PTAB

IPR2019-01067

Quest USA Corp v. PopSockets LLC

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1. Case Identification

2. Patent Overview

  • Title: Expandable Sockets For Use With Portable Media Players
  • Brief Description: Patent 9,958,107 (the ’107 patent) discloses an expandable socket for attachment to portable media players or their cases, intended for use as grips or stands. The device generally comprises a platform for attachment, a button, a collapsible skin or mechanism extending between the platform and button, and a biasing element.

3. Grounds for Unpatentability

Ground 1: Obviousness over Barnett and Karmatz - Claims 1, 5, 7-12, 14, and 15 are obvious over Barnett in view of Karmatz.

  • Prior Art Relied Upon: Barnett (WO 2013/138500) and Karmatz (U.S. Provisional Application No. 61/375,096).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Barnett, which discloses an expandable docking accessory for mobile devices, taught nearly all limitations of the independent claims. Barnett's "male snap-fit connector 15" was mapped to the claimed platform, and its "docking accessory body 9" was mapped to the button. The "accordion 10" in Barnett was argued to be the claimed skin. Barnett's lock, formed by a "female connector 21" and an "accordion flex circuit 16," was asserted to teach the claimed first and second projections that releasably secure the button to the platform. The only element Petitioner contended was missing was the "biasing element." This element was supplied by Karmatz, which discloses an apparatus with a conical spring to bias a top piece away from a base.
    • Motivation to Combine: A POSITA would combine Karmatz's conical spring with Barnett's expandable accessory to achieve the express benefit taught by Karmatz: a device that can "spring to close and open." Petitioner asserted this combination would yield the predictable result of a device that could be opened quickly and with a single hand, a known desirable feature for such phone accessories.
    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success, as Karmatz’s conical spring was dimensionally compatible with Barnett’s conical accordion structure. The combination was alleged to be a predictable substitution that would also add stability, guard against material fatigue in Barnett's accordion, and provide a known functional improvement.

Ground 2: Obviousness over Barnett and Dai - Claims 1, 5, 7, 9-12, and 15 are obvious over Barnett in view of Dai.

  • Prior Art Relied Upon: Barnett (WO 2013/138500) and Dai (Chinese Utility Model Patent No. CN 201699919).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination for adding a biasing element to Barnett's core structure. Petitioner relied on Dai, which discloses a loudspeaker with a retractable cavity described as a "tubular telescopic folding structure." Dai's cavity contains a compression spring that is "sleeved with the cavity" and is used to drive it into an expanded state to improve sound quality. Petitioner argued that substituting this spring into Barnett's device would render the claims obvious.
    • Motivation to Combine: The motivation was to incorporate Dai's compression spring into Barnett's device to gain the same benefit taught by Dai: automatically driving the device into an expanded configuration. This modification achieves the desirable "spring open" functionality, making the device more convenient for the user. Petitioner argued this was a simple substitution of one known element for another to obtain predictable results.
    • Expectation of Success: Petitioner asserted that integrating a known spring element from Dai into Barnett's known mechanical structure to achieve spring-driven expansion was a straightforward design choice for a POSITA. The combination would have predictably added stability and durability to Barnett's accordion structure, providing a clear path to a successful and improved product.

Ground 3: Anticipation by Chen ’236 - Claims 1-4 are anticipated by Chen ’236.

  • Prior Art Relied Upon: Chen ’236 (Chinese Utility Model Patent No. CN 201491236).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Chen ’236, which discloses an expandable loudspeaker box, taught every element of claims 1-4 in a single reference. The loudspeaker's "box body 1" with "foot pads 11" was mapped to the "platform adapted to engage" a device. Its telescoping "cover body 2" was mapped to the "button." An "abutting spring 4" within Chen '236 was identified as the "biasing element arranged to bias the button away from the platform." Finally, Chen ’236's lock mechanism, comprising a "male buckle 5" (first projection) and a "female buckle 6" (second projection), was argued to meet the claim limitations for a lock that releasably secures the button to the platform, including the recess for receiving the projection. Petitioner provided a detailed element-by-element mapping for claims 1-4.

  • Additional Grounds: Petitioner asserted additional challenges, including: obviousness of claims 6, 13, and 16 over Barnett and Karmatz in view of the ’031 patent (to add an elastomeric skin); obviousness of claims 8 and 14 over Barnett and Dai in further view of Stager (to add a conical spring); anticipation of various claims by Chen ’376; and several other obviousness challenges based on combinations of Chen ’376 with Dai, Lan, and Stager.

4. Key Claim Construction Positions

  • For the purposes of the IPR, Petitioner adopted the claim construction positions advanced by the Patent Owner in co-pending district court litigation, requesting that plain and ordinary meaning be applied.
  • expandable socket: The parties agreed this term is consistent with "a hollow structure that expands."
  • Extends Outward from the [Button/Platform]: Patent Owner argued this means "the projections each extend away from the button/platform and toward one another," a position Petitioner adopted for the IPR.
  • an inner wall spaced radially inward of the outer wall: Patent Owner asserted this limitation is illustrated by the single skin/cover with distinct inner and outer surfaces shown in Figure 2 of the ’107 patent.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-16 of the ’107 patent as unpatentable.