PTAB

IPR2020-01543

Fellowes Inc v. Treefrog Developments Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Protective Encasement for Mobile Devices
  • Brief Description: The ’950 patent relates to a protective apparatus for covering a mobile computing device. The invention describes a two-part encasement with a bottom member featuring a perimeter channel and a gasket, and a top member with a rigid frame and a ridge adapted to clasp within the channel to form a seal against the gasket. The patent also discloses a switch mechanism that allows a user to operate a switch on the encased device from the exterior of the housing.

3. Grounds for Unpatentability

Ground 1: Claims 17, 19, and 21 are obvious over Kuhn in view of the ’712 Patent

  • Prior Art Relied Upon: Kuhn (European Patent No. 1,583,251) and the ’712 Patent (Patent 7,050,712).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kuhn, a waterproof protective encasement for a mobile phone, discloses nearly all structural elements of independent claim 17. This includes a top member and a bottom member, a channel in the bottom member’s perimeter, a compressible gasket within the channel, and a rigid frame on the top member with a ridge that extends into and clasps within the channel to seal against the gasket. Petitioner contended that Kuhn lacks the claimed "switch mechanism" and that the ’712 Patent, which describes a waterproof housing for an electronic device, explicitly teaches this missing element. The ’712 patent discloses an external actuator coupled to an internal interface to operate a switch on the encased device.
    • Motivation to Combine: A POSITA would combine these references because Kuhn itself expresses a motivation for a user to "have use of the entire control of the mobile phone." The ’712 patent provides a well-known technique for achieving external control of a device's switch while maintaining the waterproof integrity of the housing, directly addressing Kuhn’s stated goal.
    • Expectation of Success: Petitioner asserted that combining the known switch mechanism from the ’712 patent with Kuhn's protective case would be a simple and predictable integration of known technologies to achieve the expected result of a waterproof case with an external button.

Ground 2: Claims 17, 19, and 21 are obvious over Kuhn in view of JP384

  • Prior Art Relied Upon: Kuhn (European Patent No. 1,583,251) and JP384 (Japanese Patent Publication 2002-82384).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative to Ground 1, using JP384 instead of the ’712 patent to supply the missing switch mechanism. As in Ground 1, Petitioner asserted Kuhn teaches the core two-part housing with its channel, gasket, and clasping ridge structure. JP384, which discloses a waterproof housing for an electronic device like a camera, was cited for its teaching of a switch mechanism. JP384 discloses a user-actuatable exterior knob connected to an interior "engagement body" that operates a control switch on the encased device.
    • Motivation to Combine: The motivation was identical to that in Ground 1. A POSITA seeking to provide the full device control mentioned in Kuhn would look to analogous art, such as waterproof housings for cameras like JP384, for established solutions to provide external switch access without compromising the seal.
    • Expectation of Success: The combination was presented as predictable. A POSITA would have a high expectation of success in incorporating the well-understood switch mechanism from JP384 into the structure of Kuhn's case to produce a fully functional, waterproof, and controllable device enclosure.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Richardson ’687 (Application # 2008/0316687) and FR857 (French Patent Publication 2,705,857). Richardson ’687 was cited to further teach snap-fit connections as a form of "clasping within the channel" and to bolster teachings on touch screen operation. FR857 was cited to further demonstrate well-known clasping and sealing mechanisms commonly used in two-member protective enclosures.

4. Key Claim Construction Positions

  • Petitioner argued that the preamble phrase "for a mobile computing device" and related language concerning a "touch screen display" should be construed as statements of intended use, not as structural limitations of the claimed apparatus. This construction is central to the petition's arguments, as it allows prior art disclosing protective cases for any object, not just mobile devices with touch screens, to be applied against the claims if the core structural elements are present.

5. Arguments Regarding Discretionary Denial

  • Petitioner anticipated that the Patent Owner would request discretionary denial based on issue preclusion from a parallel district court litigation involving the same patent.
  • Petitioner argued against denial, stating that there had been no final adjudication of validity in the district court. Although Petitioner had dismissed its invalidity counterclaims, its affirmative defenses of invalidity remained active in the litigation.
  • Furthermore, Petitioner argued that even a final district court judgment of validity would not bind the PTAB. It cited controlling Federal Circuit precedent establishing that the Board is not precluded by district court validity determinations due to the different standards of proof (preponderance of the evidence at the PTAB versus clear and convincing evidence in district court).

6. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 17, 19, and 21 of the ’950 patent as unpatentable.