PTAB

IPR2020-00869

Fellowes Inc v. Treefrog Developments Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Protective Encasement
  • Brief Description: The ’834 patent describes a two-part protective encasement for a mobile computing device. The invention centers on a specific waterproof sealing structure where a downwardly extending protrusion from the top member mates with a seal located within a channel in the bottom member, with the two members being secured by corresponding latching mechanisms.

3. Grounds for Unpatentability

Ground 1: Anticipation by Kuhn (Claim 28)

  • Prior Art Relied Upon: Kuhn (European Patent No. 1,583,251).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kuhn, which discloses a waterproof protective housing for a mobile phone, teaches every element of claim 28. Kuhn’s top housing part (10) includes a frame with a protrusion extending downward from its inner surface. Its bottom housing part (11) has a channel (16) containing a seal (17) and an outer wall with a latching mechanism (closure element 51). Petitioner contended that Kuhn’s figures clearly show the protrusion from the top part mating with the seal within the channel of the bottom part. This configuration directly corresponds to the key limitation that the patent examiner identified as the basis for allowing the ’834 patent over the prior art of record. Petitioner also argued that Kuhn discloses alternative "form-locking" latching mechanisms where the protrusion itself forms an interference fit with the groove, independently satisfying the latching limitation.

Ground 2: Obviousness over Kuhn in view of Takashi (Claim 28)

  • Prior Art Relied Upon: Kuhn (European Patent No. 1,583,251) and Takashi (Japanese Patent Publication JP2006-064796).
  • Core Argument for this Ground:
    • Prior Art Mapping: To the extent Kuhn was considered deficient in disclosing the claimed protrusion-seal interaction, Petitioner argued that Takashi explicitly supplied this feature. Takashi discloses a waterproof case for an electronic device (e.g., a camera) with a top member having a protrusion (24) that extends downward into a channel (42) on the bottom member. A compressible gasket (50) is positioned in the channel, which is compressed by the protrusion to form a watertight seal. Petitioner asserted this structure is functionally and structurally identical to that claimed in the ’834 patent.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Kuhn and Takashi because both relate to waterproof enclosures for portable electronic devices and employ similar designs and materials. A POSITA seeking to improve the sealing performance of Kuhn’s design would have looked to Takashi’s clear and effective protrusion-in-channel sealing method as a known solution to achieve a more robust and reliable waterproof seal.
    • Expectation of Success: The combination involved applying a known sealing principle from one waterproof case to another, making the successful implementation of a tighter seal predictable and straightforward.

Ground 3: Obviousness over Kuhn in view of Burney, Kirkis, and Landis (Claim 28)

  • Prior Art Relied Upon: Kuhn (European Patent No. 1,583,251), Burney (Application # 2007/0205196), Kirkis (Patent 4,457,447), and Landis (Patent 4,418,833).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that if Kuhn was found to lack the specific claimed latching mechanisms, these features were well-known from the analogous art of liquid-tight containers, such as plastic buckets. The secondary references (Burney, Kirkis, and Landis) each disclose pails and lids with integrally formed internal latching mechanisms. These mechanisms consist of protrusions or ridges on one member (the bucket rim) that create a snap-fit with corresponding ledges or beads on the wall of a channel in the other member (the lid), thereby creating a secure, watertight seal without external clasps.
    • Motivation to Combine: A POSITA designing a waterproof plastic enclosure for a mobile device would be motivated to consult the well-established art of other sealed plastic containers, like buckets, for proven and effective latching solutions. Incorporating the simple, internal snap-fit mechanisms from the bucket art into Kuhn’s design would have been an obvious design choice to securely fasten the housing members in a liquid-tight manner.
    • Expectation of Success: Because the snap-fit mechanisms from the bucket art are simple, reliable, and widely used in plastic containers, a POSITA would have a high expectation of success in applying them to Kuhn’s plastic housing to achieve a secure internal latch.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Kuhn and Richardson ’493 (to supply a multi-touch display); Takashi and Richardson ’687 (to add snap-fit features); and further combinations of all the above-cited references.

4. Key Claim Construction Positions

  • "protrusion": Petitioner argued that the claimed “protrusion that extends down from an inner surface of the top member inside the outer perimeter of the frame” does not preclude the protrusion from also forming a part of the outer perimeter.
  • "first latching mechanism": Petitioner contended that the protrusion itself could constitute the claimed "first latching mechanism," for example, through an interference fit with the channel walls, and was not limited to a separate component like a clip or catch.
  • "first" and "second": Petitioner asserted that the terms "first" and "second" as applied to the latching mechanisms are merely relative identifiers to distinguish two mating components and do not imply a specific structure or order.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claim 28 of Patent 8,531,834 as unpatentable.