National Products Inc.

Patent Trials and Appeals Board

Oct 21, 2021

IPR2021-00767 (P.T.A.B. Oct. 21, 2021)

Trials@uspto.gov Paper No. 8
571-272-7822 Entered: October 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

INNOVATIVE INTELLIGENT PRODUCTS, LLC d/b/a GPS LOCKBOX,
Petitioner,
v.
NATIONAL PRODUCTS INC.,
Patent Owner.

IPR2021-00767
Patent 10,630,334 B2

Before JO-ANNE M. KOKOSKI, WESLEY B. DERRICK, and
SCOTT B. HOWARD, Administrative Patent Judges.
KOKOSKI, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Innovative Intelligent Products, LLC d/b/a GPS Lockbox
(“Petitioner”) filed a Petition to institute an inter partes review of claims 1–
3, 4–7, and 14–18 (the “challenged claims”) of U.S. Patent No. 10,630,334
B2 (“the ’334 patent,” Ex. 1001). Paper 2 (“Pet.”). National Products Inc.
(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
Institution of an inter partes review is authorized by statute when “the
information presented in the petition . . . and any response . . . shows that
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314
(2018); see also 37 C.F.R. § 42.4 (2020). For the reasons set forth below,
we deny the Petition and do not institute an inter partes review.
A. Real Parties-in-Interest
Each party identifies itself as the real party-in-interest. Pet. 1;
Paper 5, 2.
B. Related Proceedings
The parties indicate that the ’334 patent is asserted in National
Products Inc. v. Innovative Intelligent Products, LLC d/b/a GPS Lockbox,
Case No. 2:20-cv-00428-RAJ (W.D. Wash.) (“the Washington litigation”).
Pet. 1; Paper 5, 3.
C. The ’334 Patent
The ’334 patent, titled “Docking Sleeve with Electrical Adapter,” is
directed to a cover for protecting a portable electronic device that has an
electrical adapter for coupling the device to a docking station. Ex. 1001,
code (54), 1:30–33. The ’334 patent describes “a completely integral one-
piece elastomeric protective cover, or skin” that “is a sheath molded of a
suitable elastic or flexibly resilient elastomer, such as but not limited to
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vinyl, in a size and shape to fit over or closely conform to the” portable
electronic device. Id. at 7:9–14. An electrical adapter that is part of the
protective cover “includes a male plug having a plurality of electrical
connectors extending into a cavity formed by” the protective cover “in an
arrangement for mating with a female input/output socket of the” portable
electronic device, and “a contactor having a plurality of electrical contacts
that are positioned adjacent to an exterior of” the protective cover that “are
electrically coupled to one or more of the connectors of the plug.” Id.
at 7:61–8:3.
The ’334 patent explains that when the portable electronic device is
received within the cavity of the protective cover, “the plurality of
connectors of the male plug are mated with the female socket of the”
portable electronic device, and “the female input/output socket is electrically
accessed through the plurality of contacts of the contactor that are exterior
of” the protective cover. Id. at 8:4–10. The protective cover, with the
portable electronic device installed therein, is then inserted into a docking
cradle that includes a docking connector that also has a plurality of contacts.
Id. at 8:11–14. “The docking connector is joined to the contactor of the
electrical adapter with one or more of the plurality of contacts of the docking
connector being electrically coupled with the contacts of the connector.”
Id. at 8:14–17. The input/output socket of the portable electronic device,
therefore, is electrically accessed through the docking connector of the
docking cradle via the electrical adapter of the protective cover. Id. at 8:17–
20.
The ’334 patent further teaches that “a hard (or rigid) shell can be
utilized with the flexible cover or skin to provide additional protection to
[the] electronic device disposed within the skin.” Ex.1001, 28:63–65. The
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hard shell includes an opening through which a portion of the adapter of the
flexible cover “protrudes or is accessible for connection to a docking cradle
or other device.” Id. at 29:20–26.
D. Illustrative Claims
Petitioner challenges claims 1–3, 7–11, and 14–18 of the ’334 patent.
Pet. 3, 10–11.1 Claims 1 and 10 are independent, illustrative of the claimed
subject matter, and reproduced below.
1. An arrangement, comprising:
an adapter coupleable to a portable electronic device for
mating with an external connector, the adapter
comprising a contactor and a male positioning
interface, the contactor comprising a contactor surface
and a plurality of contacts exposed and arranged on the
contactor surface and electrically coupleable to the
portable electronic device, the male positioning
interface defining a rim surrounding, and in contact
with, a perimeter of the contactor surface of the
contactor of the adapter to guide proper mating of the
contactor of the adapter to the external connector; and
a hard shell configured to receive the portable electronic
device and adapter, wherein the hard shell is
configured so that the adapter extends out of the hard
shell for mating with the external connector;
wherein the adapter is detachable from the hard shell by a
user.
Ex. 1001, 34:2–19.

1 In the introductory paragraph of the Petition, Petitioner includes claim 4 in
the list of the challenged claims, but omits claim 3. Pet. 3. The statement of
the grounds and Petitioner’s analyses thereof, however, include claim 3 but
not claim 4. Id. at 9, 11–12, 25, 40–41, 54–56, 62, 71. We consider the
grounds as Petitioner presents them, and therefore do not consider claim 4 to
be a challenged claim.
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10. An arrangement, comprising:
an adapter coupleable to a portable electronic device for
mating with an external connector, the adapter
comprising a contactor and a male positioning
interface, the contactor comprising a contactor surface
and a plurality of contacts exposed at the contactor
surface and electrically coupleable to the portable
electronic device, the male positioning interface
defining a rim to guide proper mating of the contactor
of the adapter to the external connector; and
a hard shell configured to receive the portable electronic
device and adapter, wherein the hard shell defines an
opening through which the adapter protrudes when
received by the hard shell;
wherein the adapter is detachable from the hard shell.
Id. at 34:58–35:5.
E. References Relied Upon
Petitioner relies on the references listed below (Pet. 11–12):
Reference Date Exhibit No.
US Patent No. 9,147,966 B2 (“An 1”) Sept. 29, 2015 1032
U.S. Patent App. Pub.
No. 2017/0098916 A1 (“Carnevali 3”) Apr. 6, 2017 1008
U.S. Patent App. Pub.
No. 2015/0301561 A1 (“Carnevali 1”) Oct. 22, 2015 1006
US Patent App. Pub.
No. 2014/0363988 A1 (“An 2”) Dec. 11, 2014 1033
WO 2017/004072 A1 (“Carnevali 2”) Jan. 5, 2017 1007
Korean Registered Patent No. 10-
1078214 (“Kim”) Nov. 1, 2011
1004 (English
translation),
1037
Korean Registered Utility Model
Publication No. 20-0265673 (“Song”)
Feb. 25, 2002 1005 (English
translation),
1038
Chinese Published Patent Disclosure
No. CN 1312603A (“Huang”)
Sept. 12, 2001 1009 (English
translation),
1039
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Reference Date Exhibit No.
GPS Lockbox Flex product shown on
Netlink Communications website
(“GPS 1”)
Nov. 3, 2016 1003
GPS Lockbox Flex 8 model for Samsung
Tab E Tablet Video (“GPS 2”)
Nov. 3, 2016 1034
What is GPS Lockbox Video (“GPS 3”) Mar. 13, 2017 1035
GPS Lockbox Flex–Product Overview
Video (“GPS 4”)
Oct. 30, 2017 1036

Patent Owner argues that Petitioner does not establish that GPS 1,
GPS 2, GPS 3, and GPS 4 (collectively, the “AP Publications”), and
Carnevali 1, Carnevali 2, and Carnevali 3 are prior art to the ’334 patent.
Prelim. Resp. 24–26.
F. Asserted Grounds
As articulated by Petitioner, the Petition includes seven asserted
grounds of unpatentability: (1) Ground 1a (claims 1–3, 7–11, and 14–18 as
anticipated by GPS 1, GPS 2, GPS 3, or GPS 4); (2) Ground 1b (claims 1–3,
7–11, and 14–18 as obvious over Carnevali 1, Carnevali 2, or Carnevali 3 in
view of each of the AP Publications); (3) Ground 2a (claims 1–3, 10, 11, 14,
and 15 as anticipated by Kim); (4) Ground 2b (claims 1–3, 7–11, and 14–18
as obvious over Kim in view of Song); (5) Ground 2c (claims 1–3, 10, 11,
14, and 15 as obvious over Kim in view of Song, and further in view of
An 1); (6) Ground 2d (claims 7–9 and 16–18 as obvious over Kim in view of
Song, An 1, and An 2); and (7) Ground 2e (claims 7–9 and 16–18 as obvious
over Kim in view of Song and Huang). Pet. 11–12. Grounds 1a and 1b,
however, rely on references in the alternative, such that there are, in fact, a
total of 21 different grounds (or combinations of prior art), as indicated in
the table below.
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Claims Challenged 35 U.S.C. § Reference(s)
1–3, 7–11, 14–18 102(a)(1) GPS 1
1–3, 7–11, 14–18 102(a)(1) GPS 2
1–3, 7–11, 14–18 102(a)(1) GPS 3
1–3, 7–11, 14–18 102(a)(1) GPS 4
1–3, 7–11, 14–18 103 Carnevali 1, GPS 1
1–3, 7–11, 14–18 103 Carnevali 1, GPS 2
1–3, 7–11, 14–18 103 Carnevali 1, GPS 3
1–3, 7–11, 14–18 103 Carnevali 1, GPS 4
1–3, 7–11, 14–18 103 Carnevali 2, GPS 1
1–3, 7–11, 14–18 103 Carnevali 2, GPS 2
1–3, 7–11, 14–18 103 Carnevali 2, GPS 3
1–3, 7–11, 14–18 103 Carnevali 2, GPS 4
1–3, 7–11, 14–18 103 Carnevali 3, GPS 1
1–3, 7–11, 14–18 103 Carnevali 3, GPS 2
1–3, 7–11, 14–18 103 Carnevali 3, GPS 3
1–3, 7–11, 14–18 103 Carnevali 3, GPS 4
1–3, 10, 11, 14, 15 102(a)(1) Kim
1–3, 7–11, 14–18 103 Kim, Song
1–3, 10, 11, 14, 15 103 Kim, Song, An1
7–9, 16–18 103 Kim, Song, An1, An2
7–9, 16–18 103 Kim, Song, Huang
Pet. 10–11. Petitioner relies on the Declaration of Kimberly K. Cameron,
Ph.D., P.E. (Ex. 1010) in support of its contentions.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner contends that a person having ordinary skill in the art would
have had either “a Bachelor’s Degree in mechanical engineering or a related
discipline and at least two years of experience in the design or development
of interlocking products (e.g. docking cradles and adapters for portable
electronic devices),” or “five years or more of experience in the design or
development of interlocking products.” Pet. 10. At this stage of the
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proceeding, Patent Owner neither responds to Petitioner’s proposed
definition, nor provides a definition of its own. See Prelim. Resp.
For purposes of this Decision, we adopt Petitioner’s proposed
definition, which is undisputed on this record, except that we delete the
qualifiers “at least” and “or more” to eliminate vagueness as to the amount
of practical experience. The qualifier, if not deleted, expands the range
indefinitely without an upper bound, and thus would preclude a meaningful
indication of the level of ordinary skill in the art.
B. Claim Construction
We construe each claim “in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” 37 C.F.R.
§ 42.100(b). Under this standard, claim terms are generally given their plain
and ordinary meaning as would have been understood by a person of
ordinary skill in the art at the time of the invention and in the context of the
entire patent disclosure.2 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc). Only those terms in controversy need to be construed,
and only to the extent necessary to resolve the controversy. See Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999)).

2 Petitioner incorrectly states that claims in an inter partes review are to be
construed using the broadest reasonable construction standard, which
applied to proceedings filed prior to November 13, 2018. Pet. 10–11; see
also 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (adopting “the same claim
construction standard used by Article III federal courts and the ITC, both of
which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc) and its progeny”).
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Neither party proposes an explicit construction for any claim term.
See Prelim. Resp.; Pet. 10–11. For purposes of this Decision, based on the
record before us, we determine that none of the claim terms requires an
explicit construction.
C. Anticipation by the AP Publications
Petitioner contends that claims 1–3, 7–11, and 14–18 are anticipated
by each of the AP Publications (GPS 1, GPS 2, GPS 3, and GPS 4). Pet. 14–
30. Petitioner’s contentions are based on its allegation that the priority date
of the challenged claims is December 27, 2018. Id. at 5–9, 14. According to
Petitioner, each of the AP Publications depict a product that Patent Owner
accuses of infringing the ’334 patent in the Washington litigation. Id. at 14.
Petitioner contends that GPS 1 “depicts webpages posted November 3,
2016,” and GPS 2, GPS 3, and GPS 4 “are videos posted on YouTube in
2016 and 2017,” and that they all show Petitioner’s accused products. Id. at
15 (citing Ex. 1028 ¶¶ 6–17; Ex. 1026, 3–4).
Patent Owner argues that the AP Publications post-date the earliest
priority date to which the ’334 patent is entitled (either February 24, 2014, or
June 29, 2015). Prelim. Resp. 23–24, 27. Patent Owner also argues that
Petitioner does not establish that the AP Publications were publicly
accessible before the priority date of the ’334 patent. Id. at 26–28. Because
we determine, for the reasons set forth below, that Petitioner does not
establish a reasonable likelihood of showing that the challenged claims are
anticipated by the AP Publications, it is not necessary for us determine
whether the AP Publications qualify as prior art to the ’334 patent for
purposes of this Decision.
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1. Claims 1–3 and 7–9
Petitioner contends that each of the AP Publications discloses all of
the limitations of claim 1. Pet. 16–24. Petitioner’s contentions are based on
Patent Owner’s infringement contentions in the Washington litigation. For
example, Petitioner contends that “[u]nder PO’s theories of infringement,
GPS 1 discloses” the recitations of claim 1 directed to “an adapter
coupleable to a portable electronic device for mating with an external
connector.” Id. at 16 (citing Ex. 1025, 1–6). Petitioner asserts that the two
images from Patent Owner’s infringement contentions, reproduced below,
disclose the recited adapter. Id. at 16–17.

Patent Owner’s infringement contentions state that the images show
Petitioner’s ATMOS Temperature Controlling Cradle Kit for Samsung
Galaxy TAB A 8" Product. Ex. 1025, 1–2. The image on the left reflects
what appears to be the back of a tablet case, and has a red box drawn around
an adapter on the bottom of the case. Id. The image on the right reflects
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what appears to be a docking cradle with an external connector for mating
with the adapter on the tablet case. Id.
Petitioner also relies on annotated images from GPS 1, reproduced
below, with respect to the adapter limitation of claim 1. Pet. 17–18.

The above image shows front and back views of a product called the
“Flex 8,” which GPS 1 describes as “a rugged, impact-resistant tablet casing
(with hand strap), with a locking bracket that can be mounted in a vehicle.”
Ex. 1003, 1, 4–5. Petitioner annotates the images with arrows identifying
the tablet inserted in the casing as “Electronic Device,” the top and sides of
the casing as “Hard Shell,” a portion of the bottom of the casing as
“Adapter,” and, on the back view of the Flex 8, portions of the identified
adapter as “Contactor” and “Contacts.” Pet. 18.
Petitioner also provides an annotated version of an image of the
disassembled parts of the Flex 8, reproduced below. Pet. 18.
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The above image shows the component parts of the Flex 8 before the tablet
is inserted into the casing. The bottom corner pieces are separated from the
casing, which Petitioner identifies with arrows as “Hard Shell,” a tablet is
aligned for insertion into the casing, and a separate piece Petitioner identifies
with arrows as “Adapter” with “Contact,” “Contactor,” and “Plug” is
positioned at the bottom of the tablet. Id.
Claim 1 requires that (1) the adapter comprises a contactor and male
positioning interface; (2) the contactor comprises a contactor surface and a
plurality of contacts exposed and arranged on the surface that are electrically
coupleable to the electronic device; (3) the male positioning interface
defines a rim surrounding, and in contact with, a perimeter of the contactor
surface of the contactor of the adapter; and (4) the rim guides the proper
mating of the contactor of the adapter to the external connector. Ex. 1001,
34:3–13. Petitioner identifies components in the images of the Flex 8 taken
from GPS 1 that it purports to be an adapter comprising a contactor with
contacts, but does not explain why or how those identified components meet
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the limitations of claim 1. Petitioner also fails direct us to any disclosure in
GPS 1 from which we can identify, or discern the function of, any
component of the device identified in those images. See Pet. 16–18
(Petitioner’s contentions regarding the adapter limitation of claim 1); see
also Ex. 1003 (GPS 1, nowhere identifying any feature of the device by
reference to the images). Additionally, Petitioner does not identify anything
in the images corresponding to the recited “male positioning interface” or
“rim surrounding, and in contact with, a perimeter of the contactor surface
. . . to guide proper mating of the contactor of the adapter to the external
connector” limitations of claim 1.
It is the petitioner’s burden from the outset to show with particularity
why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc.,
815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter
partes review must identify how the challenged claims are unpatentable, and
must specify where each element of the claim is found in the relied-upon
prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition
must identify “with particularity, each claim challenged, the grounds on
which the challenge to each claim is based, and the evidence that supports
the grounds for challenge to each claim”). A petition must also include “a
detailed explanation of the significance of the evidence including material
facts, and the governing laws, rules, and precedent.” 37 C.F.R.
§ 42.22(a)(2). Here, the Petition does not identify sufficiently where each
element of claim 1 is found in GPS 1, and does not include a detailed
explanation of the significance of the evidence.
Specifically, Petitioner fails to explain with any particularity how or
why the images reproduced above support its view that GPS 1 discloses “an
adapter coupleable to a portable electronic device for mating with an
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external connector” as recited in claim 1. Pet. 16–18. Petitioner merely
states that “[u]nder PO’s theories of infringement, GPS 1 discloses these
recitations” and provides the annotated images reproduced above. Id.
Patent Owner’s infringement contentions, however, are directed to a
different product (the ATMOS Temperature Controlling Cradle Kit for
Samsung Galaxy TAB A 8" Product), and Petitioner does not explain how
that product relates, if at all, to the Flex 8 depicted in GPS 1. Moreover,
Petitioner’s citation to Patent Owner’s infringement contentions to support
conclusory statements not otherwise supported in the Petition amounts to an
improper incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments
must not be incorporated by reference from one document into another
document.”). The Petition, therefore, falls short of adequately establishing
the identity or function of any component in the images of the Flex 8 from
GPS 1.
Petitioner states that, although the Petition primarily focuses on GPS 1
because “webpages are most easily reproduced” therein, “the same analysis
applies to each of the AP Publications.” Pet. 16. As was the case with
Petitioner’s challenge based on GPS 1, the Petition fails to explain with any
particularity how the products depicted in GPS 2, GPS 3, and GPS 4 support
its view that GPS 2, GPS 3, and GPS 4 each discloses “an adapter
coupleable to a portable electronic device for mating with an external
connector” as recited in claim 1. Pet. 18–21. Petitioner provides two still
images from each of GPS 2, GPS 3, and GPS 4, which appear to show the
Flex 8, without annotations or further explanation. Id. The Petition,
therefore, also does not identify sufficiently where each element of claim 1
is found in GPS 2, GPS 3, and GPS 4.
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For these reasons, we are not persuaded that Petitioner sufficiently
establishes that any of the AP Publications discloses the recitations of
claim 1 directed to “an adapter coupleable to a portable electronic device for
mating with an external connector.” Accordingly, we determine that the
Petition does not establish a reasonable likelihood that Petitioner will prevail
in showing that claim 1, and claims 2, 3, and 7–9 that depend directly or
indirectly therefrom, are anticipated by the AP Publications.
2. Claims 10, 11, and 14–18
Petitioner contends that each of the AP Publications disclose all of the
limitations of independent claim 10. Pet. 26–27. Claim 10, like claim 1,
requires “an adapter coupleable to a portable electronic device for mating
with an external connector,” wherein (1) the adapter comprises a contactor
and male positioning interface; (2) the contactor comprises a contactor
surface and a plurality of contacts exposed at the surface that are electrically
coupleable to the electronic device; (3) the male positioning interface
defines a rim surrounding, and in contact with, a perimeter of the contactor
surface of the contactor of the adapter; and (4) the rim to guide the proper
mating of the contactor of the adapter to the external connector. Ex. 1001,
34:59–67. Petitioner contends that the “AP Publications disclose these
limitations as shown above for claim 1.” Pet. 27.
For the reasons set forth in Section II.C.1 with respect to claim 1, we
are not persuaded that Petitioner demonstrates, on this record, that any of
GPS 1, GPS 2, GPS 3, and GPS 4 disclose the recitations of claim 10
directed to “an adapter coupleable to a portable electronic device for mating
with an external connector.” Accordingly, we determine that the Petition
does not establish a reasonable likelihood that Petitioner will prevail in
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showing that claim 10, and claims 11, and 14–18 that depend directly or
indirectly therefrom, are anticipated by the AP Publications.
D. Obviousness over Carnevali 1, Carnevali 2, or Carnevali 3 and the
AP Publications
Petitioner contends that claims 1–3, 7–11, and 14–18 would have been
obvious over the combined teachings of Carnevali 1, Carnevali 2, or
Carnevali 3 and the AP Publications. Pet. 30–45. The ’334 patent claims
priority to Carnevali 1, as do Carnevali 2 (Ex. 1006, 1:3–8) and Carnevali 3
(Ex. 1008, code (60)), but Carnevali 2 and Carnevali 3 are not in the priority
chain of the ’334 patent. Ex. 1001, code (63). Petitioner asserts that
Carnevali 1, Carnevali 2, and Carnevali 3 are prior art “because there is no
support in the specifications of Carnevali 1–3 for the recitations ‘wherein the
adapter is detachable from the hard shell’ as recited in all of the Challenged
Claims.” Pet. 14. Petitioner’s challenges are based on Petitioner’s
contention that the ’334 patent is not entitled to a priority date earlier than
the December 27, 2018, filing date of the application that led to its issuance.
Pet. 9, 11; Ex. 1001, code (63). As a threshold issue, therefore, we must
determine whether Petitioner sufficiently establishes that Carnevali 1,
Carnevali 2, and Carnevali 3 qualify as prior art to the challenged claims of
the ’334 patent.
1. Whether Carnevali 1, Carnevali 2, and Carnevali 3
Qualify as Prior Art
The ’334 patent issued from U.S. Patent Application No. 16/233,662
(“the ’662 application,” Ex. 1024), which was filed on December 27, 2018
as a continuation of U.S. Patent Application No. 15/195,176 (“the ’176
application”), which was filed on June 28, 2016 as continuation-in-part of
U.S. Patent Application No. 14/936,517 (“the ’517 application”), which was
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filed on November 9, 2015 as a continuation-in-part of U.S. Patent
Application No. 14/829,378 (“the ’378 application”), which was filed on
August 18, 2015 as a continuation-in-part of U.S. Patent Application
No. 14/754,492 (“the ’492 application,” Ex. 1016), which was filed on June
29, 2015 as a continuation-in-part of PCT/US2015/017131, which was filed
on February 23, 2015 as a continuation-in-part of U.S. Patent Application
No. 14/222,320, filed on March 21, 2014. Ex. 1001, code (63). The ’334
patent also claims priority to U.S. Provisional Application No. 62/040,037,
filed on August 21, 2014, and U.S. Provisional Application No. 61/943,986
(“the ’986 provisional”), filed on February 24, 2014. Id. at code (60).
Carnevali 1 is the publication of the ’492 application. Ex. 1006,
code (21). Carnevali 2 was filed as a continuation of the ’176 application.
Ex. 1007, 1:3–4. Carnevali 3 was filed as a division of the ’378 application.
Ex. 1008, code (63). Accordingly, Petitioner’s challenges based on
Carnevali 1, Carnevali 2, and Carnevali 3 are based on the ’334 patent not
being entitled to a priority date earlier than the December 27, 2018 filing
date of the ’662 application. Pet. 9, 11; Ex. 1001, code (63).
Petitioner’s contentions are based solely on the “wherein the adapter
is detachable from the hard shell” limitation of independent claims 1 and 10.
Specifically, Petitioner argues that “[t]he first disclosure of ‘the adapter is
detachable from the hard shell’ appeared in dependent claims 3 and 12 of
the ’662 Application filed on December 27, 2018.” Pet. 14 (citing Ex. 1024,
47:20–21, 48:31–49:1). In other words, Petitioner argues that the ’492
application (which was published as Carnevali 1) does not provide support
for a hard shell configured to receive a portable electronic device where “the
adapter is detachable from the hard shell” as recited in independent claims 1
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and 10, and, therefore, the ’334 patent cannot rely on the benefit of priority
of the ’492 application.
“It is elementary patent law that a patent application is entitled to the
benefit of the filing date of an earlier filed application only if the disclosure
of the earlier application provides support for the claims of the later
application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted). “To
satisfy the written description requirement the disclosure of the prior
application must convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, [the inventor] was in possession of the
invention.” Id. (citations omitted). The sufficiency of written description
support is based on “an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art.”
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010
(en banc).
Petitioner has the burden to persuade us that Carnevali 1, Carnevali 2,
and Carnevali 3 are invalidating prior art. We make our decision on
institution based on whether the information presented in the petition and
that patent owner’s preliminary response “shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a). “In an inter partes
review, the burden of persuasion is on the petitioner to prove
‘unpatentability by a preponderance of the evidence,’ . . . and that burden
never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).
The burden of production can shift to the patent owner, however. See id.
at 1379. This shift happens where it is “warranted because the patentee
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affirmatively seeks to establish a proposition not relied on by the patent
challenger and not a necessary predicate for the unpatentability claim
asserted—effectively, an affirmative defense.” In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).
Here, Petitioner asserts that Carnevali 1, Carnevali 2, or Carnevali 3 in
combination with each of the AP Publications discloses each limitation of
the challenged claims, and the ’492 application does not provide written
description support for those same claims. Thus, Petitioner has the burden
of persuasion, based on all of the evidence, on both of those assertions. See
Dynamic Drinkware, 800 F.3d at 1378.
Petitioner contends that the ’492 application first introduced new
matter related to the hard shell, but “the adapter is solely described as being
attached to the flexible protective cover.” Pet. 5–6 (citing Ex. 1016, 1:26,
2:16–17, 9:11, 10:22–23, 15:1–12). According to Petitioner, “[t]he first and
only disclosure of the adapter being ‘detachable from the hard shell’
appeared in dependent claims 3 and 12 of the ’662 Application filed on
December 27, 2018, which element was ultimately moved into independent
claims 1 and 10 of the ’334 patent.” Id. at 6 (citing Ex. 1024, 7:20–21,
48:31–49:1; Ex. 1001, claims 1, 10). Therefore, Petitioner contends, “the
adapter is detachable from the hard shell” limitation “is added material new
matter, which means all claims of the ’334 patent are limited to the priority
date of their own application, i.e., December 27, 2018.” Id.
Patent Owner responds that “the Examiner at the Patent Office
addressed whether the specification provides sufficient support for claims
reciting an ‘adapter [that] is detachable from the hard shell,’ and allowed the
claims in light of” portions of the specification cited by the applicant during
prosecution. Prelim. Resp. 23. Patent Owner asserts that “[t]hose same
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cited portions are disclosed in Carnevali 1, which was filed on June 29,
2015, and to which the ’334 patent claims priority.” Id. (citing Ex. 1006
¶ 166). Patent Owner argues that Petitioner does not address “the support
cited in the prosecution history” or explain “why it believes that a person of
skill in the art would disagree with the Examiner and find that the
specification does not adequately support the claims.” Id. at 24. Patent
Owner also argues that the claims “do not need to rely on the specific phrase
‘adapter is detachable from the hard shell’ for support because the priority
applicants’ [sic, applications] disclosure of protective covers and shells
along with their disclosures of fastened adapters adequately supports the
claims of the ’334 patent.” Id. at 24.
We are not persuaded, on this record, that Petitioner has met its
burden of establishing that the “adapter is detachable from the hard shell”
limitation is not supported by the ’492 application. The ’492 application
describes a protective arrangement for an electronic device that includes
both a flexible cover and a hard shell. The ’492 application states that such
an arrangement
includes a hard shell configured and arranged to be disposed
around at least a portion of the electronic device and having an
opening to allow access to an input/output socket of the
electronic device; a flexible cover having a panel and a skirt
surrounding the panel, where the panel and skirt form an
interior cavity therebetween, and the skirt forming a mouth
opening that communicates with the interior cavity that is
configured and arranged to receive the electronic device
disposed in the hard shell; and an adapter fixedly positioned in
the flexible cover and including a male plug having connectors
extending into the interior cavity of the flexible cover in an
arrangement for mating with the input/output socket of the
device through the opening in the hard shell and a contactor
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having contacts adjacent outwardly from the flexible cover and
electrically coupled to one or more connectors of the plug.
Ex. 1016, 2:10–20. The ’492 application teaches that the adapter “is either
over molded, bonded or fastened through” the side skirt of the flexible
cover. Id. at 10:22–23. The hard shell “includes openings through which
portions of the flexible cover . . . are accessible or protrude.” Id. at 38:10–
11. In particular, the hard shell includes an opening through which a portion
of the adapter of the flexible cover “protrudes or is accessible for connection
to a docking cradle or other device.” Id. at 38:11–14.
The ’492 application also teaches that, “[i]n alternative embodiments,
the electronic device can be inserted into a hard shell and then the device
and hard shell can be inserted into” a flexible cover, or “a hard shell can be
provided as a removable (or permanent) liner for” the flexible cover. Id.
at 38:25–28. The embodiments also “include an opening through which the
male plug” of the adapter can protrude to allow the connection of the
input/output socket of the electronic device to the male plug of the adapter.
Id. at 38:28–31.
Additionally, during prosecution of the ’334 patent, the applicant
identified a portion of the ’662 application as support for the “adapter is
detachable from the hard shell by a user” limitation that originally appeared
in dependent claims 3 and 12. Ex. 1002, 358–359. Specifically, the
applicant identified the following, with reference to the embodiment
depicted in Figures 50A and 50B:
In the illustrated embodiment, the hard shell 500 includes
openings through which portions of the flexible cover, or skin,
100 are accessible or protrude. For example, the hard shell 500
includes an opening 514 through which a portion of the adapter
114 (such as nesting feature 159 or the contactor 120) of the
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cover 100 protrudes or is accessible for connection to a docking
cradle or other device.
Ex. 1024, 40:15–19. The ’492 application also includes this passage.
Ex. 1016, 38:10–14.
These disclosures in the ’492 application indicate that the adapter may
be detachable from the flexible cover (i.e., “fastened through” the side) or
may be molded in or bonded to the flexible cover. Ex. 1016, 10:22–23.
They also indicate that the electronic device can first be inserted into a hard
shell that is then inserted into the flexible cover (id. at 38:25–28), or that the
electronic device can first be inserted in the flexible cover, which is then
surrounded by the hard shell (id. at 37:25–31). And the ’492 application
provides that the hard shell includes an opening through which at least a
portion of the adapter is accessible. Id. at 38:10–14, 38:28–31. Taken
together, these disclosures at least appear to support the detachability of the
adapter from the hard shell.
On this record, Petitioner does not adequately explain why the
disclosures in the ’492 application “do not convey with reasonable clarity to
those skilled in the art” that the inventor was in possession of an adapter that
is detachable from the hard shell as of the filing date of the ’492 application.
PowerOasis, 522 F.3d at 1306. Notably, Petitioner does not address the
portion of the specification that the applicant identified during prosecution
of the ’334 patent as providing support for the “adapter is detachable from
the hard shell” limitation of the challenged claims. Pet. 5–6, 13–14;
Ex. 1024, 40:15–19; Ex. 1016, 38:10–14. Instead, Petitioner merely argues
that the phrase “the adapter is detachable from the hard shell” appeared for
the first time in the claims of the ’334 patent. Pet. 6. An adequate
description, however, does not require any particular form of disclosure, or
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that the specification recite the claimed invention in haec verba. See Ariad,
598 F.3d at 1351.
Moreover, in evaluating the sufficiency of the disclosure, we may
consider “the existing knowledge in the particular field, the extent and
content of the prior art, the maturity of the science or technology, [and] the
predictability of the aspect at issue.” Capon v. Eshhar, 418 F.3d 1349, 1359
(Fed. Cir. 2005) (cited with approval in Ariad, 598 F.3d at 1352); see also
Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir.
2011) (holding that because the assessment for written description is made
from the perspective of a person of ordinary skill in the art, in some
instances, a patentee can rely on information that “well known in the art” to
satisfy written description). For purposes of this Decision, we agree with
Petitioner that a person of ordinary skill in the art would have had (1) a
Bachelor’s Degree in mechanical engineering (or a related discipline) and
two years of experience in the design or development of interlocking
products such as docking cradles and adapters for portable electronic
devices, or (2) five years of experience in the design or development of
interlocking products. Pet. 10 (citing Ex. 1010 ¶¶ 22–23, 65–66). In light of
this level of skill in the art, Petitioner does not persuade us that such a
person would not have understood that the ’492 application adequately
describes an adapter that is detachable from the hard shell, as required by the
claims of the ’334 patent.
It is Petitioner’s burden to persuade us that Carnevali 1, Carnevali 2,
and Carnevali 3 are qualified as prior art. Upon review of the disclosures in
the ’492 application, and Petitioner’s arguments and the evidence of record,
we are not persuaded that Petitioner adequately establishes that the
challenged claims lack support in the ’492 application (as evidenced by
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Carnevali 1). Accordingly, we determine that Petitioner has not established
a reasonable likelihood that it would prevail in showing that the challenged
claims are not entitled to the benefit of the ’492 application’s filing date.
2. Claims 1–3, 7–11, and 14–18
Based on the arguments and evidence in the Petition and the
Preliminary Response, and the evidence of record, we are not persuaded that
Petitioner adequately establishes that Carnevali 1, Carnevali 2, and
Carnevali 3 are prior art to the ’334 patent. Therefore, we determine that
Petitioner has not demonstrated a reasonable likelihood that it would prevail
in showing that the subject matter of claims 1–3, 7–11, and 14–18 would
have been obvious over the combined teachings of Carnevali 1, Carnevali 2,
or Carnevali 3 and each of the AP Publications.
E. Anticipation by Kim
Petitioner contends that claims 1–3, 10, 11, 14, and 15 are anticipated
by Kim. Pet. 46–59.
1. Overview of Kim
Kim is directed to a “coupler for connecting an electronic device and a
connector” that is inserted into a recessed port of the electronic device “and
maintains the inserted state to completely block infiltration of foreign matter
into the recessed port and is magnetically coupled to the connector so as to
be flexibly decoupled from the connector by an external impact.” Ex. 1004
¶ 1. Figure 1 of Kim is reproduced below.
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Figure 1 is an exploded perspective view illustrating a state where the
coupler described in Kim is coupled to an electronic device and a connector,
and depicts electronic device 1, coupler 10, magnetic couple 20, cap 50, and
connector 5 as separate pieces aligned as they would be before being
connected together. Id. ¶ 26. One side of coupler 10 is coupled to recessed
port 2 of electronic device 1, and the other side is connected to connector 5
that provides power supply or data communication, “such that the coupler
fulfills an intermediate connection function between” electronic device 1 and
connector 5. Id. ¶ 27. Coupler 10 includes first terminal 31 configured to
connect to electronic device 1, second terminal 41 configured to connect to
connector 5, magnetic coupler 20, protruded portion 30, base 40, and
mounting groove 42. Id. ¶¶ 28–29, 46, 76. Cap 50, which is configured to
cover the surface of base 40, includes orifice 51 and recess 52. Id. ¶¶ 86–88.
Orifice 51 is “formed to penetrate the cap such that the second terminal 41
of the base 40 can be exposed to the outside.” Id. ¶ 86. Recess 52 “is
formed to be recessed toward the magnetic coupler 20” and “presses the
magnetic coupler 20 accommodated in the mounting groove 42 from above
to minimize a space in which the magnetic coupler 20 is moved.” Id. ¶¶ 88,
92.
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Kim explains that a magnet or ferromagnetic material is provided at
connector 5 so that connector 5 can be magnetically coupled to second
terminal 41 of coupler 20. Id. ¶ 35. Electronic device 1 is mechanically
coupled to first terminal 31 of coupler 10 by male-female coupling at
recessed port 2. Id.
2. Claims 1–3
Petitioner contends that Kim discloses all of the elements of claim 1.
Pet. 49–53. With respect to “the adapter comprising a contactor and a male
positioning interface, the contactor comprising a contactor surface and a
plurality of contacts exposed and arranged on the contactor surface and
electrically coupleable to the portable electronic device” limitation of
claim 1, Petitioner contends that “adapter 10 includes a male positioning
interface 40 that projects outwardly,” and “a contactor 50 having a plurality
of contacts 41 that engage corresponding contacts 6 of the external
connector 5.” Id. at 49 (citing Ex. 1004 ¶¶ 42–46, 59, Figs. 1, 3B, 5, 6).
Petitioner further contends that contacts 41 are coupled to electronic device
1 by connectors 31. Id.
Petitioner provides the following annotated versions of Figures 1
and 6 in Kim to illustrate its contentions with respect to “the male
positioning interface defining a rim surrounding, and in contact with, a
perimeter of the contactor surface of the contactor of the adapter to guide
proper mating of the contactor of the adapter to the external connector”
limitation of claim 1.
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Figure 13 on the top left is an exploded perspective view illustrating a state
where the coupler described in Kim is coupled to an electronic device and a
connector, and Figure 6 on the bottom right is a cross-sectional view
illustrating a state where cap 50 is mounted on the coupler. Pet. 52;
Ex. 1005 ¶ 24. Petitioner annotates Figures 1 and 6 by identifying
coupler 10 as “Adapter,” cap 50 as “Contactor,” connector 5 as “External
Connector,” contacts 41 as “Contacts,” magnetic coupler 20 as “Magnetic
Couplers,” and connectors 31 as “Connectors.” Pet. 50. Petitioner also
includes arrows pointing at the portion of coupler 10 to which cap 50 is
attached labeled “Male Positioning Interface,” an arrow pointing at the top
left side of coupler 10 between base 40 and mounting groove 42 labeled

3 This annotated version of Figure 1, taken directly from the Petition,
truncates the figure such that numbers labeling certain components are
partially cut off or omitted altogether. Compare Pet. 50, Fig. 1, with
Ex. 1004, Fig. 1 (reproduced in Section E.1, supra).
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“Rim,” and an arrow pointing the bottom right corner of the electronic
device labeled “Case.” Id.
Petitioner also provides an annotated version of Kim’s Figure 4,
reproduced below, to support its contention that “[t]he rim of the male
positioning interface 40 guides proper mating of the adapter 10 with the
external connector 5.” Pet. 50–51.

Figure 4 is a perspective view of a coupled state of coupler 10 to
connector 5. Ex. 1004 ¶ 5. Petitioner annotates Figure 4 by adding an arrow
pointing to the top of protruded portion 30 labeled “Adapter,” an arrow
pointing to the line where protruded portion 30 meets base 40 labeled “Male
Positioning Interface,” and an arrow pointing to base 40 below that line
labeled “Rim.” Pet. 51.
On the record before us, we are not persuaded that Petitioner
establishes that Kim discloses “the male positioning interface defining a rim
surrounding, and in contact with, a perimeter of the contactor surface of the
contactor of the adapter to guide proper mating of the contactor of the
adapter to the external connector” limitation of claim 1. As an initial matter,
is unclear in the Petition what part of Kim Petitioner contends is the recited
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“rim.” Petitioner only refers to Annotated Figures 1 and 6, and states that
“male positioning interface 40 includes a rim that surrounds and is in contact
with a perimeter of the contactor 50.” Pet. 50. The arrows Petitioner added
to Annotated Figures 1 and 6 appear to be identifying base 40 of coupler 10
as the male positioning interface and the rim. Petitioner, however, does not
explain how base 40 can be both a male positioning interface and a rim
surrounding and in contact with a perimeter of the contactor.
Petitioner also does not adequately explain how Annotated Figure 4
shows that “[t]he rim of the male positioning interface 40 guides proper
mating of the adapter 10 with the external connector 5.” Pet. 50. In
describing Figure 4, Kim explains:
As illustrated in FIG. 4, the coupler 10 according to the present
invention provides a method in which specifically the second
terminal 41 formed at the base 40 is magnetically coupled to the
connection terminal 6 of the connector 5. In other words, in
this structure, the second terminal 41 of the coupler 10 and the
connection terminal 6 of the connector 5 are coupled to each
other through the magnetic coupling between magnetic
couplers 20 included in both the coupler 10 and the connector
5, without terminals having separate male-female shapes.
Ex. 1004 ¶¶ 68–69. Thus, Kim teaches that coupler 10 and connector 5 are
properly aligned because of the magnetic coupling achieved by magnetic
couplers 20 placed on both coupler 10 and connector 5. Petitioner does not
direct us to, nor do we discern, any indication in Kim that there is a rim on
base 40 that plays any role in the proper mating of coupler 10 and
connector 5, as Petitioner contends. Rather, as set forth in Kim’s Figure 6,
what is identified by Petitioner as the “Rim” functions to position elements
of coupler 10 relative to one another, rather than to position any part of
coupler 10 to connector 5.
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For these reasons, we are not persuaded that Petitioner establishes that
Kim discloses “the male positioning interface defining a rim surrounding,
and in contact with, a perimeter of the contactor surface of the contactor of
the adapter to guide proper mating of the contactor of the adapter to the
external connector” limitation of claim 1. Accordingly, we determine that
the Petition does not establish a reasonable likelihood that Petitioner will
prevail in showing that claim 1, and claims 2 and 3 that depend directly
therefrom, are anticipated by Kim.
3. Claims 10, 11, 14, and 15
Petitioner contends that Kim discloses “the male positioning interface
defining a rim to guide proper mating of the contactor of the adapter to the
external contactor” limitation of claim 10 for the same reasons as set forth
with respect to the similar limitation in claim 1. Pet. 56. For the reasons set
forth in Section II.E.2 above with respect to claim 1, we are not persuaded
that Petitioner demonstrates, on this record, that Kim discloses “the male
positioning interface defining a rim to guide proper mating of the contactor
of the adapter to the external contactor” limitation of claim 10. Accordingly,
we determine that the Petition does not establish a reasonable likelihood that
Petitioner will prevail in showing that claim 10, and claims 11, 14, and 15
that depend directly therefrom, are anticipated by Kim.
F. Obviousness over Kim and Song
Petitioner contends that the subject matter of claims 1–3, 7–11, and
14–18 would have been obvious over the combined teachings of Kim and
Song. Pet. 59–69. Petitioner relies on the Cameron Declaration in support
of its contentions.
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1. Overview of Song
Song is directed to a coupling jack that connects a handsfree to a
cellular phone. Ex. 1005, Abs. Song explains that frequent coupling and
decoupling of a cellular phone to a connector jack “during short-distance
driving of a vehicle result[s] in great inconvenience, and the cellular phone
and the connecting data jack significantly wear due to repetitive jack
coupling, which became a factor to shorten the service life of a component.”
Id. at 2.4 To address this problem, Song describes an intermediate coupling
jack that is constantly coupled to a data connection port of a cellular phone,
which is separate from a data connector jack fixed and attached to a
handsfree. Id.
Song describes attaching a magnet to the fixed data connector jack
and a metal member to the intermediate coupling jack, such that, when a
user moves the cellular phone to a position close to the fixed data connector
jack, the metal member of the intermediate coupling jack on the cellular
phone is “automatically attached” to the magnet attached to the data
connector jack on the handsfree. Id. In this way, Song explains, “the user
can automatically couple the handsfree and the cellular phone conveniently
without any separate coupling operation.” Id.
2. Claims 1–3 and 7–9
Petitioner relies on its argument that claim 1 is anticipated by Kim for
most of the limitations of claim 1, and additionally argues “Kim may be
further combined with Song to clearly show the recitations ‘wherein the hard

4 We refer to the page numbers added by Petitioner to the bottom right hand
corner of Ex. 1005.
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shell is configured so that the adapter extends out of the hard shell for
mating with the external connector.’” Pet. 62.
For the reasons set forth above with in Section II.E.2, we are not
persuaded that Kim discloses “the male positioning interface defining a rim
surrounding, and in contact with, a perimeter of the contactor surface of the
contactor of the adapter to guide proper mating of the contactor of the
adapter to the external connector” limitation of claim 1. Petitioner does not
rely on Song to remedy this deficiency in Kim. See Pet. 62. Accordingly,
we determine that Petitioner does not establish a reasonable likelihood that it
would prevail in showing that independent claim 1, and claims 2, 3, and 7–9
that depend directly or indirectly therefrom, would have been obvious over
the combined teachings of Kim and Song.
3. Claims 10, 11, and 14–18
Petitioner argues that “the recitations of Claim 10 are disclosed by
Kim,” and that “if adapter 10 of Kim is replaced with the adapter B of Song,
then Kim in view of Song clearly disclose ‘wherein the hard shell defines an
opening through which the adapter protrudes when received by the hard
shell’” as recited in claim 10. Pet. 67.
For the reasons set forth in Section II.E.2 above with respect to
claim 1, we are not persuaded that Petitioner demonstrates, on this record,
that Kim discloses “the male positioning interface defining a rim to guide
proper mating of the contactor of the adapter to the external contactor”
limitation of claim 10. Petitioner does not rely on Song to remedy this
deficiency in Kim. See Pet. 67. Accordingly, we determine that the Petition
does not establish a reasonable likelihood that Petitioner will prevail in
showing that claim 10, and claims 11 and 14–18 that depend directly or
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indirectly therefrom, would have been obvious over the combined teachings
of Kim and Song.
G. Obviousness over Kim, Song, and An 1
Petitioner contends that “Kim in view of Song discloses all limitations
of claims 1, 2, 3, 10, 11, 14, and 15,” and An 1 further discloses an adapter
attached to a hard shell. Pet. 71 (citing Ex. 1032, Fig. 1). Therefore,
according to Petitioner, the combined teachings of Kim, Song, and An 1
teach the “wherein the adapter is detachable from the hard shell” limitations
of independent claims 1 and 10. Id.
For the reasons set forth above with in Sections II.E.2, we are not
persuaded that Kim discloses “the male positioning interface defining a rim
surrounding, and in contact with, a perimeter of the contactor surface of the
contactor of the adapter to guide proper mating of the contactor of the
adapter to the external connector” limitation of claim 1 or “the male
positioning interface defining a rim to guide proper mating of the contactor
of the adapter to the external connector” limitation of claim 10. See also
Section II.E.3 (addressing claim 10). Petitioner does not rely on Song or
An 1 to remedy this deficiency in Kim. See Pet. 67, 71–72. Accordingly,
we determine that the Petition does not establish a reasonable likelihood that
Petitioner will prevail in showing that independent claims 1 and 10, claims 2
and 3 that depend directly from claim 1, and claims 11, 14, and 15 that
depend directly from claim 10, would have been obvious over the combined
teachings of Kim, Song, and An 1.
H. Obviousness over Kim, Song, An 1, and An 2
Petitioner contends that claims 7–9 and 16–18 would have been
obvious over the combined teachings of Kim, Song, An 1, and An 2.
Pet. 73–75. In particular, Petitioner contends that “Kim in view of Song and
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An 1 discloses all limitations of claims 1, 2, 3, 10, 11, 14, and 15,” and that
“An 2 further discloses the docking cradle, external connector, and magnetic
coupling limitations” of claims 7–9 and 16–18. Id. at 74–75.
For the reasons set forth in Section II.E.2, we are not persuaded that
Kim discloses “the male positioning interface defining a rim surrounding,
and in contact with, a perimeter of the contactor surface of the contactor of
the adapter to guide proper mating of the contactor of the adapter to the
external connector” limitation of claim 1 or “the male positioning interface
defining a rim to guide proper mating of the contactor of the adapter to the
external connector” limitation of claim 10. See also Section II.E.3
(addressing claim 10). Because claims 7–9 ultimately depend from claim 1,
and claims 16–18 ultimately depend from claim 10, they also include these
limitations. Petitioner does not rely on Song, An 1, or An 2 to remedy these
deficiencies in Kim. Pet. 67, 71–72, 74–75.
Accordingly, we determine that the Petition does not establish a
reasonable likelihood that Petitioner will prevail in showing that claims 7–9
and 16–18 would have been obvious over the combined teachings of Kim,
Song, An 1, and An 2.
I. Obviousness over Kim, Song, and Huang
Petitioner contends that claims 7–9 and 16–18 would have been
obvious over the combined teachings of Kim, Song, and Huang. Pet. 75–81.
1. Overview of Huang
Huang “relates to a multifunction adapter device, in particular, to a
housed adapter device that allows for the simultaneously placement of one
or more mobile phones to perform charging and data signal transmission.”
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Ex. 1009, 5:3–5.5 Huang explains that the primary purpose of the invention
is to provide a multifunction adapter device that allows for one or more
interchangeable connective socket plugs of various shapes to be snap-fitted
into it, so that it is compatible with a wide range of mobile phone models.
Id. at 6:6–10. Figure 3 of Huang is reproduced below:

Figure 3 is an exploded schematic depiction of the structure of one
embodiment described in Huang. Id. at 8:34–35. Charging dock 31 has
mobile phone holder slot 35 machined into the top surface for placement of a
cellular phone or handset. Id. at 9:15–18. FPC-cable slot 37 is machined
into mobile phone holder slot 35, and power supply unit 51 is connected to
charging dock 31 to make the inside of FPC-cable slot 37 electrically
conductive. Id. at 9:18–21. The bottom end of interchangeable conductive
socket 33 is designed as FPC adapter 331 that plugs into FPC-cable slot in a

5 We refer to the page numbers added by Petitioner to the bottom-right side
of the page.
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tight-fitting, snap-fit manner. Id. at 9:21–23. When FPC adapter 331 is
plugged into FPC-cable slot 37, an electrical connection is formed. Id.
at 9:23–25. The tip of interchangeable connective socket 33 is designed to
match the connective socket at the bottom of a mobile phone (not depicted)
from various brands and models, and forms electrical plug 335 that
correspondingly matches the connective socket at the bottom of the mobile
phone. Id. at 9:26–29. When FPC adapter 331 of interchangeable
connective socket 33 is plugged into FPC-cable slot 37, the mobile phone
can be securely plugged into electrical plug 335 of interchangeable
connective socket 33, so that once power supply unit 51 is connected to
charging dock 31, it can immediately charge the mobile phone. Id. at 9:29–
33.
Interface card mount 41, inside of which is male mount adapter 43
that can be electrically connected to FPC-cable slot 57, can be fixed to the
bottom of charging dock 31. Id. at 9:34–36. Add-on function module 45,
such as a data storage device, MP3 player, radio, CD player, or digital
camera, “can be configured in the form factor of the interface card mount 41
with an interface card slot 455 machined into it.” Id. at 9:36–10:3. Female
mount adapter 453 is fixed inside interface card mount 455 and can be snap-
fitted to male mount adapter 43 to form an electrical connection, which
enables two-way storage and execution actions between add-on function
module 45 and the mobile phone. Id. at 10:3–11.
2. Claims 7–9
Petitioner contends that “Kim in view of Song discloses all of the
limitations of claim 1,” and that Huang discloses “the additional limitations”
of claim 7. Pet. 77. Petitioner contends that Huang discloses a docking
cradle, a lower portion of which serves as a tray that engages and receives
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the electronic device and the adapter of Kim in view of Song. Id. (citing
Ex. 1009, Figs. 3, 5). Petitioner further contends that “[t]he adapter of Kim
in view of Song would be modified so that the adapter would operates with
the docking connector 37,43,453 of Huang.” Id. Petitioner also contends
that Huang’s docking cradle includes a docking connector having a plurality
of contacts positioned to connect with the corresponding plurality of
contacts of the contactor of the adapter disclosed by Kim. Id. (citing
Ex. 1009, Figs. 3, 5; Ex. 1004, Figs. 1, 6).
For the reasons set forth in Section II.E.2, we are not persuaded that
Kim discloses “the male positioning interface defining a rim surrounding,
and in contact with, a perimeter of the contactor surface of the contactor of
the adapter to guide proper mating of the contactor of the adapter to the
external connector” limitation of claim 1, from which claim 7 directly
depends. Petitioner does not rely on Song or Huang to remedy this
deficiency in Kim. Pet. 62, 76–78. Accordingly, we determine that the
Petition does not establish a reasonable likelihood that Petitioner will prevail
in showing that claim 7, and claims 8 and 9 that depend directly therefrom,
would have been obvious over the combined teachings of Kim, Song, and
Huang.
3. Claims 16–18
Petitioner contends that Kim in view of Song discloses all of the
limitations of claim 10, from which claim 16 directly depends, and that,
“[r]egarding the additional limitations of claim 16, Song and Huang disclose
all of these additional recitations as described above with reference to
claim 7.” Pet. 80. For the reasons set forth in Section II.E.3, we are not
persuaded that Kim discloses “the male positioning interface defining a rim
to guide proper mating of the contactor of the adapter to the external
IPR2021-00767
Patent 10,630,334 B2
38
connector” limitation of claim 10. Petitioner does not rely on Song or
Huang to remedy this deficiency in Kim. Pet. 67, 79–80. Accordingly, we
determine that the Petition does not establish a reasonable likelihood that
Petitioner will prevail in showing that claim 16, and claims 17 and 18 that
depend directly therefrom, would have been obvious over the combined
teachings of Kim, Song, and Huang.
III. CONCLUSION
Based on the arguments in the Petition and Preliminary Response, and
the evidence of record, we determine that Petitioner has not established a
reasonable likelihood that it would prevail on its challenge that claims 1–3,
7–11, and 14–18 of the ’334 patent are unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no trial is instituted.

IPR2021-00767
Patent 10,630,334 B2
39

FOR PETITIONER:
Dale C. Barr
CONSTELLATION LAW GROUP PLLC
dale@constellationlaw.com

Joshua King
KING IP LAW
jking@king-iplaw.com

FOR PATENT OWNER:

David K. Tellekson
Jonathan T. McMichael
Jessica M. Kaempf
FENWICK & WEST
dtellekson@fenwick.com
jmcmichael@fenwick.com
jkaempf@fenwick.com