Apple Inc v. GUI Global Products Ltd

1. Case Identification

• Case #: IPR2021-01290
• Patent #: 10,259,021
• Filed: July 30, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Walter G. Mayfield, et al.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Apparatus for Cleaning View Screens and Lenses and Method for the Use Thereof
• Brief Description: The ’021 patent discloses a cleaning component for a lens or view screen of an electronic device. The component is configured to selectively and magnetically couple to the device’s case or another substrate.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kim - Claims 1-9, 11-15, and 19 are obvious over Kim.

• Prior Art Relied Upon: Kim (Application # 2010/0227642).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim, which discloses a modular mobile terminal system, teaches every limitation of the challenged claims. Specifically, Kim’s “main device” (e.g., a watch-type device) corresponds to the claimed “portable switching device,” and its detachable “sub-device” corresponds to the claimed “portable electronic device.” Petitioner asserted that Kim’s watch-type embodiment includes a main device with a first body and a second body (a “lid”) connected by a hinge, which constitutes the claimed “first case.” The sub-device, which can be configured as a display or camera, constitutes the “second case.” Kim explicitly taught that these components can be coupled using magnets, meeting the “magnetic force” limitation. Furthermore, Kim disclosed that the main device’s controller can change the operational state of the sub-device upon detecting a coupled state, which Petitioner contended meets the limitation that the switching device is configured to “activate, deactivate or send into hibernation” the electronic device.
  • Motivation to Combine: Although a single reference, Petitioner’s argument relied on combining features from different embodiments within Kim (e.g., folder-type and watch-type). Petitioner contended a POSITA would combine these teachings because Kim itself stated its various disclosed embodiments “may be used singly and/or by being combined together.” This provided a direct suggestion to adapt features, such as the magnetic coupling from a folder-type device, to the watch-type device to achieve a predictable result.
  • Expectation of Success: A POSITA would have an expectation of success because Kim taught that magnets were a known and effective technique for coupling a sub-device to a main device, ensuring an easy and reliable connection.

Ground 2: Obviousness over Kim in view of Koh - Claim 10 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 addressed claim 10, which required the electronic device to be “wireless earplugs.” While Kim disclosed that its sub-device could be an “ear phone” or “Bluetooth headset,” Petitioner argued it lacked specific detail on coupling such a device to a watch. Koh remedied this by disclosing a portable electronic module, specifically a wireless headset, designed to be stored in and detachably coupled to a wrist-worn storage unit. Koh taught using both magnetic and mechanical (protrusion/groove) coupling for this purpose.
  • Motivation to Combine: A POSITA, seeking to implement Kim’s teaching of a headset sub-device for its watch-type main device, would look to the art for known coupling techniques. Petitioner asserted a POSITA would combine Kim with Koh because Koh provided a specific, compatible solution for detachably coupling a wireless headset to a watch-type device, a problem presented but not fully detailed in Kim. The combination would yield the predictable result of a functional, wrist-mountable wireless earplug system.
  • Expectation of Success: The combination involved applying Koh’s known coupling techniques (magnets and guide grooves) to Kim’s similar watch-type system, which would have been a straightforward integration for a POSITA.

Ground 3: Obviousness over Kim in view of Lee - Claims 16 & 17 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 addressed claims 16 and 17, which required a magnet to be “employed in actuating the electronic circuit.” Petitioner argued that while Kim taught using magnets for coupling and separately taught that coupling actuates the sub-device, it did not explicitly link the magnet itself to the actuation. Lee supplied this missing element by disclosing the use of a Hall sensor in a mobile terminal to detect the proximity of a magnet, thereby determining if two components are coupled and actuating a circuit in response.
  • Motivation to Combine: Petitioner argued a POSITA would combine Lee’s Hall sensor system with Kim’s magnetic coupling system to create a more reliable method for detecting the coupling status. Lee was directed to comparable mobile devices and provided a known, compatible method for implementing the general functionality already described in Kim (i.e., detecting coupling and changing device state). The combination was merely the use of a known sensor (Lee) to improve a known system (Kim) to achieve a predictable, more robust detection mechanism.
  • Expectation of Success: Integrating a Hall sensor to detect a magnet’s field was a well-understood and common technique in portable electronics, ensuring a high expectation of success.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 18 over Kim in view of Jiang (Patent 5,946,121). This ground argued for adding a laser to the switching device for IrDA communication, with Jiang providing motivation to use a VCSEL laser for improved power efficiency in portable devices.

4. Key Technical Contentions (Beyond Claim Construction)

• Petitioner dedicated a substantial portion of the petition to arguing that the challenged claims were not entitled to an effective filing date earlier than November 3, 2011. Petitioner asserted that the earliest provisional application in the priority chain failed 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 argument was critical to establishing that Kim, published in 2010, qualified as prior art under 35 U.S.C. §102.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and the Fintiv factors would be inappropriate. Petitioner contended that institution would promote efficiency because the parallel district court litigation was in its infancy with no trial date set, and the parties had jointly moved to postpone deadlines pending the outcome of related IPRs. Petitioner filed this petition as a “copycat” of an already-instituted IPR filed by a co-defendant (Samsung) and conditionally requested joinder, arguing this procedural posture conserves judicial resources and ensures consistent adjudication of prior art challenges before the PTAB rather than in multiple forums.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-19 of the ’021 patent as unpatentable.