PTAB

IPR2021-00471

Apple Inc v. GUI Global Products Ltd

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petition

1. Case Identification

  • Case #: IPR2021-00471
  • Patent #: 10,259,021
  • Filed: February 5, 2021
  • Petitioner(s): Apple Inc.
  • Patent Owner(s): Walter G. Mayfield, et al.
  • Challenged Claims: 1-2, 4-10, 12, 14-17, 19

2. Patent Overview

  • Title: APPARATUS FOR CLEANING VIEW SCREENS AND LENSES AND METHOD FOR THE USE THEREOF
  • Brief Description: The ’021 patent, despite its title, is directed to a system comprising a "portable switching device" coupled to a "portable electronic device." The claimed subject matter primarily involves a protective case (the switching device) configured to activate, deactivate, or place into hibernation a portable electronic device, such as wireless earplugs, when the device is placed within the case.

3. Grounds for Unpatentability

Ground 1A: Claims 1, 4-7, 10, 14-16, and 19 are obvious over Gundlach in view of Lee.

  • Prior Art Relied Upon: Gundlach (Application # 2008/0132293) and Lee (Patent 7,548,040).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gundlach disclosed the core system of a portable electronic device (a wireless headset) and a portable switching device (a clamshell charging case). However, Gundlach was vague on the specifics of the charging mechanism. Lee supplied the missing details, teaching a system for inductively charging a wireless headset within a protective case. Lee explicitly disclosed an electronic circuit within the headset that responds to the case by activating a "charging mode," thus satisfying the limitation that the switching device is configured to activate the electronic device.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) reviewing Gundlach’s design would seek to implement a specific charging method. Lee provided a detailed and well-known solution (inductive charging) in the same field. A POSITA would combine Lee’s inductive charging components with Gundlach’s headset and case design to improve reliability (by eliminating exposed electrical contacts), maintain a compact form factor, and enable charger interoperability.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying a known charging technology from Lee to a similar device (wireless headset and case) described in Gundlach.

Ground 1C: Claim 10 is obvious over Gundlach and Lee in view of Rosener.

  • Prior Art Relied Upon: Gundlach (Application # 2008/0132293), Lee (Patent 7,548,040), and Rosener (Application # 2008/0076489).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed claim 10, which required the electronic device to be "wireless earplugs." While the base combination of Gundlach-Lee taught a wireless stereo headset, Gundlach’s embodiment depicted a wire connecting the two earpieces. Rosener taught a "Bluetooth-enabled...wireless headset" with two separate wireless earphones ("canalphones") that are not wired together, explicitly teaching the benefit of avoiding cabling.
    • Motivation to Combine: A POSITA would combine Rosener’s teaching of truly wireless, separate earpieces with the Gundlach-Lee system to solve the known problem of wires tangling and interfering with user movement. Eliminating the connecting wire between the earpieces in the Gundlach-Lee design was presented as a predictable improvement to enhance user convenience.
    • Expectation of Success: The integration was argued to be a predictable design choice, resulting in a wireless headset that was more user-friendly, a well-understood goal in the art.

Ground 1E: Claims 8, 9, and 17 are obvious over Gundlach and Lee in view of Mak-Fan.

  • Prior Art Relied Upon: Gundlach (Application # 2008/0132293), Lee (Patent 7,548,040), and Mak-Fan (Application # 2008/0012706).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims requiring a second magnet in a lid to secure the lid (claim 9) or actuate the electronic circuit (claim 17). The Gundlach-Lee combination already taught a clamshell case. Mak-Fan disclosed a holster for a portable electronic device that used a magnet in its fold-over flap for closure. Mak-Fan further taught that the electronic device contained a Hall effect sensor that detected the magnet when the holster was closed, which in turn "disabled" the device.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to replace the simple snap closure in Gundlach’s case with Mak-Fan’s magnetic closure as a simple substitution of one known closure type for another to improve ease of use. Furthermore, a POSITA would have recognized Mak-Fan’s use of a magnet and Hall effect sensor as a reliable and well-known method to implement the automatic switching/activation function taught by Lee.
    • Expectation of Success: Substituting a magnetic closure for a snap closure and using a Hall effect sensor to detect the magnet were both described as routine, predictable design choices with known benefits.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 1B (using Nishikawa to teach a lens-equipped LED for the case’s indicator light) and Ground 1D (using Brown to teach a touch-based user interface with a lens for the headset).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued extensively that discretionary denial under §314(a) and §325(d) would be improper.
  • General Plastic/§325(d) Factors: This petition was filed only five weeks after a petition by Samsung on the same patent. Petitioner argued that it and Samsung are separate, unrelated competitors, and this petition relies on entirely different prior art. The timing was justified by prompt prior art searching following the Samsung petition, with no evidence of unfair tactical advantage or road-mapping.
  • Fintiv/§314(a) Factors: Petitioner contended that the parallel district court litigation was in its infancy, with no trial date set and key deadlines months away. Therefore, the Board’s Final Written Decision would issue long before any potential trial. Petitioner further eliminated any risk of duplicative effort by stipulating that, if IPR is instituted, it will not pursue the same invalidity grounds in the district court litigation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 4-10, 12, 14-17, and 19 of the ’021 patent as unpatentable.