderson’s use of a single reversible bit were two well-known, predictable solutions to the common mechanical problem of interfacing with differently shaped parts. A POSA would combine Anderson’s concept with Padiak’s system to gain the known benefits of reversibility: reducing the number of loose parts, lowering manufacturing costs, and improving user convenience.
    • Expectation of Success: The combination was argued to be a straightforward mechanical modification. A POSA would have a high expectation of success in creating an adaptor for Padiak’s lock system with a different-shaped opening on each end, as it involved applying a simple, known design principle (reversibility) to a known device.

Ground 2: Claim 16 is obvious over Padiak, Anderson, and Admitted Prior Art/Building Code

  • Prior Art Relied Upon: Padiak (’931 patent), Anderson (’218 patent), the Patent Owner's admitted prior art in the ’795 patent specification, and the 2000 International Building Code.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground challenged dependent claim 16, which added the limitation of attaching the deadbolt system to a door at a height between 36 and 48 inches from the floor. The combination of Padiak and Anderson established the base system. Petitioner argued that the specified installation height was not an inventive step but was merely the conventional and, in some jurisdictions, legally required height for deadbolt locks.
    • Motivation to Combine: The motivation was simply to install the deadbolt retrofit system in a conventional and compliant manner. The ’795 patent itself admitted that Texas law required this installation height range. Furthermore, the 2000 International Building Code specified the same standard height range for door locks. A POSA installing the Padiak system would naturally have installed it at this standard, well-known height.

Ground 3: Claims 18-20 are obvious over Padiak, Anderson, and Bates

  • Prior Art Relied Upon: Padiak (’931 patent), Anderson (’218 patent), and Bates (Application # 2002/0095958).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed independent claim 18, which was substantially similar to claim 11 but added the limitation of "constructing the electronic card with the sound emitting module." While Padiak taught a tracking system with an audible alert, the sound was emitted from the user's remote control unit, not the lock assembly itself. Petitioner contended that Bates taught this missing element, as it disclosed a remote deadbolt system with a speaker located directly on the electronic module inside the lock housing.
    • Motivation to Combine: A POSA would have found it an obvious design choice to modify the Padiak/Anderson system by locating the sound-emitting module on the lock's internal electronic card, as taught by Bates. This would provide an advantageous audible indication to persons in the immediate vicinity of the door, alerting them that the lock has been operated remotely. It was presented as a routine and predictable design variant.
    • Expectation of Success: Since Padiak already disclosed the necessary signaling between a tracking system and a remote sound module, a POSA would have a high expectation of success in simply changing the location of the speaker to the lock's main circuit board, a configuration explicitly taught by Bates.

4. Key Claim Construction Positions

  • "reversible elongated member": Petitioner argued this term, added during prosecution to achieve allowance, must be construed as "an elongated member having a different shaped opening on each end to accept the different cross-sectional shapes of different tailpieces." This construction was based on the Patent Owner's own explicit and repeated definitions in the prosecution history to distinguish the invention from prior art. The construction is critical to the obviousness argument, as it defines the precise feature allegedly missing from Padiak but supplied by Anderson.
  • "sensor recognition point": Petitioner proposed this term be construed as "a movable element configured to be detected by a sensor." As the term does not appear in the specification, its meaning was derived from the claim language and the specification's description of the corresponding tracking system (sensor strip 32'), which is a movable component tracked by a fixed sensor.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 11-20 of the ’795 patent as unpatentable.