PTAB

IPR2021-01292

Apple Inc v. GUI Global Products Ltd

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: System Comprising a Portable Switching Device for Use with a Portable Electronic Device
  • Brief Description: The ’320 patent discloses a system where a portable switching device, which may include cleaning or other functionalities, is configured to selectively and detachably couple to a portable electronic device using a magnetic force. The coupling can activate, deactivate, or otherwise control the electronic device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kim - 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. Kim teaches a mobile terminal system with a "main device" (the claimed "switching device") and one or more detachable "sub-devices" (the claimed "electronic device"). Petitioner asserted that Kim’s watch-type embodiment, when combined with features described for its other embodiments (e.g., folder-type), discloses the claimed system. Kim teaches that its main and sub-devices can be detachably coupled using magnets, and that the main device can control the state of the sub-device based on the coupling status (i.e., activate or deactivate it). For dependent claims, Petitioner argued Kim discloses features like a camera (lens), function keys (tabs/knobs), and a hinged, folding case that protects the sub-device when closed.
    • Motivation to Combine (for §103 grounds): Petitioner contended that Kim itself suggests its various disclosed embodiments "may be used singly and/or by being combined together." A person of ordinary skill in the art (POSITA) would find it obvious to apply the magnetic coupling taught in Kim’s folder-type embodiment to its structurally similar watch-type embodiment to achieve the predictable result of a detachable sub-device.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as combining features from different embodiments within a single reference is a routine design practice, and Kim teaches that magnets are an effective technique for coupling the disclosed devices.

Ground 2: Obviousness over Kim in view of Koh - Claim 11 is obvious over Kim in view of Koh.

  • Prior Art Relied Upon: Kim (Application # 2010/0227642), Koh (Korean Patent Publication 10-2008-0093178).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses claim 11, which requires the electronic device to be "wireless earplugs." Petitioner argued that Kim discloses its sub-device can be an "ear phone" or a "Bluetooth headset" but does not provide specific implementation details for coupling it to a watch-type device. Koh was introduced because it explicitly teaches a system for storing and detachably coupling a wireless headset to a wrist-worn storage unit using both magnets and complementary mechanical features (protrusions/grooves).
    • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement Kim's suggestion of a wireless earphone sub-device, would be motivated to consult the prior art for known coupling techniques. Koh provides a direct and compatible solution, teaching how to integrate a wireless headset with a watch-type device, which is precisely the problem posed by Kim's disclosure.
    • Expectation of Success (for §103 grounds): The combination would yield predictable results, as Koh’s method of using magnets and guide grooves to attach a headset to a wrist-worn device is a known technique that is fully compatible with Kim's watch-type main device.

Ground 3: Obviousness over Kim in view of Lee - Claims 9-10 and 12-13 are obvious over Kim in view of Lee.

  • Prior Art Relied Upon: Kim (Application # 2010/0227642), Lee (Application # 2010/0298032).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses claims requiring a magnet to actuate an electronic circuit or sensor. While Kim teaches that coupling via magnets can change the device's operational state, Lee was introduced for its disclosure of a specific, well-known mechanism to achieve this: a Hall sensor. Lee teaches using a Hall sensor to detect the proximity of a magnet to determine if a mobile device is open or closed, thereby actuating a change in its state.
    • Motivation to Combine (for §103 grounds): A POSITA implementing Kim’s general concept of magnetic actuation would be motivated to use a known, reliable, and simple method for detecting the magnet’s presence. Lee’s disclosure of a Hall sensor for this exact purpose in a similar mobile device context provides a clear motivation for its incorporation into Kim’s system.
    • Expectation of Success (for §103 grounds): Combining a Hall sensor with a magnet to detect proximity was a well-established and predictable technique in the art. Applying this known technique from Lee to Kim's system would predictably result in the claimed functionality of using a magnet to actuate a sensor and electronic circuit.

4. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: Petitioner dedicated a significant portion of its argument to contending that the challenged claims are not entitled to a priority date earlier than November 3, 2011. Petitioner argued that the earlier-filed ’752 provisional application fails to provide adequate written description for key claim limitations, including "a portable switching device" and the device's configuration to "activate, deactivate or send into hibernation" the electronic device. This assertion is critical as it establishes that Kim, Koh, and Lee qualify as prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate. This petition was filed as a "Copycat Petition" with a conditional motion for joinder to an already-instituted IPR filed by Samsung (IPR2021-00338). This was presented as a defensive measure to preserve Petitioner's arguments should its own primary petition on different grounds be denied. Regarding the Fintiv factors, Petitioner argued that the parallel district court litigation is in its infancy, and the parties had agreed to seek a stay if the IPR was instituted, thus minimizing any inefficiency or overlap.

6. Relief Requested

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