PTAB

IPR2020-01575

Fellowes Inc v. Treefrog Developments Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus for Housing an Electronic Device
  • Brief Description: The ’466 patent discloses a protective housing for an electronic device, comprising top and bottom members that couple together. The top member includes a rigid frame and a transparent membrane for screen interaction, while the bottom member has a channel with a compressible gasket to form a seal. The key disputed feature is a "flexible portion" overlaid on parts of both the rigid frame and the membrane to enhance sealing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kuhn and Hollaway - Claims 1, 5-7, 11, and 12 are obvious over Kuhn in view of Hollaway.

  • Prior Art Relied Upon: Kuhn (European Patent No. 1,583,251) and Hollaway (Application # 2011/0228192).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kuhn, the primary reference, disclosed a waterproof protective housing with nearly all claimed features, including a top member with a rigid frame and membrane, a bottom member, a channel with a gasket, and clasping mechanisms. The only element Petitioner contended Kuhn lacked was the "flexible portion overlaid on at least part of an exterior portion of the rigid frame and...the membrane." Hollaway was introduced to supply this limitation, as it teaches a decorative overlay and adhesive layer that covers the interface between the frame and membrane to enhance waterproofing.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Hollaway’s sealing overlay with Kuhn’s housing to address the known potential for leakage at the membrane-frame interface. This motivation would be particularly strong given Kuhn’s intended use for underwater activities, where increased water pressure exacerbates leakage risk and can destroy the encased electronic device.
    • Expectation of Success: A POSITA would have a high expectation of success, as applying a conventional sealing overlay, as taught by Hollaway, is a simple, inexpensive, and predictable method to improve the waterproof seal of a device housing.

Ground 2: Obviousness over Kuhn, Hollaway, and Richardson ’493 - Claims 1-3, 5-9, 11, and 12 are obvious over Kuhn and Hollaway in further view of Richardson ’493.

  • Prior Art Relied Upon: Kuhn, Hollaway, and Richardson ’493 (Application # 2006/0274493).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination of Kuhn and Hollaway by adding Richardson ’493 to teach the limitations of dependent claims 2, 3, 8, and 9. Specifically, Richardson ’493 discloses a protective housing with apertures in the sidewall of the rigid frame and a pivotally connected door (e.g., a "pod door") for closing and sealing these apertures to provide access to device ports or buttons.
    • Motivation to Combine: A POSITA designing a protective case would find it obvious to incorporate access ports for the device's controls and connectors, which are typically located on its sides. Richardson '493 teaches that providing such apertures with sealing doors is a known solution. Using a pivotal connection for the door is an obvious design choice to prevent it from being lost when opened, thereby ensuring the housing remains waterproof.
    • Expectation of Success: Integrating a sealed, pivotally connected door into the side of a rigid housing frame is a well-understood and common technique in the field of protective enclosures.

Ground 3: Obviousness over Kuhn, Hollaway, and FR857 - Claims 5, 7, 11, and 12 are obvious over Kuhn and Hollaway in further view of FR857.

  • Prior Art Relied Upon: Kuhn, Hollaway, and FR857 (French Patent Application 2,705,857).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented to address a potential narrow interpretation of the "clasping mechanism" limitations in claims 5, 7, and 11. If Kuhn's primary form-fitting seal is deemed insufficient, FR857 was introduced to explicitly teach a snap-fit clasping mechanism inside a channel. FR857 discloses a groove on an inner surface of the channel wall that engages a lip extending from the ridge of the mating member, a classic snap-fit seal.
    • Motivation to Combine: A POSITA would be motivated to incorporate the well-known and effective snap-on lid mechanism from FR857 into Kuhn's design as an obvious way to improve the security and seal between the housing members. Such mechanisms are common for sealing containers against liquid ingress and represent an obvious design choice for enhancing a waterproof housing.
    • Expectation of Success: Integrating a well-known snap-fit feature onto the existing ridge and channel structures of Kuhn's housing would be a straightforward modification with predictable results.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations substituting Carnevali (Application # 2006/0169689) for Hollaway to teach the "flexible portion," and four-reference grounds adding Richardson '493 or FR857 to the Carnevali combinations. These grounds relied on similar mapping and motivation arguments.

4. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner argued that the claim term "the channel further including a second clasping mechanism" does not require the mechanism to be physically located within the void of the channel. Instead, it could be formed on the structure that defines the channel (e.g., a groove on the channel's underside). Under this interpretation, Petitioner contended Kuhn's "form-locking" connection between the top member's ridge and the bottom member's channel wall already satisfies this limitation. The grounds including FR857 were presented as an alternative argument should the Board adopt a narrower construction requiring the clasping mechanism to be on an interior surface of the channel.

5. Arguments Regarding Discretionary Denial

  • Petitioner anticipated that the Patent Owner would argue for denial based on issue preclusion from a parallel district court litigation involving the ’466 patent and asserted two primary counter-arguments:
    • No Final Adjudication: There was no final adjudication of validity in the district court. While Petitioner dismissed its invalidity counterclaims with prejudice, it explicitly stipulated that its affirmative defenses of invalidity were not dismissed and remained part of the ongoing litigation.
    • Different Legal Standards: Controlling Federal Circuit precedent holds that a district court's finding of validity (under the "clear and convincing evidence" standard) does not preclude the PTAB from finding claims unpatentable in an IPR (under the lower "preponderance of the evidence" standard). Therefore, a district court decision would not bind the Board.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 5-9, 11, and 12 of the ’466 patent as unpatentable.