PTAB

IPR2020-00483

Microsoft Corp v. MaaLouf Ramzi KhAlil

Log In

1. Case Identification

2. Patent Overview

  • Title: Handle for Handheld Terminal
  • Brief Description: The ’627 patent relates to a handle for holding a mobile phone for taking photographs and videos. The handle integrates remote control components, including command keys and a wireless interface, to operate the mobile phone's camera remotely.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rosenhan - Claim 29 is obvious over Rosenhan.

  • Prior Art Relied Upon: Rosenhan (Application # 2013/0005401).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rosenhan discloses an ergonomically designed handle for a smartphone that includes every element of claim 29. Rosenhan’s device features a mounting structure (“holder”), a grippable handle portion (“handle apparatus”), and multiple control buttons (“command keys”) for functions like zoom and record. Rosenhan also explicitly teaches an electronic interface for communication with the smartphone that can be wireless, such as Bluetooth. Petitioner contended that Rosenhan teaches all limitations of claim 29, and to the extent an explicit "control command" is not described, its function is inherent and its inclusion would have been obvious.
    • Motivation to Combine (for §103 grounds): This ground is based on a single reference.
    • Expectation of Success (for §103 grounds): This ground is based on a single reference.

Ground 2: Obviousness over Rosenhan and Kim - Claim 37 is obvious over Rosenhan in view of Kim.

  • Prior Art Relied Upon: Rosenhan (Application # 2013/0005401), Kim (WO 2012/096433).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground incorporated the arguments for claim 29 over Rosenhan and addressed the additional limitation of claim 37, which requires the holder to use a "sliding member" to adjust for mobile phones of various sizes. Petitioner asserted that while Rosenhan’s holder is depicted for a specific phone size, Kim teaches a handle with an adjustable, spring-actuated phone mount that uses a sliding mechanism. This mechanism in Kim allows the holder to accommodate mobile phones of various thicknesses and sizes, directly teaching the missing element.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Rosenhan's handle and superior remote control features with Kim’s adjustable holder to enhance commercial viability. Given the rapid evolution of smartphone sizes and form factors at the time, creating a universal accessory compatible with multiple devices would have been a clear design goal. Rosenhan itself suggests the use of "other mount structure," which would lead a POSITA to known solutions like the adjustable mount in Kim.
    • Expectation of Success: The proposed modification was argued to be a simple and predictable substitution of one known component (a fixed holder) for another (an adjustable holder) to achieve a well-understood benefit.

Ground 3: Obviousness over Fromm, Fenton, and Bolton - Claims 29 and 37 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 this combination teaches all limitations of claims 29 and 37. Fromm discloses a handheld apparatus with a handgrip and remote control for supporting a camera, and expressly teaches its potential use with a "picture phone" via a "special adaptor." Fenton provides this "special adaptor" by disclosing a universal, adjustable mobile device holder with a spring-loaded sliding mechanism. Bolton supplies the modern wireless remote-control system specifically for a mobile phone, teaching a remote accessory that uses Bluetooth to send commands for photo, video, and zoom functions, which was missing from Fromm’s remote designed for traditional cameras.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these references to create a complete, functional product. Fromm's explicit suggestion to use a "special adaptor" for phones would motivate a designer to incorporate a universal holder like Fenton's. Since Fromm's remote control was designed for older cameras, it would have been obvious to replace its functionality with a modern, phone-specific wireless remote control system as taught by Bolton to enable control of the attached smartphone.
    • Expectation of Success: The combination represented a straightforward assembly of known elements for their intended purposes. It involved using Fenton's holder as Fromm's suggested "adaptor" and substituting Bolton's modern control system for Fromm's outdated one, which would have been a predictable design choice with a high expectation of success.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the petition should be instituted despite prior third-party IPRs (IPR2019-00719 and IPR2019-00723) challenging the same patent. Petitioner emphasized that those proceedings were terminated due to settlement before a Final Written Decision (FWD) was issued. It was argued that since the Board had previously found the same arguments and prior art demonstrated a reasonable likelihood of success, and since the real parties-in-interest faced a potential §315 time bar, denial would leave them without recourse to challenge the patent's validity in an IPR.

5. Relief Requested

  • Petitioner requests institution of an inter partes review of claims 29 and 37 and cancellation of these claims as unpatentable.