National Products Inc.

Patent Trials and Appeals Board

Jan 3, 2022

IPR2021-01159 (P.T.A.B. Jan. 3, 2022)

Trials@uspto.gov Paper 7 571-272-7822 Entered: January 3, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GAMBER-JOHNSON LLC, Petitioner, v. NATIONAL PRODUCTS INC., Patent Owner. ____________ IPR2021-01159 Patent 9,706,026 B2 ____________ Before JO-ANNE M. KOKOSKI, WESLEY B. DERRICK, and SCOTT B. HOWARD, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-01159 Patent 9,706,026 B2 2 I. INTRODUCTION On June 21, 2021, Gamber-Johnson LLC (“Petitioner”) filed a Petition for an inter partes review of claims 1-20 of U.S. Patent No. 9,706,026 B2 (“the ’026 patent,” Ex. 1001). Paper 1 (“Pet.”). National Products Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition 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). We deny inter partes review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). For the reasons discussed below, we deny institution of inter partes review. A. Real Parties-in-Interest Petitioner identifies itself, Gamber-Johnson LLC, and its parent company, Gamber-Johnson Holdings, as real parties-in-interest. Pet. 1. IPR2021-01159 Patent 9,706,026 B2 3 Patent Owner identifies itself, National Products Inc., as the real party-in-interest in this proceeding. Paper 5, 1. B. Related Proceedings The parties identify a district court proceeding involving Petitioner, National Products Inc. v. Gamber-Johnson LLC, No. 3:20-cv-01108-wmc (W.D. Wis.)), as a related matter. Pet. 2; Paper 5, 3-4. The parties also identify two district court proceedings involving other defendants, National Products Inc. v. Innovative Intelligent Products, LLC d/b/a GPS Lockbox, Case No. 2:20-cv-00428 (W.D. Wash.) and National Products Inc. v. ProClip USA Inc., No. 3:20-cv-00439 (W.D. Wis.). Pet. 2; Paper 5, 3-4. The parties also identify inter partes review proceedings challenging the ’026 patent-IPR2021-00622-and related patents-IPR2021-00623 (U.S. Pat. No. 10,454,515) and IPR2021-00767 (U.S. Pat. No. 10,630,334). Pet. 2; Paper 5, 2. C. The ’026 Patent (Ex. 1001) The ’026 patent is titled “Docking Sleeve with Electrical Adapter” and issued on July 11, 2017, from Application No. 14/936,517. Ex. 1001, codes (22), (45), (54). The ’026 patent sets forth that it is a continuation-in- part application and identifies related applications, setting forth their relation to each other. Id. at code (63) (Related U.S. Application Data), 1:7-19. The ’026 patent generally relates to a “protective arrangement for an electronic device [that] includes a flexible cover having a panel and a skirt that form an interior cavity to receive [the] electronic device[] and an adapter . . . positioned in [the body of] the flexible cover,” where the “adapter” has “a male plug with connectors extending into the interior cavity of the flexible cover” and an adjacent “contactor” “facing outwardly from IPR2021-01159 Patent 9,706,026 B2 4 the flexible cover” that is “electrically coupled to . . . the connectors of the plug.” Id. at code (57). The “protective arrangement,” thus, allows the electronic device to be electrically connected to a docking cradle via the adapter positioned in the body of the flexible cover. Id. The ’026 patent identifies its invention as “relat[ing] to a cover for protecting a portable electronic device” and characterizes its “protective cover” as an improvement over those in the art, which it explains “are limited in their ability to provide efficient and reliable usage of such portable electronic devices.” Id. at 1:23-24 (Field of the Invention), 1:35-37 (Background of the Invention). D. Illustrative Claims Independent claims 1, 8, and 10, reproduced below, are illustrative of the claimed invention. 1. A docking cradle, comprising: a base receiver configured to receive an electronic device disposed in a removable cover having a male connector with a plurality of contacts, the base receiver comprising a back support surface to support a back of the removable cover and electronic device and a docking support surface extending away from the back support surface; and a female connector disposed within the docking support surface of the base receiver and comprising a plurality of contacts configured to connect with one or more of the plurality of contacts of the male connector when the male connector is received in the base receiver, the female connector defining a rim to guide proper mating of the male connector of the removable cover to the female connector of the docking cradle, wherein the contacts of the female connector are biasing contacts that move when the removable cover and electronic device are received. Ex. 1001, 32:14-32. IPR2021-01159 Patent 9,706,026 B2 5 8. A docking cradle, comprising: a base receiver configured to receive an electronic device disposed in a removable cover having a male connector with a plurality of contracts, the base receiver comprising a back support surface to support a back of the removable cover and electronic device and a docking support surface extending away from the back support surface; and a female connector disposed within the docking support surface of the base receiver and comprising a plurality of contacts configured to connect with one or more of the plurality of contacts of the male connector when the male connector is received in the base receiver, the female connector defining a rim to guide proper mating of the male connector of the removable cover to the female connector of the docking cradle, wherein the female connector further comprises a magnetic coupling element resident in the connector, wherein the magnetic coupling element comprises one of a magnetic material or a magnetically attractive material. Id. at 32:48-67. 10. A docking system, comprising: a protective cover for an electronic device, the cover comprising a shell forming an interior cavity to receive the electronic device, a male plug comprising a plurality of connectors extending into the interior cavity of the shell in an arrangement for mating with a female socket of the device, and a contactor comprising a plurality of contacts adjacent to an exterior of the shell and electrically coupled to one or more of the connectors of the plug, wherein the cover is configured and arranged to extend over at least a portion of a back surface, a front surface, and each of four side surfaces of the electronic device to hold the electronic device within the cover; and a docking cradle configured to receive the cover and comprising a base receiver to receive the cover and a docking connector disposed on the base receiver and comprising a plurality of contacts positioned to connect with one or more of the plurality of contacts of the IPR2021-01159 Patent 9,706,026 B2 6 contactor of the protective cover, the docking connector defining a rim to guide proper mating of the contactor to the docking connector. Id. at 33:4-25. E. Asserted Challenges to Patentability Petitioner challenges the patentability of claims 1-20 as follows (Pet. 9): Claims Challenged 35 U.S.C. § Reference(s)/Basis 1-3, 6, 7, 10-14, 17-19 § 102 Woud1 8, 9, 20 § 103 Woud, Rohrbach2 3, 5, 13, 16 § 103 Woud, SA3 10, 11, 14, 15, 17, 18 § 103 Wylie4 1, 2, 4, 6-9, 19, 20 § 103 Wylie, Rohrbach In support of its patentability challenge, Petitioner relies on the Declaration of Mr. Jason Lewandowski. (Ex. 1007). II. ANALYSIS A. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See 1 Woud, US 7,859,222 B2, issued Dec. 28, 2010. Ex. 1003. 2 Rohrbach et al., US 7,311,526 B2, issued Dec. 25, 2007. Ex. 1004. 3 SA, US 2011/0134601 A1, published June 9, 2011. Ex. 1005. 4 Wylie, US 9,760,116 B2, issued Sept. 12, 2017. Ex. 1006. IPR2021-01159 Patent 9,706,026 B2 7 Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner asserts that “[t]he relevant field is mounting systems for personal electronic devices” and that [a] person of ordinary skill in the relevant art at the time of the alleged invention . . . would have had at least an associate degree in mechanical design, industrial technology or a related technical field and at least three years of experience designing and developing docking stations for smart phones, tablets and other electronic devices, or equivalent training, education or work experience, such as a Bachelor of Science degree in mechanical engineering, mechanical design, industrial technology, or a related technical field and at least two years of experience designing and developing docking stations for smart phones, tablets and other electronic devices. Pet. 29. Patent Owner neither contests Petitioner’s proposed definition nor proposes its own definition. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus preclude a meaningful indication of the level of ordinary skill in the art. B. Claim Construction In an inter partes review, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under this framework, claim terms generally are given their ordinary and customary IPR2021-01159 Patent 9,706,026 B2 8 meaning as would be understood by one with ordinary skill in the art in the context of the specification (including other claims), the prosecution history, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312-19. Usually, the specification is dispositive, and it is the single best guide to the meaning of a disputed term. Id. at 1315. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”). Petitioner offers proposed constructions for “connector” terms and for “contactor” and cites portions of the ’026 patent and testimony of Mr. Lewandowski in support. Pet. 11-16 (citing Ex. 1001, 1:51-57, 2:11- 18, 3:62-67, 7:41-57, 8:12-24, 8:50-67, 9:1-19, 9:32-41, 31:39-40, 32:16, 33:7-8, Figs. 5, 8; Ex. 1007 ¶¶ 34-38, 42-47). Petitioner sets forth that: (1) “connector” means “a structure that supports and positions contacts to ensure a connection”; (2) “female connector” means “a mating structure defining a recess that supports and positions contacts to ensure a connection”; (3) “male connector” means “a mating structure defining a protrusion that supports and positions contacts to ensure a connection”; (4) “plurality of connectors” means “more than one contact that makes an electrical connection”; (5) “docking connector” means “a structure that supports and positions contacts to ensure a connection between a protective IPR2021-01159 Patent 9,706,026 B2 9 cover and a cradle”; and (6) “contactor” means “a structure to support and position contacts to ensure an electrical connection.” Id. at 12-17. Patent Owner does not offer any contrary interpretation of claim terms. See Prelim. Resp. On this record, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution. C. Principles of Law Petitioner challenges claims under 35 U.S.C. §§ 102 and 103. A claim is anticipated under § 102 “only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). That “reference [must] ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art” and, “[f]or this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.” Wasica Fin. GmbH v. Cont’l Auto Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002); citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983)). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; IPR2021-01159 Patent 9,706,026 B2 10 (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) if in evidence, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326- 27 (Fed. Cir. 2008))). D. Asserted Anticipation by Woud Petitioner challenges claims 1-3, 6, 7, 10-14, and 17-19 as anticipated by Woud. Pet. 31-49. Patent Owner counters that Petitioner has not established a reasonable likelihood of success in establishing that Woud anticipates these claims. Prelim. Reply 20-21. IPR2021-01159 Patent 9,706,026 B2 11 1. Woud (Ex. 1003) Woud is titled “Case Battery System” and discloses a “case battery system” that includes a “case battery” “configured to enclose and hold at least part of a personal electronic device,” a “connector adaptor,” and a “dock.” Ex. 1003, codes (54), (57). Woud discloses that “[t]he personal electronic device [enclosed in the case battery] may be connected to the connector adaptor, or installed on the dock to be charged.” Id. at code (57). The “case battery” includes “storage that provides more electrical power” and provides protection for the “personal electronic device.” Id. at 1:13-15. Woud’s case battery 100 is a removable cover having a bottom portion 10, a rear plate portion 20, and a top holding portion 30, as depicted in Figure 2 reproduced below. IPR2021-01159 Patent 9,706,026 B2 12 Ex. 1003, 5:25-26, Fig. 2 (depicting an exploded front view of case battery 100). “The bottom portion 10 is configured to hold a lower part of the personal electronic device 90” (not shown). Id. at 5:30-31. The bottom portion 10 includes first connector 12 that can be configured to electrically connect the case battery 100 to the personal electronic device, holes 14 that can be configured to pass sound from a speaker of the personal electronic device, and guide recess 15 that guides the connection of case battery 100 with connector adaptor 60 (not shown). Id. at 6:10-18, 6:45-48, Fig. 2. IPR2021-01159 Patent 9,706,026 B2 13 Woud also discloses the same type of connection between the bottom portion 10 and dock 80. See, e.g., id. at 7:8-13, Figs. 18-19. The rear plate portion 20 is configured to be attached to or detached from bottom holding portion 10 mechanically and electrically and to top holding portion 30 mechanically. Ex. 1003, 5:34-39, Fig. 2. The rear plate portion 20 provides protection to the rear portion of the personal electronic device. Id. at 5:35-36. The rear plate portion 20 has disposed within it charging portion 40 and first circuit 50 for storing and providing power to the personal electronic device 90 while it is installed within case battery 100. Id. at 5:60-64, Fig. 2. The top holding portion 30 is depicted with longitudinal rails 26 that can be used with longitudinal rail recesses 27 to connect the rear plate 20 and top or bottom holding portion 30, 10. Ex. 1003, 5:56-59, Figs. 2, 10. Woud’s connector adapter 60 may be configured or detached from the bottom holding portion 10 and includes a multi-purpose connector receptacle 66, as well as locks 61 configured to lock the connector adaptor 60 to the bottom holding portion 10, a release button 63 configured to release the connector adaptor 60 from bottom holding portion 10, and spring connectors 67. Ex. 1003, 6:64-7:3, 9:17, Fig. 13. Woud’s dock 80, depicted in whole, and both a personal electronic device 90 and case battery 100, each depicted in part, are set forth in Figure 18 (reproduced below). IPR2021-01159 Patent 9,706,026 B2 14 Id. at 5:5-8, Fig. 18 (depicting a side cross-sectional view of personal electronic device 90 enclosed in case battery 100 with bottom holding portion 10 and dock 80). This side view depicts further features of battery case 100, namely, connector receptacle plate 18 and locking recess 19. Id. at 8:63-64, 6:46-47, 7:19-20. As depicted, dock 80 provides for docking the battery case 100, with enclosed personal electronic device 90, into holding cup 82. Id. at 7:15-16, Fig. 18. Dock 80 further includes a plurality of locks 81, a release button 83, a spring connector 84 configured to connect to connector receptacle plate 18, a multi-purpose connector receptacle 86 for IPR2021-01159 Patent 9,706,026 B2 15 connecting to external electronic devices, and a “fourth circuit portion 182” that “control[s] . . . dock 80 and communication between other components of the case battery system, a personal electronic device 90 and an external electronic device.” Id. at 7:15-30, 8:5-8. 2. Analysis In contending that claims 1-3, 6, 7, 10-14, and 17-19 are anticipated by Woud, Petitioner relies on Woud disclosing each and every element as set forth in the claims. Patent Owner contends that Petitioner improperly relies on the same element in Woud for multiple elements recited in independent claim 1 and in independent claim 10. We focus our discussion on this dispositive issue. a) Independent claim 1 Petitioner relies on Woud’s dock 80 as meeting claim 1’s recited “base receiver” as it is configured to receive Woud’s cover’s bottom holding portion 10, which Petitioner equates to “a male connector portion.” Pet. 31- 33 (citing Ex. 1003, 5:18-20, 5:25-26, 5:30-33, 7:8-14, 7:23-26, 8:63, Figs. 2, 18; Ex. 1001, Fig. 8; Ex. 1007 ¶¶ 140-143). As to the base receiver comprising “a back support surface” and “a docking support surface,” Petitioner relies, respectively, on one portion of Woud’s holding cup 82 (highlighted red) and another portion (highlighted yellow) as illustrated in annotated Figure 19, reproduced below. IPR2021-01159 Patent 9,706,026 B2 16 Pet. 33-34 (citing Ex. 1003, 7:15-18, 3:10-11, Figs. 15, 19 (reproduced above as annotated by Petitioner, depicting a side cross-sectional view of the bottom holding portion when installed on the dock); Ex. 1007 ¶ 145). As to the recited “female connector disposed within the docking support surface” that is “configured to connect with . . . contacts of the male connector when the male connector is received in the base receiver,” Petitioner relies on “the docking surface . . . includ[ing] a female connector that is a mating structure defining a recess that supports and positions contacts to ensure a connection and that mates with a contact in the protruding male structure of connector of the cover.” Pet. 34 (citing Ex. 1003, 3:10-11, 7:15-22; Ex. 1007 ¶ 147). Further, Petitioner contends IPR2021-01159 Patent 9,706,026 B2 17 that “[t]he female connector of the holding cup 82 includes a spring connector 84 having a plurality of contacts” that “connect to the contacts of the male connector when received in the dock.” Id. at 35 (citing Ex. 1003, 7:15-18, Ex. 1007 ¶¶ 148-149). Although Petitioner’s contentions that “the docking surface . . . includes a female connector” and that “[t]he female connector of the holding cup 82 includes a spring connector” leave the bounds of the female connector somewhat ambiguous (Pet. 34-35), this ambiguity is eliminated by Petitioner’s further contentions addressing “the female connector defining a rim” (id. at 35-36). Relying on annotated versions of Woud’s Figures 15 and 18, Petitioner contends that “the top portion of the female connector defines a rim (highlighted yellow crosshatched) that guides proper mating of the male connector portion of the case . . . with the female connector (highlighted yellow).” Id. Petitioner also provides an enlarged view of the relevant portion of its annotated Figure 18, reproduced below. IPR2021-01159 Patent 9,706,026 B2 18 Id. (citing Ex. 1003, Figs. 15, 18 (color added); Ex. 1007 ¶ 151) (the enlarged portion of annotated Figure 18, reproduced in the Petition, depicts a side view of holding cup 82). Claim 1 recites “a female connector disposed within the docking support surface” (emphasis added). The structure Petitioner relies on as meeting the recited “female connector,” however, encompasses the entirety of the structure relied on as meeting the recited “docking support surface.” Compare Pet. 34-36, with id. at 33-34. As highlighted by Patent Owner, this raises a significant issue. See Prelim Resp. 24, 26-27. Our reviewing court explains that, [w]here a claim lists elements separately, “the clear implication of the claim language” is that those elements are “distinct component[s]” of the patented invention. Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404-05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”). There is nothing in the asserted claims to suggest that the hinged arm and the spring means can be the same structure. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”). Becton Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Therefore, a single structure in Woud cannot be both the recited female connector and the recited docking support surface, nor meet the requirement that the female connector is disposed within the docking support surface where the entirety of structure relied on as the docking support surface is also the structure relied on as the female connector, as Petitioner contends. Petitioner offers no explanation or IPR2021-01159 Patent 9,706,026 B2 19 reasoning sufficient for its reliance on the same structure for different elements set forth in the claim. See Pet. Because we find Petitioner relies on the same structure for two distinct components of claim 1, Petitioner fails to establish a reasonable likelihood that it will establish by a preponderance that claim 1 is anticipated by Woud.5 b) Independent claim 10 Petitioner relies on Woud’s battery case 100 as meeting the recited protective cover. Pet. 41-45 (citing Ex. 1003, 1:11-15, 5:21-22, 5:25-46, 6:10-15, 6:33-35, 7:19-26, 8:63, Figs. 2, 7, 8, 12, 18; Ex. 1007 ¶¶ 173-178, 180-182, 184-185, 187-190). As to the “docking cradle . . . comprising a base receiver to receive the cover,” Petitioner relies on “Woud teach[ing] the use of a dock 80 that includes a base receiver that receives a bottom portion 10 of a case 100.” Pet. 46 (citing Ex. 1003, 7:8-14; Ex. 1007 ¶ 192). Mr. Lewandowski testifies that because “Woud states that ‘the dock 80 may be configured to accept the bottom holding portion 10 even when the case battery 100 is enclosing the personal electronic device 90’ . . . Woud’s docking system has a docking cradle comprising a base receiver to receive the cover.” Ex. 1007 ¶ 192. As to the “docking connector disposed on the base receiver,” Petitioner again relies, as it did for claim 1, on “Woud’s dock 80 includ[ing] 5 We further note that there is some variance in what Petitioner identifies as the docking support surface. Compare Pet. 33-34 (setting forth a portion of holding cup 82, highlighted in yellow in annotated Figure 19), with id. at 34-35 (setting forth “the docking support surface “highlighted yellow)” in another annotated Figure 19, in which the highlighted portion includes both holding cup 82 and lock 81). IPR2021-01159 Patent 9,706,026 B2 20 a holding cup 82 with a docking connector (highlighted yellow),” depicted in annotated Figures 15 and 19, reproduced below. Pet. 46 (citing id. at 34-35, 37; Ex. 1003, Fig. 15 (depicting a topview of dock 80 highlighting the bottom portion of holding cup 82), Fig. 19 (depicting a side view of dock 80 (with docked personal electronic device 90 in battery case 20) highlighting the bottom portion of holding cup 80 in yellow, with spring connector 84 highlighted in orange, and the top portion of holding cup 80 highlighted in red); Ex. 1007 ¶¶ 194-197). As to the “docking connector defining a rim,” Petitioner relies on Woud in the same manner as for claim 1, with Mr. Lewandowski’s testimony that “Woud’s docking support surface [as depicted in Figure 18] includes a female or recessed docking connector (highlighted in yellow with male connector highlighted in blue).” Pet. 47 (citing id. at 34-36; Ex. 1007 ¶¶ 199-200); Ex. 1007 ¶ 199. Petitioner, therefore, relies on Woud’s structure “that receives a bottom portion 10 of a case 100” as meeting the recited “base receiver” (Pet. 46), and Mr. Lewandowski’s testimony supporting this is limited to discussion for Woud’s dock 80 being “configured to accept the bottom holding portion 10” (Ex. 1007 ¶ 192). That same structure, as detailed IPR2021-01159 Patent 9,706,026 B2 21 above, is also relied on by Petitioner for meeting the “docking connector” with a “rim” that is “disposed on the base receiver” element of claim 10. Id. at 46-47. Petitioner does not offer sufficient explanation or reasoning to justify its reliance on the same structure for different elements set forth in the claim. Because we find Petitioner relies on the same structure for two distinct elements of claim 10, Petitioner fails to establish a reasonable likelihood that it will establish by a preponderance that claim 10 is anticipated by Woud.6 See Becton Dickinson, 616 F.3d at 1254. c) Dependent claims 2, 3, 7, 11-14, 17-19 Claims 3 and 7 depend from independent claim 1 and claims 11-14 and 17-19 depend from independent claim 10. Petitioner does not remedy the deficiencies in the base independent claims in setting forth the ground as applied to these dependent claims. See Pet. 37-40, 47-49. E. Asserted Obviousness in View of Woud and Rohrback Petitioner challenges claims 8, 9, and 20 as unpatentable for obviousness in view of Woud and Rohrback. Pet. 49-54. 1. Rohrbach (Ex. 1004) Rohrbach is titled “Magnetic Connector for Electronic Device” and discloses “[a]n electrical plug and receptacle relying on magnetic force to maintain contact” that “can be used as part of a power adaptor for 6 We further note that there is, as there was with claim 1, some variance in what Petitioner identifies as particular elements, here the docking connector. Compare Pet. 46 (setting forth a portion of holding cup 82, highlighted in yellow in annotated Figure 19), with id. at 47 (setting forth “the docking connector [as] defin[ing] a rim,” where the Petition and Mr. Lewandowski identify the “docking connector defin[ing] a rim” as also including lock 81, in the annotated Figures in the cited portion of the Petition, pages 34-36, and Exhibit 1007, paragraph 199). IPR2021-01159 Patent 9,706,026 B2 22 connecting an electronic device . . . to a power supply.” Ex. 1004 codes (54), (57). Rohrbach discloses that “[t]he plug includes electrical contacts, . . . preferably biased toward corresponding contacts on the receptacle” where both “[t]he plug and receptacle each have a magnetic element.” Id. at code (57). 2. Analysis Petitioner contends that “[c]laims 8, 9, and 20 differ from claims 1 and 10” only in that “they require a magnetic coupler between the contacts on the cradle and protective cover.” Pet. 49. Petitioner relies on Rohrbach as disclosing such couplers and on the combination rendering the claims unpatentable as obvious. Id. at 49-54. Petitioner states “[c]laim 8 is identical to claim 1 except that the biasing contacts limitation is replaced with” wherein the female connector further comprises a magnetic coupling element resident in the connector, wherein the magnetic coupling element comprises one of a magnetic material or a magnetically attractive material. Pet. 50 (citing Ex. 1001, 32:14-32 (claim 1), 32:48-67 (claim 8); quoting id. at 32:63-67). Petitioner then relies on “Woud disclos[ing] the elements of claim 1” such that “the only issue is whether it would have been obvious to use a magnetic coupler in Woud.” Id. (citing id. at 31-36; Ex. 1007 ¶¶ 225-230). Petitioner relies on Rohrbach “teach[ing] the use of a magnetic coupling element used in connection with biasing contacts” and “use of male and female connector pairs that utilize magnetic coupling elements.” Pet. 50 (citing Ex. 1004, 1:65-67, 2:3-12, 5:61-63, 6:1-3, 6:13-16, 6:27-29, 6:57- 63, Figs. 8A, 8B). Petitioner contends that a person of ordinary skill in the art “would have found it obvious to modify Woud’s docking system to IPR2021-01159 Patent 9,706,026 B2 23 incorporate Rohrbach’s magnetic coupling elements.” Id. at 51 (citing Ex. 1007 ¶¶ 235-239). Petitioner also contends that “[m]odifying Woud to include a magnetic coupling would require nothing more than swapping one type of known connector with another to achieve predictable results” and that a person of ordinary skill in the art “would recognize Rohrbach’s magnets could be used in addition to, or in place of Woud’s lock 81.” Id. (citing Ex. 1007 ¶¶ 237-238). Because Petitioner relies on Woud in the same manner as for the similar limitations in claim 1, Petitioner likewise fails to sufficiently establish the “female connector disposed within the docking support surface.” This deficiency is not remedied by adding Rohrbach’s magnetic coupling elements, including to replace Woud’s lock 81. Petitioner’s further contention that “modify[ing] Woud . . . require[s] nothing more than swapping one type of known connector with another” falls short because Petitioner fails to address in sufficient detail what substitution is contemplated and how this substitution would meet the claim limitations. Id. at 50-52; Ex. 1007 ¶¶ 235-239. Petitioner’s challenge, thus, fails to sufficiently establish why a person having ordinary skill in the art would combine the references in the manner required to arrive at the claimed invention. See Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (emphasis added)); cf. Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1374 (Fed. Cir. 2008) (holding that “some kind of motivation must be shown from some source, so that the jury can understand why a person of ordinary skill [in the art] would have thought of either combining two or more references or modifying one to achieve the patented [invention].”). IPR2021-01159 Patent 9,706,026 B2 24 Petitioner’s reliance on Rohrbach in challenging claims 9 and 20 for biasing contacts and particular magnetic coupling elements, respectively fails to remedy the deficiencies as to independent claims 8 and 10, from which claims 9 and 20 respectively depend. F. Asserted Obviousness in View of Woud and SA Petitioner challenges claims 3, 5, 13, and 16 as unpatentable for obviousness in view of Woud and SA. Pet. 54-61. Petitioner relies on SA as disclosing particular asymmetric shapes of the rim (claims 3 and 13) (Pet. 55-58, 60) and multiple docking cradles in a common housing (claims 5 and 16) (id. at 58-60, 61). As to claims 3 and 13, Petitioner contends that a person of ordinary skill in the art “would have found it obvious to modify Woud’s asymmetric holding cup 82 to include a straight side and the curved side [as taught by SA].” Id. at 57; see id. at 60. As to claims 5 and 16, Petitioner contends that a person of ordinary skill in the art “would have found it obvious to modify Woud’s dock to include multiple receiving areas.” Id. at 59; see id. at 61. Petitioner’s reliance on SA fails to remedy the deficiencies as to independent claims 1 and 10, respectively, from which claims 3 and 5 and claims 13 and 16 depend. G. Asserted Obviousness in View of Wylie and the Knowledge of a Person of Ordinary Skill in the Art Petitioner challenges claims 10, 11, 14, 15, 17, and 18 as unpatentable for obviousness in view of Wylie and the knowledge of a person of ordinary skill in the art. Pet. 61-74. 1. Wylie (Ex. 1006) Wylie is titled “Docking Station for Tablet Device” and discloses a “docking station for a tablet device [that] includes a security frame that is IPR2021-01159 Patent 9,706,026 B2 25 releasably connected to a pedestal.” Ex. 1006, codes (54), (57). Wylie’s docking station 10 includes a security frame portion 12, which surrounds and captures a tablet device 16, and a pedestal portion 14, as depicted in Figure 1 reproduced below. Id. at Fig. 1 (depicting a docking station for a table device). Security frame 12 has an edge 22, and can carry a first electrical adaptor 24-inserted in an opening in edge 22 of frame 12-to provide electrical connection to the tablet, a stem portion 28, and structure 42 that includes a connector in a recess, as depicted in Figure 7, reproduced below. IPR2021-01159 Patent 9,706,026 B2 26 Ex. 1006, Fig. 7 (depicting a perspective view of the back-side of security frame 12), 2:62-3:30. Electrical adaptor 24 (a universal adaptor) provides electrical connection to tablet 16 (not shown) with conductors for adaptor 24 running through a stem portion 28 and there is a “connector fitting in a recess of 42.” Id. at 3:4-16, 3:28-30, Fig. 7. Pedestal portion 14 includes a head portion 36, a lower base portion 38, protrusions 44, 46, and a conventional catch 48, where “head portion 36 carries a second universal adaptor 40, as depicted in Figure 8, reproduced below. IPR2021-01159 Patent 9,706,026 B2 27 Ex. 1006, Fig. 8 (depicting a perspective view of pedestal portion 14), 3:28- 32. Wylie discloses that the second adaptor 40 carried on head portion 36 “connects into a similar connector fitting in a recess of 42 of the first adaptor 24” and that “[t]he first adaptor releasably rests on protrusions 44, 46 on head portion 36” and that “conventional catch 48 [] allows adaptor 24 (and therefore, frame 12) to be releasably connected to and from the pedestal portion 14 (via the head 36).” Ex. 1006, 3:28-34. 2. Analysis Petitioner relies on Wylie’s security frame 12, electrical adaptor 24, stem portion 28, and structure 42 meeting the recited “protective cover” of claim 10. Pet. 61-67 (citing Ex. 1006, 1:37-40, 2:48-56, 2:64-66, 3:6-16, Figs. 1, 3, 4, 6, 7, 9; Ex. 1007 ¶¶ 285-287, 290, 292-296). As to the “docking cradle . . . comprising a base receiver to receive the cover,” Petitioner relies on Wylie’s pedestal portion 14 as the docking IPR2021-01159 Patent 9,706,026 B2 28 cradle and head 36 as “act[ing] as a base receiver that receives the frame.” Pet. 67 (citing Ex. 1006, 2:48-56, Fig. 1; Ex. 1007 ¶¶ 297-299). As to the “docking connector disposed on the base receiver,” Petitioner relies on the second universal adaptor 40 located on head portion 36 of Wylie’s docking station. Pet. 67-68 (citing Ex. 1006, 3:24-30, Fig. 9; Ex. 1007 ¶ 302). As to the “docking connector defining a rim,” Petitioner relies both on Wylie’s second universal adaptor 40 having a “rim” and on “connectors utilizing exterior rims surrounding interior contacts [being] common in the industry.” Pet. 68-69. Id. at 68 (reproducing Wylie’s Figure 9 depicting head portion 36 with added coloring and crosshatching of second universal adaptor 40). Petitioner contends that “[t]he structure crosshatched [] is a rim” that “guides mating of the second adaptor with the contactor contacts positioned in the recess” of structure 42. Id. (citing Ex. 1006, Fig. 9). Petitioner contends IPR2021-01159 Patent 9,706,026 B2 29 that “[c]omparing Figure 5 of the ’026 patent with Figure 9 of Wylie highlights the identity between the docking connector in Wylie and the docking connector recited in claim 10,” reproducing the annotated figures, as shown below. Id. at 68-69 (reproducing Ex. 1001, Fig. 5, and Ex. 1006, Fig. 9, with annotations and highlighting identifying a “plurality of contacts” and “connector defining a rim”). Mr. Lewandowski testifies that “[t]he structures highlighted in yellow both encircle contacts and guide the contacts on the protective cover to a proper connection with the docking connector on the pedestal.” Ex. 1007 ¶ 305. Patent Owner argues that “there is no ‘rim’ defined by the adaptor 40” and that this is confirmed by Petitioner’s annotated figure. Prelim. Resp. 40-41. Examination of the relevant portion of Wylie’s Figure 9 highlights that Petitioner’s position that adaptor 40 defines a rim lacks support. IPR2021-01159 Patent 9,706,026 B2 30 This figure is a magnified portion of Figure 9 of Wylie (depicting connector 40 and surrounding structure). There is no apparent rim. The structure depicted in Figure 9 that Petitioner annotated with crosshatching is instead more consistent with a plurality of contacts. The fact that the structure is obscured by the crosshatching in Petitioner’s annotated Figure 9 does not alter that Petitioner and Mr. Lewandowski fail to explain how what is depicted is a rim. Mr. Lewandowski’s testimony that “[t]he structures highlighted in yellow both encircle contacts and guide the contacts on the protective cover to a proper connection with the docking connector on the pedestal” (Ex. 1007 ¶ 305) appears to equate the sides of connector 40 (including the top edge) with a rim. This is unavailing because the ’026 patent does not IPR2021-01159 Patent 9,706,026 B2 31 refer to such structure as a “rim,” but rather as a “locator dam 132,” as is depicted in Figure 25, reproduced below. Ex. 1001, 4:10-11, 17:8-10, Fig. 25 (depicting a protective shell formed with locator dam 132). In sum, Petitioner fails to sufficiently establish that Wylie’s second universal adaptor has a “rim” within the meaning of the ’026 patent. As to it having been obvious to utilize a connector with a rim, Petitioner relies on “such connectors utilizing exterior rims surrounding interior contacts [being] common in the industry,” that “[u]tilizing such a connector would have been an obvious selection from a limited number of connector types,” and that “use of such a connector . . . would have produced a predictable result of a mating connection.” Pet. 69 (citing Ex. 1007 ¶¶ 307-310; Ex. 1009, 18). Petitioner’s challenge, grounded on it being obvious to modify Wylie to include a connector that includes a rim, falls short. First, as highlighted by Patent Owner (Prelim. Resp. 41), there is insufficient reasoning set forth for why the skilled artisan would have been motivated to modify Wylie’s connector (Pet. 69; Ex. 1007, ¶¶ 307-310). While Mr. Lewandowski IPR2021-01159 Patent 9,706,026 B2 32 testifies that male/female connectors “are well known to create secure electrical connections that resist unintentional separation while at the same time providing a known way to align and connect multiple connectors” (Ex. 1007 ¶ 310), there is neither argument nor evidence that Wylie’s connector pair was deficient in any respect (see Pet.; Ex. 1007). In effect, thus, Petitioner has identified a modification that could be made, but fails to sufficiently show that a skilled artisan would have been motivated to make the modification as required to meet the claim. See Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Second, the thrust of Petitioner’s argument, that “[u]tilizing such a connector would have been an obvious selection from a limited number of connector types” (Pet. 69 (citing Ex. 1007 ¶ 309)), lacks sufficient support for the proposition that there are a limited number of connector types (see id.). The cited support is reproduced below. The use of a rimmed connector would have been an obvious selection of one of a limited number of connectors. The selection would be based on the type of electronic device and would have produced a predictable result of a secure mating connection between the second adaptor 40 and the security frame 12 recess 42. Ex. 1007 ¶ 309. What is lacking is a basis for a rimmed connector meeting the claim limitations being one of a limited number of connectors. See Pet.; Ex. 1007. Rather, there is testimony that “[t]he use of rims surrounding contacts is common in the industry” with corroborating evidence of that fact in the form of “a catalog” (Ex. 1009) that “includes different types of IPR2021-01159 Patent 9,706,026 B2 33 docking connectors that were commonly used in the industry” (Ex. 1007 ¶ 307). Petitioner and Mr. Lewandowski identify a connector from page 18 of the catalog, but this catalog is over twenty (20) pages and the testimony fails to set forth any basis for the catalog defining what connectors are available, or for a person of ordinary skill in the art recognizing that there are a limited number of connectors. Pet. 66; Ex. 1007 ¶¶ 307-310. Accordingly, Petitioner’s reliance on “there [being] a finite number of identified, predictable solutions” is not adequately supported. See KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”). Claims 11, 14, 15, 17, and 18 depend, directly or indirectly, from claim 10. Petitioner does not remedy the deficiency in claim 10 in setting forth the ground as applied to these dependent claims. See Pet. 70-74. Claim 11 requires that “one of the contactor and the docking connector comprises a female portion and a different one of the contactor and the docking connector comprises a male portion complementary to the female portion.” Ex. 1001, 33:26-30. Petitioner relies on “contactor recess 42 . . . project[ing] from the rear of the frame to form a male connecting structure” and the “docking connector rim” that it highlights with yellow crosshatching in its annotated Figure 9 as “constitut[ing] a recessed structure that comprises a female connecting structure that is complementary to and mates with first adaptor.” Pet. 70 (citing id. at 63-65, 67-69; Ex. 1006, 3:31-32, Figs. 6, 9; Ex. 1007 ¶¶ 312-314). Claim 15 requires that “the rim of the docking connector is recessed with respect to the docking support surface.” Ex. 1001, 34:9-11. Petitioner relies on “the rim of adaptor 40” it contends is IPR2021-01159 Patent 9,706,026 B2 34 shown in Wylie’s Figure 9. Pet. 72 (citing Ex. 1005 [sic, 1006], Fig. 9; Ex. 1007 ¶¶ 322-323). Claims 14, 17, and 18 recite further limitations unrelated to the issue of the rim. Ex. 1001, 34:4-8, 34:16-20. As discussed above, Petitioner fails to sufficiently establish that Wylie’s Figure 9 depicts universal adaptor 40 having a rim. Relying again on this structure in the same manner, Petitioner fails to remedy the shortcoming in the ground as applied to independent claim 10 from which claims 11, 14, 15, 17, and 18 depend. H. Asserted Obviousness in View of Wylie and Rohrbach Petitioner challenges claims 1, 4, 6-9, 19, and 20 as unpatentable for obviousness in view of Wylie and Rohrbach. Pet. 74-86. Petitioner contends that Wylie teaches or suggests all elements of these challenged claims “except for the use of biasing contacts and a magnetic coupling element.” Id. at 74. 1. Analysis a) Independent claim 1 Petitioner relies on Wylie’s “pedestal portion 14” as “a base receiver for a tablet in a security frame 12. Pet. 75 (citing Ex. 1006, 2:48-56). Petitioner relies on its contentions and reasoning as to claim 10, discussed above, for the “removable cover that includes a first universal adaptor 24 having a plurality of contacts.” Id. (citing id. at 61-70). Petitioner further contends that “first adaptor 24 includes a male connector (highlighted blue below) surrounding the recess 42 that is a mating structure defining a protrusion that supports and positions contacts to ensure a connection,” as shown in the annotated version of Wylie’s Figure 7, reproduced below with the ’026 patent’s Figure 8, similarly highlighted. IPR2021-01159 Patent 9,706,026 B2 35 Id. at 75-76 (reproducing Ex. 1001, Fig. 8, and Ex. 1006, Fig. 7, with highlighting and annotation identifying structure in each characterized as a “male connector” and a “plurality of contacts”; citing Ex. 1007 ¶¶ 338-341). As with claim 10, discussed above, Petitioner relies on Wylie’s head 36 of pedestal 14 as meeting the recited base receiver. Id. at 76-77 (citing Ex. 1006, 3:31-39, Fig. 9; Ex. 1007 ¶¶ 344-345). Petitioner relies on “[t]he front face [52] (highlighted red) [as] a back support surface and protrusions 44, 46 and structure giving rise to them as a docking support surface (highlighted yellow),” as depicted in annotated Figure 9, reproduced below. IPR2021-01159 Patent 9,706,026 B2 36 Id. at 77 (citing Ex. 1007 ¶ 345) (depicting head 36 with front face 52 highlighted red and protrusions 44, 46 highlighted yellow). As to the “female connector disposed within the docking support surface,” Petitioner relies on “Wylie disclos[ing] that the second adaptor 40 . . . is positioned below the protrusions 44, 46 within the docking support surface.” Pet. 77-78 (citing Ex. 1006, Figs. 2, 6, 7, 9; Ex. 1007 ¶¶ 347- 350). As to “the female connector defining a rim,” Petitioner relies on its contention as set forth for claim 10 that the second adaptor 40 “defines a rim that guides the male connector on the protective sleeve into the female connector,” reproducing Figure 5 of the ’026 patent and Figure 9 of Wylie with annotation. IPR2021-01159 Patent 9,706,026 B2 37 Pet. 78-79 (reproducing Ex. 1001, Fig. 5, and Ex. 1006, Fig. 9, with annotations highlighting identifying a “plurality of contacts” and “connector defining a rim”). Petitioner relies on Rohrbach for disclosing “biasing contacts” and contends that a person of ordinary skill in the art “would have been motivated to use [Rohrbach’s] biasing contacts” and “modify[] Wylie to include Rohrbach’s spring [biased] contacts.” Pet. 79-80 (citing Ex. 1004, 3:48-51, 6:1-3, 6:13-16, Figs. 8A, 8B; Ex. 1007 ¶ 359). Petitioner further contends that a person of ordinary skill in the art “would recognize that, if Wylie needed to be modified to incorporate a biasing contact, the modification would require nothing more than swapping one type of known connector with another and would produce predictable results.” Id. at 80-81 (citing Ex. 1007 ¶ 361; Ex parte Catan, Appeal No. 2007-0820, at 17-19 (PTAB July 3, 2007) (precedential)). Petitioner’s challenge falls short for multiple reasons. Petitioner relies on front face 52 (highlighted red) as the recited back support surface, protrusions 44, 46 (highlighted yellow) as the recited docking support surface (Pet. 77), and on “Wylie disclosing that the second adaptor 40 . . . is IPR2021-01159 Patent 9,706,026 B2 38 positioned below the protrusions 44, 46 within the docking support surface” (emphasis added) (id. at 77-78). Id. at 77 (reproducing Ex. 1006, Fig. 9, depicting head 36 with highlighting). As depicted, it is not apparent how a female connector is disposed within the docking support surface (highlighted yellow) where Petitioner relies on connector 40 to meet “the female connector defining a rim.” Neither Petitioner nor Mr. Lewandowski address this apparent inconsistency. See Pet.; Ex. 1007. Petitioner’s reliance on Wylie’s second adaptor 40 defining a rim falls short for the reasons discussed above in respect to claim 10, in that Petitioner both fails to sufficiently establish that Wylie’s Figure 9 depicts a rim and that such a connector would have been one of a finite number of predictable solutions. See supra. Petitioner’s reliance on Rohrbach does not remedy these deficiencies. While Petitioner relies on Ex parte Catan as supporting the obviousness of a modification that requires nothing more than swapping one type of known connector with another to produce a predictable result, Petitioner fails to IPR2021-01159 Patent 9,706,026 B2 39 sufficiently establish that such a simple modification is all that is required to meet the claim limitations. Pet. 80-81 (citing Ex parte Catan, at 17-19). And failing to do so, Petitioner has not set forth in sufficient detail what substitution is contemplated, what other corresponding changes are necessary, and how this substitution would meet the claim limitations. Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). b) Independent claim 8 Petitioner states “[c]laim 8 is identical to claim 1 except that the biasing contacts are replaced with the following limitation” Wherein the female connector further comprises a magnetic coupling element resident in the connector, wherein the magnetic coupling element comprises one of a magnetic material or a magnetically attractive material. Pet. 82 (citing Ex. 1001, 32:14-32 (claim 1), 32:48-67 (claim 8); quoting id. at 32:63-67). Petitioner then relies on “Wylie disclos[ing] all elements of claim 1” such that “the only issue is whether it would have been obvious to use a magnetic coupler with Wylie’s connectors.” Id. (citing id. at 75-81; Ex. 1007 ¶¶ 373-380). Petitioner relies on Rohrbach “teach[ing] the use of a magnetic coupling element used in connection with biasing contacts” and “use of male and female connector pairs that utilize magnetic coupling elements.” Pet. 82-83 (citing Ex. 1004, 1:65-67, 2:3-12, 5:61-63, 6:1-3, 6:13-16, 6:27-29, 6:57-63, Figs. 8A, 8B). Petitioner contends that a person of ordinary skill in the art “would have found it obvious to modify Wylie’s docking system to incorporate Rohrbach’s magnetic coupling elements.” Id. at 83 (citing Ex. 1007 ¶¶ 383-387). Petitioner also contends that IPR2021-01159 Patent 9,706,026 B2 40 “[m]odifying Wylie to include a magnetic coupling would require nothing more than swapping one type of known connector with another to achieve predictable results” (id. at 83-84 (citing Ex. 1007 ¶ 383)) and that a person of ordinary skill in the art “would recognize Rohrbach’s magnets could be used in addition to, or in place of Wylie’s latch 48” (id. at 84 (citing Ex. 1007 ¶ 384)). In relying on Wylie in the same manner as for claim 1, Petitioner likewise fails to sufficiently establish the “female connector disposed within the docking support surface” and that “the female connector defin[es] a rim.” Similarly, Petitioner’s reliance on Rohrbach’s teaching of male and female connector pairs that utilize magnetic coupling elements does not remedy the deficiencies discussed above because Petitioner again fails to address in sufficient detail what substitution is contemplated and how this substitution would meet the claim limitations. Pet. 82-84; Ex. 1007 ¶¶ 382- 387. Petitioner’s challenge, thus, fails to sufficiently establish why a person having ordinary skill in the art would combine the references in the manner required to arrive at the claimed invention. See Harmonic, 815 F.3d at 1363. c) Dependent claims 4, 6, 7, 9, 19, 20 Claims 4, 6, and 7 depend from independent claim 1, claim 9 depends from independent claim 8, and claims 19 and 20 depend from independent claim 10. Petitioner relies on “Wylie and Rohrbach teach[ing] or suggest[ing] the elements of claim 1” in its challenge to claim 4, 6, and 7 (Pet. 81-82), on “Wylie and Rohrbach together teach[ing] or suggest[ing] the elements of claim 8” in its challenge to claim 9 (id. at 85), and on “Wylie teach[ing] or IPR2021-01159 Patent 9,706,026 B2 41 suggest[ing] the elements of claim 10” in its challenge to claims 19 and 20 (id. at 85-86). Petitioner, thus, does not remedy the deficiencies as to the challenges to independent claims 1, 8, and 10 from which claims 4, 6, 7, 9, 19, and 20 variously depend. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has failed to meet its burden for instituting inter partes review. IV. ORDER It is: ORDERED that the petition is denied and no inter partes review is instituted. IPR2021-01159 Patent 9,706,026 B2 42 For PETITIONER: Marshall J. Schmitt Kyle G. Hepner MICHAEL BEST & FRIEDRICH, LLP mjschmitt@michaelbest.com kghepner@michaelbest.com For PATENT OWNER: David K. Tellekson Jonathan T. McMichael Jessica M. Kaempf FENWICK & WEST LLP dtellekson@fenwick.com jmcmichael@fenwick.com jkaempf@fenwick.com