UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Samsung Electronics America, Inc.,
`
`Petitioner
`
`v.
`
`Snik LLC, Inc.,
`
`Patent Owner
`
`Case IPR2020-01325
`
`U.S. Patent No. 9,167,329
`
`Petition for Inter Partes Review of
`
`U.S. Patent No. 9,167,329
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Table of Contents
`
`I.
`II.
`III.
`
`INTRODUCTION ........................................................................................... 1
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) ................................ 1
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED .............................................................................................. 1
`A.
`Claims for Which Review is Requested ................................................ 1
`B.
`Statutory Grounds of Challenge ............................................................ 1
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 3
`V.
`OVERVIEW OF THE ’329 PATENT AND THE PRIOR ART .................... 3
`A.
`The ’329 Patent ..................................................................................... 3
`B.
`Kari ........................................................................................................ 5
`C.
`Janik ....................................................................................................... 6
`D.
`Jobling ................................................................................................... 6
`VI. CLAIM CONSTRUCTION ............................................................................ 7
`VII. DETAILED EXPLANATION OF GROUND ................................................ 9
`A.
`Ground 1: Kari, Janik, and Jobling Render Claims 37-42 Obvious .... 9
`1.
`Claim 37 ...................................................................................... 9
`2.
`Claim 38 ....................................................................................24
`3.
`Claim 39 ....................................................................................27
`4.
`Claim 40 ....................................................................................28
`5.
`Claim 41 ....................................................................................29
`6.
`Claim 42 ....................................................................................30
`
`i
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`VIII. THE DISCRETIONARY FACTORS FAVOR INSTITUTING TRIAL .....30
`A.
`35 U.S.C. §314(a) ................................................................................30
`B.
`35 U.S.C. § 325(d)...............................................................................35
`IX. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 .................................36
`A.
`Real Parties-in-Interest ........................................................................36
`B.
`Related Matters ....................................................................................36
`C.
`Lead and Backup Counsel ...................................................................37
`D.
`Service Information .............................................................................37
`
`ii
`
`

`

`Ex-1001
`
`Ex-1002
`
`Ex-1003
`
`Ex-1004
`
`Ex-1005
`
`Ex-1006
`
`Ex-1007
`
`Ex-1008
`
`Ex-1009
`
`Ex-1010
`
`Ex-1011
`
`Ex-1012
`
`Ex-1013
`
`Ex-1014
`
`Ex-1015
`
`Ex-1016
`
`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 9,167,329
`
`[Reserved]
`
`Curriculum Vitae of Vijay Madisetti, Ph.D.
`
`Prosecution History of U.S. Patent No. 9,167,329
`
`[Reserved]
`
`[Reserved]
`
`International Patent Application Publication No.
`WO 2011/121169 A1 to Kari
`
`U.S. Patent Application Publication No. 2007/0093279 A1 to
`Janik
`
`U.S. Patent Application Publication No. 2008/0130910 A1 to
`Jobling et al.
`
`Declaration of Vijay Madisetti, Ph.D.
`
`[Reserved]
`
`[Reserved]
`
`[Reserved]
`
`[Reserved]
`
`[Reserved]
`
`[Reserved]
`
`iii
`
`

`

`Ex-1017
`
`Ex-1018
`
`Ex-1019
`
`Ex-1020
`
`Ex-1021
`
`Ex-1022
`
`Ex-1023
`
`Ex-1024
`
`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-
`cv-00458 (E.D.T.X.), Snik LLC’s P.R. 4-1 Disclosures (June
`30, 2020)
`
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-
`cv-00458 (E.D.T.X.), Samsung’s P.R. 4-1 Disclosures (June
`30, 2020)
`
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-
`cv-00458 (E.D.T.X.), Docket Control Order (Apr. 8, 2020)
`(Dkt. 22)
`
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-
`cv-00458 (E.D.T.X.), Order Granting Joint Motion for Entry
`of Agreed [Proposed] Order Focusing Patent Claims and Prior
`Art to Reduce Costs (Apr. 14, 2020) (Dkt. 32)
`
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-
`cv-00458 (E.D.T.X.), Samsung’s P.R. 3-3 Disclosures (May
`18, 2020) (excluding exhibits attached thereto)
`
`Letter from Jin-Suk Park to Kyle Harris, dated July 20, 2020
`
`Jennifer Elias, U.S. Reports More Than 70,000 New
`Coronavirus Infections for Second Day in a Row, CNBC (Jul.
`18, 2020), https://www.cnbc.com/2020/07/18/us-reports-
`more-than-70000-new-coronavirus-infections-for-second-day-
`in-a-row.html
`
`Texas Sets State Record With More Than 10,000 New
`Coronavirus Cases Reported Thursday, NPR (Jul. 7, 2020),
`https://www.npr.org/sections/coronavirus-live-
`updates/2020/07/07/888755062/texas-sets-state-record-with-
`more-than-10-000-new-coronavirus-cases-reported-tue
`
`iv
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Ex-1025
`
`Reese Oxner et al., Texas is Heading Down a Dangerous
`Path, Local Leaders Warn as Coronavirus Cases and
`Hospitalizations Surge, THE TEXAS TRIBUNE (Jun. 22, 2020),
`https://www.texastribune.org/2020/06/22/texas-coronavirus-
`cases-hospitalizations-austin-houston-dallas/
`
`v
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`INTRODUCTION
`I.
`Petitioner Samsung Electronics America, Inc. (“Samsung” or “Petitioner”)
`
`requests inter partes review of claims 37-42 of U.S. Patent No. 9,167,329 (“the ’329
`
`patent”).
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`II.
`Samsung certifies that the ’329 patent is available for inter partes review, and
`
`that Samsung is not barred or estopped from requesting inter partes review to
`
`challenge the claims on the grounds herein. Samsung filed this Petition within one
`
`year of service of Patent Owner’s (“PO”) first complaint against Samsung in district
`
`court. See Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-cv-00458
`
`(E.D. Tex.) (Samsung Electronics America, Inc. served 10/10/2019).
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED
`A.
`Claims for Which Review is Requested
`Samsung respectfully requests review of claims 37-42 (“challenged claims”)
`
`of the ’329 patent, and cancellation of these claims under 35 U.S.C. § 311 as
`
`unpatentable.
`
`Statutory Grounds of Challenge
`B.
`The challenged claims should be cancelled as unpatentable on the following
`
`grounds:
`
`1
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Ground 1: Claims 37-42 are unpatentable under pre-AIA 35 U.S.C. § 103(a)
`
`as being obvious over International Patent Application Publication No. WO
`
`2011/121169 A1 to Kari which published in English (“Kari”) (Ex-1007) in view of
`
`U.S. Patent Application Publication No. 2007/0093279 A1 to Janik (“Janik”) (Ex-
`
`1008) and U.S. Patent Application Publication No. 2008/0130910 A1 to Jobling et
`
`al. (“Jobling”) (Ex-1009).
`
`The ’329 patent issued from U.S. Application No. 13/734,871 filed January
`
`4, 2013, which in turn claims priority to U.S. Provisional Application No.
`
`61/601,722 filed on February 22, 2012, U.S. Provisional Application No. 61/671,572
`
`filed on July 13, 2012, and U.S. Provisional Application No. 61/712,136 filed on
`
`October 10, 2012.1 Ex-1001, Cover.
`
`Janik published on April 26, 2007. Jobling published on June 5, 2008. Thus,
`
`Janik and Jobling qualify as prior art at least under pre-AIA 35 U.S.C. § 102(b) with
`
`respect to the ’329 patent. Kari published on October 6, 2011. Thus, Kari is prior
`
`art at least under pre-AIA 35 U.S.C. § 102(a).
`
`Kari and Janik were never considered by the Patent Office during prosecution
`
`of the ’329 patent. See generally Ex-1001, References Cited. While Jobling was
`
`1 Samsung reserves the right to challenge any priority claim(s) made in the ’329
`
`patent.
`
`2
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`considered by the Patent Office during prosecution, Samsung presents this reference
`
`in a new light never considered by the Office. See infra Sections VII.A.1.c to
`
`VII.A.6.a.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`IV.
`A person of ordinary skill in the art at the time of the alleged invention of the
`
`’329 patent (“POSITA”), which for purposes of this proceeding is early-2010
`
`through the beginning of 2013 (including January 4, 2013, the filing date of the U.S.
`
`Application maturing into the ’329 patent), would have had a bachelor’s degree in
`
`electrical engineering, computer science, or a similar field and one year of
`
`experience in consumer electronics product or control system design. The POSITA
`
`could have also obtained similar knowledge and experience through other means.
`
`Ex-1010, ¶23.
`
`V.
`
`OVERVIEW OF THE ’329 PATENT AND THE PRIOR ART
`A.
`The ’329 Patent
`The ’329 patent is generally directed to “a magnetic earphone holder used to
`
`hold a set of earphones.” Ex-1001, Abstract, 1:26-28. Below is a representative
`
`embodiment:
`
`3
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`’329 patent, Ex-1001, Fig. 3A, B (annotated).
`
`The ’329 patent discloses that the “earphones” and/or “holder” may comprise
`
`“magnets” and/or “magnetically attractable surfaces[,]” which “enable[] the user to
`
`place the earphones in a convenient location when using the earphones and also
`
`when not in use.” Id., 14:23-25; see also id., claim 55 (“one or more earphones
`
`magnets or magnetically attractable surfaces removably couple with the one or more
`
`holder magnets or magnetically attractable surfaces”).
`
`In addition to storing earphones when not in use, the ’329 patent explains that
`
`“[t]he magnetic earphones and cord holding system 1100 is able to send a signal to
`
`activate and/or deactivate an electronic device 1105 such as a cell phone. For
`
`example, if the user's phone rings, the user is able to remove the set of earphones
`
`4
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`1150 from the earphones holder body 1101 and a signal is sent to answer the phone
`
`and connect the call. Likewise, if the user is on a call and the set of earphones 1150
`
`are coupled with the earphones holder body 1101, a signal is sent to hang up the
`
`phone and terminate the call.” Id., 16:12-20; see also id., 16:20-23 (“Similarly, the
`
`magnetic earphones and cord holding system 1100 is able to send a signal to start,
`
`resume, or stop an electronic device such as an electronic media player or gaming
`
`device.”). The ’329 patent explains that “[i]n this manner, the user is able to use the
`
`magnetic earphones and cord holding system 1100 to operate, activate and/or
`
`deactivate any programs or applications that are running on the electronic device
`
`1105.” Id., 16:30-34.
`
`Kari
`B.
`Kari discloses a headset 100, a mobile device 109 with which the headset
`
`communicates wirelessly, and a holder 108, 110 to which the headset can be coupled
`
`or uncoupled. Ex-1007. The “wireless headset [is] configured to detect removal of
`
`the wireless headset from a holder” and to trigger a function based on that detection.
`
`Id., Abstract. Examples of functions that may be triggered by uncoupling the
`
`wireless headset from the holder include accepting a call which results “in the
`
`wireless headset 100 being in an active call state, in which audio signals from a
`
`remote user are relayed to loudspeaker element 101” of the headset (id., [0029]), or
`
`streaming music from a media player (id., [0031]). The wireless communication
`
`5
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`between the headset and the mobile device may be a Bluetooth connection. Id.,
`
`[0029].
`
`Janik
`C.
`Janik is directed to wireless headset system and associated dock assembly,
`
`and discloses that the headset may be attached to the dock using magnets. Ex-1008,
`
`Abstract, [0058]. For example, Janik discloses a “dock assembly further comprises
`
`a first magnet and the headset further comprises a second magnet, and wherein the
`
`first and second magnets are disposed to draw the dock assembly and the headset
`
`together such that the first docking connector connects with the second docking
`
`connector.” Id., claim 11. In one embodiment, Janik discloses the headset 206 and
`
`the dock module 210 having neodymium magnets. See id., [0042], [0048], Figs. 3,
`
`7, 8 & 11.
`
`Jobling
`D.
`Jobling discloses a wireless headset having two earbuds for communication
`
`with an electronic device. Ex-1009, Abstract, Fig. 14. Jobling discloses “touch-
`
`sensitive surfaces that are configured to detect certain gestural motions.” Id., [0022];
`
`see also id., Fig. 11. Jobling explains that “the user interface 224 can be configured
`
`to detect linear movement along the surface in a first direction 234” and “in a second
`
`direction 334.” Id., [0032]. Jobling further explains that “[p]ressure points 435 and
`
`436 are depicted with dashed circle lines to indicate that pressure as user input may
`
`6
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`be received in any point on the touch-sensitive surface[.]” Id.; see also id., Figs. 4-
`
`6.
`
`CLAIM CONSTRUCTION
`VI.
`For IPR proceedings, the Board applies the claim construction standard set
`
`forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 83
`
`Fed. Reg. 51,340-51,359 (Oct. 11, 2018). Under Phillips, claim terms are typically
`
`given their ordinary and customary meanings, as would have been understood by a
`
`POSITA, at the time of the invention, having taken into consideration the language
`
`of the claims, the specification, and the prosecution history of record. Phillips, 415
`
`F.3d at 1313; see also id., 1312-16.
`
`In the related district court litigation, Petitioner has proposed to construe four
`
`terms (Ex-1018), whereas PO has taken the position that it “does not believe any
`
`claim terms require construction beyond their plain and ordinary meaning” (Ex-
`
`1017). Although the deadline in the litigation to exchange proposed constructions
`
`has not yet passed, Petitioner anticipates proposing the following construction,
`
`which stem from disputes over whether the asserted claims cover the accused
`
`7
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`products.2 The parties have yet to meet and confer in the litigation on claim
`
`construction issues, and claim construction briefing is not scheduled to begin until
`
`August 26, 2020. Ex-1019.
`
`Claim Term
`
`“activation signal”
`
`Petitioner’s Anticipated Proposed Constructions in
`the Related Litigation
`“signal that starts an operation on an electronic device”
`
`“deactivation signal”
`
`“signal that stops an operation on an electronic device”
`
`“decoupled”
`
`“couple(d)”3
`
`“physically separated”
`
`“physically connect(ed)”
`
`The Board, however, only construes the claims when necessary to resolve the
`
`underlying controversy in the inter partes review. Toyota Motor Corp. v. Cellport
`
`Systems, Inc., IPR2015-00633, Paper No. 11 at 16 (Aug. 14, 2015) (citing Vivid
`
`2 Petitioner reserves all rights to raise additional claim construction and other
`
`arguments in district court as relevant and necessary to those proceedings. For
`
`example, Petitioner has not raised all challenges to the ’329 patent in this petition,
`
`including invalidity under 35 U.S.C. § 112.
`
`3 In the litigation, Petitioner’s proposed construction is only with respect to instances
`
`where “couple(d)” involves magnets.
`
`8
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here,
`
`given the close correlation and substantial identity between the prior art references
`
`and the challenged claims, Petitioner believes that no express constructions of the
`
`claims are necessary to assess whether the prior art reads on the challenged claims.
`
`Even if the Board were to conclude that Petitioner’s proposed constructions in
`
`litigation should be adopted for purposes of this proceeding, however, the following
`
`discussion makes it manifestly clear that the challenged claims are unpatentable
`
`under those constructions. See infra passim; Ex-1010, passim.
`
`VII.
`
`DETAILED EXPLANATION OF GROUND
`A.
`Ground 1: Kari, Janik, and Jobling Render Claims 37-42
`Obvious
`1.
`Claim 37
`a.
`“A system for holding a set of earphones
`comprising:”
`To the extent the preamble is limiting, Kari discloses this feature. Ex-1010,
`
`¶43. For example, Kari discloses “a wireless headset configured to detect removal
`
`of the wireless headset from a holder.” Ex-1007, [0005]; see also id., [0037]
`
`(“Another technical effect of one or more of the example embodiments disclosed
`
`herein is that a carrying solution is provided for wireless headsets.”); Section
`
`VII.A.1.c infra.
`
`9
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`“a. a holder body;”
`b.
`Kari discloses this feature. Ex-1010, ¶¶44-45. For example, Kari discloses
`
`“a wireless headset 100” and corresponding “holder 108[,]” which provides “a
`
`carrying solution … for wireless headsets” (see Ex-1007, [0025]-[0026], [0037]), as
`
`well as a “holder 110” configured to be installed in a vehicle” (see id., [0027]).
`
`Kari, Ex-1007, Figs 3a, 3b, 4 (annotated).
`
`Kari also expressly teaches that “other types of holders 108, not shown in the
`
`drawings are possible. These may include desktop cradles, charging stations, and/or
`
`the like configured to provide a storage or holding solution, mechanical protection,
`
`battery charging, additional functions, and/or otherwise improve usability and/or
`
`value of the device.” Id., [0028].
`
`10
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`c.
`
`“b. one or more magnetically attractable
`surfaces attached to the holder body for
`removably coupling with a magnetic surface of a
`set of earphones;”
`Kari in combination with Janik discloses or suggests this feature. Ex-1010,
`
`¶¶46-61.
`
`Kari discloses that wireless headset 100 with a loudspeaker element 101. Ex-
`
`1007, [0021]. In one embodiment, “the loudspeaker element 101 is housed in a
`
`protruding part [of the headset 100] shaped to be received in the ear of the user.” Id.
`
`A POSITA would have understood the headset 100 with loudspeaker element 101
`
`of Kari to be a set of earphones because it is designed to fit in the ear, and provide
`
`audio, just as the earphone of the ’329 patent. Ex-1010, ¶47.
`
`Kari further discloses the headset with loudspeaker element (“set of
`
`earphones”) may be “coupled” and “uncoupled” from a holder (“holder body”). See,
`
`e.g., Ex-1007, [0011]-[0012], [0022], [0025]-[0026], Figs. 3a & 3b; see also Ex-
`
`1010, ¶48. Although Kari expressly acknowledges that many different types of
`
`holders are possible (id., [0028]), it does not expressly disclose coupling/uncoupling
`
`the headset from the holder using a magnetic surface of the earphones and a
`
`magnetically attractable surface attached to the holder body. It would have been
`
`obvious to modify the disclosure of Kari to incorporate such a technique based on
`
`11
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`the disclosure of Janik and the knowledge of a POSITA at the time of the alleged
`
`invention. Ex-1010, ¶49.
`
`For example, Janik discloses that a headset (“earphones”) may be attached to
`
`a charging dock (“holder body”) using magnets. Ex-1008, [0058]. In one
`
`embodiment, Janik discloses a headset 206 having neodymium magnets 24 and 26
`
`(see id., [0042], Figs. 3, 7), and a charging dock 204 having a dock module 210 with
`
`neodymium magnets 70a and 70b (see id., [0048], Figs. 8, 11). Janik discloses that
`
`“[t]he act of placing headset 206 on car charging dock 204 involves minimum effort
`
`by the user because the magnetic attachment means acts to pull headset 206 into the
`
`correct position and orientation when headset 206 comes in close proximity to
`
`docket module 210.” Id., [0058]; see also id., claim 11 (“the dock assembly further
`
`comprises a first magnet and the headset further comprises a second magnet, and
`
`wherein the first and second magnets are disposed to draw the dock assembly and
`
`the headset together such that the first docking connector connects with the second
`
`docking connector”); id., [0066] (describing a desktop embodiment of the charging
`
`dock to which the headset can be connected); id., Fig. 15:
`
`12
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Janik, Ex-1008, Fig. 15 (annotated).
`
`A POSITA would have also understood that a magnet is a magnetically
`
`attractable surface because it can be attached to an opposite polarity magnet. Ex-
`
`1010, ¶51. This general understanding of a POSITA is confirmed by the ’329 patent.
`
`Ex-1001, claims 12 & 19 (“wherein the one or more magnetically attractable
`
`surfaces comprise one or more magnets”); id., 17:53-54 (“In some embodiments, the
`
`one or more magnetically attractable surfaces 1510 are magnets.”); see also Ex-
`
`1010, ¶51.
`
`A POSITA would have understood Janik to also necessarily disclose that the
`
`headset 206 can be physically detached from the dock module 210, for example to
`
`be placed on the ear for use. Ex-1010, ¶52; see, e.g., Ex-1008, [0014] (“What is
`
`needed is a wireless headset system … that allows operation during charging and
`
`easy removal for answering calls.”); id., [0058] (“When the user is not actively on a
`
`13
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`mobile phone call, headset 206 may be removed from the user’s ear and placed on
`
`car charging dock 204.”). Accordingly, a POSITA would have understood Janik to
`
`disclose that the headset can be physically attached to and physically detached from
`
`(“removably coupled”) the mobile dock using magnets. Ex-1010, ¶53.
`
`A POSITA would have been motivated to attach and detach the headset 100
`
`of Kari to the holder using magnets, similar to the manner disclosed by Janik for
`
`several reasons. Ex-1010, ¶54. For example, a POSITA would have been motivated
`
`to use known techniques for attaching/detaching a headset to a holder, and thus
`
`would have had reason to look to implement such known techniques in the system
`
`disclosed in Kari. Id. Given Kari discloses attaching/detaching the headset to
`
`charging stations, desktop cradles or the like, but does not disclose the technique for
`
`implementing such attaching/detaching, a POSITA would have been motivated to
`
`look at techniques for accomplishing this functionality and realized that one known
`
`technique for doings so was to use magnets, like that disclosed in Janik. Id.
`
`A POSITA would have realized that modifying Kari to use magnets to attach-
`
`detach the headset 100 to a holder would have been nothing more than an application
`
`of a known technique (coupling/decoupling a headset to a holder as disclosed in
`
`Janik) to a known device (the headset and holder of Kari) ready for improvement to
`
`yield predictable results (coupling/decoupling the headset and holder of Kari using
`
`magnets). Id.
`
`14
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Thus, it would have been obvious to a POSITA to modify the disclosure of
`
`Kari in view of Janik to implement a system in which the holder includes one or
`
`more magnets (“one or more magnetically attractable surfaces attached to the holder
`
`body”) for attaching or detaching (“for removably coupling”) to a headset that
`
`includes one or more magnets (“with a magnetic surface of a set of earphones”). Ex-
`
`1010, ¶55.
`
`A POSITA would have further been motivated to implement the Kari-Janik
`
`system because it would have been easier to use than other known techniques for
`
`attaching a headset to a holder body (e.g., friction fit). Ex-1010, ¶56. A POSITA
`
`would have been motivated to implement the Kari-Janik magnetic coupling
`
`technique because, as disclosed by Janik, it “involves minimal effort by the user
`
`because the magnetic attachment means acts to pull headset 206 into the correct
`
`position and orientation when headset 206 comes in close proximity 210.” Ex-1008,
`
`[0058]; Ex-1010, ¶56.
`
`To the extent PO may try to argue the Kari-Janik system does not disclose a
`
`“set of earphones,” that argument would be misplaced. As an initial matter, a set
`
`can have one element. Ex-1010, ¶57. Accordingly, the headset of Kari—which
`
`clearly has one loudspeaker element 101 (“earphone”)—meets the plain language of
`
`the claim. Id.
`
`15
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`To the extent PO argues or the Board determines that a “set of earphones”
`
`requires at least two earphones, it would have been obvious to a POSITA to modify
`
`the headset of the Kari-Janik system to have two earphones. Ex-1010, ¶58. Kari
`
`itself suggests such a modification given that it discloses that the headset 100 may
`
`be “stereophonic” and may be used for “listening to music.” Ex-1007, [0002]-
`
`[0003], [0021]. A POSITA would have recognized that stereophonic (i.e., stereo)
`
`sound, which is commonly used to listen to music, is produced by outputting sound
`
`from two speakers (“earphones”). Ex-1010, ¶58. Having recognized the advantage
`
`of a wireless headset with two earphones—e.g., to listen to music in stereo sound—
`
`a POSITA would have been motivated to implement a wireless headset with two
`
`earphones. Ex-1010, ¶59. Doing so would have been within a POSITA’s skill and
`
`s/he would have had a reasonable expectation of success as such dual-earphone
`
`wireless headsets were commonly known in the art at the time of the alleged
`
`invention. Id. For example, Jobling discloses a wireless headset for communication
`
`with an electronic device having two earphones (orange), as shown in annotated Fig.
`
`14 below:
`
`16
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Jobling, Ex-1009, Fig. 14 (annotated).
`
`Implementing a dual-earphone wireless headset as exemplified by Jobling into the
`
`Kari-Janik system would have amounted to no more than an application of a known
`
`technique (a dual-earphone wireless headset) to a known device (the single earphone
`
`wireless headset of Kari-Janik) ready for improvement to yield predictable results
`
`(to achieve stereo sound to, for example, listen to music). Ex-1010, ¶61. Moreover,
`
`a POSITA would have understood that modifying the Kari-Janik system in this
`
`manner would be compatible with the holder/dock of the Kari-Janik system because
`
`the holder/dock of the Kari-Janik system is designed for use with a single-body
`
`wireless headset and a POSITA would have known how to modify the Kari-Janik
`
`system to incorporate two earphones into a single-body wireless headset (e.g., as
`
`exemplified by Jobling). Id.
`
`17
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`“c. a touch sensor;”
`d.
`Kari in combination with Janik and Jobling discloses or suggests this feature.
`
`Ex-1010, ¶¶62-65.
`
`Kari discloses that “[w]ireless headset units may [] comprise input devices for
`
`controlling various features, such as one or more buttons for switching the unit on
`
`or off, and receiving or ending a call.” Ex-1007, [0003], [0021]. A POSITA would
`
`have understood, however, that other “input devices” existed as early as June 2008.
`
`Ex-1010, ¶62.
`
`Jobling discloses one such alternative input device suitable for use with a
`
`wireless headset such as the headset of the Kari-Janik-Jobling system. For example,
`
`Jobling discloses “touch-sensitive surfaces that are configured to detect certain
`
`gestural motions” (“touch sensor”). Ex-1009, [0022]; see also id., Fig. 11
`
`(annotated):
`
`18
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Jobling, Ex-1009, Fig. 11 (annotated).
`
`Having reviewed Jobling, a POSITA would have been motivated to replace
`
`at least one of the one or more buttons in the Kari-Janik headset with the touch-
`
`sensitive surface disclosed in Jobling because, at a minimum, Jobling itself suggests
`
`the advantages of such a modification. Ex-1010, ¶64. For example, Jobling
`
`discloses that “[d]ue to their limited size and surface area, there are only a few
`
`locations on [a] headset that make placement of controls optimal and ergonomic.”
`
`Ex-1009, [0003]. Jobling further discloses that “[m]anufacturers often include more
`
`than one button on each side of the headset” and “[t]o add control functionality to
`
`the user interface of a headset without increasing the number of buttons,
`
`manufactures are multiplexing many functions onto one button.” Id., [0004].
`
`However, under that approach, “a user must remember and accurately press a button
`
`19
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`for various lengths of time to achieve various tasks” and “[p]oor user experience
`
`with many errors and failed tasks may result from multiplexing several functions
`
`onto one button.” Id., [0004]. According to Jobling, “two-touch sensitive surfaces
`
`may achieve the same amount of control as six buttons.” Id., Abstract.
`
`This modification would have been nothing more than a simple substitution
`
`of one known element (the one or more buttons of Kari) with a known element (the
`
`touch-sensitive surface of Jobling) to obtain a predictable result (user input through
`
`a touch-sensitive surface instead of a button), and a POSITA would have had a
`
`reasonable expectation of success in making the substitution. Ex-1010, ¶65.
`
`“d. a touch sensor detector; and”
`e.
`Kari in combination with Janik and Jobling discloses or suggests this feature.
`
`Ex-1010, ¶¶66-67.
`
`As discussed in the preceding section, the Kari-Janik-Jobling system includes
`
`a touch-sensitive surface. See supra Section VII.A.1.d. Jobling explains that the
`
`touch sensitive surface is configured to detect user inputs. See, e.g., Ex-1009, [0024]
`
`(“touch-sensitive surface is configured to detect up to six user inputs … touch-
`
`sensitive surface can detect linear movement … touch-sensitive surface can also
`
`detect brief pressure on the surface”)4; see also id., Figs. 2-8 and associated
`
`4 All emphases in this Petition are added unless noted otherwise.
`
`20
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`discussion. Jobling further explains that “[u]ser input signals may be received by a
`
`controller 112 that is configured to receive user input signals and generate control
`
`output signals” based on stored instructions (“modules”) such as the “user input
`
`detection module 122.” Id., [0028]. A POSITA would have understood therefore
`
`that the controller and associated user input detection instructions of Jobling
`
`correspond to a touch sensor detector. Ex-1010, ¶67.
`
`f.
`
`“e. an electronic device controller for controlling
`an electronic device by sending an activation
`signal when the magnetic surface of the set of
`earphones is decoupled from the one or more
`magnetically attractable surfaces,”
`Kari in combination with Janik and Jobling discloses or suggests this feature.
`
`Ex-1010, ¶¶68-73. For example, in the Kari-Janik-Jobling system, a processor 104
`
`of Kari (“electronic device controller”) controls a mobile telephone 109 (“for
`
`controlling an electronic device”) by sending a signal via the transceiver 105 for the
`
`mobile phone to answer a call (“by sending an activation signal”) when the headset
`
`100 is removed from the holder (“when the magnetic surface of the set of earphones
`
`is decoupled from the one or more magnetically attractable surfaces”).
`
`For the reasons discussed supra in Section VII.A.1.c, the Kari-Janik-Jobling
`
`system discloses or suggests “one or more magnetically attractable surfaces attached
`
`to the holder body for removably coupling with a magnetic surface of a set of
`
`earphones.”
`
`21
`
`

`

`IPR2020-01325
`U.S. Patent No. 9,167,329
`
`Kari discloses “detecting removal of a wireless headset from a holder.” Ex-
`
`1007, claim 14; see also id., claim 1, [0005]-[0007], [0029], Fig. 6. More
`
`particularly Kari discloses mechanical interface 107 (that can, for example, be used
`
`to charge the headset 100) that further comprises a detection switch 113. Id., [0022].
`
`Although the interface 107 is described as “mechanical,” Kari explicitly discloses
`
`that the detection switch 113 can also be magnetic. Id.
`
`To be sure, in one instance Kari states that “if the wireless headset 100 is
`
`removed from the holder 108, an actuation of the mechanical interface 107 of Fig. 2
`
`occurs.” Id.,