PTAB

IPR2019-00233

Apple Inc v. Kilbourne Mark

Log In

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 allow for remote electronic operation. The purported novelty centers on a "reversible elongated member" designed to accommodate the differently shaped tailpieces used by various deadbolt 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 disclosed a complete system for retrofitting a remote-controlled actuator onto an existing deadbolt, including a motor, gears, a tracking system for lock status, and the use of adaptors to engage the deadbolt’s tailpiece. However, Padiak solved the problem of varying tailpiece shapes by providing a plurality of interchangeable adaptors. The only key limitation missing from Padiak was the claimed "reversible elongated member" with different shaped openings on each end. Petitioner asserted that Anderson, which taught a reversible screwdriver bit with different tool heads on each end, supplied this missing element.
    • Motivation to Combine: A POSITA would combine Padiak and Anderson to solve the known problem of accommodating various tailpiece shapes with a more elegant and convenient solution. Petitioner identified several motivations, including reducing the number of loose parts (which lowers manufacturing cost and risk of loss), incorporating multiple functions into a single component, and applying a well-known design alternative (reversibility) to a known problem (interfacing with varied shapes). Anderson explicitly taught the convenience of such multi-function tools.
    • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success because the mechanical principles were simple and predictable. Modifying Padiak's interchangeable adaptor into a single reversible one, as taught by the analogous structure in Anderson, was a straightforward mechanical design choice that involved applying a known technique to a known device to yield a predictable result.

Ground 2: Claims 18-20 are obvious over Padiak in view of Anderson and Bates.

  • Prior Art Relied Upon: Padiak (Patent 6,282,931), Anderson (Patent 6,318,218), 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 that the system’s electronic card is constructed with a sound-emitting module. The combination of Padiak and Anderson provided the base system with a reversible adaptor. While Padiak taught a sound-emitting module to indicate lock status, it was located on the remote control unit, not the lock assembly itself. Petitioner argued that Bates explicitly disclosed an electronic lock system where a sound-emitting module (speaker) was located on the electronic card within the lock assembly.
    • Motivation to Combine: A POSITA would be motivated to modify the Padiak/Anderson system by incorporating Bates’s teaching to provide an audible lock status indication to individuals near the door, not just the user holding the remote. Petitioner asserted this was a simple design choice to enhance user feedback. Merely changing the location of a known component (a speaker) from a remote unit to the main lock unit was presented as an obvious design variant.
    • Expectation of Success: Success was expected because the modification only involved relocating a standard component. Padiak already disclosed the necessary circuitry for tracking lock status and triggering an audible alert, and Bates showed it was conventional to place such a speaker on the main electronic card.

Ground 3: Claim 16 is obvious over Padiak, Anderson, PO’s Admitted Prior Art, and/or the 2000 International Building Code.

  • Prior Art Relied Upon: Padiak (Patent 6,282,931), Anderson (Patent 6,318,218), Patent Owner’s Admitted Prior Art, and the 2000 International Building Code.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted dependent claim 16, which added the limitation of installing the deadbolt activating system at a height between thirty-six and forty-eight inches from the bottom of the door. The Padiak and Anderson combination taught retrofitting the system onto an existing deadbolt lock. Petitioner argued that the ’795 patent’s specification and other sources, like the 2000 International Building Code, established that this specific height range was the well-known, conventional, and sometimes required installation height for deadbolt locks.
    • Motivation to Combine: A POSITA installing the retrofitting system of Padiak/Anderson would naturally install it at the conventional and standard height for the existing deadbolt, as taught by building codes and industry practice. This was not an inventive step but rather compliance with a known standard.

4. Key Claim Construction Positions

  • "reversible elongated member": Petitioner argued this term should 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 express definitions and arguments made during prosecution to overcome prior art, which Petitioner contended created a clear and binding definition. This construction was critical because it defined the feature used to distinguish the invention from prior art that used multiple single-ended adaptors.
  • "sensor recognition point": Petitioner proposed this term, which did not appear in the specification, be construed as "a movable element configured to be detected by a sensor." This construction was based on the claim language requiring the "tracking" of the point and its use in the specification’s embodiment (sensor strip 32') that moves relative to a fixed sensor.

5. Relief Requested

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