PTAB

IPR2019-00723

SZ DJI Technology Co Ltd v. Dareltech LLC

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Petition
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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 wirelessly operating the camera of a mobile phone. The invention comprises a spring-loaded holder to secure the phone and an integrated handle apparatus containing a power supply, control buttons, and wireless communication modules.

3. Grounds for Unpatentability

Ground 1: Claims 1-38 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 argued that the combination of Fromm, Fenton, and Bolton teaches every limitation of the challenged claims. Fromm disclosed the core concept of a handheld device with a handle and an integrated remote control for taking self-portraits with a camera. However, Fromm noted that a "special adaptor" would be needed to hold a mobile phone. Fenton disclosed precisely such an adaptor: a universal, spring-loaded holder specifically designed to secure mobile devices of various sizes. Bolton completed the combination by teaching a remote control accessory designed specifically for mobile phone cameras, including wireless communication (e.g., Bluetooth) and specific command buttons for functions like photo capture and video recording. Petitioner contended that substituting Fenton's spring-loaded mobile phone holder for Fromm's camera mount and replacing Fromm's generic remote control with Bolton's mobile-phone-specific remote control system would result in the claimed invention.
    • Motivation to Combine: Petitioner asserted multiple explicit motivations for the combination. A person of ordinary skill in the art (POSITA) would have been motivated to use Fenton's holder as the "special adaptor" suggested by Fromm to enable Fromm's handle to be used with the increasingly popular smartphone cameras. This would have been a predictable solution to expand the commercial applicability of Fromm's device. Furthermore, a POSITA would have been motivated to replace Fromm's remote control, which was designed for traditional cameras, with Bolton's remote, which was specifically designed to control smartphone cameras via wireless protocols. This replacement was necessary because Fromm's remote would be incompatible with a smartphone, and Bolton provided the known solution for wireless smartphone camera control.
    • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success. The combination involved integrating known components for their intended purposes: a handle for holding, a universal clamp for securing a phone, and a wireless remote for controlling it. Modifying Fenton's holder to attach to Fromm's handle via a standard threaded connector was presented as a simple, well-known task.

4. Key Technical Contentions (Beyond Claim Construction)

  • AIA Patent Status: Petitioner argued that the ’627 patent is an America Invents Act (AIA) patent despite claiming priority to a pre-AIA Chinese application. It was contended that the Chinese priority application lacked written description support for key claim limitations, including "spring-loaded holder" and "one or more springs." Because these limitations were allegedly new matter added in a later U.S. application filed after March 16, 2013, the challenged claims were not entitled to the earlier priority date. This assertion was critical for establishing the prior art status of the asserted references under the first-inventor-to-file provisions of the AIA.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-38 of Patent 9,503,627 as unpatentable under 35 U.S.C. §103.