PTAB

IPR2024-00798

Amazon.com, Inc. v. Nokia Technologies Oy

Title: Portable Electronic Device
Brief Description: The ’602 patent describes the form factor and construction of a portable electronic device. The challenged claims are directed to a device with a one-piece housing containing a camera, battery, engine section, and user input, similar to a modern smartphone or tablet form factor.

Prior Art Relied Upon: McClure-997 (Application # 2012/0194997)
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that McClure-997, which discloses the Apple iPad form factor, teaches all limitations of the challenged independent claims. McClure-997 allegedly discloses a single one-piece housing with enclosed lateral and rear sides, a cutout for a rear camera, an engine section (main logic board), a battery, and a touchscreen user input located above and adjacent to the engine and battery. Petitioner contended that McClure-997's teachings of a tablet device are directly applicable to the mobile phone claims (e.g., claim 22), as iPhones and iPads share a similar, scalable form factor.
- Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner asserted that McClure-997's disclosure of known manufacturing methods, such as extrusion and machining of a metal block, would make it obvious to a POSITA to arrive at the claimed structure.
- Expectation of Success (for §103 grounds): A POSITA would have an expectation of success in applying McClure-997's teachings because they directly relate to the well-known and commercially successful iPad form factor, involving a predictable combination of known components.

Prior Art Relied Upon: McClure-997 (Application # 2012/0194997) and McClure-998 (Application # 2012/0194998)
Core Argument for this Ground:
- Prior Art Mapping: This ground relied on the core teachings of McClure-997 and used McClure-998 to provide additional, reinforcing details. Petitioner argued McClure-998, which also discloses the iPad form factor, provides complementary details about the housing structure, such as ledges for supporting internal components, and the integration of a touchscreen and cover glass as a single unit, forming a continuous front surface as recited in certain dependent claims.
- Motivation to Combine (for §103 grounds): Petitioner asserted a strong motivation to combine because McClure-997 and McClure-998 expressly incorporate each other by reference. Further, both applications were filed by Apple on the same day, share inventors, and are directed to complementary aspects of the same iPad product. A POSITA would combine them to gain a complete picture of the device's design.
- Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success as the references were intended to be used together to describe a single, well-understood product. The combination involved applying known features to yield the predictable result of the iPad form factor.

Prior Art Relied Upon: McClure-997, McClure-998, and Chiang (Application # 2004/0214619)
Core Argument for this Ground:
- Prior Art Mapping: This ground added Chiang to the combination of McClure-997 and McClure-998 to teach claims 9 and 30, which require a cutout portion that projects from the rear side of the housing. Chiang was argued to teach a mobile phone camera assembly where a portion of the housing projects outward around the camera lens.
- Motivation to Combine (for §103 grounds): A POSITA would combine Chiang’s camera design with the iPad form factor of the McClure references to achieve known benefits. Petitioner argued that making the camera housing protrude was a common design choice to protect a vulnerable protruding lens, make the camera's location more apparent to users, and allow for a thinner overall device body while accommodating a larger camera module.
- Expectation of Success (for §103 grounds): A POSITA would expect success because the combination simply integrated a known camera mounting solution (Chiang) into a known device form factor (McClure). This modification would only change the physical appearance near the camera and would not alter the principle of operation of the device.

"housing [...] forming enclosed exterior lateral sides and a rear side" (claims 1, 15, 22): Petitioner noted that in a prior ITC litigation, Patent Owner argued this term means a "member that houses" the components and does not require an enclosed front side. Petitioner contended that the prior art meets even this proposed construction, as the one-piece housings in the McClure references are members that house the internal components and form enclosed lateral and rear sides.

Priority Date Entitlement: A central argument of the petition was that the ’602 patent is not entitled to its claimed 2006 priority date. Petitioner asserted that the shared specification, originating in 2006, only provides written description support for a two-piece flip-phone (like the Motorola RAZR) with the camera and display in a top housing section and the battery and engine in a bottom section. In contrast, the challenged claims, introduced in a 2013 continuation, recite a one-piece "iPhone/iPad-like" form factor where all components are in a single housing. Petitioner argued this configuration lacks written description in the original specification, making the claims' effective priority date no earlier than October 30, 2013, and thus rendering the McClure and Chiang references (published 2004-2012) valid prior art.

Discretionary Denial under Fintiv: Petitioner argued against discretionary denial, stating the merits are compelling. It was argued that the concurrent district court case was in its very early stages (initiated late 2023) with no schedule set, meaning a trial would occur well after the IPR's Final Written Decision deadline. Therefore, the Fintiv factors weighed heavily against denial.
Denial under §325(d): Petitioner argued denial under §325(d) is unwarranted because the primary prior art references (McClure-997, McClure-998, and Chiang) were not cited or considered during the original prosecution.

Petitioner requested institution of an inter partes review and cancellation of claims 1-36 of the ’602 patent as unpatentable under 35 U.S.C. §103.