PTAB

IPR2021-00472

Apple Inc v. GUI Global Products Ltd

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petition

1. Case Identification

  • Case #: IPR2021-00472
  • Patent #: 10,562,077
  • Filed: February 5, 2021
  • Petitioner(s): Apple Inc.
  • Patent Owner(s): Walter G. Mayfield, et al.
  • Challenged Claims: 1-5, 7-13

2. Patent Overview

  • Title: System Comprising a Portable Switching Device for Use with a Portable Electronic Device
  • Brief Description: The ’077 patent describes a system comprising a portable electronic device (e.g., wireless earplugs) and a coupled portable switching device (e.g., a protective case). The switching device is configured to activate, deactivate, or send the electronic device into hibernation.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Gundlach and Lee - Claims 1, 2, 8, 9, and 11 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 all physical aspects of the claimed system, including a wireless headset (the portable electronic device) and a portable clamshell charging case (the portable switching device) with a hinged lid and a recess configured to the shape of the headset. Petitioner asserted that Lee remedied Gundlach’s lack of detail on charging circuitry by teaching a system for inductive charging of wireless headsets. Lee’s system included an isolation switch that automatically places the headset in "charging mode" when near the power adapter (the case), thereby activating the headset's battery charging circuit.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references to implement a complete and functional product. A POSITA would have been motivated to supplement Gundlach’s design with Lee’s well-defined inductive charging system, as inductive charging was a known and reliable alternative to the conductive charging hinted at in Gundlach. The combination would predictably result in a wireless headset system with the form factor of Gundlach and the inductive charging functionality of Lee, which would have been seen as a simple substitution of one known charging method for another.
    • Expectation of Success: The proposed modifications were argued to be well within the skill of a POSITA, involving the integration of known charging components into a known device form factor.

Ground 1C: Obviousness over Gundlach, Lee, and Rosener - Claim 11 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 the "wireless earplugs" limitation of claim 11. While the base combination of Gundlach and Lee taught a stereo headset, Gundlach’s embodiment depicted a wire connecting the earpieces. Petitioner argued that Rosener explicitly taught a "Bluetooth-enabled...wireless headset [that] avoids both the need for a headband and the need for cabling," disclosing a truly wireless design with two separate earpieces.
    • Motivation to Combine: A POSITA would have been motivated to modify the Gundlach-Lee combination with Rosener’s teaching to solve the known problems of tangling and user interference caused by wires connecting earpieces. The result would be the predictable improvement of a truly wireless stereo headset, which was a known variation of headsets at the time.

Ground 1E: Obviousness over Gundlach, Lee, and Mak-Fan - Claims 4, 5, 10, 12, and 13 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 targeted claims requiring magnets for case closure and circuit actuation. Petitioner argued Mak-Fan taught a holster for a portable electronic device that used a magnet for closure. Crucially, Mak-Fan also disclosed that the electronic device contained a Hall effect sensor that detected the magnet when the device was holstered, which in turn caused the device to be disabled.
    • Motivation to Combine: A POSITA would have been motivated to replace Gundlach’s simple snap closure with Mak-Fan’s magnetic closure, which was a known, interchangeable, and superior alternative. Furthermore, a POSITA would have been motivated to use Mak-Fan’s Hall effect sensor system as the specific implementation for the automatic "switch" taught by Lee. This would allow the second magnet in the case’s lid to be detected by a sensor in the headset, thereby actuating the charging circuit as claimed.

  • Additional Grounds: Petitioner asserted numerous additional obviousness grounds. These grounds relied on the same core combination of Gundlach and Lee, but substituted Kim (Application # 2011/0117851) to teach remote control features, added Nishikawa (Application # 2007/0145255) to further detail a lens on the switching device, and added Brown (Patent 7,631,811) to teach a lens on the electronic device for a touch interface.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) and §325(d) would be inappropriate. Although this petition was filed after a petition by Samsung on the same patent, Petitioner argued the General Plastic factors favored institution because Apple and Samsung are separate, unrelated competitors. Petitioner also argued that the Fintiv factors favored institution because the parallel district court litigation was in its infancy with no trial date set, meaning a Final Written Decision (FWD) from the Board would issue well in advance of any potential trial. Petitioner further asserted that the merits of the petition were strong and based on prior art not considered during the patent’s conclusory prosecution history.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-5 and 7-13 of the ’077 patent as unpatentable under 35 U.S.C. §103.