PTAB

IPR2020-01509

Fellowes Inc v. Treefrog Developments Inc

Key Events

Petition

petition

Title: Apparatus for Housing an Electronic Device
Brief Description: The ’180 patent discloses a protective encasement for mobile computing devices. The invention centers on a door or cover with an associated gasket, connected to the encasement by a tether, designed to seal an aperture that provides access to an electrical connection.

Prior Art Relied Upon: ’220 Publication (Application # 2007/0158220).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the ’220 Publication discloses every element of the challenged claims. It teaches an impact-resistant case ("encasement") with top and bottom members for a portable electronic device. The ’220 Publication’s "tethered plug 5" was identified as the claimed "door" or "cover," which seals an "access tunnel 26" (the "aperture") located proximate to an electrical connection. Petitioner asserted that the plug portion that enters the tunnel corresponds to the claimed "gasket," and its "tether portion 10" corresponds to the claimed tether connecting the gasket to the encasement. The open-front design of the case was argued to meet the limitations related to touchscreen access.

Prior Art Relied Upon: Kuhn (European Patent # 1,583,251) and the ’220 Publication (Application # 2007/0158220).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Kuhn provides the foundational elements of the claimed apparatus. Kuhn discloses a waterproof, two-part housing for a mobile phone that includes a membrane for screen use, various coupling mechanisms to seal the housing parts, and a bushing sealed by a plug for a "cable connection," which teaches the claimed aperture. However, Kuhn does not detail the plug's specific structure or teach connecting it via a tether.
- Motivation to Combine: Petitioner argued that Kuhn’s disclosure of a plug without a retention mechanism presents a known problem: the plug can be easily misplaced or lost, defeating the waterproof nature of the case. A person of ordinary skill in the art (POSITA) would be motivated to look for a solution and would find one in the ’220 Publication, which explicitly teaches using a tether to secure a plug to a case. A POSITA would combine Kuhn’s case with the tethered plug from the ’220 Publication to achieve the predictable result of preventing plug loss.
- Expectation of Success: The combination involved applying a known tethering solution to solve a known problem, and a POSITA would have had a high expectation of success in implementing this simple, mechanical feature.

Prior Art Relied Upon: Kuhn (European Patent # 1,583,251) and the ’742 Patent (Patent 5,583,742).
Core Argument for this Ground:
- Prior Art Mapping: As in the previous ground, Petitioner relied on Kuhn to teach the basic waterproof encasement with a plugged aperture. The ’742 Patent was presented as an alternative reference to supply the missing tethered plug/cover feature. The ’742 Patent discloses a protective computer case with sealable apertures closed by tethered covers (element 39a with tether 41). The cover includes an "annular press-fit portion" (element 39b) that functions as the claimed gasket to create a waterproof seal.
- Motivation to Combine: The motivation is identical to the previous ground: a POSITA designing a waterproof case based on Kuhn would seek to prevent the loss of its sealing plug. The ’742 Patent provides a well-understood and commercially conventional method for tethering a cover to a case. A POSITA would combine these known elements for the predictable benefit of user convenience and maintaining the integrity of the seal.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations that also incorporated the ’493 Publication (Application # 2006/0274493) to further support common knowledge and specific teachings related to features like touchscreen membranes and various coupling mechanisms for securing case halves.

"gasket": Petitioner dedicated significant argument to this term, asserting the claims are internally inconsistent. The independent claims recite a "gasket," but dependent claims (e.g., 7, 16, 26) state the "gasket includes a bung." This contradicts the patent’s specification, which consistently describes a "bung" that includes or has a "gasket" added to it. To resolve this inconsistency for the purpose of the inter partes review (IPR), Petitioner proposed construing "gasket" to mean a sealing member for insertion into an aperture, which may be a bung. Petitioner noted this construction was adopted arguendo and is consistent with the Patent Owner's asserted construction in related district court litigation.

Petitioner proactively argued that discretionary denial based on issue preclusion from a co-pending district court litigation would be inappropriate. The core arguments were that there had been no final adjudication on the merits of validity in the court proceeding. Furthermore, Petitioner contended that even a final district court judgment upholding validity would not bind the Patent Trial and Appeal Board. This is because the district court uses a higher "clear and convincing evidence" standard for invalidity, whereas the Board uses a lower "preponderance of the evidence" standard, meaning the issues are not identical for preclusion purposes.

Petitioner requests institution of an IPR and cancellation of claims 1-5, 7-8, 10-14, 16-17, 19-24, and 26-27 of the ’180 patent as unpatentable.