PTAB

IPR2025-01180

Apple Inc v. 1LSS Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wallet for Attachment to a Mobile Device
  • Brief Description: The ’641 patent describes wallets that magnetically attach to a mobile device or protective case. The claims recite specific configurations of magnetic arrangements, including first and second arrangements with opposing polarities to ensure proper alignment, and a shielding layer to protect cards with magnetic strips stored within the wallet's compartment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Berkley-Baca-Goto - Claims 1-8 are obvious over Berkley, 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 the combination of these references teaches every limitation of the challenged claims. Berkley disclosed a wallet compact designed to magnetically attach to a smartphone and store credit cards. While Berkley taught the general concept, it lacked detail on the specific magnetic implementation. Baca, which the ’641 patent incorporates by reference, supplied these details by disclosing the claimed self-aligning magnetic arrangements with alternating polarities. The Board previously found the combination of Berkley and Baca to be obvious during prosecution. To address the "ferromagnetic shield" limitation of claim 1 (and the "metallic plate" of claim 5), Petitioner introduced Goto, which was not considered during prosecution. Goto, from 1987, explicitly taught including magnetic shielding plates made of iron foil within a wallet to protect credit cards from data erasure caused by magnetic fields.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Berkley and Baca to implement Berkley’s general idea of a magnetic wallet with Baca’s well-known and specific self-aligning magnet system, a motivation the Board previously affirmed. A POSA would have been further motivated to incorporate Goto’s shielding into the Berkley-Baca combination to solve the long-known problem of magnetic fields corrupting data on cards stored in proximity to magnets. This amounted to applying a known technique (magnetic shielding) to improve a similar device (a wallet with magnets) in a predictable way.
    • Expectation of Success: A POSA would have had a high expectation of success, as the combination involved applying known techniques (Baca's magnet arrays, Goto's shielding) to a known product type (Berkley's magnetic wallet) to achieve the predictable functions for which they were designed.

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

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

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative combination based on folio-style cases. Zhu disclosed a folio-style cover that magnetically attaches to a mobile phone case using multiple magnet groups with alternating polarities arranged at the corners. However, Zhu did not explicitly teach that its cover functioned as a wallet. Kinshi remedied this by disclosing a folio-style mobile phone case that explicitly included pockets for storing cards, thereby functioning as a wallet. The combination of Zhu and Kinshi created a folio-style wallet with the specific magnetic attachment configurations recited in the claims. As in Ground 1, Goto was added to supply the teaching of a ferromagnetic shield to protect the cards stored in the Kinshi-style wallet pockets from the Zhu-style attachment magnets.
    • Motivation to Combine: A POSA would combine Zhu and Kinshi to add the common feature of card-holding pockets to a protective folio cover, improving its utility. This was a common design trend for mobile phone accessories. A POSA would then add Goto’s shielding to the combined Zhu-Kinshi wallet to prevent magnetic damage to stored cards, a known problem when magnets are used in wallets. This was particularly relevant because the folio could be closed or folded back, exposing the cards to the attachment magnets.
    • Expectation of Success: The combination was a predictable integration of features common in the art of mobile device accessories. Adding card slots and magnetic shielding to a folio case were straightforward modifications that would have been expected to function as intended.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges, primarily by adding a single reference to the core combinations to teach limitations in specific dependent claims. These included adding Cox (for sufficient magnetic force), Haymond (for a finger loop), Lauder (for magnet spacing < 2mm), and Mitsuyama (for a tapered opening to aid card removal) to the Berkley-Baca-Goto and Zhu-Kinshi-Goto combinations. Petitioner also asserted grounds based on Kinshi-Goto.

4. Key Claim Construction Positions

  • "wallet": Petitioner argued the Board should adopt the ’641 patent’s explicit and broad definition: "any apparatus for holding at least one of a credit card, cash, identification, a check, a badge, a picture, a key, a piece of paper, a coupon, business cards, and combinations thereof." This construction is based on function rather than a specific physical structure.
  • "compartment": Petitioner argued for applying the construction previously adopted by the Board during prosecution: "a part or space marked or partitioned off." This construction allows the pockets and card-holding sections of the prior art references to meet the claim limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’641 patent as unpatentable under 35 U.S.C. §103.