OTTErBox v. SafeTRay Products Ltd

1. Case Identification

• Case #: IPR2025-00622
• Patent #: 10,113,691
• Filed: February 20, 2025
• Petitioner(s): Otter Products, LLC
• Patent Owner(s): SafeTray Products Ltd
• Challenged Claims: 1-20

2. Patent Overview

• Title: Stabilising Device For A Portable Computing Device
• Brief Description: The ’691 patent discloses a stabilizing device, such as a grip or handle, for a portable computing device like a tablet. The device features a finger support member connected to a rotatable base plate by spacer elements, allowing it to move between a closed, flush position and an open position for a user's fingers.

3. Grounds for Unpatentability

Ground 1: Claims 1-8, 12-16, 18, and 20 are anticipated by Karmatz; claims 1-18 and 20 are obvious over Karmatz.

• Prior Art Relied Upon: Karmatz (Application # 2012/0042476).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Karmatz, which discloses an "Apparatus for Gripping Handheld Devices," teaches every element of the independent claims. Karmatz’s "base 110" is the claimed "base plate," its "grip 130" is the "unitary finger support member," and its "plurality of extensions 120" are the "first and second spacer elements." Petitioner asserted that Karmatz explicitly shows the device is moveable between an open position (Fig. 23) and a closed position where the grip is substantially flush with the base (Fig. 24). For the rotatability limitation, Petitioner contended Karmatz teaches this is a common feature and design goal for such devices.
  • Motivation to Combine (for §103 grounds): For any claim elements arguably not explicitly disclosed, Petitioner argued a person of ordinary skill in the art (POSITA) would find it obvious to modify Karmatz. The motivation would stem from Karmatz's own instruction to interchange its various disclosed components and from known market trends, such as the need for rotatable grips to accommodate both portrait and landscape viewing orientations on tablets.
  • Expectation of Success: A POSITA would have a high expectation of success in making any minor modifications, as they involve applying known techniques to a simple mechanical structure to achieve predictable results.

Ground 2: Claims 1, 3-8, 12-16, and 20 are obvious over Grieve alone or in view of Karmatz.

• Prior Art Relied Upon: Grieve (International Publication No. WO 2011/107786) and Karmatz (Application # 2012/0042476).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Grieve, which discloses a stabilizing device for a serving tray, teaches the core structure of the challenged claims. Grieve shows a "base member 10," a "finger support member 12," and "first and second spacer elements" (14, 18) that pivotally connect the base and support member. This structure is shown to be movable between a closed, substantially flush position and an open position for a user's fingers.
  • Motivation to Combine: A POSITA seeking to design a stabilizer for a tablet would combine Grieve with Karmatz. Petitioner argued the references are analogous art, as both address the problem of improving stability and ergonomics for handheld objects. A POSITA would be motivated to apply Grieve's stable grip design to a tablet computer. To add the rotatability required by the claims, the POSITA would look to Karmatz, which explicitly teaches a rotatable base for a tablet grip to accommodate different viewing orientations.
  • Expectation of Success: Combining the known concept of a rotatable base (Karmatz) with a known grip structure (Grieve) was presented as a straightforward modification that would yield the predictable result of a rotatable, stable grip for a tablet.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 14, 15, and 17 are obvious over Karmatz in view of Grieve (to add ergonomic guide means) and that claim 19 is obvious over Karmatz in view of Noh (Application # 2015/0115112) to add a display bracket feature.

4. Key Claim Construction Positions

• "unitary finger support member": Petitioner proposed this term means "one-piece" or "single-piece." This construction was based on the prosecution history, where the applicant added the term "unitary" to distinguish the invention from a prior art reference (Huang) that used two separate entities to form a finger support.
• "closed position" and "substantially flush": Petitioner argued these related terms should be construed according to the patent's specification, which defines this state as "a position in which the central portion and first and second ends of the finger support member are in contact with or in close proximity to the base plate." This construction is central to mapping the prior art's collapsed or folded configurations to the claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) is unwarranted because the specific prior art combinations presented in the petition were not previously considered by the USPTO during prosecution.
• Petitioner also presented arguments against discretionary denial under Fintiv, contending that: (1) a stay of the parallel district court litigation is appropriate and being sought; (2) the trial date in the litigation is not yet scheduled and is projected to be well after the statutory deadline for a final written decision (FWD) in the inter partes review (IPR); (3) investment in the parallel litigation has been minimal; and (4) the petition presents compelling evidence of unpatentability, which weighs strongly against denial.

6. Relief Requested

• Petitioner requests the institution of an IPR and the cancellation of claims 1-20 of the ’691 patent as unpatentable.