PTAB

IPR2024-00798

Amazon.com Inc v. Nokia Technologies Oy

Key Events

Petition

petition

Title: Form Factor Design of Portable Electronic Devices
Brief Description: The ’602 patent is directed to a portable electronic device, such as a mobile phone, with a one-piece housing containing a camera, battery, engine section, and user input. Petitioner contends that while the claims describe a modern tablet-style form factor, the patent’s specification, which dates to a 2006 priority application, only provides written description support for a two-section flip-phone design.

Prior Art Relied Upon: McClure-997 (Application # 2012/0194997).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that McClure-997, which is directed to an iPad form factor, teaches every limitation of the challenged independent claims. McClure-997 discloses a "single piece housing" with enclosed lateral sides and a rear side, a cutout on the rear side for a camera ("camera window"), and an engine section ("main logic board") with a processor, memory, and transceiver. It further teaches that the battery and engine section are housed side-by-side, with a touchscreen user input located above them in a front opening of the housing.
- Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
- Expectation of Success (for §103 grounds): Not applicable (single reference ground).

Prior Art Relied Upon: McClure-997 (Application # 2012/0194997) and McClure-998 (Application # 2012/0194998).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that McClure-998 teaches complementary aspects of the same iPad form factor disclosed in McClure-997. It provides additional details regarding the front housing structure, including ledges that form a front side extending between the lateral sides, and describes the device's use on a wireless cellular network. As McClure-997 already teaches the core invention, McClure-998 was argued to reinforce its teachings and provide explicit disclosure for certain dependent claim limitations.
- Motivation to Combine (for §103 grounds): A POSITA would combine the McClure references because they are directed to the same subject matter (the iPad), share common inventors, were filed on the same day, and expressly incorporate each other by reference. The combination simply involves applying complementary teachings intended to be used together.
- Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because combining the references involves applying their teachings to the iPad form factor, which was the intended purpose of each reference, yielding only predictable results.

Prior Art Relied Upon: McClure-997 (Application # 2012/0194997), McClure-998 (Application # 2012/0194998), and Chiang (Application # 2004/0214619).
Core Argument for this Ground:
- Prior Art Mapping: This ground adds Chiang to teach the limitations of claims 9 and 30, which require a "cut out portion" that "projects from the rear side of the housing." Petitioner argued that Chiang discloses a mobile phone with a camera lens situated in a cutout that projects outwardly from the device's rear housing. This design was a common and well-known method to protect a protruding camera lens from damage while making its location more apparent to users.
- Motivation to Combine (for §103 grounds): A POSITA would be motivated to modify the iPad design of the McClure references with the projecting camera cutout taught by Chiang. This combination of known elements would yield the predictable result of a more durable and user-friendly camera design, allowing for a thinner overall housing while protecting the camera optics.
- Expectation of Success (for §103 grounds): Success would be expected, as applying a known camera protection feature (Chiang) to a known device form factor (McClure) is a simple design choice that 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 prior litigation, Patent Owner argued this term simply means a "member that houses" the components and does not require an enclosed front side. Petitioner contended that its invalidity arguments succeed even under Patent Owner's own proposed construction, as the prior art references clearly disclose such a housing.

Priority Date Entitlement: A central contention is that the ’602 patent is not entitled to its claimed 2006 priority date. Petitioner argued the shared 2006 specification only describes a two-section flip-phone and lacks written description for the single-piece tablet form factor recited in the challenged claims. Therefore, Petitioner asserted the claims' effective priority date is no earlier than October 30, 2013, which renders the McClure and Chiang references, published before that date, valid prior art.

Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, asserting that the concurrent district court proceeding was initiated late in 2023 and has no trial schedule set. A trial is therefore expected to occur well after the deadline for a Final Written Decision in this IPR.
§325(d) Factors: Petitioner argued that 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 of the ’602 patent.

Petitioner requests institution of an inter partes review and cancellation of claims 1-36 of the ’602 patent as unpatentable.