Apple Inc v. GUI Global Products Ltd

1. Case Identification

• Case #: IPR2021-00473
• Patent #: 10,589,320
• Filed: February 5, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): GUI Global Products, Ltd.
• 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 ’320 patent describes a system comprising a portable electronic device (e.g., wireless earplugs) and a portable switching device (e.g., a protective case). The switching device is configured to activate, deactivate, or place the electronic device into hibernation, for instance by using a magnet in the case to interact with a switch in the electronic device.

3. Grounds for Unpatentability

Ground 1: 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 the core system of a wireless headset (the "portable electronic device") stored and charged in a portable clamshell case (the "portable switching device"). The case has a recess configured to the shape of the headset, and the system uses magnets for coupling. However, Gundlach only broadly mentioned charging circuitry. Lee supplied the missing details, teaching a robust inductive charging solution for wireless headsets, including an isolation switch that activates a "charging mode" when the headset is placed near its power adapter (case).
  • Motivation to Combine: A POSITA would combine Lee with Gundlach to implement the general charging functionality described in Gundlach. Petitioner asserted four motivations: (1) inductive charging was a known and suitable alternative to the conductive charging hinted at in Gundlach; (2) the clear similarities between the two references (both disclosing charging cases for wireless headsets) meant the benefits of Lee’s system were directly applicable to Gundlach; (3) Lee’s space-efficient design was consistent with Gundlach’s goal of a compact form factor; and (4) Lee’s solution provided charger interoperability.
  • Expectation of Success: A POSITA would have had a high expectation of success in combining the known element of inductive charging (Lee) into the known system of a headset and case (Gundlach) to achieve the predictable result of a working, inductively charged headset system.

Ground 2: 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 targeted the "wireless earplugs" limitation of claim 11. While the base combination of Gundlach and Lee taught a wireless stereo headset, Petitioner argued Gundlach’s embodiment could be interpreted as having a wire connecting the two earpieces. Rosener was introduced to explicitly teach a Bluetooth headset comprising two separate wireless earphones ("canalphones") that are not wired together, thus avoiding the need for a headband or cabling.
  • Motivation to Combine: A POSITA would combine Rosener’s teachings with the Gundlach-Lee system to solve the known problem of wires tangling and interfering with user movement. Eliminating the wire between the earpieces was a known method for improving a stereo headset, making the combination a predictable result of combining known prior art elements to improve the device.

Ground 3: 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 addressed claims requiring a second magnet in the case lid for closure and a sensor that can be actuated by a magnet. Mak-Fan disclosed a holster for a portable electronic device that used a magnet in its fold-over flap for closure. Critically, Mak-Fan’s device also included a Hall effect sensor that detected the magnet when the flap was closed, which in turn sent a signal to disable the device.
  • Motivation to Combine: A POSITA would have been motivated to replace Gundlach’s snap closure with Mak-Fan’s magnetic closure as a simple substitution of one known closure element for another. To implement the automatic charging activation taught by Lee, a POSITA would have viewed the Hall effect sensor from Mak-Fan as a suitable, reliable, and known solution for detecting when the headset is in the case (via the magnet in the lid) and thereby actuating the charging circuit.
  • Expectation of Success: Incorporating a magnetic closure and a corresponding Hall effect sensor were routine design choices for cases and portable electronics, leading to a high expectation of success.

• Additional Grounds: Petitioner asserted numerous other obviousness challenges. These included adding Nishikawa (Application # 2007/0145255) to teach a lens-equipped LED for an indicator light (claims 2, 8) and adding Brown (Patent 7,631,811) for a touch-based user interface (claims 3, 7). Petitioner also presented a full second set of grounds (2A-2E) that substituted Kim (Application # 2011/0117851) as the primary reference for teaching play/pause remote control functionality.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either §325(d) or §314(a) would be inappropriate.
• §325(d) (Advanced Bionics): Petitioner contended that the prior art references relied upon were not considered during the patent’s cursory prosecution, and the patentability analysis in the petition demonstrates the Notice of Allowance was unwarranted.
• §314(a) (General Plastic/Fintiv): Petitioner argued against denial based on a co-pending IPR filed by Samsung, stating it was filed only five weeks after Samsung’s petition, used entirely different prior art, and therefore did not present road-mapping concerns. Regarding the parallel district court litigation, Petitioner argued the Fintiv factors strongly favor institution because the litigation was in its infancy with no trial date set, meaning the Board’s Final Written Decision would issue months or years in advance of a potential trial, thereby promoting judicial efficiency. Petitioner also stipulated that it would not pursue the same grounds in district court if the IPR is instituted.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 and 7-13 of the ’320 patent as unpatentable.