Samsung Electronics Co Ltd v. GUI Global Products Ltd

1. Case Identification

• Case #: IPR2021-00337
• Patent #: 10,562,077
• Filed: December 29, 2020
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): GUI Global Products, Ltd., D/B/A Gwee
• Challenged Claims: 1-13

2. Patent Overview

• Title: System and Method for Cleaning an Electronic Device View Screen
• Brief Description: The ’077 patent discloses a system comprising a portable switching device and a portable electronic device configured to selectively couple using magnetic force. The system is described as having functionality for cleaning an electronic device screen, activating magnetic switches, and providing other features like remote control or data storage.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kim - Claims 1-8 are obvious over Kim.

• Prior Art Relied Upon: Kim (Application # 2010/0227642).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim discloses all elements of claims 1-8 by combining teachings from its various disclosed embodiments. Kim teaches a mobile terminal system with a "main device" (the claimed "switching device") and a detachable "sub-device" (the claimed "electronic device"). Petitioner asserted that combining Kim's watch-type main device with features described for its folder-type embodiment renders the claims obvious. Kim’s coupling members, which can be magnets, satisfy the magnetic coupling limitation. The main device's controller, which alters the sub-device's operational state upon coupling (e.g., activating a display), meets the limitation of the switching device being configured to activate the electronic device.
  • Motivation to Combine (for §103 grounds): Petitioner contended that a person of ordinary skill in the art (POSITA) would combine features from Kim's different embodiments because Kim itself suggests its disclosed embodiments "may be used singly and/or by being combined together." The structural similarities between the folder-type and watch-type devices would have motivated a POSITA to apply the coupling and functionality of one to the other.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success as the combination involved applying a known technique (magnetic coupling) from one device embodiment to a similar device embodiment to achieve a predictable result.

Ground 2: Obviousness over Kim in view of Koh - Claim 11 is obvious over Kim in view of Koh.

• Prior Art Relied Upon: Kim (Application # 2010/0227642) and Koh (Korean Patent Publication 10-2008-0093178).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claim 11, which recites that the electronic device is "wireless earplugs." Petitioner argued that while Kim discloses its sub-device can be a "Bluetooth headset" or "ear phone," it lacks specific detail on how to couple such a sub-device to its watch-type main device. Koh was argued to supply this missing teaching by disclosing a wireless headset that detachably couples to a wrist-worn storage unit using both magnets and a complementary protrusion/groove mechanism.
  • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement Kim's suggestion of a wireless earphone sub-device, would have been motivated to consult prior art like Koh, which teaches a compatible technique for coupling a wireless headset to a watch-type device. Koh provided the specific implementation details that Kim lacked for this particular embodiment.
  • Expectation of Success (for §103 grounds): The combination would have yielded predictable results, as it involved integrating Koh's known headset coupling mechanism with Kim's analogous watch-type system.

Ground 3: Obviousness over Kim in view of Lee - Claims 9-10 and 12-13 are obvious over Kim in view of Lee.

• Prior Art Relied Upon: Kim (Application # 2010/0227642) and Lee (Application # 2010/0298032).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claims requiring a magnet to be "employed in actuating the electronic circuit." Petitioner asserted that Kim teaches the general concept of changing the sub-device's state upon detection of coupling. Lee provides a specific and well-known method for achieving this by using a Hall sensor to detect a magnetic field from a nearby magnet, thereby sensing when two parts of a device are coupled (e.g., a flip phone is closed). This sensor system directly maps to the claimed actuation functionality.
  • Motivation to Combine (for §103 grounds): A POSITA implementing Kim's system would have been motivated to use a common and reliable method for detecting the magnetic coupling. Lee discloses such a method using a Hall sensor in a comparable mobile device, making its teachings directly applicable and compatible with Kim's system.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success, as incorporating a Hall sensor to detect a magnet is a standard, predictable technique for determining the proximity or coupling status of electronic device components.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner contended that the challenged claims are not entitled to a priority date earlier than November 3, 2011. It was argued that the earliest provisional application in the priority chain (the ’752 provisional application) fails to provide adequate written description for key claim limitations, including "a portable switching device" and its configuration to "activate, deactivate or send into hibernation the portable electronic device." This contention is critical for establishing that Kim, Koh, and Lee, all published before this date, qualify as prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The core arguments were that the parallel district court litigation was in its infancy and partially stayed, the court had not set a trial date, and any potential trial date would be at least eight months after a Final Written Decision (FWD) from the Board. Petitioner also noted minimal investment in the parallel proceeding, a lack of complete overlap in the challenged claims versus asserted claims, and the strong merits of the petition. Petitioner further argued that denial under §325(d) was unwarranted because none of the prior art references were previously presented to or considered by the USPTO during prosecution.

6. Relief Requested

• Petitioner requests the institution of an inter partes review (IPR) and cancellation of claims 1-13 of the ’077 patent as unpatentable under 35 U.S.C. §103.