Amazon.com Inc v. Nokia Technologies Oy

1. Case Identification

• Case #: IPR2024-00799
• Patent #: 9,473,602
• Filed: July 1, 2024
• Petitioner(s): Amazon.com, Inc., Amazon.com Services LLC
• Patent Owner(s): Nokia Technologies Oy
• Challenged Claims: 1-36

2. Patent Overview

• Title: Form Factor of Portable Electronic Devices
• Brief Description: The ’602 patent discloses the form factor, or physical design, for portable electronic devices. The invention centers on a one-piece housing that contains key components such as a battery, an engine section (e.g., printed circuit board), a user input section, and a camera.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Reference - Claims 1, 11, 12, and 15 are obvious over Nguyen.

• Prior Art Relied Upon: Nguyen (Application # 2003/0222845).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nguyen, which discloses a Palm Pilot handheld computer, teaches every element of the challenged independent claims. Nguyen describes a portable electronic device with a "unitarily formed" (one-piece) housing that includes enclosed lateral sides and a rear side. It further discloses a rear-facing camera located in a cut out, an engine section comprising a printed circuit board with a processor and memory, a wireless transceiver, a battery, and a user input section (touchscreen and buttons) located on the front face.
  • Motivation to Combine (for §103 grounds): As this ground relies on a single reference, the argument is that Nguyen discloses all claimed features, and any minor differences in the arrangement or implementation of these conventional components would have been obvious to a Person of Ordinary Skill in the Art (POSITA). For example, housing the internal components (battery, engine section) within the disclosed housing for protection is a matter of common sense and fundamental design.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in arranging the standard components taught by Nguyen in the manner claimed, as it represented a conventional and functional layout for a handheld device.

Ground 2: Obviousness over a Primary Combination - Claims 1-7, 9-13, 15-28, 30-34, and 36 are obvious over Nguyen in view of Zadesky and Oda.

• Prior Art Relied Upon: Nguyen (Application # 2003/0222845), Zadesky (Patent 7,515,431), and Oda (European Application # 1,482,733).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Nguyen by adding Zadesky and Oda to address a broader set of dependent claims. Petitioner asserted that Zadesky, which relates to Apple iPods, teaches manufacturing a seamless, one-piece housing from a hollow extruded metal tube, resulting in a lighter, stronger, and more aesthetically pleasing device with flat front and rear surfaces. Zadesky also discloses internal rails that act as a bracket to support user interface components. Oda discloses a cellular phone with both front-facing and rear-facing cameras, addressing claims requiring mobile phone functionality and a second camera. Oda also teaches a camera module that projects from the rear housing.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Nguyen with Zadesky to improve the device's housing using the well-known and advantageous extrusion manufacturing process, achieving shared goals of a lighter, thinner, and more durable device. A POSITA would further combine these teachings with Oda to integrate commonplace mobile phone functionality and a front-facing camera into Nguyen’s PDA-style device to meet market demand for converged devices and popular features like taking "selfies."
  • Expectation of Success (for §103 grounds): The combination involved integrating known features (extruded metal housing, mobile phone components, dual cameras) into a standard handheld device architecture. A POSITA would have a high expectation of success, as these integrations were routine and yielded predictable improvements.

Ground 3: Obviousness over an Expanded Combination - Claims 1-36 are obvious over Nguyen, Zadesky, and Oda in view of Gettemy.

• Prior Art Relied Upon: Nguyen (Application # 2003/0222845), Zadesky (Patent 7,515,431), Oda (European Application # 1,482,733), and Gettemy (Patent 6,618,044).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Gettemy to the combination from Ground 2 to further reinforce teachings on the internal layout of components. Petitioner argued that Gettemy, another Palm patent, provides explicit details on fitting components efficiently into a small housing. Specifically, Gettemy shows the user input section located directly adjacent to the battery and the engine section, and illustrates a side-by-side arrangement of the battery and the printed circuit board. Gettemy also explicitly discloses a separate mounting bracket to support the user input section.
  • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement the combined features of Nguyen, Zadesky, and Oda in a compact form factor, would look to Gettemy. As both Nguyen and Gettemy are Palm patents directed at similar devices, a POSITA would naturally consult Gettemy for its detailed teachings on efficient internal component arrangement to achieve the shared design goal of a thin, portable device.
  • Expectation of Success (for §103 grounds): Success would be highly expected because Gettemy's teachings simply provide a more detailed, but conventional, layout for the same types of components already disclosed in Nguyen. This amounts to applying a known technique to a similar system to achieve predictable results.

4. Key Claim Construction Positions

• Petitioner addressed the claim term "housing [...] forming enclosed exterior lateral sides and a rear side." Petitioner noted that in a prior litigation, the Patent Owner proposed that "housing" means a "member that houses." Petitioner argued that its invalidity contentions succeed even under the Patent Owner's own proposed construction and that the prior art references clearly disclose such a "member that houses" internal components and forms the specified exterior surfaces.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on Fintiv factors, stating that the concurrent district court proceeding was initiated late in 2023, no schedule has been entered, and any potential trial would occur well after the Final Written Decision deadline.
• Petitioner also argued against denial under §325(d), noting that the primary references relied upon (Nguyen, Gettemy, and Oda) were not cited or considered during the original prosecution of the ’602 patent. Therefore, the combinations and arguments presented in the petition are being considered for the first time.

6. Relief Requested

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