Gamber Johnson LLC v. National Products Inc

1. Case Identification

• Case #: IPR2021-01159
• Patent #: 9,706,026
• Filed: June 21, 2021
• Petitioner(s): Gamber-Johnson LLC
• Patent Owner(s): National Products Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Docking Cradles and Docking Systems
• Brief Description: The ’026 patent discloses docking cradles and systems designed to receive an electronic device housed within a protective cover. The technology centers on the mechanical and electrical interface between the covered device and the docking station, featuring specific configurations of support surfaces and male/female connectors with biasing contacts.

3. Grounds for Unpatentability

Ground 1: Anticipation by Woud - Claims 1-3, 6, 7, 10-14, and 17-19 are anticipated by Woud under 35 U.S.C. §102.

• Prior Art Relied Upon: Woud (Patent 7,859,222).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Woud, which discloses a docking system for a mobile phone in a protective battery case, teaches every limitation of the challenged claims. Woud’s dock 80 was identified as the claimed "base receiver," and its battery case 100 as the "removable cover." Petitioner mapped Woud’s holding cup 82 to the claimed "back support surface" and "docking support surface," and asserted its recessed structure constituted the claimed "female connector." Woud’s use of a "spring connector 84" was argued to inherently teach the "biasing contacts" limitation of claim 1, as the purpose of spring contacts is to move upon mating to ensure a secure connection. The protective case in Woud was also argued to meet the limitations of claim 10, including a shell that covers portions of the front, back, and four side surfaces of the electronic device.
  • Key Aspects: This ground asserted that one of the primary reasons for allowance—the presence of biasing contacts—was explicitly taught by Woud's spring connector, a feature the examiner had not previously considered.

Ground 2: Obviousness over Woud and Rohrbach - Claims 8, 9, and 20 are obvious over Woud in view of Rohrbach under 35 U.S.C. §103.

• Prior Art Relied Upon: Woud (Patent 7,859,222) and Rohrbach (Patent 7,311,526).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims requiring a magnetic coupling element. Petitioner contended that Woud disclosed all elements of the base claims, while Rohrbach explicitly taught the use of magnetic coupling elements in connectors for personal electronic devices to ensure proper alignment and secure connection. Rohrbach disclosed male and female connectors with corresponding magnetic elements (e.g., a permanent magnet and a ferromagnetic material) used in conjunction with biasing pin contacts. Petitioner argued that incorporating Rohrbach’s magnetic connector into Woud’s docking system would render claims 8, 9, and 20 obvious.
  • Motivation to Combine: A POSITA would combine Rohrbach’s magnetic coupling with Woud’s system to gain known benefits. These included preventing damage during insertion, improving contact alignment, and maintaining a secure connection against shocks and vibrations. Petitioner asserted this was a simple substitution of one known connector type for another to achieve predictable results.
  • Expectation of Success: The combination was portrayed as straightforward, as magnetic couplers were a standard component and one of a limited set of options for docking connectors at the time. A POSITA would have a high expectation of success in integrating this known feature.

Ground 3: Obviousness over Wylie - Claims 10, 11, 14, 15, 17, and 18 are obvious over Wylie and the knowledge of a POSITA under §103.

• Prior Art Relied Upon: Wylie (Patent 9,760,116).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Wylie, which discloses a docking station with a security frame for a tablet, taught the elements of independent claim 10 and its dependents. Wylie's security frame was mapped to the "protective cover," and its pedestal to the "docking cradle." Petitioner asserted that while not every detail was explicit, a POSITA would inherently understand that Wylie's "universal connector fitting" included multiple contacts for power and data, and that its structure of a projecting male portion on the cover mating with a recessed female portion on the pedestal met the claim limitations. The protrusions on Wylie's pedestal were identified as the "back support surface" and "docking support surface," forming a tray at an angle within the claimed range of 90 to 135 degrees.
  • Motivation to Combine: The motivation for a POSITA to arrive at the claimed invention was based on using common, industry-standard connector designs (like those in Wylie) that utilize exterior rims and interior contacts to ensure a safe and reliable mating connection.
  • Expectation of Success: Petitioner argued that selecting such a well-known connector type from a limited number of options to implement in Wylie’s system was an obvious design choice that would have produced the predictable result of a functional connection.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 3, 5, 13, and 16 over Woud and SA (Application # 2011/0134601) for teaching an asymmetric connector shape and a multi-bay housing, and claims 1, 4, 6-9, 19, and 20 over Wylie and Rohrbach to add biasing contacts and magnetic coupling elements to the Wylie system.

4. Key Claim Construction Positions

• Petitioner argued for specific constructions of several "connector" terms based on their structural function.
• "female connector": Proposed as "a mating structure defining a recess that supports and positions contacts to ensure a connection."
• "male connector": Proposed as "a mating structure defining a protrusion that supports and positions contacts to ensure a connection."
• "contactor": Proposed as "a structure to support and position contacts to ensure an electrical connection."
• These constructions were central to Petitioner's argument that the prior art references disclosed the claimed connector structures, even if the references did not use the exact same terminology.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under Fintiv.
• The parallel district court litigation was in a very early stage, with fact discovery having just commenced and no significant investment by the parties or the court.
• Petitioner stated its intent to file a motion to stay the district court case pending the outcome of the IPR, arguing a stay would streamline issues and conserve resources.
• The petition also argued that the prior art and invalidity arguments presented were compelling and had not been previously considered by the USPTO, weighing in favor of institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 9,706,026 as unpatentable.