PTAB

IPR2019-00716

SZ DJI Technology Co., Ltd. v. Dareltech, LLC

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1. Case Identification

2. Patent Overview

  • Title: Handheld Device for Holding and Operating a Mobile Phone
  • Brief Description: The ’128 patent describes a handheld device for holding and remotely operating a mobile phone to take photographs and videos. The device comprises a handle, a coupler to attach the phone, a power supply, a wireless interface module (e.g., Bluetooth or Wi-Fi), and user-operated keys for remote control.

3. Grounds for Unpatentability

Ground 1: Claims 1-29 are obvious over Fromm, Fenton, and Bolton.

  • Prior Art Relied Upon: Fromm (Patent 7,684,694), Fenton (WO 2012/018405), and Bolton (Application # 2011/0058052).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of the three references discloses all limitations of the challenged claims.
      • Fromm was asserted to teach a handheld apparatus for supporting a camera (a "selfie stick") which includes a handgrip, an extensible support, and an integrated remote control powered by batteries. Fromm broadly defined "camera" to include a "picture phone" and noted that a "special adaptor may be required" to hold one, but did not provide details for such an adaptor or for smartphone-specific remote control.
      • Fenton was presented as the missing "special adaptor." It disclosed a universal mobile device holder with a spring-loaded mechanism capable of securely gripping smartphones of various sizes. Petitioner argued this holder constitutes the claimed "coupler" that releasably affixes the handheld device to the mobile phone housing.
      • Bolton was introduced to supply the smartphone-specific remote control functionality. It disclosed a remote control accessory that uses wireless signals (e.g., Bluetooth) to operate a smartphone's camera, featuring specific controls like photo, video, and mode buttons. Petitioner contended that a person of ordinary skill in the art (POSITA) would replace Fromm's generic remote control electronics with Bolton's smartphone-specific system (user interface, controller, I/O) to create a fully functional device.
    • Motivation to Combine: Petitioner asserted clear motivations for the combination. A POSITA would have been motivated to use Fenton's universal holder as the "special adaptor" explicitly contemplated but not detailed by Fromm, in order to adapt Fromm's handheld device for use with a smartphone. Furthermore, because Fromm's remote was designed for film/digital cameras, a POSITA would recognize it could not control a smartphone's camera. This would motivate replacing Fromm's remote control system with Bolton's, which is expressly designed for that purpose. The combination allows Fromm's handle to hold and control the camera functions of a smartphone held by Fenton's holder, achieving the desired result of a modern selfie stick.
    • Expectation of Success: The petition argued that a POSITA would have a reasonable expectation of success in making this combination. The integration involved combining a known holder (Fenton) with a known handle (Fromm) using a standard threaded connection and replacing a generic remote control module with a more specific, but still modular, remote control system (Bolton). These were all known components being used for their intended, predictable functions.
    • Key Aspects: The argument systematically addressed the primary components of the claimed invention by sourcing each from a distinct prior art reference: the handle/stick from Fromm, the phone holder/coupler from Fenton, and the smartphone-specific wireless remote control from Bolton. The argument also addressed numerous dependent claims, mapping features like an anti-slip grip, a handle foot stand, and a spring-loaded chuck to disclosures within Fromm and Fenton.

4. Key Technical Contentions (Beyond Claim Construction)

  • AIA Patent Status: A central contention of the petition was that the ’128 patent qualifies as an America Invents Act (AIA) patent, making certain prior art available. Petitioner argued that at least claims 4, 8, 15, and 21 were not entitled to the filing date of the pre-AIA Chinese priority application. This was because the priority application allegedly lacked written description support for the "handle foot stand" (claims 4 and 15) and the "spring-loaded" chuck (claims 8 and 21) limitations. By asserting that these claims have an effective filing date after March 16, 2013, the Petitioner contended the entire patent is subject to the first-inventor-to-file provisions of the AIA.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-29 of Patent 9,037,128 as unpatentable under 35 U.S.C. §103.