Apple Inc v. GUI Global Products Ltd

1. Case Identification

• Case #: IPR2021-01291
• Patent #: 10,562,077
• Filed: July 30, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): GUI Global Products, Ltd.
• Challenged Claims: 1-13

2. Patent Overview

• Title: System Comprising a Portable Switching Device for Use with a Portable Electronic Device
• Brief Description: The ’077 patent discloses a system where a portable switching device is configured to selectively couple to a portable electronic device, often using magnetic force. This coupling can activate, deactivate, or otherwise control functions of the electronic device.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are obvious over Kim

• Prior Art Relied Upon: Kim (Application # 2010/0227642).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim discloses all limitations of claims 1-8. Specifically, Kim’s disclosure of a mobile terminal system—comprising a watch-type “main device” and a detachable “sub-device”—maps directly to the claimed “switching device” and “electronic device.” Kim’s main device has two bodies (a first body and a lid) connected by a hinge, which can fold to protect the sub-device when it is coupled to the lid. Petitioner asserted that Kim teaches using magnets as “coupling members” to detachably attach the sub-device, satisfying the “magnetic force” limitation. Furthermore, Kim discloses that coupling the sub-device to the main device can change the operational state of the sub-device (e.g., activating its display), meeting the limitation that the switching device is configured to activate the electronic device.
  • Motivation to Combine (for §103 grounds): The motivation was argued to be inherent to Kim itself, which explicitly states its various disclosed embodiments “may be used singly and/or by being combined together.” Petitioner contended a person of ordinary skill in the art (POSITA) would have readily combined features from Kim’s different embodiments, such as applying the magnetic coupling taught for a folder-type device to its watch-type device, to arrive at the claimed invention.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as combining these known elements from a single reference would yield predictable results.

Ground 2: Claim 11 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: Claim 11 requires the “electronic device” to be “wireless earplugs.” While Kim suggests its sub-device could be a “Bluetooth headset,” it lacks specific implementation details for coupling it to the watch-type main device. Koh was introduced to supply this missing detail, as it discloses a wrist-worn storage unit for a wireless headset that uses a combination of magnets and mechanical guide grooves for secure, detachable coupling. Petitioner argued that combining Koh’s specific coupling mechanism with Kim’s watch-type system renders claim 11 obvious.
  • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement Kim’s suggestion of a headset sub-device, would combine Kim with Koh to find a known and compatible method for attaching a wireless headset to a watch-type device. The combination solves a problem suggested in the primary reference (how to attach the headset) using a known solution from the art.
  • Expectation of Success (for §103 grounds): The proposed combination involves applying a known coupling technique to a similar device, leading to the predictable result of a watch that holds wireless earplugs.

Ground 3: Claims 9-10 and 12-13 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: These claims relate to using a magnet to actuate an electronic circuit or a sensor. Kim teaches that coupling the sub-device changes its operational state but does not specify the sensing mechanism. Lee discloses using a Hall sensor to detect the proximity of a magnet to determine the state of a folding device (e.g., open or closed). Petitioner argued it would be obvious to incorporate Lee’s Hall sensor into Kim’s main device to detect the magnetic field of the magnet in Kim’s sub-device, thereby “actuating the electronic circuit” upon coupling.
  • Motivation to Combine (for §103 grounds): A POSITA implementing Kim’s magnetically coupled system would combine it with Lee to use a well-known, reliable method for detecting the presence of a magnet. This represents a straightforward implementation choice to achieve the functionality described in Kim.
  • Expectation of Success (for §103 grounds): Using a Hall sensor to detect a magnet is a basic and highly predictable technique in electronics, ensuring a high expectation of success.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner contended the challenged claims are not entitled to a priority date earlier than November 3, 2011. It was argued that the earliest filed provisional application in the priority chain (the ’752 provisional application) fails to provide an adequate written description for key claim limitations, including “a portable switching device” and its function of activating an electronic device. This assertion was critical to establishing that Kim, Koh, and Lee qualify as prior art under 35 U.S.C. §102.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a), considering General Plastic and Fintiv factors, would be inappropriate. This petition was filed as a conditional “copycat” petition, requesting joinder with an already-instituted IPR on the same patent (IPR2021-00337, filed by Samsung) only if the Board denies institution of Petitioner’s own earlier petition. Petitioner argued that institution would promote efficiency by confining validity disputes to the PTAB and would likely result in a stay of a parallel district court case that was still in its infancy with no trial date set.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-13 of the ’077 patent as unpatentable.