PTAB

IPR2019-00721

SZ DJI Technology Co Ltd v. Dareltech LLC

Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Handle for Holding a Mobile Phone
  • Brief Description: The ’716 patent discloses a device with a handle for holding a mobile phone to take photographs and videos. The device includes an integrated remote control with command buttons and a wireless interface (e.g., Bluetooth) to operate the phone's camera functions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rosenhan and Kim - Claims 1, 5, 7-11, 15, and 17-18 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: Petitioner argued that Rosenhan disclosed nearly all limitations of the independent claims, including an ergonomically-designed handle for a smartphone with an anti-slip grip, a power supply, command buttons (e.g., zoom, record), and a wireless interface module (e.g., Bluetooth) for remotely controlling the phone’s camera. However, Petitioner contended Rosenhan did not explicitly disclose a “telescoping segment” to extend the handle’s length or a spring-based coupling mechanism. Kim was argued to supply these missing elements, as it teaches a handle for a smartphone that explicitly includes a “multi-stage shaft” (telescoping segment) and a phone mount with a spring-actuated holder to affix phones of various thicknesses.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve upon Rosenhan’s design. Rosenhan’s mounting structure was designed for a specific smartphone size, and Rosenhan expressly suggested that “other mount structure” could be used. A POSITA would have looked to known solutions like Kim’s adjustable, spring-based mount to expand the commercial applicability of Rosenhan's handle to accommodate the rapidly changing form factors of mobile phones.
    • Expectation of Success: The combination was presented as a simple substitution of a known, universal mounting mechanism (Kim) for a fixed one (Rosenhan) to achieve the predictable result of broader device compatibility.

Ground 2: Obviousness over Fromm, Fenton, and Bolton - Claims 1-3, 5-10, 11-13, and 15-18 are obvious over Fromm in view of 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 asserted this combination teaches all elements of the challenged claims. Fromm disclosed a base apparatus for supporting a camera, including a handgrip, a telescoping support, a power supply, and a ball-joint mount. Fromm stated that if the camera is a "picture phone," a "special adaptor" may be required, but did not detail it. Fenton was argued to provide this "special adaptor" by teaching a universal, spring-based holder for mobile devices that can be attached to another apparatus. Fromm’s remote control was for traditional cameras; therefore, Bolton was introduced as it teaches a dedicated accessory for remotely controlling a smartphone camera’s functions (zoom, shutter, etc.) via a wireless interface like Bluetooth.
    • Motivation to Combine: A POSITA would combine Fromm and Fenton because Fromm explicitly motivated the need for a "special adaptor" for phones, which Fenton’s universal holder provided. A POSITA would then replace Fromm’s outdated remote control with Bolton’s smartphone-specific remote control because Fromm’s remote would not be compatible with a smartphone. This would allow the combined handle to properly control the attached smartphone’s camera.
    • Expectation of Success: The combination involved integrating known components for their intended purposes: using a universal holder to mount a phone and a smartphone-specific remote to control it, leading to a predictable and functional device.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including:

    • Adding Lee (Korean Application # 10-2012-0040824A) to the Rosenhan/Kim combination to teach a wired connector in addition to a wireless one (Ground 2).
    • Adding Schrage (Application # 2009/0309964) to the Rosenhan/Kim combination to teach a knob for adjusting the friction-fit of the telescoping segment (Ground 3).
    • Adding Fromm to the Rosenhan/Kim combination to teach a knob for controlling the coupler's articulation (Ground 4).
    • Adding Schrage to the Fromm/Fenton/Bolton combination for the telescoping segment friction-fit knob (Ground 6).

4. Key Technical Contentions (Beyond Claim Construction)

  • AIA Patent Status: Petitioner dedicated significant argument to establishing that the ’716 patent is an America Invents Act (AIA) patent, despite its claim to a pre-AIA priority date. Petitioner contended that the Chinese Priority Application failed to provide written description support for several key limitations introduced later, including the "telescoping segment" (claims 1, 11), "spring-based coupling mechanism" (claim 5), and a "knob configured to control articulation of the coupler" (claims 6, 16). Without support in the priority document, these claims were argued to have an effective filing date after March 16, 2013, subjecting the entire patent to AIA provisions and making certain prior art references available for the challenge.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’716 patent as unpatentable.