PTAB

IPR2020-01623

Fellowes Inc v. Treefrog Developments Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Housing for an Electronic Device
  • Brief Description: The ’325 patent discloses an apparatus for housing an electronic device, consisting of top and bottom members. The top member includes a rigid frame with a screen-protecting membrane, and the bottom member features a channel with a compressible gasket to form a seal when the members are joined by their respective clasping mechanisms.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 7, 10, 11, and 15 by Kuhn

  • Prior Art Relied Upon: Kuhn (European Patent No. 1583251).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Kuhn disclosed every element of the challenged claims. Kuhn teaches a waterproof, protective housing for a mobile phone comprising top and bottom members that couple together. It includes a rigid frame, a transparent membrane for operating the device, a channel with a seal (gasket), and a ridge from the top member that compresses the seal within the channel. Petitioner contended that Kuhn's disclosure of a "form-fitting" or "form-locking" connection between the members, in addition to optional external locking clasps, meets the limitations of the claimed clasping mechanism. This includes a lip on the top member's ridge engaging a groove on the bottom member's channel structure.
    • Key Aspects: The central argument was that Kuhn's detailed description of a "form-locking" connection, where the housing parts engage securely, inherently taught the claimed clasping features even if the external clasps were considered optional.

Ground 2: Obviousness of Claims 1, 7, 10, 11, and 15 over Kuhn in view of Goudal

  • Prior Art Relied Upon: Kuhn (European Patent No. 1583251) and Goudal (French Patent Publication FR2705857).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that to the extent Kuhn was found not to explicitly teach the claimed clasping mechanism (a lip on a ridge engaging a groove in a channel wall), Goudal supplied this teaching. Goudal discloses a "box with a snap-on lid" for electrical equipment that uses this exact latching mechanism to create an adequate seal. All other elements were asserted to be present in Kuhn.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) designing a waterproof housing like Kuhn's would be motivated to ensure its top and bottom members were securely fastened in a water-tight manner. Goudal discloses a well-known and effective snap-on clasping mechanism for the same purpose. A POSITA would combine Kuhn's housing with Goudal's proven clasping mechanism to achieve a reliable waterproof seal, a predictable improvement.
    • Expectation of Success: The combination involved applying a conventional snap-fit closure (Goudal) to a protective case (Kuhn), a simple mechanical integration with a high expectation of success.

Ground 3: Obviousness of Claims 1, 7, 10, 11, and 15 over Kuhn in view of von Holdt

  • Prior Art Relied Upon: Kuhn (European Patent No. 1583251) and von Holdt (Patent 7,090,088).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative to Goudal for teaching the specific clasping mechanism. Petitioner argued that von Holdt, which discloses a bucket and lid with a "wedge seal," teaches an identical clasping structure: a projecting ridge with a lip that engages a groove in a channel wall and compresses a seal. This mechanism, used for creating a watertight seal on containers, was argued to be directly analogous.
    • Motivation to Combine: The motivation was similar to that for combining with Goudal. von Holdt addresses the common problem of sealing two container parts together. A POSITA would look to analogous arts, such as sealed containers like buckets, for well-known and reliable clasping and sealing solutions. Applying von Holdt's internal clasping mechanism to Kuhn's housing was presented as an obvious design choice to enhance the security and water-tightness of the seal.
    • Expectation of Success: A POSITA would expect success in applying von Holdt's well-understood mechanical seal to Kuhn's housing, as both systems rely on basic principles of interference fits and gasket compression.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges. Grounds 4-6 argued claim 10 (reciting a "camera lens") is obvious by adding Richardson (Application # 2008/0316687), which teaches a transparent camera lens cover, to the primary combinations. Grounds 7-12 argued claims 2, 5, and 12 (reciting sealable "apertures") are obvious by adding either Noda (Patent 5,583,742) or Carnevali (Patent 7,495,895), which both teach protective cases with sealable openings for ports, to the primary combinations.

4. Arguments Regarding Discretionary Denial

  • Petitioner anticipated that the Patent Owner would argue for denial based on claim preclusion from a related district court litigation. Petitioner contended preclusion did not apply for two main reasons.
  • First, there had been no final adjudication of invalidity in the district court. Although Petitioner dismissed its invalidity counterclaims with prejudice, it explicitly reserved its invalidity arguments as affirmative defenses, which continued to be litigated.
  • Second, even a final district court judgment of "not invalid" would not bind the PTAB. A district court's decision is based on a "clear and convincing evidence" standard, whereas the PTAB uses a lower "preponderance of the evidence" standard for unpatentability.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 5, 7, 10-12, and 15 of the ’325 patent as unpatentable.