PTAB

IPR2020-01469

Fellowes Inc v. Treefrog Developments Inc

Key Events

Petition

petition

Title: Apparatus for Housing an Electronic Device
Brief Description: The ’598 patent describes a protective apparatus for an electronic device, such as a mobile phone. The apparatus consists of a top member and a bottom member that couple together to form a sealed housing, featuring a transparent membrane for screen use and a lens for a camera.

Prior Art Relied Upon: Kuhn (European Patent No. 1583251).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kuhn discloses every element of the challenged claims. Kuhn teaches a two-part, waterproof protective housing for a mobile phone with a camera. Its top member includes a frame and a transparent membrane for operating the device. Its bottom member includes a transparent area allowing the phone's camera to take pictures, which Petitioner contended is the claimed "lens." The two members mate via a channel containing a compressible gasket to form a waterproof seal, and Kuhn discloses clasping mechanisms to hold the assembly together.
- Key Aspects: The argument hinges on a broad interpretation of terms like "lens" (as any optically transparent region) and "mate" (as simply fitting together), which Petitioner asserted are consistent with their plain and ordinary meaning.

Prior Art Relied Upon: Kuhn (European Patent No. 1583251) and Richardson (Application # 2008/0316687).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that to the extent Kuhn is found to have any deficiencies, Richardson supplies the missing elements. If Kuhn’s transparent area is not considered a "lens," Richardson explicitly teaches a distinct "camera lens cover" in a protective case. If Kuhn’s "form-locking" feature is not considered sufficient to meet the "mate" limitation, Richardson teaches a specific snap-fit latching mechanism (ridges fitting into a groove) to connect two housing shells. Richardson also discloses sealed buttons formed by a flexible, stretchable outer layer over openings in a rigid inner shell.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Richardson’s known, effective features with Kuhn's basic housing design to predictably improve functionality. For example, a POSITA would incorporate a well-understood snap-fit closure for simple and efficient assembly or add a dedicated camera lens cover to ensure the device’s camera remains fully functional.
- Expectation of Success: A POSITA would have a high expectation of success, as these combinations involve integrating known solutions for common problems in protective case design.

Prior Art Relied Upon: Kuhn (European Patent No. 1583251) and Noda (Patent 5,583,742).
Core Argument for this Ground:
- Prior Art Mapping: This ground focused on adding features for external controls and ports. Noda discloses a ruggedized computer case with a sealed power button, which is achieved by overlaying an opening in the case with a flexible, shock-absorbing member. Noda also teaches sealable apertures for ports that are closed by removable covers or "bungs," allowing access while maintaining a seal.
- Motivation to Combine: Kuhn expressed a design goal for the user to have "use of the entire control of the mobile phone." A POSITA would therefore be motivated to incorporate known solutions like Noda's sealed buttons and port covers into Kuhn's housing. This would allow a user to operate the device’s buttons and access its ports without removing it from the waterproof case, a predictable and desirable improvement.
- Expectation of Success: A POSITA would expect success in combining these features, as Noda provides a clear template for creating sealed access points on a protective housing.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combining Kuhn (and Kuhn with Richardson) with Pirila, Krumin, JP384, the ’712 patent, and the ’895 patent to teach various known features such as alternative sealed button designs, switch actuation mechanisms, and sealable port covers.

"lens": Petitioner argued this term does not require a distinct component and should be construed broadly as an "optically transparent region." Under this construction, Kuhn's bottom member, which can be made entirely transparent, meets the limitation.
"mate": Petitioner contended this term should be given its plain meaning of "to join or fit together." Petitioner also argued that even if interpreted more narrowly to require a latching or interlocking engagement, Kuhn's disclosure of a "form-locking" connection between the housing parts would meet the limitation. This interpretation was central to the anticipation argument against Kuhn.

Petitioner argued that issue preclusion based on a related district court litigation should not bar institution. The core reasons were:
- No Final Adjudication: The invalidity issues had not been finally adjudicated in the district court, as Petitioner's affirmative defenses of invalidity were still being litigated.
- Different Legal Standards: Controlling precedent holds that a district court judgment on validity does 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.

Petitioner requests institution of inter partes review and cancellation of claims 9-14 and 16-20 of the ’598 patent as unpatentable.