Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 13
`Entered: November 18, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUEST USA CORP.,
`Petitioner
`
`v.
`
`POPSOCKETS LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01067
`Patent 9,958,107 B1
`____________
`
`
`
`Before CHRISTA P. ZADO, JESSICA C. KAISER, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`

`

`IPR2019-01067
`Patent 9,958,107 B1
`
`
`Quest USA Corp. (“Petitioner”) filed a Petition to institute an inter
`partes review of claims 1–16 of U.S. Patent No. 9,958,107 B1, issued on
`May 1, 2018 (Ex. 1001, “the ’107 patent”). Paper 2 (“Pet.”). PopSockets
`LLC (“Patent Owner”) filed a preliminary response. Paper 8 (“Prelim.
`Resp.”). Pursuant to our authorization (Paper 10), Petitioner filed a
`preliminary reply limited to addressing certain claim construction issues
`(Paper 11, “Prelim. Reply”), and Patent Owner filed a preliminary sur-reply
`limited to those same issues (Paper 12, “Prelim. Sur-Reply”). Applying the
`standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we deny Petitioner’s request and do not institute an
`inter partes review of any challenged claim.
`
`
`
`
`I. BACKGROUND
`A. The ʼ107 Patent (Ex. 1001)
`The ʼ107 patent relates generally to an expandable socket for
`attachment to a portable media player or portable media player case.
`Ex. 1001, at code (57). As one example, Figure 2 of the ’107 patent is
`reproduced below.
`
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`Figure 2 illustrates expandable socket 200, which includes button 204, base
`206, and cover 212. Id. at 4:35–49. In this embodiment, coil spring 218 is
`arranged to bias expandable socket 200 to its expanded configuration (i.e.,
`bias the button away from the base to the position shown in Figure 2). Id. at
`5:32–46. Expandable socket 200 can be moved to a collapsed configuration
`by overcoming the biasing force of coil spring 218 (e.g., by the user pushing
`the button toward the platform). Id. at 5:47–58.
`In this embodiment, in the collapsed configuration, first projection
`210 moves past second projections 208 into recess 216, and the first
`projection 210 is securely retained in recess 216. Id. at 5:59–6:2. “[T]he
`first projection 210, the second projections 208, and the recess 216 define or
`form the lock 214 that locks the expandable socket 200 in the collapsed
`configuration.” Id. at 6:2–5. The user can move expandable socket 200
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`from the collapsed to the expanded configuration by releasing lock 214, for
`example, by rotating button 204 so that first projection 210 is rotated out of
`engagement with second projections 208. Id. at 6:13–24.
`
`B. Challenged Claims
`Claims 1–16 are challenged. Claims 1, 9, and 16 are independent and
`are reproduced below:
`1. An expandable socket for attachment to a portable
`media player or a portable media player case, the expandable
`socket comprising:
`a platform adapted to engage a portion of the portable
`media player or the portable media player case;
`a button that is spaced from and movable relative to the
`platform;
`a biasing element disposed between the platform and the
`button, the biasing element arranged to bias the button away
`from the platform; and
`a lock configured to releasably secure the button to the
`platform, the lock comprising a first projection carried by the
`button and arranged to engage a second projection carried by
`the platform when the lock releasably secures the button to the
`platform,
`wherein the first projection extends outward from the
`button in a first direction and the second projection extends
`outward from the platform in a second direction opposite the
`first direction, and
`wherein the lock comprises a recess defined by the
`platform or the button, the recess configured to receive the first
`or second projection when the lock releasably secures the
`button to the platform.
`
`9. An expandable socket for attachment to a portable
`media player or a portable media player case, the expandable
`socket comprising:
`a platform adapted to engage a portion of the portable
`media player or the portable media player case;
`
`
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`IPR2019-01067
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`
`a button that is spaced from and movable relative to the
`platform;
`a skin arranged between the platform and the button,
`wherein the skin comprises at least two folding sections;
`a biasing element disposed between the platform and the
`button, the biasing element arranged to bias the button away
`from the platform; and
`a first projection carried by the button and arranged to
`selectively engage a second projection carried by the platform
`to releasably secure the button to the platform, wherein the first
`projection extends outward from the button in a first direction
`and the second projection extends outward from the platform in
`a second direction opposite the first direction.
`
`16. An expandable socket for attachment to a portable
`media player or a portable media player case, the expandable
`socket comprising:
`a platform adapted to engage a portion of the portable
`media player or the portable media player case;
`an elastomeric skin coupled to the platform and having at
`least two folding sections defining an outer wall and an inner
`wall spaced radially inward of the outer wall, the skin including
`a cavity defined by the inner wall and being deformable
`between a collapsed configuration and an expanded
`configuration;
`a button coupled to the skin opposite the platform, the
`button being disposed a first distance from the platform when
`the skin occupies the collapsed configuration and a second
`distance greater than the first distance from the platform when
`the skin occupies the expanded configuration;
`a spring arranged within the cavity of the skin between
`the platform and the button, such that the spring is surrounded
`by the inner wall of the skin, the spring biasing the button away
`from the platform to urge the skin into the expanded
`configuration; and
`a lock for selectively coupling the button to the platform
`such that the skin occupies the collapsed configuration when
`the button and platform are coupled, the lock comprising a first
`projection carried by the button and arranged to engage a
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`IPR2019-01067
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`second projection carried by the platform when the lock
`selectively couples the button to the platform.
`Id. at 8:2–25, 45–64, 9:18–10:22.
`
`C. Related Proceedings
`According to the parties, Patent Owner has asserted the ’107 patent
`against Petitioner in PopSockets LLC v. Quest USA Corp., et al., No. 1-17-
`cv-02584 (E.D.N.Y.). Pet. 2; Paper 3, 2.
`
`D. References
`Petitioner relies on the following references:
`1. “Barnett PCT” (International Application Publication WO
`2013/138500 A1; published Sept. 19, 2013) (Ex. 1008);
`2. “Karmatz Provisional” (US 61/375,096; published Feb. 23, 2012)
`(Ex. 1009);
`3. “the ’031 patent” (US 8,560,031 B2; issued Oct. 15, 2013) (Ex.
`1006);
`4. “Dai” (Chinese Utility Model Patent No. CN 201699919;
`published Jan. 5, 2011) (Ex. 1011);
`5. “Stager” (US 4,111,407; issued Sept. 5, 1978) (Ex. 1012);
`6. “Chen ’236” (Chinese Utility Model Patent No. CN 201491236;
`published May 26, 2010) (Ex. 1013);
`7. “Chen ’376” (Chinese Patent Publication No. CN 101742376;
`published June 16, 2010) (Ex. 1014); and
`8. “Lan” (US 2011/0216933 A1; published Sept. 8, 2011) (Ex.
`1015).
`
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`Patent 9,958,107 B1
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`
`E. Grounds Asserted
`Petitioner challenges the patentability of the ʼ107 patent claims on the
`
`following grounds (Pet. 6):
`Claims Challenged
`35 U.S.C. §
`1, 5, 7–12, 14, 15
`103
`
`Reference(s)
`Barnett PCT, Karmatz
`Provisional
`Barnett PCT, Karmatz
`103
`6, 13, 16
`Provisional, the ’031 patent
`Barnett PCT, Dai
`103
`1, 5, 7, 9–12, 15
`Barnett PCT, Dai, the ’031
`103
`6, 13, 16
`patent
`Barnett PCT, Dai, Stager
`103
`8, 14
`Chen ’236
`102(a)
`1–4
`Chen ’376
`102(a)
`1–4, 9, 10, 13, 15
`Chen ’376, Dai
`103
`5–7, 12, 16
`Chen ’376, Lan
`103
`11
`Chen ’376, Dai, Stager
`103
`8, 14
`Petitioner also relies on expert testimony from Dr. Glenn E. Vallee,
`Ph.D., P.E. (Ex. 1007).
`
`
`
`II. ANALYSIS
`A. Claim Construction1
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). The claim
`construction standard includes construing claims in accordance with the
`
`
`1 The parties agree that a person of ordinary skill in the art would have had
`either “(1) five years or more of experience in mechanical product design, or
`(2) a bachelor’s degree in Mechanical Engineering and one year or more of
`experience in mechanical product design.” Pet. 8; Prelim. Resp. 7. We
`apply this level for purposes of this Decision.
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`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`In its Petition, Petitioner “requests that the plain and ordinary meaning
`be applied to all terms for the purposes of inter partes review,” and that “the
`Board adopt the specific positions taken by Patent Owner” in district court
`with respect to the terms “button,” “extends outward from the
`[button/platform],” and “an inner wall spaced radially inward of the outer
`wall.” Pet. 23–25.2 Patent Owner agrees the terms of the ’107 patent should
`be given their ordinary and customary meaning, but disagrees with the
`express constructions proposed by Petitioner in certain respects. Prelim.
`Resp. 8, 10. Patent Owner further proposes constructions of the claim terms
`“lock” and “secure.” Id. at 11. Petitioner disagrees with those constructions
`either as stated or as applied. See Prelim. Reply.
`For purposes of this Decision, we determine we need only address the
`claim terms “lock” and “secure,” as discussed further below. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(holding that “only those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy”).
`Claim 1 recites “a lock configured to releasably secure the button to
`the platform”; claim 1 further recites “the lock comprising a first projection
`
`
`2 Petitioner also asks the Board to adopt a construction for the term
`“expandable socket,” which appears in the preambles of the challenged
`claims. Pet. 23. The parties, however, have agreed the preambles may be
`treated as non-limiting, and thus we do not need to construe that term. See
`Prelim. Resp. 8–9; Ex. 3001; Paper 10, 4.
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`carried by the button and arranged to engage a second projection carried by
`the platform when the lock releasably secures the button to the platform”
`and “the lock comprises a recess defined by the platform or the button, the
`recess configured to receive the first or second projection when the lock
`releasably secures the button to the platform.” Claim 9 does not recite a
`“lock,” but does recite “a first projection carried by the button and arranged
`to selectively engage a second projection carried by the platform to
`releasably secure the button to the platform.” Claim 16 does not recite
`“secure,” but does recite “a lock for selectively coupling the button to the
`platform such that the skin occupies the collapsed configuration when the
`button and platform are coupled, the lock comprising a first projection
`carried by the button and arranged to engage a second projection carried by
`the platform when the lock selectively couples the button to the platform.”
`Ex. 1001, 8:12–16, 22–25, 58–64, 10:16–22 (emphases added).
`1. lock
`Patent Owner contends the claim term “lock” should be construed as
`“a mechanism when engaged causes the button and the platform to maintain
`a fixed distance from each other.” Prelim. Resp. 11. In support, Patent
`Owner relies on the ’107 patent’s disclosure that in Figure 2, “the lock 214
`locks the accordion in the collapsed configuration by maintaining a fixed
`distance between the platform and the button when the first projection 210
`and second projection 208 are engaged.” Id. (citing Ex. 1001, 5:59–6:5).
`Petitioner disagrees with Patent Owner’s proposed construction of
`“lock,” and proposes that term be construed as “a mechanism in which a
`projection is secured in a recess.” Prelim. Reply 2. In support, Petitioner
`relies on the embodiments shown in Figures 2 and 3 of the ’107 patent, in
`
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`which it argues the locks are defined by a projection and a recess. Id. at 2–5.
`Petitioner further contends that the claims are consistent with its proposed
`construction, and that the prosecution history provides little guidance on this
`issue. Id. at 6–7. Petitioner also relies on dictionary definitions of lock. Id.
`at 7–8 (citing Exs. 1022, 1023).
`Patent Owner argues Petitioner’s proposed construction of “lock” is
`incorrect because it ignores that the function of the “lock” is “to fix the
`socket in a compressed position by securing the button to the platform.”
`Prelim. Sur-Reply 1–3 (citing Ex. 1001, 4:37–45, 6:2–24, 8:9–11). Patent
`Owner also notes that Petitioner’s proposed construction is not consistent
`with the structural elements of the claims; specifically, Petitioner’s proposed
`construction requires the lock to include a recess, but claim 16 (unlike claim
`1) does not recite a recess. Id. at 3–4. Patent Owner also contends that
`Petitioner’s proposed construction of “lock” would render claim 1’s
`recitation that the lock comprises a projection and a recess superfluous. Id.
`at 4. Patent Owner further argues that Petitioner’s reliance on Figure 3 of
`the ’107 patent is misplaced because that figure depicts an unclaimed
`embodiment and is consistent with Patent Owner’s proposed construction
`and not with Petitioner’s. Id. at 6–8.
`We have reviewed the parties’ proposed constructions and determine
`that neither is appropriate. We agree with Patent Owner that Petitioner has
`not shown the plain and ordinary meaning of a “lock” requires that it has a
`recess. Specifically, we note that claim 1 explicitly recites that the lock
`includes a recess whereas claim 16 does not. Thus, we decline to adopt a
`construction of “lock” that includes structural elements that are not
`consistent with the language of the claims. E.g., Arlington Indus., Inc. v.
`
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`Bridgeport Fittings, Inc., 632 F.3d 1246, 1255 n.2 (Fed. Cir. 2011) (“As
`always, the name of the game is the claim.”) (citation and internal quotation
`marks omitted).
`We also decline to adopt Patent Owner’s proposed construction. In
`particular, we determine that the recited “lock” need not cause the button
`and the platform to maintain a fixed distance from each other, as Patent
`Owner contends. For example, we see nothing in the current record that
`would require the lock to rigidly hold those components together such that
`the distance between them cannot change when the lock is engaged.
`We determine we need not adopt an explicit construction of “lock,”
`but instead we address that term in the context of the applicable limitations
`of the challenged claims in our analysis of Petitioner’s challenges discussed
`below.
`2. secure
`The parties agree in their claim construction proposals that “secure”
`should be construed as “to make fast or hold.” Prelim. Resp. 11 (citing Ex.
`1001, 5:59–6:5; Ex. 2007); Prelim. Reply 8, 10 (citing Exs. 1022, 1023).
`Petitioner, however, contends Patent Owner improperly applies a different,
`more narrow construction (i.e., “to hold fast”) of this term in its preliminary
`response when addressing the prior art of record. Prelim. Reply 8. We
`address the parties’ arguments as to this term in the context of the applicable
`limitations of the challenged claims in our analysis of the alleged grounds of
`unpatentability below.
`B. Asserted Obviousness Over Barnett PCT and Karmatz
`Provisional
`Petitioner contends that claims 1, 5, 7–12, 14, and 15 are unpatentable
`as obvious over Barnett PCT and Karmatz Provisional. Pet. 26–46. For the
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`reasons that follow, we are persuaded, based on this record, that Petitioner
`has not demonstrated a reasonable likelihood of prevailing on this challenge.
`1.
`Overview of Barnett PCT and Karmatz Provisional
`Barnett PCT relates to docking connectors for mobile electronic
`devices. Ex. 1008, 1:5. Figure 6B of Barnett PCT is reproduced below.
`
`
`Figure 6B shows an exploded, isometric view of extendable docking
`accessory assemblies 8. Id. at 12:29–38. In that figure, accordions 10 of
`docking accessories 8 are in their expanded state. Docking accessory bodies
`9 are shown as separated from accordions 10, and flex circuits 16 are
`disposed within accordions 10. Id. at 12:35–39.
`Figures 9B and 9C are reproduced below.
`
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`Figure 9B is an isometric top view of accordion 10, and Figure 9C is an
`exploded, isometric bottom view of accessory 8 and accordion 10. Id. at
`13:24–25. Flex circuit 16 disposed within accordion 10 provides an
`electrical connection between device 1 (shown in Figure 6B reproduced
`above) and accessory body 9 via connector 21. Id. at 13:24–30.
`Karmatz Provisional relates to an apparatus that allows the user to
`hold and use a handheld device in one hand securely. Ex. 1009, 4.3
`Karmatz Provisional depicts a “Button Method” with a top piece, a stem,
`and a base. Id. at 6. The stem can be a spring. Id.
`
`
`3 Petitioner did not add page numbers to Exhibit 1009. Our citations to this
`exhibit assume consecutive page numbering.
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`Analysis
`2.
`A claim is unpatentable under 35 U.S.C. § 103(a) 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. See 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;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in the record, objective
`evidence of nonobviousness.4 See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). In that regard, an obviousness analysis “need not seek out
`precise teachings directed to the specific subject matter of the challenged
`claim, for a court can take account of the inferences and creative steps that a
`person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
`Claim 1 recites “a lock configured to releasably secure the button to
`the platform”; claim 1 further recites “the lock comprising a first projection
`carried by the button and arranged to engage a second projection carried by
`the platform when the lock releasably secures the button to the platform”
`and “the lock comprises a recess defined by the platform or the button, the
`recess configured to receive the first or second projection when the lock
`releasably secures the button to the platform.” Ex. 1001, 8:12–25 (emphases
`added). Petitioner contends Barnett PCT teaches these limitations. Pet. 33–
`
`4 Neither party introduced objective evidence of non-obviousness or argued
`that the existence of secondary considerations affects this Decision’s
`obviousness analysis. See generally Pet., Prelim. Resp. Accordingly, our
`analysis is based upon the first three of the four Graham factors.
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`36. For the recited “lock,” Petitioner relies on Barnett PCT’s female
`connector 21 and flex circuit 16. Id. at 33. Petitioner contends female
`connector 21 teaches a first projection carried by docking accessory 9 (i.e.,
`the recited “button”) and flex circuit 16 teaches a second projection carried
`by male snap fit connector 15 (i.e., the recited “platform”). Id. (citing Ex.
`1007 ¶ 95). Petitioner provides an annotated version of Figure 9E
`reproduced below.
`
`
`Annotated Figure 9E is an isometric view of accessory connector 21 with
`port 25. Ex. 1008, 13:28–29; Pet. 36. Petitioner contends that port 25 (i.e., a
`recess) is configured to receive flex circuit 16 (i.e., the second projection)
`when the lock releasably secures docking accessory body 9 (i.e., the button)
`to male snap fit connector 15 (i.e., the platform). Pet. 36 (citing Ex. 1007
`¶ 98).
`
`Patent Owner contends that Barnett PCT does not teach the recited
`“lock.” Prelim. Resp. 18. Relying on its proposed construction that “lock”
`means “a mechanism when engaged causes the button and the platform to
`maintain a fixed distance from each other,” Patent Owner contends that, in
`Barnett PCT, “connector 21 and accordion flex circuit 16 remain connected
`throughout the range of distances between the platform and the button,” and
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`thus the button and platform do not maintain a fixed distance from each
`other. Id. at 17–18. Patent Owner further contends Barnett PCT does not
`teach a “lock configured to releasably secure the button to the platform.” Id.
`at 20. In particular, Patent Owner argues that Barnett PCT has no need for a
`lock or securing mechanism because Barnett PCT does not teach a biasing
`element arranged to bias the button away from platform. Id. at 20. Patent
`Owner also argues that flex circuit 16 and connector 21 are a means of
`providing an electrical connection between the components and when
`connected do not secure the button to the platform. See id. at 21–22.
`We agree with Patent Owner and determine Petitioner has not
`adequately shown that Barnett PCT teaches these limitations of claim 1.
`While we do not adopt either party’s proposed construction of “lock,” we
`note that the limitations of claim 1 when viewed in context of the ’107
`patent specification make clear that during normal operation of the claimed
`apparatus, the recited “lock” must be capable of restraining the movement of
`the button relative to the platform when the lock releasably secures the
`button to the platform. The ’107 patent describes two of its embodiments as
`including a lock. In the Figure 2 embodiment, reproduced above, lock 214
`is configured to releasably secure expandable socket 200 in a collapsed
`configuration. Ex. 1001, 4:35–46, 5:59–6:5. In the Figure 3 embodiment,
`the lock is configured to releasably secure expandable socket 300 in an
`expanded configuration. Id. at 6:25–34, 7:20–55 (Figure 3’s lock in this
`embodiment is a friction-based lock defined by detent 313 and a portion of
`the inner surface of concentric ring 322C.).
`Petitioner has not adequately shown that the structures it identifies as
`the recited “lock” in Barnett PCT, namely, flex circuit 16 and connector 21,
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`restrain the movement of docking accessory body 9 (i.e., the button) relative
`to male snap fit connector 15 (i.e., the platform) during normal operation of
`accessory 8. See Pet. 33–36; Ex. 1007 ¶¶ 95–98. Indeed, we agree with
`Patent Owner that the purpose of flex circuit 16 and connector 21 in Barnett
`PCT is to provide an electrical connection between the components. Prelim.
`Resp. 21; Ex. 1008, 13:24–30. For those components to provide an
`electrical connection during normal operation of accessory 8, flex circuit 16
`must be the same length or longer than accordion 10, and because that
`circuit is flexible (Ex. 1008, 5:34–36), it does not restrain the movement of
`docking accessory body 9 relative to male snap fit connector 15. Prelim.
`Resp. 18; see also Ex. 1008, Figs. 6B, 9B, 9D.
`Beyond Barnett PCT’s disclosed structure, we also agree with Patent
`Owner that there is no reason for flex circuit 16 and connector 21 in Barnett
`PCT to restrain the movement of docking accessory body 9 relative to male
`snap fit connector 15 because Barnett PCT does not teach a biasing element
`arranged to bias the button away from platform (Prelim. Resp. 20);
`Petitioner relies solely on Karmatz Provisional for the recited biasing
`element (Pet. 30–33). Petitioner proposes to combine conical spring in
`Karmatz Provisional with Barnett PCT’s device. Id. In doing so, however,
`Petitioner does not propose any modifications to Barnett PCT’s flex circuit
`16 and connector 21. Pet. 33–36. Thus, the combination as proposed by
`Petitioner does not alter our analysis of Barnett PCT’s flex circuit 16 and
`connector 21 for this limitation of claim 1.
`In sum, Petitioner has not persuasively explained, or provided
`sufficient evidence to show, that Barnett PCT teaches “a lock configured to
`releasably secure the button to the platform,” as recited in claim 1.
`
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`
`Claim 9 does not recite a “lock,” but does recite “a first projection
`carried by the button and arranged to selectively engage a second projection
`carried by the platform to releasably secure the button to the platform.”
`Petitioner relies on the same teachings in Barnett PCT for this limitation as
`for the limitations of claim 1 discussed above. Pet. 40–41. We find
`Petitioner’s showing inadequate for the same reasons.
`Claims 5, 7, 8, 10–12, 14, and 15 depend from independent claim 1 or
`9. Petitioner’s contentions regarding these dependent claims do not cure the
`deficiencies discussed above. See Pet. 36–38, 41–46.
`For the reasons discussed above, Petitioner has not demonstrated a
`reasonable likelihood of prevailing in showing that claims 1, 5, 7–12, 14,
`and 15 are unpatentable as obvious over Barnett PCT and Karmatz
`Provisional.
`C. Remaining Obviousness Challenges Based on Barnett PCT and
`Additional References
`1.
`Claim 16
`Petitioner contends that claim 16 is unpatentable as obvious over
`Barnett PCT, Karmatz Provisional, and the ’031 patent. Pet. 47–53. Claim
`16 recites an “elastomeric skin” “being deformable between a collapsed
`configuration and an expanded configuration.” Ex. 1001, 9:23–10:4. For
`this limitation, Petitioner points to Barnett PCT’s accordion 10. Pet. 47–50.
`Claim 16 further recites:
`a lock for selectively coupling the button to the platform such
`that the skin occupies the collapsed configuration when the
`button and platform are coupled, the lock comprising a first
`projection carried by the button and arranged to engage a
`second projection carried by the platform when the lock
`selectively couples the button to the platform.
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`Ex. 1001, 10:16–22. These limitations do not recite “secure” as discussed
`above for the similar limitations of claims 1 and 9. Nevertheless, the
`limitations of claim 16 reproduced above make clear that when the first and
`second projections of the lock are engaged, such that the button is selectively
`coupled to the platform by the lock, the skin occupies the collapsed
`configuration.
`Petitioner contends the claim language above “does not prohibit the
`skin from occupying other configurations when the button and platform are
`coupled.” Prelim. Reply 6. In other words, Petitioner appears to argue that
`the skin occupying all configurations (from fully collapsed to fully
`expanded) when the lock selectively couples the button to the platform
`satisfies these limitations of claim 16. See id. Patent Owner contends this
`interpretation is incorrect. Prelim. Sur-Reply 6. We agree with Patent
`Owner. As discussed above, the ’107 patent specification makes clear that
`the lock must be capable of restraining the movement of the button relative
`to the platform. Claim 16 further recites that when the lock does so, the skin
`occupies the collapsed configuration. In other words, we determine a person
`of ordinary skill in the art would have understood the “lock” limitations of
`claim 16 to require that when the lock selectively couples the button to the
`platform, the skin occupies the collapsed, and only the collapsed,
`configuration.
`Petitioner relies only on Barnett PCT as teaching the “lock”
`limitations of claim 16. Pet. 52–53 (citing Ex. 1007 ¶ 161–62; Ex. 1008,
`13:3–4, 26–30, Figs. 7, 9B, 9C). Specifically, Petitioner relies on the same
`structures as it did for the similar limitations of claims 1 and 9 (i.e., female
`connector 21 and flex circuit 16 of Barnett PCT). Id. Petitioner contends
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`“accordion 10 may occupy the collapsed configuration when the docking
`accessory body 9 is coupled to the male snap-fit connector 15.” Id. at 52
`(citing Ex. 1007 ¶¶ 161; Ex. 1008, Figs. 7) (emphasis added).
`As discussed above, Petitioner has not adequately shown that the
`structures it identifies as the recited “lock” in Barnett PCT, namely, flex
`circuit 16 and connector 21, restrain the movement of docking accessory
`body 9 (i.e., the button) relative to male snap fit connector 15 (i.e., the
`platform) during normal operation of accessory 8, much less as required for
`claim 16, to only the collapsed configuration. Petitioner does not appear to
`argue otherwise. Pet. 52–53; Ex. 1007 ¶¶ 161–62.
`For the reasons discussed above, Petitioner has not demonstrated a
`reasonable likelihood of prevailing in showing that claim 16 is unpatentable
`as obvious over Barnett PCT, Karmatz Provisional, and the ’031 patent.
`2.
`Remaining claims and grounds based on Barnett PCT
`Petitioner contends claims 6 and 13 are unpatentable as obvious over
`Barnett PCT, Karmatz Provisional, and the ’031 patent. Pet. 46–47. Claims
`6 and 13 depend from independent claim 1 or 9. Petitioner’s contentions
`regarding these dependent claims do not cure the deficiencies discussed
`above for claims 1 and 9. See id.
`Petitioner further contends claims 1, 5, 7, 9–12, and 15 are
`unpatentable as obvious over Barnett PCT and Dai (Pet. 53–57); claims 6,
`13, and 16 are unpatentable as obvious over Barnett PCT, Dai, and the ’031
`patent (id. at 57–58); and claims 8 and 14 are unpatentable as obvious over
`Barnett PCT, Dai, and Stager (id. at 58–59). For these challenges, Petitioner
`relies on Dai instead of Karmatz Provisional as teaching the recited biasing
`element, and relies on Stager as teaching the conical coil spring recited in
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`the additional limitation of dependent claims 8 and 14. See id. at 53–59.
`Petitioner’s contentions regarding these references do not cure the
`deficiencies for Barnett PCT’s teachings for the limitations of the
`independent claims discussed above.
`Accordingly, we determine Petitioner has not demonstrated a
`reasonable likelihood of prevailing in showing that any challenged is
`unpatentable as obvious over Barnett PCT in combination with additional
`references.
`D. Asserted Anticipation Based on Chen ’236
`Petitioner contends that claims 1–4 are unpatentable as anticipated by
`Chen ’236.5 Pet. 60–66. For the reasons that follow, we are persuaded,
`based on this record, that Petitioner has not demonstrated a reasonable
`likelihood of prevailing on this challenge.
`1. Overview of Chen ’236
`Chen ’236 relates to a loudspeaker box with an adjustable resonance
`chamber. Ex. 1013, code (54). Chen ’236 states that the volume and effect
`of a loudspeaker box can depend on the size of the resonance chamber, but
`“[a] user requires that a portable loudspeaker box not only has small size and
`is convenient to carry, but also shows better sound quality and sound effect.”
`Id. ¶ 2. Thus, Chen ’236 discloses a loudspeaker box with an