PTAB

IPR2020-01435

Fellowes Inc v. Treefrog Developments Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Protective Encasement with Switch Feature
  • Brief Description: The ’684 patent is directed to protective cases for mobile electronic devices. The core claimed invention is a "switch feature" that allows a user to operate a control switch on the encased device from the exterior of the case by translating a rotational user action into linear movement of the device's switch.

3. Grounds for Unpatentability

Ground 1: Anticipation over JP384 - Claims 1–5, 8–12, and 20 are anticipated by JP384.

  • Prior Art Relied Upon: JP384 (Japanese Patent Publication 2002-82384).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that JP384, which discloses a waterproof housing for a camera, teaches every element of the challenged claims. Specifically, JP384 discloses a "protective encasement" (housing 1) with mating top and bottom members (housing member 2, cover 3) and a coupling mechanism (latch 6). Crucially, it discloses a "switch feature" (element 13) with an external "user-actuatable control" (handle 133) and an internal "switch interface" (element 132) having a U-shaped opening (cavity 132c) that engages the camera's control switch (101) and translates the handle's rotation into linear movement of the switch's projection (101a).
    • Key Aspects: This ground asserted that even though JP384's switch is rotatable, the projection it engages moves along a linear path, thus satisfying the claim limitation for translating rotation into linear movement.

Ground 2: Anticipation over ’712 Patent - Claims 1–3, 5, 8–10, 12, and 20 are anticipated by the ’712 patent.

  • Prior Art Relied Upon: Patent 7,050,712 (’712 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the ’712 patent, which describes a waterproof housing for devices like PDAs or cameras, anticipates the claims. The ’712 patent discloses a housing (1) with a switch feature (4) comprising an external knob and an internal forked interface (4b). This interface engages a linear control switch (10) on the device, translating the knob's rotation into linear movement. Petitioner contended this directly teaches the key "switch feature" limitations.
    • Key Aspects: This ground was presented as a robust alternative to the JP384 ground, as the device in the ’712 patent explicitly features a linearly movable switch, preemptively countering any narrow claim construction that might require an actual linear switch on the encased device.

Ground 3: Obviousness over JP384 and ’712 Patent - Claims 1–5, 8–12, and 20 are obvious over JP384 in view of the ’712 patent.

  • Prior Art Relied Upon: JP384 (Japanese Patent Publication 2002-82384) and the ’712 patent (Patent 7,050,712).

  • Core Argument for this Ground:

    • Motivation to Combine: Petitioner argued that to the extent JP384 was found not to teach a mechanism for moving a linear switch, the ’712 patent explicitly supplied this teaching. A person of ordinary skill in the art (POSITA) would be motivated to combine these references because both relate to the same field of waterproof cases for electronic devices and address the same problem of external switch actuation. A POSITA would find it obvious to use the switch actuation mechanism from the ’712 patent within the housing design of JP384 to control a linear switch, as it would be a simple and predictable substitution of one known actuator for another.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the teachings because both references disclose analogous, functionally similar components for actuating a device switch from outside a protective housing.

  • Additional Grounds: Petitioner asserted additional anticipation challenges against claims 1-5, 8-12, and 20 based on Ikelite (an instruction manual for a commercial camera housing). Petitioner also asserted several other obviousness challenges, primarily combining the ’712 patent with JP384, Ikelite, or the ’493 publication (Application # 2006/0274493) to teach various sealing and housing construction features.

4. Key Claim Construction Positions

  • "linear movement of the control switch": Petitioner argued this phrase should be construed to mean that the claimed "protective encasement" must only have the capability to cause linear movement of a control switch. Petitioner contended that because the "mobile computing device" is recited in the preamble of independent claims 1 and 8, it is merely part of the intended use and does not limit the claims to require the actual presence of a device with a linear switch. The claims are directed to the encasement itself, not the combination of the encasement and the device.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial based on issue preclusion from a co-pending district court case would be improper. The core arguments were:
    • No Final Adjudication: There had been no final adjudication of the ’684 patent's validity in the related litigation. Although Petitioner dismissed its invalidity counterclaims, its affirmative defenses of invalidity remained active in the case.
    • Different Legal Standards: Citing Novartis v. Noven Pharma, Petitioner argued that even a district court finding of validity would not bind the PTAB. The district court uses a "clear and convincing evidence" standard, whereas the PTAB uses a lower "preponderance of the evidence" standard, meaning the issues are not identical for preclusion purposes.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1–5, 8–12, and 20 of the ’684 patent as unpatentable.