PTAB

IPR2025-01180

Apple Inc v. 1LSS Inc.

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1. Case Identification

2. Patent Overview

  • Title: Magnetically Attachable Wallet for a Mobile Device
  • Brief Description: The ’641 patent discloses a wallet designed to attach to a mobile electronic device or a protective case using specific magnetic configurations. The claims are directed to wallets comprising first and second magnetic arrangements for attachment and orientation, a compartment for holding items, and features such as a ferromagnetic shield to protect magnetically sensitive contents like credit cards.

3. Grounds for Unpatentability

Ground 1: Obviousness over Berkley, Baca, and Goto - Claims 1-8 are obvious over Berkley in view of Baca and Goto.

  • Prior Art Relied Upon: Berkley (Application # 2017/0354229), Baca (Application # 2016/0260532), and Goto (Patent 4,647,714).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Berkley taught a basic wallet compact that attaches to a smartphone. Baca, which is incorporated by reference in the ’641 patent and was previously considered by the Board, taught the specific self-aligning magnetic arrangements with alternating polarities recited in the claims. The petition asserted that the combination of Berkley and Baca, which the Board found obvious during prosecution, rendered obvious all limitations of independent claims 1 and 5 except for the shielding element. To supply this element, Petitioner relied on Goto, a 1987 patent that taught a magnetic card holder with an embedded "magnetic shielding plate" made of iron foil to solve the long-known problem of protecting card data from magnetic fields. Goto's iron foil plate was argued to meet the "ferromagnetic shield" limitation of claim 1 and the "metallic plate" limitation of claim 5.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Berkley’s wallet with Baca’s known magnetic attachment system to achieve the predictable function of a magnetically attachable wallet. A POSITA would have been further motivated to incorporate Goto’s decades-old shielding technology into the Berkley-Baca wallet to prevent the attachment magnets from corrupting the data on credit cards stored within.
    • Expectation of Success: The petition asserted a high expectation of success because the combination merely involved the application of known techniques (magnetic attachment, magnetic shielding) to a conventional device (wallet) to achieve their predictable, intended functions.

Ground 2: Obviousness over Zhu, Kinshi, and Goto - Claims 1-7 and 11 are obvious over Zhu in view of Kinshi and Goto.

  • Prior Art Relied Upon: Zhu (Chinese Application # 108023992 A), Kinshi (Japanese Application # 3200923 U), and Goto (Patent 4,647,714).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Zhu taught a folio-style cover that magnetically attaches to a phone case using multiple magnet groups, including arrangements with different horizontal and vertical orientations. Kinshi taught a complete folio-style wallet with pockets for storing cards. Petitioner argued the combination of Zhu and Kinshi provided a folio wallet with multiple magnetic arrangements, satisfying the limitations of independent claim 11, specifically the requirement for arrangements having a "different orientation or a different geometric pattern." As in the first ground, Goto was relied upon to supply the "ferromagnetic shield" or "metallic plate" missing from the Zhu-Kinshi combination.
    • Motivation to Combine: A POSITA would have been motivated to modify Zhu's protective folio cover to include Kinshi's wallet features (card pockets), as this represented a commonplace combination of a wallet and a phone case. The motivation to then add Goto's shielding was to protect the cards in the newly-added pockets from the magnetic fields generated by Zhu's attachment magnets.
    • Expectation of Success: Success would have been highly predictable because the combination involved integrating well-known features (a folio case and wallet pockets) and applying a known solution (Goto's shielding) to a known problem (magnetic interference with cards).

  • Additional Grounds: Petitioner asserted additional obviousness challenges under 35 U.S.C. §103 based on combinations of the primary references (Berkley-Baca, Zhu-Kinshi, and Kinshi-Goto) with various secondary references. These included Cox (Application # 2016/0072933) for teaching magnet strength sufficient to support a device's weight, Haymond (Patent 9,362,968) for teaching a finger loop, Lauder (Patent 8,138,869) for teaching magnet spacing of less than 2 mm, and Mitsuyama (Patent 5,080,223) for teaching tapered openings for easier card access.

4. Key Claim Construction Positions

  • "wallet": Petitioner argued that the term should be construed according to the ’641 patent's own broad functional definition: "any apparatus for holding at least one of a credit card, cash, identification," etc. This construction is not limited by physical structure and allows prior art such as Berkley's "cosmetic wallet compact" to meet the limitation.
  • "compartment": Petitioner applied the construction previously adopted by the Board during prosecution: "a part or space marked or partitioned off." This construction allowed Petitioner to argue that the card-holding slots and pockets disclosed in the prior art references met the claim limitation.

5. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-11 of Patent 11,864,641 as unpatentable.