PTAB

IPR2019-00719

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

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1. Case Identification

2. Patent Overview

  • Title: Handheld Device for Mobile Phone Photography
  • Brief Description: The ’627 patent discloses a handheld device for holding and remotely operating a mobile phone's camera. The device comprises a handle apparatus coupled to a phone holder, incorporating features like a power supply, control buttons, and wireless communication modules (e.g., Bluetooth) to control camera functions like zoom and record.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rosenhan - Claims 29, 33–36, and 38 are obvious over Rosenhan

  • Prior Art Relied Upon: Rosenhan (Application # 2013/0005401).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rosenhan, by itself, teaches every limitation of independent claim 29 and its asserted dependent claims. Rosenhan discloses an ergonomic smartphone handle with a mounting structure (“holder”), a grippable handle portion (“handle apparatus”), and a set of controls including zoom and record buttons (“command keys”). Rosenhan’s handle explicitly includes an electronic interface that can be a wireless connection, such as Bluetooth, to communicate with the smartphone, thereby teaching a “wireless interface module” and a “command key module” that sends control commands to the phone.
    • Key Aspects: Petitioner contended that Rosenhan also discloses the features of the dependent claims, including an undulating, soft rubber surface for an "anti-slip" grip (claim 33), the explicit mention of Bluetooth for the wireless connection (claim 34), and an ergonomic design intended for convenient one-handed operation (claims 36 and 38).

Ground 2: Obviousness over Rosenhan and Kim - Claims 1, 2, 4–14, 16, 17, 30, 31, and 37 are obvious over Rosenhan in view of Kim

  • Prior Art Relied Upon: Rosenhan (Application # 2013/0005401) and Kim (WO 2012/096433).
  • Core Argument for this Ground:
    • Prior Art Mapping: While Rosenhan teaches a complete handle with remote controls, its mounting structure is designed for a smartphone of a specific size. Kim, addressing similar problems in smartphone photography, discloses an adjustable, spring-loaded phone mount that can accommodate mobile phones of various thicknesses. Petitioner argued that the combination of Rosenhan’s handle and controls with Kim’s adjustable, spring-loaded holder renders the challenged claims obvious. This combination supplies the “spring-loaded holder” limitation of independent claim 1 and the “sliding apparatus” and “one or more springs” limitations of independent claim 13, which are absent in Rosenhan alone.
    • Motivation to Combine: A POSITA would combine Kim’s adjustable mount with Rosenhan’s handle to expand the device’s commercial viability. Given the rapid changes in mobile phone form factors, it would have been a common-sense modification to replace a fixed-size holder with a universal, adjustable one. Rosenhan itself suggests that "other mount structure" could be used, directing a POSITA to known solutions like those in Kim.
    • Expectation of Success: The combination was a simple substitution of a known component (Kim's adjustable mount) for another (Rosenhan's fixed mount) to achieve the predictable result of a universally compatible handle without affecting the remote control functionality.

Ground 3: Obviousness over Rosenhan and Lee - Claims 18, 21–25, and 32 are obvious over Rosenhan in view of Lee

  • Prior Art Relied Upon: Rosenhan (Application # 2013/0005401) and Lee (Korean Application # 10-2012-0040824A).

  • Core Argument for this Ground:

    • Prior Art Mapping: Rosenhan discloses that its electronic interface can be either wireless (e.g., Bluetooth) or wired (e.g., USB), but does not explicitly describe an embodiment having both interfaces simultaneously. Lee teaches a smartphone handle accessory that incorporates both a wireless Bluetooth connection and a wired physical connector for control and charging. The combination of Rosenhan’s device with the dual-interface teaching of Lee renders claim 18 and its dependent claims obvious by teaching a handle with both a "wireless interface module" and a "Universal Serial Bus interface."
    • Motivation to Combine: A POSITA would combine Lee's dual-interface teaching with Rosenhan's handle to enhance functionality. This would allow the handle to operate with phones lacking a wireless interface, function when wireless capabilities are disabled (e.g., airplane mode), enable simultaneous charging and remote operation, and offer the increased reliability of a wired connection.
    • Expectation of Success: Incorporating both a wired and wireless interface was a known design choice with well-understood and predictable benefits, representing a mere combination of known elements to yield predictable results.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Rosenhan, Kim, and Lee to address the remaining claims (e.g., claims 3, 15, 19, 20, 26-28), relying on the same core teachings and motivations to combine.

4. Key Technical Contentions (Beyond Claim Construction)

  • AIA Patent Status: Petitioner contended that the ’627 patent qualifies as an America Invents Act (AIA) patent and is thus subject to inter partes review (IPR), despite its claim to a pre-AIA Chinese priority application. The argument centered on the assertion that key limitations in the challenged claims—specifically "spring-loaded holder" and "one or more springs"—lack written description support in the priority document. Petitioner argued this failure breaks the priority chain for those claims, giving them an effective filing date after March 16, 2013, and thereby making the entire patent subject to the AIA.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-38 of Patent 9,503,627 as unpatentable.