ScanSTrut Ltd v. National Products Inc

1. Case Identification

• Case #: IPR2020-01542
• Patent #: 6,585,212
• Filed: August 27, 2020
• Petitioner(s): Scanstrut, Inc. and Scanstrut, Ltd.
• Patent Owner(s): National Products, Inc.
• Challenged Claims: 1, 4-6, 10-12, 14-16, 20, 21, 23, 27, and 30

2. Patent Overview

• Title: Quick release electronics platform
• Brief Description: The ’212 patent discloses a mounting device for securely holding portable electronic devices, such as laptop computers. The invention features a spring-loaded frame structure with slidably interconnected members and a novel clamping mechanism designed to compress an accessory device onto padded mounting surfaces, allegedly overcoming issues of slippage due to vibration.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-6, 10-12, 14-16, 20, 21, 23, 27, and 30 are anticipated by Chen.

• Prior Art Relied Upon: Chen (Patent 6,229,893 and Chinese Patent No. 98248098.9).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen, which discloses a universal hands-free receiver for a mobile telephone, teaches every element of the challenged claims. Chen’s device includes a base with a support rack (first frame member) and a slide (second frame member) that are slidably interconnected for relative motion. The device also features an upper holder and a lower holder that function as the claimed "clamping mechanisms." Petitioner contended that Chen’s upper holder (14) meets the limitations of the claimed clamping mechanism, including a substantially rigid base portion that mounts to an external member (the slide) and a substantially rigid jaw portion extending at an obtuse angle to hold a device. Finally, Petitioner asserted that Chen’s positioning plate (16) and springs (163) constitute the claimed biasing member that is mechanically coupled between the frame members to bias them together.

Ground 2: Claims 1, 4-6, 10-12, 14-16, 20, 21, 23, 27, and 30 are obvious over Chen in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Chen (Patent 6,229,893) and general knowledge of a Person of Ordinary Skill in the Art (POSITA), as evidenced by references such as Wang (Patent 5,305,381), Channer (Patent 6,491,268), and Hartman (Patent 4,275,863).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground served as an alternative to anticipation, primarily addressing the "resilient compressible pad" limitation recited in claims like 14 and 21. Petitioner argued that even if Chen does not explicitly disclose a compressible pad on its jaw portion, adding one would have been an obvious modification. The secondary references (Wang, Channer, Hartman) were cited as evidence that using elastomeric pads, foam, or other non-skid materials on the clamping surfaces of electronic device holders was a well-known and common practice at the time of the invention.
  • Motivation to Combine: A POSITA would combine the teachings of Chen with the well-known concept of a resilient pad for several predictable reasons. The primary motivations were to prevent damage to the clamped mobile device, reduce vibration, allow for variations in device size, and provide a more secure fit. Petitioner argued it would have been a matter of common sense to incorporate such a pad into Chen’s design to improve its function.
  • Expectation of Success: A POSITA would have had a high expectation of success, as this modification involved merely combining known elements (Chen’s holder and a standard compressible pad) using known methods to achieve the predictable result of improved grip and protection.

4. Key Claim Construction Positions

• "a biasing member...mechanically coupled between the first and second frame members...": Petitioner asserted this term should be construed to mean "a biasing member mechanically coupled between the first and second frame members for biasing the first and second frame members together along the first direction, the first or second frame member without the clamping mechanism having a fixed extension opposite the clamping mechanism, such that the biasing member causes the clamping mechanism and extension to hold an accessory device." This construction imports a functional requirement for how the device is held.
• "a substantially rigid base portion including a mounting structure for mounting on an external member": Petitioner proposed this term be construed as requiring that "the base portion does not move relative to the external member in the first direction." This construction was intended to clarify the stability and relationship of the components.
• Petitioner noted that its unpatentability assertions hold true under any proper construction, including those it proposed in related district court litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution would not be duplicative of a previously filed IPR petition (IPR2016-01663) that the Board did not institute. The instant petition was asserted to be distinct because it relies on new prior art and arguments that were not previously considered by the Board, thus weighing against a discretionary denial under §325(d).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-6, 10-12, 14-16, 20, 21, 23, 27, and 30 of the ’212 patent as unpatentable.