SZ Dji Technology Co Ltd v. Dareltech LLC

1. Case Identification

• Case #: IPR2019-00722
• Patent #: 9,055,144
• Filed: February 22, 2019
• Petitioner(s): SZ DJI TECHNOLOGY CO., INC.
• Patent Owner(s): DARELTECH, LLC
• Challenged Claims: 1-17

2. Patent Overview

• Title: Handle for a Handheld Terminal
• Brief Description: The ’144 patent discloses a handle for holding and remotely controlling a mobile phone for photography and videography. The invention integrates key functional components, including a wireless interface module, a key module with user-operated buttons, a power supply, and a phone mounting mechanism, into an ergonomic handle structure.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 7-17 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 taught an ergonomic smartphone handle with most of the claimed features, including a handle portion, control buttons (key module), and an electronic interface for wireless communication (e.g., Bluetooth) with the phone. However, Rosenhan allegedly failed to explicitly disclose a spring-loaded, adjustable mounting mechanism or that an internal battery powers the handle's own electronics. Petitioner asserted that Kim supplied these missing elements, disclosing a handle with a spring-loaded, sliding phone mount to accommodate phones of various sizes and a battery that powers its wireless transmitter. The combination of Rosenhan's handle and controls with Kim's spring-loaded mount and power configuration allegedly rendered the independent claims (1, 11, 14) and related dependent claims obvious.
  • Motivation to Combine: A POSITA would combine Kim with Rosenhan to improve Rosenhan's design for commercial use. Rosenhan's fixed-size phone mount was a practical limitation, and Kim provided a known, elegant solution with its adjustable, spring-loaded holder. A POSITA would have been motivated to substitute Kim's superior mounting mechanism into Rosenhan's handle to create a single, more versatile product. Similarly, powering the handle's wireless electronics from an internal battery (as taught by Kim) was a logical and necessary modification for a portable device like Rosenhan's.
  • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success, as the combination involved the simple substitution of one known type of phone mount for another and the application of a known powering technique to a similar device, yielding predictable results.

Ground 2: Claims 5 and 6 are obvious over Rosenhan and Kim in view of Lee.

• Prior Art Relied Upon: Rosenhan (Application # 2013/0005401), Kim (WO 2012/096433), and Lee (Korean Application # 10-2012-0040824A).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Rosenhan and Kim to address claims 5 and 6, which required the interface module to be configured for a wired connection (e.g., USB or iPhone interface). While the Rosenhan/Kim combination established the wireless handle, Lee was introduced because it taught a smartphone handle accessory that explicitly included both a wireless (Bluetooth) interface and a wired connector for charging and controlling the phone. Petitioner argued for modifying the Rosenhan/Kim device with Lee's teaching of dual-interface capability.
  • Motivation to Combine: A POSITA would add a wired interface as taught by Lee to the Rosenhan/Kim combination to enhance functionality and user flexibility. Providing both wired and wireless options would allow the handle to operate with phones that lack a wireless interface or when wireless capabilities are disabled (e.g., airplane mode). It would also offer the known advantages of wired connections, such as lower power consumption, increased reliability, and the ability to charge the phone while simultaneously using the remote control functions.
  • Expectation of Success: Incorporating a standard USB or iPhone port into a handle accessory was a well-known and straightforward design task with predictable results.

Ground 3: Claims 1-17 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: This ground presented an alternative theory for the obviousness of all challenged claims. Fromm disclosed a handheld support apparatus for a camera, noting that a "special adaptor" might be needed to use it with a "picture phone." Petitioner asserted that Fenton disclosed precisely such a "special adaptor": a universal, spring-loaded holder for a smartphone. The combination of Fromm's handle and Fenton's universal holder formed the basic physical structure. Bolton was then added to provide the remote-control functionality, as it taught a wireless remote-control accessory specifically designed to operate smartphone camera functions (photo, video, zoom, etc.) via Bluetooth or Wi-Fi.
  • Motivation to Combine: A POSITA would be explicitly motivated by Fromm's own disclosure to find a "special adaptor" like Fenton's to make Fromm's device compatible with smartphones. Furthermore, because Fromm's remote control was designed for older digital cameras, a POSITA would be motivated to replace it with Bolton's modern, smartphone-specific remote control system to create a functional and relevant product. The combination represents a logical path to update an older concept for use with contemporary technology.
  • Expectation of Success: The combination involved using Fenton's holder to solve a problem identified by Fromm and substituting Bolton's superior remote-control module for Fromm's outdated one. These were argued to be simple substitutions of known components to achieve a predictable and desired outcome.

4. Key Technical Contentions

• AIA Patent Status: A central threshold argument was that the ’144 patent is an America Invents Act (AIA) patent, despite claiming priority to a pre-AIA Chinese application. Petitioner contended that the Chinese priority document lacked adequate written description support for key claim limitations, including "one or more springs," "spring-loaded," and "handle tripod." Therefore, Petitioner argued that claims 1-17 were not entitled to the earlier priority date and their effective filing date was the U.S. filing date of August 7, 2013, making them subject to the first-inventor-to-file provisions of the AIA.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-17 of the ’144 patent as unpatentable.